This article has been written by Ms. Samriddhi Vishen, a 2nd year LL.B. student of Shri Jai Narain Misra PG College (KKC), Lucknow.
According to Section 2(1)(j) of The Patents Act, 1970, “Invention” means a new product or process involving an inventive step and
capable of industrial application. A patent is an exclusive right granted for an invention. For a predetermined amount of time, it grants the inventor the sole right to produce, use, and sell the invention.
The main goal of this system is to motivate inventors to protect their own works. One cannot patent certain works such as art, books, or movies. However, these assets are shielded by copyright legislation. The larger area of law known as intellectual property, which also encompasses trademark and copyright law, includes the law of patents as one of its subsets. In this article, we examine patent acquisitions and related necessary concepts.
What Inventions are Patentable?
Any asset or invention must fulfil three requirements in order to qualify for a patent:
- It must be brand-new and unique. This means that the specific invention must be novel and leave no traces of its prior existence.
- It must be distinctive on its own. A person cannot patent a change they make to the state of the art.
- It must be useful and improve the quality of life for the average person and cannot profit from, encourage, or be utilized for any immoral activity.
This does not apply to all innovations or discoveries, such as Isaac Newton’s law of gravity or Albert Einstein’s relativity formula. In simple words, no patent can be obtained on a law of nature or any scientific principle.
What Inventions are Non-Patentable?
Even though the idea of a patent is to protect the inventor’s creation, certain things do not qualify for it according to The Patents Act, 1970.
Section 3 of The Patents Act, 1970 states the inventions that are not patentable. Inventions falling within the scope of Section 3 of the Patents Act, 1970 are:
3(a): frivolous or anything obviously contrary to well-established natural laws
3(b): contrary public order or morality serious prejudice to human, animal or
plant life or health or to the environment
3(c): the mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living thing or non-living substances
occurring in nature
3(d): the mere discovery of a new form of a known substance which does not
result in the enhancement of the known efficacy of that substance
3(e): a substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a process for
producing such substances;
3(h): a method of agriculture or horticulture
3(i):any process for the medicinal, surgical, curative, prophylactic, diagnostic,
therapeutic or other treatment of animals to render them free of disease or to
increase their economic value or that of their products.
3(j): plants & animals in whole or any part thereof other than microorganisms
but including seeds, varieties and species and essentially biological processes
for the production or propagation of plants and animals;
3(k): a mathematical or business method or a computer programme per se or algorithms
3(l): a literary, dramatic, musical or artistic work or any other aesthetic creation
3(m):mere scheme or rule or method of performing mental act or method of
playing game
3(n): presentation of information is non-patentable.
3(o):topography of integrated circuits
3(p):an invention which in effect is traditional knowledge or which is an
aggregation or duplication of known properties or traditionally known
component or components.
Section 4 of The Patents Act, 1970 further states the provisions for inventions relating to atomic energy that are not patentable. It states that no patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of section 20 of the Atomic Energy Act, 1962.
Need for Patent Acquisition?
In general, it is impossible to overstate the necessity or significance of patent acquisition. When acquired, patents serve to publicize an institution’s innovation (the patent holder) while also serving to safeguard the intellectual property of the patent holder and assist in ensuring its profitability. The patent holders get the following rights through patent acquisition:
i. The power to forbid others from using an invention that has been registered or to decide to agree to conditions for allowing such use by others.
ii. The capacity to file a lawsuit and pursue damages against anyone found to have violated the registered invention. In appropriate circumstances, the court may also issue injunctive orders preventing the offender from continuing to violate the rights of the patent holder.
iii. The right to sell an innovation or offer others a license to utilize it, just like with any other asset. This might be a significant source of income.
Who can file for Patent Acquisition?
Any of the following individuals may submit an application for the acquisition of a patent for an invention, either alone or jointly with another individual:
a) The invention’s true and first inventor.
b) The true and first inventor’s assignee.
b) The assignee or legal representative of the deceased true and first inventor.
It is crucial to remember that the phrase “true and first inventor” excludes both the first individual to bring an invention into India (i.e. the first importer of an invention) and the person to whom an invention is first disclosed from outside India.
Where should an application for Acquisition of Patent be filed?
There are four Patent Offices in India- Chennai, Mumbai, Kolkata and New Delhi. The head office is the Kolkata office and the territorial jurisdiction between the four Patent offices is divided as follows:
Patent Office Branches:
| Patent Office Mumbai | Maharashtra, Gujarat, Madhya Pradesh, Goa, Daman & Diu, and Dadra & Nagar Haveli |
| Patent Office Chennai | Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka, Puducherry, and Lakshadweep |
| Patent Office Delhi | Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Chandigarh, and Delhi |
| Patent Office Kolkata (Head Office) | West Bengal, Bihar, Jharkhand, Uttarakhand, Odisha, Chhattisgarh, Assam, Meghalaya, Mizoram, Tripura, Arunachal Pradesh, Manipur, Nagaland, Sikkim, and Andaman & Nicobar Islands |
It is possible to determine the office for filing the patent application by:
a) The applicant’s place of residence, domicile, or business.
b) The location of the invention’s birth.
c) The address the applicant provided for service in India (this is solely relevant for foreign applications).
General Procedure for Acquisition of a Patent?
• Filing of patent application
• Publication after 18 months
• Pre Grant Opposition /Representation by any person.
• Request for examination
• Examination: Grant or Refusal
• Publication of Grant of patent
• Post Grant Opposition to the grant of patent
• Decision By Controller
Patent Filing Requirements:
i) Application for requesting patent in Form 1.
ii) Proof of right to apply on behalf of the inventor. If the invention has been assigned to another person, this is relevant.
iii) A complete or provisional specification in Form 2 and, if applicable, drawings.
iv) The power of attorney in Form 26 if it is submitted via a patent agency.
v) An application should include a digital signature of the applicant, an authorized representative, or a patent agent.
Patent Specification:
An applicant must completely and specifically describe the invention for which the protection is sought in order to receive patent protection, which may be either complete or provisional. When the invention is finished or ready for use, a complete specification is provided. On the other hand, a provisional specification is offered when the invention has not yet reached the final stage but has reached a point where it can be disclosed in writing.
A detailed specification of the invention must be provided as such so that a person in the art could carry out the invention. Only when an applicant fully discloses the invention and includes the best-working method is this possible. This won’t, however, result in someone misappropriating one’s invention. Anyone who makes a comparable invention after one has submitted a patent application will be barred from doing so.
Patent Filing:
An application needs to be filed in the government patent office as per the application form in Form 1 after drafting the application. An E-filing can also be done. The following steps must be followed in order to file a patent in India via E-filing:
- The applicant or agent must have a digital signature first.
- Second, the applicant or agent must register on the Indian Patent Office Portal (https://ipindia.gov.in/) as a new user and create a login ID.
- Third, download and instal the client software from the portal. It will produce an XML file into which the documents’ soft copies can be uploaded.
- The application number, CBR receipt, submission date, and time are generated after a successful upload.
To learn more about the E-filing process, one may read more about the E-Filing Patent Application in India.
Patent Office Procedure:
A date and a serial number are allotted once the Patent Office India receives an application. The application is converted to digital form, examined, categorized, and then uploaded to the office’s internal server (in cases other than E-filing). The application screening comes next. For any potential international patent classification, the application is reviewed. Based on the technical area of an invention in the relevant field, an examiner is assigned. The application is also checked to see if it relates to atomic energy or defence and if the abstract has to be completed or corrected.
The scrutiny comes next. The application is examined for proof of right to file, appropriate jurisdiction and the inclusion of all necessary documents. The patent application is published in the official journal 18 months following the priority date or the date of filing, whichever is earlier. As a result, any third party may oppose the grant (by filing pre-grant opposition) before it is granted.
The Patent Office does its best to carefully review the application and inspect the invention. To be certain, the public is given the opportunity to object on the grounds mentioned in Section 25 (1) of the Patents Act. Before a patent is granted, but after publication, however, this opposition has to be filed.
If there is no opposition, the patent application continues further on to the examination and grant proceedings.
Following the examination of the invention, the examiner prepares a report along with the objections, if any, and sends it to the applicant. The Controller will issue the patent grant order based on merit after receiving the applicant’s response and holding a subsequent hearing.
Some Case laws concerning Patent Acquisition?
- Novartis v. Union of India & Others- Whether Novartis may patent Gleevec in India was the subject of a landmark ruling by a two-judge bench of the Indian Supreme Court, which came to an end after Novartis fought a seven-year legal battle. The Indian Patent Office’s decision to deny the patent application was upheld by the Supreme Court. The primary justification for the rejection was the law created by the 2005 amendment to The Patents Act that deals with the patentability of new applications for existing uses for known drugs and modifications of known drugs as section 3(d) of the amended Act, mentioned that such inventions are patentable only if “they differ significantly in properties with regard to efficacy.”
- Glochem Industries Ltd vs Cadila Healthcare Ltd- Glochem Industries had petitioned the Court after the assistant controller of patents rejected its pre-grant opposition to Cadila’s drug patent application (No. 413/MUM/2003A). In accordance with Sections 25(1) and 3(d) of the Indian Patents Act, Glochem’s main arguments were that the patent claims were neither novel nor capable of producing an enhanced therapeutic effect. Glochem claimed in its petition to the Bombay High Court that Cadila had failed to provide legal or admissible evidence before the authorities in support of its claims; that Cadila had failed to demonstrate that the new form of a known substance applied for patent actually enhances existing therapeutic efficacy; and that the assistant controller of patents had dismissed the opposition based on an incorrect interpretation and application of Section 3(d) of the act. In this case, the Bombay High Court expressed the opinion that the alternative options suggested by Cadila with respect to the petitioner’s actions are insufficient justification for rejecting the petition, particularly if the petitioner’s complaints were justified and the authorities had in fact committed a manifest error. As a result, the court set aside the order granting the patent and ordered the authorities to review the situation.
- Bayer Corporation & Anr vs Union Of India & Ors- The Delhi High Court ruled that there is no drug-patent linkage system in India because the goals of the two Acts (i.e. Drugs Act, 1940 and the Patents Act, 1970) are unlike and the Controller of Patents alone can set patent standards. Additionally, the patent relationship will negatively affect India’s public health policy. It further ruled that a drug’s approval for the market does not constitute patent infringement. Therefore, patent infringement cannot be presumed, it has to be established in a court of law. Drug Authorities do not have the authority to decide on such adjudications.
Conclusion-
In the past few years, there have been substantial changes in Indian patent laws. With the introduction of new patent laws in 1970, the first major legislative changes in patent laws were brought in India.
As a founding member of the World Trade Organization (WTO), India had to further modify its patent laws in order to accede to the Trade-Related Aspects of Intellectual Property Rights (TRIPS). Recent economic advancements in India have created an environment more conducive to the protection of intellectual property.
Although the process of filing a patent is complex and long, one must remember its significance. With the recent digital advancements, the process has even been simplified to some extent.
References:
https://www.researchgate.net/publication/350135642_INTELLECTUAL_PROPERTY_AND_PATENT_ACQUISITION
https://faculty.haas.berkeley.edu/shapiro/pae.p
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