ED THE TAMIL NADU ) q Ces . Eg, AMBEDKAR LAW UNIVERSITY A (State University Established by Act No. 43 of 1997) M.G.R. Main Road, Perungudi, Chennai - 600 096. INTELLECTUAL PROPERTY LAWS STUDY MATERIAL By Mrs. Lucky George Assistant Professor (SS), Department of Intellectual Property Rights School of Excellence in Law The Tamil Nadu Dr. Ambedkar Law University Chennai.MESSAGE Knowledge is power. Legal Knowledge is a potential power. It can be exercised effectively everywhere. Of all the domains of reality, it is Legal Knowledge, which deals with rights and liabilities, commissions and omissions, etc., empower the holder of such knowledge to have prominence over the rest. Law Schools and Law Colleges that offer Legal Education vary in their stature on the basis of their ability in imparting the quality Legal Education to the students. Of all the Law Schools and Colleges, only those that educate their students to understand the nuances of law effectively and to facilitate them to think originally, excel. School of Excellence in Law aims to be in top of such institutions. The revolution in Information and Communication Technology dump lot of information in the virtual world. Some of the information are mischievous and dangerous. Some others are spoiling the young minds and eating away their time. Students are in puzzle and in dilemma to find out the right information and data. They do not know how to select the right from the wrong, so as to understand, internalise and assimilate into knowledge. Hence in the present scenario, the role of teachers gains much more importance in guiding the students to select the reliable, valid, relevant and suitable information from the most complicated, perplexed and unreliable data. The teachers of the School of Excellence in Law have made a maiden attempt select, compile and present a comprehensive course material to guide the students in various subjects of law. The students can use such materials as guidance and travel further in their pursuit of legal knowledge. Guidance cannot be a complete source of information. It is a source that facilitates the students to search further source of information and enrich their knowledge. Read the materials, refer relevant text books and case laws and widen the knowledge. Dr. P. Vanangamudi Vice-ChancellorPREFACE ‘The new trends in international trade ushered in by the WTO and the TRIPS Agreement demand for a serious rethinking on teaching intellectual property laws. Along with this is the fast change in the economic and industrial policies liberalization and globalization - taking place in our country. The new economic policies, it is assumed, will facilitate the free movement of capital, technology and goods based on new technology across the borders to promote international trade. This is expected to bring in new technology for the industry and economic development in India. It is expected that there is going to be more investment on the research and development by the local industries to face the new international competition. This demands India to afford better protection for the intellectual property based on the TRIPS Agreement. A critical look at the developmental model reflected in the ‘TRIPS and its feasibility to solve the domestic problems in the changed international context also warrants attention, India has to find out the merits and demerits of the policy choices adopted in the TRIPS and re-negotiate the same when periodical review of this agreement takes place. India also has to find out appropriate policy choices when new treaties are to be negotiated in the new areas. This course is intended to introduce the different categories of IP, the minimum standard to identify the items of protection. Exposing the students the procedural requirements for the acquisition of IPR and also address the International filing system. Bundle of rights conferred on the right holder and remedies available in the case of infringement are also examined. To meet the new challenges of the intellectual property lawyers to tackle the policy and practical issues the course material has been designed, Ms. Lucky George Assistant Professor (SS), Department of Intellectual Property Rights School of Excellence in Law The Tamil Nadu Dr. Ambedkar Law University Chennai.CONTENTS UNITS. TITLE PAGE No. UNIT-I INTELLECTUAL PROPERTY LAWS 1 UNIT-IL PATENTS 9 UNIT-III TRADEMARKS 35 UNIT-IV COPYRIGHT LAW 74 UNIT-V INDUSTRIAL DESIGN 109UNIT - I INTELLECTUAL PROPERTY LAWS In this era of globalization especially after the establishment of WTO, intellectual property laws assume much importance, quite disproportionate to what they actually deserve. The reason might be the feeling that advanced industrial society are undergoing a fundamental transformation from capital and labour based economies into knowledge economies as an aftermath of the recent information technology revolution. ‘Two interesting features of a knowledge based economy are the astonishing speed and intensity of innovation and emergence of new technologies enabling dissemination of knowledge /information in an unprecedented manner. These technological developments paved way foran upsurge in the demand for strengthening of IP protection. The proponents of expanded IP protection try to justify their demand arguing that social progress in the technological age is inextricably connected with the creation and protection of intellectual property. IP isan intangible incorporeal property. Itis based on the private property jurisprudence propounded by Locke and Hegel. It is a knowledge which has economic/commercial value. Itis astatutory right granted fora limited period of time. IP is territorial in nature but with the advancement of technology there is a need to extend protection beyond its boundary. This resulted in the culmination of international convention like Paris Convention for protecting industrial property and Berne Convention for protecting literary and artistic to harmonize the existing IP law of the member countries. Both the convention was revised four to five times each time they try extend the scope and also widened the rights. Finally in 1967 Stockholm Conference resulted in the establishment of WIPO to look in to the IP matters. But due to lack of proper enforcement machinery there isa need for another convention. ‘The entire scenario changed when WTO for the first time looked in to the trade related aspect of intellectual property right (TRIPS). TRIPS attempted standardization of substantive law by listing out the scope, subject matter, duration etc., of different forms of IP with very limited flexibilities in its implementation. Thus, the standardized norms conducive to facilitate the continued technological growth developed countries are uniformly imposed on unequal economies based on the model of “one size fits all”. India ratified the agreement establishing the WTO and consequently the TRIPS which came into force from 1* jan1995. India has amended existing laws as well as enacted new laws in the domain of intellectual properties in order to be fully TRIPS compliant. Intellectual Property Right as a subject of study has acquired great dimension in modem times. The evolution of Intellectual Property Rights (IPR) can be traced to the realisation that the authors of literary and artistic works and inventors need, besides reward for their creations, some form of protection to prevent others from exploiting their creations without their consent. This realization was in the context of industrial revolution, which generated drastic changes in the society. This resulted in creating new forms industrial revolution. The concept of protection products of human intellectual creativity has resulted in crystallations of intellectual Property Rights (IPR). Formerly, a number of Intellectual Property Rights such as patents, trademarks and industrial designs were collectively known as industrial property. The Paris Convention on industrial property. The Pairs Convention on industrial property was formulated to protect such rights. Later, the nomenclature ‘Intellectual Property Rights’ was evolved when copyrights and geographical indications were brought under one umbrella along with patents, trademark and designs.IPR hasa vital role in the life of man in modern times. The items eligible for protection under this category primarily include: (1) Trade Mark (2) Copy Right (3) Patent rights (4) Design rights (6) The rights of farmers and plant breeders for protection of plant varieties and (6) Semiconductor Integrated Circuit In addition certain connected rights like Trade secret right, Publicity right, Moral rights and Geographical Indication are also existing, Developed countries have accepted and recognized some of these rights even during 17" Century. Itwas much later that developing countries started exploiting IPR. Intellectual property rights provide an incentive orencouragement to persons with creative faculties to undertake creative work which benefits the society. Intellectual property right is a negative right. Itis said so because it empowers the right holder to exclude or prohibit all others from using or exploiting the intellectual property, Intellectual property Rights ‘empower the owner to use the intellectual property in any manner he likes and to exclude or disallow others from using it. Philosophical Aspects of Intellectual Property laws Legal regimes for protection of intellectual property are based on various philosophical foundations and theories. Most of these theories are rooted in the realm of tangible property Intellectual property is in some ways fundamentally different from other forms of property. Intellectual property is in some ways fundamentally different from other forms of property This module seeks to underline the basic features of property, the unique aspects of intellectual property and the philosophical foundations behind the protection of intellectual property. In an age where intellectual property regimes are being strengthened, redefined, aswell as challenged, philosophical justifications are often used in order to delineate and define the limits and scope of protection. Itis thus pertinent to examine and understand these arguments. The Concept of property What is ‘property’? ‘The term “property” is subject to diverse interpretations. Property, in the legal sense, is essentially a bundle of rights flowing from the concepts of ownership and possession. While most ofthem have material existence, the value of property depends on the knowledge of use associated with it. For example, “diamond” as property can be seen at different levels. At one level it has stone value. But in age where the technique of diamond cutting and shaping has been developed and it is also treasured as a very precious jewel stone, its value increases manifold. Diamond also has its use in the tool cutting industry because of its sharpness, increasing itsindustrial utility and value. Thus the element of “knowledge of use” complicates the conception of property, since it is a vague, ever-changing concept with changing value. A matter becomes “resource” only when there is an idea/technology to use the matter in such a manner that it can satisfy a human need. It becomes a “resource” in two senses-a “material resource” and an “intellectual or technological resource” (i.e., the intellectual capability to command its use).once these two resources come together with respect toa substance, it becomes property, which provides satisfaction, and over this bundle of rights can be claimed. 2Some of the bundle of rights constituting property is outlined below: Rights over property: . Possession ° Alienation © Ownership © Usage © Application © Righttoexcludenon-owners © Enjoyment © Poweroftransfer © Control According to Salmond, the right to property isa right to the aggregate of use of things. As per this definition, ownership is in general, permanent and in heritable. These rights may relate to tangible or intangible things Rights over tangible things like land and chattels are called corporeal property. Rights over intangible things like ideas, works of artand literature, etcare called incorporeal property. Examples of such incorporeal rights are patents, copyrights, trademarks, etc. While “property” in common parlance refers to the material object, in a strictly legal sense, it refers to the interests over property, which is protected by law. All property rights are limited by the rights of others. In practice, each property right is delineated and defined in order to balance it with other property rights. For Example, a patent holder's ownership right is balanced with the right of access to the public at large, by compulsory licenses, limited term, exhaustion of rights, parallel import etc. Property law as it operates always has tried to incorporate some element of distributive justice in to it There appears to be conflict between the fundamental right to property which existed under the Indian Constitution (until Article 31 was repealed )and the land reforms initiative carried out by the state in this regard .It was basically a conflict between two different conceptions or theorizations about property law. One Conception would regard the role of the state and that of property law as protection of existing property relations. The other conception would give property law a major role in shaping property rules to ensure widespread access to the system. ‘The Supreme Court in Bhau Ram V Baji Nath (AIR 1962SC 1467) struck down as unreasonable restrictions on property rights, the laws providing for pre-emption on the basis of vicinage. The court held that the real purpose of these laws was to promote Communal neighborhood, a purpose that could have no force as. public policy, since the desire to promote such exclusiveness could no longer be considered reasonable. The essential point is that most disputes involving property relate to the conflict between two property rights or between one property right and some other right. The role of the state and of law becomes important in such a scenario and would involve balancing various policy considerations. What is Intellectual Property? Intellectual property is the property created by the intellect of human mind, Unlike other forms of property, intellectual property is a nonphysical which stems from, or is identified as, and whose value is based upon some idea(s). Intellectual property encompasses the protection offered by the legal regimes of various types like patent, copyright, trademark, designs and trade secrets, It would also include allied and similar legal regimes like protection of plant varieties and protection of databases. Intellectual property insists on some amount of novelty/originality to gain protection .The degree of newness, be it novelty or originally differs from one system to another. The intellectual property system is duration specific. It does not provide any perpetual and absolute monopoly over the property. But there are exceptions for the limited duration in certain branches of intellectual property rights. 3What is protected with respect to intellectual property is the use or value of ideas/expressed ideas. However, it is to be noted that the bundle of rights constituting intellectual property is not over abstract ideas, but, rather over physical, concrete or tangible manifestations of these ideas. For example, rights under patent law include the right to manufacture, distribute, etc. While rights under copyright law extend tothe right of publication, distribution, etc, all of which deal with concrete embodiments of ideas and not the abstract, ideas in themselves Labour Justification of property. One of the most popular justifications put forward for the protection of property is to justify itasa reward for the labor put in to create/generate it. This theory was propounded by John Locke. Locke starts with the presumption that ‘every man has a property in his own person’. This presumption leads Locke to claim that an individual's labour also belongs to that individual. Thus the origin of property is stated by him as “whatsoever then he removes out of the state that Nature hath provided, and left it in, he hath mixed his labour with, and joined to it something that is his own, and thereby makes his property”. According to this theory, labour adds value to goods Goods are converted from the “commons “by exerting labour. In the case of intellectual property, it can be sold that ideas are taken from a common pool through mental and/or physical exertion. One view of this theory is that labour is an unpleasant activity for which people should be rewarded or should be motivated to perform by securing benefits in return. This is also called the ‘labour avoidance’ theory. “Another interpretation of Locke's theory is the ‘value added! theory, which states that itis the social value created by labour and not labour itself that deserves to be rewarded. This is also a powerful justification, which is often used in order to promote stronger protection regimes for intellectual property, For example, the introduction of product patents for pharmaceuticals in India have been justified on the ground that this, would spur research and motivate in development ofa variety of novel drugs. In fact the requirement of ‘utility ‘in patent law is in itself a reflection of the ‘value added’ theory, as it requires an advance over prior art and the requirement that the patent be capable of industrial application However, copyright law does not conform to this ‘value added’ theory as it does not require any ‘value’ to accrue to society of the copyrighted work. Even worthless works, as long as they are ‘original’, ie, they originate from the author are copyrightable. Even ifsome works do not add any social value, the intellectual property system as a whole is said to lead to a net increase in social value Locke's ‘commons’ was central to his theory. In the primitive state, there were the ‘commons’ on which labour was exercised in order to create private property. In the primitive state, there was ‘enough and as, good’ such that there are unclaimed goods so that everyone can appropriate the objects of his labours without infringing upon goods that have been appropriated by someone else. Locke’s ‘common’ had enough goods of similar quality that one person's extraction from it did not prevent the next person from extracting something of the same quality and quantity .This ‘enough and as good’ condition seems to be more appropriate to justify intellectual property than material property .With respect to ideas there is always an inexhaustible field of ideas unlike in the case of physical property .This is known as ‘public domain’ in intellectual property law. Moreover, the intellectual property system does not envisage the total exclusion of ideas from the non-owners. Thus there are certain ways in which the intellectual property can always be used by non-owners, Thus there are certain ways in which the intellectual property can always be used by non- owners, eg., in parodies derivative works and the various fair use provisions in copyright law. Another way in which this ‘commons’ or public domain is guarded is by making certain aspects beyond the realm of property .Thus for example every day ideas like adding a particular ingredient to a recipe cannot be protected by intellectual property law. At the other end of the spectrum, very extraordinary ideas like 4calculus and algebra also cannot be protect by intellectual property law. Limited built-in expiry periods also provide a way in which these ideas and works go back in to the public domain. The “enough and as. good” condition thus personifies the persistent balancing that needs to be done in the intellectual property system in order to grant adequate protection ,while at the same time safeguard the public domain. Labour has not been a consistent source of property rights. Slave labour had been exploited in the united states for more than a century without any compensation .Women continue to performa lot of household work without any direct compensation from the market Similarly traditional knowledge remains unprotected and unrecognized for its contribution, even though local communities have undoubtedly invested creativity and labour in evolving, nurturing and preserving this knowledge. The personality Justification of property. ‘This theory states that property provides a mechanism for personal expression ,dignity and recognition of the individual person. One of the proponents of this theory is Hegel. For Hegel, ‘property is the embodiment of personality’. Applying this theory to intellectual property, it can be said that ideas are manifestation of the creator's personality or self and hence need to be protected. The personality justification is especially applicable to the arts and artistic creations. However there are also a number of forms of intellectual property, which reflect little or no personality of their creators such as petents, engineering designs and trade secrets. Copyright and trademark law rest primarily on the personality justification. The question as to whether the work is worthy of protection does not rest on society's judgment as to its worth, but rather on a personal judgment of its worth. The protection of trademarks also rests primarily on the personality justification ,as there is no apparent labour, which goes in to them. Trademark law evolved to protect the marks that reflect personality and creativity of the manufacturer/seller. ‘The concept of “moral rights” (paternity and integrity rights)in copyright law is one major example of the real essence of the personality justification, Moral rights basically refer to the inalienable right to guard the integrity of a work against change that would damage the author's reputation or destroy the author's reputation or destroy his intended message. Marx's Theory on Property Marx focused on the materiality of production, and whenever he wrote about property relations, he had in mind physical objects like land and not abstract objects. Ownership for him was ownership of the tangible Marx considered property asa form of alienation, as a class instrument which is used by the ruling class to protect its interests and as a ruling idea, thus property being a part of ideology. In capitalist economy, where there are the ruling class and the proletariat (workers) law belonged to the ruling class. In Marx’s terms, itis capitalists rather than workers that end up owning most of the intellectual property they generate because of the operation of doctrine of employment laws that vest ownership of intellectual property in their employer because they have assigned ownership. According to him, the fact that intellectual property law functions to motivate and reward the creative proletarian would be an ideological fairy tale designed to hide the exploitation of creative labour in the capitalist mode of production In Mary's analysis of capitalism, creative labour does not come up because most labour that takes place in the capitalist economy is alienated labour. Thus it is alienated labour which is external to the worker rather than the creative or free labour that is the paradigmatic form of labour in capitalism. But the capitalism in its evolution comes to depend on creative labour and integrates such labour into is system of production. The task of integration is achieved through intellectual property law. Thus intellectual property is fundamental to the task of integrating creative labour and abstract objects in to capitalism's production process. 5International Agreement on Intellectual Property Rights IPR law has undergone changes as a result of various international conventions. Pairs convention (1883) for the protection of industrial property, Beme Convention (1886) for the protection of literary and artistic works and Universal Copy right convention (1952) are some of the pioneering conventions. These have been revised from time to time. In the year 1947, the General Agreement on Tariffs and Trade (GATT) came in to existence. International trade got regulated in accordance with the terms of this agreement. Overthe years, thisagreement got upgraded. In 1995, World Trade Organization (WTO) came into existence. The member countries WTO accepted the provisions relating to intellectual property, by accepting a special agreement on TRIPS (Trade Related Intellectual Property Rights). Following this, IP law has been amended by members of WTO, based on TRIPS commitments. Following are some of the Conventions, which set out norms for IPRs. (1) Patent Conventions (a) Paris Convention for protection of industrial property, 1967. (b) International Convention for protection of new varieties of plants (UPOV), 1991. (©) Patent Co-operation Treaty (under Paris Union), 1970. (@) Budapest Treaty for deposit of micro organisms, 1980 and (@) Eurasian Patent Convention. (2) Trade Mark Convention. (a) Paris Convention for protection of industrial property, 1883. (b) Madrid Agreement (relating to international registration), 1891. () Stockholm Convention (Geographical indications), 1967. (@ Lisbon Agreement (for protection of appellations of origin and their International Registration), 1967 and (©) Trade Mark Law Treaty (TLT) for simplification of Trade mark procedures, 1994. 3) Copyrights (a) Berne convention (Literary and Artistic work) without major states like USA, USSR and China, 1886. (6) Universal Copyright Convention (Alterative to Berne Convention by major tates like USA, USSR and China) 1952. () Rome Convention (for sound Recording and Perfomer’s Rights), 1961. (@) WIPO Copyright Treaty (for digital technology and internet), 1996. (©) WIPO performances and Phonogram Treaty, 1996. ‘The latest and most comprehensive international agreement on IPR is the agreement on trade ~ related aspects of intellectual property rights (TRIPS) negotiated under the auspices of GATT 1994. It covers copyrights, trademarks, geographical indications, industrial designs, patents lay — our design (topographies) of integrated circuits and undisclosed information. ‘The consensus evolved in these conventions has changed the laws on IP Rs have got international recognition and acceptance. India being a member of WTO, is under international obligations to protect IPRs. Intellectual Property islike any other property which can be owned, possessed, transferred and encumbered. It can also be subjected to mortgage, charge or release. The rights in IPR can be licensed, assigned or transmitted by inheritance. These rights are the products of modern commercial world. During the 21 at century, 6exploitation of IPR has assumed new dimensions. IPR exists even in projects involving space vehicles and private satellite missions. IPR is subject to international exploitation in the commercial world. It is a post industrial revolution phenomenon. TRIPS&IPR ‘TRIPS Agreement is a basic document of international law. This agreement forms the foundation for regulating intellectual property rights. The agreement has been approved by international community by adding it to the Agreement establishing World Trade Organization. It has been adopted by majority of the nations. It is this aspect that increases the importance of TRIPS Agreement. The TRIPS Agreement can be considered the magna carta of intellectual property rights. Ithas endeavored to give uniformity to the law on intellectual property rights in all the member-states. The relevant provisions of TRIPS Agreement and GATT regulations relating to trade are analyzed below: Trade- Related Aspects of Intellectual Property Rights Intellectual property rights are the rights given to people over the creations of their minds. According to the view of the industrialized nations trade problems were arising asa result of deficiencies in the protection accorded to intellectual property, both because of inadequacies in the scope and availability of intellectual property rights under many national laws and because of lack of effective procedures and remedies for the enforcement of such rights where they existed. They were concerned with absence in certain countries of patent or copyright laws or laws for the protection of designs, computer programs or geographical indications; exclusion of categories products or of works from protection; insufficient duration of protection; misuse of compulsory licensing; and procedural obstacles or de facto discrimination that makes it difficult for foreign firms to obtain protection for their intellectual property. In regard to difficulties faced by intellectual property right owners in the enforcement of their rights, mention was made of: ack of police enforcement or access to border enforcement measures in appropriate circumstances; difficulties of gaining access to competent judicial or administrative bodies; procedural problems with the burden of proof and assembly of evidence; unavailability of preliminary relief; insufficient penalties; the relationship between local and federal jurisdictions; and in general the duration and cost of legal proceedings. Group 8 countries and their allies are concerned with the displacement of exports of legitimate goods by unauthorized copies, or of domestic sales by imports of unauthorized copies, the disincentive effect that inadequate protection of intellectual property rights had on inventorsand creators to engage in research and development and in trade and investment; the deliberate use in some instances of intellectual property right protection to discourage importsand encourage local production, often ofan inefficient and small scale nature;and the inhibiting effect on international trade of disparities in the protection accorded under different legislations. Trade in Counterfeit Goods Inadequate action in GATT and in other multilateral for a in the past had allowed trade distortions to increase in intensity, despite a number of improvements introduced at the national level. The multilateral framework negotiated, aimed at reducing distortions and impediments to legitimate trade resulting from trade in counterfeit goods and action to repress such trade. In the absence of adequate measures to protect intellectual property rights, - The domestic production and sale of infringing goods displace exports of genuine goods tothe market. - The production and export of infringing goods to the country of production of the genuine goods and the export of infringing goods displace exports of the genuine product in thir markets; - Possibly higher prices were charged for the genuine goods during the period before unauthorized copies became available and in markets where rights were respected, in order to recoup the cost of developing intellectual property; 7~The damage was caused to the reputation and thus sales of national exporters ftom poor quality of unauthorized copies of their products; Caused reduced incentives to research and development, innovation, and the creation of new works of authorship, resulting from the losses consequent on the infringement of the corresponding intellectual property rights, especially where such activities required a global market to be financially viable; ~ Led to diminished trade resulting from the unwillingness of intellectual property right owners to enter markets where their rights were difficult to enforce Industrialized countries were eager to standardize intellectual property laws worldwide because they were aggrieved by = Procedural or administrative problems impeding easy access to courts or administrative authorities; = Slowness of procedures; - Absence of provision for preliminary relief, including for provisional seizure; - Arbitrary or discriminatory procedure; - Lack of procedures to facilitate obtaining evidence to build a case (“discovery” procedures) - Absence or inadequacy of dissuasive criminal sanctions; ~ Inadequate civil remedies, such as damages; failure of public authorities to take action in the face of large-scale, blatant infringement activity; - Excessive cost of legal actions, especially for small an medium-sized enterprises; - Additional delays and costs in obtaining effective action in countries where both local and federal bodies have jurisdiction. ‘Trade Related Intellectual Property rights agreement is to date the most comprehensive multilateral agreement on intellectual property. Itis Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization. Dispute settlement A particular important element of the TRIPS Agreement is the system of dispute settlement established under the WTO Agreement. The TRIPS Agreement itself invokes the provisions of Article XXII and XXIII of GATT 1994as elaborated by the WTO understanding on Rules and Procedures Governing the settlement of Disputes, which applies to consultation and the settlement of disputes under the TRIPS Agreement. However, subparagraph 1(b) and 1(c) of Article XXIII of GATT 1994 which refer to so called non violation dispute settlement cases are not to apply to the settlement of disputes under the TRIPS Agreement for at least five years from the date of entry into force of the WTO Agreement. Any extensions of that period are to be decided in the ministerial conference by Law. Dispute Settlement Understanding Consultation (Good offices, Conciliation, mediation), if no solution after 60 days. Establishment of panel(normally 3 members) by DSB. Hearing of parties: Written or Oral Submission. Panel will submit an interim report by panel (facts panel's findings and conclusions). Final report circulated to parties to all members (DSB). Within 60 days the party can file an appeal to appellate Body (limited to legal issues). ‘The report submitted by the panel or appellate board is adoption by DSB. Then comes the implementation phase, members should by notification state of its intention to implement the DSB's ruling, Establishment of Original panel for implementation and compensation. If they fail to settle then retaliation and cross retaliation is the consequence.UNIT - II PATENTS Introduction Subject matter of Patents Procedure and Obtaining Patents Provisional and Complete Specification Rights conferred on a Patentee Transfer of Patents Infringement of Patents Action for Infringement ye PN Awe wD Patent Agents 10. Exclusive marketing right 11. Case Laws on Patents 12. International Perspective of Patents INTRODUCTION A patent is a form of industrial or intellectual property. It is a right granted to a person who has invented anew and useful article or on improvement of an existing article or a new process of making an article. It consists of an exclusive right to the new article for a limited period. After the expiry of the duration of a patent, it passes into the public domain. Thereafter anybody can freely make use ofthe invention. ‘The owner of the patent may either sell of grant licence to others to exploit the patents. The property ina patent is similar in many respect to other forms of property. A patent being a creation of statue is subject to territorial retractions. A Patent granted by a state can be enforced in another State based on mutual recognition. For patenting a product there shall be. novelty utility inventiveness, and commercial exploitability. A patent is not granted for an idea or principle as such but for article or the process of making some article applying the idea. The mere discovery of a new technology and industry. A patentee will be rewarded for his invention by granting monopoly right for its commercial exploitation by granting monopoly rights for its commercial exploitation by manufactures of the goods, The patent is granted for a statutory period and after the expiry of the monopoly period others can freely use the invention and improve upon it. 9Meaning of the Patent Itmeans the grant of some privilege, property or authority made by the Government or the Sovereign of the country to one or more individuals. The instrument by which such grant is made is known is ‘Patent’ A patent is an exclusive right granted to an inventor of an inventions, which may be either a product ora process providing for a new way of doing something or offering a new technique to improve the existing process. ‘The term ‘Patent’ acquired statutory meaning in India when the Patents Act, was enacted. it snow governed by the Patents Act, 1970. Patent, under the Act, is the exclusive right granted by the Government to the inventor to make, use, exercise and vend his invention fora limited period of time. In confers on the inventor substantive rightsand secures to him the valuable industrial right which he can enforce for his own advantage either by using it himself or by conveying the privileges to others. He receives something tangible; something which has value and which protects him from competition and is the source of gain and Profit. ‘After the expiry of the period for which exclusive right is granted to the inventor, the invention can be to ‘use by any person without permission from the one to whom the patent had been granted. A person to whom a patent is granted is called patentee. Objective of Patent law ‘The Patent Law recognizes the exclusive right of a patentee to gain commercial advantage out of his invention. This is to encourage the inventors to invest their creative faculties for making invention, with the assurance that their inventions would be protected by law. Accordingly without his permission no one else would be able to copy his inventions for a certain period during which the respective inventor would have exclusive rights. Patent Law secks to strike a balance between the promotion of technological innovation and the dissemination of its fruits. In the case of Bishwanath Pasad Radhey Shyam.v Hindustan Metal Industries. ([Link].1982 SC 1444) it has been held by the Supreme Court that, “the object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after expiry ofthe fixed period of the monopoly, passes into the public domain. Definitions “Budapest Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Micro- organisms for the purposes of Patent Procedure done a Budapest on 28* day of April, 1997, asamended and modified from time to time [S.2 (ab)]. “International application” means an application for patent made in accordance with the Patent Co-operation Treaty [S2 (ia)]. “Invention” means anew product or process involving an inventive step and capable of industrial application [S2(g)]. 10“Inventive step” meansa feature ofan invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art (S29ga)]. “New invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filling of patent application with complete specification, ie, the subject matter has not fallen in public domain or that it does not form part of the state of the art [$ 291)]. “pharmaceutical substance” means any new entity involving one or more inventive steps [S$ 2 (a)]. PATENTS ‘A patent isan exclusive right granted for an invention whether product or process in all fields of technology provided it should be new , involve an inventive step and capable of industrial application (Art 27.1 of ‘TRIPS Agreement). Generally speaking a patent provides the patent owner with the right to decide how or whether the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publically available in the published patent document. An invention is said to be new if it has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of the patent application i.e. the subject - matter has not fallen in public domain or does not form part of the ‘state of the art’.(Sec 2(1)(I)of the Indian Patent Act 1970) However, the phrase state of the art is not defined in the Indian Patent act . Under the English law it is defined thus ;‘ the state of the art in the case of an invention shall be taken to compromise all matter (whether a product , or process, information about either , or anything else ) which has at any time before the priority date of that invention been made available to the public (whether in UK or elsewhere ) by written or oral description , by used or in any other way’.(sec2(2) of the British Patent Act ) Ifthe invention is new, further inquiry must be made to find out whether it is “new enough”, thatis not obvious toa person with ordinary skill in the art. Inventive steps is defined under the patents Act to mean “a feature of the invention that involves technical advance as compared to the existing knowledge or having economic significant or both and that makes the invention obvious to the [person skilled in the art”. (Sec 2(1)(ja) of Indian Patent Act 1970) There are no universally accepted standards for testing the requirements of novelty or inventive step. The standards of novelty and inventive step differ from country to country and from time to time. PATENTABLE INVENTION Apart from the minimum requirements for being patentable there are some more limitations on invention with respect to their patentability. However certain inventions are considered to be not patentable. Thus a mere discovery ofa scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature are not considered to be inventions. There are also some other inventions which are excluded from patentability. Some are also considered to be not inventions, mainly for the sake of protecting public interest(Sec3of Indian Patent Act1970). Patentability of invention resulting from new technological advancements like computer programs and inventions arising out of biotechnological and pharmaceutical researches were subject-matter of serious debates due to the nature of technology and the complications involved in those types of inventions. 1Pharmaceutical Invention One of the areas that attracted maximum public attention and debate after India joined the WTO and started implementing the TRIPS obligations, is patenting of invention relating to pharmaceutical products The replacing of process patent regime by product patent in the field of pharmaceutical products, it was feared, posed serious challenge to indigenous industry which flourished under the process patent regime. It is an accepted fact that India has a strong industrial infrastructure to manufacture generic variety of new drugs within a short period of time at affordable cost. It is worrying that these industries may lose the advantage they enjoyed and the cost of the medicines may go up .There was also an argument that since the Indian R &D on invention of new drugs is very weak the benefit of the new system is going to be enjoyed by the multinational corporation from outside India . ‘Another concern was relating to the mailbox applications pending in India. By 2005 more than 4790 applications for pharmaceuticals have accumulated in the mail box. Therefore, there was concern as to what would happen to the generic drugs which are already in markets, when product patent is granted to the mail box applications. ‘The public interest involved in providing access to medicine, particularly life saving drugs, to large number of people in India who could not afford costly medicines, prevailed in formulating the patenting policy on pharmaceutical substance. To achieve this, the Patent Act was amended in 2005, carefully defining inventions, inventive step, pharmaceutical substances, excluding new use of existing invention etc. But soon after the amendment, the validity of some of the provision was questioned in the following case Novartis AG v Union of India-the constitutional validity of sec 3(4) was challenged by Novartis before the Madras HC. In this case, Novartis filed for a patent over Imatinib Masylate, which was her salt form of the patented molecule, Imatinib. Imatinib Masylate, commonly called as Glivec is usedfor cancer treatment. The patent application was rejected by the controller and the appellate board under sec 3(d) of patents act on the ground that it was. salt form of known substances. Novartis filed a writ petition before the HC of ‘Madras challenging the Constitutional validity of sec 3 (4) ‘The court held that it did not have the jurisdiction to decide on the question of the compliance of the TRIPS agreement and that the Dispute Settlement board of the WTO was the right forum for such a question. With regard to the second contention, the court held that Sec 3(d) of the act was not vague, ambiguous, and. arbitrary and, therefore , would not violate Art 14 of the Constitution of India. The courtstated that the sec along with the explanation was very clear and had inbuilt measures under the act to guide the controller. ‘As per the court, in order to get patent protection over the new form ofa known substance, efficacy could be proved by showing a better therapeutic effect by the new form, which could be shown by scientific and objective evidence. It also stated that the derivative of a substance should have a better efficacy than that of the substance in order to be patentable. ‘As the section was not vague and as there were well laid down guidelines and checks based on which the Controller would use his discretion, the Court held that the section was not arbitrary and does not violate Article 14 of the Indian Constitution. Invention relating to Living Organism Patenting Biotechnology related invention is another area that cost serious concern. There was conceptual as well as practical reason for excluding invention related to living organism for the scope of patent law. The conceptual issues included the legal and ethical justification in giving private property rights over life. The practical reasons involved the requirement of the written description of the invention and the productions of samples, But the developments that took place in the biotechnology towards the end of last century resulted in finding solutions for these issues and countries, particularly US started granting patent to invention relating to life forms. The decision of the US Supreme Court in Diamond v. Chakbarchy 12(447 US 303 1980) set the stage for the beginning of a new era for life patenting. This was accepted in Article 27 (3)(b) of the TRIPS Agreement. In India, in the year 2002, a vaccine for infectious burstitis virus poultry was held to be patentable subject matter by the Calcutta HC in the case Dimminaco AG v. Controller of Patents (IPLR 2002 July 255 Cal). Protection of Computer Programs ‘The scope of patent protection for computer program related invention in India isstill a matter of debate. The 2002 amendment Act, introduced the section 3(k) of the Patent Act the following provision: “a mathematical or business method or a computer program per se or algorithms” are not patentable. This leads to the serious debate on the coverage of the type of computer related inventions for patent protection in India. PATENT ACTS IN INDIA The Indian Patents and Designs Act was enacted in1911 when the country was under foreign rule. Since then there have been substantial changes in the political and economic conditions of the country. The need fora comprehensive law to ensure more effectively that patent rights are not worked to the detriment of the consumer or to the prejudice of trade or the industrial development of the country was felt as early as 1948. In the year the Government appointed the Patents Enquiry Committee to review the working of the patents Enquiry Committee to review the working of the patents Enquiry Committee to review the working of the Patents Law in India. The committee submitted its final report in 1950. The Patents Bill, based largely on the United Kingdom Patents Act, 1949 and incorporating some of the recommendations of the committee was introduced in the Lok Sabha on 7 December, 1953. The Bill, however, lapsed on the dissolution of the First Lok Sabha. In 1957, the Government of India appointed Justice [Link] Ayyangar to examine afresh and review the Patents Law in India and advise the Government on changes necessary. The Judge submitted a comprehensive Report on Patents Law Revision in September, 1959. The Patents Bill, 1965, based mainly on the recommendations contained in his detailed report and incorporating a few more changes in the light of further examination made particularly with reference to patents for food, drugs and medicines, was introduced in the Lok Sabha on 21* September, 1965. This Bill was referred on 25'* November, 1965 toa Joint Committee of Parliament. The Joint Committee after a careful consideration of the matter, adopted a number of amendments to the Bill. The Report of the Joint Committee with the amended Bill, was presented to the Lok Sabha on 1* November, 1966. The Patent Bill, 1965, as reported by the joint Committee but could not be proceeded with for want of time and eventually lapsed with the dissolution of the Third Lok Sabha on 3 March, 1967. ‘The Bill contained comprehensive provisions to amend and consolidate the existing law and also contained amendments/recommendations by the Joint Committee. ‘The patents Bill was passed by both the Houses of Parliament. It received the assent of the President on 19" September, 1970 and came on the Statue Book as THE PATENTS ACT, 1970. Principles Underlying the Patent Law in India. Following Principles are the Basis on which patent law is enacted. (1) Invention must be new, useful and non-obvious. (2) Invention must be disclosed fully. (3). Patent confers exclusive rights to use the invention. 13(4) Some restricted uses of patented invention are permitted under law. 6) Use by person other than a patentee without the patent holder's consent will result in infringement. ‘Asmentioned above an invention must be new and useful. Italso must to non-obvious toa person possessing average skill in the art. What is obvious to a person skilled in the art cannot be patented. For instance, but it may be obvious to a carpenter. Such obvious invention may not be patentable. For this purpose there should be (@) newness (b) usefulness (c) non-obviousness ‘The elements of novely means newness. The invention should be something new compared to existing knowledge. Ifthere isa prior use or prior publication, there is no newness. This is the basis on which India challenged granting of patent for turmeric in U.S.A. The utility of invention is also significant. If a new invention is not capable of being put to use there is little utility in patenting, They will simply become models. Patent Act in India requires utility for patenting a product. A Patentable Invention Must be new Must be non-obvious ‘Must be useful However invention of the following categories are not patentable. (1) those inventions which are injurious to public health or contrary to law or morality. (2) new method of agriculture of Horticulture. (3) aprocess of treatment of human beings, animals or plants. ‘To great a patent itis essential that the inventor should disclose his invention fully and absolutely. This is done by the inventor while filing complete specification in the patent office. The complete specification disclosing all the aspects of invention is a statutory requirement under the Patent Act. The application can be opposed and challenged by any interest party. In certain cases Central Government may use it by acquiring exclusive right of the patent. In such cases such an invention cannot be put to general use. Central Government may compensate the inventor upon termsas may be agreed upon either before or after the use between the Central Government and the patentee. In default of agreement, it may be determined by the High Court $.100(3)]. Use of an invention may be permissible for research and experimental purpose [S. 47 93)]. ‘When a person other than patentee or his assignee or licensee uses such an invention it will result in infringement. Infringement entitles the owner to claim compensation. Patents Relating to Medicines, Food Items & Chemicals. Patent Act accords special status to patents relating to medicines, food items and chemicals, In India there was only process patent for such items till 31.12.2004, From 1.1.2005, product patents may be granted for such items. 14With effect from 1.1.95, Sections 24-A to 24-F of the Act provide for the grant of exclusive marketing rights. Exclusive Marketing Rights The rights are granted for the following inventions (1) All medicines for internal and external use of human beings and animals. This may relate to new inventions. (2) All substance used for diagnosis, treatment, mitigation or prevention of diseases in human beings oranimals. (3) Allsubstance intended to be used for public health or control of epidemics among human beings and animals. (4) Insecticide, Germicides, Fungicides, Weedicides and all other substance for protection and preservation of plants. (5) All chemical substances used as intermediates in medicines. The Controller of patents can on an application for grant of exclusive right for selling and distribution of articles or substances in India, which have been already patented elsewhere in the world can permit exclusive marketing right. Such applications are got examined b the Controller for seeing whether the invention is not an invention under section 3 or the invention is not a patentable one in terms of section 4. Such applicants were given exclusive marketing right upto 31" day of Dec, 2004. After that date, these applications will be examined on request and patented in India, Such rights for marketing a product till a product patent is granted for it are called exclusive marketing rights. It is allowed for a period of 5 years or till the grant of patent of rejection of application, whichever is earlier. The Central Government has got powers to enforce regulations in regard to exclusive marketing rightsand fix the price for the said article or substance [$ 24A (2)]. Patent Act has been amended to enforce product patent in India and to make patent laws in tune with international patenting system. SUBJECT MATTER OF PATENTS A patent relates to registering of an invention or a modification thereof. It also include patent addition. It confers a right of monopoly on the patent owner. As an intellectual property the Patents Act aims to promote inventions and scientific improvement of products. Thus the basic subject matter of patent is a product or any patent addition thereto. In Section 2(1) (i) of Patents Atc, 1970 invention is defined as follows: “Invention” means any new product or process involving an inventive step and capable of industrial application. Section 2 (1) (ja) defines inventive step. According to it “inventive step” means a feature that makes the invention not obvious to a person skilled in the art When improvements are patented it should result in a more useful or economic product. Ifa result produced is either a new article or a better or a cheaper article then it will be entitled toa patent, ‘To be patentable an invention must relate to new product or, process, involving and inventive step and capable of industrial application. 15INVENTION which are not patentable Sections 3 and 4 of the Indian Patents Act, 1970 list the following as not inventions within the meaning of the Actand therefore, unpatentable:~ a Q) 8) () 6) (10) ayy 12) (13) a4) (1s) (16) (17) An invention which is frivolous or which claims anything obviously contrary tothe well established natural laws ‘An invention, the primary or intended use of which would be contrary to public order or morality or which causes serious prejudice to humai, animal or plant life or health or to the environment. ‘The mere discovery ofa scientific principle or formation of an abstract theory or discovery ofany living thing or non-living substance occurring in nature. ‘Theory of relativity, is an instance of abstract theory not patentable. ‘The mere discovery of any new property or hew use for a known substance or of the mere use of a known process, machine, or apparatus unless such known process results in a new product or employsat least one new reactant. A substance obtained by a mere admixture resulting only in the aggregation of the prosperities of the components thereof or a process for producing such substance. ‘The mere arrangement or rearrangement or duplication of known device each functioning independently of one another in a known way. ‘A method of agriculture or horticulture. ‘Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products. Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals, ‘A mathematical or business method or a computer program per se or algorithms; ‘Aliterary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; ‘A mere scheme or rule on method of performing mental act or method of playing game; A presentation of information; Topography of integrated circuits; ‘An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components (section 3). ‘An invention relating to atomic energy (section 4). In respect of food, medicine or drug, patents are granted only for the method or processes of ‘manufacture of the substance but not the substance themselves. However, in respect of substances themselves intended for use or capable of being used as medicine or drug except chemical substances which are ordinarily used as intermediates, application for patent can be filed in the manner provided in the Act. 16(18) In respect of substance prepared or produced by chemical processes or including alloys, optical glass, semi-conductors and inter-metallic compounds patents are granted only for the process of manufacture but not for the substances themselves. From 1-1-2005 inventions of substances capable of being used as medicine or drug are entitled to product patents. Illustration (1) Aprocess of treating malignant tumour cells is not patentable. (2) Asystem for aiding hearing was not considered a method of treatment and was granted a patent. (3) Amethod of reducing gastric secretion in mammals by administration of certain compounds was considered unpatentable as it was a method of treatment. (4) Aclaim fora novel use of old chemical compound for treatment of human disease has been held not patentable. (5) Acclaim for product patent for a medicine could not be entertained till 31-12-2004. Patent Addition Ifperson who has applied for patent or a person who has already obtained a patent makes an application to the Controllerin respect of any improvement in or modification of an invention described or disclosed in the complete specification of the invention, the Controller may grant patent for such improvement or modification, Such patent for improvement or modification is termed a Patent of Addition (Section 54). Where an invention being an improvement in or modification of another invention is the subject of an independent patent and the patentee in respect of that patent of improvement of modification is also the patentee in respect of the patent for the main invention, the controller may, on request of such patentee revoke the patent for improvement or modification and grant to the patentee a patent of addition bearing the same date as that of the patent so revoked (5.54 (2)]. Terms of patent Addition A patent of addition shall be granted fora term equal to that of the patent for the main invention or for so much of the term for the patent for main invention as has not expired (S.55).. Process Patent ‘A patent can be granted for anew and useful; (1) Product, or (2) Process ‘The definition of the term “invention” includes a new process involving an inventive step. This means even a process can be patented if the process results in production of a new article or a more useful or cheaper article than that produced by old method. In some cases it has been held by courts that a process may itself be patentable even it there is no production of a new or better article. Such process can be found in the drug industry where a new process of a manufacture of an already known drug is patentable. In fact the Act recognizes only the process patents in foods and drugs, and not product patents in them up to 31-12-2004. From 1-1-2005, such items are also eligible for product patents. 17Biotechnology and patents Biotechnology isa study dealing with the practical application of living organisms or industrial purposes. Modification and application of living beings for different purposes is possible through biotechnology. The inventions of biotechnology interfered with life and hence they were formerly frowned upon by society on moral considerations. Hence the old view was that living beings should not become a subject of patent monopoly. Latter, with the production of non-natural living beings through biotechnology and their practical application for various purpose patenting of living organisms was considered justified. Hence a new approach emerged. Accordingly, it was recognized that creations of God or Nature could not be patented while creations of men involving the application of human intelligence to natural things could be patented. Thus in diamond [Link] (1980) US 404/the Supreme Court of America upheld the grant ofa patent fora micro-organism. In this case the inventor genetically modified the bacteria to inject capacity to clean up oil spills. INTERNAITONAL ASPECTS OF PATENTS ‘The modern patent law is largely governed by Section 5 of Part II of TRIPS Agreement and WTO guidelines. International covnetions relating to patent ar the following (1) Paris Convention for protection of Industrial property, 1967. (2) Patent Co-operation Treaty, 1970. (3) Budapest Treaty on international Recognition of the Deposit of Micro Organisms, 1980. (4) Eurasian Patent Convention. (5) Strasbourg Agreement on Classification. (6) The European Patent Convention, 1973. TRIPS Agreement largely focuses on the following aspects: (1). Patentable and non-patentable subject matter. (2). Rights conferred on the owner of patents (3) Exceptions to the rights of the patent owner. (4) Use of subject matter of patent without authority. (5) Aspects of process patents. Paris Convention, 1967 was largely for analyzing scope of industrial property. The concepts of national treatment and most favoured nation treatment have been incorporated in it. ‘The process of compulsory licence and industrial property services are covered under this convention. The right to make special agreement between member of the convention isalso covered under this convention. 18INTERNATIONAL ASPECTS OF PATENTS ‘The modern patent law is largely governed by section of part IT of TRIPS Agreement and WTG guidelines. International conventions relating to patent are the following 1. Paris Convention for Protection of Industrial Property, 1967. Patent Co-operation Treaty,1970. Budapest Treaty on International Recognition of the Deposit of Micro Organisms, 1980. Eurasian Patent Convention. Strasbourg Agreement on Classification. aye wN The European Patent Convention,1973. ‘TRIPS Agreement largely focuses on the following aspects: 1. Patentable and non-patentable subject matter. Rights conferred on the owner of patents. Exceptions to the rights of the patent owner. ‘Use of subject matter of patent without authority. yor we oN Revocation or forfeiture of patents, and 6. Aspects of process patents. Paris Convention, 1967 was largely for analyzing scope of industrial property. The concepts of national treatment and most favored nation treatment have been incorporated in it The process of compulsory license and industrial property services are covered under this convention. The right to make special agreements between members of the convention is also covered under this convention. In Patent Co-operative Treaty, 1970 certain modifications relating to Paris Convention was done. This is a special agreement and was open to any country that isa member of Paris Union. Protection was available among convention nations. The procedural aspects of international application and international search ‘were new areas covered by this convention. It is this convention which increases the scope of World Intellectual Property Organization [WIPO] asa bureau for international patenting. Budapest Treaty, 1980 was special agreement under Paris Union monitored by WIPO. It was mainly focusing on deposit of micro-organisms. The convention provided for an International Depository Authority. Such authorities have to comply with certain requirements. These requirements include acceptance of deposits, period of storage, the right of deposit, viability of testing, secrecy, furnishing of samples and import and export restrictions. Eurasian Patent Convention isalso.a special agreement under Paris Convention. This treaty allows regional arrangement among members. These nations are basically countries which collapsed from the Union of USSR. Official language of the convention is Russian. Eurasian paten is given for any invention that is new. The validity of the patent is determined by the national courts of each member country. 19Strasbourg Agreement isa special agreement under Paris union which provides for classification of patents. European Patent Conventions, 1973 contained various protocols which are in the nature of regional agreement. Itis intended to protect the patents in the European countries which are members of Paris Union. ‘The Patents Act, 1970 as amended up to 2002 has codified various international treaties and conventions on patent law. GRANT OF PATENTS AND THEIR WORKING Indian Patent Office is situated at Calcutta, There are regional offices for patents in Mumbai, Chennai and Delhi. The Controller of Patents is the head of the Department. There are technical experts to scrutinize the inventions field under Patent Act. “Application has to be submitted in prescribed form as per rules to the concerned regional office along with provisional specification. On receipt of application, it will be scrutinized meticulously by patent examiners who are technical experts. The examined patents will be further examined based on complete specifications filed by the applicants within 12 months normally or 15 months from the date of filing of the original application. ‘Application for patents shall not be open to the public for a period of eighteen months from the date filing or priority date whichever is earlier. On the expiry of that period it shall be published normally (S11). ‘The inventions will be published in Patent journals and extra ordinary Gazette. Any interested party can oppose the grant of patent for the invention. ‘After hearing both the parties the Controller of Patents decides the matter. Ifthe application is not opposed or if opposition is decided in favour of the applicant he will seal the patent with patent number. Thus a patent isan invention approved by patent authority after duly complying with the provisions of Patent Act. ‘This patent will be identified by its patent number. Procedure for Acquisition of Patents Application for patent (Section 6) Reference of application to examiners (Sections 11B&12). Examination of application by examiner, search and investigation (Section 13). Acceptance of complete specifications and advertisement in the Gazette (Sections22&23). Opposition to Grant of Patent (Section 25). Granting and sealing of patent(Section 43). Inthe process of scrutiny of patent application the Controller of Patents has the following powers: 1. Power to make orders relating to division of application.(Section 16). 2. Powerto make orders relating to dating of application(Section 17) 3. Power to accept or refuse application, ifthe applicant fails to amend the complete specification as directed by the Controller(Section 18). 4, Powersto reject application on the grounds of potential infringement (Section 19). 5. Power to make orders for substitution of application (Section 20). 20Opposition to grant of patents is usually made on the following grounds. 1. Wrongful obtaining of invention,{Section 25 (a)). Publication of invention before date of claim, [Section 25 (b)]. Prior use of invention claimed in India, [Section 25 (4)].. Existence of similar complete specifications in an earlier claim [Section 25 (c)]. Lack of inventiveness, [Section 25 (e)]. Invention not patentable and [Section (8). Failure to give adequate disclosures. [Section 25 (g)]. Failure to furnish information regarding foreign applications [Section 25(h)]. SPN Awe wn In the case of convention application, failure to make the application within twelve months from the date of First application [Section 25 (i). 10. Non- disclosure or wrong mention of source of geographical origin of biological material used [Section 25 (j)] 11. Invention anticipated according o the knowledge of any or local indigenous communities. [Section 25 (k)) Sealing of patent will be usually done on expiry of six months from the date of acceptance of complete specification (Section 43]. However, such patents can be amended. Under Section 45 of the Patent Act every patent should be dated as ofthe date of which complete specification was filed. Thus the actual date of patent will be backdated to the date of filing complete specification. ‘The Government of India enjoy vast powers in respect of patented articles, goods, processes and medical drugs, to import them for is own use or use the invention for the public purpose, in spite of patens granted to them [Section 100]. Similarly patented articles may be used for research, experiment and teaching by others also [Section 47 (3)] Provisional and Complete Specification As mentioned abovea patent application is initially accompanied with a provisional specification. Within 15 months the applicant for patent has to file complete specification in respect of that invention. Provisional specification is a provisional description explaining the salient features of an invention. The overall nature of invention is explained in it. The idea is to give a bare explanation as to the nature of invention to be patented. Detailed or complete specification on the other hand, contains, analytical and diagrammatic description with explanatory note on the invention, When detailed or complete specification is filed this will be analysed by patent examiners, Patent will be published for opposition and sealed only based on complete specification. If complete specification is not field the patent authorities will reject the patent application. In such cases a fresh application has to be submitted for obtaining a patent on that invention, along with a complete specification. Drafting of complete specification is a technical work. It requires professional skill and experience. 21Rights conferred on a patentee [A patent is a great conferring certain monopoly rights on the granted for a definite period, subject to certain conditions. A grant of patent gives the patentee exclusive right to make, use of the patented article or process. Apart from this righta patentee has also the powers to assign the patent, grant licencesand deal with if for any consideration. ‘The following are the rights of patentees: Make Use Exercise Patent Right Sell Distribute (1) Right to use the patent: A patent holder has exclusive right to exploit the patent. A patent can be used for manufacturing the patented article or substance [$ 48 (a)]. (2) Right to assign and licence: A patent owner can assign or licence his invention to any third party. Such assignementsand licences have the attributes of dealing with property and have to registered [Ss.69 & 69, 70]. (3) Rightto surrender the patent: Under Section 63 of the patent Act a patent owner can after giving proper notice in the prescribed manner and in prescribed time, surrender his patent invention. Such surrender will be accepted by the Controller after proper advertisements in the patent journals. This is to ensure protection of interest of persons who are interested in the patent|S. 63]. (4) Right before sealing: The patent application has the privileges and rights as if the patent has been sealed on the date of advertisement of acceptance. But he shall on the date of advertisement of acceptance. But he shall not be entitled to institute proceedings for infringement until the patent has been scaled [S. 24] (5) _ Right to Patent Addition: Any improvement or modification or an invention can be subjected to patent addition [S. 54]. (©) _ Right against infringements: In case of patent infringements he patent owner has right to institute suits in District courts having proper jurisdiction. The patentee may bring a suit of declaration, injunction and also for damages and account of profits [S. 108]. (7) Right to make convention application: Every patentee has a right to make application or protection in other convention countries. This is based on the principle of “reciprocity” and “national treatment” in international law. (8) Right to issue duplicate patent: When a patent certificate is lost or destroyed, the patent owner hasa right to apply and obtain in duplicate certificate. ‘The rights of patentees are not absolute, as they are subject to certain limitations mentioned here under: a) ) Such invention can be used by any person for the purpose of research and experiment [S.47 (3)]. Such inventions which are patented can be used by the government as its discretion. The government may also import such products [S.47(4)]. 22(3) _Ifsuch inventionsare not worked properly within a reasonable time, the government may apply to the Controller to order revocation of the patent on the ground of non working [5.33]. (4) Defense invention: When inventions are relevant for defence purpose, the Controller can restrict or prohibit the publication of such inventions. The Central Government may use such invention by restricting the applicants from further use of such inventions [S. 33]. (5) Whenavessel or aircraft of foreign origin arrives in India temporarily they can use invention within the aircraft or ship. Such use shall not be deemed to be an infringement of patent rights [S. 49]. The Central Government may move the High Court to revoke monopoly rights granted to any inventor. This will be usually done when there is failure to comply with Governments request for using the invention for purpose of Government [S. 64). The patentee should submit periodical statements to the Controller as to the working of his invention in India. Non-submission of such information is punishable. ‘Transfer of Patents A patent isan intellectual property. A patent holder can sell, lease, dispose, license, mortgage of do any act which is reasonably possible in any kind of property. The effect of such transfer is that the transferee will get the right over such properties. Any dealing in patent right isto be registered with the Controller of patents. Thus itis property which can be subject to transfer. General Principles applicable to working of patented inventions are given below: (a) _ Patents are granted to encourage inventions and to secure that the inventions are worked in India on acommercial scale and to the fullest extent that is reasonably practicable without undue delay; (b) They are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article; (©) The protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology; to the mutual advantage of producers and users of technological knowledge and ina manner conductive to social and economic welfare, and toa balance of rights and obligations; (@ _ Patents granted do not impede protection of public health and nutrition and should actas instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India. (©) Patents granted do not it any way prohibit Central Government in taking measures to protect public health; () The patent rightis not abused by the patentee or person deriving title or interest on patent from the patentee, and the patentee or a person deriving title or interest on patent from the patentee does not resort to practices which un-reasonably restrain trade or adversely affect the international transfer of technology; and (g) _Patentsare granted to make the benefit of the patented invention available at reasonably affordable prices to this public [S. 83]. 23Revocation of patents (1) A patent, whether granted before or after the commencement of this Act, may, on the petition of any person interested or of the Central Government or on a counterclaim in a suit for infringement of the patent, be revoked by the High Court on any of the following grounds, that is to say, @ (>) © @ © © @) ) @ (m) (n) ‘That the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India; That the patent was granted on the application ofa person not entitled under the provisions of this Act to apply therefore; ‘That the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under of through whom he claims; ‘That the subject of any claim of the complete specification is not an invention within the meaning of this Act; ‘That the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publitly known or publicly used in India before the priority date ofthe claim or to what was published in India or elsewhere in any of the documents referred to in Section 13, ‘That the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim. ‘That the invention, so faras claimed in any claim of the complete specification, is no useful; ‘That the complete specification does not sufficient and fairly describe the invention and the method by which itis to be performed. The description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention. The specification does not disclose the best method of performing the invention which was known to the applicant for the patent and for which he was entitled to claim protection; ‘That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification; That the patent was obtained on a false suggestion or representation; ‘That the subject of any claim of the complete specification is not patentable under this Act. ‘That the invention so farasclaimed in any claim of the complete specification was security used in India, otherwise than for reasonable trial or experiment or Government use, before he priority date of the claim; ‘That the applicant for the patent has failed to disclose to the Controller the information required by Section 8 regarding foreign application or has furnished information which in any material particular was false to his knowledge; ‘That the applicant contravened any direction for secrecy passed under Section 35 (or made or caused tobe made an application for the grant, of a patent outside India in contravention of Section 39); 24(0) @ @) ) @ (b) © (4) That leave to amend the complete specification under Section 57 or Section 58 was obtained by frauds That the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention; That the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous ‘community in India or elsewhere [Sec. 64(1)]. For the purposes of clauses (e) and (f) above relating to lack of novelty and invention step, the following exceptions will apply:- (a) No account shall be taken of personal document or secret trial or secret use; and (b) Where the patents for a process or fora product as made by the claimed process, he importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention, on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only [Section 64 (2)] For the purpose of Clause I above relating to secret use, the following exceptions will apply: No account shall be taken of ay use of the invention- For the purpose of reasonable trial or experiment only; or By the Government or by any person authorized by the Government or by a Government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or to an authorized person as aforesaid or toa Government undertaking; or By any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without ‘ the consent or acquiescence of the applicant or of any person from whom he derives title [Section 64 (3)]. A patent may be revoked by the High Court on the petition of the Central Government, if the High Courts satisfied that patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of Section 99 upon reasonable terms [Section 64 (4)]. A nnotice of any petition for revocation of a patent under the section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person [S$ 64(5)]. Compulsory licenses ay @ () © Atany time after the expiration of three years from the date the sealing of a patent, any person interested may make an application to the Controller for grant of compulsory license on patent on any of the following grounds, namely: That the reasonable requirements of the public with respect to the patented invention have not been satisfied, or ‘That the patented invention is not available to the public at the reasonably affordable price, or That the patented invention is not worked in the territory of India.[$84(1)]. 25Factors to be taken into while granting compulsory licenses In considering the application filed under this section, the Controller shall take into account: 1. the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention; 2. Theability of the applicant to work the invention to the public advantage; 3. The capacity of the applicant to undertake the risk in providing capitaly and working the invention, if the application were granted; 4, Astowhether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit [S.84 (6)]. Terms and conditions of compulsory licences (1) Insetting the terms and conditions ofa compulsory licence under Section 84, the Controller shall endeavor to secure. (i) _ thatthe royalty and other remuneration, ifany, reserved to the patentee or other person beneficially entitled to the patent, is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant factors: (ii) thatthe patented invention is worked to the fullest extent by the person to whom the licence is y the pe granted and with reasonable profit to him; (iii) ‘That the patented articles are made available to the public at reasonably affordable prices: (i) thatthe licence granted is non-exclusive licences (ii) that the right of the licensee is non-assinghable; (iii) that the licence is for the balance term of the patent unless a shorter them is consistent ‘with public interest; (iv) that the licence is granted with a predominant purpose of supplying in Indian market and in the case of semiconductor technology, the license granted isto work the invention for the public non- commercial use and in the case, the licnece granted to remedy a practice determined after judicial oradministrative process to be anticompetitive, license shall be permitted to export the patented product ($90). Surrender of patent (S.63) [A patentee may offer to surrender his patent at any time by giving notice in the prescribed manner to the Controller. Where such an offeris made, the Controller should advertise the offer in the prescribed manner and should also notify every other interested person whose name appears in the register. Thereafter any person interested should give notice to the controller, of opposition to surrender and the Controller should notify the patentee, of such opposition. The person who may oppose include co-patentee, license licensees, assignees, and the mortgages. If the Controller is satisfied, after hearing both the parties that the patent can property be surrendered, he may accept the offer and by an order revoke the patent. 26Revocation of patent (S. 64) ‘A Patent may be revoked in may way; (i) revocation in the public interest by the Central Government (S. 66); (ii) revocation of patents relating to atomic energy by the Controller (S. 65); (iii) revocation for non- working (S. 85); (iv) revocation by the High Court on petition for failure to comply with the requirements of the Central Government to use the invention (S. 103); and (5) specified grounds (S.64). Of these modes, the most common form of revocation is the last one. The following are the usual grounds for revocation: Patents can be revoked on several grounds as shown below: A. Default or Lapse on the part of the patentee The petitioner who seeks revocation of a patent may invoke any of the following grounds. (@) That the patentee is not entitled to the patent [S. 64(b)] (b) That the patentee had obtained the patent wrongfilly [S.64(c)] (©) That the patentee obtained patent by false suggestion or representation [S.64(k)] (@) That there was failure on his part to disclose information regarding foreign applications (S. 39 & S. 64 (m)] (©) That there was non-compliance with directions for secrecy [S. 64 (n)] and () That the leave to amend the complete specification was obtained by fraud [S. 64(0)] B. _ Grounds relating to the patentability of the invention and its quality: These grounds include the following: (a) Subject of the invention is not patentable [S.64 (k)] (b) Subject of claim is not an invention [S. 64(d)] (©) There was prior secret use of the invention before the priority date [S. 6491)] (d) The invention is one anticipated or lack of novelty [$.64 (q)] (©) There is obviousness or lack of inventive — step [S. 649f)] () Invention is not usefal [S. 64(g)] (g)__ Invention is already the subject matter of a prior grant [S.64(a)] C. Grounds relating to the description of invention: As regards the description of the invention, a petitioner for revocation may plead any of the following grounds viz. (i) Insufficient description of invention and non-disclosure of best method of performing the invention [S.64(h) Gi) Unclear definition of the claims and claims not fairly based on matter disclosed in the specifications (S.64(i)] A formula published in an International Report and its common name in respect of which there was no patent would be the property of public and any subsequent patent granted to it is liable to be revoked. 27In Monsanto Co. v. Coramandal Indag Products Pvt. Ltd. (AIR 1986 SC 712) the Supreme Court revoked the patent granted in respect of Butochlor, a herbicide on the ground of prior art and observed that emulsification is no new discovery. INFRINGEMENT OF PATENTS The Patent Act has not defined as to what constitutes an infringement. It is usually understood as violation of the monopoly rights of the patentee to make, use, exercise, sell or distribute the invention in India. “Any person who manufactures a patented article without authorization or uses a patented process likewise is an infringer. Innocent use of patent for experiments and instruction, use of invention in foreign vessels etc. are not considered as infringement. When infringer adopts all the essential features claimed in a patent, it will be a direct infringement. When infringer adopts some of the essential features of a patented product itis called indirect infringement or “colourable imitation”. Copying of essential feature of any invention is referred to as adoption of “Pith and marrow” of the invention. Infringement during the Manufacture and After Manufacture. ‘While manufacturing a product or using a process for manufactures which is already patented, by anon- owner there will be infringement during manufacture. The list of infringing acts after manufacture includes: (i) disposing of patented products manufactured by a person who isnot a patent owner and (ii) the use of chemical equivalents in place of chemicals used in the patented process. When an invention consists ofa number of parts acting on each other ina particular manner, it must shown that the in fringer’s selection as well as arrangement of parts is substantially same, to place it under infringement. When there are 6 features in an invention and when one, of these features is copied then there will be no infringement. Action against infringement When a patent is fringed, action for violation is to be brought within a period of 3 years. No notice of infringement to the defendant before filling a suit is necessary. ‘The right to sue for infringement belongs to the patentee. The exclusive lincensee can also sue for violation. Suit can be also field by an assignee or a co-owner. ‘Any person who infringes the patent may be used for infringement by any of the following persons. (1) importers, (2) Dealers, (3) servants, (4) agents or (5) even users of patented article Defences Available for patent Violations (1) Plaintiffis not entitled to sue for infringement. (2) Theallegation of infringements is false: 28(3) There was permission or licence to use the inventions; (4) _ The principle of stopped or resjudicata is attracted; (5) The claims alleged to be infringed are invalid; (6) Theexistence of restrictive contract is declared unlawful; (7) Theact complained is covered within the scope of innocent infringement or done after lapse of patent; (8) Thealleged infringement is not novel ort is obvious and (9) The other grounds mentioned in section 64. Remedies Available against Infringement An action for infringement of a planet may be instituted in District Court or a High Court having competent jurisdiction. Provisions or Civil procedure Code, 1908 have to be followed for conducting suit for infringement. A suit for infringement can be filed only after the patent is sealed. ‘The reliefs available in case of infringement of a patent include: (1) aninjuntion; and /or (2) damages; or (3) anaccount of profits; or (4) anorder for deliver—up or destruction (5) certificate of validity, and / or (©) costs Burden of proofin suits concerning infringement. Burden of proof in infringement suits in accordance with TRIPS Agreement, Patent Acthas been amended to shift the burden of proof form the plaintiff to the defendant in suits relating to infringement of patents. The new provision is a follows:- Burden of proof in case of suits concerning infringement — (1) _ Inany suit for infringement ofa patent, where the subject matter of patent is a process for obtaining product, the court may direct the defendant to prove that the process used by him to obtain product, identical to the products of the patented process, is different from the patented process if- (@) the subject matter of the patent is a process for obtaining a new product, or (©) _ thereisa substantial likelihood that the identical product is made by the process, and the patentee ora person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used: However the patentee or a person deriving title or interest in the patent from him has first o prove that the product is identical to the product directly obtained by the patented process. 29(2) inconsidering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, ifit appears to the court that it would be unreasonable to do so. [Section 104 A] Patent Agents To practice asa patent Agent under the Act, a person has to get his name registered as a patent Agent by making application in the prescribed form on the Head Office or the Patent Office. Qualifications ofa Patent Agent A person shall be qualified to be a patent Agent, if he is a citizen of India, has completed 21 years of age, had obtained a degree in science, engineering or technology from any university and is an advocate or, has passed the qualifying examination for the purpose and has paid the prescribed fee. Rights of Patent Agents Every Patent Agent shall be entitled to practice before the Controller and prepare all documents, transact all business and discharge such other functions as may be prescribed by the Controller. Patent Agent is authorized to sign all applications and communications to the Controller on behalf of the person concerned, upon his being authorized in writing to do so by that person. Disqualification for Registration As patent Agent Every patent Agent shall be entitled to practice before the Controller and prepare all documents, transact all business and discharge such other functions as may be prescribed by the Controller. Patent Agent is authorized to sign all applications and communications to the Controller on behalf ofthe person concerned, upon his being authorized in writing to do so by that person. Disqualification for Registration As patent Agent No person is eligible to be registered as a patent agent, if he competent court; (i) has been adjudged to be of unsound mind by a competent court: (ii) isanundischarged insolvent; (iii) being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part; (iv) has been convicted by a competent court whether within or outside India of an offence to undergo aterm of imprisonment; or (v) _ beinga legal practitioner as been guilty of professional misconduct; or (vi) beinga chartered accountant, has been guilty of negligence or misconduct. Exclusive Marketing Rights (EMRs) Exclusive Marketing Right is granted as a temporary measure to bring sell or distribute products which are patented abroad including pharmaceutical and agricultural chemicals, pending grant of product patent in tune with TRIPS Agreement. There is a mail box arrangement for filling applications for product patents ‘upto 31.12.2004, Product patented abroad, is recognized and accepted in India under EMR. Till, the formalities for product patent are completed such applications will be allotted Exclusive marketing rights (EMRs). 30[Link] constitute a monopoly right given tothe patent applicant even before grant of patent protection / right. This means that the applicat can distribute and market his product without a patent in India. It is proposed that such grantee of EMRs will be granted patent for pharmaceuticals and agricultural chemical on expiry of 10 years from the date of enforcement of WTO Agreement ie. on 1-1-95. It is expected that such products will be granted patents after 31-12-2004. Any violation relating to infringement of EMRs is dealt with in the same way as suits concerning infringement of patents. However, in public interest, the government has reserved the right to intervene by issuing compulsory licences. Case Laws Patents Various courts in India have propounded different principles based on legal analysis. These decisions have interpreted the patent Act in its proper perspective. Some of such significant cases are analysed below. In Hindustan Lever Ltd. v Godrej Soaps Ltd. and others (1971 PTC 756) the petitioners prayed for interim injunction to restrain the infringement of a patent relating to soaps manufactured marked under to trade mark ‘VIGIL’. The respondent pleaded that making detergent bars containing varying percentages fillers, including starch and varying ranges of moisture is not new and therefore, due tonon-novelty cannot be a subject-matter ofa patent. The Calculate High Court held that since the patent had not yet been exploited by the petitioner, damage likely to be suffered by petitioner was incapable of being quantified. The court refused to grant interim injunction against the respondent. In kk puri v. Industries (*& PTC 185 Del H.C.) the appellant /plaintiff obtained an order of temporary injunction retraining the respondents from using or dealing with laterally slidable lock. Application filed by the plaintiff, on the ground that the said injunction order was violated was dismissed. In the appeal the appellant contended that respondent had sold a lock which amounted to violation of the injunction. The version of the appellant was rejected the High Court. In Abid-kagalwal v. Edgar Haddley Co. pvt Ltd. (1984 PTC 234) there was opposition to registration of patent for an invention relating to ‘an improved electrical of patent for an invention relating to ‘an improved electrical switch’ on the grounds of unfair description, prior publication, prior public knowledge’. The patent office held that the invention had not been properly described and would not function in the way claimed by the applicants. The opponents succeeded even though they failed to establish the ‘prior publication as well as the prior public knowledge’. The application for the grant of patent was refused. International Perspective of Patents ‘The Patent Act has an international angle. The approval of patents by international community is an example of this. In India there is opposition for patenting life and life forms. The evolution of molecular biology, genetics, bio-physics, cell biology and immunology have for the last few year opened vast possibility for new and novel technologies. Itis interesting to note that [Link] Chakraborthy, a scientist of Indian origin was able to secure a patent for a living organism in 1980 through a decision of supreme Court or United States. This invention is a new organism which consisted or genetically engineered bacteria. U.S.A was granting patent for micro-organisms, and exogenous genes. However India could not accept such patenting, Despite its membership in International Patent Organisation India was following its own 31path. However being a member of Paris Convention and Budapest Treaty, India may accept patenting or bio-technology. ‘The creation of dolly asa clone ‘The recent experimentation in the science of biotechnology resulted in the creation ofa sheep named Dolly by cloning which has been a subject matter of unusual excitement throughout the world. Subsequent development in such experimentation has in fact created sense of scare throughout the world. An ethical debate on the property of recognizing and patenting such inventions in the field of bio-technology has prompted countries like USA in refusing to grant patent to such in intentions. Such experimentation might ultimately result in cloning human beings which will cause chaos in the human society. World intellectual Property Organisation (WIPO) is the organ of the UNO established to promote respect for and protection of use of intellectual property throughout the world through co-operation among states; it ensures administrative co-operation among the “Intellectual Property Union” founded on aseparate multilateral treaty administrated by WIPO and dealing with legal or administrative or both aspects of intellectual property protection. WIPO in fact is one of the developed specialized agencies of the United Nations. ‘Thus patenting system is evolving and expanding recognized internationally. It is this acceptance which has given thrust for increasing the number of inventions and patents. Inventive Step In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (A.I.R.1982 SC 1444) the Supreme Court observed that mere collection of more than one integers or things not involving exercise of any inventive faculty does not qualify for the grant of patent. List of cases 1. Fomento v. Mentmore [1956] R.P.C. 87, CA. An improvement to the nib ofa ball-point pen designed to make the flow of ink continuous and uniform- Prior publication and prior use . Prior publication -Peining the normal method of manufacturer [Link] said “ if in fact the article has never been made so as to possess that characteristics, and the characteristic is a useful or potentially useful one, I donot think that the plaintiffs’ patent is to be held invalid because a person working a prior specification in which, so far from being described or claimed, the relevant characteristic seems inferentially to have been excluded, might unwittingly produce it.” Prior Use- If those few pens came to the hand of some people which left them free at law and equity to do what ever they liked with them and what they discovered from them then it would appear to follow that the plaintiffs’ must fail. 2. Lallubhai Chakubhai Jarivala v. shamaldas Sankalchand Shah AIR 1934 Bom 407. Patent is for an improved process of treating dried fruits : particularly to the treatment of dried shell almonds and betel muts. Prior Publication - In my opinion it cannot be said that his process is a mere adaptation of known material to uses analogous to those which have been applied before, involving no ingenuity, and therefore not capable of being the subject matter of.a patent. There was sufficient invention in the combination and the combination has not been anticipated by prior publication. 32Prior Use- The quantity of goods sold may be immaterial as the secret of the process cannot be detected whatever may be the quantity of the goods sold. 3. The Graham Test (Graham v. John Deere Co. 1966). 35 USC $ 103 : Conditions for patentability non -obvious subject matter A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, ifthe difference between the subject matter sought to be patented and the prior art are such that the subject matter. Asa whole would have been obvious at the time the invention was made toa person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negative by the manner in which the invention was made. Triple test 1. the scope and content of the prior art are to be determined 2. difference between the prior art and the claims at issue are to be ascertained 3. the level of ordinary skill in the pertinent art resolved. Clamp for vibrating shank plows “the invention, a combination of old mechanical elements, involves a device designed to absorb shock from plow shanks as they plow through rocky soil and thus to prevent damage to the plow” Clamp for vibrating Shank Plows If free —flexing, is the crucial difference above the prior art, then it appears evident that the desired result would be obtainable by not boxing the shank within the confines of the hinge. The only other effective place available in the arrangement was to attach it below the hinge plate and run it through a stirrup or bracket that would not disturb its flexing qualities. Ratio -Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did, ie., invert the shank and the hinge plate. 4. Windsurfing International vy. Tabur Marine [1985] R.P.C.62, CA. Patent for a Windsurfer, which claimed the following features: - Unstayed spar seated in a universal joint - a Bermuda rig held taut between a pair of accurate booms, themselves mounted on the spar, so as to be able to move laterally around it and fixed together at the other end. Four step to be followed to identify the inventive step 1, the first isto identify the inventive concept embodied in the patent in suit. 2. thereafter, the court has toassume the mantle ofthe normally skilled but unimaginative addressee inthe artat the priority date and to impute to him what was at the date, common general knowledge inthe art in question. 3. the third steps o identify what, ifany, difference exist between the matter cited as being “known or used” and the alleged invention. 4. finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. 5. Bayer Corpn. V. Union of India OA/ 35/2012 33Compulsory Licence application for the drug Nexvar .Itis said to be a palliative drug for patients suffering from Renal Gell Carcinoma (RCC) and Hepatocellular Carcinoma (HCC) at stage IV. The drug was sold at Rs 2,80,000 per month NATCO (generic drug industry) ready to sell the drug at price below Rs. 10,000. Grounds for Grant of CL 1. _ Reasonable Requirements of the Public were not satisfied, — Drug was accessible to only 2% of Patients 2. Patented invention was not available to the public ata reasonably affordable price, — Rs,2,80,428/- per month , 3. Patented invention was not worked in India. — Mere importation of the drug into India. ‘Whether Rs. 2,80,000 per month is reasonably affordable price to the public? ‘The reasonably affordable price has to be construed with reference to the public and not by considering the cost involved in R&D . ‘Whether the patented invention has been worked in the territory of India? Sec 84(1)(¢) the word “worked” must be decided on a case- to- case basis and it may be proved in a given case, that ‘working’ can be done only by way of import, but that cannot apply to all the other cases. The patentee must show why it could not be locally manufactured. A mere statement to that effect is not sufficient, there must be evidence... Therefore, ‘working’ could mean local manufacture entirely and ‘working’ in some cases could mean only importation. It would depend on the facts and evidence of each case. 34UNIT - III TRADEMARKS Trade marks in India are presently government by Trade Marks Act, 1999. Till its enactment, it was the ‘Trade and Merchandise Mark Act, 1958 which governed Trademarks for over four decades. What is Trade Mark? Trade marks are symbol marks or alphabetic marks used for identification or products. Trademarks are associated with classless of goods. They give distinctiveness to a product to distinguish I from other products. Till enactment of Trade Marks Act, 1999 services were not subject to protection. However with enactment of new Act, service marks are also eligible for Trade mark protection. The new Act was enacted with the following objectives: (1) Toallow registration of service marks. (2) Todo away with Part A and B registration under old Act and ensure uniform registration. (3) Tosimplify the trade mark registration procedures. (4) Toextend the period of protection of registration form 7 years to 10 years and (5) To simplify the Trade Marks Act. Objects of Trade Marks Act, 1999. The new Trade Marks Act 1999 was intended to achieve the following purposes: (@) Toprovide for registration of trade mark for services, in addition to goods. (b) Tobar the registration trademarks which are imitation of well-known trademarks; to enlarge the grounds for refusal of registration; and to delete the provision for defensive registration of trademarks. (©) Toamplify the factors to be considered for defining a well-known trade mark. [S.2 (1) (zg)]. (@) Todo away with the system of maintaining register of trade marks in Part A & B with different legal rights and to provide only a single register with simplified procedure for registration (S.6). (©) Tosimply the procedure for registration of registered users and to enlarge the scope of permitted use. () Toprovide for registration of ‘Collective marks’ owned by associations [291) (g) and Sections 61 ~ 68]. (g)_ Toprovide for the appointment of an Appellate Board known as ‘Intellectual Property Appellate Board’ for speedy disposal of appeals and rectification applications which at present lie before the High Court ($5.83 to 100). (h) To Transfer the final authority relating to registration of certification trade marks to the Register instead of the Central Government. (i) Toenhance the punishment for the offences relating to trade marks to prevent the sale of spurious goods. 35