Indian Patent Law

Dr. Ravindra N Purohit

[Link]..Ph.D.
Beginning
1832
Earliest reference: Letter dated 23 September 1835
from Lord William Bentinck, Governor General (GG)
to the Advocate General of India (AG).
First intention to have separate legislation for each
invention.
The Act VI of 1856 on Protection of Inventions in
India enacted on 28 February 1856. Amended twice
thereafter.
THE INVENTIONS & DESIGNS ACT 1888 replaced Act
VI of 1856.
THE INDIAN PATENTS & DESIGNS ACT , 1911
Patents Enquiry Committee 1948-1950
Ayyangar Committee 1957-59
 Towards Patents Law 1970
Based on the Ayyangar Committee recommendations,
a Patents Bill introduced on 21 September 1965
Referred to a Joint Parliamentary Committee (JPC) on
25 November 1965
Amended Bill introduced in November 1966
Lok Sabha passed, but lapsed in Rajya Sabha
Revised Bill introduced in 1967
Passed in 1970.
Legislative Framework of IP administration in India
Department of IP &P covers
The Patents Act, 1970 (as amended in 2005)
The Patents Rules, 2003 (as amended in 2006)
The Designs Act, 2000
The Designs Rules, 2001 (as amended in 2008)
The Trade Marks Act 1999
The Trade Marks Rules 2002
The Geographical Indications of Goods (Registration
& Protection) Act, 1999
The Geographical Indications of Goods (Registration &
Protection) Rules, 2002,
Department of Education covers
The Copyrights Act 1957 (amended in 1999)
 CONTROLLER GENERAL OF PATENTS, DESIGNS
AND TRADEMARKS
(CGPDTM)

IPTI ,NIIPM,
PATENT OFFICE T M REGISTRY G.I. REGISTRY
P.I.S. Nagpur

Head Office
Head Office DESIGN OFFICE CHENNAI
MUMBAI
KOLKATA

Branch DELHI
DELHI KOLKATA

Branch KOLKATA
CHENNAI

Branch CHENNAI
MUMBAI

ABAD
Laws & Regulations
Patents Act, 1970
Amended in
1999
2002
2005
Patents Rules, 2003
Amended in
2005
2006
Indian Patents Act, 1970
No product patent for chemicals, food and
medicine
No patents for agriculture and horticulture
products
Compulsory licences to ensure availability of
drugs at a reasonable prices.
Pre-grant opposition procedure
Patents to be worked in India.
Provision to deal with public health emergency
Patents Act 1970 1st Amendment
First Amendment in 1999
Introduced transitional facility to receive and
hold patent applications of pharmaceutical
and agricultural chemical products (mail box)
till 1 January 2005 and for grant of Exclusive
Marketing Rights for 5 years or till grant of
patent.
Patents Act 1970 2nd Amendment
Bill introduced on 20 December 1999
Bill passed in 2002
Major changes
20 year patent period
Reversal of burden of proof on the infringer
Establishment of an Appellate Board
Public interest safeguards and measures for
protecting Traditional Knowledge.
Mandatory compulsory license provision for food,
drugs and chemicals removed
Patents Act 1970 3rd Amendment
From 1.1.2005
Based on
Observations of JPC
Widespread consultations through country wide
interactive sessions with interest groups
Extensive inter ministerial consultations
Removed transitory provisions
Introduced various flexibilities provided in the TRIPS
Agreement including the Doha Round.
Product patents for Food, Chemicals,
Pharmaceuticals.
Patent Law Salient Features
Both product and process patent provided.
Term of patent 20 years.
Examination on request.
Both pre-grant and post-grant opposition.
Fast track mechanism for disposal of appeals.
Provision for protection of bio-diversity and
traditional knowledge.
Publication of applications after 18 months with
facility for early publication.
Substantially reduced time-lines.
Scope of Patentability Under
The Patents Act
What is an Invention?

Sec.2 (1) (j)

Invention means a new product or
process involving an inventive step and
capable of industrial application
Patentable Subject Matter

Invention must
Relate to a Process or Product or both
be new (Novel)
involve an inventive step
be Capable of industrial application
not fall under Section 3 and 4
New Means -

To be new (Novel) a product must not be

Published in India or elsewhere
In prior public knowledge or prior public use
within India.
Claimed before in any specification in India.
Inventive Step Means -

A feature of an invention that

Involves technical advance as compared to
the existing knowledge or
Have economic significance or both and
Makes the invention not obvious to a
person skilled in the art
Industrial Application Means -

Invention is capable of being

made or used in any kind of
industry
What is NOT an Invention
(Section 3 & 4 exclusions)
Section 3 exclusions
Section 3 (a)
Frivolous inventions

Inventions contrary to well established

natural laws.
Examples
Machines that give more than 100%
performance.
Perpetual machines.
Section 3 exclusions
Section 3 (b)
Commercial exploitation or primary use
of inventions which is contrary to public
order or morality.
Inventions contrary to well established
natural laws.
Examples
Gambling Machine

Device for house breaking.

 Section 3 exclusions
Section 3 (b)
Commercial exploitation or primary use of
inventions which causes serious prejudice to -
Health
Human, animal, plant life or to the environment
Examples
Biological warfare material or device, weapons of
mass destruction.
Terminator gene technology.
Embryonic stem cell
 Checks & Balances
Section 3 (b)
Excludes patents on
GMOs exploitation of which could be contrary
to public order or morality or prejudicial to
human, animal or plant life or health or to the
environment
Effect
Only genetically modified micro-organisms
(GMOs) which do not fall under section 3 (b) are
patentable.
 Section 3 exclusions
Section 3 (c)
Mere discovery of a scientific principle or
Formulation of an abstract theory.
Discovery of any living thing or
Discovery of non-living substance occuring in nature.
Examples
Newtons Law
Discovery of micro-organism
Discovery of natural gas or a mineral.
 Section 3 exclusions
Section 3 (d)
The mere discovery of a new form of a known
substance which does not result in the
enhancement of the known efficacy of that
substance.
Examples-
Salts, esters, ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixture of isomers, complexes,
combinations and other derivatives of known substances
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.
 Checks & Balances

Section 3 (d)
Salts, esters, ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixture of isomers,
complexes, combinations and other derivatives of
known substances with enhanced efficacy are
patentable.
 Section 3 exclusions
Section 3 (d)
Mere discovery of any new property or new use
of 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
employs at least one new reactant.
Examples-
New use of Aspirin for heart ailments.
Mere new uses of Neem.
 Section 3 exclusions
Section 3 (e)
Substance obtained by mere admixture resulting only in the
aggregation of the properties of the components thereof or a
process for producing such substance.

Examples-
Combination products ( Paracetamol + Ibuprofen etc.)
Solution of sugar and color additives to form a soft drink.
However,
A mixture resulting into synergistic properties of mixture of
ingredients may be patentable. e.g., Soaps, detergents,
lubricants etc.
 Section 3 exclusions
Section 3 (f)
Mere arrangement or re-arrangement or duplication of
known devices, each functioning independently of one
another in a known way.

Examples-
A bucket fitted with torch.
An umbrella with fan.
A flour mill provided with sieving.
 Section 3 exclusions
Section 3 (g) Omitted
Section 3 (h)
Method of Agriculture or Horticulture
Examples-
Cultivation of Algae.
Producing new form of a known plant.
Preparation of an improved soil.
However
Agricultural equipment are patentable.
 Section 3 exclusions
Section 3 (i)
Any process for medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or a
similar treatment of animals to render them free of disease or to
increase their economic value or that of their products .

Examples-
Removal of cancer tumor
Removal of dental plaque and carries
Surgical processes
Processes relating to therapy
Method of vaccination,
Blood transfusion
However
Treatment performed on tissues or fluids permanently removed from
the body
Surgical, therapeutic or diagnostic Apparatus or instruments
are patentable
 Section 3 exclusions

Section 3 (j)
Plants & animals in whole or any part thereof other
than micro- organisms, but including seeds, varieties
and species and essentially biological process for
production or propagation of plants & animals
 Section 3 exclusions
Section 3 (k)
Mathematical method or
Business method or
Algorithms or
Computer program per se

Examples-
Computer program by itself or as a record on carrier.
However
New calculating machine
Combination of hardware and software
are patentable
 Section 3 exclusions
Section 3 (l)
A literary, dramatic, musical or artistic work or any other
aesthetic creation including cinematographic work and
television productions

These subject matters fall under Copyright

protection.
 Section 3 exclusions
Section 3 (m)
A mere scheme or rule or method of performing
mental act or method of playing game.
Examples-
Scheme for learning a language
Method for solving a crossword puzzle,
Method of learning a language
Method of teaching /learning
However
Novel apparatus for playing game or carrying out a scheme
is patentable
 Section 3 exclusions
Section 3 (n)
Presentation of information.
Examples-
Any manner or method of expressing information
whether by
Spoken words
Visual display
Symbols
Diagrams
Information recorded on a carrier
 Section 3 exclusions

Section 3 (o)
Topography of integrated circuits.

Examples-
Circuit lay-outs
 Section 3 exclusions
Section 3 (p)
Inventions which are -
Traditional Knowledge or an aggregation or duplication of
known properties of traditionally known component or
components

Examples-
Traditional knowledge already in public domain.
Would healing properties of Turmeric (Haldi).
However,
Any value-addition using Traditional Knowledge leading to a
new process or product ,which is novel with inventive step and
industrial applicability,
Extraction of Azadirachtin from Neem can be patented.
 Section 4 Not Patentable Inventions

Section 4
Inventions falling within Section 20(1) of the Atomic
Energy Act, 1962 are not patentable

Effects
Inventions relating to compounds of Uranium,
Beryllium, Thorium, Plutonium, Radium, Graphite,
Lithium and more as notified by Central Govt. from
time to time.
Stages Filing to grant of a Patent
FILING OF APPLICATION
IF [Link] FILED C.S. TO BE FILED WITHIN 12MONTHS
PROVNL. / COMPLETE

PUBLICATION OF APPLICATION PROMPTLY AFTER 18 MONTHS FROM P.D.

REQUEST FOR EXAMINATION WITHIN 48 MONTHS FROM F.D.

EXAMINATION-ISSUE OF FER 3rd Party Representation

ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS
GRANT OF PATENT
OPPOSITION
WITHIN 12 MONTHS
Decision of
Controller

Appeal
Revocation/Amendment
Appellate Board
Stages Filing to grant of a Patent

Information concerning application form and

details of fee available at
[Link]