UNIT-1

Introduction &Patents

What is Intellectual Property?

The term intellectual property encompasses various types of creations of mind, like inventions.
An intellectual property could be anything like a music composition, a movie, book, painting or
even a brand name. According to the concept of intellectual property, such creations of mind are
intangible or non-monetary assets with commercial value. The owners of such non-monetary
assets (creations of mind) are assigned some exclusive rights over their creation, so that they
benefit financially. However, it is not possible to recover or replace an intellectual property that is
stolen. If stolen, the interests of the owner, over his/her creation will get affected. So, there must
be laws to protect the moral as well as material interests of the owner over his/her intellectual
property. IP law deals with the rights assigned to owners of intellectual property.
Intellectual Property Rights

As mentioned earlier, the creators or owners are granted certain exclusive rights over their
creations or works. Such exclusive rights are called intellectual property rights. These rights
help them benefit from their creations and also enable them to protect their work. In that way,
intellectual property is like any other real property which is financially beneficial for the
owner. The monetary benefits are said to encourage people to come up with new inventions
and creations.
Intellectual property rights also enable the owners or creators to protect their work. These
rights can be related to Article 27 of the Universal Declaration of Human Rights. According
to this statute, "everyone has the right to the protection of the moral and material interests
resulting from any scientific, literary or artistic production of which he is the author". So,
owners of intellectual property can benefit through protection of the moral and material
interests of their creations.
Types of Intellectual Property Rights

An intellectual property can be either artistic or commercial. The artistic works come under the
category of copyright laws, while the commercial ones (also known as industrial properties), and
include patents, trademarks, industrial design rights, and trade secrets. Copyright laws deal with
the intellectual property of creative works like books, music, software and painting. Industrial
properties cover those created and used for industrial or commercial purposes. As stated earlier,
intellectual property is categorized into various types as per the nature of work. The most

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common types are copyrights, trademarks, patents, industrial design rights and trade secrets. So,
these rights safeguard the interests of the owners of IP. If you are an author, who has written a
new book, you can apply for a copyright for your work. Likewise, patents can be obtained for
inventions. Once you establish your IP right, you can protect your work legally.
Copyrights:

A copyright is a right conferred on the owner of a literary or artistic work. It is an exclusive right to
control the publication, distribution and adaptation of creative works. The right lies with the owner-
cum-copyright holder for a certain period. As the time lapses, the work can be republished or
reproduced by others. Usually, in most countries the timespan of a copyright extends through the
entire life of the owner and lasts up to a period of about 50 to100 (70 years in the U.S.) years after
his/her death. In case of anonymous works, the right lasts for 95 years from the date of first
publication or 120 years from the date of creation.
Trademarks:

A trademark is a symbol generally used to identify a particular product, which indicates its source. A
trademark can be a combination of words, phrases, symbols, logos, designs, images, or devices, used
by an individual, legal entity or business organization to distinguish their products from others. For
example, you can identify the products of Nike Inc., from the logo, which is embossed on their
products. Once registered, trademarks are protected legally and the owners can sue persons for
unauthorized use of their trademarks.

Patents:

Patents are rights related to new inventions. Such rights are conferred on persons who invent any
new machine, process, article of manufacture or composition of matter and biological
discoveries. In order to be patented, the invention should fit into specific criteria, which may
differ from country to country. In general, the invention must be new and should be useful or can
be applied in industries. The person who receives a patent for his invention has an exclusive right
to prevent others from making, using, selling or distributing the patented invention without
permission. Generally, the time limit of a patent is 20 years from the date of filing the application
(for the patent).
Industrial Design Rights:

These rights protect the visual design of objects that are not purely utilitarian, but have an
aesthetic or ornamental value. It may refer to the creation of a shape, color, pattern or a
combination of all these things. It can be an industrial commodity or a handicraft. The design can

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be either two-dimensional (based on pattern, colors and lines) or three-dimensional (as per shape
and surface). An industrial design right is conferred after considering factors like novelty,
originality and visual appeal. The person who has an industrial design right has the exclusive
right to make or sell any objects in which the design is applicable. The right is conferred for a
period of 10 to 25 years.
Trade Secrets:

Trade secrets are the designs, practices, formulas, instruments, processes, recipes, patterns, or
ideas which are used by a company to gain an economic advantage over its competitors. The
owner of a trade secret does not possess any right over anyone who gains access to that secret
independently, but he can prevent the use of the trade secret by anyone who has learned it
through the owner. For example, an employer can protect trade secrets through contracts with his
employees. Trade secrets differ from other types of intellectual property rights, because it is the
responsibility of the owner to keep the secret and it is not protected through government policies.
Once the trade secret is leaked, it can be used by any person. Intellectual property rights have
encouraged people to come up with indigenous creations, as the law protects their rights over
their works. Thus, it is very important to respect these rights and refrain from infringing them.

Salient features of patent

In conformity with the provisions of the TRIPS Agreement, the Indian Patent Act defines an
ew product or process involving an inventive step and capable of

Something that is already known is not patentable. An invention is deemed to be new on the
priority date if it does not form part of the state-of-the-art, i.e. part of the knowledge available
to the public. Priority date is usually the date on which the applicant first makes the
application for patenting his invention.

According to the IPA, New Invention means any invention on 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 filing of patent application with complete specification, i.e. the subject matter has not fallen in
public domain or that it does not form part of the state-of-the-art.

Prior publication, written or oral disclosure of the invention or any other way of making the
knowledge available in a public manner before the date of filing of the patent application

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makes the invention a part of the prior art or state-of-the-art. An invention is said to be
anticipated if it forms the part of the prior art.

For example, an inventor in England was denied the patent for an improved design of a
ballpoint pen just because he had published its details prior to filing the patent application
and hence the invention did not qualify on the ground of novelty. However, for obtaining a
patent, establishing novelty of an invention meets only one of the requirements of
patentability.

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.
Thus invention should involve an inventive step, which must be non-obvious to a person
skilled in that particular art, it must not follow plainly or logically from what is already
known (prior art).

The inventive step has to go beyond the capacity of a craftsman skilled in the art to anticipate the
problem solving development; it has to be the result of independent thought, ingenuity, and
research. A craftsman with his skill may well meet the demands of a new job before him; for
example, a tailor cutting cloth to meet the demands of changing fashion. This is expected from
his knowledge and skill. Such skill to adapt is not inventive skill; such product is not invention.
Many common examples of an inventive step can be cited from pharmaceutical, chemical or
mineral processing industries where the process improvement can result into efficient use of
resources. One example of such inventive step can be drying a substance without detriment to
some desired characteristics but enhancing other characteristics like shelf-life or stability etc.

In a case before the Lahore High Court, the patent of a tube well strainer, Tej, was infringing. The
strainer was produced by a new combination of known processes and methods. The complainant
pleaded that Tej was an invention of an American Strainer, Cook. The American strainer was made
out of a solid drawn tube and a special mechanical process was used to make slots on the tube. The
owner of the patent of Tej argued that the strength requirements for his strainer were totally different
as they were used in the alluvial plains where the water was close to the surface, and no great
pressures were met. To meet the requirements of his situation, a new process of manufacture was
designed and developed for making the Tej strainer, which was different and far less costly than the

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skill and the patent awarded on it was valid.

A popular misconception is that novelty in the context of patents requires a major technological
breakthrough to claim patent protection. However, incremental inventions small improvements in
processes that make them more efficient, or in products that make them more useful eminently
qualify for patents if they are novel, have an inventive step and are capable of industrial application.
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an inventive step, an invention must be non-obvious to a person skilled in the art. There are no
uniform tests applicable in all circumstances. A broad guiding principle is that patent is given to

encourage invention, and not to obstruct improvement of technologies by others.

To be patentable, the invention has to be capable of industrial application, that is, it can be
made or used in an industry. However, industry in this context does not necessarily imply the
use of machinery or manufacturing of an article. It may include any useful, practical activity
as distinct from purely intellectual or aesthetic activity. Utility is an inescapable requirement
or patentability of an invention.

PATENTABLE INVENTIONS

According to the Article 27 of the TRIPS Agreement of the World Trade Organisation (WTO),
patents shall be available for any inventions, whether

products or processes, in all fields of technology with the exception of certain exclusions
from patentability available to the member states within their territories. Members of the
WTO, also need to provide for protection to micro-organisms and non-biological and micro-
biological processes. Members should also provide for the protection of plant varieties either
by patents or by an effective sui-generis system.

Inventions those are not patentable

In tune with the provisions of the TRIPS Agreement, the IPA lays down what are not
inventions within the meaning of the Act and which therefore can not be granted patent

considerations of public policy.

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 Inventions relating to atomic energy. This is so because the Central Government has the sole
responsibility for the development of atomic energy and for obvious reasons will not like its
programmes to be hampered by patent disclosure and claims;

An invention, whose primary or intended use or commercial exploitation could be contrary to the
public order or morality or which causes serious prejudice to human, animal or plant life or health or
to the environment. For example, a new type of gambling machine;

An invention which is frivolous or which claims anything obviously contrary to well established natural
laws. For example, an invention that claims a perpetual motion machine will not be patentable because the
claim would be contrary to well-established laws of nature;

Mere discovery of a scientific principle or the formulation of an abstract theory. For

example, a discovery merely unveils a hidden thing; it does not involve an act that makes it
useful; it is therefore not an invention and hence not patentable. Similar reasoning applies to
the formulation of an abstract theory;
Mere discovery of new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new property or new use for
a known substance, or 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. It is explained that for the
purpose of this clause, salts, esters, ethers, polymorphs, metabolites, isomers, mixtures of
isomers, complexes, combinations and other derivatives of known substance shall be considered
to be the same substance, unless they differ significantly in properties with regard to efficacy;

Discovery of any living thing or non-living substances or objects occurring in nature;

A substance obtained by a mere admixture of the components, or a process of producing

such mixture;

Mere arrangement or rearrangement or duplication of known devices, each functioning

independently of one another in a known way without changing the end results;

An invention which in effect is traditional knowledge;

A mathematical or business method or a computer programme per se or algorithms or a

computer programme per se;

A mere scheme or rule or method of performing mental act or method of playing game.

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Besides these rather obvious items the following items are also not inventions within the meaning of

the Indian Patents Act, as a matter of policy and are, therefore, not patentable:

A method of agriculture or horticulture;

Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings and animals;

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;

The following two categories of works belong to different fields of intellectual property
and are not subject matter of patents:

productions (covered by copyright);

cuits (separate field).

Computer programmes and microorganisms have emerged as two special categories where
patent protection is increasingly sought.

Under the Indian law, computer programmes are protected under the Copyright Act, 1957;
they are not entitled to protection through patents. However, when a computer programme
enables the computer to operate in a new way to produce a required result the computer
system so programmed is patentable.

A computer so programmed is a modified equipment to operate in a new way and as such the
computer, along with the programme, is patentable.

In 1980, the US Supreme Court granted a patent to Dr. Ananda Chakraborty for a genetically
engineered bacterium, which could degrade oil spills. It did not exist in nature. It satisfied the
criteria of novelty, non-obviousness and utility for a patentable invention. For the first time in
history a living entity, the engineered microorganism, was accorded the status of a product. The
issues about patenting life-forms has generated a lot of debate in different countries. A detailed

(MIP-008).

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PROCEDURE FOR OBTAINING PATENT

Who can apply for Patent?

An application for a patent for an invention may be made by a person claiming to be the true and
first inventor of the invention or his assignee, or by the legal representative of any deceased
person who immediately before his death was entitled to make such an application. The term true
and first inventor means that the claimant has to be the actual inventor and not merely be the first
importer of the invention or the first person to whom the invention is communicated from outside
India.

In case the inventor is an employee of an organization, the inventions made during the employment
would be patentable in the name of the employee. However, the ownership of the patent (i.e. rights of

preventing others from using, manufacturing, selling etc.) will be

dependent on the terms of contract between the employee and employer. It is a common practice in
the R&D organizations to assign the inventions to the employer although those who contribute to the
development of the invention are listed as inventors in the patent.

Filing a Patent Application

There is only one application filed for one invention. It is to be filed in triplicate in a
prescribed form along with the prescribed fees in the appropriate patent office. It should be
accompanied by a provisional or a complete specification discussed later. The appropriate
office means, an office within whose territorial jurisdiction the applicant or the first applicant
in the case of a joint application normally resides, or has his domicile or has a place of
business, or the place where the invention

Subject Matter and Procedures originated falls. If the applicant has no place of business or
domicile in India, the appropriate office would mean having jurisdiction over the place of
business address in India given by the applicant.

If the application is filed by the assignee, it must be accompanied with the proof of the right to make

shall name the assignee and the true and first inventors. Where the true and first inventor is not the
applicant, a declaration is required that the applicant believes the person so named to be the true and
first inventor. Possession signifies not merely the physical possession but also the conscious and
intentional possession as well.

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Possession of an invention is the possession of a conception, which is more than an idea.

permanent idea of the complete and operative invention, as it is thereafter to be applied in

and Procedure, D.P. Mittal (2002), Taxmann).

Every international application under the Patent Cooperation Treaty (PCT) for a patent
designating India is deemed to be an application under the Indian Patents Act if a
corresponding application has also been filed before the Controller in India.

The filing date of such an application and its complete specification processed by the Patent
Office as designated office or elected office shall be the international filing date accorded
under the PCT.

Typically, the form of application for grant of an Indian patent asks for

(i) Full name, address, nationality of the applicant(s) and inventor(s),

(ii) Patent specifications, and
(iii) whether an application has been made or patent granted in a PCT or a convention
country, which affords to citizens of India, or applicants for patents in India,
similar privileges as granted to its own citizens in matters of patent and which has
been so notified by the Central Government with relevant dates;
(iv) Claim of priority. The application must also contain a request for a patent, a
description of the invention, drawings and the filing fees.

Specifications

A specification is a complete and accurate description contained in a patent document stating

how the invention can be carried out by the method best known to the applicant. The
specification ends with a claim or claims defining the scope of the invention for which
protection is claimed.

You may refer to Sec. 10 of Indian Patents Act provided in the Supplementary Reading of
this course.

Every application must be accompanied by a provisional or a complete specification. It is possible to

file the application with provisional specifications. A provisional specification only prescribes the
nature of invention. It relates to the stage of conception of an inventive idea in the form of proof of

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concept which has not yet been fully developed. Filing of an application for a patent with only a
provisional specification ensures priority, however, the conception of invention given in the
application must encompass all limitations of the claimed invention. You must remember that
conception is the complete and definite idea formed in the mind of the inventor, when reducing the
invention to practice is only a matter of ordinary skill; at this stage no extensive research or
experimentation remains to be done. But it is necessary to file the complete specifications within one
year of filing the original patent application. The application is deemed to be abandoned if this
condition is not met.

A complete specification filed may include claims in respects of developments of or additions to the
invention described in provisional specification. The inventor is entitled to apply for a separate patent
in respect of such developments/additions. In case of a convention application the patent application
must be accompanied with complete specifications only. The claim/claims of a complete specification
relate to a single invention, or to a group of inventions, which form a single inventive concept e.g. in
an instrument there may be 8 or 10 different inventions used. All these could be separately patented;
or they can be patented together as a group; if they form an integrated instrument.

The complete specification must contain the following:

Title, sufficiently indicating the subject-matter;

Relevant drawings;
Full and particular description of the invention;
Details of its operation or use and the method by which it is to be performed;
Disclosure of the best method of performing the invention;
Claims defining the scope of the invention substantiated by the disclosure;
Abstract providing technical information on the invention;
Declaration as to the inventorship of the invention.
If an invention is an improvement in or modification of another invention, for which the
patent has been obtained or has been applied for, the Controller may grant the patent for
modification/improvement, as a patent of addition; however the patentee for both the original
patent and the patent of addition has to be the same.
Claims

Claims appear at the end of a specification. They describe what is new and claimed as the invention
for which patent is sought. A claim defines the scope of the patent and the monopoly conferred by it.
It covers a process, product, a machine or manufacture, a composition of matter. It does not cover the
function or result of any of these, or the scientific explanation of their operation. What is not claimed

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is disclaimed.
Complete specification may be amended on request by the applicant, subject to certain conditions.
Amendment can be allowed only by way of disclaimer, correction or explanation, for the purpose of
incorporation of actual fact. Amendment shall not be allowed if the amended specification would in
effect claim something or describe matter which is not disclosed in the unamended specification.
The complete specification determines the scope of the patent protection. Thus it is the most

significant part of the patent application. It is construed as a whole, that is, the title, the body

and the claims all matter. The title is a pointer to the object, scope and purpose of the specification.
However, the scope of the claims allowed by the Patent Office rests on the disclosure made in a patent
specification and the support available there in.

Each claim of a complete specification has a priority date, i.e. the date on which an invention is
disclosed for the first time to the patent office. In a case, where a complete specification is filed in
pursuance of a single application filed earlier with a provisional specification, the priority date of a

disclosed in the specification. The claim should not go beyond the disclosure in the specification. The
claims are often constructed in a way as to obtain broad monopoly. Sufficient experimental data made
available in a patent specification helps in drafting broader claims.

Publication of the Application

A patent application is not open to the public for such period as may be prescribed after the date of
filing. It is then published. If the invention is considered relevant for defence purposes, the Controller
may issue direction to prohibit or restrict such publication. In the case of such secrecy direction, the
application will be published when the secrecy directions cease to operate. If the applicant request the
Controller to publish his application earlier than the prescribed period, the Controller shall publish it
as soon as possible, if there is no secrecy bar imposed and if it has not been abandoned or withdrawn.

The publication will include the particulars of the date of application, number of application,
name and address of the applicant and an abstract. Upon publication of

Subject Matter and Procedures an application, the patent office will make the specification
and drawings, available to the public on payment of the prescribed fees. If the specification
mentions a biological material, which is not available to the public, the applicant is required
to deposit the material in an international depository authority under the Budapest Treaty.
From this institute, the biological material mentioned in the specification is made available to
the public, if required.

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The deposit of the material shall be made not later than the date of filing the patent application in
India and a reference to it shall be made in the specification within the prescribed period. The
specification should contain all the available characteristics of the material required to identify it
correctly. The source and geographical origin of the biological material used in an invention
is also to be disclosed in the specification.

From the date of publication of application to the date of grant of patent, the applicant will have
the same privileges and rights as if a patent for the invention had been granted on the date of
publication of the application. However, the applicant is not entitled to institute any proceedings
for infringement until the patent has been granted.

Examination of the Application

For granting a patent, examination of the application is a mandatory step. However, such examination
is taken up only if the applicant or any other interested person makes a request in the prescribed
manner for such examination within the prescribed period. If such request is not made within the
prescribed period, the patent application is treated as withdrawn. After a request for examination is
made, the Controller refers the application, specification and the related documents to an examiner for
making a report within a prescribed period.

The examiner looks into several aspects of the application, including the following:

Whether the complete specification adequately describes the invention and the manner in
which it is to be performed
Whether the title of specification sufficiently indicates the subject-matter of the invention;
Whether the claim sufficiently defines the invention;
Whether complete specification describes substantially the same invention as does the
provisional specification;
Whether the application has been made in accordance with the requirements of the IPA;
Whether there is any lawful ground of objection to the grant of the patent;
Whether the invention has been anticipated by publication before the date of filing of

Whether there is a prior claim for the invention; and

Any other matter which may be prescribed.

Of these matters, Search for anticipation by previous publication and by prior claim is important. This
search requires investigation in the publications and specifications of prior applications where patents

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have already been granted to see whether the same invention has already been published or claimed or
is the subject matter of existing or expired patents.
The report of the examiner is strictly confidential, not liable to production or inspection even in any
legal proceedings unless the Court directs otherwise certifying that it is desirable to do so in the
interest of justice. If the examiner raises any objections, the Controller will communicate the gist of
the objections to the applicant. If the objections raised by the examiner are removed satisfactorily
within a prescribed period, the Controller will accept the complete specification. If the objections are
not removed satisfactorily, the application is refused, if required, after giving an opportunity of
hearing to the applicant.

Acceptance and Advertisement of Complete Specifications

Once the complete specification is accepted, the Controller notifies it to the applicant and
also advertises it in the Official Gazette. On advertisement, the application and the
specification with the drawings, if any, are open for public inspection.

OPPOSITION TO THE GRANT OF PATENT

The IPA has now introduced both pre-grant and post-grant opposition in India. In case of a
pre-grant opposition where an application has been published but a patent has not been
granted, any person may represent in writing, by way of opposition, to the Controller against
the grant of patent on the ground that:

It formed part of the prior-art on the date of application and could be anticipated; or
The specification does not clearly and sufficiently describe the invention or the
method by which it is to be performed; or
The applicant has not disclosed the necessary information or has furnished false
information in any material particular; or
In the case of convention application (an application filed in India following a patent
application for the same invention made in a convention country), the application was
not made within 12 months of the filing of the first application; or
The complete specification does not disclose or wrongly mentions the source or
geographical origin or biological origin of biological material used for the invention.

The representation shall be considered by the Controller and disposed of; the person making
such a request would not become a party to any proceedings.

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As regards the post-grant opposition any person interested in opposing the grant of patent
may give notice to the Controller of such opposition within one year from the date of
publication of grant on the following grounds:
The invention was wrongfully obtained by the inventor/applicant; or

The invention, as claimed in any claim of the complete specification has been
anticipated by or published in an earlier patent or any other publication; or
The invention as claimed in any claim was publicly known/used in India before the
priority date of the claim; or
The invention is obvious and does not involve any inventive step; or

Specification does not sufficiently and clearly describe the invention, or the method to
perform it; or
The subject of the patent is not an invention, within the meaning of the Act; or

The information as required by the controllers regarding corresponding patent

applications filed in other countries as furnished is false; or
Geographical origin of biological material is not disclosed or falsely disclosed; or

In the case of a convention application, the application was not made in the prescribed
time; or
The invention as claimed is anticipated having regard to the knowledge oral or
otherwise available within a local or indigenous community in India or elsewhere.

No other ground for objection is entertained.

On receipt of the notice of opposition, the Controller notifies the patentee about it. Further, the
Controller constitutes the Opposition Board and refer such notice of opposition along with the
documents to it for examination and submission of recommendations to him. On receipt of
recommendations, and after giving the patentee and the opponent an opportunity of being heard the
Controller orders either to maintain or to amend or to revoke the patent.

GRANT AND SEALING OF PATENT

Where the application for a patent along with complete specification has been accepted a
patent is granted and the Controller publishes the fact that the patent has been granted and
then the application, specification and other documents are open for public inspection. The
date of the patent is as of the date of filing of the patent application. The patent so granted is
sealed with the seal of the patent office and the date of sealing of patent is entered in the
register. The patent is given in a form prescribed in the Third Schedule of the patent rules

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1972 reproduced as Appendix A.

The grant of a patent is subject to

Provisions of the IPA;

Conditions and provisions of any other law in force;

Conditions that the validity of the patent is not guaranteed (it can be challenged on
certain grounds); and
Payment of fees prescribed for keeping the patent in force.

Rights of a Patentee

A patent confers upon the patentee, the exclusive right to the patented invention for a limited
period. The patentee not only gets a monopoly right over the said invention for a limited
period to prevent third parties without his permission from making or using or offering for
selling or importing a product of the subject matter of the patent relates to a product, or if the
patent is for a process, then a similar right to prevent third parties from making, using selling
or offering for sale or importing for those purposes a product obtained by the claimed process
in India.

A patentee has the right to

Exploit the patent;

Assign and licence the patent;
Surrender the patent;

Sue for infringement.

Incidentally all these rights, except the right to sue for infringement are available to an
applicant for patent even before the sealing of patent during the pendency of his application
for the grant of a patent.

Right to Exploit the Patent

The patentee has the right to prevent third parties, from exploiting the patented invention in any such
manner without the consent of the patentee. The term of every patent granted under the IPA is twenty
years from the date of filing of the application for the patent. This includes the patents, which had not
expired when the IPA came into force i.e. on May 20, 2003. It is necessary to renew the patent
annually on payment of fee for it to remain valid throughout its term of 20 years. Failure to renew the

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patent results in loss of all patent rights.

Right to Assign and Licence

The patentee has the power to assign rights or grant licenses or enter into another
arrangement for a consideration. A licence or an assignment to be valid must be in writing
and registered with the Controller of Patents.

Right to Surrender

The patentee has the right to surrender the patent at any time by giving notice in the prescribed manner to

the Controller. The Controller, before accepting the offer of surrender, has to give notice of surrender to

persons whose names are entered in the register of patents as having interest in the patent; also, the

Controller will advertise the same so as to give an opportunity to the interested parties to oppose the offer

of surrender, if they choose to do so.

Right to Sue for Infringement

A patentee has the statutory right to institute proceedings for infringement of the patent in a
District Court having jurisdiction to try the suit.

JOINT-INVENTORS/CO-OWNERS OF PATENT RIGHTS

If an invention is a work of two or more inventors who make inventive contribution to various parts of
the invention or to different claims of a patent, they are recognized as joint inventors and on grant of
the patent for the invention become co-owners of patent rights. Co-owners have equal undivided share
in a patent, unless there is an agreement to the contrary. If the patent is for a product, each co-owner is
entitled, without accounting to other owners, to the exclusive rights for his own benefit to prevent
third parties who do not have his consent from the act of making, using, offering for sale, selling or
importing for those purposes the patented product in India; if the patent is for a process then a co-
owner is entitled to prevent third parties from the act of using that process and from the act of using,
offering for sale, selling or importing for those purposes the product obtain directly by that process in
India.

Use for the Purposes of Government

Any patented product or process or a product made using patented process may be used by
or on behalf of the Government for its own use only. An invention is said to be used for the
purposes of Government if it is made, used, exercised or vended for the purposes of the
Central Government, State Government or a Government undertaking; this includes Council
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of Scientific and Industrial Research.

In case of a patent in respect of any medicine or drug, the medicine or drug may be
imported by the Government for its own use or for distribution in any dispensary, hospital or
other medical institution maintained by or on behalf of the Government.

Acquisition of Patents and Inventions by Central Government

If the Central Government is satisfied that it is necessary for public purpose to acquire an invention
for which a patent has been granted or an application for patent has been filed, it can publish a
notification in the official Gazette and all rights in respect of the invention stand transferred to the
Central Government. The Central Government will be liable to pay compensation to the applicant or
the patentee as may be mutually agreed upon.

Compulsory Licences

The right of the patentee is limited by the provision for grant of compulsory licenses. The IPA lays

down the following general principles applicable to working of patented inventions:

a) that patents are granted to encourage inventions and to secure that the inventions are
worked in India on a commercial scale and to the fullest extent that is reasonably practicable
without undue delay; and

b) that they are not granted merely to enable patentees to enjoy a monopoly for the
importation of the patented article;

c) that 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 in a manner conducive to
social and economic welfare, and to a balance of rights and obligations;

d) that patents granted do not impede protection of public health and nutrition and should act
as instrument to promote public interest specially in sectors of vital importance for socio-
economic and technological development of India;
e) that patents granted do not in any way prohibit Central Government in taking measures to
protect public health;

f) that the patent right is 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

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the patentee does not resort to practices which unreasonably restrain trade or adversely affect
the international transfer of technology; and

g) that patents are granted to make the benefit of the patented invention available at
reasonably affordable prices to the public.

Thus, the purpose granting patents in India is primarily to secure that the inventions are
worked in India on a commercial scale and not merely to enable patentees to enjoy a
monopoly for the importation of the patented article. Patent rights are meant to encourage
technological innovation and help transfer and dissemination of technology for the social and
economic welfare. The benefit of the patented invention has to reach the people at a
reasonably affordable price.

The IPA, provides for compulsory license of patent to a third party by the Controller, on
application made at any time after expiry of three years from the date of sealing of the patent,
on the following grounds:

the reasonable requirements of the public with respect to the patented invention have
not been satisfied; or
the patented invention is not available to the public at a reasonably affordable price; or

the patented invention is not worked in India.

If the controller is satisfied about the grounds and the facts as set out in the application, he may
grant a compulsory license on the patent and direct the patentee accordingly to grant a license to
the applicant. In deciding on the application, the controller is required to take into account several
factors including the nature of the invention, the time which has elapsed since the sealing of the
patent, the measures taken by the patentee to make full use of the invention, the ability of the
capacity to take
capital risk and whether the applicant has made effort to obtain a license from the patentee on
reasonable terms and conditions and such efforts have not been successful within a reasonable
period.
The IPA also has special provision for compulsory licences on notifications by the Central
Government in a case of national emergency, or of extreme urgency or of public non-
commercial use.

Compulsory licence can also be available for manufacture and export of patented
pharmaceutical products to any country which has no, or insufficient manufacturing capacity

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for the concerned product to address public health problems, provided compulsory licence
has been granted by such country, or such country has allowed importation of the patented
pharmaceutical products from India. The Controller on receipt of an application in the
prescribed manner will grant a compulsory licence solely for the manufacture and export of
the concerned product to such country under such terms and conditions as may be specified
by him.

which the grant was made no longer exist and are unlikely to recur. The holder of the
compulsory license can of course object to the application and the Controller shall take into

Inventions for Defence Purposes

If the Controller finds that an invention is relevant for defence purposes, he may prohibit or
restrict publication of information subject to ratification from the central government. No
appeal lies against these directions of the Controller.

The secrecy directions are reviewed at intervals of six months, or on the request of the applicant, and
would be revoked if found no longer necessary by the Central Government. If, in the case of an
application filed by a foreign applicant, it is found that the invention is already published outside
India then also the secrecy directions are revoked. However, please note that an application in respect
of which secrecy directions have been issued can still be processed to the stage of acceptance of
complete specification, but the acceptance shall neither be advertised nor the specification published
and no patent shall be granted.

No patent application for an invention relevant for defence purpose can be filed outside India
except on the written permission of the Controller. All orders of the Controller as to secrecy,
as well as orders of Central Government in this context, are final and cannot be challenged in
any court on any ground.
Revocation of Patents for Non-working
For a patent under a compulsory licence, the Central Government or any person interested
can make an application after the expiration of two years from the date of compulsory license
for revocation of the patent.

The grounds for the revocation would be:

the invention has not been worked in India; or

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 the reasonable requirements of the public have not been satisfied; or

the invention is not available to the public at reasonable price.

The Controller, after giving opportunities to the patentee to oppose the application, may
decide on revocation on merit.

TRANSFER OF PATENT RIGHTS

A patent is an exclusive property of the inventor and hence can be transferred from the original

patentee to any other person by assignment, grant of licence, or operation of law.

The IPA requires that an assignment, licence or a creation of any other interest in a patent
must be in writing, clearly specifying all the terms and conditions governing the rights and
obligations of the parties. The person getting such entitlement in a patent has to apply in
writing to the Controller for the registration of his title.

Assignment

An assignment means transfer of interest in the patent by the patentee to another person in whole or in part

valid over entire India or a part of it. The person to whom the right in patent is assigned is called the

assignee and the person who assigns the right is called the assignor.

There are three kinds of assignment:

Legal Assignment

When the assignor assigns the right in a patent through an agreement duly registered, the
s name will be entered in the Register of
Patents maintained by the Patent Office as the proprietor of the patent. The legal assignee shall
thereafter have all the rights conferred by the assignor.

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Equitable Assignment

When the patentee agrees to give another person certain defined right in the patent with immediate
effect, by a document (e.g. a letter), and not by an agreement, the assignment is termed as an equitable
assignment. However, such an assignment cannot be registered in the Register of Patents. The
assignee can convert the equitable assignment to legal assignment by getting the document in writing
and getting it duly registered.

Mortgage

When the patentee transfers the patent rights either wholly or in part to the mortgagee to
secure a specified sum of money, such assignment is called mortgage. The patentee can get
the patent re-transferred on refund of the consideration money.

Licence

A license confers a privilege on another person through an agreement to make, use or

exercise the invention. The person to whom the privilege is transferred is called the licensee.
The license agreement does not transfer any interest in the patent. A licence merely transfers
a right in patent as compared to an assignment in which there is transfer of interest. There are
three kinds of licenses:

Voluntary License

When the patentee, by a written agreement, empowers another person to make, use or
exercise the patented invention in a particular manner and on agreed terms and conditions it
is called a voluntary licence. The Controller of Patents and the Central Government do not
have any role in such licence.

Statutory Licence

When the licence is granted by the Controller and the Central Government as a compulsory licence it
is termed as statutory licence. In this case, the terms and conditions of the licence agreement do not
depend upon the will of the patentee and the licensee.

Exclusive Licence

In case of exclusive licence, the patentee confers exclusive right to make, use, sell or distribute the

patented invention to a particular person to the exclusion of all others including

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the patentee himself. Such a person will hold an exclusive licence in the patent. The exclusive
licensee has the right to initiate infringement proceedings against an infringer. The patentee has
the right to impose certain restrictive conditions on the rights of the licensee. But no such
restrictions can be imposed which are against the public interest.

For example, in a license to manufacture or use a patented article, or to work a process

protected by a patent, it shall not be lawful to insert a condition that will require the licensee
to acquire from the licensor, or his nominees, any article other than the patented article or an
article other than that made by the patented process.

Operation of Law

When a patentee dies, the interest in patent passes to his legal representative by transmission of
right by operation of law. Another mode of such transmission is provided where the Central
Government acquires a patent from the patentee for public purpose.

REGISTER OF PATENTS

There is a register of patents kept at the Patent Office. The following particulars are entered
in it:
The names and addresses of grantees of patents;
Notification of assignments and transmission of patents of licenses under patents, and
of amendments and revocation of patents;
Particulars of such other matters affecting the validity or proprietorship of patents as
may be prescribed.

BIODIVERSITY

The Act defines biodiversity and biological resources as follows:

Biological Diversity means the variability among living organisms from all sources and the
ecological complexes of which they are part and includes diversity with species or between
species and of ecosystems.

Biological Resources means plants, animals and micro-organisms or parts thereof, their
genetic material and by products (excluding value added products) with actual or potential
use or value but does not include human genetic material.

Biodiversity is not evenly distributed over different parts of the world. India is one of the twelve mega

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biodiversity countries in the world, which attracts international business players to exploit the

hotspots, namely the Western Ghats and the Eastern Himalayas, which are included amongst the top
eight most important hotspots in the world, ten bio-geographic regions; two major realms called the
palaeoarctic and the Indo-Malayan; and three biomasses, namely the tropical humid forests, tropical
dry/deciduous forests and the warm deserts and semi-deserts. India has 850 species of bacteria,
14,500 species of fungi, 6,500 species of algae, 2000 species of lichens, 2,850 species of bryophytes,
1100 species of pteridophytes The endemism of Indian biodiversity is high. About 33% of the
country's recorded flora are endemic to the country and are concentrated mainly in the North-East,
Western Ghats, North-West Himalaya and the Andaman and Nicobar islands. As many as 167 species
of crops, 320 species of wild crop relatives, and several species of domesticated animals have
originated here. The genetic diversity within these species is astounding. For example, there are 4,000
varieties of Rice, hundreds of varieties of Mango, 27 breeds of Cattle and 18 breeds of poultry. This
amazing biodiversity is not a freak of nature, but a result of careful selection and even crossbreeding

INTELLECTUAL PROPERTY RIGHTS (IPRs) AND BIODIVERSITY -Plants, animals, and other
organisms become economically useful to humans when their uses are known. Indigenous people are
the source of virtually all our knowledge about the uses of the plants and animals, and even of the
micro-organisms in their localities. This traditional knowledge about the usage of biological resources
has been unethically accessed by many vested interest groups to the detriment of indigenous
communities of the South. This has left the original holders and curators of biodiversity with the
feeling of having been deceived and exploited. It is now protected as an intellectual property in the

micro-organisms and genetically modified animals. You know that, apart from the usual criteria of
patentability, namely, novelty, non-obviousness, and utility, patenting of micro- organisms has an
additional requirement, viz. deposition of micro-organism in an internationally recognized

depository authority for patent purposes.

Traditional Knowledge, IPR and Biodiversity

There is an abundance of local expertise in plant genetic resources that has been in use over a
considerable period of time and is still evolving. In agriculture, for instance, this knowledge
is shown in the development and adaptation of plants and crops to different ecological

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awareness and understanding of this and other information, and the life technologies local
communities have evolved, beside
generation to the next, usually by word of mouth or example within a specified group of
people. TK evolved under a totally different set of values and motives than the modern
knowledge; the concepts of intellectual property with its monopolistic overtones is totally
alien to TK.

Traditional knowledge provides useful leads for scientific research, being the key to
identifying those elements in a plant with a pharmacological value that is ultimately destined
for the international markets. Ironically the very knowledge that forms much of the basis of

the rights and the profits; local communities are merely used a
For several reasons TK cannot be protected by patents or other instruments of intellectual
property, as you will learn in detail in the course on Contemporary Intellectual Property
Issues (MIP-008).

It is through IPR, and particularly patents, that commercial interests are taking over control and
ownership of traditional knowledge. In the patent system, a patent can only be granted if an invention
is novel or non-obvious. Novelty and non-obviousness are judged against everything publicly known
before the invention, as shown in earlier patents and other published material. This body of public

application for patent. Some national laws do not recognise oral knowledge as evidence of prior art.
The United States regards oral disclosures as prior art only if they were made in the US. Thus, a
therapeutic technique orally handed down from one generation to another by a tribe in India can still
be patented in the US, despite it being publicly known for many years. This is why western-styled
patent systems are inherently incapable of recognizing the existence of, or providing protection to,
traditional knowledge of other countries. Another dimension of the problem is that access and
benefit sharing (ABS) arrangements the first step that many governments take to
supposedly rectify imbalances are being premised on IPRs, despite the unsuitability of the
latter to biodiversity and related traditional knowledge.

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 TRADE SECRETS

Introduction

Competitive strength usually depends on innovative techniques and accompanying know-how in the
industrial and/or commercial field. However, such techniques and know-how are not always
protectable by patent law. Firstly, patents are in principle available only for inventions in the field of
technology and not for innovative achievements concerning the conduct of business, etc. Moreover,
some technical discoveries or information, while providing a valuable commercial advantage for a
particular trader, may lack the novelty or inventive step required to make them patentable.
Furthermore, while a patent application is pending, as long as the information has not been disclosed
to the public, the owner of the information to be patented ought to be protected against any wrongful
disclosure of the information by others, regardless of whether or not the application eventually leads
to the grant of a patent. All such information can be classified as a trade secret. Although the Paris
Convention does not mention trade secrets as such, Article 10bis on unfair competition requires
protection against any act of competition contrary to honest practices in industrial or commercial
matters; the need for protection against wrongful disclosure of undisclosed information (another term
for trade secrets) is generally recognized.

There are many examples of trade secrets, which are very well guarded. To name just one, the
formula of soft drink coca-cola is one of the most successfully guarded trade secret till date.
Naturally, lot of efforts are taken to keep this secret, which is quite expensive affair. The trade
secrets are also kept at small scale. You may have a bakery in your locality, which bakes the
cakes or cookies in unique way. The recipes of these items are the trade secrets of that baker.
There are many traditional dishes cooked in a family, whose recipes are passed on from
generation to generation, but kept just within the family. All these types of trade secrets are also
protected in some national laws.

In this Unit, you will learn about the protection of trade secrets. Some basic aspects like how
to guard a trade secret, what is meant by violation of a trade secret, how to make a choice
between patent protection or trade secret, are also discussed.

What is a trade secret? Before we start discussing the reasons for protecting a trade secret,
let us first understand, what is a trade secret?

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There are several lines of inquiry that serve to determine what information constitutes a trade secret:
the extent to which the information is known to the public or within a particular trade or industry, the
amount of effort and money expended by the trader in developing the secret information, the value of
that information to the trader and to his competitors, the extent of measures taken by the trader to
guard the secrecy of the information and the ease or difficulty with which the information could be
properly acquired by others.

From a subjective point of view, the trader involved must have a considerable interest in keeping certain
information as a trade secret. Although contractual obligations are not necessary, the trader must have

shown the intention to have the information treated as a secret. Frequently, specific measures to maintain
the secrecy of the particular information are also required. The fact that the information has been supplied
confidentially will not always be sufficient. In some countries (for example, the United States of America

and Japan), the efforts made by the owner of the information to keep it secret are considered by courts to
be of primary importance in determining whether the information constitutes a trade secret at all.

From an objective point of view, the information must, in order to qualify as a trade secret, be known to a
limited group of persons only, that is, it must not be generally known to experts or to competitors in the
field. Even patent applications may be regarded as trade secrets as long as they are not published by the
patent office. Therefore, external publications or other information that is readily available will not be
considered secret. For example, the use or disclosure of a trade secret by a person who has acquired it in a
legitimate business transaction and without any negligence is not deemed unfair. On the other hand,
absolute secrecy is not a requirement, for the information might also be discovered independently by
others. Also, business partners can be informed without loss of secrecy if it is obvious that the information
has to remain secret. Factors that indicate whether the information has the necessary degree of
confidentiality to constitute a protectable trade secret are whether it contains material that is not
confidential if looked at in isolation, whether it has necessarily to be acquired by employees if they are to
work efficiently and whether it is restricted to senior management or is also known at the junior level. Still,
the most solid proof is the strict confidentiality of the information and the contractual duty to keep it
secret.

A trade secret can be any formula, pattern, idea, process, physical device or a compilation of

information which provides its owner a competitive advantage in the market. The trade

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secret is expected to be treated in such a way that it is not available to others (public or
competitors) unless obtained by theft or by improper acquisition.

Some potential matters of trade secret can be a recipe, chemical formula, survey methods, confidential
data, computer programmes, manufacturing process, marketing strategies, financial strategies or a
new invention for which patent application is not yet filed.

Why to protect a trade secret?

The information is usually protected as a trade secret when the other forms of IPR protection cannot
be used. For example, an idea cannot be protected by patent, it cannot be protected by a copyright,
unless it is expressed or fixed. However, to protect this idea can be very crucial from the commercial
point of view. In such case, it has to be protected as a trade secret. Many other matters like progress of
developing a new product, customer list with critical comments, a negative know-how, which gives
information about ineffectiveness of certain product or process, cannot be protected by any other IPR
tools, without disclosing them. All this information can be kept as trade secrets.

You may be wondering, how to make a choice between a trade secret and a patent protection for your

invention. For this, you must understand the pros and cons of both systems.

Trade Secret versus Patent

The patent protection guarantees that nobody can work your invention without your prior
authorization. This protection is valid within the term of the patent protection (typically 20
years). However, in your patent application, you disclose the patent for public knowledge and
the moment the term of patent protection ends, the information disclosed in your application
becomes a public domain information. Anybody is free to use it. Further, you have to pay
prescribed fee for maintaining the patent protection valid and that too, in all the countries,
where its protection is expected.

Now, keeping a trade secret can be a much simpler and cheaper method, if you can maintain
secrecy in your organization. The less the number of people having access to the entire secret
information the better are the chances of retaining the trade secret. The trade secret can be
held indefinitely.

There are, however, some disadvantages of protecting confidential business information as a trade secret.

If the secret is embodied in an innovative product, others may be able to inspect

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it, dissect it and analyze it (i.e. reverse engineer it) and find out the secret and be thereafter
entitled to use it. Trade secret protection of an invention in fact does not provide the exclusive
right to exclude third parties from making commercial use of it. Only patents and utility models
can provide this type of protection. Once the secret is made public, anyone may have access to it
and use it at will. Also a trade secret may be patented by someone else who developed the
relevant information by legitimate means.

A trade secret is more difficult to enforce than a patent. The level of protection granted to trade
secrets varies significantly from country to country, but is generally considered weak, particularly
when compared with the protection granted by a patent.

Hence, though decision between trade secret and patent protection will have to be taken on a
case-by-case basis, in the following circumstances it would be advisable to make use of trade
secret protection:

When the secret is not patentable; or

When the likelihood is high that the information can be kept secret for a considerable period
of time. If the secret information consists of a patentable invention, trade secret protection
would only be convenient if the secret can be kept confidential for over 20 years (period of
protection of a patent) and if others are not likely to come up with the same invention in a
legitimate way; or

When the trade secret is not considered to be of such great value to be deemed worth a
patent; or

When the secret relates to a manufacturing process rather than to a product, as products
would be more likely to be reverse engineered; or

It is important to bear in mind, however, that trade secret protection is generally weak in most
countries, that the conditions for, and scope of, its protection may vary significantly from country to
country depending on the existing statutory mechanisms and case law, and that the courts may require
very significant and possibly costly efforts to preserve secrecy.

Tools to protect a trade secret

Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected
without any procedural formalities. Consequently, a trade secret can be protected for an unlimited
period of time. There are, however, some conditions for the information to be considered a trade
secret. Compliance with such conditions may turn out to be more difficult and costly than it would
appear at first glance. While these conditions vary from

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country to country, some general standards exist which are referred to in Art. 39 of the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement):

The information must be secret (i.e. it is not generally known among, or readily accessible
to, circles that normally deal with the kind of information in question);

It must have commercial value because it is a secret; and

It must be subjected to reasonable steps by the rightful holder of the information to keep it
secret.

The trade secrets are widely used by the small and medium scale enterprises (SMEs). In fact,
many such enterprises rely almost exclusively on trade secrets for the protection of their IP.

This may include:

Trade secret policy: Making sure that a limited number of people know the secret and
that, all those who do, are well aware that it is confidential information.

Employee agreement: Signing confidentiality agreements with business partners

whenever disclosing confidential information.

Non-disclosure Agreements: Including confidentiality agreements within employees'

contracts. Under the law of many countries, however, employees owe confidentiality
to their employer even without such agreements.

Adequate documents: The duty to maintain confidentiality on the employer's secrets

generally remains even after the employee has left the employment. This duty may be
limited to a certain period of time after the employment ceases.
Security Systems: It is important to make sure that enterprises take all necessary
measures to protect their trade secrets effectively.

Case studies

Bayer Corporation Vs. Union of India 162(2009) DLT 371

IPR Law Bayer Corporation, instead of filing a suit for infringement, filed an inventive writ

allegedly infring
Act should not even be processed or entertained. It is for the first time that an attempt is made
to link drug approval to patent infringement in India. However, the Delhi High Court,
denying the injunction, imposed a substantial cost of Rs. 6.75 Lakh to deter any such future
attempts.

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Bayer relied on the argument that a combined reading of Section 2 of the Drugs and
Cosmetic Act along with Section 48 of the (Indian) Patent Act, 1970 establishes a Patent
Linkage Mechanism under which no market approval for a drug can be granted if there a

nder the Drugs Act, for which market approval cannot be granted.

- Patent Linkage mechanism in

India as both the Acts have different objectives and the authority to determine patent
standards, is within the exclusive domain of the Controller of Patents. Moreover, the patent

the market approval of a drug does not amount to infringement of patent. Therefore, the
patent infringement cannot be presumed, it has to be established in a court of law. Such
adjudication is beyond the jurisdiction of Drug Authorities.

cannot come under the category of spurious goods as there is no element of passing off like

The Rice Patent

RiceTec Inc, was issued the Patent number 5663484 on Basmati rice lines and grains on
September 2, 1997.
In abstract, "the invention relates to novel rice lines and to plants and grains of these lines.
The invention also relates to a novel means for determining the cooking and starch properties
of rice grains and its use in identifying desirable rice lines. Specifically, one aspect of the
invention relates to novel rice lines whose plants are semi-dwarf in stature, substantially
photoperiod insensitive and high yielding, and produce rice grains having characteristics
similar or superior to those of good quality Basmati rice. Another aspect of the invention
relates to novel rice lines produced from novel rice lines. The invention provides a method
for breeding these novel lines. A third aspect...relates to the finding that the starch index (SI)
of a rice grain can predict the grain's cooking and starch properties, to a method based
thereon for identifying grains that can be cooked to the firmness of traditional Basmati rice
preparations, and to the use of this method in selecting desirable segregants in rice breeding
programs."

The Government of India's response to the Patent

In an official release, the government of India reacted immediately after learning of the

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Basmati patent issued to RiceTec Inc., stating that it would approach the US patent office and
urge them to re-examine the patent to a United States firm to grow and sell rice under the
Basmati brand name in order to protect India's interests, particularly those of growers and
exporters. Furthermore, a high level inter-ministerial group comprising of representatives of
the ministries and departments of commerce, industry, external affairs, Council for scientific
and industrial research (CSIR), Agriculture, Bio-technology, All India Rice Exporters
Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were
mobilized to begin an in-depth examination of the case. The contents and implications of the
patent are currently being analyzed in consultation with patent attorneys and agricultural
scientists. The government of India is particularly concerned about the patenting of Basmati
because of an earlier case where the US granted a patent to two Indian-born scientists on the
use of Turmeric as a wound healing agent. This case worked in favor of India because the
patent was subsequently revoked after scientists of (CSIR) successfully challenged the
patenting on the ground that the healing properties of Turmeric had been 'common
knowledge' in India for centuries. There is a clause in US patent laws that will accept any
information already available in published or written form anywhere in the world as 'common
knowledge'. As a result, India was able to furnish published evidence to support their case
that the healing characteristics of Turmeric is not a new invention and as such cannot be
patented.
In the presence of widespread uprising among farmers and exporters, the nation of India as a
whole feel confident of being able to successfully challenge the Basmati patent by RiceTec
Inc. According to the Economic Times of India, the law firm of Sagar and Suri who won the
Turmeric patent case and presently representing the government against RiceTec Inc. in
existing cases, said; "RiceTec has got a patent for three things: growing rice plants with
certain characteristics identical to Basmati, the grain produced by such plants, and the method
of selecting the rice plant based on a starch index (SI) test devised by RiceTec Inc." The
lawyers plan to challenge this patent on the basis that the above mentioned plant varieties and
grains already exist and thus cannot be patented. In addition, they encountered some
information from the US National Agricultural Statistics Service in its latest Rice Year book
1997, released in January 1998, which states that almost 75 percent of US rice imports are the
Jasmine rice from Thailand and most of the remainder are from India and Pakistan,"varieties
that cannot be grown in the US" This piece of information is rather interesting and can be
used as a weapon against the RiceTec Basmati patent. India won the case.

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