Intellectual Property Rights

MODULE – 02

PATENT LAW
PATENT: A patent is an exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or offers a new technical
solution to a problem. To get a patent, technical information about the invention must be
disclosed to the public in a patent application. In modern terms, the patent is usually referred
to as the right granted to an inventor for his Invention of any new, useful, non-obvious process,
machine, article of manufacture, or composition of matter. There are three basic tests for any
invention to be patentable:
i. Firstly, the invention must be novel, meaning thereby that the Invention must not be in
existence.
ii. Secondly, the Invention must be non- obvious, i.e., the Invention must be a significant
improvement to the previous one; mere change in technology will not give the right of
the patent to the inventor.
iii. Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the
Invention must not be solely used in any illegal work and is useful to the world in a
bonafide manner.

An invention considered as new if, on the date of filing the application, any such invention is
not known to the public in any form, i.e. oral, writing, or any other form. Anything shall not be
termed as inventive if such a thing is already known to the public domain. The patent has a
limited term of 20 years, which is counted from the date of filing of the patent application. A
patent is a territorial right. Thus it can only be applied in the country where it has been granted.
Under the Indian patent law, a patent can be obtained only for an invention which is new and
useful. The invention must relate to the machine, article or substance produced by a
manufacturer, or the process of manufacture of an article. A patent may also be obtained for
innovation of an article or of a process of manufacture. In respect to medicine or drug and
certain classes of chemicals, no patent is granted for the substance itself even if it is new, but
the process of manufacturing and substance is patentable. The application for a patent must be
true and the first inventor or the person who has derived title from him, the right to apply for a
patent being assignable.
TYPES OF PATENT
A patent is defined as a statutory privilege granted by the government to inventors, and to other
persons deriving their rights from the inventor, for fixed years, to exclude other persons from
manufacturing, using or selling a patented product or process. Hence a patent can be for a
process or for a product. There is strict divergence between product and process patent regimes.
The developed countries follow product patent system. On the other, process patent system is
preferred by the developing world. The two systems are known for their different levels of
protection to inventors.

1. PRODUCT PATENT
In the case of product patent, it is an exclusive right given to the original inventor of a
product. This means that no other manufacturer can provide the same product through
the same or any other process. The implication is that there will not be a competitor for
the producer as it is the product which is patented. Product patent system gives higher
level of protection to the inventor as there will not be any other patent holder. TRIPs
follow the product patent regime. India’s 1970 Patent Act allowed only process patent
before it was amended in 2005 to comply with WTO’s TRIPs provisions under which
there is only
product patents.

2. PROCESS PATENT
Under a process patent, the patent is granted for a particular manufacturing process, and
not for the product itself. Any other person can produce the same product through some
other PROCESS, modifying the various parameters. The implication is that there will
be more than one producer for the same product because of the possibility of different
process for the manufacturing of the product. Weakness of the process patent regime is
that it gives less protection for the inventor. There is high tendency for competitors to
reengineer the original invention by discovering a new process with less strain and
investment. Benefit of process patent regime is that it reduces the element of monopoly.
CRITERIA FOR PATENT
To get a product patented, it has to fulfil the following requirements, which also serve as the
principles of patent law in India. The following criteria determine what can be patented in
India:
1. NOVELTY OR NEWNESS: Novelty is an important criterion in determining
patentability of an invention. novelty or new invention is defined under Section 2(l) of
the Patents Act as "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 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".
Simply put, the novelty requirement basically states that an invention should never have
been published in the public domain. It must be new with no same or similar prior arts.

2. NON-OBVIOUSNESS OR INVENTIVE STEP: Inventive step is defined under

Section 2(ja) of the Patents Act as "a feature of an 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". This means
that the invention must not be obvious to a person skilled in the same field as the
invention relates to. It must be inventive and not obvious to a person skilled in the same
field.

3. INDUSTRIAL APPLICABILITY: Industrial applicability is defined under Section

2(ac) of the Patents Act as "the invention is capable of being made or used in an
industry". This essentially means that the invention cannot exist in abstract. It must be
capable of being applied in any industry, which means that the invention must have
practical utility in order to be patentable.

NON-PATENTABLE INVENTIONS
As per Sections 3 and 4 of the Indian Patent Act, the following innovations are not Patentable
in India:
1. An invention that is frivolous or trivial
2. An invention that claims anything obviously contrary to well established natural laws
3. The mere discovery of a scientific principle
4. Moreover, an invention whose primary goal or intended use is contrary to law or
morality or is injurious to public health
5. The formulation of an abstract theory
6. Further, 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
7. The mere discovery of any new property or new 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 employs at least one new reactant
8. A substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance
 9. Similarly, the mere arrangement or rearrangement or duplication of known devices,
each functioning independently of one another in a known way
10. A method of agriculture or horticulture.
11. Inventions relating to atomic energy
12. Any process for the medicinal, surgical, curative, prophylactic, or any other type of
treatment of people or animals or other creatures
13. Plants and animals in whole or any part thereof other than microorganisms but including
seeds, varieties, and species and essentially biological processes for production or
propagation of plants and animals
14. A mathematical or business method or a computer programme per se or algorithms
15. Likewise, a literary, dramatic, musical, or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions
16. Similarly, a mere scheme or rule or method of performing a mental act or method of
playing a game
17. Presentation of information
18. Topography of integrated circuits
19. An invention which in effect is traditional knowledge or is based on the properties of
traditional knowledge.

PATENT CLAIMS & SPECIFICATIONS

PATENT SPECIFICATION
The provisions related to Specification of a Patent in India are provided under Section 9, 10,
57, 59 of the Patent Act, 1970 and Rule 13, 14, 24A of the Patent Rules, 2003. The Specification
of a Patent is a techno-legal document that contains technical and scientific claims and
disclosures related to the invention which are the basis of rights associated with the Patent. The
Specification, thus, forms a crucial part of the patent application. As per the Patent Act, 1970,
and the Patent Rules, 2003, a Patent Specification can be filed either as a Provisional or
Complete Specification.
The Provisional or Complete Specification is required to be submitted in Form-2 as prescribed
under the Patent Act, 1970, and the Patent Rules, 2003. The Form-2 is also required to be filed
along with an Application Form-1 and other required documents together with the fees
prescribed as provided in the First Schedule.
As per the Patent Act, 1970, and the Patent Rules, 2003, the first page of Form – 2 should
contain the following essentials:
i. The Title of the invention;
ii. The Name of each of the applicants for Patent;
iii. The Address of each of the applicants for Patent;
iv. The Nationality of each of the applicants for Patent; and
v. The Preamble to the Description.
Provisional Specification:
When the applicant of the application for grant of Patent finds that his/her invention has reached
a phase where the invention can be disclosed but the final phase of the invention has not
attained by it, he/she may go for a preparation of a disclosure of the invention in the form of a
description in written form and submit such description of the Patent at the Patent Office as a
Provisional Specification of Patent.

Complete Specification:
Complete Specification of Patent is a techno-legal document which particularly and fully
describes the invention and also discloses or reveals the best technique of performing the
invention. In the Patent proceedings, a Complete Specification is an important document; it is
advised to the applicant that Complete Specification is required to be drafted with the highest
care and should be without any ambiguity.

PATENT CLAIM
A patent claim is indisputably the most important part of a patent specification. It defines the
boundary of the patent. To break it down, a patent claim defines exactly what is claimed by the
invention and therefore what is sought to be protected. It clearly lays down what the patent
does and does not cover. Simply put, the extent of protection conferred by a patent is defined
by the patent claims. A claim is usually expressed as a statement of technical facts expressed
in legal terms, defining the scope of the invention sought to be protected.

Independent claims:
They are 'stand alone' claims that do not bear reference to any other claim. It contains a
preamble and all the elements necessary to define the invention. The first claim is usually an
independent claim that sets the tone for the protection claimed by the invention. Independent
claims are usually broader as compared to the dependent claims so as to prevent potential
infringers from circumventing the independent claim in any which way.
Independent Claims may be of three types:
i. A claim for a thing
ii. A claim for a method of making a thing
iii. A claim for a method of using a thing

Dependent Claims:
Dependent claims always bear reference to an earlier claim or independent claim and limit their
scope. Dependent claims are therefore relatively narrow as they limit the scope of an earlier
claim. Further, dependent claims refine the scope of protection sought for an invention.
Additionally, it may contain additional non-essential features and even the minute aspects and
optional features that are not described in the independent claim.

OVERVIEW OF PATENT PROCEDURE

Step 1: Write down the invention (idea or concept) with as much details as possible.
Collect all the information about your invention such as:
• Area of invention
• Description of the invention what it does
• How does it work
• Advantages of the invention
Ideally, if you have worked on the invention during research and development phase you
should have something call lab record duly signed with date by you and respective authority.

Step 2: Include drawings, diagrams or sketches explaining working of invention.

The drawings and diagrams should be designed so as to explain the working of the invention
in better way with visual illustrations. They play an important role in patent application.

Step 3: Check whether the invention is patentable subject matter.

All inventions may not be patentable, as per Indian patent act there are certain inventions that
are not patentable explained in detail in(inventions not patentable sec 3 and 4)

Step 4a: Patentability search

The next step would be finding out whether your invention meets all patentability criteria as
per Indian patent act? That is,
• Novelty
• Non-obviousness/inventive step
• Industrial application
The detailed explanation for patentability criteria is given here (what are patentability
criteria’s). The patentability opinion is provided by the patent professionals up on conducting
extensive search and forming patentability report.
Step 4b: Decide whether to go ahead with patent
The patentability report and opinion helps you decide whether to go ahead with the patent or
not, chances are what you thought as novel might already been patented or know to public in
some form of information. Hence this reports saves lots of time, efforts and cost of the inventor
by helping him decide whether to go ahead with the patent filing process or not.

Step 5: Draft (write) patent application

In case you are at very early stage in the research and development for your invention, then
you can go for provisional application. It gives following benefits:
• Secures filing date
• 12 months of time to file complete specification
• Low cost
After filing provisional application, you secure the filing date which is very crucial in patent
world. You get 12 months of time to come up with the complete specification, up on expiry of
12 months your patent application will be abandoned. When you complete the required
documents and your research work is at level where you can have prototype and experimental
results to prove your inventive step you can file complete specification with patent application.
Filing the provisional specification is the optional step, if you are at the stage where you have
complete information about your invention then you can directly go for complete specification.

Step 6: Publication of the application

Up on filing the complete specification along with application for patent, the application is
published after 18 months of first filing. An early publication request can be made along with
prescribed fees if you do not wish to wait till the expiry of 18 months from the date of filing
for publishing your patent application. Generally the patent application is published within a
month form request form early publication.

Step 7: Request for examination

The patent application is examined only after receiving request for examination that is RFE.
Up on receiving this request the controller gives your patent application to a patent examiner
who examinees the patent application with different patentability criteria like:
Patentable subject matter
• Novelty
• Non-obviousness/Inventive step
• Industrial application
The examiner creates a first examination report of the patent application upon reviewing it for
above terms. This is called patent prosecution. Everything happening to patent application
before grant of patent is generally called as patent prosecution. The first examination report
submitted to controller by examiner generally contains prior arts (existing documents before
the date of filing) which are similar to the claimed invention, and same is reported to patent
applicant.

Step 8: Respond to objections

Majority of patent applicants will receive some type of objections based on examination report.
The best thing to do it analyse the examination report with patent professional (patent agent)
and creating a response to the objections raised in the examination report.
This is a chance for an inventor to communicate his novelty over prior arts found in the
examination report. The inventor and patent agent create and send a response to the
examination that tries to prove to controller that his invention is indeed patentable and satisfies
all patentability criteria’s.

Step 9: Clearing all objections

This communication between controller and patent applicant is to ensure that all objections
raised in the patent application are resolved. (if not the patent will not be granted ) and the
inventor has his fair chance to prove his point and establish novelty and inventive step over
existing prior arts. Up on finding the patent application in order of grant, it is grant to the patent
applicant as early as possible.

Step 10: Grant of patent

The application would be placed in order for grant once it is found to be meeting all
patentability requirements. The grant of patent is notified in the patent journal which is
published time to time.

INFRINGEMENT OF PATENTS
Violation of a patentee's right with respect to some invention is known as patent infringement.
When the rights of the patent holder or the claims in the patent are violated by a third party,
without the consent or license of the patent holder, such third party is said to have infringed the
patent rights of patent holder. While doing a patent infringement risk analysis, it is necessary
to understand the types of patent infringements to ensure that the invention is not likely to
infringe any of the existing patent rights.
The Patents Act, 1970 does not provide specifications as to what would be considered as an
infringement of a patented product. But it lays down two kinds of activities which when
committed without the consent of the patent holder would constitute infringement:
 i. Making, using, offering for sale, selling, importing the patented product,
ii. Using the patented process, or using, offering for sale, selling, or importing the
product directly contained by that process.

LEGISLATIONS GOVERNING PATENT INFRINGEMENT

The major enactment governing patent infringements in India is the Patents Act, 1970 which
was implemented in 1972. It made pharmaceutical product innovations, as well as those for
food and agro-chemicals, un-patentable in India. It allowed for copying and marketing of the
innovations in India which were patented elsewhere in the world. This act also imposed
restrictions on the import of finished formula and introduced strict price control regulations.
However, this act proved detrimental to foreign investments in the country since it did not
benefit the big foreign multinational corporations and was not in consonance with the global
patent system.
In 1992, India became a member of the WTO and therefore, it became important to amend
the existing law in order to meet the requirements of the TRIPS agreement. In order to
comply with the TRIPS agreement, the introduction of Exclusive Marketing Rights and the
mailbox system was important. Under the EMR, exclusive rights would be provided to a
foreign company to market a pharmaceutical and agricultural product in the Indian market for
a specified period of 5 years. The mailbox system would be the one that would receive all
applications for the grant of patents of pharmaceutical and agricultural products. In order to
implement these provisions in the Patents Act, 1970, amendments to the Act were introduced
in 1999, 2001, 2001, and 2005.
However, these provisions were not adequate to bring the Indian Patents Act in conformity
with the Global Patents Act. Therefore, a major amendment was passed in the year 2005
known as the Patents Amendment act.

What acts constitute Infringement?

Section 48 of the Patents Act, 1970 grants the following rights to the patentee:
• In case of a product patent, the following sections would amount to infringement – making,
using, offering for sale, selling or importing for these purposes, the product in India without
the permission of the patentee.
• In case of a process patent, the following would amount to infringement – using, offering
for sale, selling or importing for these purposes the product obtained directly by that process
in India without the permission of the patentee.
Any person who, without the consent of the patentee performs the above activities, infringes
the patent.
TYPES OF PATENT INFRINGEMENT
• Direct infringement - which is the most apparent and common type of infringement. This
type of infringement includes marketing, sale or commercial use of an exact patented item or
invention that performs substantially identical functions. Direct infringement may be literal or
nonliteral (also known as the doctrine of equivalents). Literal infringement occurs when each
and every component in the patent specification has been used in the alleged infringing
product/device or process; while Non-Literal infringement occurs when the infringing device
or process may be similar or equivalent to the claimed invention (performs substantially the
same function; in substantially the same way and to achieve substantially the same result –
Triple Identity Test).
• Indirect infringement is when infringement does happen but the direct infringement is
facilitated by someone else. Indirect infringement are of two types, inducted infringement
wherein one actively induces the other person to infringe a patent by encouraging, assisting,
aiding, inducing him/her to do so and contributory infringement, wherein there is an
intentional participation/assistance by one party in an act of infringement to the other party
making them vicariously liable for the acts of the infringer.

What acts do not constitute Infringement?

There are certain acts which do not constitute/result in infringement. Section 107A states that
the following acts do not constitute infringement -
• Any act of making, constructing, using, selling or importing a patented invention solely for
uses reasonably related to the development and submission of information required under any
Indian law or law of a country other than India, that regulates the manufacture, construction,
use, sale or import of any product.
• The importation of patented products by any person from a person who is duly authorised
by patentee under the law to produce and sell and distribute the products.

REMEDIES FOR PATENT INFRINGEMENT

• An injunction issued by a court;
• Monetary Damages ;
• Attorney’s Fees; and
• Seizure, Destruction and/or Impoundment of the infringing goods.
Generally, the law allows an inventor to enforce it rights by stopping any infringing use and
obtain payment for any damages suffered by the unauthorized use of the patented invention.
Typically, the court will stop the infringement through an injunction which is an order issued
by a court which can be temporary or permanently prevent the infringer from making, using
or selling the product. In addition, the court may allow the inventor to collect money for any
losses suffered as a result of the infringement.
COMPULSORY LICENSES
Compulsory licenses are authorizations given to a third-party by the Controller General to
make, use or sell a particular product or use a particular process which has been patented,
without the need of the permission of the patent owner. This concept is recognised at both
national as well as international levels, with express mention in both (Indian) Patent Act,
1970 and TRIPS Agreement. There are certain pre-requisite conditions, given under sections
84-92, which need to be fulfilled if a compulsory license is to be granted in favour of
someone.
As per Section 84, any person, regardless of whether he is the holder of the license of that
Patent, can make a request to the Controller for grant of compulsory license on expiry of
three years, when any of the following conditions is fulfilled –
1. the reasonable requirements of the public with respect to the patented invention have
not been satisfied
2. the patented invention is not available to the public at a reasonably affordable price
3. the patented invention is not worked in the territory of India.
Further, compulsory licenses can also be issued suo motu by the Controller under section 92,
pursuant to a notification issued by the Central Government if there is either a "national
emergency" or "extreme urgency" or in cases of "public non-commercial use".
The Controller takes into account some more factors like the nature of the invention, the
capability of the applicant to use the product for public benefit and the reasonability, but the
ultimate discretion lies with him to grant the compulsory license. Even after a compulsory
license is granted to a third party, the patent owner still has rights over the patent, including a
right to be paid for copies of the products made under the compulsory licence.2