UNIT-3 INTELLECTUAL PROPERTY LAW

UNIT-3

Table of Contents

QUESTION- What do you mean by Patent? Explain the process of obtaining patent.

What is a Patent?

A patent is a legal right granted by a government to the inventor of a novel, useful, and non-obvious invention. In return for this right, the inventor discloses the details of the invention to the public, enabling others to learn from it and build upon it. A patent provides the inventor with exclusive rights to the use, production, sale, or distribution of the invention for a certain period, typically 20 years from the filing date.

The main objective of granting a patent is to promote innovation by encouraging inventors to share their creations in exchange for protection from unauthorized use of their inventions.

Types of Patents:

  1. Utility Patents: Protection for new inventions or discoveries, such as processes, machines, compositions of matter, or improvements of existing inventions.
  2. Design Patents: Protection for new, original, and ornamental designs for an article of manufacture.
  3. Plant Patents: Protection for new varieties of plants that are asexually reproduced.

Process of Obtaining a Patent (Under the Patents Act, 1970)

The process of obtaining a patent in India is governed by the Patents Act, 1970, and involves several key steps, from filing the application to granting the patent. Here’s a detailed breakdown of the process:

Before applying for a patent, it’s advisable to conduct a patent search or prior art search to ensure that the invention is novel and hasn’t already been patented. This search helps to identify if there are any existing patents or public disclosures that could potentially affect the patentability of the invention.

  • Prior Art refers to all information that is available to the public before the filing date of the patent application, which might include existing patents, research publications, or publicly used inventions.

2. Filing of the Patent Application

Once the patentability of the invention is confirmed, the next step is to file a patent application. There are two types of applications in India:

  • Provisional Application: Filed when the invention is not yet complete, but the applicant wants to secure a filing date. This gives the applicant 12 months to file a complete application.
  • Complete Application: Contains the full details of the invention and is required to be filed within 12 months from the date of filing the provisional application.

3. Application Filing Procedure (Sections 7 and 8 of the Patents Act, 1970)

  • Form 1: Application for a patent.
  • Form 2: Complete specification of the invention.
  • Form 3: Statement and undertaking under section 8 (if applicable).
  • Form 5: Declaration of the applicant’s right to file the application.
  • Form 26: Power of attorney (if an agent is filing on behalf of the inventor).

4. Patent Examination Request (Section 11A)

After filing, the application is not examined immediately. The applicant must file a request for examination within 48 months from the filing date of the application (Section 11A). If the request is not made within this period, the patent application will be abandoned.

The Patent Office then assigns an examiner to assess whether the invention satisfies the requirements for patentability. This examination is based on the following criteria:

  • Novelty: The invention must be new and not disclosed in any prior art.
  • Inventive Step: The invention must involve an inventive step that is not obvious to someone skilled in the field.
  • Industrial Applicability: The invention must be capable of being used in industry.
  • Non-obviousness: The invention must not be obvious to a person skilled in the art based on prior knowledge or technology.

5. Patent Examination Report (Office Action)

Once the examination is complete, the examiner issues an examination report, which typically includes objections or requirements for clarifications. The applicant is given an opportunity to respond to these objections, and the examiner reviews the response.

  • If the examiner is satisfied with the response, the patent application proceeds to grant.
  • If the examiner is still not satisfied, the applicant may have to amend the application and further argue against the objections.

6. Grant of Patent (Section 43)

If the patent application satisfies all the criteria for patentability, the patent is granted, and the inventor is awarded exclusive rights over the invention for 20 years from the date of filing.

Upon grant, the details of the patent are published in the Patent Journal, making the invention publicly accessible.

7. Post-Grant Opposition (Section 25)

After the grant of a patent, there is a post-grant opposition period of 12 months during which any interested party can file an opposition to the grant. If the opposition is successful, the patent can be revoked.

8. Renewal of Patent (Section 53)

A granted patent is valid for 20 years from the filing date, but it needs to be renewed annually. The patentee must pay the prescribed renewal fee each year to keep the patent in force.

Grounds for Rejection of a Patent Application

A patent application can be rejected for several reasons under the Patents Act, 1970. The most common grounds include:

1. Lack of Novelty (Section 2(1)(j))

  • The invention must be new and not have been previously published or used anywhere in the world. If the invention has been disclosed to the public through prior art, the patent application may be rejected.

2. Lack of Inventive Step (Section 2(1)(ja))

  • If the invention is considered to be obvious to someone skilled in the relevant field based on prior art, it will not meet the requirement of an inventive step and may be rejected.

3. Non-Patentable Subject Matter (Section 3)

  • Certain categories of inventions are excluded from patentability, including:
  • Mathematical methods.
  • Business methods or computer programs.
  • Inventions relating to atomic energy.
  • Human/animal biological processes.
  • Inventions contrary to public order or morality.

4. Lack of Industrial Applicability (Section 2(1)(ac))

  • If the invention cannot be applied in an industry or does not have any practical utility, it may be rejected.

5. Insufficient Disclosure (Section 10)

  • The patent application must provide a clear and complete disclosure of the invention. If the application fails to meet the required disclosure standards, it may be rejected.

6. Defective or Incomplete Application

  • If the application is incomplete, lacks necessary documents, or contains defective forms, it can be rejected.

Conclusion

A patent is a crucial intellectual property right that grants an inventor exclusive rights to their invention for a limited period, provided the invention is novel, non-obvious, and industrially applicable. The process of obtaining a patent in India involves several steps, including conducting a prior art search, filing an application, requesting examination, responding to objections, and eventually obtaining the grant of the patent. Rejection may occur on grounds such as lack of novelty, inventive step, or insufficient disclosure.

QUESTION- Discuss the various rights and obligations of patentee with exceptions.

Rights and Obligations of a Patentee under the Patents Act, 1970

The Patents Act, 1970 provides specific rights and obligations for patentees to ensure the protection and enforcement of their intellectual property. A patentee is the person or entity that holds the patent rights granted under the Act for an invention. Below, we discuss the rights and obligations of a patentee, along with relevant exceptions.

Rights of a Patentee

Once a patent is granted to an inventor, it gives them exclusive rights over the invention for 20 years (subject to renewal), provided they adhere to the conditions set forth in the Act. The main rights of a patentee under the Patents Act, 1970 are as follows:

1. Exclusive Rights to Use the Invention (Section 48)

  • Section 48 of the Patents Act grants the patentee the exclusive right to make, use, sell, distribute, or import the patented invention.
  • This means that the patentee has the right to exclude others from commercially exploiting the invention without their consent.
  • Example: If a pharmaceutical company holds a patent for a drug, no other company can manufacture or sell that specific drug without permission.

2. Right to Assign or License the Patent (Section 68)

  • The patentee has the right to assign or license the patent to others. This can be done through an agreement to transfer the rights (assignment) or to allow others to use the patent in return for a fee (licensing).
  • A license can be either exclusive (granting the licensee exclusive rights) or non-exclusive (allowing the patentee to grant the same rights to others).

3. Right to File a Suit for Infringement (Section 104)

  • Under Section 104, the patentee has the right to file a lawsuit in the court for the infringement of their patent rights.
  • If someone uses the patented invention without the patentee’s consent, the patentee can take legal action for relief, which may include damages, injunctions, and other remedies.
  • Case Law: Biochem Pharmaceutical Industries vs. BioChem Synergy Ltd. (1997) — The court emphasized the importance of the patentee’s exclusive rights, stating that the patentee could take legal action for unauthorized use of the patented product or process.

4. Right to Request for a Supplementary Protection Certificate (Section 92A)

  • Section 92A allows the patentee to request a supplementary protection certificate (SPC) for a patented pharmaceutical or agrochemical product that has been authorized for sale in India.
  • This gives the patentee an extension on the patent term in certain situations, typically in the case of regulatory delays.

5. Right to Prevent Importation of Infringing Products (Section 48)

  • Under Section 48, a patentee can prevent others from importing products that infringe upon their patent rights. This right extends to prohibiting the unauthorized import of patented goods.

Obligations of a Patentee

In addition to the rights, the patentee also has certain obligations under the Patents Act, 1970:

1. Duty to Disclose the Invention (Section 10)

  • The patentee has the obligation to disclose the complete details of the invention in the patent application. This includes the specification of the invention, drawings (if necessary), and a clear and comprehensive description.
  • Failure to provide adequate disclosure may result in the patent being invalidated.

2. Duty to Pay Annual Maintenance Fees (Section 53)

  • A patentee must pay an annual renewal fee to maintain the validity of the patent. This fee is payable from the 4th year after the filing date and continues until the 20th year of the patent term.
  • If the patentee fails to pay the renewal fee, the patent can expire before the full 20-year term.

3. Duty to Enforce the Patent Rights (Section 104)

  • The patentee is responsible for enforcing their rights. This includes taking action against infringers and ensuring that their rights are not violated.
  • If an infringement occurs, the patentee can file a suit for infringement in a court of law under Section 104.

4. Duty to Use the Patent (Section 83)

  • Under Section 83, the patentee is obligated to commercially exploit the invention. If the patentee does not use the invention or grant a license for others to use it, the patent may be revoked.
  • This is intended to prevent “patent hoarding” (holding patents without using or licensing them), which can be detrimental to public welfare.

5. Duty to Provide Information to the Patent Office (Section 8)

  • The patentee must inform the Patent Office if they have applied for patents in other countries or if there are any developments regarding the invention. This is mandatory under Section 8.

Exceptions to the Rights of a Patentee

While the patentee enjoys certain exclusive rights, there are exceptions and limitations to these rights, designed to balance the interests of the public and other entities.

1. Use of Patent for Non-Commercial Purposes (Section 47)

  • Section 47 provides that the government or any person authorized by the government can use a patented invention without the consent of the patentee for the purpose of public interest. This includes public health, safety, nutrition, and other significant social needs.
  • In such cases, the government can issue a compulsory license, allowing the invention to be used without the patentee’s permission.
  • Example: In public health emergencies, such as an outbreak of a disease, the government can issue a compulsory license to manufacture a generic version of a patented drug.

2. Compulsory License (Section 84)

  • Under Section 84, a compulsory license may be granted if:
  • The invention is not commercially worked in India.
  • The invention is not available to the public at an affordable price.
  • The demand for the patented product is not being met.
  • A compulsory license can be issued by the Controller of Patents after three years from the grant of the patent, provided the patentee has failed to satisfy the public demand for the invention.

3. Exhaustion of Rights (Section 107A)

  • The Exhaustion Doctrine implies that once a patented product is sold by the patentee or with their consent, the exclusive rights of the patentee are considered exhausted concerning that product.
  • The buyer of the product can use, resell, or modify it without infringing the patent rights.
  • This exception ensures that patents do not create perpetual control over products once they are sold.

4. Use of Patent for Research or Teaching (Section 47)

  • Under Section 47, the use of a patented invention for non-commercial purposes such as research and teaching is allowed. This exception facilitates academic research and scientific development, even when the subject of study is patented.

5. Parallel Importation (Section 107A)

  • Section 107A of the Patents Act allows for the parallel importation of patented products. It enables the importation of patented products from other countries where they may have been sold legally, and this does not constitute an infringement of the patent rights in India.

Conclusion

The rights of a patentee grant them control over their invention, enabling them to commercially exploit the invention, license it, and enforce their rights against infringement. However, the Patents Act, 1970 also places certain obligations on patentees, such as the duty to disclose the invention fully, renew the patent, and use the patent to benefit the public. While patentees enjoy exclusive rights, there are several exceptions under the Act, such as compulsory licensing, parallel importation, and the use of patents for research, that balance the interests of the inventor and the public. These exceptions help to prevent monopolistic behavior and ensure that patents serve the broader goals of public welfare and innovation.

QUESTION- What is Trademark? What types of marks are notregistrable?

What is a Trademark?

A trademark is a distinctive symbol, design, word, phrase, or a combination thereof that identifies and distinguishes the goods or services of one business from those of others. Trademarks help consumers recognize the source or origin of a product or service and are crucial in protecting the brand identity of businesses.

Under the Trade Marks Act, 1999 (hereafter referred to as the “Act”), trademarks can be registered to provide legal protection for brand names and logos. Registration grants exclusive rights to the trademark owner, allowing them to prevent others from using identical or confusingly similar marks in commerce.

Types of Marks Not Registrable under the Trade Marks Act, 1999

While the Trade Marks Act, 1999 offers protection for a wide range of trademarks, certain marks are deemed not eligible for registration. These prohibitions are outlined in Section 9 of the Act. Below, we discuss the types of marks that are not registrable under the law, along with reference to sections and relevant case laws.

1. Marks that Lack Distinctiveness (Section 9(1))

Explanation:

A mark must be distinctive to qualify for registration. This means it should be capable of identifying the source of goods or services and distinguish them from those of other businesses. If a mark is generic or descriptive, it will not be registrable.

  • Section 9(1) of the Trade Marks Act explicitly prohibits the registration of a mark that does not possess distinctiveness.

Example:

  • A term like “Apple” used for an apple vendor would not qualify for trademark protection, as it is a descriptive term.

Case Law:

  • Kumudvati v. M/s. Liberty Shoes Ltd. (2003): The court held that the mark “Liberty” could not be registered by a shoe manufacturer as it was a common word and did not uniquely distinguish the brand.

2. Marks that Are Deceptively Similar (Section 9(1))

Explanation:

Marks that are likely to cause confusion or deception among consumers by being similar to an existing registered trademark are also not registrable. This applies to marks that are confusingly similar in their sound, appearance, or meaning to an already existing mark.

  • Section 9(1) states that a mark cannot be registered if it is deceptively similar to another mark already in use, whether it is a registered trademark or not.

Example:

  • The trademark “Coca-Cola” could not be registered by another company selling a soft drink under the name “Coke-Cola” as it would deceive consumers into thinking the product is associated with Coca-Cola.

Case Law:

  • Bata India Ltd. vs. M/s Pyare Lal & Co. (AIR 1985 Allahabad 242): The court ruled that the mark “Bata”, which was used by the petitioner, could not be infringed by the respondent using the mark “Bata Shoe” in a way that would likely mislead consumers.

3. Marks that Are Generic or Descriptive (Section 9(1))

Explanation:

A mark that merely describes the nature, quality, or characteristics of the goods or services it represents is generic or descriptive and cannot be registered as a trademark. This ensures that businesses cannot claim exclusive rights over common words that merely describe the product.

  • For example, using the word “chocolate” for chocolate products or “soft” for soft drinks is not registrable as a trademark.
  • Section 9(1) of the Act prohibits the registration of descriptive marks.

Example:

  • The term “Best Selling” cannot be registered as a trademark for a product because it merely describes a characteristic of the product.

Case Law:

  • S. R. F. Ltd. vs. S.R.F. Ltd. (1994): The court ruled that a trademark like “Best Seller” could not be registered as it simply described the success of a product and did not uniquely identify its source.

4. Marks that are Deceptively Misdescriptive (Section 9(1))

Explanation:

A mark is misdescriptive if it describes the product or service in a misleading or false manner. Such marks cannot be registered because they could deceive or confuse consumers regarding the quality, origin, or characteristics of the product.

  • Section 9(1) of the Act prevents registration of marks that could mislead or deceive the public in relation to the goods or services being sold.

Example:

  • The word “Italian” for a restaurant that does not serve Italian cuisine is misleading and thus would not be registrable.

Case Law:

  • PepsiCo, Inc. v. Hindustan Coca-Cola Ltd. (2000): The court held that the mark “Pepsi” could not be used by Coca-Cola as it was a deceptively misdescriptive mark and was likely to deceive consumers into believing both products were related.

5. Marks that Are Scandalous or Offensive (Section 9(2))

Explanation:

A mark cannot be registered if it is considered scandalous, immoral, or offensive to public morality. Such marks may be prohibited to ensure that trademarks do not harm societal values or offend cultural norms.

  • Section 9(2) specifically addresses the registration of marks that are offensive or contrary to public policy.

Example:

  • Marks that involve vulgar language, offensive terms, or anything related to hate speech or discriminatory content would not be allowed for registration.

Case Law:

  • Chandrakant R. Patel v. The Controller of Patents (1998): The court ruled that a scandalous and offensive mark involving derogatory terms would not be allowed for registration, as it violated public policy.

6. Marks that Are Identical to a Well-Known Mark (Section 11)

Explanation:

A mark that is identical or similar to a well-known mark (i.e., a mark that is widely recognized and has a substantial reputation across various markets) will not be registered, even if it is used for goods or services that are not similar. This is to prevent dilution of the well-known brand’s identity.

  • Section 11 of the Trade Marks Act prohibits registration of marks that are likely to confuse or cause dilution of the reputation of a well-known mark.

Example:

  • The use of a mark similar to “Apple” for a non-technology product, such as a clothing brand, could be denied registration due to the well-known nature of the Apple brand.

Case Law:

  • Cadbury India Ltd. v. Amul India (2005): The court ruled that Amul’s dairy products could not use a mark similar to Cadbury’s chocolate products, as it would damage the Cadbury brand’s identity and reputation in the market.

7. Marks Inconsistent with Public Order or Morality (Section 9(3))

Explanation:

Marks that violate public order or morality are also not registrable. For example, marks that encourage illegal activities, terrorism, or racial hatred would fall into this category.

  • Section 9(3) of the Act highlights the non-registrability of marks that may go against public order or morality.

Example:

  • A trademark promoting harmful substances like drugs or alcohol may not be accepted due to public policy concerns.

Conclusion

The Trade Marks Act, 1999 prohibits the registration of certain types of marks to ensure fairness, prevent consumer confusion, and protect public interest. These include marks that lack distinctiveness, are deceptive, generic, offensive, or in violation of public order or morality. By denying registration to these types of marks, the Act seeks to maintain the integrity of the trademark system, ensuring that only marks capable of distinguishing goods or services effectively are granted protection.

This detailed discussion on the types of marks that are not registrable, along with relevant case laws and sections from the Trade Marks Act, 1999, provides a comprehensive understanding of trademark law and its application in India.

QUESTION- Discuss the procedure for registration of trademark.

Procedure for Registration of Trademark in India

The process of registering a trademark in India is governed by the Trade Marks Act, 1999, and the rules laid out by the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM). Registration grants exclusive rights to the trademark owner to use the mark for the goods or services it represents and to prevent others from using identical or deceptively similar marks.

Below is a detailed discussion of the procedure for the registration of a trademark under the Trade Marks Act, 1999:

Before filing a trademark application, it is advisable to conduct a trademark search. This search helps identify any existing trademarks that are similar to the one you intend to register. It can be done using the Trademark Database available on the Official Trademark Search website.

  • To determine if the proposed trademark is already in use or registered.
  • To avoid filing a trademark application for a mark that might infringe on an existing registered trademark.

2. Filing the Application

Once the search confirms the uniqueness of the trademark, the next step is to file the application with the Trademarks Registry.

Where to File:

  • The application must be filed at the Trademarks Registry. India has five regional offices located in Kolkata, Mumbai, Delhi, Chennai, and Ahmedabad. The office depends on the applicant’s place of business.

Form for Filing:

  • The application is made using Form TM-A (for individual, partnership, and legal entities). This form can be filed online through the official website of the Intellectual Property India or in person.

Required Details in the Application:

  • Name and address of the applicant.
  • Representation of the trademark (logo, word, etc.).
  • Description of the goods or services to which the mark is being applied.
  • Class of goods/services (India follows the Nice Classification).
  • Priority claim (if applicable).
  • Power of attorney (if the application is filed through an agent).

3. Examination of the Application

After filing the trademark application, the Trademark Office examines the application to determine whether it satisfies all requirements under the Trade Marks Act, 1999.

Examination Process:

  • A Trademark Examiner reviews the application for any possible conflicts, such as similarity to existing registered trademarks.
  • The examiner also ensures that the application complies with the legal requirements of distinctiveness, not being descriptive or misleading.

If the examiner finds any objections, a First Examination Report (FER) is issued, and the applicant is given an opportunity to respond to the objections.

4. Response to Objections (if any)

If the Trademark Examiner raises objections (e.g., similarity with another trademark, descriptiveness, or non-distinctiveness), the applicant has to file a counter-statement or response within 30 days.

Possible Outcomes of Response:

  • Objection Overruled: If the examiner is satisfied with the response, the application proceeds to the next stage.
  • Hearing: If the examiner still has concerns after reviewing the response, a hearing may be scheduled to resolve the issue.

5. Advertisement in the Trademark Journal

If the trademark application is accepted, it is advertised in the Trademark Journal. The Journal is published every week and is available online.

Purpose of Advertisement:

  • This serves as a public notice to allow third parties to oppose the registration of the trademark if they believe it infringes their rights.
  • The advertisement gives a four-month period for any objections to be filed.

6. Opposition Period

During the four-month period following the advertisement in the Journal, any third party can file an opposition against the trademark registration by submitting Form TM-O along with the necessary fee. The opposition can be based on grounds such as:

  • Likelihood of confusion.
  • Prior use of a similar mark.
  • Deceptiveness or non-distinctiveness.

Procedure for Opposition:

  • The opponent files a notice of opposition, and the applicant is given an opportunity to file a counterstatement in response.
  • A hearing is held if necessary to resolve the opposition.

If no opposition is received or if the opposition is dismissed, the trademark application proceeds to registration.

7. Registration and Issuance of Certificate

Once the trademark application has successfully passed the opposition period (or after successfully defending any opposition), the trademark is registered, and the Certificate of Registration is issued.

Duration of Registration:

  • The trademark registration is valid for 10 years from the date of filing the application.
  • The registration can be renewed indefinitely for further periods of 10 years, provided the renewal fees are paid.

8. Renewal of Trademark Registration

A trademark must be renewed every 10 years to maintain its active status. The renewal application can be filed within 6 months before the expiration date. A grace period of 6 months is also provided after the expiration date for late renewal with an additional fine.

Key Sections of the Trade Marks Act, 1999 Relevant to Registration:

  1. Section 18: Procedure for filing an application for trademark registration.
  2. Section 9: Grounds for refusal of registration (non-distinctiveness, deceptiveness, etc.).
  3. Section 11: Absolute grounds for refusal, including marks that are contrary to law or public policy.
  4. Section 12: Relative grounds for refusal, including similarity to existing marks.
  5. Section 18: Application for registration and the procedure for filing.
  6. Section 19: Conditions for registration and refusal.
  7. Section 21: Opposition procedure.
  8. Section 23: Registration of a trademark after an opposition.

Conclusion

The process of trademark registration in India involves several steps, including conducting a search, filing an application, undergoing examination, responding to objections, advertising in the Journal, and dealing with oppositions (if any). Once the process is complete and the trademark is registered, the applicant enjoys exclusive rights to use the mark in relation to their goods or services. Understanding this procedure and following it carefully ensures that the trademark owner’s rights are protected and enforced.

QUESTION- Explain the purpose of Patent Act, in which way the society is benefitted from its applications.

Purpose of the Patent Act, 1970 and its Benefits to Society

The Patents Act, 1970 was enacted to provide for the grant of patents in India and to regulate the patenting process. The primary goal of the Patent Act is to encourage innovation and foster technological progress, which in turn benefits the economy and society. The Act also ensures that inventors are incentivized for their creative efforts by granting them exclusive rights to their inventions for a specified period.

The Patents Act, 1970 facilitates the protection of intellectual property by granting patents to those who invent novel products or processes, while also balancing the need to share information for public use. In this way, the Act benefits both the inventors and society at large.

Key Objectives of the Patent Act, 1970

  1. Encourage Innovation and Research:
    The fundamental purpose of the Patents Act, 1970 is to encourage innovation by providing inventors with exclusive rights to their creations for a limited time (usually 20 years). This exclusivity encourages investment in research and development (R\&D), leading to the creation of new products, processes, and technologies.
  2. Promote Public Welfare and Knowledge Sharing:
    While inventors are granted exclusive rights to their inventions, the Patents Act requires inventors to disclose the details of their inventions publicly. This disclosure allows others to build upon these inventions, which promotes further innovation and knowledge dissemination. It strikes a balance between protecting the intellectual property rights of inventors and contributing to public knowledge.
  3. Support Economic Development:
    Patents incentivize investment in innovation, which, in turn, fosters economic growth by encouraging businesses to commercialize new technologies. The patent system ensures that creators are rewarded for their inventions and encourages the establishment of industries based on these innovations, leading to job creation and technological advancement.
  4. Facilitate Technology Transfer:
    Patents facilitate the transfer of technology by providing legal protection to inventions. Patents can be licensed or sold, allowing others to use the technology in exchange for compensation, which enhances the circulation of technology and innovations across borders.
  5. Ensure Fair Competition and Prevent Unlawful Copying:
    The Patents Act provides legal mechanisms to prevent infringement, ensuring that patent holders can safeguard their inventions against unauthorized use or copying. This fosters a competitive market where the value of innovation is recognized.

How Society Benefits from the Application of the Patent Act

1. Promoting Technological Advancements

The patent system encourages the development and introduction of new technologies, products, and processes. The exclusive rights granted by a patent incentivize businesses and individuals to invest resources into research and development, which drives progress across various sectors, including medicine, agriculture, industrial technology, and information technology.

For instance, pharmaceutical patents protect the exclusive rights of companies that develop new drugs, which incentivizes them to invest in costly and time-consuming drug development. This process benefits society by ensuring that life-saving medications are available, and new treatments are continuously developed.

2. Fostering Economic Growth

The Patents Act fosters economic growth by enabling businesses to protect their innovations. In turn, companies are more likely to commercialize their inventions, thus contributing to economic development through increased productivity, employment, and foreign investment.

Additionally, patent holders can license their patents to other businesses, creating new opportunities for economic exchange. For example, companies in India often license technology patents from international entities, thus benefiting from the latest technologies while fostering innovation domestically.

3. Encouraging Foreign Investment

A strong patent system attracts foreign investment by guaranteeing that foreign inventors and companies can protect their innovations in India. This encourages international collaborations and the transfer of cutting-edge technologies. In the long run, it helps boost India’s position in the global market for innovation and technology.

4. Public Disclosure of Inventions

The requirement that patent applicants must disclose the details of their inventions promotes transparency. Once a patent is granted, the invention is publicly available, which benefits society by increasing access to scientific and technical knowledge. This public disclosure enables further research and innovation based on the patented invention, contributing to the broader pool of knowledge.

For example, in the field of genetic engineering, patents for new genes or biotechnological innovations are granted, and the disclosures enable further research into the medical applications of these discoveries.

5. Preventing Infringement and Ensuring Fair Competition

The Patents Act provides legal mechanisms to enforce patent rights. This ensures that inventors are protected against unauthorized use of their inventions and allows them to seek remedies through the courts if their patents are infringed. This helps maintain fair competition in the marketplace by ensuring that competitors cannot simply copy and sell patented inventions without authorization.

6. Encouraging Technology Transfer and Knowledge Sharing

A patent holder can transfer their invention through licensing or by selling the rights to others, leading to technology transfer. This is especially beneficial in developing countries, as it allows for access to new technologies that can aid in local development. Technology transfer can result in the widespread use of innovative technologies in fields such as clean energy, health, and agriculture.

For example, global companies often enter licensing agreements with local companies in India, which allows them to introduce advanced technologies to the country while benefiting from local market expertise.

Sections of the Patents Act, 1970 Relevant to the Purpose and Society’s Benefit

  1. Section 3: Exclusions from patentability (ensures that patents are only granted for inventions that are novel, useful, and non-obvious).
  • For example, Section 3(d) excludes minor modifications of existing drugs from being patented, which ensures that essential medicines remain affordable and accessible to the public.
  1. Section 10: Specifications of the patent (requires the inventor to disclose their invention fully and clearly, facilitating knowledge sharing).
  • This section ensures that society benefits from the information disclosed in the patent specification, which contributes to technological progress.
  1. Section 39: Prohibition on the grant of patents to non-resident applicants (ensures that patents are granted only to entities or individuals with commercial or industrial interests in India, fostering local innovation).
  2. Section 48: Rights conferred by a patent (provides the patent holder with exclusive rights to use, make, sell, or license the patented invention for 20 years).
  • This grants inventors economic benefits and encourages the commercialization of inventions.
  1. Section 83: General principles applicable to the working of patents (ensures that patents are worked in India to the fullest extent and that the benefits of patented inventions reach the public).
  2. Section 90: The introduction of compulsory licensing (provides that under certain circumstances, the government can issue compulsory licenses to allow third parties to produce a patented invention).
  • This is especially important for public health concerns, such as the compulsory licensing of essential medicines in India, ensuring access to life-saving drugs at affordable prices.

Relevant Case Laws

  1. Novartis AG vs. Union of India (2013):
    In this landmark case, the Supreme Court ruled that Novartis’ Glivec drug was not eligible for patent protection under Indian law because the modification of an existing drug did not meet the requirements for a new invention under Section 3(d) of the Patents Act. The case reinforced India’s commitment to ensuring affordable access to essential medicines for the public, benefiting society by limiting the patentability of incremental innovations on old drugs.
  2. Bayer Corporation vs. Union of India (2014):
    This case involved Bayer’s patent for its cancer drug Sorafenib. The Indian Patent Office denied Bayer’s patent application, citing the lack of novelty and the fact that the drug was too similar to existing treatments. This decision protected public access to affordable cancer medication, which was in the interest of society.

Conclusion

The Patents Act, 1970 plays a crucial role in promoting technological advancements, economic growth, and public welfare by encouraging innovation and ensuring access to new technologies. By balancing the interests of inventors with the need for public access to knowledge, the Act provides an environment where innovation can thrive, benefiting not only inventors but also society as a whole. The various provisions of the Act, such as the requirement for public disclosure, the protection against infringement, and the promotion of technology transfer, ensure that the system remains dynamic and responsive to societal needs.

QUESTION- Explain in various rights and obligations of a patentee.

Rights and Obligations of a Patentee under the Patents Act, 1970

The Patents Act, 1970 grants exclusive rights to the patentee, subject to certain obligations. These rights and obligations aim to strike a balance between incentivizing innovation and ensuring that the benefits of inventions eventually reach the public. Below is a detailed explanation of the rights and obligations of a patentee under the Act, with references to relevant sections of the Act and case laws.

Rights of a Patentee

A patentee is granted exclusive rights to their invention under the Patents Act, 1970, which allow them to control the use, sale, and distribution of the invention. These rights are intended to encourage investment in innovation by providing a temporary monopoly over the invention.

1. Exclusive Right to Make, Use, and Sell the Invention (Section 48)

  • Section 48 grants the patentee exclusive rights to use, make, sell, and distribute the patented invention within India. These rights are granted for a period of 20 years from the date of filing of the patent application (subject to payment of maintenance fees).
  • Case Law: In R.G. Anand v. M/s Delux Films (AIR 1978 SC 1613), the Supreme Court held that the patentee has the right to prevent others from using their invention without authorization, as this infringes on the patentee’s exclusive rights.

2. Right to License the Patent (Section 67)

  • The patentee has the right to license the patent to others. The license can be exclusive or non-exclusive, and the patentee can charge a royalty for the license granted.
  • Exclusive License: The licensee is given the exclusive right to use the patent, and the patentee cannot license anyone else during the period of the exclusive license.
  • Non-exclusive License: The patentee retains the right to grant licenses to other parties as well.
  • Case Law: In Bayer Corporation vs. Union of India (2014), the patent holder (Bayer) tried to restrict the manufacturing of a patented drug, but the court emphasized the need for affordable access to essential medicines, which led to the issuance of compulsory licensing.

3. Right to Transfer Ownership of the Patent (Section 69)

  • The patentee can transfer the ownership of the patent to another party, which may include selling the patent outright or assigning the rights to another individual or entity.
  • This transfer of ownership must be documented in writing and registered with the Patent Office for it to be effective.
  • Case Law: In Biochem Pharmaceutical Industries v. BioChem Synergy Ltd. (1997), the court ruled on the transfer of patent rights and clarified that the patent assignment should be in writing to be legally binding.

4. Right to Prevent Infringement (Section 48)

  • The patentee has the right to prevent others from infringing on their patent by making, using, or selling the patented invention without the patentee’s consent.
  • Infringement Action: The patentee can file a suit for infringement under Section 104 of the Patents Act, which allows them to seek remedies such as injunctions, damages, and accounts of profits.
  • Case Law: In M/s Hindustan Metal Industries v. Bishwanath Parshad Radhy Shyam (AIR 1982 SC 1444), the Supreme Court upheld the exclusive rights of the patentee to prevent unauthorized use of their invention.

Obligations of a Patentee

While the Patents Act grants exclusive rights to the patentee, it also imposes certain obligations that must be fulfilled for the patent to remain valid and enforceable.

1. Obligation to Work the Patent (Section 83)

  • Section 83 requires that the patent should be worked in India to the fullest extent. The patentee must exploit the patent within India by manufacturing, selling, or using the patented invention. This ensures that the patent contributes to the public welfare.
  • The patentee is obligated to prevent the invention from being “imported” without utilizing domestic manufacturing processes. This is especially relevant to ensuring that patented medicines and technologies are available at affordable prices within the country.
  • Case Law: In American Cyanamid Co. v. N. R. Agarwal (AIR 1980 SC 1049), the court emphasized that non-working of a patent could lead to compulsory licensing.

2. Obligation to Pay Annual Renewal Fees (Section 142)

  • Under Section 142, the patentee is required to pay annual renewal fees to the Patent Office to maintain the patent. Failure to pay these fees can result in the patent being revoked or lapsed after a certain period.
  • Obligation to Maintain: These fees ensure that patents remain active for the entire duration of the patent term (20 years), provided the patentee continues to fulfill the obligations.

3. Obligation to Disclose the Invention (Section 10)

  • Section 10 requires the patentee to fully disclose the invention to the public. This is done by providing a detailed patent specification that describes the invention clearly and completely so that someone skilled in the art can understand and replicate the invention.
  • This disclosure is a key condition of the patent system and ensures that society benefits from the knowledge of the invention.
  • Case Law: In Kollipara Sree Rama Rao v. The Controller of Patents (AIR 1970 SC 1), the Supreme Court ruled that failure to disclose the invention adequately could result in the rejection of the patent.

4. Obligation to Notify Change of Address (Section 72)

  • The patentee is obligated to notify the Patent Office if there is any change in their address or contact information, under Section 72. This ensures that official communications related to the patent are received in a timely manner.

5. Obligation to Defend the Patent (Section 64)

  • Under Section 64, the patent holder is required to defend the patent in case it is challenged. The patent may be revoked on several grounds, such as if the invention lacks novelty or inventiveness, if it was obtained by fraud, or if the patent was granted for something that is not an invention as per the definition in the Act.
  • Case Law: In S. S. Ranat & Co. v. Union of India (AIR 1974 SC 2105), the court observed that the patentee is responsible for defending the validity of the patent against challenges.

6. Obligation of Patentee in Case of Compulsory Licensing (Section 84)

  • Under Section 84, a compulsory license may be granted by the government if the patented invention is not being sufficiently worked in India or if it is not available to the public at an affordable price.
  • This is an obligation on the patentee to ensure that their invention is being used for public benefit, and is not being held in reserve to the detriment of society.
  • Case Law: The Novartis v. Union of India (2013) case highlighted the compulsory licensing provisions in India, where the court ruled that patents on life-saving drugs should not prevent the availability of affordable medicine.

Exceptions to the Rights of a Patentee

Although a patentee enjoys exclusive rights, there are exceptions that limit these rights to ensure the public interest is protected.

1. Use of the Patent by the Government (Section 100)

  • The government has the right to use a patented invention without the consent of the patentee in specific cases, such as when the use of the patent is necessary for public interest or national security.

2. Compulsory Licensing (Section 84)

  • If the patent is not sufficiently worked in India, or if the patented product is not available to the public at an affordable price, the government can grant a compulsory license to a third party to use the patent.

3. Use of Patent for Research (Section 47)

  • The patentee’s exclusive rights do not prevent the use of a patented invention for non-commercial purposes like research and experimentation.

4. Exceptions under International Agreements

  • As per India’s obligations under international agreements such as the TRIPS Agreement, parallel imports and compulsory licensing provisions may allow for exceptions to the patentee’s rights in certain circumstances.

Conclusion

The Patents Act, 1970 offers exclusive rights to patentees, encouraging innovation and technological progress, while also ensuring public access to the benefits of those inventions. The rights of a patentee include the right to make, use, sell, license, and transfer the invention, but these rights come with certain obligations, such as working the patent, maintaining the patent through payment of fees, and ensuring public disclosure. At the same time, the Act also includes provisions for exceptions to protect public interests, including compulsory licensing and government use. These measures ensure that the patent system remains beneficial for both innovators and society.

QUESTION- Define the term ‘Inventions’. What inventions are non- patentable under the Patents Act, 1970?

Definition of Invention under the Patents Act, 1970

Under the Patents Act, 1970, the term “invention” is defined in Section 2(j). An invention is:

  • A product or a process that is new, involves an inventive step, and is capable of industrial application.
  • It must be novel and not have been previously disclosed or used anywhere in the world.

An invention must meet the following three key criteria:

  1. Novelty: The invention must be new and should not have been publicly disclosed in any form prior to the filing date.
  2. Inventive Step (Non-obviousness): The invention must not be obvious to someone skilled in the art, based on existing knowledge or inventions.
  3. Industrial Application: The invention must be capable of being made or used in some form of industry, whether it’s manufacturing, agriculture, or services.

Non-Patentable Inventions under the Patents Act, 1970

The Patents Act, 1970 specifically outlines certain inventions that are not patentable, as detailed in Section 3 and Section 4 of the Act. These sections list out the exclusions, which prevent certain types of inventions from being granted a patent, either because they are contrary to public policy or because they do not meet the required criteria for patentability.

Section 3 – Inventions Not Patentable

Section 3 of the Patents Act, 1970, provides a detailed list of non-patentable inventions. These are:

  1. Inventions relating to atomic energy (Section 3(a))
  • Inventions that relate to atomic energy are not patentable due to national security concerns.
  • Example: Nuclear fission or fusion processes.
  1. Discovery of scientific principles or living organisms (Section 3(b))
  • A mere discovery of a scientific principle, or the discovery of a living organism, including genetic material or a species of plants or animals, cannot be patented.
  • Example: Discovery of the structure of DNA would not be patentable, though its practical application may be.
  1. Mathematical or business methods (Section 3(c))
  • Mathematical algorithms, methods of doing business, or mental processes are excluded from patentability.
  • Example: A method of calculating tax or financial modeling.
  1. Aesthetic creations (Section 3(d))
  • Aesthetic creations, such as literary, dramatic, musical, or artistic works, and designs, are not patentable. These can be protected under copyright or design laws.
  • Example: Paintings, novels, and musical compositions.
  1. Schemes and rules (Section 3(e))
  • Schemes, rules, and methods for performing a mental act, playing a game, or doing business are not patentable.
  • Example: A method of playing a game or a business process.
  1. Presentations of information (Section 3(f))
  • Methods of presenting information, such as graphs or charts, are excluded from patent protection.
  • Example: A method of creating a flowchart or a method of writing a report.
  1. Inventions that are offensive to public morality (Section 3(g))
  • Inventions that are considered to be immoral or contrary to public order are not patentable.
  • Example: Inventions related to illegal drugs or those that harm public health.
  1. A method for treatment of human or animal body (Section 3(h))
  • Methods for medical treatment, such as surgical, therapeutic, or diagnostic methods, are not patentable.
  • Example: Surgical procedures for treating specific diseases.
  1. Plants and animals (Section 3(i))
  • Plants and animals, including plant varieties or animal breeds, are not patentable. However, biotechnological inventions related to genetically modified organisms or other biotechnological innovations may be patentable.
  • Example: Genetically engineered crops.
  1. Micro-organisms and seeds (Section 3(j))
  • Micro-organisms and seeds are not patentable under Indian law, though certain biotechnological inventions involving modified organisms may qualify for patents.
  1. Traditional knowledge (Section 3(k))
  • Traditional knowledge that has been in use for many generations is not patentable. This includes knowledge passed down through oral traditions or cultural practices.
  • Example: Ayurvedic or homeopathic remedies that have been used for centuries.
  1. Inventions that are frivolous or contrary to well-established principles (Section 3(l))
  • Inventions that are considered to be frivolous or that contradict established laws of nature, like the perpetual motion machine, are not patentable.
  • Example: Perpetual motion machines.

Section 4 – Inventions Relating to Traditional Knowledge

  • Section 4 of the Patents Act specifically mentions that inventions related to traditional knowledge (as defined by the government) are not patentable.
  • These include practices, artifacts, or medicinal knowledge that are prevalent among local communities and have been in practice for centuries.

Case Law Examples for Non-Patentability

  1. Dimminaco AG v. Controller of Patents (2000)
    In this case, the court held that a method for gambling was not patentable under Section 3(c), as it was considered a mental act and not a technical invention. This exemplified that business methods or schemes cannot be patented in India.
  2. Indian Immunologicals Ltd. v. Controller of Patents (2013)
    The Delhi High Court ruled that traditional knowledge and biological material used in its natural state are not patentable, affirming the exclusion of plants and animals (Section 3(i)) and microorganisms (Section 3(j)).
  3. Novartis AG v. Union of India (2013)
    The Supreme Court of India ruled that the beta-crystalline form of imatinib mesylate, used in the treatment of cancer, did not meet the criteria for patentability because it lacked an inventive step and was an obvious modification of an existing molecule, even though it had shown improved efficacy. This case demonstrates the application of the inventive step requirement under Section 2(j).
  4. Bayer Corporation v. Union of India (2008)
    The Supreme Court ruled that efficacy alone was not sufficient to obtain a patent for an invention that was based on existing compounds or processes. The ruling reflected the stance that the novelty and non-obviousness criteria must be met for patentability, as per Section 2(j) and Section 3(d).

Conclusion

The Patents Act, 1970 provides a clear and detailed framework for determining what inventions are patentable and what are not. The non-patentable inventions are largely designed to protect public interest, prevent the monopolization of essential public goods, and safeguard fundamental principles such as public morality and scientific ethics. The exclusions listed under Sections 3 and 4 reflect the Act’s careful balancing of incentivizing innovation while ensuring that knowledge, culture, and the natural environment remain accessible to all. These provisions are further clarified by case laws, which help interpret and apply the statutory provisions in real-world contexts.

QUESTION- What is the procedure for obtaining a patent under Patent Act, 1970? Can an invention which is based on traditional knowledge be patented?

Procedure for Obtaining a Patent under the Patents Act, 1970

The procedure for obtaining a patent in India is well-defined under the Patents Act, 1970 and involves several steps. Below is a detailed explanation of the process:

Step 1: Filing the Patent Application

  1. Pre-filing considerations:
  • Before filing the application, it is crucial to ensure that the invention is novel, involves an inventive step, and is industrially applicable. These are the essential criteria for patentability under Section 2(j) of the Act.
  • The invention should not be publicly disclosed prior to filing the application, as this could invalidate the novelty requirement.
  1. Filing the Patent Application:
  • The application can be filed with the Indian Patent Office (IPO) in Chennai, Delhi, Kolkata, or Mumbai depending on the applicant’s jurisdiction.
  • The applicant needs to fill out the Form 1 (Patent Application Form) along with the complete specification of the invention. The specification should include a detailed description of the invention, drawings (if applicable), and claims. Forms involved in the process:
  • Form 1: Patent Application Form
  • Form 2: Description and Claims (Complete or Provisional Specification)
  • Form 3: Statement and Undertaking regarding foreign applications
  • Form 5: Declaration of the inventor
  1. Provisional vs. Complete Specification:
  • Provisional Specification: If the applicant is not yet ready with the complete specification but wants to establish a filing date, they can file a provisional specification. A provisional application gives the applicant a 12-month window to file the complete specification.
  • Complete Specification: This should be filed within 12 months of the provisional filing. It must include a detailed description of the invention and claims that define the scope of the invention’s protection.

Step 2: Publication of Patent Application

  • Publication occurs automatically 18 months from the date of filing the application unless the applicant requests early publication. The Form 9 can be filed to request early publication. After the publication, the application is available for public inspection, and third parties may file opposition to the application.

Step 3: Examination of Patent Application

  1. Request for Examination:
  • After the publication of the application, the applicant must file a request for examination (Form 18) within 48 months from the date of filing the application or the priority date, whichever is earlier.
  1. Examination Process:
  • The Patent Examiner examines the application to ensure compliance with the provisions of the Patents Act, 1970, including novelty, inventive step, industrial applicability, and completeness of the specification.
  • The Controller of Patents may issue an examination report (referred to as the First Examination Report, or FER).
  • If there are any issues with the application (e.g., lack of novelty, insufficient description, or any other objection), the applicant will have to respond to the objections and make amendments to the application as necessary.

Step 4: Grant of Patent

  • If the examination process is successfully completed and no objections remain, the patent is granted.
  • The grant is published in the Patent Journal, and the patent is registered. Upon grant, the applicant becomes the patentee and is entitled to exclusive rights over the patented invention for a period of 20 years from the filing date.

Step 5: Post-Grant Proceedings

  • Opposition to Grant: After the grant, there is a post-grant opposition period of 12 months, during which a third party may challenge the patent grant.
  • Maintenance of Patent: The patentee must pay annual renewal fees to keep the patent in force. If the fees are not paid, the patent may lapse.

Can an Invention Based on Traditional Knowledge Be Patented?

Inventions based on traditional knowledge are not patentable under Indian law in most cases. This is because the Patents Act, 1970 excludes inventions that involve traditional knowledge from being patented under Section 3(i) and Section 3(j).

Section 3(i) – Traditional Knowledge Exclusion:

  • This section specifically excludes inventions related to plants and animals or the discovery of a new variety or species from being patented. While traditional knowledge is not inherently patentable, inventions that modify, adapt, or innovate based on traditional knowledge could still be eligible for patent protection if they fulfill the criteria of novelty, inventive step, and industrial applicability.

Section 3(j) – Micro-organisms and Biological Material:

  • This provision also prevents the patenting of micro-organisms or biological material that exists in nature and has been part of traditional knowledge.

Biotechnology and Traditional Knowledge:

  • While biotechnological inventions utilizing traditional knowledge may be patentable, these must not just be based on existing knowledge but must demonstrate novelty and inventiveness. For example, traditional medicinal plants used in Ayurveda may form the basis for a patented invention if there is a novel method or process derived from them, but simply discovering or using traditional knowledge would not suffice.

Case Law – Biocon Ltd. v. The Controller of Patents:

  • In the case of Biocon Ltd. v. The Controller of Patents (2015), the Delhi High Court held that even if an invention incorporates elements of traditional knowledge, it could still be patentable if it demonstrates an inventive step and novelty beyond what was already known.

Conclusion

The process of obtaining a patent in India is structured and requires the inventor to go through several stages, including filing the application, publishing it, undergoing examination, and obtaining the final grant. For inventions based on traditional knowledge, the Patents Act imposes clear restrictions. However, if such inventions introduce novelty and an inventive step that differ from what is already in the public domain, they may still be eligible for patent protection under specific conditions.

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