indian patent act 1970

Indian Patent Act 1970Indian Patent Act 1970

105/01/23 Sagar Savale

Presentation Outline



Introduction History of patent in India Terms & Definitions Non-patentable Invention Types of patent How to apply ? Procedure for grant of patent Patent agent


Infringement of the patent The Patents Amendments Act Pre-TRIPS Scenario TRIPS Implementation. Status of IPI in Product Patent Era Future Outlook & ChallengesFuture Outlook & Challenges Conclusion



Introduction


Intellectual property

Creation of Human Mind i.e. it may be of inventions, industrial designs, artistic work, symbols etc.

IPR- Anything resulting from human intellect is intellectual property and the right of possession of the same is IPR.


What is a patent?

PROBLEMSOLUTION

INVENTION

noveltynon-obviousindustrial application

local laws

PATENTABLE


Advantage of Patenting

Avoids duplication of research.

Keeps abreast with latest development in different fields of technology.

Helps industry to improve existing technology to produce cheaper & better product.

Serves as an indicator of achievements in R & D institutions and ability of individual researcher.

Helps to frame business strategy according to new trend of technology.


Patent legislation Patents Act, 1970-Amended in 1999 , 2002 , 2005 Patents Rules,1972,-Amended in 2003,2005 , 05-05-2006 From 1.1.1995

Mail-Box for pharmaceutical and agrochemicals products Exclusive Marketing Rights

From 1.1.2000 Patent term increased to 20 years Definition of invention – inclusion of inventive step Mandatory compulsory license provision for food, drugs and

chemicals removed Right of patentee (importation also included)

From 1.1.2005 Product patents for food, chemical and pharmaceutical


Headed by – CGPDTM Four offices are located in four territorial zone. PATENT OFFICE

PIS & IPTI at

Patent Administration

CALCUTTA

MUMBAI

NEW DELHI

CHENNAI

Nagpur1005/01/23 Sagar Savale

International Treaties India is member of WIPO. WIPO – Is an international organization, responsible for the promotion of the protection of IP through out the world.

India is also a member of following International Organization with respect to patent :-

WTO- with effect from 01-01-1995. Paris Convention- for the protection of industrial property. with effect from 07-12-1998. Budapest Treaty- with effect from 17-12-2001.


History of Indian Patent


History of Indian Patent 1856 – Act IV for the protection of inventions based on the

British Patent law of 1852. 1857 – Act IX. 1859 – Act XV Patent monopolies called this exclusive privileges.

1872 - Patent & Design protection Act. 1911 – The Patent and Design Act.

1970 - The Indian Patent act (Act 39 of 1970) come into force from 1972.


History of Indian Patent

1999 – On march 26, 1999 Patent Amendment Act , come into force from 1st Jan 1995.

2002 - Patent Amendment Act 2002, come into force from 20th May 2003.

2005 - Patent Amendment Act 2005, effective from 01 Jan 2005.

2006 – Patent Amendment Rule on 5th May 2006.


Terms & Definition


Terms & Definition INVENTION – [ Acc. To sec 2 (1)(j) ] Invention means a new product or process involving an

inventive step & capable of industrial application. or It is a conception of new ideas.

INNOVATION – It is application \ adoption of the idea. e.g. it is the process that moves the idea into market place.


Terms & Definition PATENT – A patent is an IPR relating to invention , it is a grant of exclusive right, for a limited period, provided by the govt. to the patentee, in exchange of full disclosure of his invention, & excluding

other from Making, using, selling, importing the patented product or process.

COPYRIGHT – The rights of the Author of literary & Artistic work are protected by the copyright.

For the minimum period of 50 years after the death of the author.


Terms & Definition TRADEMARK – Can be characterized as protection of

distinctive sign or logos & GIs . Distinctive sign – Which distinguish the goods & services of

one undertaking from those of the other. GIs – Which identify the goods as originating in a place where

a given characteristic of goods is essentially attributed to its Geographical origin.

NOVELTY – The essential conduction for patentability, that what is claimed is new.

ABSOLUTE NOVELTY – A system where by any prior publication any where , destroys the novelty of a patent.


Terms & Definition LOCAL NOVELTY – The principle that a patent can be

invalidated by prior publication only if the publication was in the country granting the patent.

MIXED NOVELTY - The principle that a patent can be invalidated by prior printed publication any where in the world, but by prior use only in the country granting the patent.

AMENDMENT – Alteration made to patent specification during prosecution or after grant.

BUDAPEST TREATY – The international treaty regulating the deposition of μ-organism for patent purpose.


Terms & Definition COMPULSORY LICENSE – A license which government

authorities or court force the patentee to grant to another party. CONVENTION COUNTRY – A state which is a member of

Paris convention for the protection of industrial property. DOHA LICENSE – A compulsory license granted to allow

export of patented pharmaceutical to a developing country. EXCLUSIVE MARKETING RIGHTS – The right of a person

filing a black box application to exclude competitors until his application is granted or refused, if certain conditions are met.

FOREIGN FILING – Filing in countries other than the country of first filing.


Non Patentable Invention


Non Patentable Invention These should be included in sec. 3 & 4 of IPA . SECTION 3(a) SECTION 3(b) SECTION 3(c) SECTION 3(d) SECTION 3(e) SECTION 3(f) SECTION 3(h) SECTION 3(i)


Non Patentable Invention

SECTION 3(j) SECTION 3(k) SECTION 3(l) SECTION 3(m) SECTION 3(n) SECTION 3(o) SECTION 3(p) SECTION 4


Types of Patent


Types of Patent

1) ORDINARY PATENT - Is one which is granted on the basis of general & ordinary procedure of application.

2) PATENT OF ADDITION – It is a patent secured for an improvement or modification of an invention , for which a patent has already been applied for or granted.

3) PATENT GRANTED UNDER CONVENTION AGREEMENT.


How to apply ?


How to Apply ? Application on Form –1 with covering letter in the name of

controller

Specification Provisional/complete on form –2

Abstract of invention

Statement and undertaking of foreign filing particulars on form-3 - if any

Declaration of inventorship on form- 5

Power of Attorney - if applicable


THE FEE SCHEDULEOn what payable •Prov./Comp spec.•PAGES EXCEEDING 30•CLAIMS EXCEEDING 10*Request for extension of timeREQUEST FOR EARLY PUBLICATION•Request for Examination•EXPRESS REQUEST FOR EXAMN.*Change of Applicant*Notice of Opposition *Certified Copy\Certificate*On a petition*Restoration of lapsed patent

Form 2--49181867

--15

Individual1000100200

1000/2000/3000

25002500350015001000100015001500

Company4000400800

4000/8000/1200

10000100001400020006000400040006000

RENEWAL FEES3rd to 6th Year(per year)6th to 10th Year—do--11th to 15th Year---do---16th to 20th year----do---

500150030005000

20006000

1200020000


Procedure for obtaining a patent


provisional application

complete specification application

Publication (After 18 month from filing date or priority)

Pre grant opposition (from publication up to grant)

Decision to refuse

Appeal to IPAB

Request for examination (within 48 months from filing/priority)

No request for examination

Withdrawal of application

PROCEDURE FOR GRANT OF PATENT

FER within 6 month from request for

examination

“Placing application in order for grant” (within

12 month from receipt of FER)

30

Patent application


Decision to grant (notification in journal)

Post grant opposition(with in 1 year from decision to grant)

Decision to refuse Decision to maintain

Appeal to IPAB(with in three months)

Time for grant of patent

8 months minimum36 months average


Duties of patentee

Maintenance of the patent: Pay renewal fees. Every year till the end of the term. Time limit: before end of the proceeding year ( 6 months extn.

Available )

Working of the patents: Inventions are to be worked in India on commercial scale. Failing which compulsory license may be issued.


Patent agent


Patent agent

A Patent agent is a registered person with Indian Patent Office whose name is entered in the patent agent register after being declared qualified the patent agent examination conducted by the patent office.

For the registration as a patent agent. (Form 23)


Eligibility for registration as patent agents

A person shall be qualified to have his name entered in the register of patent agents if —

he is a citizen of India; he has completed the age of 21 years; he has obtained a degree in science, engineering or

technology from any university established under law. In addition,—

has passed the qualifying examination prescribed for the purpose;

has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 .


Infringement of the patent


Infringement of the patent A patent confers the exclusive right on the patentee to make,

distribute or sell the invention in India. An infringement would be when any of these rights is violated.

In case of product patent the rights of the patentee are infringed by anyone who makes or supplies that substance commercially

In case of process patent, the use of such a method or process in India by anyone other than the patentee amounts the infringement.

The following acts of the defendant can amount to infringement: colourable imitation of patented invention; or copying essential features of patented invention; or variation of non-essential features of patented invention; or Infringe not the whole process but only a part of it.


Acts not Constituting Infringement

Where the patented invention is merely used for the purpose of experiment or research

or for imparting instruction to pupils, it does not amount to infringement of patents.

Similarly, any act of making, using or selling a patented invention solely for development of information required under any relevant law does not amount to infringement.

Also the importation of patented products by any person from a person who is duly authorized by the patentee will not constitute infringement.


Offences Penalties

Contravention of secrecy provision relating to certain invention.

Imprisonment up to 2 years, or fine or both.

Falsification of entries on register. Imprisonment up to 2 years, or fine or both.

Unauthorized claim of patent rights Fine up to Rs.500

Wrongful use of the words “Patent office”.

Imprisonment up to 6 months, or fine or both.

Practice by non- registered patent agent.

1st offence- fine upto Rs.500.2nd offence- fine upto Rs.2000.


Offences Penalties

Refusal or failure to supply information to the central government or to the Controller.

Fine upto Rs.1000.

Supply of false or untrue information .

Imprisonment up to 6 months, or fine or both.


The Patents Amendments


The Patents (Amendments) Act 1999

To provide the provisions for receiving the applications for the product patent (mail box).

MAIL BOX:- It will receive & hold product patent application in the field of Pharmaceuticals and Agrochemicals.

Provisions for the grant of EMRs.



Uniform 20 years term of patent for all inventions.

Scope or non-patentable inventions including traditional knowledge enlarged.

Publication of all applications after 18 months.

Disclosure of source and geographical origin of biological material made compulsory.

Establishment of appellate board . Compulsory license provisions strengthened . Harmonization with PCT provisions.



Has introduced product patent protection for pharmaceuticals from 1 January, 2005.

Hence unless otherwise authorized, Indian generic companies cannot produce new drugs developed abroad.

Definitions of certain terms redefined. Rationalization of opposition procedure-introduction of

pre-grant representation and post – grant opposition. Provisional protection from the date of publication.



Compulsory license for manufacture and export of pharmaceutical products to any country having insufficient or no manufacturing capacity

Parallel import from anywhere Harmonization with PCT Rationalization and simplification of procedure

Sealing request dispensed with, increase in the grace period from 6 to 12 months

Early publication and examination. publication in patent office journal


Pre-TRIPS Scenario

Weak infrastructure Inadequate manpower Low international exposure Low filing of IP applications Manual operations Slow processing Lack of awareness


TRIPS Implementation

Pics


Modernization Plan-I

The First phase US $ 34 million started in 2002 which included

Construction of IP Buildings at four places Computerization Digitization of IP Records Human Resource Development Awareness creation Upgradation of Library Facilities. National Institute of Intellectual Property Management set up at Nagpur.


Modernization Plan-II

The Second Phase US$ 80 million began in 2008 which include: Complete automation of IP Offices Online processing and services Increased transparency Bilateral Cooperation Agreements with 8 countries namely Australia, USA, UK, Germany, Japan, France, EPO and Switzerland to promote innovation, IP and foster Cooperation.


Status of Indian Pharmaceutical Industries in

Product Patent Era


Status of IPI in Pre-Product Patent Era

Product patents in drugs abolished in 1972. Remarkable growth of pharmaceutical industry since then. India and Japan: only two countries where western MNCs do not dominate. Drug prices among the lowest in the world Source of good quality cheap drugs for the rest of the world. Size of India’s pharmaceutical market is $ 4.9 billion (2003).

This constitutes about 1% of the global pharmaceutical sales and about 10% of total generic market in the world.


India is one of the top five manufacturers of bulk drugs & among top 20 pharmaceutical exporters

Strengths of IPI Cost competitiveness.

Strong manufacturing base – 70 plus USFDA approved manufacturing facilities.

Good infrastructural facilities for R&D. Strong marketing distribution network.

Projected exports of domestic pharma products- $4 billion by 2010 $6 billion by 2015

52

Status of IPI in Product Patent Era


India as a global outsourcing hub for: Pharma R&D outsourcing: More than 100 MNCs setting up R&D labs.

IPR services outsourcing: More than half a dozen companies set up facilities in India to provide IPR related services.

Product patent protection will not have any negative consequences. In fact it will have some beneficial effects:

Remarkable growth of pharmaceutical exports “is the result of the confidence built up in our industry due to our progressive adherence to our IP commitments.”

53

Status of IPI in Product Patent Era


Future Outlook & ChallengesFuture Outlook & Challenges

Emergence of India as leading country in Global Pharmaceutical Market

Export to be the major thrust of the Industry Evolving of Bio-pharmaceutical Market likely to emerge as one of

the largest producer of Vaccines Biotech Market estimated to reach $5 billion by 2010 More Investment required in R&D Clear Guidelines required on OTC Drugs. Quality Management System


REFERENCES Philip W. Grubb “Patent for chemicals Pharmaceuticals and

Biotechnology” Oxford University Press, 4th edition.

Timothy M. Swanson “Intellectual property rights and Biodiversity Conservation” Cambridge University Press-1995.

Dr. B.S. Kuchekar , Mr. A.M. Khadatare & Mr. Sachin C.Itkar “Forensic Pharmacy” Nirali prakashan, 7th edition-2008.

N.K. Jain “A text book of forensic pharmacy” Vallabh prakashan, 6th edition-2006.


• www.ipindia.nic.in• http://patentoffice.nic.in• www.indianpatent.org.in• www.aptdc.com• www.apipr.org• www.nrdcindia.com• http://ipindiaonline.gov.in• www.sciencedirect.com• www.wikipedia.com


indian patent act 1970

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