Professional Documents
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Objective of study
One of the most difficult issues for foreign investors doing business in developing countries
such as INDIA is how best to protect their proprietary technology from infringement.
This issue can be particularly huge, as many times, the companys technology to be protected
will be among its most valuable assets and the basis of its competitive advantage in the
market.Patents are the primary (but not the only) device by which parties identify and protect
their proprietary ownership of an invention.A somewhat simplistic definition of a patent is a
temporary, exclusive right granted to an inventor (individual or business) by the government
to prevent others from manufacturing, selling or using the invention.
Note that the definition of invention here is quite broad and encompasses all patentable
technology including mechanical inventions, processes, formulas and designs.Intellectual
property rights have come to occupy an increasingly important place in the world today. The
expression intellectual property itself connotes a string of rights available for the protection
and exploitation of technology to its maximum potential. Intellectual property law is
generally understood in two categories: industrial property which concerns patents,
trademarks, designs etc. and copyrights which concerns literary and artistic works. The major
goals of any intellectual property system are safeguarding the rights of an inventor in his
invention and facilitating economic and social growth by providing an impetus to the
advancement of science and technology.
One of the primary objectives of patent law is to promote innovation in the market place. It
works to accomplish this by granting the developers of patentable inventions an incentive in
the form of an exclusive right to use, produce and sell the invention for a period of time.
Patent law is so important because without such protection, unauthorized parties would be
free to wait for others to invest the time, energy and money necessary to develop new
REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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technology and then simply copy it. Therefore, patent protection helps to facilitate a return on
investment.
EXAMPLE: Suppose a company expends the time, money and effort necessary to develop an
innovative and potentially life saving surgical device. The company eventually applies for
and obtains a patent for the product. That company would be granted an exclusive right to
produce, use and sell that invention for a set period of time.
During the protection period a third party with no rights to the invention begins to produce,
use and sell the device. The patent holder may then call on a court and/or the police
to order the infringer to cease production use, and/or sale of the device and impose fines
and/or imprisonment.
Another objective of patent law is to provide greater certainty in the market by providing a
system by which to determine who holds the exclusive rights to a particular invention.
REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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Introduction
In India,The Indian Patents Act 1970 was implemented in 1972. It made pharmaceutical
product innovations, as well as those for food and agro-chemicals, un-patentable in India. It
allowed innovations patented elsewhere freely copied and marketed in India. Further, this Act
restricted import of finished formula, imposed high tariff rates and introduced strict price
control regulation. This Act was not beneficial to the big foreign multinational organizations
and was not in sync with the global patent system.
India being a member of WTO, it had to comply with the requirements under the TRIPS
Agreement. As such the 1970 Act was required to be amended. The requirements were that a
mailbox system be set up and Exclusive Marketing Rights (EMR) be allowed. Under the
EMR, an international company would get exclusive rights to market a product in the field of
pharmaceuticals and agricultural chemical products in the Indian market for a specified
period (5 years). The mail box system is a box which received all applications for the
patenting of pharmaceutical and agricultural chemical products. These provisions were
included in the Patents Act through 1999, 2001 and 2002 amendments. The applications in
the mail box were considered in 2005.
These amendments though far reaching, still did not bring the Indian Patents Act in full
conformity with the global intellectual property system. This conformity was introduced
through the Patents Amendment Act 2005. The main provisions of this Amendment Act are:
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1. Product Patent:
The Act extends product patent protection in all fields of technology, i.e. drugs, food and
chemicals. Earlier only process patent was allowed which limited patent rights. For example,
a process patent was awarded to the way a cure for, say cancer, is manufactured and not for
the cure. This allowed the other manufacturers to produce the same cure by some other
method and hence not violate patent rights of the original manufacturer. But now after the
2005 Amendment, patent is awarded to the way cancer cure is manufactured and to the cure
as well.
2. Compulsory Licensing:
This is a TRIPS compliant provision empowering the governments to check and control the
misuse of patents. Inspite of the existence of a patent, the govt can invoke the compulsory
license to make available the patented product to the people in case of national emergency for
public non-commercial use. The govt can also invoke compulsory licensing if it feels that the
public requirements with regard to a patented product have not been met and the product is
not available for the public at an affordable price.
3. Embedded Software:
4. Other provisions:
The Act allows the patent holder to challenge the license so that he can block general
production of his drug. Pre-grant and post-grant opposition clause has been provided. The
Act also removes provisions relating to EMRs besides strengthening the provisions relating to
national security to guard against patenting abroad of dual use technologies.
Patents Act 2005 provides that following items are not patentable:
A frivolous invention or one that claims anything contrary to established natural laws .
3. The mere discovery of any new property or new use of a known substance or the mere
use of a known process , machine or apparatus unless such known substance results in
a new product or employs atleast one new reactant .
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Historical Perspective
A patent (/ptnt/ or /petnt/) is a set of exclusive rights granted by a sovereign state to an
inventor or assignee for a limited period of time in exchange for detailed public disclosure of
an invention. An invention is a solution to a specific technological problem and is a product
or a process.[1]:17 Patents are a form of intellectual property.
The procedure for granting patents, requirements placed on the patentee, and the extent of the
exclusive rights vary widely between countries according to national laws and international
agreements. Typically, however, a granted patent application must include one or more
claims that define the invention. A patent may include many claims, each of which defines a
specific property right. These claims must meet relevant patentability requirements, such as
novelty, usefulness, and non-obviousness. The exclusive right granted to a patentee in most
countries is the right to prevent others, or at least to try to prevent others, from commercially
making, using, selling, importing, or distributing a patented invention without
permission.[2][3]
The word patent originates from the Latin patere, which means "to lay open" (i.e., to make
available for public inspection). More directly, it is a shortened version of the term letters
patent, which was a royal decree granting exclusive rights to a person, predating the modern
patent system. Similar grants included land patents, which were land grants by early state
governments in the USA, and printing patents, a precursor of modern copyright.
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In modern usage, the term patent usually refers to the right granted to anyone who invents
any new, useful, and non-obvious process, machine, article of manufacture, or composition of
matter. Some other types of intellectual property rights are also called patents in some
jurisdictions: industrial design rights are called design patents in the US,[6] plant breeders'
rights are sometimes called plant patents,[7] and utility models and Gebrauchsmuster are
sometimes called petty patents or innovation patents.
The additional qualification utility patent is sometimes used (primarily in the US) to
distinguish the primary meaning from these other types of patents. Particular species of
patents for inventions include biological patents, business method patents, chemical patents
and software patents.
The Venetian Patent Statute, issued by the Senate of Venice in 1474, and one of the earliest
statutory patent systems in the world.
Although there is some evidence that some form of patent rights was recognized in Ancient
Greece in the Greek city of Sybaris,[8][9] the first statutory patent system is generally
regarded to be the Venetian Patent Statute of 1450. Patents were systematically granted in
Venice as of 1450, where they issued a decree by which new and inventive devices had to be
communicated to the Republic in order to obtain legal protection against potential infringers.
The period of protection was 10 years.[10] These were mostly in the field of glass making.
As Venetians emigrated, they sought similar patent protection in their new homes. This led to
the diffusion of patent systems to other countries.[11]
The English patent system evolved from its early medieval origins into the first modern
patent system that recognised intellectual property in order to stimulate invention; this was
the crucial legal foundation upon which the Industrial Revolution could emerge and
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flourish.[12] By the 16th century, the English Crown would habitually abuse the granting of
letters patent for monopolies.[13] After public outcry, King James I of England (VI of
Scotland) was forced to revoke all existing monopolies and declare that they were only to be
used for "projects of new invention". This was incorporated into the Statute of Monopolies
(1624) in which Parliament restricted the Crown's power explicitly so that the King could
only issue letters patent to the inventors or introducers of original inventions for a fixed
number of years. The Statute became the foundation for later developments in patent law in
England and elsewhere.
James Puckle's 1718 early autocannon was one of the first inventions required to provide a
specification for a patent.
Important developments in patent law emerged during the 18th century through a slow
process of judicial interpretation of the law. During the reign of Queen Anne, patent
applications were required to supply a complete specification of the principles of operation of
the invention for public access.[14] Legal battles around the 1796 patent taken out by James
Watt for his steam engine, established the principles that patents could be issued for
improvements of an already existing machine and that ideas or principles without specific
practical application could also legally be patented.[15] Influenced by the philosophy of John
Locke, the granting of patents began to be viewed as a form of intellectual property right,
rather than simply the obtaining of economic privilege.
The English legal system became the foundation for patent law in countries with a common
law heritage, including the United States, New Zealand and Australia. In the Thirteen
Colonies, inventors could obtain patents through petition to a given colony's legislature. In
1641, Samuel Winslow was granted the first patent in North America by the Massachusetts
General Court for a new process for making salt.[16]
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The modern French patent system was created during the Revolution in 1791. Patents were
granted without examination since inventor's right was considered as a natural one. Patent
costs were very high (from 500 to 1,500 francs). Importation patents protected new devices
coming from foreign countries. The patent law was revised in 1844 - patent cost was lowered
and importation patents were abolished.
The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to
promote the progress of useful Arts".[18] The first patent was granted on July 31, 1790 to
Samuel Hopkins for a method of producing potash (potassium carbonate)
Effects
A patent does not give a right to make or use or sell an invention.[19] Rather, a patent
provides, from a legal standpoint, the right to exclude others[19] from making, using, selling,
offering for sale, or importing the patented invention for the term of the patent, which is
usually 20 years from the filing date[5] subject to the payment of maintenance fees. From an
economic and practical standpoint however, a patent is better and perhaps more precisely
regarded as conferring upon its proprietor "a right to try to exclude by asserting the patent in
court", for many granted patents turn out to be invalid once their proprietors attempt to assert
them in court.[3] A patent is a limited property right the government gives inventors in
exchange for their agreement to share details of their inventions with the public. Like any
other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away,
or simply abandoned.
A patent, being an exclusionary right, does not necessarily give the patent owner the right to
exploit the invention subject to the patent. For example, many inventions are improvements
of prior inventions that may still be covered by someone else's patent.[19] If an inventor
obtains a patent on improvements to an existing invention which is still under patent, they can
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only legally use the improved invention if the patent holder of the original invention gives
permission, which they may refuse.
Some countries have "working provisions" that require the invention be exploited in the
jurisdiction it covers. Consequences of not working an invention vary from one country to
another, ranging from revocation of the patent rights to the awarding of a compulsory license
awarded by the courts to a party wishing to exploit a patented invention. The patentee has the
opportunity to challenge the revocation or license, but is usually required to provide evidence
that the reasonable requirements of the public have been met by the working of invention.
Challenges
In most jurisdictions, there are ways for third parties to challenge the validity of an allowed
or issued patent at the national patent office; these are called opposition proceedings. It is also
possible to challenge the validity of a patent in court. In either case, the challenging party
tries to prove that the patent should never have been granted. There are several grounds for
challenges: the claimed subject matter is not patentable subject matter at all; the claimed
subject matter was actually not new, or was obvious to experts in the field, at the time the
application was filed; or that the some kind of fraud was committed during prosecution with
regard to listing of inventors, representations about when discoveries were made, etc. Patents
can be found to be invalid in whole or in part for any of these reasons.[20][21]
Infringement
Patent infringement
Patent infringement occurs when a third party, without authorization from the patentee,
makes, uses, or sells a patented invention. Patents, however, are enforced on a nation by
nation basis. The making of an item in China, for example, that would infringe a U.S. patent,
would not constitute infringement under US patent law unless the item were imported into the
US.[22]
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Enforcement
Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent,
by an action for patent infringement in a United States federal court), although some
countries (such as France and Austria) have criminal penalties for wanton infringement.[23]
Typically, the patent owner seeks monetary compensation for past infringement, and seeks an
injunction that prohibits the defendant from engaging in future acts of infringement. To prove
infringement, the patent owner must establish that the accused infringer practises all the
requirements of at least one of the claims of the patent. (In many jurisdictions the scope of the
patent may not be limited to what is literally stated in the claims, for example due to the
doctrine of equivalents).
An accused infringer has the right to challenge the validity of the patent allegedly being
infringed in a countersuit. A patent can be found invalid on grounds described in the relevant
patent laws, which vary between countries. Often, the grounds are a subset of requirements
for patentability in the relevant country. Although an infringer is generally free to rely on any
available ground of invalidity (such as a prior publication, for example), some countries have
sanctions to prevent the same validity questions being relitigated. An example is the UK
Certificate of contested validity.
Patent licensing agreements are contracts in which the patent owner (the licensor) agrees to
grant the licensee the right to make, use, sell, and/or import the claimed invention, usually in
return for a royalty or other compensation. It is common for companies engaged in complex
technical fields to enter into multiple license agreements associated with the production of a
single product. Moreover, it is equally common for competitors in such fields to license
patents to each other under cross-licensing agreements in order to share the benefits of using
each other's patented inventions.
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Ownership
In most countries, both natural persons and corporate entities may apply for a patent. In the
United States, however, only the inventor(s) may apply for a patent although it may be
assigned to a corporate entity subsequently[24] and inventors may be required to assign
inventions to their employers under an employment contract. In most European countries,
ownership of an invention may pass from the inventor to their employer by rule of law if the
invention was made in the course of the inventor's normal or specifically assigned
employment duties, where an invention might reasonably be expected to result from carrying
out those duties, or if the inventor had a special obligation to further the interests of the
employer's company.[25]
The plate of the Martin ejector seat of a military aircraft, stating that the design is covered by
multiple patents in Britain, South Africa, Canada and "others". Dbendorf Museum of
Military Aviation.
The inventors, their successors or their assignees become the proprietors of the patent when
and if it is granted. If a patent is granted to more than one proprietor, the laws of the country
in question and any agreement between the proprietors may affect the extent to which each
proprietor can exploit the patent. For example, in some countries, each proprietor may freely
license or assign their rights in the patent to another person while the law in other countries
prohibits such actions without the permission of the other proprietor(s).
The ability to assign ownership rights increases the liquidity of a patent as property. Inventors
can obtain patents and then sell them to third parties.[26] The third parties then own the
patents and have the same rights to prevent others from exploiting the claimed inventions, as
if they had originally made the inventions themselves.
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Governing laws
The grant and enforcement of patents are governed by national laws, and also by international
treaties, where those treaties have been given effect in national laws. Patents are granted by
national or regional patent offices.[27] A given patent is therefore only useful for protecting
an invention in the country in which that patent is granted. In other words, patent law is
territorial in nature. When a patent application is published, the invention disclosed in the
application becomes prior art and enters the public domain (if not protected by other patents)
in countries where a patent applicant does not seek protection, the application thus generally
becoming prior art against anyone (including the applicant) who might seek patent protection
for the invention in those countries.
Commonly, a nation forms a patent office with responsibility for operating that nation's
patent system, within the relevant patent laws. The patent office generally has responsibility
for the grant of patents, with infringement being the remit of national courts.
The authority for patent statutes in different countries varies. In the UK, substantive patent
law is contained in the Patents Act 1977 as amended.[28] In the United States, the
Constitution empowers Congress to make laws to "promote the Progress of Science and
useful Arts..." The laws Congress passed are codified in Title 35 of the United States Code
and created the United States Patent and Trademark Office.
There is a trend towards global harmonization of patent laws, with the World Trade
Organization (WTO) being particularly active in this area. The TRIPs Agreement has been
largely successful in providing a forum for nations to agree on an aligned set of patent laws.
Conformity with the TRIPs agreement is a requirement of admission to the WTO and so
compliance is seen by many nations as important. This has also led to many developing
nations, which may historically have developed different laws to aid their development,
enforcing patents laws in line with global practice.
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In addition, there are international treaty procedures, such as the procedures under the
European Patent Convention (EPC) [constituting the European Patent Organisation (EPOrg)],
that centralize some portion of the filing and examination procedure. Similar arrangements
exist among the member states of ARIPO and OAPI, the analogous treaties among African
countries, and the nine CIS member states that have formed the Eurasian Patent Organization.
A key international convention relating to patents is the Paris Convention for the Protection
of Industrial Property, initially signed in 1883. The Paris Convention sets out a range of basic
rules relating to patents, and although the convention does not have direct legal effect in all
national jurisdictions, the principles of the convention are incorporated into all notable
current patent systems. The most significant aspect of the convention is the provision of the
right to claim priority: filing an application in any one member state of the Paris Convention
preserves the right for one year to file in any other member state, and receive the benefit of
the original filing date. Another key treaty is the Patent Cooperation Treaty (PCT),
administered by WIPO and covering more than 140 countries. The Patent Cooperation Treaty
provides a unified procedure for filing patent applications to protect inventions in each of its
contracting states. A patent application filed under the PCT is called an international
application, or PCT application.
A patent is requested by filing a written application at the relevant patent office. The person
or company filing the application is referred to as "the applicant". The applicant may be the
inventor or its assignee. The application contains a description of how to make and use the
invention that must provide sufficient detail for a person skilled in the art (i.e., the relevant
area of technology) to make and use the invention. In some countries there are requirements
for providing specific information such as the usefulness of the invention, the best mode of
performing the invention known to the inventor, or the technical problem or problems solved
by the invention. Drawings illustrating the invention may also be provided.
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The application also includes one or more claims that define what a patent covers or the
"scope of protection".
After filing, an application is often referred to as "patent pending". While this term does not
confer legal protection, and a patent cannot be enforced until granted, it serves to provide
warning to potential infringers that if the patent is issued, they may be liable for damages
Once filed, a patent application is "prosecuted". A patent examiner reviews the patent
application to determine if it meets the patentability requirements of that country. If the
application does not comply, objections are communicated to the applicant or their patent
agent or attorney through an Office action, to which the applicant may respond. The number
of Office actions and responses that may occur vary from country to country, but eventually a
final rejection is sent by the patent office, or the patent application is granted, which after the
payment of additional fees, leads to an issued, enforceable patent. In some jurisdictions, there
are opportunities for third parties to bring an opposition proceeding between grant and
issuance, or post-issuance.
Once granted the patent is subject in most countries to renewal fees to keep the patent in
force. These fees are generally payable on a yearly basis. Some countries or regional patent
offices (e.g. the European Patent Office) also require annual renewal fees to be paid for a
patent application before it is granted.
Costs
The costs of preparing and filing a patent application, prosecuting it until grant and
maintaining the patent vary from one jurisdiction to another, and may also be dependent upon
the type and complexity of the invention, and on the type of patent.
The European Patent Office estimated in 2005 that the average cost of obtaining a European
patent (via a Euro-direct application, i.e. not based on a PCT application) and maintaining the
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patent for a 10-year term was around 32,000.[32] Since the London Agreement entered into
force on May 1, 2008, this estimation is however no longer up-to-date, since fewer
translations are required.
In the United States, in 2000 the cost of obtaining a patent (patent prosecution) was estimated
to be from $10,000 to $30,000 per patent.[33] When patent litigation is involved (which in
year 1999 happened in about 1,600 cases compared to 153,000 patents issued in the same
year[33]), costs increase significantly: although 95% of patent litigation cases are settled out
of court,[34] those that reach the courts have legal costs on the order of a million dollars per
case, not including associated business costs.
A trade secret is information that is intentionally kept confidential and that provides a
competitive advantage to its possessor. Trade secrets are protected by nondisclosure
agreements and employment law, each of which prevents information leaks such as breaches
of confidentiality and corporate espionage. Compared to patents, the advantages of trade
secrets are that the value of a trade secret continues until it is made public,[36] whereas a
patent is only in force for a specified time, after which others may freely copy the invention;
does not require payment of fees to governmental agencies or filing paperwork;[36] has an
immediate effect;[36] and does not require any disclosure of information to the public.[36]
The key disadvantage of a trade secret is its vulnerability to reverse engineering.[37]
Benefits
Primary incentives embodied in the patent system include incentives to invent in the first
place; to disclose the invention once made; to invest the sums necessary to experiment,
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produce and market the invention; and to design around and improve upon earlier
patents.[38]
Patents provide incentives for economically efficient research and development (R&D).[39]
A study conducted annually by the IPTS shows that the 2,000 largest global companies
invested more than 430 billion euros in 2008[40] in their R&D departments. If the
investments can be considered as inputs of R&D, real products and patents are the outputs.
Based on these groups, a project named Corporate Invention Board, had measured and
analyzed the patent portfolios to produce an original picture[41] of their technological
profiles. Supporters of patents argue that without patent protection, R&D spending would be
significantly less or eliminated altogether, limiting the possibility of technological advances
or breakthroughs.[citation needed] Corporations would be much more conservative about the
R&D investments they made, as third parties would be free to exploit any developments. This
second justification is closely related to the basic ideas underlying traditional property
rights.[38][specify] Specifically, "[t]he patent internalizes the externality by giving the
[inventor] a property right over its invention." A 2008 study by Yi Quan of Kellogg School of
Management showed that countries instituting patent protection on pharmecuticals did not
necessarily have an increase in domestic pharmaceutical innovation. Only countries with
"higher levels of economic development, educational attainment, and economic freedom"
showed an increase. There also appeared to be an optimal level of patent protection that
increased domestic innovation.
In accordance with the original definition of the term "patent", patents are intended to
facilitate and encourage disclosure of innovations into the public domain for the common
good. Thus patenting can be viewed as contributing to open hardware after an embargo
period (usually of 20 years). If inventors did not have the legal protection of patents, in many
cases, they might prefer or tend to keep their inventions secret (e.g. keep trade
secrets).Awarding patents generally makes the details of new technology publicly available,
for exploitation by anyone after the patent expires, or for further improvement by other
inventors. Furthermore, when a patent's term has expired, the public record ensures that the
patentee's invention is not lost to humanity.
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In many industries (especially those with high fixed costs and either low marginal costs or
low reverse engineering costs computer processors, and pharmaceuticals for example),
once an invention exists, the cost of commercialization (testing, tooling up a factory,
developing a market, etc.) is far more than the initial conception cost. (For example, the
internal rule of thumb at several computer companies in the 1980s was that post-R&D costs
were 7-to-1.)
One effect of modern patent usage is that a small-time inventor, who can afford both the
patenting process and the defense of the patent,[45] can use the exclusive right status to
become a licensor. This allows the inventor to accumulate capital from licensing the
invention and may allow innovation to occur because he or she may choose not to manage a
manufacturing buildup for the invention. Thus the inventor's time and energy can be spent on
pure innovation, allowing others to concentrate on manufacturability.
Another effect of modern patent usage is to both enable and incentivize competitors to design
around (or to "invent around" according to R S Praveen Raj) the patented invention. This may
promote healthy competition among manufacturers, resulting in gradual improvements of the
technology base.[48] This may help augment national economies and confer better living
standards to the citizens. The 1970 Indian Patent Act[49] allowed the Indian pharmaceutical
industry to develop local technological capabilities in this industry. This act coincided with
the transformation of India from a bulk importer of pharmaceutical drugs to a leading
exporter.[citation needed] The rapid evolution of Indian pharmaceutical industry since the
mid-1970s highlights the fact that the design of the patent act was instrumental in building
local capabilities even in a developing country like India.
Criticism
Legal scholars, economists, activists, policymakers, industries, and trade organizations have
held differing views on patents and engaged in contentious debates on the subject. Critical
perspectives emerged in the nineteenth century that were especially based on the principles of
free trade.[51]:262263 Contemporary criticisms have echoed those arguments, claiming that
patents block innovation and waste resources (e.g. with patent-related overheads) that could
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Low quality, already known or obvious patents hamper innovation and commercialization.
Blocking the use of fundamental knowledge with patents creates a "tragedy of the
anticommons, where future innovations can not take place outside of a single firm in an entire
field
Patents weaken the public domain and innovation that comes from it.[
Patent thickets, or "an overlapping set of patent rights", in particular slow innovation.
Broad patents prevent companies from commercializing products and hurt innovation. In the
worst case, such broad patents are held by non-practicing entities (patent trolls), which do not
contribute to innovation. Enforcement by patent trolls of poor quality patents has led to
criticism of the patent office as well as the system itself.[66] For example, in 2011, United
States business entities incurred $29 billion in direct costs because of patent trolls.[67]
Lawsuits brought by "patent assertion companies" made up 61% of all patent cases in 2012,
according to the Santa Clara University School of Law.
Patents apply a "one size fits all" model to industries with differing needs,that is especially
unproductive for the software industry.
Rent seeking by owners of pharmaceutical patents have also been a particular focus of
criticism, as the high prices they enable puts life-saving drugs out of reach of many people.
Boldrin and Levine conclude "Our preferred policy solution is to abolish patents entirely and
to find other legislative instruments, less open to lobbying and rent seeking, to foster
innovation when there is clear evidence that laissez-faire undersupplies itAbolishing patents
may be politically challenging in some countries[citation needed], however, as the primary
economic theories supporting patent law hold that inventors and innovators need patents to
recoup the costs associated with research, inventing, and commercializing;[39] this reasoning
is weakened if the new technologies decrease these costs. A 2016 paper argued for substantial
weakening of patents because current technologies (e.g. 3-D printing, cloud computing,
synthetic biology, etc.) have reduced the cost of innovation
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Debates over the usefulness of patents for their primary objective are part of a larger
discourse on intellectual property protection, which also reflects differing perspectives on
copyright.
The patent system in india is administered by the Office of the Controller General of
Patents, Designs & Trade Marks (CGPDTM). Indian Patent Office is subordinate offices of
Indian Government and administered under the Indian Patent Act 1970. The Indian patent
offices are situated in Delhi, Kolkata, Chennai and Mumbai. There have been many changes
in the Indian Patent Act so far. However, the changes in the Patent Acts and Rules made in
1999, 2002, 2005, 2006) are necessitated by India's obligation under TRIPS agreement.
TRIPS refer to the Trade Related Aspects of Intellectual Property Rights, allowing product
patents in the field of chemical and drugs.
However, Indian Patent Act introduces the section 3 (d) by the amendment of the Patent Acts
in 2005 in order to stop ever greening of patents. Another important feature was the
introduction of pre-grant representation (opposition) in addition to the existing post-grant
opposition mechanism. The pre-grant representation has had success in a short span. One
example is the abandonment of a patent application by Novartis on Glivec (Imatinib
Mesylate) under section 3(d) of the act and revoking the earlier granted EMR on the same
drug used to treat Leukemia.
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Creativity and the process of innovation are fertile grounds for psychological research, with
applications spanning education, the arts, business and science. Last year, the U.S. Supreme
Court took up the topic of creativity in the context of patent law. The case, Mayo
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Law Review, 2010). In addition, how observers evaluate the novelty, obviousness or utility of
an invention has implications for the application of the law.
Scholars have also begun to think about how psychology and patent law may come together
to influence "large-scale collaborative creativity" Modern scientific endeavors frequently
involve teams of scientists and other scholars, rely on multidisciplinary contributions and
unfold over lengthy periods of time. Whether and how individual contributors to these
enterprises are motivated to be creative, how collaborative processes influence creativity,
how information is shared (or not) in ways that promote or hinder creative processes, and
other questions about how innovation occurs in group settings have important implications
for the courses these large-scale projects will follow.
In the United Kingdom, a patent provides its proprietor with the right to exclude others from
utilizing the invention claimed in that patent. Should a person utilize that invention, without
the permission of the patent proprietor, they may infringe that patent.
Legislation
Infringement under United Kingdom patent law is defined by Section 60 of the Patents Act
1977 (as amended), which sets out the different types of infringement.
Infringement
Where the invention is a product, by the making, disposing of, offering to dispose of, using,
importing or keeping a patented product.
Where the invention is a process, by the use, or offer for use where it is known that the use of
the process would be an infringement. Also, by the disposal of, offer to dispose of, use or
import of a product obtained directly by means of that process, or the keeping of any such
product whether for disposal or otherwise.
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By the supply, or offer to supply, in the United Kingdom, a person not entitled to work the
invention, with any of the means, relating to an essential element of the invention, for putting
the invention into effect, when it is known (or it is reasonable to expect such knowledge) that
those means are suitable for putting, and are intended to put, the invention into effect in the
United Kingdom.
An action for infringement can only be brought after grant of the patent, but damages can be
recovered under Section 69 for infringing acts conducted after publication of the application,
but before grant, provided those acts infringe the claims both as published and as granted, and
provided the defendant can be shown to have been aware of the existence of the patent (or
patent application). The protection conferred by publication of the application is known as
provisional protection. Publication of European applications and Patent Cooperation Treaty
(PCT) applications confers provisional protection in the same manner, provided the
application is published in English.
Remedies
A claimant for infringement may be awarded a range of remedies (under section 61),
depending on the facts of the particular case. Damages may be awarded to rectify financial
harm suffered, an injunction may be granted to prevent further action by the infringer, an
account of profits may be ordered, an order for the delivery up or destruction of infringing
items may be made or a declaration that the patent is valid and infringed may be granted to
the patentee. Both damages and an account of profits may not be ordered in respect of the
same infringement.[1] Limitations on damages or costs may apply under certain
circumstances, for example if the defendant was unaware of the patent's existence] or where
the patent was subject to a transaction that was not registered at the Patent Office within 6
months.[3]
Under United States law, a patent is a right granted to the inventor of a (1) process, machine,
article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A
patent is the right to exclude others from using a new technology. Specifically, it is the right
to exclude others from making, using, selling, offering for sale, importing, inducing others to
infringe, and/or offering a product specially adapted for practice of the patent.
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United States patent law is authorized by the U.S. Constitution. Article One, section 8,
clause 8 states:
The Congress shall have power ... To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive right to their respective
writings and discoveries;
Patent law is designed to encourage inventors to disclose their new technology to the world
by offering the incentive of a limited-time monopoly on the technology. This limited-time
term of patent is 20 years from the earliest patent application filing date (but this term can be
extended via patent term adjustment). After the patent term expires, the new technology
enters the public domain and is free for anyone to use.
Substantive law
Patent law is found under Title 35 of the United States Code. The "patentability" of
inventions (defining the types things that qualify for patent protection) is defined under
Sections 100-105. Most notably, section 101[2] sets out "subject matter" that can be patented;
section 102[3] defines "novelty" and "statutory bars" to patent protection; section 103[4]
requires that an invention must not only be new, but also "non-obvious".
"Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof may obtain a patent
therefor, subject to the conditions and requirements of this title." 35 U.S.C. 101. To be patent
eligible subject matter, an invention must meet two criteria. First, it must fall within one of
the four statutory categories of acceptable subject matter: process, machine, manufacture, or
composition of matter. Second, it must not be directed to subject matter encompassing a
judicially recognized exception: laws of nature, physical phenomena, and abstract ideas.
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(1) the claimed invention was patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing date of the claimed
invention...
Obviousness (103
To be patentable, a technology must not only be "new" but also "non-obvious." A technology
is obvious (and therefore ineligible for a patent) if a person of "ordinary skill" in the relevant
field of technology, as of the filing date of the patent application, would have thought the
technology was obvious. Put differently, an invention that would have been obvious to a
person of ordinary skill at the time of the invention is not patentable. Specifically, 35 U.S.C.
103 states:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 102, if the differences between the
claimed invention and the prior art are such that the claimed invention as a whole would have
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been obvious before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.
The non-obviousness requirement does not demand that the prior art be identical to the
claimed invention. It is enough that the prior art can somehow be modified in order to teach
the claimed technology. So long as the modification of the prior art (or combination of
several prior art references) would have been obvious to a person of ordinary skill in the art at
the time the application was filed, the applied-for technology will be considered obvious and
therefore patent-ineligible under 35 U.S.C. 103.
U.S patent
Patent applications can be filed at the United States Patent and Trademark Office. The
application process is somewhat slow and generally expensive. Estimate $10,000 to $30,000
dollars in filing and legal fees, and about 3 years from filing the application to the issue date.
The rules for drafting and filing a patent application are set out in the Manual of Patent
Examination Procedure (or "MPEP").
Since the American Inventors Protection Act, the United States Patent and Trademark Office
publishes patent applications 18 months after they are filed. This time limit can be extended
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under certain circumstances, for an additional fee.[5] The applications may be published
before a patent has been granted on them if the patent is not granted within the 18 month time
frame. Applicants can opt out of publication if the applications will not be prosecuted
internationally.
In the United States, a patent holder may wish to pursue a cause of action in the ITC instead
of, or in addition to the court system.[citation needed] In contrast to courts, which have a
wide range of remedies at their disposal, the ITC can only do one thing when it comes to
patent infringement: grant or deny injunctive relief by ordering to keep infringing products
from being imported into the United StatesIn some cases, this may provide a quicker
resolution to a patent owner's problems.
For any IPR related litigation, it is necessary to understand the Indian Judicial system and its
psychology. It has been observed that the Indian Courts are very active in granting equitable
reliefs like injunctions, etc., but are still reluctant in awarding punitive pecuniary damages.
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The Government Authorities including Police are bound to execute and enforce the orders of
Court, and as such the Courts are empowered to direct any government authority to do or not
to do or prevent / compel any person to comply with the orders of the Court. There are
effective methods for the enforcement of the orders of the Court, including Contempt of
Court proceedings, which provides for a fine as well as imprisonment, in case of non-
compliance of the order of the Court. Execution/ compliance of the orders of the court are
also done by way of appointment of the Local Commissioner/Receivers by the Court. In
India, certain State Governments have formed Special Intellectual Property Cells, which deal
with offences relating to infringement of IPR.
In any civil action for enforcement of Intellectual Property Rights, the following reliefs may
be claimed in such suit:
Permanent Injunction;
Interim Injunction;
Damages;
Anton Pillar Order (Appointment of Local Commissioner by the Court for custody/
sealing of infringing material/accounts);
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Filing of a Criminal Complaint before a Competent Magisterial Court with application for
issue of search and seizure warrants directing the police to raid of the premises of the accused
for seizure of the infringing material and arrest of the infringers.
It is interesting to note that in India, wherever provisions have been made for criminal
prosecution for violation of any Intellectual Property Rights, a criminal case can be filed
against known as well as unknown persons. It is also important to note that both civil and
criminal remedies, wherever applicable, can be availed simultaneously and both the remedies
are coexistent.
After filing the application for the grant of patent, a request for examination is required to be
made for examination of the application by the Indian Patent Office. After the First
Examination Report is issued, the Applicant is given an opportunity to meet the objections
raised in the report. The Applicant has to comply with the requirements within 12 months
from the issuance of the First Examination Report. If the requirements of the first
examination report are not complied with within the prescribed period of 12 months, then the
application is treated to have been abandoned by the applicant. After the removal of
objections and compliance of requirements, the patent is granted and notified in the Patent
Office Journal. The process of the grant of patent in India can also be understood from the
following flow chart:
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India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883
and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the
aforesaid routes for filing of application for grant of patent in India.
Pre-Grant Opposition
A representation for pre-grant opposition can be filed by any person under Section 11A of the
Patents Act, 1970 within six months from the date of publication of the application, as
amended (the "Patents Act") or before the grant of patent. The grounds on which the
representation can be filed are provided under Section 25(1) of the Patents Act. There is no
fee for filing representation for pre-grant opposition. Representation for pre-grant opposition
can be filed even though no request for examination has been filed. However, the
representation will be considered only when a request for examination is received within the
prescribed period.
Post-Grant Opposition
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Any interested person can file post-grant opposition within twelve months from the date of
publication of the grant of patent in the official journal of the patent office.
Some of the grounds for filing pre-and post-grant opposition are as under:
Prior publication;
The invention was publicly known or publicly used in India before the priority date of that
claim;
The invention is obvious and does not involve any inventive step;
That the subject of any claim is not an invention within the meaning of this Act, or is not
patentable under this Act;
That in the case of a patent granted on convention application, the application for patent was
not made within twelve months from the date of the first application for protection for the
invention made in a convention country or in India;
That the complete specification does not disclose or wrongly mentions the source and
geographical origin of biological material used for the invention; and
That the invention was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere.
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Term of Patent
The term of every patent in India is twenty years from the date of filing the patent
application, irrespective of whether it is filed with provisional or complete specification.
However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of
twenty years begins from the international filing date.
It is important to note that a patentee has to renew the patent every year by paying the
renewal fee, which can be paid every year or in lump sum.
Restoration of Patent
A request for restoration of patent can be filed within eighteen months from the date of
cessation of patent along with the prescribed fee. After the receipt of the request, the matter is
notified in the official journal for further processing of the request.
If the invention uses a biological material which is new, it is essential to deposit the same in
the International Depository Authority ("IDA") prior to the filing of the application in India
in order to supplement the description. If such biological materials are already known, in such
a case it is not essential to deposit the same. The IDA in India located at Chandigarh is
known as Institute of Microbial Technology (IMTECH).
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If the grant of the patent is for a product, then the patentee has a right to prevent others from
making, using, offering for sale, selling or importing the patented product in India. If the
patent is for a process, then the patentee has the right to prevent others from using the
process, using the product directly obtained by the process, offering for sale, selling or
importing the product in India directly obtained by the process.
Before filing an application for grant of patent in India, it is important to note "What is not
Patentable in India?" Following i.e. an invention which is (a) frivolous, (b) obvious, (c)
contrary to well established natural laws, (d) contrary to law, (e) morality, (f) injurious to
public health, (g) a mere discovery of a scientific principle, (h) the formulation of an abstract
theory, (i) a mere discovery of any new property or new use for a known substance or
process, machine or apparatus, (j) 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, (k) a mere arrangement or rearrangement or duplication of known devices, (l) a
method of agriculture or horticulture and (m) inventions relating to atomic energy, are not
patentable in India.
All patent applications are kept secret up to eighteen months from the date of filing or priority
date, whichever is earlier, and thereafter they are published in the Official Journal of the
Patent Office published every week. After such publication of the patent application, public
can inspect the documents and may take the photocopy thereof on the payment of the
prescribed fee.
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Compulsory Licensing
One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the
patent subject to the fulfillment of certain conditions. At any time after the expiration of three
years from the date of the sealing of a patent, any person interested may make an application
to the Controller of Patents for grant of compulsory license of the patent, subject to the
fulfillment of following conditions, i.e.
the reasonable requirements of the public with respect to the patented invention have not been
satisfied; or
that the patented invention is not available to the public at a reasonable price; or
It is further important to note that an application for compulsory licensing may be made by
any person notwithstanding that he is already the holder of a license under the patent.
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CASE STUDY
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infringement in a case like the present, to use methodologies like X-Ray diffraction to
ascertain whether the competing products are identical in nature. The correct test of
infringement in this case is to map Cipla product against the Roches patent claims, which we
find has not been done by the learned Single Judge, and this is the third infirmity on this
aspect of the dispute. (Para 76) 3 Division bench ruled in favour of Roche after noting
HELD: The Bench said, a product essentially comprises a substance (active ingredient) or
composition (combination of active ingredients). A product patent protects the product in any
form however it is made, or however it is formulated. Many different drug products may be
marketed with the same active moiety and the same product can thus have various structural
forms. Thus Section 3(d) envisages a variety of derivatives of known substances (Para 31)
some illustrative types could be as under: - i. A compound which is not active in itself but is
metabolized in the body to form an active drug known as prodrug. For e.g., chloramphenicol
succinate ester is used as an intravenous prodrug of chloramphenicol, because pure
chloramphenicol does not dissolve in water. ii. A composition (combination of two or more
active ingredients or combination of a pharmaceutical carrier with a compound not used as a
drug before). Substance S. 3(d) New Product S. 2(1)(j) Pharmaceutical Substance S. 2(1) (ta)
Enhanced Efficacy Inventive Step 5 iii. A drug delivery system which is a composition that
its constituents enable to be administered in a particular way.
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relief and defendant appealed. The Appeal Court found that the ad-interim and interim orders
(the first adinterim order) and (the final order) of the Thane District Court in fact continued in
force and survived; and that both orders were in the nature of subsisting and binding ad-
interim orders. The judgement and order was stayed for four weeks, subject to Sergi not
entering into a fresh contract with another party in respect of the products in question. It was
clarified that the stay was to enable Sergi to execute the contract with DTL. CTR filed
Special Leave Petition before the Supreme Court against the order(s) of the Thane Court. A
leave was granted in both Special Leave Petitions and these were disposed of with several
directions.
HELD: The matter was heard in the High Court and was decided in favour of Plaintiff, CTR,
the judge held that the pith and marrow of CTRs invention is 9 the two integers working
interdependently to produce what is, prima facie, a dramatically improved result at the stage
of an explosion detection (not fire extinguishing or fire detection and prevention); it was held
that Sergi has entirely abandoned its patent and has adopted CTRs; Sergi could not have met
the DTL bid without such an infringement. It was held that Sergi cannot possibly be
permitted to continue with what was found to be a clear case of infringement.
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Phosphate Salt of Sitagliptin is covered, enabled and disclosed in the suit patent? If so, its
effect? XII. Relief
HELD: The judge held that onus to prove that invention in the suit patent was obvious to a
person skilled in the art was on the defendant, in which defendant has failed to discharge by
leading a positive evidence on record. Mere comparison of chemical structure is not
sufficient, inasmuch as, picking up parts of chemical structures of different patents and
clubbing them will also not be sufficient, as it appears to have been done, keeping in mind the
molecular structure of the suit patent, as a hindsight analysis. A direct question was put to
Defendants witness 2, that the methodology followed by him was typically referred to as
hindsight analysis and is a prohibited methodology in patent law to which he answered I
have no comments. He has not denied this suggestion. Instead has given a vague answer
which is deemed admission on this point. Hindsight analysis is not permissible. Even
otherwise, not much reliance can be placed on this witness. Above all, PW4 inventor of the
suit patent, was not confronted with these prior arts nor was any question put to her that, in
view of the patents cited, invention was obvious. Furthermore, Plaintiff Witness 2, for the
detailed reasons, has categorically stated that suit patent was not obvious to a person skilled
in the art. This contention of defendant was, thus, rejected. In the judgement the defendant
was restrained by a decree of permanent injunction from making, using, selling, distributing,
advertising, exporting, offering for sale or dealing in Sitagliptin Phosphate Monohydrate or
any other salt of Sitagliptin in any form, alone or in combination with one or more other
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Delhi on the basis of the threat or apprehension that the actions of the Defendant within the
territorial jurisdiction of Delhi High Court are likely to cause prejudice to the Plaintiff. The
Plaintiffs urged that the Court can entertain such action, even if the threat has not culminated
into a reality. So, one of the issues that arose for determination was whether, in the facts and
circumstances of the present case, based on the averments made in the plaint, it can be said
that the Court has territorial jurisdiction to entertain the suit. Particular to the present case, the
question that arises is whether the mere apprehension of the Plaintiff or its perception of a
threat of infringement by the Defendants of its patent occurring within the local limits of this
Court is sufficient to attract the jurisdiction of this Court.
HELD:The single judge said, it is not necessary at this stage, for the Plaintiff to name the
particular customers of Defendants to whom the product is to be sold since what is expressed
is only an apprehension of "offer for sale". At this stage, the Plaintiff can at best refer to the
fact that Defendant supplies oncology APIs to various generic companies and that the said
APIs are sold in Delhi. The apprehension that such oncology APIs may in the near future
include the infringing product which is also an oncology API cannot, in the circumstances, be
characterised as lacking credibility and having been asserted merely to attract the jurisdiction
of the Court. The above averments in the present plaint, which is in a quia timet action, are
prima facie sufficient to show that Defendant (Shilpa) "carries on business" in Delhi and that
the prima facie [sic] the cause of action arises within the jurisdiction of this Court. The bench
in its order noticed that . impugned order has taken note of the plaint averments,
particularly Paras.that Shilpa intends to supply API to various generic manufacturers in
India and abroad. It was stated that the plaintiff was not obliged to name specific customers
of the defendants products and the assertion that the latter offered oncology APIs which
could include infringing products in the future, were sufficient averments to constitute cause
of action, within territorial jurisdiction of this court. For the above reasons, it is held by the
bench that there is no infirmity with the impugned order of the learned single judge rejecting
the Appellants application.
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HELD:The bench held that in terms of sub-section (1) of Section 92, though the appellate
Board shall not be bound by the procedure laid down in the Code of Civil Procedure, it shall
be guided by principles of natural justice and subject to the provisions of the Act and Rules
made under and the appellate Board shall have powers to regulate its own procedure
including the fixing of places and times of its hearing. Sub-section (2) of Section 92, states
that the appellate Board shall have the same power as vested in a civil Court under the Code
of Civil Procedure, while trying a suit in respect of matters (a) receiving evidence; (b) issuing
commissions for examination of witnesses; (c) requisitioning any public record; and (d) any
other matter which may be prescribed. Thus on a conjoint reading of Section 92(1), 92(2)(a)
of the Trade Marks Act and 107B of the Patents Act, the bench said that we have no
hesitation to hold that the appellate Board is vested with powers to regulate its own procedure
as it is vested with the same powers of a Civil Court under Code of Civil Procedure, more
particularly for the purpose of receiving evidence. Thus, the Appellate Board was fully
justified in entertaining the Miscellaneous Petition filed by the second respondent. In the light
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of the above discussion. the order impugned passed by the IPAB was held valid and was
not interfered. Accordingly, the Writ Petition failed and was dismissed.
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October 2011 contained two sets of fresh objections and not the same objections and
therefore, the petitioner's application could not have been rejected as abandoned.
HELD: The Honble Judge remanded the matter to the Controller for a fresh consideration
and for passing a reasoned order under Section 15 of the Act as expeditiously as possible.
The court directed that petitioner shall be given an opportunity of personal hearing before
passing an order for refusal of Patent.
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HELD: The bench held that in exercise of powers of judicial review, the court cannot
legislate or even give direction to legislate. Though Section 158 empowers the High Courts
also to make rules but only as to the conduct and procedure in respect of proceedings before
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it under the Act and not in respect of proceedings before the Patent Office. Moreover, the
bench said that petitioner has sought the relief in vacuum, without reference to any particular
divisional application filed in abuse of Section 16 of the Act. Though instances of two such
abuses have been given but the patent applicant who had indulged in such abuse has not been
made a party to the petition. It is the settled principle that the Court cannot be approached in
vacuum, without a cause of action. the circumstances, though the bench found considerable
merit in the grievance urged by the petitioner as well as in the suggestions made to allay the
same, but found hands to be tied and accordingly disposed petition with a direction to the
respondents to, within a period of six months, treating the writ petition as a representation,
take a decision whether any further amendment in the Patents Rules is necessary to address
the malady if any and if so, to take appropriate steps therefor.
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was alleged by the Appellant that defendant No.2 is likely to transfer the patents in the name
of company i.e. GMATF (holding 57% shares of defendant No.1- Company). The court held
that the plaintiff's/Appellants case for interim relief is based on apprehension. . We are of
the prima facie view that whatever serious apprehension the plaintiff may have, cannot be a
ground to grant relief in favour of the plaintiff considering the serious consequences of the
same. In the facts of the case and considering the record and submissions advanced, we are
not convinced to hold that the balance of convenience lies in favour of the appellant i.e.
original plaintiff. Judge dismissed the appeal by rejecting the prayer for grant of interim
injunction in view of facts and circumstances
HELD: The court observed that plaintiff has an alternate efficacious remedy before
specialized forum i.e. Controller of Patents. The plaintiff could have initiated proceeding for
pre-grant of patents under section 25(1)(a) of the Patents Act or could have resorted to
proceeding by filing petition/application under section 64(1)(a)(b) of the said Act. The Court
also observed that subject patents were registered since the year 2008 onwards. So far
nothing is placed on record which would fairly indicate that defendant No.2 is selling,
transferring or in any way creating third party interest in respect of patents registered in his
name. This is apart from the question as to whom the patents belong to. There has not been
any assignment of the patents by defendant No.2 in favour of defendant No.1. So prima facie
material and evidence on record show that the patents are registered in the name of defendant
No.2 and the plaintiff has failed to make out a case that defendant No.2 is going to sell or
transfer or create third party interest in respect of subject patents or act in such a manner that
would jeopardize the interest of the company.
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(phosphate with Sitagliptin) could not mean that there was no infringement; trifling variations
had to be ignored. However, he went on to notice that MSD, as patentee of Sitagliptin was
not marketing Sitagliptin alone as a product and was marketing Sitagliptin in combination
with phosphate, just like Glenmark. Nevertheless, he noticed that interim relief and the
pleadings did not suggest that Sitagliptin Phosphate made by Glenmark was with the same
object as MSDs patent; equally he noted that 35 there was no pleading that the mere addition
of phosphate to Sitagliptin did not embody an inventive advancement. The impugned
judgement, therefore, concluded that the plaintiff did not prove the case it ought to have i.e.
how Sitagliptin Phosphate is merely a new form of Sitagliptin that was medically equivalent
to Sitagliptin, thus rendering the interim injunction unwarranted. MSD argued that the suit
patent is infringed because Sitagliptin and any of its acceptable salts are covered by its
claims, thus resulting in the making, using or offering for sale, importing into India etc. of
Sitagliptin or any of its salts or any form amounting to infringement of the suit patent. patent
is for Process for the preparation of R. Sitagliptin and its pharmaceutical salts. MSDs
counsel placed reliance on Glenmarks US Process Patent No. US8334385 which clearly
admits that Sitagliptin is developed for the treatment of T2DM and is the active free base. It
also gives the full description of the process for preparing Sitagliptin freebase in the patent
specification which is Scheme 6 in Mercks patent; reliance is placed on MSDs US patent
for Sitagliptin in support. It was stressed that Glenmarks ZITA (Sitagliptin Phosphate
Monohydrate) and ZITA-MET (Sitagliptin Phosphate Monohydrate and Metformin) infringe
the suit patent because Sitagliptin is made and used by Glenmark in ZITA and ZITA-MET
when it makes salt Sitagliptin Phosphate Monohydrate. It is underlined that the phosphoric
acid salt of Sitagliptin was disclosed in the suit patent itself as one of the pharmaceutically
acceptable salts. Glenmarks Counsel, Dr. A.M. Singhvi states that ZITA has Sitagliptin
Phosphate Monohydrate as the active pharmaceutical ingredient for which no patent
protection exists because Application No. 5948/DELNP/2005 was specifically abandoned. It
was also argued that ZETAMET is a combination of Sitagliptin Phosphate and monohydrate
and Metformin Hydrochloride which is not subject matter of any patent and application No.
2710/CHENP/2008 is awaiting examination before the Patent office.
HELD: Accordingly, for the above reasons, this Court held that the order of the learned
Single Judge dismissing the application for grant of an interim injunction is liable to be and is
set aside. The interim injunction claimed for by the plaintiff MSD in IA 5167/2013 is
granted. Additionally, the following directions were issued: i) MSD shall furnish an affidavit
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undertaking (to be filed by its director duly authorised by its Board of Directors) in the
pending suit, that in the event the suit is dismissed, it would compensate Glenmark
HELD: Court said, from the entire gamut of the matter, it appears to the Court that the suit
patents are valid, they are corresponding patents in other countries. The defendant has
infringed the same. Unless the suit patents are declared as invalid in revocation petitions filed
by the defendant, the same cannot be allowed to be infringed by the defendant who is also
unwilling to execute a FRAND licence. For the aforesaid reasons, the Court is of the
considered opinion that the defendant has prima facie acted in bad faith during the
negotiations with plaintiff, it has even approached various fora and has made contrary
statements in order to get monetary benefit. Ericsson was granted an injunction against Intex
for any devices that infringed on the eight Standard Essential Patents that are part of
Ericssons portfolio. The Court also ordered Intex to pay 50% Royalty, to be calculated as per
43 Micromax Order in in CS(OS) No.442/2013 (0.8%-1.0% of net selling price to be
escalated up to 1.3% during pendency of the trial) from date of filing of suit till 1st March,
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2015 within four weeks. For the remaining 50% amount, court asked the defendant to furnish
the bank guarantee within the same period with the Registrar General of this Court who
would invest the said amount in FDR.
HELD:
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1. Whether to Make in India for Satisfying the working requirement It is not essential
that the patent must be worked by manufacturing the patented product in India. The
Act does not mandate that no patent protection would be granted to a patentee unless
the local manufacture is undertaken. 49 It is clear that the grounds which are available
for the person interested while seeking an application for the compulsory licensing or
revocation of the patent on the ground of non-working of the patent could be urged
before the relevant authority which will consider the matter and cannot be imported as
a matter of defence to the suit for infringement as the civil court hearing the suit for
infringement cannot transgress within the domain of the authority/ controller/ central
government which are distinct functionaries having their powers and considerations
specifically defined under the specific provisions of the Act. 2. Public Interest Unless
there is a credible challenge to the validity of the patent itself, the Courts will not
include any alleged public interest as a factor to exercise discretion. Therefore, to say
that public interest is a complete exception to the patent would not be correct as
otherwise the rights granted by the sovereign towards monopoly would be
undermined by too broadly interpreting the public interest. The ground of public
interest can be invoked once the court finds that damages is adequate relief which has
been held in the line of authorities emerging from US where the courts have imposed
heavy sums upon the defendants towards permitting the usage of patents. The public
interest doctrine guidesthe cases of the patents as well especially in the cases wherein
the innovations involve the lifesaving drugs or pharmaceutical preparations which
would have bearing upon the life of the general public in the disputes involving the
making of the lifesaving drugs affecting the lives of the larger segment of the public.
The reason is very simple and plain which is that the manmade inventions cannot be
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said to be taking precedence over the life of the mankind. Therefore, some mechanism
is devised by the courts so that the rights of the patentee is respected and
simultaneously the public interests is equally not affected by balancing out the two
militating interests. Thus, the balanced approach is adopted by the courts by
imposition of the terms in the form of royalty to be paid by the third party to the
patentee than to absolutely prevent the making of the patented product in the form of
injunction where the disputed question of facts arise as to whether the invention is
adequately worked in the country or not or where there exists a link between the
patented product and the far reaching effect of the medicines upon the public health
and wellbeing of the public of the country in a case of such nature is made by the
defendant. 3. Public Interest Doctrine in USA 50 The public interest doctrine has been
invoked by the US courts number of times in the cases involving the patent
infringement including but not limited to pharmaceutical disputes involving the
lifesaving drugs. One of the cases which was decided by the US Supreme Court is the
case of eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 389 (2006) which is
relating to business method patents. The Court established that a plaintiff must
demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available
at law, such as monetary damages, are inadequate to compensate for that injury; (3)
that, considering the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest would not be disserved
by a permanent injunction. The US Court remanded the matter before the district
court for reconsideration and thereafter the District Court again after hearing the
matter came to the conclusion that the public interests favour against the grant of the
injunction. This element of the 4th factor of public interests evolved by the US Court
which in my opinion was always present on weighing the case of the parties on the
balance of convenience became the point of larger debate in US and across the globe
in relation to decision in patent matters of diverse nature
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since the court question the grant of monopoly. Thus, Section 6 of the Statute of Monopolies,
1624 allowed the grant of monopolies for the term of 14 years or under, hereafter to be made
of the sole working or making of any manner of new manufactures within this realm to the
true and first inventor and inventors of such manufacturers.2 Despite the Statute of
Monopolies, the Crown continued to grant objectionable monopolies, which was
discontinued after 1689. The Industrial Revolution in Britain brought significant changes in
the law relating to patents. The need to provide every inventor with an incentive to continue
expanding his creative energies in producing inventions suddenly gained centre stage and
every invention, however insignificant was given due recognition. The industrial revolution
enhanced the scope of patent protection throughout the Europe. Italy for the first time,
accorded statutory patent protection for new and ingenious devices for a period of 10 years
depending upon the usefulness, but failed to accord property rights over such devices. In
France, King Louis the XIV started granting patent protections under edict of Nantes.3 It was
in 1762, statutory protection for a period of 16 years was granted to the inventions and by
1791, a simple registration rights was introduced. The same system prevailed throughout the
Europe till 1883 Paris Convention on Industrial Property. Till the time of independence, US
followed the common law principles in respect of patent protection and while enacting the
constitution, James Medicine, advocated for constitution protection for patents and other
intellectual properties. The US constitution is the foundation of federal patent law and Article
1, Section 8(8) of the constitution provides the congress shall have power to make laws to
promote the progress of science and useful arts by securing for limited time to authors and
inventors, the exclusive right
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Suggestions
The patent regime in India is now almost TRIPs compliant. As has been pointed
out TRIPs compliant patent regime under certain circumstances adversely affect the
interests of the developing country like India and its poor population. For the purpose of
strengthening the Indian economy, of promoting welfare of the poor population and to
develop native technology, it is believed that certain changes have to be incorporated into
1. The provisions of the TRIPs relating to the subject matter of patents must be liberally
interpreted and thereby provide the member states certain amount of liberty in respect
of inventions for which patents may be granted. This is because to promote and
protect certain other obligations arising out of other provisions of international law
the rules of international law, it is necessary to give powers to the members of WTO
to modify the scope of patent rights on certain grounds like public emergency.
3. To meet certain emergencies like public health, spread of epidemics, patented drugs
medicines which may adversely affect the interests of the developing and least
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5. Often the TRIPs agreement was justified on the ground that it encourages economic
developed countries.
sector and also the pharmaceutical sector, are not concerned with developing food
and medicines useful to the poor population. However, they were indulging in
research in such areas like teeth whitener vitamin food and the like. Hence, it is
suggested that the countries must have liberal access to patented food and medicine.
For example, certain life saving drugs and drugs used for treatment of deceases like
7. One reason attributed to the ever increasing patent rights is the economic benefit
associated with patent monopoly which may often involve third world countries to
spend their resources in acquiring foreign patents. To curb this tendency domestic
8. It is alleged that the granting of patents to biological subject matter would increase
suggested that biological and natural substances even though modified by invented
9. In order to protect the interests of the formers, it is suggested that biological products
like seeds shall not be patented unless they are produced only through novel
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biotechnological process.
10. There is a tendency to claim patent rights to certain products by slightly modifying
their natural content like vitamin enriched rice, wheat etc., only to have market
products with high natural content shall not be patented even though the process by
11. It is observed that the ever increasing patent claims to modified natural products led
12. Patenting of modified natural products adversely affects innovations by the formers
and ordinary people and therefore the patent should not affect knowledge generated
It is believed that the ongoing process of harmonization of patent law having its
the world. Yet, it has its own limitations particularly in protecting the interests of the
developing and least developed countries. To mitigate hardships that may be caused to
such countries including India, it is asserted that the above suggestions if incorporated
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Bibliography
GOOGLE.COM
WIKIPEDIA.COM
MANUPATRA.IN
SUPREMECOURTOFINDIA.NIC.IN
DELHIHIGHCOURT.NIC.IN
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Annexure
Section 2
Definitions and interpretation
(1) In this Act, unless the context otherwise requires, -
(ac) "capable of industrial application", in relation to an invention,
means that the invention is capable of being made or used in an industry;
. (f) "exclusive licence" means a licence from a patentee which confers
on the licensee, or on the licensee and persons authorised by him, to the
exclusion of all other persons (including the patentee), any right in respect
of the patented invention, and exclusive licensee shall be construed
accordingly;
. (j) "invention" means a new product or process involving an inventive
step and capable of industrial application;
(ja) inventive step" means 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;
(k) "legal representative" means a person who in law represents the
estate of a deceased person;
(l) "new invention" means 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;
.. (t) "person interested" includes a person engaged in, or in
promoting, research in the same field as that to which the invention
relates;
(ta) "pharmaceutical substance" means any new entity involving one
or more inventive steps;
Section 3
What are not inventions
The following are not. inventions within the meaning of this Act,
(a) an invention which is frivolous or which claims anything obviously
contrary to well established natural laws;
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to his satisfaction before he proceeds with the application and refuse the
application on failure to do so.
Section 48
Rights of patentees
Subject to the other provisions contained in this Act and the conditions
specified in section 47, a patent granted under this Act shall confer upon
the patentee
(a) where the subject matter of the patent is a product, the exclusive
right to prevent third parties, who do not have his consent, from the act of
making, using, offering for sale, selling or importing for those purposes that
product in India;
(b) where the subject matter of the patent is a process, the exclusive
right to prevent third parties, who do not have his consent, from the act of
using that process, and from the act of using, offering for sale, selling or
importing for those purposes the product obtained directly by that process
in India:
Section 64
Revocation of patents
(1) Subject to the provisions contained in this Act, a patent, whether
granted before or after the commencement of this Act, may, be revoked
on a petition of any person interested or of the Central Government by the
Appellate Board or on a counter-claim in a suit for infringement of the
patent by the High Court on any of the following grounds, that is to say
(a) that the invention, so far as claimed in any claim of the complete
specification, was claimed in a valid claim of earlier priority date contained
in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled
under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights
of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly known or
publicly used in India before the priority date of the claim or to what was
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and any person authorised in writing by it, may use the invention for the purposes of
Government in accordance with the provisions of this Chapter. (2) Where an invention has,
before the priority date of the relevant claim of the complete specification, been duly
recorded in a document, or tested or tried, by or on behalf of the Government or a
Government undertaking, otherwise than in consequence of the communication of the
invention directly or indirectly by the patentee or by a person from whom he derives title, any
use of the invention by the Central Government or any person authorised in writing by it for
the purposes of Government may be made free of any royalty or other remuneration to the
patentee. (3) If and so far as the invention has not been so recorded or tried or tested as
aforesaid, any use of the invention made by the Central Government or any person authorised
by it under sub-section (1), at any time after grant of the patent or in consequence of any such
communication as aforesaid, shall be made upon terms as may be agreed upon either before
or after the use, between the Central Government or any person authorised under
107. Defences, etc., in suits for infringement.(1) In any suit for infringement of a patent
every ground on which it may be revoked under section 64 shall be available as a ground for
defence. (2) In any suit for infringement of a patent by the making, using or importation of
any machine, apparatus of other article or by the using of any process or by the importation,
use or distribution or any medicine or drug, it shall be a ground for defence that such making,
using, importation or distribution is in accordance with any one or more of the conditions
specified in section 47. 107A. Certain acts not to be considered as infringement.For the
purposes of this Act, (a) 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 law for the time being in force, in India, or in a country other
than India, that regulates the manufacture, construction, use, sale or import of any product;
(b) importation of patented products by any person from a person who is duly authorised
under the law to produce and sell or distribute the product, shall not be considered as a
infringement of patent rights. 108. Reliefs in suit for infringement.(1) The reliefs which a
court may grant in any suit for infringement include an injunction (subject to such terms, if
any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of
profits. (2) The court may also order that the goods which are found to be infringing and
materials and implements, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation. 109. Right of exclusive licensee to take
proceedings against infringement.(1) The holder of an exclusive licence shall have the like
right as the patentee to institute a suit in respect of any infringement of the patent committed
after the date of the licence, and in awarding damages or an account of profits or granting any
other relief in any such suit the court shall take into consideration any loss suffered or likely
to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by
means of the infringement so far as it constitutes an infringement of the rights of the
exclusive
115. Scientific advisers.(1) In any suit for infringement or in any proceeding before a court
under this Act, the court may at any time, and whether or not an application has been made
by any party for that purpose, appoint an independent scientific adviser, to ass ist the court or
to inquire and report upon any such question of fact or of opinion (not involving a question of
interpretation of law) as it may formulate for the purpose. (2) The remuneration of the
scientific adviser shall be fixed by the court and shall include the costs of making a report and
a proper daily fee for any day on which the scientific adviser may be required to attend before
the court, and such remuneration shall be defrayed out of moneys provided by Parliament by
law for the purpose.
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118. Contravention of secrecy provisions relating to certain inventions.If any person fails
to comply with any direction given under section 35 or makes or causes to be made an
application for the grant of a patent in contravention of section 39 he shall be punishable with
imprisonment for a' term which may extend to two years, or with fine, or with both. 119.
Falsification of entries in register, etc.If any person makes, or causes to be made, a false
entry in any register kept under this Act, or a writing falsely purporting to be a copy of an
entry in such a register, or produces or tenders, or causes to be produced or tendered, in
evidence any such writing knowing the entry or writing to be false, he sha ll be punishable
with imprisonment for a term which may extend to two years, or with fine, or with both. 120.
Unauthorised claim of patent rights.If any person falsely represents that any article sold by
him is patented in India or is the subject of an application for a patent in India, he shall be
punishable with fine which may extend to one lakh rupees . Explanation 1.For the purposes
of this section, a person shall be deemed to represent (a) that an article is patented in India
if there is stamped, engraved or impressed on, or otherwise applied to, the article the word
"patent" or "patented" or some other word expressing or implying that a patent for the article
has been obtained in India; (b) that an article is the subject of an application for a patent in
India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the
words "patent applied for", "patent pending", or some other words implying that an
application for a patent for the article has been made in India.
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invention or any application relating to the grant of patent under this Act, which it considers
prejudicial to the interest of security of India; (b) take any action including the revocation of
any patent which it considers necessary in the interest of the security of India by issue of a
notification in the Official Gazette to that effect. Explanation.For the purposes of this
section, the expression "security of India" includes any action necessary for the security of
India which (i) relates to fissionable materials or the materials from which they are
derived; or (ii) relates to the traffic in arms, ammunition and implements of war and to such
traffic in other goods and materials as is carried on directly or indirectly for the purpose of
supplying a military establishment; or (iii) is taken in time of war or other emergency in
international relations. 158. Power of High Courts to make rules.The High Court may
make rules consistent with this Act as
160. Rules to be placed before Parliament.Every rule made under this Act shall be laid, as
soon as may be after it is made, before each House of Parliament while it is in session for a
total period of thirty days which may be comprised in one session or in two or more
successive sessions, and if, before the expiry of the session immediately following the session
or the successive sessions aforesaid, both Houses agree in making any modification in the
rule or both Houses agree that the rule should not be made, the rule shall thereafter have
effect only in such modified form or be of no effect, as the case may be; so, however, that any
such modification or annulment shall be without prejudice to the validity of anything
previously done under that rule. 161. Special provisions with respect to certain applications
deemed to have been refused under Act 2 of 1911. [Omitted by the Patents (Amendment)
Act, 2002] 162. Repeal of Act 2 of 1911 in so far as it relates to patents and savings. (1)
The Indian Patents and Designs Act, 1911, in so far as it relates to patents, is hereby repealed,
that is to say, the said Act shall be amended in the manner specified in the Schedule. (2) and
(3) [Omitted by the Patents (Amendment) Act, 2002] (4) The mention of particular matters in
this section shall not prejudice the general application of the General Clauses Act, 1897 (10
of 1897), with respect to repeals. (5) Notwithstanding anything contained in this Act, any suit
for infringement of a patent or any proceeding for revocation of a patent, pending in any
court at the commencement of this Act, may be continued and disposed of, as if this Act had
not been passed.
60. Applications for restorations of lapsed patents.(1) Where a patent has ceased to have
effect by reason of failure to pay any renewal fee within the period prescribed under section
53 or within such period as may be allowed under sub-section (4) of section 142, the patentee
or his legal representative, and the patent was held by two or more persons jointly, then, with
the leave of the Controller, one or more of them without joining the others, may, within
eighteen months from the date on which the patent ceased to have effect, make an application
for the restoration of the patent. (2) [Omitted by the Patents (Amendment) Act, 2002] (3) An
application under this section shall contain a statement, verified in the prescribed manner,
fully setting out the circumstances which led to the failure to pay the prescribed fee, and the
Controller may require from the applicant such further evidence as he may think necessary.
61. Procedure for disposal of applications for restoration of lapsed patents.(1) If, after
hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the
Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and
that there has been no undue delay in the making of the application, he shall publish the
application in the prescribed manner; and within the prescribed period any person interested
may give notice to the Controller of opposition thereto on either or both of the following
grounds, that is to say, (a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application. (2) If notice of
opposition is given within the period aforesaid, the Controller shall notify the applicant, and
shall give to him and to the opponent an opportunity to be heard before he decides the case.
REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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(3) If no notice of opposition is given within the period aforesaid or if in the case of
opposition, the decision of the Controller is in favour of the applicant, the Controller shall,
upon payment of any unpaid renewal fee and such additional fee as may be
REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH