PATENT
A patent is a legal monopoly granted for a limited time to the owner of an invention. It empowers the owner of an invention to prevent others from manufacturing, using, importing or selling the patented invention. Patent Act, 1970 as amended in the years 1998 and 1999 along with Patent Rules, 1972 govern patents in India.
What is Patent?Patent is a monopoly granted by statute of a country for a limited term over a new and useful invention that involves inventive step. Invention may either for a product or process. The rights enjoyed by owner of the patent are proprietary in nature and the patentee or his agent or licensees has the exclusive right to use and have the benefits of patented invention and prevent unauthorized use, during the period of patent protection. Period during which the owner enjoys the benefits is called term of the patent. Registration is a prerequisite for patent protection and the protection granted is territorial in nature i.e., patent granted in a country will give the owner of the patent right only within that country.
Indian Law on Patents
The law governing Patents in India is Patent Act, 1970 as amended in the years 1995 and 1999, along with the patent rules, 1972.
Patent Act do not define the term 'Patent' [s.2 (m)], it simply states that ‘Patent’ means a patent granted under this Act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapter XVI, XVII & XVIII, and a Patent granted under the Indian Patents and design Act, 1911 (2 of 1911); the Patents (Second Amendment) Bill, 1999 states that “Patent means a patent granted under this Act”.
Patent Act 1970 envisages that 'any invention that has a commercial application and which are not exempted under the Act are eligible for grant of patent. S.2 (j) the Act defines ‘invention’ as:
any new and useful –
Ø art, process, method or manner of manufacture;
Ø machine apparatus or other Articles;
Ø substance produced by manufacture,
and includes any new and useful improvement of any of them, and an alleged invention;
The Second Amendment Bill, 1999 has introduced a new definition of invention as against 1970, Act, i.e., 2(j) in 1999 Bill:
“invention means a new product or process involving an invention step and capable of industrial application”.
Section 3 speaks about invention not patentable. Inventions which are 'frivolous, contrary to Natural Law, Contrary to Law or morality or injurious to public health or formulation of an abstract theory, discovery of any new property or new use for a known substance or a substance obtained out of a mere admixture or it is a mere arrangement or re-arrangement or duplication or horticulture, or any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings', are not patentable.
Where as it is important to note that the Amendment Bill 1999, has proposed major changes to Section 3. It has made changes to clauses (b) of the Act, i.e.,
'Clause (b) of 1970 Act is prevention of an invention the primary or intended use of which would be contrary to law or morality or injurious to public health'.
Where as in the bill, it has inserted the later part of sentence:
Ø An invention the primary or intended use or commercial exploitation of which could be contrary to law or morality or Which causes serious prejudice to human, animal or plant life or health or to the environment (cl. 3 (a) of the bill)
In the Act section 3 (c) is about abstract theory, but the bill proposes to add after words 'an abstract theory', the words or discovery of any living things or non-living substance occurring in nature. (Cl.3 (b) of the bill).
Similarly, 3 (c) of the bill proposes to omit 3 (g) of the Act, which is about method or process of testing applicable during the process of manufacturing to render more efficiency to machineries.
Sub-clauses (j) to (o), (k) of the bill attempts to make a mathematically or business method or a computer program or algorithms non-patentable.
(l) is all clear about not patenting literary, dramatic, musical or artistic works, including cinematographic works and television productions. cl.3(i) proposes to the insert after the word ‘prophylactic’, the words ‘diagnostic, therapeutic’. And the words ‘or plants’ in 3 (i) of the Act shall be omitted.
Bill has proposed to add further few Clauses after 3 (i) i.e., 3 (j), 3 (k), 3(l), 3(m), 3(n), 3(o).
3 (j) would be plants and animals other than micro-organisms in whole or any part there of including seeds, varieties and species and essentially technological processes for production or prolongation of plants and animals. The invention relating to above would not be patentable if the bill is passed.
(m) of the bill excludes “a mere scheme or rule or method of performing mental act or method of playing game”.
‘a presentation of information’ is intended to be kept out of patent protection.[cl.(o)]
(o) of the bill excludes topography of Integrated Circuits from being patented since there is separate legislation for Semi Conductor and Integrated Circuits.
Term of patent
Section 53 speaks about the Term of Patents. Normally a patent remains in force for a period of 14 years from the date of application subject to the payment of the stipulated renewal fees. But the term differs, when it is related to food, medicine or drug i.e., it is 5 years from the date of selling of patent or it is 7 years from the date of patent whichever period is shorter.
Rights of Patentee
The Act confers on the patentee the exclusive right himself, his agents for licensees to make, use, exercise, sell or distribute the invention India. If the patent is for an article or substance, the exclusive right by himself, his agent or licensees to make, use, exercise, sell or distribute such article or substance in India. If the patent is for a method or process of manufacturing an article or substance, the exclusive right by himself, his agents or licensees to use or exercise the method or process in India.
Enforcing Patent Right
The Patent Act confers on the patentee the exclusive right himself, his agents for licensees, to make, use, exercise, sell or distribute the invention. If the patent is for an article or substance, the exclusive right by himself, his agent or licensees to make, use, exercise, sell or distribute such article or substance in India. If the patent is for a method or process of manufacturing an article or substance, the exclusive right by himself, his agents or licensees to use or exercise the method or process in India.
A patentee has a right to sue when a third party does any act that is within the rights conferred on the patentee. Infringement proceedings can be initiated in District Court within whose jurisdiction the actual infringement was committed, or where the defendant normally resides or carries on his business. Section 104 clearly states that no suit shall lie or shall be instituted in any court inferior to district court.
Relieves which a court may grant in any suit for infringement includes an injunction and at the option of the plaintiff either damages or an account of profits.
In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds of believing that the patent existed.
Courts may refuse to grant any damages or an account of profits in respect of any infringement committed after a failure to pay any renewal fee within the prescribed period and before any extension of that period.
Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed under this act after the publication of the specification, no damages or account of profits shall be granted in any proceeding in respect of the use of the invention before the date of the decision allowing the amendment, unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge.
The 1999 Amendment Bill proposes to insert a sub-section 104A (i), which lays that in any suit for infringement of a patent, where the subject matter of the patent is a process for obtaining a new product, the burden of proving that a new and identical product is not made by that process shall be on the alleged infringer if a substantial likelihood exists that the identical product is made by the process, and the proprietor, of the patent or a person deriving title or interest in the patent from him has been unable through reasonable efforts to determine the process actually used: Provided that the proprietor of the patent or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
However, subsection (2) of 104 A of the bill says that in carrying out with 104 A (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
Rights of exclusive licensee to take proceedings against infringement
The rights of exclusive licensee are governed under Section 109 of the Act. The holder of an exclusive license can enjoy the like right or a right alike as that of patentee institute a suit in respect of any infringement of the Patent, which is committed after the date of the license. However, before he institute suit himself he is mandated under the Act to require the patentee to initiate the proceeding. Licensee can sue if the patentee on does not institute proceeding on such calling up.
The court takes into consideration any loss suffered or likely to be suffered by the exclusive licensee before awarding damages or an account of profits or granting any other relief in any such suit. The court even considers the profits earned by means of infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.
Section 109(2) of the Act envisages that in case of a suit for infringement of a Patent by the holder of an exclusive license, the patentee shall be added as ad defendant, unless he has joined as a plaintiff in the suit and such a patentee how is so added as a defendant will not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Defenses available in suits for infringement (Section 107)
In case of a suit for infringement of a Patent all grounds of revocation under section 64 shall be available as a grounds for defense. Conditions specified under Section 47(Grant of patents to be subject to certain conditions) should be implied with in my suit for infringement of a patent by making, using or any process or by the importation, use or distribution of any medicine or drugs.
Amendment Bill of 1999 has proposed to insert 107A to the Act, according to this, any act of making or using a patented invention within three years before the expiry of the term of the patent by any person for the purpose of development and submission of information to any regulatory authority responsible for grant of marketing approval for the product of invention does not amount to an infringement of Patent rights.
Similarly, the bill proposes to insert 107A(b) that also does not consider importation (a right proposed to be granted to the patentee under 1999 second amendment Bill) of patented products by any person from a person who is duly authorized by the Patentee to sell or distribute the product, as an infringement.
The defendant can challenge the validity of the patent.
District Courts are not empowered to pronounce the validity of the patent. When it comes to the question of validity, the District Courts transfer the suit to the High Court.
Declaration of Non-infringement
Section 105 of the Act, envisage that ‘a person may institute a suit for a declaration that the use by him of any process, or that making, use or sale of any article by him does not, or would not, constitute on infringement of a claim of a patent against the patentee’ if it is shown that –
(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written acknowledgement to the effect of the declaration claimed to the effect of the declaration claimed and has furnished him with full particular in writing of the process or article in question; and
(b) that the patentee or licensee has refused or neglected the give such an acknowledgement.
Section 105 (1) (a) clearly states that a person can institute a suit or a declaration that the use by him or any process does not constitute an infringement if it is shown by him that he had applied in writing to the patentee for a written acknowledgement to and has furnished him with full particulars in writing of the process in question and that the patentee or licensee has refused/neglected to give such an acknowledgement.
This can be brought at any time after the date of advertisement of acceptance of the complete specification of a patent, and references in this section to the patentee shall be construed accordingly.
The plaintiff shall pay the costs of all parties in a declaratory suit. The court may order otherwise for special reasons.
In a suit for declaration, the validity of a claim of the specification of a patent shall not be called in question under this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid or invalid.
Relief in Cases of Groundless Threat of Infringement Proceedings.
Section 106 of the Act speaks about power of the court to grant relief in cases of ground less threat of infringement proceedings. The threatening may be in the form of circulars or advertisements or by communications, oral or in writing. Then any person aggrieved thereby may bring a suit against the person threatening him and he may pray for the following relieves:
(1) a declaration to the effect that the treats are unjustifiable, i.e., declaring the threats to be unjustifiable.
(2) An injunction against the continuance of the threats i.e., getting an injunction order against the continuance of threat, thereby stopping the continuance of such a threat
(3) Damages can be claimed if he has sustained any.
Patent Useful Links
page is part of the Patents Practice Group of Law Journal Extra. It provides a great deal of sources to the most recent developments on Patent issues relating to biotechnology. New links are added regularly. The links include articles from journals and newspapers and more importantly to the entire texts of judgements. The page also contains some permanent links to sites such as the USPTO and others related to the Human Genome Project and Genomic Research. An ideal site to know the latest developments in Biotechnology and IP Law.
is the IBM Intellectual Property Network. This site contains a database of all patent publications made by the USPTO, the WIPO and the EPO since 1971. Several of these documents are viewable online while provision is made for ordering others. This site provides access to several important publications, which might otherwise take months to acquire. The database is also searchable either based on a keyword or on the patent number.
part of Law Journal Extra's Patent Practice group, this page contains a list of all the important Patent legislation’s in the USA and internationally. They include the NAFTA treaties, the US Code, the GATT Agreement, the PCT and the like.
page is Cornell University's Patent information site. It provides a comprehensive introduction to patent law in the USA along with links to the relevant constitutional and statutory provisions. The page also has links to the most recent Supreme Court and Federal Court decisions. It also has links to the important international treaties and documents.
site, hosted by the law firm of Oppedahl & Larson, is a brief overview to the pros and cons of filing for different forms of intellectual property rights in the USA, the various cost involved, the procedure to be followed and also whom to contact. While the site does not purport to offer any legal advice, it provides a simple overview.
Juris Diction [ - Information on biotech law, information technology law, intellectual property and more.
COPYRIGHT
Copyright is a bundle of exclusive rights granted by statute to the author of the works to exploit or authorise the exploitation of the copyright work, based on international norms like Berne Convention, Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement and WIPO Copyright Treaty (WCT). The copyright works in which rights subsist are ‘original’ literary, dramatic, musical and artistic works, and cinematograph films and sound recording. This page gives information as to Indian Law on Copyright and has full texts of Legislations, Cases and International Conventions.
What is Copyright?
Copyright is one of the chief forms of intellectual property that is afforded protection by the law, the other three being patents, trademarks, and industrial designs. In its most simplistic formulation, copyright implies protection against copying of one’s work by another. Its chief object is to encourage people to create original works in different fields like literature, art and music by rewarding them with the exclusive right for a limited period of exploit the work for monetary gain. Theoretically, it acts as an incentive for people to come out with newer and newer copyrightable works, which add to the knowledge stock of mankind.
Copyright is a kind of intellectual property the importance of which has been increasing tremendously due to the enormous changes in communication, entertainment and computer industries. The law in this area of intellectual property deals with protection of rights on certain type of works like literary, dramatics, musical, artistic, cinematograph film and sound recording, which result from the intellectual labour of human beings. Copyright presents people with an opportunity to exploit economically their creations either exploiting it themselves on by licensing their exclusive rights to publishers, producers etc., for consideration.
Justification:
The whole basis of copyright lies in the fact that none should be allowed to appropriate to himself the fruits of labour of another. In this way, almost all theorists justify the existence of copyright on the ‘Labour Theory of Property’ propounded by Locke, according to which a person can own any ‘property’ if he has added value to it by his own labour. The things for which copyright subsists emerge from ideas, concepts, thoughts etc. that are common to all, but these things have been put in a fixed form using one’s mental faculty. The only difference is that while Locke justified property on the basis of physical labour, here its mental labour that is at work.