Patents – Rights and Liabilities

Patents could be before process or product. If a patent is taken out for a process in arriving at a known product, any other person may take out a patent for another process for arriving at the same known product. But when a patent is taken out for a new product which was not known before and the patent describes one specific process in making the new product, then the patent is entitled to protection against any other process in making the same product.Any person who even adopts a different process in arriving at the same product infringes the patent (section 48 of the Patents Act).

In earlier times, patents were granted for fourteen years presumable due to the reason that it took about seven years to train the trainees and fourteen years to train two generations of trainees. In England it was increased to sixteen years in the early part of the twentieth century. We followed suit and sixteen years period was provided in the previous Act dealing with Patents. In the Patents Act the period was 14 years except for some categories where the norm, was five or seven years (Section 53 of the Patents Act) TRIPS mandates protection of patents for twenty years. We have also provided the same by the 2002 amendment.

Patents can be inherited by the heirs of a patentee. A Patentee may sell (assign) or mortgage a patent. They have the right to exclude others from making, using or selling the invention and may authorize others to do any of these things by a license and receive royalties or other compensation for the privilege (Chapter xiii of the Patents Act: Register of Patents)

A person making unauthorized use of a patented invention, may be sued by the patentee for damages and can be injuncted (can obtain an order of injunction)to prevent further infringement. However there are no provision for Criminal Prosecution for the infringer.(Chapter XII of the Patents Act: Suits Concerning Infringement of Patents) TRIPS mandates members to provide criminal procedures and penalties in cases of willful trade mark counterfeiting or copyright piracy on a commercial scale, but not for the violation of patents(Article 61 of the TRIPS).

A Patentee may not market an invention or even license it to someone who wants to market it. Such a situation might keep a useful invention from being of service to the public. Thus in many countries patent law includes a clause that stipulates compulsory working of an invention. This means that the patentee must manufacture, utilize the invention or license it to someone.(Chapter XVI of the Patents Act Working of Patents, Compulsory Licenses and Revocation )

TRIPS have provided a minimum protection that should be granted in the area of IPRs. The WIPO is sponsoring the Substantive Patents Law Treaty (SPLT) to further harmonize the substantive part of patent law. It is still in its formative stage. This may change the international opinion about patents.

INVENTIONS NOT PATENTABLE:
What are not inventions?
The following are not inventions within the meaning of Patents Act 1970

  • An invention which is frivolous or which claims anything obliviously contrary to well established natural laws.
  • An invention, the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment.
  • The mere discovery of a scientific principle or the formulation of (or discovery of any living thing or non-living substance occurring in nature)
  • The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
  • Explanation: For the purposes of this clause, salts, ester, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

  • 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.
  • Mere arrangement or re-arrangement or duplication of known devices each functioning independently or one another in a known way.
  • A method of agriculture or horticulture.
  • Any process for the medicinal, surgical curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
  • Plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
  • A mathematical or business method or a computer programme per se or algorithms.
  • A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
  • A mere scheme or rule or method or performing mental act or methods of playing game.
  • A presentation of information
  • Topography of integrated circuits.
  • An invention which in effect is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
  • Inventions relating to atomic energy not patentable.
  • No patent shall be granted in respect of an invention relating to atomic energy failing within sub section (1) of Section 20 of the Atomic Energy Act 1962(33 of 1962)

PERSONS ENTITLED TO APPLY FOR PATENTS
Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons (Sec.6(1):

  • By any person claiming to be the true and first inventor of the invention.
  • By any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application
  • By the legal representative of any deceased person who immediately before his death was entitled to make such an application.
  • An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

FORM OF APPLICATION[Sec.7(1)]

Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.

[(1-A) Every international application under the Patent Co operation Treaty for a patent, as may be filed designating India, shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India]

[1-B The filing date of an application referred to in sub-section (1-A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.]

Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application or within such period as may be prescribed after the filing of the application , proof of the right to make the application.

Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.

Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification]

INFORMATION AND UNDERTAKING REGARDING FOREIGN APPLICATIONS:[Sec.8(1)]

Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him. He shall file along with his application(or subsequently within the prescribed period as the Controller may allow:

(a) A statement setting out detailed particulars of such application, and

(b) An undertaking that upto the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any filed in any country outside India substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

[Sec.8(2]At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

PROVISIONAL AND COMPLETE SPECIFICATIONS[Sec.9(1)]

Where an application for a Patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.

(2)Where two or more application in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.

[Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification].

(3)Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated for the purposes of this Act, as a provisional specification and proceed with the application accordingly.

(4)Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section(3) as a provisional specification, the Controller may, if the applicant so requests at any time (grant of patent) cancel the provisional specification and postdate the application to the date of failing of the complete specification.

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