2. Patent
An intangible asset
For single invention
Monopoly for 20 years
Territorial right
Granted by the government
3. Non-patentable Inventions
Sections 3 and 4 of the Indian Patents Act provide a list of inventions which are not
considered patentable even if they qualify all criterion of patentability:
Inventions which are frivolous are not patentable
Brain Buzzer- a machine that if you bite it will send vibrations to the brain and will keep
you awake Issued in 1998- Thinky Corporation of Tokyo, Japan
4. Inventions which claim anything contrary to well established natural laws
Eg: A perpetual motion machine was claimed that gives output without any input
Inventions contrary to public order or Morality or causing serious prejudice to
human, animal, or plant life or health or to the environment
Eg: Method or Apparatus of food adulteration, Devices creating industrial or domestic
pollution
Discovery of any living thing or non-living substance or mere discovery of a
scientific principle or the formulation of an abstract theory or discovery of any
living thing or non-living substance occurring in nature is not patentable
Eg: Discovery of new species of animals, Newtons Law
Mere discovery of new form of a known substance not resulting into enhancement
of the known efficacy of that substance. Salts, esters, ethers, polymorphs,
metabolites etc of the known substance
Eg: Drug ‘A’ is known to treat disease ‘X’ in its orally consumable form. If new form
‘B’ of drug ‘A’ is developed in injectable form. Mere new form B would be
unpatentable. New use of neem.
5. 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.
However, A mixture resulting into synergistic properties of mixture of ingredients
however, may be patentable - Soap, Detergents, lubricants etc
Mere arrangement or re-arrangement or duplication of known devices each
functioning independently of each another in a known way.
Eg: A Bucket fitted with torch, An Umbrella with fan
A method of agriculture or horticulture
But Agricultural Equipments are patentable
6. Any process for treatment of human beings or any process for a similar treatment
of animals .
Eg: Naturopathy, Sound Therapy, Acupressure/ Acupuncture, method of removal
dental plaque and curing dental problems, method of doing operations in the
operation theatre
Plants and animals in whole or any part thereof other than micro-organisms
Bcoz Plants are protected under Plant Varieties Protection and Farmers Rights Act 2003
7. A mathematical or business method or a computer program per se or algorithms
Eg: Method of doing businesses such as Amway, Chain marketing etc. are not
patentable
A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions
They all are protected under Copyright’s Act
A mere scheme or rule or method of performing mental act or a method of playing
a game
Eg: Yoga techniques, Abacus, Vipashyana
A presentation of information
Since presentation of information does not have industrial application, hence it is not
patentable
A speech instruction in the form of printed text is not patentable
8. Topography of integrated circuits
Integrated circuits are protected under Semiconductor Integrated Circuit Layout-
Design Act 2000
An invention which in effect, is traditional knowledge or which is an aggregation of
known properties of traditionally known component or components
Inventions relating to Atomic energy are not patentable
9. Patent Specification: Contents
It is a techno legal document
It is an application that is to be submitted to the IPO
It discloses the invention and its enablement
It is to be drafted in the manner prescribed by IPO
10. Title:
Should be short and precise
Field of Invention:
A statement of the field of art to which the invention is related
Background of the Invention:
Earlier known process, products, documents, publications, patents, papers, accepted Ph.D. thesis etc available
at the time of filing.
Drawbacks of the earlier known process, products
Object of the Invention:
Purpose of the invention
Summary of the Invention:
Highlights of the invention, Advantage of the invention
11. Brief Description of the Drawings:
Figure names and numbers
Detail Description of Invention:
Mention all the embodiments of the invention. Details of the components, chemicals,
solvents in the statement of invention, description of mechanical part, arrangements,
mechanisms .
Source of biological material if used in the invention
Examples:
Examples should be extracts from the records, as done in the laboratory, giving best
mode of performance of the invention
12. Claims:
Claims form very important part of the specification as they form the basis to
determine the infringement of the patent, the extent of protection and the rights of
the inventors. Hence it is very important to draft the claims very carefully. It defines
the legal boundary of the invention.
Abstract:
Not more than 150 words
Should give gist of the invention and the novelty.
Reference to the drawing if any
13. Types of Patent Applications
Provisional Application
Ordinary or Complete Application
Convention Application
PCT International Application
PCT National Phase Application
Patent of Addition
Divisional Application
14. NBA Approval for Patent Filing
National Biodiversity Act is to conserve the rich biodiversity of the country. The act
was implemented in 2003 under the auspices of the National Biodiversity Authority
(NBA)
The patent applicant should disclose the source and geographical origin of the
biological material when used in an invention
NBA may, while granting approval, impose benefit sharing fee or royalty for
commercialization of any rights arising out of the biological resources obtained
from India
Mandatory for the applicant to obtain permission from NBA for a patent to be
granted
If not an objection might be raised by the examiner
15. Approval is mandatory only if the biological material is included under the definition of
“Biological Resources” under the BDA act.
"biological resources" means plants, animals and micro-organisms or parts thereof,
their genetic material and by-products (excluding value added products) with actual or
potential use or value, but does not include human genetic material.
Exceptions to biological resources:
Value Added products: Value added products are defined as “value added products means
products which may contain portions or extract of plants and animals in unrecognizable
and physically inseparable form.”. For example, products such as wheat flour , tobacco dust,
allicin-enriched garlic extract, were considered as value added product by the Indian Patent
Office
Bio-waste: NBA approval is also not required for, inventions that use/ disclose Bio-waste.
Biowaste is generated after the economic use of the biological resource/material is
exhausted and is therefore not covered under the definition of “Biological resources”.
Synthetically prepared biological material: Inventions that use synthetically prepared
biological material, can also be filed without seeking prior approval from NBA. Such
material for example includes materials such as enzymes, pigments, gums, sucrose etc
16. Biological materials imported to India do not require NBA permission
Appropriate application form (Form 3, Rule 18) for such permission is available on
the website of the National Biodiversity Authority.
The Patents Act further complements the Biodiversity Act in that failing to
disclosure or false disclosure of the source and geographical origin of biological
resource may amount to a ground for opposition or even revocation of the patent
grant.
17. Procedure for filing a patent in India
https://www.trademarkiso.com/patents/registration-process/
18. Provisional or Complete specification Filing
If provisional is filed then complete specification is to be filed within 12 months
Publication occurs within 18 months from the date of filing or priority as the case may
be
One can apply for early publication on payment of additional fees
After publication, examination of the patent application occurs for which request for
examination is mandatory
FER is generated by the examiner to which response is to be filed within 6 months from
the date of FER
Examiner may either accept or arrange hearing for the patent application filed
After hearing controller may either grant or refuse the patent
Pre-grant opposition can be filed by any person in between publication and grant of
patent.
Post-grant opposition can filed by the interested person within one year from the date
of grant of the patent
19. International Treaties: IPR
Paris Convention
Adopted in 1883 and is applicable for to industrial property in the widest sense, including
patents, trademarks, industrial designs, utility models, service marks, trade names,
geographical indications and the repression of unfair competition.
Objective of the Convention:
National Treatment
As regards the protection of industrial property, each Contracting State must grant
the same protection to nationals of other Contracting States that it grants to its own
national
Right of Priority
This right means that, on the basis of a regular first application filed in one of the
Contracting States, the applicant may, within a certain period of time (12 months for
patents and utility models; 6 months for industrial designs and marks), apply for protection
in any of the other Contracting States. These subsequent applications will be regarded as if
they had been filed on the same day as the first application
20. International Treaties: IPR
The Convention lays down a few common rules that all Contracting States must follow
Patents granted in different Contracting States for the same invention are independent of each other.
The inventor has the right to be named as such in the patent
TRIPS:
Trade-Related Aspects of Intellectual Property Rights: International agreement between different
countries
TRIPS came into force in 1995, as part of the agreement that established the World Trade
Organization (WTO)
As IP gained importance, tensions were raised between the countries for protection of IP and hence
TRIPS came into existence
Decides the framework of IP protection
It frames the IP system in terms of innovation, technology transfer and public welfare
what the minimum standards of protection are for intellectual property rights that members should
provide
which procedures members should provide for the enforcement of those rights in their own
territories
21. International Treaties: IPR
WIPO:
World Intellectual Property Organization, headquarters in Geneva, Switzerland
To promote the protection of intellectual property throughout the world through
cooperation among States and, where appropriate, in collaboration with any other
international organization
To ensure administrative cooperation among the Unions
PCT:
Patent Cooperation Treaty: The Treaty regulates in detail the formal requirements
with which international applications must comply
It makes possible to seek patent protection for an invention simultaneously in each
of a large number of countries by filing an "international" patent application.
23. Patent Commercialization
1. Licensing
– Exclusive
– Non exclusive
– Sole
– Cross licencing
2. Joint venture
3. Assignment/Sale of Rights
4. Starting a business with the patented product
24. Compulsory Licensing
A government allows someone else to produce a patented product or process
without the consent of the patent owner or plans to use the patent-protected
invention itself
Application after expiry of three years from the date of grant
Circumstances under which it is granted:
-Reasonable requirements of public not met
-Patented invention not available to public at reasonable cost
-Patented invention not worked in India
Application to be made by any person including licensee
To be filed with the controller
25. Bayer v/s Natco
First CL granted to Natco in India for the drug Nexavar for the treatment of Kidney
cancer in 2012
Bayer had been granted patent in India in 2008
In 2011 Natco approached IPO for CL of drug Nexavar on the basis of reasonable
requirement not being met and not available at affordable prices
Cost of Bayers drug was Rs 2.8 lacs for one month course
Cost of Natco’s generic version drug was 8800 for one month course
CL was granted to Natco pharma with 6-7 % royalty on the net sales to the bayer
26. Patent Infringement
Infringement of a patent consists of the unauthorized making, using, offering for
sale or selling of any patented invention
Violation of monopoly rights constitutes an infringement
Claim to claim analysis is done for essential elements
Legal status to be checked
Eg: A+B= C (one process)
X+Y=C (another process)
Since the components used in both the process to obtain C are different, there is no
infringement
Eg: A formulation contains A+B+C for treating fever is patented by company X
Other Formulation contains A+B+C+D for treating fever is patented by company Y.
Y is infringing X’s patent
27. Types of Infringement:
1) Direct infringement
when the infringing device or process may be similar or equivalent to the claimed
invention (performs substantially the same function, in substantially the same way and
to achieve substantially the same result.
2)Indirect infringement: a) Induced infringement b) Contributory infringement
Person assisting or helping other person to use patented product/process
Contributory infringement is triggered when a seller provides a part or component
that, while not itself infringing any patent, has a particular use as part of some other
machine or composition that is covered by a patent.
3) Wilful infringement:
Person is aware about the existing patent but intentionally uses the same
product/process.
Once proved, have to pay substantial penalties
28. Patent Infringement: Exceptions
Government Use
Research Purpose
Supply of patented drugs to government run health institutions
Jurisdiction
District or High court
Who can apply for infringement?
Patentee
Co-owner
Assignee
Exclusive licensee
Remedies:
Temporary Injunction
Permanent Injunction
Damages
29. Novartis vs. Cipla
Novartis had 5 patent for the drug Onbrez ( used to treat chronic obstructive
pulmonary disease)
In 2014, the Defendant launched a generic version of Onbrez and in the process
petitioned to have the Plaintiff’s patents revoked. It contended that the disease has
reached an ‘epidemic’ stage and the monopoly of the Plaintiff was limiting the
extent of the drug.
In light of that requested the Central Government to revoke the patent under
Section 92 (3) (compulsory license under special circumstances) and Section 66
(patents which are prejudicial to public) of the Patents Act.
Defendant contended that the Plaintiff was not manufacturing the drug locally and
imported only limited quantities through a licensee.
Plaintiff then filed a case before the Delhi HC claiming patent infringement and
damages.
30. Delhi High court barred the Defendant from making or selling generic copy of the
Plaintiffs drug by granting temporary injunction to the Plaintiff.
Defendant had previously also stated that there was a shortage of the drug and
inadequacy thereof. However, the HC observed that the Defendant failed to provide
any proof or figures for such claims.
In 2017, Cipla filed an appeal against this order. However, the appeal was dismissed
on similar grounds. The 2017 Appeal further divided into the implications of a drug
being imported and whether the extent of imports was sufficient to meet the
demands in India.
Novartis also sort damages from Cipla
