An overview of the first two major amendments to the Indian Patents Act

1. Amendments to the Indian
Patents Act of 1970
M.Sc. II Biotechnology
Intellectual Property Rights
Dariyus Z Kabraji

2. Introduction
• Students now study a roughly similar syllabus of
science and mathematics as their age groups
worldwide.
• Thus, the same ideas can be found or undertaken in
different parts of the world at the same time.
• Breaks in communication lead to sticky legal situations
during unveiling of an invention
• Case in point: In November 1894, J. C. Bose invented
radio transmission, but Marconi was credited with the
invention since he filed for a patent in May 1897 and
Bose didn’t bother filing at all
• Even though he did not care for patents, Bose did
receive U. S. Patent 755-840 ‘Detector for electrical
disturbances’ in 1904

3. Introduction
• Thus, do we credit both, clearly
acknowledging that neither knew about the
other’s experiment?
• Or do we credit Clark Maxwell, who predicted
the existence of electromagnetic radio waves
in 1887 but died before pursuing his idea?
• Or do we credit Nikola Tesla, who was the first
to ever demonstrate a public radio broadcast a
year before Bose demonstrated his work?

4. Introduction
• The second biggest concern with unveiling inventions is claiming responsibility
for it
• By retaining the controlling interest in a product that you have created, you
have an obligation to be responsible for how it is used, who has access to it and
what liberties they may take with it
• Patents were created as a solution to resolve these issues by giving an idea or
innovation the characteristics of personal property. This made sure that they
could be owned, used, sold or even liquidated under specific circumstances
• Case in point: Nikola Tesla used to work for Thomas Edison but they went their
separate ways after certain arguments regarding the ‘War of Currents’ in the
1880s. Tesla developed alternating currents (AC) whereas Edison regarded
them as impractical and stuck to his development of direct current (DC).
• Even though Nikola Tesla’s currents are now used in global power systems,
Edison is regarded as the greater innovator worldwide since he owned 1093
patents while Tesla owned less than 300. The fact, however, remains that
Edison purchased some of his patents

5. Patents
• A patent is a state grant in favour of the inventor
conferring on him a right to use the invention to
the exclusion of all others
• The fundamental Principle in awarding a patent is
that the right must be granted for an invention,
which has novelty and utility
• The extent of legal protection accorded to a patent
is based upon the way the patent claim is drafted
in the patent application
• After obtaining the grant, the inventor has the
right to exploit the patent within the confines of
Section 47

6. Patents
Features of Patent Law include:
• Both product and process patent provided
• Examination on request
• A twenty year term
• Both pre-grant and post-grant opposition
• Fast track mechanism for disposal of appeals
• Provision for protection of bio-diversity and
traditional knowledge
• Publication of applications after 18 months with
facility for early publication

7. The Indian Patent Act of 1970
Put forth on 19th September, 1970 as an act to
amend and consolidate the law relating to patents
Installed several safeguards for patent
application
Consisted of 24 chapters
Began directly from inventions not patentable to
the conditions of filing patents abroad

8. The Indian Patent Act of 1970
• Safeguards installed include
• Compulsory license to ensure availability of drugs at
reasonable prices
• Provision to deal with public health emergency
• Revocation of patent in public interest and also on
security considerations
• Non-patentable Inventions :
• There are some products and processes, which are not
patentable in India. They are classified into two
categories in the patent act:
• Those, which are not inventions like discovery of a
substance freely occurring in nature
• Invention relating to atomic Energy

9. Patent Conditions
As per Section 47:
• Any machine, apparatus or other article in respect of which the patent is
granted or any article made by using a process in respect of which the
patent is granted, may be imported or made by or on behalf of the
Government for the purpose merely of its own use
• Any machine, apparatus or other article in respect of which the patent is
granted or any article made by the use of the process in respect of which
the patent is granted, may be made or used, and any process in respect of
which the patent is granted may be used, by any person, for the purpose
merely of experiment or research including the imparting of instructions to
pupils
• In the case of a patent in respect of any medicine or drug, the medicine or
drug may be imported by the Government for the purpose merely of its
own use or for distribution in any dispensary, hospital or other medical
institution maintained by or on behalf of the Government or any other
dispensary, hospital or other medical institution which the Central
Government may, having regard to the public service that such dispensary,
hospital or medical institution renders, specify in this behalf by notification
in the Official Gazette

10. Amendments in 1999
• Put forth on 26th March 1999
• Amended sections 5, 40, 64, 116
• Omitted section 39
• Inserted Section 24(A-F)

11. Amendments in 1999
• Mailbox: Provided the provisions for receiving the
applications for the product patent in the field of drugs,
medicines and agro-chemicals
• EMRs (Exclusive Marketing Rights): Grant EMRs for
distribution and sale of pharmaceutical products upon
fulfillment of certain preset conditions
• Simultaneous Filing: An applicant in India can file an
application abroad while simultaneously filing the application
in India
• Protection of National Security: The Central Government shall
not disclose any information relating to a patentable invention
or any application relating to the grant of the patent under this
act which it considers prejudicial to the security of India

12. Amendments in 2002
• Put forth on 25th June 2002
• Amends sections 2-162
• Omitted sections 112 and 161
• Inserted section 104A, 107A and new section
39

13. Section 39
• No person resident in India shall, except under the authority of a written permit
sought in the manner prescribed and granted by or on behalf of the Controller,
make or cause to be made any application outside India for the grant of a patent
for an invention unless—
• (a) an application for a patent for the same invention has been made in India,
not less than six weeks before the application outside India; and
• (b) either no direction has been given under sub-section (1) of section 35 in
relation to the application in India, or all such directions have been revoked.
• The Controller shall dispose of every such application within such period as
may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic energy,
the Controller shall not grant permit without the prior consent of the Central
Government.
• This section shall not apply in relation to an invention for which an application
for protection has first been filed in a country outside India by a person resident
outside India.

14. Amendments in 2002
• Term Extension: Patents now last for 20 years
• Appellate Board: Formation of a new board for appeals
• Section 3 Amendment: Larger amount of non-patentable
items added to the list
• Deposition of Biological Material: Material and relevant
data must be deposited when filing the patent application
• Time for Putting Application in Proper Order for
Acceptance: 12 months instead of 15
• Postpone acceptance of Complete Specification: 12 months
instead of 18 months from the date of filing the application.
• Request for examination: No patent application will be
required to be examined unless the applicant or another
interested party makes a request in the prescribed manner
within 48 months of filing

15. Amendments in 2002
• Additional grounds for opposition to the patent grant: If the
application lacks full disclosure or if there is anticipation regarding
the knowledge, oral/otherwise available within a local or indigenous
community
• The patent date shall be regarded as the day the application was filed
and not the day the complete specification was filed
• Revocation of a patent if it was filed controversial to section 39 or
doesn’t match the criteria waiving opposition to its grant (assuming
that this is discovered after granting the patent)
• Digitalization and Evidence escrow including the true copy of the
application
• Patents granted do not impede public health protection or disallow
government rights to protect it
• Substituted provisions pertain to control, related patents, terms,
conditions and licensing by the central government
• Increased penalties with respect to infringement and other violations

16. References
• Nikola Tesla versus Thomas Edison, the ‘War
of Currents’; Tia Ghose; Live Science Beta
journal; July 2014
• Indian Patent Act 1970, First Edition; Indian
Parliament Press Release
• Indian Patent (Amendments) Act of 1999;
Gazette of India Press Release
• Indian Patent (Amendments) Act of 2002 ;
Gazette of India Press Release