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Patent[1]

Table of Contents

QUESTION BANK

What are the rights of patentee under Indian Patent Act? Explain the provisions relating to infringement of patent?
Explain procedure to obtain patent.
What is meant by infringement of patent?
Discuss various defenses available against infringement of patent.
Discuss rights and obligations of patentee.
Write note on history and development of patent law in India?
Explain in detail Biotechnological patents, licenses of patents.
Explain the concept of patent. Discuss the procedure for obtaining patent.

Short Notes

Patentable invention.
Medical patent.

I. Introduction-

Doing something new is the basic instinct of a human being. Newness is a sign of growth. Without newness, man’s life would become monotonous. It helps improve human life and raises the standard of living. Therefore, it has been practised in all societies and at all ages to encourage people to do new things or to innovate. However, innovation requires great effort and the consumption of time and money. Innovation is not possible without the pain of great efforts. Therefore, it becomes important that the person who innovates should enjoy the fruits of his innovation.

Conversely, we may say that innovation should not be allowed to be infringed upon by somebody else for his gain. No innovator would like his innovation to be used by some other person commercially without his permission. Therefore, the concept of protection of innovators’ rights through patents has emerged.

A patent is a right granted to a person who has invented a new and useful article, an improvement of an existing article, or a new process of making an article to protect against infringement of his right. By such rights protection, he can reap the economic benefits of his innovation. Great efforts are made at international and national levels to protect innovations through patents.

II. Meaning and Concept of ‘patent’-

A patent is a monopoly right granted to a person who has invented (i) a new and useful article[2] , (ii) an improvement of an existing article[3] , or (iii) a new process of making an article[4]. Thus, we may say that the Patent is a form of intellectual property. It consists of the right to manufacture innovative articles exclusively, use, sell, or offer them for sale.

2 (m) of the Patents (Amendment) Act, 2005 defines “Patent” as “Patent means a patent for any invention granted under this Act”. Thus, we may say that the definition given under the Act is not exhaustive.

The person to whom the patent is granted is called a ‘patentee’. Patent Act conveys patentee with substantive rights and secures these valuable monitory rights. The patentee can enforce these rights to his advantage, whether by using them himself or transferring privileges to others.

III. History and development of Patent law-

We will discuss the development of patent law as follows-

1. International efforts to protect Patents-

The first step in the protection of patents was taken at the international level with the Paris Convention for the Protection of Industrial Property in 1883. Thereafter, the Patent Cooperation Treaty (PCT) was incorporated in 1970, and the Rio Convention on Biological Diversity came into existence in 1992. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) in 1994 was very important for the protection of patents.

2. Development of patent law in India-

In the later part of the 19^th century, new inventions in the field of art, process, method or manufacturing techniques, etc., increased fanfold, and the inventors became very concerned about their rights, i.e. their invention should not be copied or infringed by others. Therefore, to protect the interests of inventors, the British government enacted and designed patent law.

In India, the Act VI of 1856, based on the British Patent Law of 1852, was enacted to protect the interests of investors. The Act was amended in 1859, 1872 and in 1883. The existing Acts and provisions for the protection of patents were consolidated in 1888 with all its modifications as the Inventions and Designs Act.

In 1911, the Indian Patents and Designs Act was enacted. However, due to the advent of the Industrial Revolution, changes in economic and political scenarios worldwide and the Independence of India led to the passing of Patents Act, 1970, which presently exists in India. The Act was amended from time to time in 1999, 2002, and 2005. In this topic, we will discuss the provision of the Patents Act 1970 as amended from time to time.

IV. Patentable[5] and Non-Patentable[6] Inventions-

A. Patentable Inventions-

Every invention is not worthy of a grant of a patent. To get a patent, an invention must be new, non-obvious and useful. Moreover, even if these conditions are fulfilled, the patent may be denied if the Patent Act prohibits the invention. 1970.

2 (j) of the Patent Act, 1970 defines “invention[7]” as “a new product or process involving an inventive step and capable of industrial application”. S. 2 (ja) defines “inventive step[8]” as ‘a feature of the invention that involves technical advance as compared to the existing knowledge or having economic significance or both, and that makes the invention non-obvious to a person skilled in the art”.

Thus, from the above definitions, it is clear that the product or process must be innovative, non-obvious and useful to get a patent. We will discuss these requirements as follows-

1. Novelty[9]–

Novelty is an important requisite for granting a patent. To grant a patent, the product or process must be newly invented. “New Invention” is defined under S. 2 (1) (l)[10] as “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 the public domain or that it does not form part of the state of the art”. Thus, in other words, the element of newness is very important. Suppose the existing knowledge and similar inventions are already known or used in a particular field. In that case, no patent can be granted on the grounds of the absence of newness or novelty. The U.S. Patent Office has revoked a patent issued for the use of turmeric after objection by India[11], mentioning that the medicinal properties have been known to India for ages and there is no newness in it. The same is the case with patents in Neem and Basmati Rice[12].

In Mariappan v. A. R. Safiullah[13]

Facts- The patent was granted with respect to a device (which rests on the back and is tied to the forehead with a belt) used for manually hauling agricultural produce. Patent to this device was challenged and applied to be cancelled on the ground that it is similar to a traditional handicraft called a “kilta” (an all-purpose round bamboo basket used to carry any load, supported by a rope and tied to the forehead. It is specifically used to collect tea in tea farms of Assam and Himachal Pradesh[14]).

It was found that the kilta of bamboo was traditionally used for carrying loads manually. However, the material of bamboo was replaced with plastic by the patentee.

Himachal Pradesh High Court cancelled the patent and observed that- the patented article did not have any significant inventive feature to make it an “inventive step[15]” as defined under S. 2 (1) (ja). It is merely a replacement of bamboo with plastic. Therefore, mere duplication of traditionally known components cannot get a patent; there is no ‘inventive step”.

2. Non-obviousness[16]–

Patents ought not to be granted for every trivial advancement[17]. Minor improvements are considered skilful mechanic work for which a patent should not be granted.

Patents are not available for every new, useful and non-obvious advance that is a mere obvious extension or modification of prior designs[18].

In other words, obvious improvements on already existing designs, which some skills can do, are not capable of patenting.

In Bajaj Auto Ltd. v. TVS Motor Corp. Ltd[19]

Madras High Court observed that the term “obvious” is a circumstance where a person of skill in the field going through some specification would complete the product.

3. Industrial application (Usefulness)-

An invention must be capable of ‘industrial application’ to grant a patent. An ‘industrial application’ means the possibility of an invention being produced or used in any branch of economic activity. In other words, an invention is considered ‘industrially applicable’ if it can be manufactured or used in any industrial or commercial activity. It should be actual or potentially useful. The patent is not available for purely abstract or intellectual creation if it cannot be used in the present or the future.

B. Non-Patentable Inventions-

Every invention is not patentable. Patent Act under S. 3 and 4 gives a list of which patent cannot be issued, viz.-

(a) Frivolous inventions.

(b) Inventions which are contrary to Law or Mortality or injurious to public health

(d) 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 mere discovery of any new property or new use for a known substance or 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, is not an invention.

For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

(e) A substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not an invention. Mere aggregation of features must be distinguished from a combination invention.

(f) Mere arrangement or re-arrangement of known devices.

(h) Method of agriculture or horticulture.

(i) 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 is not patentable.

(j) 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 are not inventions.

(k) A mathematical or business method or a computer program per se or algorithms are not inventions and hence not patentable.

(l) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever, including cinematographic works and television productions, is not patentable.

(m) A Mere scheme or rule or method of performing a mental act or method of playing a game is not patentable.

(n) A presentation of information is not patentable.

(o) Topography of integrated circuits is not patentable.

(p) An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components or components is not patentable.

(q) Inventions relating to atomic energy are not patentable (S. 4).

V. Procedure for obtaining patent-

To get a patent, the applicant must adhere strictly to the procedure under the Patent Act 1970. Unlike copyright, the person doesn’t get a patent as soon as he innovates. The Act has laid down a detailed procedure for getting a patent as follows-

1. Filing of Application (S. 6 to S. 11)-

The process of claiming a patent begins with filing the application and is completed by granting a patent.

a) Who can file an application for a patent (S. 6)-

An application for a patent can be filed by any person himself or jointly with other person. Following persons alone or jointly with other persons can file an application for patent.-

(i) any person claiming to be the true and first inventor of the invention.

(ii) any person being the assignee of the person claiming to be the true and first inventor with respect to the right to make such an application.

(iii) the legal representative of any deceased person who was entitled to make such an applicant immediately before his death.

If the employee makes any invention, (i) the employee or (ii) the employer (if agreed in his service contract) can make an application for patent registration.

b) Form of application (S. 7)-

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

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

Every application under this section shall state that the applicant is in possession of the invention and shall name the owner claiming to be a 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 made by a citizen of India shall be accompanied by a provisional or a complete specification. However, where an application is made by a foreign national (with whose state India has a reciprocal treaty), the patent application is to be accompanied by the complete specification, not the provisional specification.

c) International Patent[20] Application (S. 7 (1A) and (1B))-

Where an international application is filed under the Patent Cooperation Treaty 1970, a patent in any member country designating India shall be deemed an application under the Indian Patent Act, provided a corresponding application has also been filed before the Controller in India.

The application’s filing date shall be the international filing date accorded under the Patent Corporation Treaty. This provision in Indian law is available on reciprocity. Those states that permit Indians to file international applications are also accorded the same treatment as India.

d) Special provision for foreign applicants (S. 8)-

Where an applicant for a patent 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, he shall file along with the application or subsequently within the prescribed time as the Controller may allow-

(a) a statement setting out detailed particulars of such application.

(b) an undertaking that up to the grant of patent in India, he would keep the Controller informed in writing from time to time of detailed particulars as required, with respect to every other application relating to the same invention. However, at any time after an application for a patent is filed in India, till the grant or refusal to grant the patent, the Controller may also be required to furnish details relating to the processing of the application in a country outside India.

The statement and undertaking required to be filed as above by an applicant for a patent shall be made in Form 3.

2. Filing of provisional[21] and completed specification[22] (S. 9 and 10)-

(i) The question is what a specification is, and it needs to be filed along with the patent application.

The answer is that a ‘patent specification’ is a technical document describing the invention. A complete specification gives full and sufficient detail of an invention in such a manner that a person skilled in the art can use the invention when he reads such a description. The main purpose of filing innovation specifications is to make the invention available to the public at the expiry of the term of the patent. Thus, we may say that after the expiry of the period of the patent protection, it falls into the public domain, and the general public can make use, produce, sell, etc.

(ii) Provisions for filing specification-

Where an application for a patent (not being a conventional application or an application filed under the Patent Co-Operation Treaty designating India) is accompanied by a provisional specification, a complete specification[23] Shall be filed within twelve months from the date of filing the application, and if the complete specification is not filed, the application shall be deemed to have been abandoned. However, where an application for a patent (as mentioned) is accompanied by a specification purporting to be a complete specification and if the applicant requests within twelve months from the date of filing of the application, the Controller may direct that such specification shall be treated as provisional specification and proceed with it accordingly.

(iii) List of complete specifications (S. 10)-

The contents of the complete specific needs to be filed to the Controller is as follows-

(1) The invention shall be titled sufficiently indicating the subject-matter to which the invention relates.

(2) The full and particular description of the invention and its operation or use and the method by which it is to be performed.

(3) The disclosure of the best method of performing the invention which is known to the applicant and for which he is entitled to claim the protection.

(4) The claims defining the scope of the invention for which the protection is claimed.

(e) The specification shall be accompanied by an abstract that provides technical information on the invention.

(5) In the case of an international application designating India, the title, description, drawings, abstract, and claims filed with the application shall be taken as a complete specification.

(6) The claim of a complete specification shall relate to a single invention or to a group of inventions linked so as to form a single inventive concept. It shall be clear and succinct and fairly based on the matter disclosed in the specification.

(7) A declaration as to the inventorship of the invention.

The Controller may require drawings to be supplied, which shall form part of the specification.

3. Publication and examination of the application (Ss. 11A-14)-

(i) Publication-

The patent application is not open to the public for the prescribed period (i.e., 18 months from the date of filing). However, the applicant can request the controller to publish the application at an earlier date.

The application for a patent shall be published within one month after the expiry of the prescribed period of 18 months (as mentioned above) except in the following circumstances-

(1) where the application is one in which secrecy direction is imposed under S. 35.

(2) where the application has been abandoned under S. 9.

(3) where the application has been withdrawn three months prior to the period specified.

However, if a secrecy direction is given, it shall be published after the expiry of the period specified or when the secrecy direction has ceased to operate, which is later.

The publication of the application shall include- (a) particulars of the date of application, (b) a number of applications, (c) the name and address of the applicant, and (d) an abstract.

From the date of application for patent until the date of grant of patent, the applicant shall have the like privileges and rights as if a patent for invention had been granted on the date of publication of the application. However, the applicant shall not be entitled to institute any proceedings for infringement until the patent is granted.

(ii) Examination (S. 11 B)-

No patent application is to be examined unless the applicant or any other interested person requests such examination.

If the applicant or any other interested person does not request examination of the patent application within 48 months, the application will be treated as withdrawn by the applicant. However, the applicant may withdraw the appellation by making a request at any time after filing the application but before the grant of a patent.

In the case where secrecy direction has been issued under S. 35, the request for examination may be made after the publication of the application but within 48 months from the date of priority or the date of filing of the application or within six months from the date of revocation of the secrecy direction whichever is later[24].

Various provisions mention time because the patent application should be disposed of in a time-bound manner.

Where an applicant makes a request for examination, the examiner is to make a report in respect of whether the application, specification and other documents meet the requirements of the said Act and rules, whether there is a lawful ground of objection to the grant of a patent under the Act, the result of the investigations on the ground of anticipation and other matters that may be prescribed[25].

When the examiner sends his examination report to the Controller, the Controller may scrutinize it. If the report is not adverse, he may proceed according to law and if he finds the report unfavourable to the applicant or requires any amendment in the application, the specification or other documents, the Controller, before proceeding to dispose-off the application, shall communicate that as expeditiously as possible the gist of the objections to the application and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard. The Controller is provided with necessary powers in this respect.[26]

4. Opposition to grant of patent (S. 25)-

Where an application for a patent has been published but a patent has not been granted, any person may oppose the grant of patent before the Controller on the grounds enumerated in S. 25 (1), such as the applicant had wrongfully obtained the complete innovation or a part thereof, innovation was already/ prior published, Obvious invention, invention is not patentable, the complete specification is not proper, the application is not within the period prescribed etc.

5. Grant of patent (Ss. 43 and 47)-

When an application for grant of patent is in order for grant of the patent, then the patent shall be granted as expeditiously as possible, provided-

(1) the application has not been refused by the Controller by virtue of any power vested in him.

(2) the application has not been found to be in contravention of any of the provisions of the Act.

The patent shall be granted with the seal of the patent office and the date on which it is granted. These details are to be mentioned in the patent register.

On the grant of the patent, the Controller shall publish the fact that the patent has been granted and it shall be open for the public inspection.

The decision of the Controller, against the applicant is appealable with the Appellate Board.

The term of patent shall be twenty years from the date of filing of the application of the patent (S. 53). It means, the patent protection is available for 20 years.

VI. Rights and obligations of the patentee-

A. Rights of a patentee-

A patent confers on the patentee a monopoly right for a fixed period of 20 years. Grant of patent endows the following rights upon the patentee-

1. Right to exploit patent[27] (Ss. 48 and 50)-

The patentee gets the right to exploit the patent. This means the patentee can make commercial use of the patented invention. He can exclude third parties who do not have his consent from making, using, offering for sale, selling, or importing for those purposes that product in India.

2. Right to transfer the patent (S. 70)-

A patentee has the power to assign, grant, license, or otherwise deal with the patent for any consideration. We may say that a patentee has all the rights an owner has in any property. The patentee, while assigning his rights, licensing, or leasing, can restrict the use and exercise of the patent right to a limited area, for a limited time, or for a limited undertaking.

3. Right to surrender the patent[28] (S. 63)-

A patentee has a right to surrender his patent. He, at any time, by giving notice to the Controller, offers to surrender his patent. Where such an offer to surrender is made by the patentee, the Controller, before accepting the offer of the surrender, publishes the offer and also notifies every person other than the patentee whose name appears in the register as having an interest in the patent. It is necessary to protect the interests of persons like licensees, assignees, etc., with whom the patentee might have contractual obligations dependent on the patent’s continuance. If the Controller is satisfied after hearing the patentee, he may revoke the patent.

4. Right to sue for infringement of patent (S. 104 to 103)-

A patentee has a right of action to restrain the infringement of a patent by any person during the continuance of the patent term.

The infringement of a patent means violating the monopoly rights granted to a patentee. The patentee can sue for infringement to take legal action for the protection of his patent.

Moreover, the patentee has the right to get a duplicate patent if the original is lost (S. 154).

B. Limitations on the rights of patentee-

The rights of the patentee are not absolute. They are subject to certain limitations or exceptions as follows-

1. Use of invention by Government (Ss. 99 to 103)-

An invention is said to be used for the purposes of Government if it is made, used, exercised or vented for the purposes of the Central Government, a State government or a government undertaking.

A patent has the same protection even against the government. However, the government may use the patented invention and even acquire it under certain circumstances and terms or prohibit a person from using an invention.

In case of any such use of a patent, the patentee should be paid not more than adequate remuneration as per the circumstances of each case, taking into account the economic value of the patent use.

2. Acquisition of invention and patent by government (S. 102)-

The Central Government, upon being satisfied that it is necessary that an invention mentioned in an application for a patent or in any already granted patent, should be acquired for public purpose, would publish a notification to that effect in the official Gazette. Upon such publication, the invention or the patent and all the rights in respect of the same shall stand transferred to the Central Government.

In such a case, the patentee shall be paid compensation as may be agreed upon between the Central Government and the patentee. If no such agreement is reached, the compensation will be determined by the High Court (S. 103).

3) Compulsory licenses[29] (S. 84 to 94)-

As has already been discussed, a patent is a monopoly right granted to an invention. However, the Controller can grant the compulsory license in favour of any person on the expiration of three years from the grant of the patent in certain circumstances. It can be granted on the following grounds-

(i) where the reasonable requirements of the public with respect to patented invention have not been satisfied[30], or

(ii) the patented invention is not available to the public at a reasonably affordable price[31], or

(iii) the patented invention has not worked[32] in the territory of India.

Where the Controller is satisfied that a prima facie case has been made for an order, he may grant compulsory lice to any applicant to work the patent.

Central Government may, in circumstances of (i) national emergency, (ii) extreme urgency, or (iii) in case of public noncommercial use, acquire a compulsory license.

Compulsory licenses may also be obtained for related patents.

In India, the first compulsory licence was granted in 2017 by the Indian Patent Office to Hyderabad-based drug maker Natco. The Controller of the Indian Patents has allowed Natco to make and sell in India a similar version of multinational company Bayers’ patented drug Naxavar (an advanced kidney cancer drug). The Controller further ordered Natoco to pay Bayer a royalty at 6% of net sales.

In fact, the patent holder Bayer had not met the reasonable requirements of the public in India. It had not “worked the patent” or manufactured it to a reasonable extent in India. Besides, the drug was not available at an affordable price. Bayer used to sell a few tablets in the Indian market, that too for Rs. 2.8 lakhs for 120 tablets, while Natco made it available for just Rs. 8880 (i.e., around 31 times less price).

After the amendment to the Patent Act, the need was felt to balance the protection of patents and maintaining the competition between the pharmaceutical companies. The new ‘product patent’ regime implemented in India since 2005 has, to some extent, led to a situation of monopoly in the market. However, before the amendment of 2005 and inserting the concept of ‘product patent’, the generic companies gave a lot of competition to patented drug manufacturers. The concept of ‘product patent’ has eliminated the competition to a great extent. Therefore, it has become difficult to keep the prices of the drug low. It is necessary, therefore, to ensure that there are some safeguards for the general public, and they shall get medicine and drugs available at a chief price.

4) Use of invention for defence purposes-

Inventions relevant to defence purposes, which are the subject matter of patent applications, and that are in the interest of national security are kept secret. Such applications may not be published, and no patent shall be granted in respect thereof. No application for such an invention can be made outside India without the permission of the Controller.

If the invention is relevant for the defence purpose or atomic energy, the Controller does not grant a patent without the prior consent of the Central Government.

Any contravention of secrecy directions will, apart from criminal liability, render the application ineligible to proceed. The innovator would be given solatium for suffering hardship due to secrecy directions.

5) Revocation for non-working of patents (S. 85)-

The Controller can revoke the patent in the event that the patented invention is not being worked on to an adequate extent in the territory of India, reasonable public requirements with respect to the patented invention have not been satisfied, or the patented invention is not available to the public at a reasonably affordable price.

C. Obligations or duties of Patentee-

There are the following obligations or duties imposed upon the patentee by the Act.-

(i) Duty to satisfy reasonable requirements of the public-

It is an important duty cast upon the patentee to ensure that the reasonable requirements of the public concerning the patented invention should be satisfied. The patented invention should be available to the public at a reasonably affordable price, and the patented invention should work in the territory of India.

If the patentee fails to provide the product to the public, a compulsory license may be granted to any person for the production of the patented product.

(ii) To furnish information (S. 122)-

A patentee is under obligation to furnish any information to the Central Government (S. 122) and, if asked, to the Controller (S. 146) within a specified period. The patentee is liable for a penalty under the Act.

VII. Infringement of patent-.

1. Introduction-

The patent grants the patentee a monopoly right for a specific period, i.e., 20 years from the date of filing the application for patent registration.

The monopoly right is the right to prevent third parties from making, using, offering for sale, selling, or importing products in India without the patentee’s consent. Any act inconsistent with the patentee’s right by any person is called an “infringement of patent.”

The Act defines what infringement is and what does not amount to infringement? It also lays down remedies for infringement of a Patent. We will discuss them as follows-

2. What acts amount to infringement?-

The following acts amount to infringement of patent-

a. The colourable imitation of an invention[33]–

Where an infringer makes a slight modification in the process or product but, in fact, absorbs substances that contain the essential features of the patentee’s invention, it is called a ‘colourable imitation’.

b. Immaterial variations in the invention[34].-

‘Immaterial variation’ means slight or no considerable variations in patented innovation.

c. Mechanical equivalent[35]–

Infringement by mechanical equivalents would occur when he uses mere substitutes for those features to obtain the same result for the same purpose as the patentee.

d. Taking essential features of invention[36].

3. Acts which do not amount to infringement[37] (S. 47 and 107-A)-

The following acts do not amount to infringement-

When the patented article is imported or made by the government for the purpose merely of its own use.
When the patented process is used by the government.
When such patented article or process is used by any person for the purpose merely of experiment or research, including the imparting of instructions to pupils, and
When the patented drug or medicine is imported by the government for the purposes merely for its own use or for distribution in any hospital, dispensary, or medical institution run or maintained by the government.
When 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.
When a patented product is imported from the person who is duly authorised under the law to produce and sell or distribute the patented product.

4. Defenses available against infringement of patent[38] (S. 107)-

In any suit for patent infringement, every ground on which a patent may be revoked under S. 64 of the Act is available as a ground for defence. It lays down the following grounds to revoke a patent or put as defences for action against infringement.-

(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[39].

(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.

(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim.

(g) that the invention, so far as claimed in any claim of the complete specification, is not useful.

(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed.

(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification.

(j) that the patent was obtained on a false suggestion or representation;

(k) that the subject of any claim of the complete specification is not patentable under this Act;

(l) that the invention, so far as claimed in any claim of the complete specification, was secretly used in India before the priority date of the claim.

(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge.

(n) that the applicant contravened any direction for secrecy.

(o) that leave to amend the complete specification was obtained by fraud.

(p) that the complete specification does not disclose or wrongly mention the source or geographical origin of biological material used for the invention.

(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or Indigenous community in India or elsewhere.

(r) those acts mentioned above under S. 47.

VIII. Remedies for infringement[40]–

A suit for infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit (S. 104). However, when the defendant makes a counterclaim for revocation of the patent, the suit shall be transferred to the High Court (S. 64).

The following remedies are available against infringement of the patent (S. 108)-

1. Injunction[41]–

An injunction is an order of a court prohibiting an infringer from doing some specified act or commanding him to undo some wrong or injury to the patentee’s right. It is a sort of preventive and protective remedy aimed at preventing future wrongs against patent rights. An injunction is of two types, viz.

(a) Temporary or interlocutory injury[42]–

A temporary or interlocutory injunction is a court order which remains in force for a specified time or until further orders of the Court. The plaintiff (patentee) may, at the commencement of the suit or any time during the suit, apply to the court for a grant of an interim injunction to restrain the defendant from committing or continuing to commit the alleged infringement[43].

While considering an application for an injunction, the court considers the following principles-

(i) Whether Plaintiff has a prima facie case in his favour.

(ii) Does he establish that the balance of convenience lies in his favour?

(iii) Whether Plaintiff (patentee) would suffer irreparable loss if the injunction is not granted.

In Hind Mosaic and Cement Workers and Another v. Shree Sahjanand Trading Corporation[44], the court referred to the American case “Cyanamid Co. v. Ethicon Ltd of 1975” and granted a temporary injunction. The court observed that it is not strictly to look into the plaintiff’s prima facie case in patent matters.

(b) Final or Permanent injunction-

A final or Permanent injunction is granted at the termination or conclusion of the trial in final judgment. The final or permanent injunction remains in force till the remaining term of the patent.

In M.C. Jayasingh v. Mishra Dhatu Nigam Limited[45]

In this case, the Hon’ble Madras High Court rejected the claim for granting a final injunction on the ground that both articles are not identical or deceptively similar even though the general functioning of the aspects may be the same.

2. Damages[46] or Account of Profits[47]–

The plaintiff may be awarded either ‘damages’ or ‘account of profits’. These are alternative remedies. Damages may be awarded to compensate for the loss or injury suffered by the plaintiff due to the defendant’s infringement. ‘Account of profit’ is the remedy wherein the patentee is entitled to claim only that profit earned by the decedent/ infringer by using the patentee’s invention.

3. Delivery-up[48] or destruction of infringing goods[49]–

The court may order that the goods found to be infringing, and material and implements predominantly used 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. The Court may also deliver the above material or goods to the plaintiff for destruction.

In Farbewerke Hoechst etc. Co[50]. V. Unichem Laboratories[51]

The Bombay High Court held that the plaintiff is entitled to an order delivering up for destruction of all articles in the defendant’s possession made in infringement of the plaintiff’s patent.

Short Notes

1. License[52]–

A ‘license’ is permission given by the patentee to a person to make, use or exercise the patented invention. Making, using, etc., of patented products is illegal without such permission. In fact, in a license, the ownership of the patent remains with the patentee, but a mere partial right to make, use, etc., is granted. In other words, a patentee can transfer a right by a license agreement permitting a licensee to make use of or exercise the invention as agreed between them. The license agreement contains all the terms and conditions of licensing between the licensor and the licensee. There are the following kinds of licenses:

a. Voluntary licence[53]–

It is a written authority granted by the patent owner to another person, empowering him to make, use, and sell the patented article in the manner and on the terms and conditions provided in the licence. The parties determine the terms and conditions of the licence; therefore, it is called a voluntary licence’.

b. Compulsory licence- (as discussed above)

2. Biotechnological Patent-

Biotechnology[54] plays an important role in the fields of medicine, food, fertilizer, energy, and environmental protection. It concerns living organisms like plants, animals, and microorganisms. It also concerns nonliving biological material like seeds, cells, enzymes, plasmids, etc.

The biotechnology industry in India is very big. It is the third largest industry in the Asia Pacific. In India, much research is being done in the biotechnological field. It is, therefore, necessary to protect invention in this field. By the Patents Amendment Act of 2002, innovations relating to microorganisms were made patentable in India. Patents in this field can be obtained as per the general provisions of the Patent Act of 1970. Even the TRIPs Agreement makes it obligatory for the Member States to protect biotechnological inventions related to micro-organisms and essential biological processes for the protection of plants or animals, etc.

A ‘Biotechnological Patent’ is a patent on an invention in the field of biology[55]The scope and reach of biological patents vary among jurisdictions. A biological patent includes biological technology and products, genetically modified organisms, and genetic material.

Legal problems in issuing patents in biotechnological inventions-

The main problem in this field is the exclusion by law of an invention on the ground of ‘mere discovery of new forms of uses of known substances’ that do not demonstrate enhanced efficiency. Many applications for patents in the biological field are rejected on this ground.
The absence of a clear distinction between patentable inventions and non-patentable inventions creates great confusion in this field.

In a landmark judgment of the U.S. in Diamond v. Chakraborty[56] (1980)

Facts—The innovator created a genetically engineered bacterium capable of breaking down multiple components of crude oil. He applied for a patent on the basis that his bacterium possessed a trait not found in natural gowning bacteria.

The Patent officer rejected his application on the ground that microorganisms are products of nature and, as a living organism, are non-patentable.

However, the U.S. Supreme Court held that naturally occurring organisms and plants could not be patented because human ingenuity is not responsible for creating them, but an artificial organism is the product of an individual’s creativity and skill, so it deserves the protection of the patent.

3. Patents in respect of Medicine and Drugs-

The Indian pharmaceutical industry is very successful and highly technology-based. It has witnessed constant growth in the last three decades. During the COVID-19 pandemic, the industry has supplied chief and effective drugs to more than 150 countries worldwide. It undertakes research and development work at a large scale. Making a new drug and introducing it in the market is time-consuming and highly technology-based. Naturally, the companies taking such pains want to protect their innovation by getting it patented. Therefore, it is necessary to keep the industry growing so that the Patent Act protects its innovation. Therefore, innovation in this valuable field needs to be strictly protected. India ensures strict protection of patents in pharmaceutical fields. The Patent Act of 1970 provides security to pharmaceutical companies.

Patent law in the field of medicine and drugs in India-

After the amendment of 1999 in the Patents Act, patent protection for innovations relating to medicine and drugs is permitted with certain exceptions and conditions.

The applicants for such patents are allowed to make separate applications for the grant of exclusive marketing rights to sell and distribute the articles innovated.

General criteria and processes provided by the Patent Act apply to the patents of drugs and medicines.

In Novartis AG v. Union of India[57]

Facts—The applicant is a foreign company that wants to patent one of its drugs. Indian Companies raised an objection, stating that a very similar product was already patented, so this particular drug could not be patented.

Applicant Company contented that it was a new invention since certain changes were made to the drug.

The Supreme Court observed that the drug did not pass the novelty test laid down by S. 3 (d) of the Patent Act. Hence, a patent cannot be granted to it.

*****

[1] अभिनव/षोध अधिकार

[2] नवीन व ब उपयोगी वस्तूंचा शोध

[3] अस्तित्वातील वस्तुत नावीन्यपुर्ण बदल

[4] वस्तु बनवीनेचे प्रक्रियेत नावीन्यपुर्ण बदल

[5] अभिनव अधिकार मिळन्या योग्य शोध

[6] अभिनव अधिकार न मिळणारे शोध

[7] नवीन शोध

[8] पुर्विचे उत्पादनात किंवा उपलब्ध उत्पादनात नवीन भर/शोधक पादऊल a significant innovative improvement in existing structure of an article.

[9] नाविन्य

[10] Small “L”

[11] The Indian Council of Scientific and Industrial Research (CSIR).

[12] Basmati Rice Patent Case-

Facts– An American Company Rice Tec Inc, had acquired patent on “Basmati rice, lines and grains” on 2^nd Sept 1997.

In India, the Basmati rice is grown for thousand years. It is very rich type of rice, having aroma of its own. It has huge demand worldwide. Major portion of Indian Economy comes from the export of Basmati Rice.

By acquiring patent on Basmati rice, Ric Tec Inc, company has made theft of not only Indian but whole South Asian cultural asset, where the rice is grown in Pakistan, Bangladesh, China etc.

Indian Government on 28 April 2000 opposed the issue of Basmati Patent by U.S. Patent Office to the Respondent Co. Rice Tec Inc, on the grounds that the brand of Basmati rice on which the Company has obtained patent exist in India for thousand years; therefore, there is no innovation to this respect. India raised the issue even at World Trade Organisation.

Result- Taking into consideration Indian opposition and criticism worldwide, Rice Tec Inc, withdrew its claims of Basmati Rice on 11 Sep. 2000.

[13] 2008 (38) PTC 341

[14] चहाच्या मळयात अथवा इतर बोजा वाहन्यासाठी बांबु पासुन बनविलेली पाठीवर ठेवन्याची वडोक्याला बेल्टच्या सहालयाने बांधन्याची टोपली

[15] नवीन भर/शोधक पाऊल

[16] “Obvious” means the improvement which can easily be made in the article by any skilled person in that filed असाधारन कौषल्याने केलेल्याा सुधारणा “Non-Obvious” means it is significant innovative improvement in existing structure of the article (असाधारन कौषल्याने केलेल्याा सुधारणा)

[17] साध्यासुध्या/ लहानसहान सुधारणा

[18] मूळ उत्पादनात थातुरमातुर बदल अथवा सर्वसामान्य कौषल्याने करता येणारे बदल केल्यास त्यास अभिनव अधिकार देता येत नाही.

[19] 2008 (36) PTC 417

[20] An application filed under the Patent Cooperation Treaty 1970 is called as ‘International Application’ or ‘PCT application’. An invention can be protected through a patent in many countries by filing an International Patent Application.

In order to preserve and protect the International and global character of the invention, countries world over have become signatories to various International conventions on Patent such as, Paris Convention, 1883, Patent Corporation Treaty (PCT) etc.; They have evolved the parameters within which international application for patents are to be made and operated. These countries are called as “Convention Countries” (S. 133). India is one of the Convection Country. International patent operates in all those signatory or “Convection Countries”.

When a patent application is made by a person for an invention in a convention country it is known as basic application. That person has to file another application under the Patent Act of his own Country within 12 months from the date of the basic application.

[21] संशोधनाबद्दलचा जुजबी/तात्पुरता तपशील

[22] संशोधनाबद्दलचा संपूर्ण तपशील

[23] संपूर्ण तपशील

[24] Rule 24

[25] Ss. 12 to 13.

[26] Ss. 14 to 20.

[27] अभिनवा अधिकाराचा पुर्ण वापर करन्याचा अधिकार

[28] अभिनवा अधिकार सोडून देणे/ सुपूर्द करणे

[29] The topic of ‘licence’ is discussed at the end.

[30] शोधवस्तु बद्दलची लोकांची वाजवी मागणी पुर्ण होऊ शकत नसल्यास

[31] शोधवस्तु वाजवी किंम्मतीत बाजारात द्वपलब्ध नसल्यास

[32] शोधवस्तु बद्दल भारतात काहीही काम केलेले नाही ती तयार केली नाही, उपल्ध्द केली नाही इ.

[33] थोडयाशा बदलांसह शोध वस्तूची नक्कल करणे

[34] शोध वस्तूत शुल्लक बदल केल्यास

[35] यांत्रिकी समान कार्य करनाारे भाग वापरल्याने

[36] शोध वस्तूतील मुलभुत घटक घेद्वन निर्मान केलेलेली दुसरी वस्तू

[37] अशी कृत्य की जी षोध अधिकाराचा भंग होत नाहीत

[38] शोध अधिकार भंग केलेच्या अरोपाविरूध्द बचाच

[39] चालू अर्जात नमूद संपूर्ण तपशील हा यापुर्वि शोधअधिकार मिळालेल्या संषोधनात सुध्दा नमुद असल्याने त्यामधे कोणतेही नाविन्य नाही

[40] शोध अधिकाराचा भंग केलयस उपाय

[41] मनाई हुकूम- षोध अधिकाराचा भंग करण्याचे कृत्य थांबविणेसाठीचा मनाईहुकूम

[42] तात्पुरता अथवा दाव्याचे प्रलंबीत असतानाचे दरम्यानचे काळासाठी दिलेला मनाई हुकूम

[43] होऊ घातलेला भंग / संभावित भंग

[44] 2008 (37) PTC 128 (Guj) (DB).

[45] Decided by Madras High Court on 23 January 2014.

[46] नुकसान भरपाई

[47] जो नफा, षोध अधिकाराचा भंग केलयाने, सामनेवाले भंग करणाराने मिळविला आहे, तो षोधकत्र्येस देणे म्हणजे ‘‘नफा नुकसानी’’

[48] अर्जदार /शोध्कार्त्यास, शोध अधिकाराचा भंग करणारे सामनेवालेच्या ताब्यातील साहीत्य अथवा वस्तु नष्ट करण्यासाठी सुपूर्द करणे

[49] शासनाने शोध अधिकाराचा भंग करणारे सामनेवालेच्या ताब्यातील साहीत्य अथवा वस्तु नष्ट करणे

[50] Fabewerke Hoechst Akitengesellchaft Vormals Meister Lucius and Burning Corporation.

[51] AIR 1969 Bom 255.

[52] अभिनव अधिकार वापरनेसाठीचा परवाना

[53] ऐच्छिाक परवाना

[54] जैव तंत्रज्ञान

[55] जीवशास्त्र

[56] 447 U.S. 303 (1980)

[57] (2007) 4 MLJ 1153