A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law. Exclusive right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available for a limited period of time. In spite of the ownership of the rights, the use or exploitation of the rights by the owner of the patent may not be possible due to other laws of the country that has awarded the patent. These laws may relate to health, safety, food, security, etc. Further, existing patents in similar areas may also come in the way. A patent in the law is a property right adherence, which can be gifted, inherited, assigned, sold, or licensed. As the right is conferred by the state, it can be revoked by the state under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime. The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries. A new chemical process or a drug molecule or an electronic circuit or a new surgical instrument or a vaccine is a patentable subject matter provided all the stipulations of the law are satisfied explained by Edge Legal.
The Indian Patent Act
The first Indian patent laws were promulgated in 1856. These were modified from time to time. New patent laws were made after the independence in the form of the Indian Patent Act 1970. The Act has now been radically amended to become fully compliant with the provisions of the TRIPS. The most recent amendment was made in 2005, which was preceded by the amendments in 2000 and 2003. While the process of bringing out amendments was ongoing, India became a member of the Paris Convention, Patent Cooperation Treaty and Budapest Treaty. The salient and important features of the amended Act are explained here.
An invention will be considered novel if it does not form a part of the global state of the art. Information appearing in magazines, technical journals, books, newspapers, etc. constitutes the state of the art. Oral description of the invention in a seminar/conference can also spoil novelty. Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of publication anywhere in the world before filing a patent application in respect of the invention. Therefore, it is advisable to file a patent application before publishing a paper if there is a slight chance that the invention may be patentable. Prior use of the invention in the country of interest before the filing date can also destroy the novelty.
A patent application involves an inventive step if the proposed invention is not obvious to a person skilled in the art, i.e. skilled in the subject matter of the patent application. The prior art should not point toward the invention implying that the practitioner of the subject matter could not have thought about the invention prior to filing the patent application.
Inventiveness cannot be decided on the material contained in unpublished patents. The complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent.
An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility. The patent specification should spell out various uses and manners of practicing them, even if considered obvious. If you are claiming a process, you need not describe the use of the compound produced thereby. Nevertheless, it would be safer to do so. But, if you claim a compound without spelling out its utility, you may be denied a patent.
An invention may satisfy the conditions of novelty, inventiveness, and usefulness but may not qualify for a patent under the following situations:
- An invention that is frivolous or that claims anything obviously contrary to well-established natural laws, e.g. different types of perpetual motion machines.
- An invention whose intended use or exploitation would be contrary to public order or morality or that causes serious prejudice to human, animal or plant life or health or to the environment, e.g. a process for making brown sugar will not be patented.
- The mere discovery of a scientific principle or formulation of an abstract theory, e.g. Raman effect and Theory of Relativity cannot be patented.
- The mere discovery of a new form of a known substance that does not result in enhancement of the known efficacy of that substance or the mere discovery of any new property or new use of a known substance or the mere use of a known process, machine, or apparatus unless such a known process results in a new product or employs at least one new reactant.
- A substance obtained by a mere admixture resulting in the only aggregation of the properties of the components thereof or a process for producing such a substance.
- The mere arrangement or rearrangement or duplication of features of known devices each functioning independently of one another in a known way. If you put torch bulbs around an umbrella and operate them with a battery so that people could see you walking in the rain when it is dark, then this arrangement is patentable as bulbs and the umbrella perform their functions independently.
- A method of agriculture or horticulture. For example, the method of terrace farming cannot be patented.
- Any process for medical, 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 the economic value or that of their products. For example, a new surgical technique for hand surgery for removing contractions is not patentable.
- Inventions relating to atomic energy.
- Discovery of any living thing or non-living substance occurring in nature.
- Mathematical or business methods or a computer program per se or algorithms.
- Plants and animals in whole or any part thereof other than microorganisms, but including seeds, varieties and species, and essentially biological processes for production and propagation of plants and animals.
- A presentation of information.
- The topography of integrated circuits.
- A mere scheme or rule or method of performing mental act or method of playing games.
- An invention which, in effect, is traditional knowledge or which is aggregation or duplication of a known component or components.
Computer programs per se have not been defined in the Act but would generally tend to mean that a computer program without any utility would not be patentable. Protection of seeds and new plant varieties is covered under a different Act, which provides protection for a period of 10 years. Similarly, the topography of integrated circuits is protected through yet another different Act.
Term of the patent
The term of the patent will be 20 years from the date of filing for all types of inventions.
TRIPS requires that countries not providing product patents in respect of pharmaceuticals and chemical inventions have to put in a mechanism for accepting product patent applications with effect from 1 January 1995. Such applications will only be examined for grant of patents after suitable amendments in the national patent law have been made. This mechanism of accepting product patent applications is called the “mailbox” mechanism. This system has been in force in India and now such applications are being taken up for examination.
EXCLUSIVE MARKETING RIGHTS
TRIPS requires that member countries of the WTO not having a provision in their laws for granting product patents in respect of drugs and agrochemicals must introduce EMR for such products if the following criteria are satisfied:
- A patent application covering the new drug or agrochemical should have been filed in any of the WTO member countries after 1 January 1995.
- A patent on the product should have been obtained in any of the member countries (which provides for product patents in drugs and agrochemical) after 1 January 1995.
- Marketing approvals for the product should have been obtained in any of the member countries.
- A patent application covering the product should have been filed after January 1995 in the country where the EMR is sought.
- The applicant should apply seeking an EMR by making use of the prescribed form and paying the requisite fee.
EMR is only a right for exclusive marketing of the product and is quite different from a patent right. It is valid up to a maximum period 5 years or until the time the product patent laws come into effect. The necessary amendment to the Patents Act, 1970 came into force on 26 March 1999. The provision is applicable with retrospective effect from 1 January 1995. As per the 2005 amendments in the Patents Act, the provision of EMR is no longer required. However, these rights were awarded in India from time to time and there have been some litigations as well where the courts came up with quick decisions.
Timing for filing a patent application
The filing of an application for a patent should be completed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention, helps to register the priority by the applicant. A delay in filing an application may entail some risks, like
- other inventors might forestall the first inventor by applying for a patent for the said invention and
- there may be either an inadvertent publication of the invention by the inventor himself/herself or by others independent of him/her. The publication of an invention in any form by the inventor before filing a patent application would disqualify the invention from being patentable. Hence, inventors should not disclose their inventions before filing the patent application. The invention should be considered for publication after a patent application has been filed. Thus, it can be seen that there is no contradiction between publishing an inventive work and filing the patent application in respect of the invention.