Covers legal aspects of Patenting in India.Explains the difference between Patent, Trademark and Copyright. Differentiates between patentable and non patentable inventions and explains the process of obtaining a patent, with case studies and examples.

1. The Patents Act
(India)
Legal Environment for Business

2. Importance of Patents
Exclusive Rights
Strong Market
Position
Opportunity to
License or Sell
Invention

3. Introduction

4. Patent
A Patent is a form of intellectual property which grants an
exclusive right to the patent holder (patentee) to use his own
invention, in any manner he or she desires for a limited or
defined period of time.

5. Patentable Invention

6. Non-Patentable Invention
The following types of Inventions are non patentable:
Contrary to well established natural laws or public order
Discovery of natural substances
A method of agriculture or horticulture
A mathematical or business method or a computer programme per
se or algorithms
Literary, dramatic, musical or artistic work
An invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally
known component or components

7. Non-Patentable Invention
If a new form of known substance is found it should contribute to
enhancement of known efficacy of the existing substance.
Case: Gilead a US Pharma Company applied for a patent for Sovaldi, used
in Hepatitis C treatment, which Gilead sells for $84,000 for a normal 12
week course.
The Controller General of Patents, Designs and Trademarks of the India
ruled that the patent claim lacks novelty and inventive step, and also
doesn't demonstrate it's significantly more effective than already known
compounds. There are a number of earlier compound structures that are
very close to what Gilead is trying to get a patent for.
Therefore it ruled to allow Indian pharmaceutical companies to produce
Sofosbuvir, the generic version of Sovaldi.

8. Non-Patentable Invention
Sections 4 provides inventions relating to atomic energy not
patentable.
Section 5 which provided for inventions where only methods or
processes of manufacture as patentable, has been deleted by
Amendment Act 2005. Therefore provisions for “process
patent” have been removed.

9. The Patents Act 1970
Commencement: 21 September 1970
Objective: To encourage inventions by promoting their
protection and utilization so as to contribute to the
development of industries, which in turn, contributes to the
promotion of technological innovation and to the transfer and
dissemination of technology.
Significance: The Patents Act 1970 describes the procedure for
the grant of patent and protects the patentee’s rights against
infringement.

10. Application For Patents (Sec 6-11)
Persons entitled to apply for the patents (Sec 6):
True and first inventor
Assignee or legal representative of true and first inventor
Form of Application (Sec 7):
Application to be filled for one invention only, in the
prescribed form.
Applicant must be in possession of the invention.
When the applicant is other than the true and first inventor,
the application must also include a declaration that he
believes the person named in the application is the true and
first inventor. Provisional or complete specification must also
be attached.

11. Application For Patents (Sec 6-11)
Provisional and Complete Specification
A description of the invention is called the specification.
An applicant providing provisional specification must give complete
specifications within 12 months from date of filing of application.
Contents of Complete Specification:
an abstract providing technical information
full description of invention and its usage
best method of performing the invention known to applicant
claim(s) defining scope of invention for which protection is claimed
Foreign applicants must provide complete specifications and keep the
Controller informed about details and developments in any patent
application filed outside India.

12. WorkingofPatents
CompulsoryLicenseandRevocation
Patent
Inventions
ObligationsLicenses
1970
Rights

13. • Commercial scale and to the fullest
extent
• Contribute to the promotion of
technological innovation, mutual
advantage of producers and users of
technological
• knowledge and to a balance of rights
and obligations
• Benefit of the patented invention
available at reasonably affordable prices
to the public
• No monopoly
• Should not impede protection of public
health and nutrition, should act as
instrument to promote public interest
especially in sectors of vital importance
for socio-economic and technological
development of India
• Do not in any way prohibit Central
Government in taking measures to
protect public health
• Does not resort to practices which
unreasonably restrain trade or adversely
affect the international transfer
technology
Must Mustnot

14. • Invention is not worked in the territory of
India. that the reasonable requirements
of the public with respect to the patented
invention have not been satisfied
• The patented invention is not available to
the public at a reasonably affordable
price
• The patented invention is not working in
the territory of India
• Can existing trade or industry or the
development thereof or the
establishment of any new trade or
industry in India or the trade or industry
of any person or class of persons trading
or manufacturing in India is prejudiced
• The demand for the patented article has
not been met to an adequate extent or on
reasonable terms
• A market for export of the patented
article manufactured in India is not being
supplied or developed
• The establishment or development of
commercial activities in India is
prejudiced
CompulsoryLicense
Granted Denied

15. The Controller shall take into account :
• the nature of the invention, the time which has elapsed since the sealing of the patent
and the measures already taken by the patentee or any licensee to make full use of the
invention
• the ability of the applicant to work the invention to the public advantage
• the capacity of the applicant to undertake the risk in providing capital and working the
invention, if the application were granted
• as to whether the applicant has made efforts to obtain a license from the patentee on
reasonable terms and conditions and such efforts have not been successful within a
reasonable period as the Controller may deem fit

16. Public deemed not to have been satisfied if :
• If the patented invention is not being worked in the territory of India on a
commercial scale to an adequate extent or is not being so worked to the fullest
extent that is reasonably practicable
• if the working of the patented invention in the territory of India on a commercial
scale is being prevented or hindered by the importation from abroad of the
patented article by :
(i) the patentee or persons claiming under him
(ii) persons directly or indirectly purchasing from him
(iii) other persons against whom the patentee is no taking or has not taken
proceedings for infringement.

17. Revocation
• Patented invention has not been working in the territory of India
• reasonable requirements of the public with respect to the patented invention
has not been satisfied
• patented invention is not available to the public at a reasonably affordable price
Everyapplication shallcontainsuchparticularsasmaybeprescribed,thefacts
uponwhichtheapplication isbased

18. Publication of Application
An application for patent is not open to the public for a
prescribed period. The applicant may, however, request the
controller to publish his application anytime during the
prescribed period.
On the expiry of the prescribed period, every application or a
patent shall be published except where:
1. secrecy direction is imposed for defence purpose under section 35
2. the application has been abandoned under section 9
3. the application has been withdrawn 3 months prior to the prescribed period

19. Publication of Application
Upon publication of an application for a patent, the depository
institution has to make the biological material mentioned in the
application available to the public. the patent office shall make
the specifications and drawings available to the general public
on payment of prescribed fees in this regard.
On and from the date of publication of the application for patent
and until the date of grant of a patent in respect of such
application, the applicant shall have the like privileges and rights
as if a patent for the invention had been granted on the date of
publication of the application.

20. Case Study- Publication of
Application (Application abandoned)
The applicant had instructed his agent to abandon the earlier application ‘B’
on 26th March 2015. But the agent didn’t act upon the instruction in time
and on 8 May 2015 the agent received a notice from the Patent Office stating
that the application would be published on 4 June 2015. On 12 May 2015 the
Patent Office received letter from the agent for withdrawal of the application
‘B’. The agent felt it appropriate to involve common sense to the meaning of
the Act and said that if an application is withdrawn before preparations and
by some administrative error it is published, then any action after withdrawal
should be considered not to have happened. The examiner however was of
the opinion that the intimation for withdrawal was received after the
preparations for publication were complete.
It was declared that the application ‘B’ was withdrawn only after the
preparations for publication were over.

21. Examination of Application
An applicant or any other interested person can make a
request in the prescribed manner for the examination for a
patent within the prescribed period. Upon receipt of the
request for examination, the Controller of Patents shall refer to
both the application and complete specification to the
examiner for making a report to him as regards:
1. whether the application complies with the requirement of the Act and the Rules
2. whether there exists any ground of objection to the patent
3. whether the invention has already been published or claimed by any other person
4. any other matter which may be prescribed

22. Examination of Application
Whether the report of the examiner as received by the
controller of the patents is adverse, the controller is required to
issue a notice to the applicant, giving a gist of the objections.
The Controller is under an obligation to give an opportunity of
being heard, if so required by the applicant.
Where the Controller is satisfied that the application does not
comply with the requirements of the act, he may reuse the
application or may require the applicant to make suitable
amendments to the application. If the amendments are not
carried out to the satisfaction of the Controller, he may finally
refuse the application.

23. Opposition Before Grant of Patent
The grant of patent may be opposed on the following grounds:
1. that the invention for which patent has been claimed was publicly
known or used in India
2. the the applicant wrongfully obtained the invention or any part of
it
3. that the invention is obvious and does not involve any inventive
step
4. that the invention is not patentable under the Patents Act, 1970
5. that the complete specification does not disclose or wrongly
mentions the source or geographical origin of biological material
used for the invention

24. Opposition After Grant of Patent
After the grant of a patent but before the expiry of one year from
the date of publication of grant of a patent, any person interested
may give notice of opposition to the controller of patents in the
prescribed manner on the same specified grounds as given above
under the heading,“Opposition before grant of patent”. The
Controller of patents shall notify the patentee about the notice of
opposition received by him. The Controller shall constitute an
“Opposition board” consisting of such officers as he may
determine appropriate.
The controller would then refer the notice of opposition to the
“Opposition board” along with the documents for examination
and submission of his recommendations to him.

25. If the Controller finds that the
invention was obtained
wrongfully from the
opponent and he revokes the
patent on that ground, he
may, on request by such
opponent direct that the
patent shall stand amended
in the name of the opponent.
Opposition Proceedings
Where any notice of opposition has been given, the Controller
shall notify the applicant. He may give, both, the applicant and
the opponent the opportunity to be heard before deciding the
case.
If a person makes a request
or a claim that he is the
inventor of an invention in
respect of a patent
application then the
Controller shall mention his
name as an inventor in the
patent granted.

26. case study
Chef Balsoor from New Delhi runs a restaurant where he offers
cuisines invented by him on his menu. He gets them patented as
soon as he comes up with any new recipes. This time he
claimed to have come up with this new recipe which he called,
“green pickle”, he had made using spinach and curry leaves. He
applied for the patent for his recipe and the application was
published within the prescribed period. A week after the
application was published, chef Pablo from Mumbai opposed the
grant of patent and claimed that the cuisine was originally
invented by him about 6 months before Chef Balsoor came up
with it. The Controller found that the recipes were identical in
major prospects and Chef Pablo was speaking the truth.
Controller decided to finally revoke the application of patent by
Chef Balsoor, and on request of Chef Pablo, directed the patent
to stand amended in the name of Chef Pablo.