DRA presentation ppt

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Intellectual Property Rights (IPR) And Patent Act Presented by : Rahul Kaushik Rameesh Institute of Vocational and Technical Education Greater Noida

INTELLECTUAL PROPERTY : 

INTELLECTUAL PROPERTY Intellectual Property is a property that arises from the human intellect. It is a product of human creation. Intangible (non-physical) in nature- derives value from ideas. There is no uniform definition of IP. In knowledge age, IP is a key to techno-economic growth. It is totally based upon information and knowledge.

IP UBIQUITOUS IN LIFE : 

IP UBIQUITOUS IN LIFE Articles of food, furniture, clothing, textiles, cosmetics, pharmaceuticals, entertainment gadgets, machinery, books, etc. are all IP protected. Domain of IP is ever expanding with advent of Technology and Globalization : GI, IC topography are new additions, TK/Biodiversity are likely additions.

RATIONALE BEHIND IP : 

RATIONALE BEHIND IP The creative activity culminating in IP is necessary for socio-economic progress. Material incentives and rewards encourage greater creative activity. IP rights grant monopoly to ensure rewards. The interests of owner and society are balanced by limiting periods of monopoly with obligation to disclose and remedies against abuse of rights. Disclosure brings knowledge in public domain.

NATURE OF IPR’s : 

NATURE OF IPR’s Essentially negative rights to stop others from copying or counterfeiting In patents, being first with an invention pre-empts any right of another making same invention independently. In copyrights, the right is diluted as right is over the form of expression and not over idea. IPRs being statutory rights are legally enforceable. They are territorial in nature.

7 MAIN IP INSTRUMENTS : 

7 MAIN IP INSTRUMENTS Patents Trademarks, Trade Names & Services Marks Geographical Indications Industrial Designs Layout-designs of Integrated Circuits Trade Secrets Copyrights And Related Rights First six are Industrial Property Rights

THE PATENTS ACT, 1970 (39 OF 1970) [As Amended By the Patents (Amendment) Act, 1999.] (As effective from the 1st January, 1995 ) : 

THE PATENTS ACT, 1970 (39 OF 1970) [As Amended By the Patents (Amendment) Act, 1999.] (As effective from the 1st January, 1995 ) In India the Patents are protected and governed as per Patent Act 1970, which is further divided in a number of Sections. So lets see some important of them.

Sections under TPA,1970 : 

Sections under TPA,1970 Section 2 : This section includes the definitions of some important terms included in the Act as: a."assignee" includes the legal representative of a deceased assignee and references to the assignee of the legal representative or assignee of that person; b. "Controller" means the Controller General of Patents, Designs and Trade Marks . c."exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and "exclusive licensee" shall be construed accordingly: d. "food" means any article of nourishment and includes any substance intended for the use of babies, invalids or convalescents as an article of food or drink;

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e."invention" means any new and useful- (i) art, process, method or manner of manufacture; (ii) machine, apparatus or other article; (iii) substance produced by manufacture, f. "legal representative" means a person who in law represents the estate of a deceased person; g. "medicine or drug" includes- (i). all medicines for internal or external use of human beings or animals, (ii). all substances intended to be used for or in the diagnosis, treatment, mitigation or prevention of diseases in human beings or animals, (iii). all substances intended to be used or in the maintenance of public health, or the prevention or control of any epidemic disease among human beings or animals, (iv). insecticides, germicides, fungicides, weedicides and all other substances intended to be used for the protection or preservation of plants, (v). all chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances above referred to; h."patent agent" means a person for the time being registered under this Act as a patent agent; i."patented article" and "patented process" mean respectively an article or process in respect of which a patent is in force; j. "patentee" means the person for the time being entered on the register as the grantee or proprietor of the patent;

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What is an Invention ? Invention is a successful technical solution to a technical problem To be granted a Patent, An invention must be new, non-obvious and capable of industrial application

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INVENTIONS NOT PATENTABLE What are not inventions Naturally occurring substances/elements; Diagnostic, therapeutic and surgical methods of treatment of humans or animals; Plants and animals other than μ-organisms; Essentially biological processes for production of plants or animals; Inventions whose use is contrary to public order or morality. Ideas, methods for business, playing games, performing mental acts. A method of agriculture or horticulture;

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Inventions relating to atomic energy are also not patentable Inventions where only methods or processes of manufacture patentable In the case of inventions- a. Claiming substances intended for use, or capable of being used, as food or as medicine or drug, or b. Relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi-conductors and inter-metallic compounds),

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A patent is a Monopoly Right granted For an invention By the government To the inventor or his assignee For a limited period of time It is valid within the country of grant. What is Patent ?

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Patent Grant Procedure (In Brief) Filing of PATENT APPLICATION EXAMINATION & NOVELTY SEARCH ACCEPTANCE OR REFUSAL NOTIFICATION OF “ACCEPTANCE” IN THE GAZETTE OF INDIA (part III section 2) OPPOSITION (if any) GRANT OF A PATENT

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APPLICATIONS FOR PATENTS Persons entitled to apply for patents – true and first inventor of the invention assignee of the person claiming to be the true and first inventor the legal representative of any deceased person who immediately before his death was entitled to make such an application. Form of application – Separate forms for separate inventions. Assignment letter or declaration letter by the applicant in case the applicant is an assignee or declared to be the true or first inventor. Every application is accompanied by a provisional or complete specification Various types of Patent Application in India : Ordinary application. Convention application. PCT International application. PCT National phase application. Application for patent od addition. Divisional application.

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Ordinary Application: An application made in the patent office without claiming any priority of application made in a convention country. Convention Application: An application made to patent office with an application claiming priority date based on a similar application filed in one of the convention country. PCT International Application : PCT is an international filing system for patents in which the applicant gains international filing date in all the designated countries conferring the late entry(upto 31 months) to the national offices without affecting the priority date. This is a simple and economic procedure for those seeking protection in many countries. Indian patent office is a receiving office for international applications by nationals of india. PCT National Phase application: An international application made according to Patent Cooperation Treaty designating India can enter national phase within 31 months from the international filing dates. This application filed before the Controller in the Indian Patent office claiming the priority and international filing date is called PCT National Phase application. It is not mandatory for the applicant to submit the documents while entering the national phase for filing the application in the designated or elected countries.

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Application for Patent of Addition: When an applicant feels that he has an invention, which is a slight modification on the invention for which he has already applied for/ have patent protection in India the applicant can go for a patent of addition. No need to pay separate renewal fee for this application during the term of main patent. Divisional Application: When the application made by an inventor claims more than one invention, the applicant on his own request or to meet the official objections raised by the controller may divide the parent application into two or three applications as applicable. The priority date of the divisional applications shall be the same as that of the parent one. Specifications and Drawings : The provisional specification/ complete specification is required to be submitted. Its should contain Title of the invention The name, the address and the nationality of each of the applicants. A preamble to the description.

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Complete description should start from next page followed by date and signature. Shall contain the claims for which protection is required. Abstract should be included in the next page after date and signature. Drawings if any, referred in the specification can be attached to the specification thereafter. Provisional Specification(PS) : Not a rough draft or skeleton of complete specification. The complete specification(CS) , which follows PS does not replaces the PS. Both are permanent independent documents essentially contains the title and description of the invention and shall start with a preamble, “ The following specification describes the nature of the invention”, Claims are not included in the PS. After preamble there should be set forth: The object of the invention. A statement of the principle or discovery underlying the invention and A general statement of the actual invention. An application with PS is conditional that Complete specifications shall be filed within 12 months. However PS can not be filed if application is- -a divisional application. -a conventional application.or -an application. Filed under PCT designating India. In above cases a complete specification is required to be submitted.

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Complete Specification (CS): Every complete specification shall- a. Fully and particularly describe the invention and its operation or use and the method by which it is to be performed; b. Disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and c. End with a claim or claims defining the scope of the invention for which protection is claimed. Contents of specifications : It shall include description of following headings in not more than 30 pages. 1.Title – Should give fair indication of the art or industry to which invention relates, should be precise, brief and should not include fancy expressions. Objectionable-Fancy words” Wash well soap”, abbreviations “etc”. Non-Objectionable- Improved folding chairs, “filaments for electric lamps” etc. 2. Field of the invention – Example “ This invention relates to Biotechnology” etc. 3. State of the art in the field – This part should indicate the status of the technology in the field of invention with reference to experiments going on in the field, patents and pending patent applications in the specific art with emphasis on the ‘prior art’ relevant to the invention. 4.Object of the invention ( Problem & Solution ) – It shall say clearly the technical problems associated with the existing technology and the solution for that bringing out the obivious difference between the claimed invention and the prior art.

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5.Statement of invention – Statement should clearly set forth the distinguishing novel features of the invention for which protection is desired. 6.Detailed description of the invention with reference to the drawings. 7. Scope of the invention – This should contains the advantages of the invention and preferable industrial applicability and use. 8.Claims – The description in the CS should be followed by a clear and succinct statement of “Claims” preceded by the prescribed preamble, “ I claim”, “we claim” as the case may be. The object of the statement of claims is to show with consciousness, precision and accuracy as to how much of what is described in the specification has been sought the protection so that what is not claimed is open to public use. 9.Drawings – CS should be followed by Drawings that are referred in the specification. Should be filed in standard A4 sheet in duplicate, preferably drawn in black Indian indelible ink on thick and durable white paper with margin of 2.5cm on each side. At left hand top corner- the name of applicant should be written. Total number of sheets should be mentioned on the right top corner.

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Patent Grant Procedure Filing of patent application Request for examination Examination: Grant or Refusal Early Publication Decision By Controller Publication after 18 months Publication of Grant of patent Post Grant Opposition to grant of patent (Constitution of Opposition Board) Pre Grant Opposition / Representation by any person.

EXAMINATION OF APPLICATIONS : 

EXAMINATION OF APPLICATIONS When the complete specification has been led in respect of an application for a patent, the application and the specification relating thereto shall be referred by the Controller to an Examiner for making a report to him in respect of the following matters, namely:- a. Whether the application and the specification relating thereto are in accordance with the requirements of this Act and of any rules made there under; b. Whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application; c. The result of investigations made under section 13; and d. Any other matter which may be prescribed. (2) The Examiner to whom the application and the specification relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within a period of eighteen months from the date of such reference

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Acceptance of complete specification Subject to the provisions of section 21, the complete specification filed in pursuance of an application for a patent may be accepted by the Controller at any time after the applicant has complied with the requirements mentioned in sub-section (1) of that section, and, if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter: Provided that the applicant may make an application to the Controller in the prescribed manner requesting him to postpone acceptance until such date [not being later than eighteen months from the date on which the objections referred to in sub-section (1) of section 21 are forwarded to the applicant] as may be specified in the application, and, if such application is made, the Controller may postpone acceptance accordingly Advertisement of acceptance of complete specification On the acceptance of a complete specification, the Controller shall give notice thereof to the applicant and shall advertise in the Official Gazette the fact that the specification has been accepted, and thereupon the application and the specification with the drawings (if any) filed in pursuance thereof shall be open to public inspection. Effect of acceptance of complete specification On and from the date of advertisement of the acceptance of a complete specification and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement of acceptance of the complete specification: Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.

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Publication and Examination of Applications: Publication Immediately on receiving the application patent office accords an application number to it such that the applications filed in a year constitute a series identified by the year of such filing. PCT National Phase applications constitutes a different series. All the applications will be screened to categorize the invention to the respective field of technology and to find whether the invention is relevent for defense purposes etc, so that the necessary procedures can be initiated in respect of those files tested positive. The particulars of publication are – Date of application. Number of the application. Name of the applicant. Address of the applicant. Abstract of the invention. This publication will be identified by the letter ‘A’ along with the number of the application.

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Also the publication will have the following effects: 1.The depository institution will make the biological material (mentioned in the specification) available to the public. 2.The patent office will make the specification and drawings available to the public in payments of the prescribed fee. 3.The applicant shall have like privileges and rights as if a patent for the invention had been granted from the date of grant. 4.The applications will be taken up for the examination only on the request in Form made after the publication of the application ( within 36 months from the date of priority or from the date of filing whichever is earlier) by the applicant or the person interested with the prescribed fees Advantages of the Deferred Examination: 1.By making an application for the patent, applicant obtains date of patent and hence priority also without paying the fee for examination. 2.Inventor/ applicant gets recognized as the owner of the invention because of 18 month publication even if application is not examined.

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3.Request for examination can be delayed up to 36 months so that the applicant can obtain financial support to exploit invention. 4.A person who is interested in the commercial values of the invention can request for the examination and get the patent licensed later on by consulting the applicant. 5.If the applicant wishes he can withdraw the application before ’15 months’ to prevent the publication so that its novelty will not be lost. Request for examination Request for examination can be made only after publication and within 36 months from the date of filing or date of priority of the application whichever is earlier. In respect of applications filed before the first day of Jan 2005 the request should be made within a period of 48 months from the date of filing of the application. If no request fro examination is made within the prescribed period the application will be treated as withdrawn. The applicant can withdraw his application any time before grant. Examination of Applications Applications will be taken up for examination according to the order in which request is made. The Controller refers the application to an examiner whether the application, specification and other documents related thereto are in compliance of the Act and Rules. The examiner has to make a report to the controller within a period of 1 month from the date of such reference. This report is called First Examination Report (FER).

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Substantive / Technical Examination Technical and legal matters mainly include the exploration of the following : Whether the subject matter is an invention within the meaning of standard mikes based on the criteria of Novelty, inventive step and industrial applicability. Whether the invention is one, which is not patentable under other sections. Whether the specification complies with the requirements of the desired section. The examination of the application proceeds in the following order: 1.Understanding of the invention. 2.Assessment of the patentability of the subject matter. 3.Assessment of the sufficiency of disclosure. 4.Check for unity of invention. 5.Appraisal of Industrial applicability. 6.Classification of the invention. 7.Determination of priority of each claim. 8.Novelty search. 9.Determination of the inventive step. 10.Judgment of the validity of the claims.

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Indian Patent Act requires Relative Novelty ( not absolute novelty ) for the inventions to be patentable. Therefore, the examiner should search whether the invention claimed in any claim of complete specification has been anticipated by any of the following documents for the purpose of judging the novelty and inventive step of the invention. 1.Indian Patent specifications published before the date of filling of the application but on or after 01.01.1912. 2.Indian patent specifications which are filed before the date of filling of the present case or claiming a priority date earlier to the said date, but the application of that document was effected on or after the date of filing. 3.Any publication in India or elsewhere effected before the filing date. 4.Indian patent specifications published before the date of filing but on or after the priority date of the application under consideration. The list of objections in the report ( First Examination Report ) made by the examiner will be communicated to the applicant. If any of the objections requires amendment of the application, specification or drawings to ensure the compliance with the provisions of the Act or the Rules, they will be returned to the applicant along with the FER. There can be many correspondances between the examiner and the applicant after the issue of FER. However the time for meeting the objections and putting the application in order is 6 months from the date of issue of FER.

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Grant of Patent The patent may be granted by the Controller at any time, but as soon as possible after the applicant has met with all the official requirements within the period of six months from the date of FER or within the extended period not exceeding 3 months. There is no need to make the request for Grant separately.

Rights conferred to a patentee : 

Rights conferred to a patentee As per section 48 of the Patent Act 1970, a patentee can exploit following rights : To exploit patent by manufacturing and marketing it.( Sec-47-48) To License the patent to another person ( Sec-70). To assign the patent to another (Sec-70). To surrender the patent ( Sec-63). To sue for the infringement of patent. Exceptions : Act provides certain limits on exercise of rights as follows : Government use of patent (Sec-99,100,103, not more than 4 % royalty) Compulsory license and licenses of rights ( Sec-84). Use of invention for defense purposes. Revocation for non-working patents. Limitations on restored patents.

Patent Agents or patent attorney : 

Patent Agents or patent attorney For becoming a Patent agent following qualification is needed : Must be an Indian citizen. Age : Above 21 Years. Possess a degree in science, technology or engineering from any recognized Indian university. An advocate or any person having min. 10 yr. experience as examiner or controller. Must pass a qualifying exam conducted by Patent Authority for the purpose. Rights conferred to a Patent agent : Practice before Controller. Prepare all docs, transact all business and discharge such other functions as prescribed by the Controller. Authorized to sign all docs, and communications on behalf of the person concerned.

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An indication used to identify agricultural, natural or manufactured goods originating from a definite territory in India. It should have a special quality or characteristics or reputation based upon the climatic or production characteristics unique to the geographical location. Examples of Geographical Indications in India are Darjeeling Tea, Kanchipuram Silk Saree, Alphonso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia, etc. Any association of persons, producers, organization established by or under the law can apply representing & protecting the interests of the producers. The registration of a Geographical Indication is for a period of ten years. Renewal is possible for further periods of 10 years each. A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises. Whereas a Geographical Indication is used to identify goods having special characteristics originating from a definite geographical territory. Geographical Indication :

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TRIPS provisions- For reciprocal protection ;protection in the country of origin is must. India did not have such protection with regard to Geographical indication. Result – cases like Turmeric, Neem and Basmati. To cover up such situation – Geographical Indication of Goods (Registration and Protection) Act 1999 , passed. The salient features are:- Maintenance of register of G.I in two parts – Part A & Part B through computer. Prohibition of registration of certain geographical indications. Taking infringement action – by registered proprietor / registered user. Prohibition of assignment etc. – being public property. Prohibition of registration of G.I as Trade Mark. Appeal against Registrar’s decision to IP Board established under the Trade Mark legislation.

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Protection Of Intellectual Property In India (Patents, Designs, Trade Marks & Copyrights) Sr.JOINT CONTROLLER OF PATENTS AND DESIGNS JOINT REGISTAR OF TRADEMARKS MINISTRY OF COMMERCE AND INDUSTRY MINISTRY OF HUMAN RESOURSE DEVELOPMENT DEPT. OF INDUSTRIAL POLICY & PROMOTION DEPT. OF EDUCATION CONTROLLER GENERAL OF PATENTS, DESIGNS & TRADE MARKS PATENT OFFICE TRADE MARKS REGISTRY COPYRIGHT OFFICE REGISTAR OF COPYRIGHT GIR

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Indian Patent Administration PATENT OFFICE HEADOFFICECALCUTTA PIS (NAGPUR) PATENT OFFICE (MUMBAI) PATENT OFFICE (CHENNAI ) PATENT OFFICE (NEW DELHI ) JURISDICTION WEST ZONE JURISDICTION SOUTH ZONE JURISDICTIONNORTH ZONE TMR (BOMBAY) TMR AHMDBD TMR DELHI TMR CALCUTTA TMR CHENNAI GIR

Infringement of patent and penalties : 

Infringement of patent and penalties If somebody other than patentee or its assignee infringes the rights of patent either by making, selling, falsely claiming any royalty and take unlawful advantage of a patented article or any unauthorized or unregistered patent agent claims himself as authorized then there are subsequent penalties for every case. A patentee can file an FIR against the infringer in a court not below the district court and the proceedings of the case depend upon the type of case, extent of infringement and the type of patented products. Examples: Practice by non-registered patent agents- punishable with fine which may extend to five hundred rupees in the case of a first offence and two thousand rupees in the case of a second or subsequent offence. Wrongful use of words "patent office" -imprisonment for a term which may extend to six months, or with fine, or with both . Unauthorized claim of patents rights-If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to five hundred rupees

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TRIPs : Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) WTO formulated the blue prints of TRIPs in 1986 in order to have a uniform patent regime in 147 member countries and to secure the trade among these countries. The TRIPs Patent systems is based upon a joint statement presented by the multinational associations of USA, Europe and Japan to the GATT Secretariat in June 1988 during the Uruguay Round Negotiations. The main features of the TRIPs patent systems are as follow: TRIPs provide for a patent protection for any inventions whether products or processes in all fields of technology provided that they are new, involve an inventive step and are capable of industrial application. The foreign patent holders have been absolved from working of their patents and imports by them to enjoy the same patent rights without discrimination as to the place of invention, field of technology and whether the products are imported or locally produced. The term of all patents shall not end before the expiration of 20 years from the date of application. There is no licensing of right provision. The compulsory license provisions are having tight conditionality with constraints for exports. The is no royalty ceiling for compulsory licenses. The royalty payment is based on the economic value of the license.

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Until 1989, India opposed IPR policies in GATT but following facts pushed India to follow TRIPs Agreement. The reasons behind India’s interest in the TRIPs were: US pressure – Restrictions on Indian food exports Liberalization – early 1990s Both Congress and BJP favoring globalization in late 1990s Need for FDI Indian companies becoming stronger – demand patents for security in the international market. Industry bodies lobbying for patents CSIR supporting patents The above facts are responsible for the TRIPs Agreement acceptance by India and the above features of TRIPs have been implemented in the amending process of our Patent Act 1970. Despite strong opposition from civil society, in 1994 India signed the General Agreement on Trade and Tariffs (GATT) and became in 1995 party to the nascent WTO TRIPS Agreement By way of TRIPS, India acquired new, far-reaching international obligations on the protection of all types of intellectual property rights that would require modifications to its patent regime by 2005.

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Main Amendments to the Patents Act of 1970 1999 Amendment: Provisions for filing applications for product patents in fields of drugs/medicine Granted Exclusive Marketing Rights (EMR) on those products. 2002 Amendment: Defined “invention” as “ a new product or process involving an inventive step and are capable of industrial application” where “inventive step” means “ a feature that makes the invention not obvious to the person skilled in the art” Allowed deffered examination. Created 18 months publication after filing. Defined 20-year patent term from date of filing. Allowed PCT application filing. Reversed the burden of proof for process patent infringement and imposed this burden on the defendant. Prohibited foreign filing without written permission from Indian Government. Established Intellectual Property Appellate Board in Chennai. Allowed grant of compulsory license after three year of grant if Patent is not “worked” in India. Reasonable requirements of the public are not satisfied. The patented invention is not available to the public at affordable prices. Created Bolar Provision- Acts of making, constructing, using patented invention for development and for submission of information under any law does not constitute infringement.

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2005 Amendment: 20 Year term for Product patent : Grants protection to products patents in all fields of technology (chemical, food, drug, agrochemical and pharmaceuticals). “Inventive step” means a feature of an invention that involves technical advance or economic significance or both that makes the invention not obvious to the person skilled in the art. “New invention” means 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 the patent application with complete specifications i.e. the subject matter has not fallen in public domain or that it does not form the part of the state of the art. “Pharmaceutical substance” means any new entity involving one or more inventive steps. Fully in compliance with TRIPS Time limit for requests for examination decreased from 48 to 36 months Compulsory licensing provisions For the manufacture and export of pharma products to any country with insufficient or no manufacturing capacity of its own to address public health problems Time frame for examination amended Attempt to speed up process for reviewing and examining patents

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References : 1.Law relating to Intellectual Property by Dr.B.L.Wadhera. 2.The Indian Patent Act 1970. 3. Internet websites www.ipindia.nic.in www.ipindiaonline.gov.in www.iprlawindia.org www.patentoffice.nic.in www.wipo.int Special Thanks to : Mr. Darshan Lal Lecturer (DRA/IPR) Rameesh Institute of Vocational and Technical Education Greater Noida