THE PATENTS ACT,1970

(as amended in 2005)

By-Group 6 (Sec. B)

INTRODUCTION• The Uruguay Round ( or the last GATT

Round) created an Organization called WTO on Jan1,1995 to resolve trade disputes among member countries.

• The Uruguay agreement required the member countries to enter into an agreement on Intellectual Property Rights to establish a common scheme of protection to be given by all member countries. The agreement was called TRIPs.

• It covered Patents, Copyrights, Trademarks, Designs and Geographical Indications.

The Patents Act , 1970

• The Act contains XXIII Chapters which are related to patenting procedures , International Arrangement and other miscellaneous matters.

• The Act is regulated by Patents Rules (as amended in 2006) which contains information regarding , fees , forms etc.

• Under this Act, the Govt. of India is also authorized to make rules for carrying out the purposes of the Act.

WHAT IS A PATENT ?

• Patent is a grant or right to exclude others from making, using or selling one's invention and includes right to license others to make, use or sell it.

• It is an official document conferring a right to an inventor for a term of years to make, use and sell his invention or the monopoly or right so granted.

WHAT IS AN INVENTION ?•Invention means any new and useful-(I) art, process, method or manner of manufacture;(ii) machine, apparatus or other article;(iii) product produced by manufacture;and includes any new and useful improvement of any of them.

•The new product or process involves an “inventive step” which means, a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art .

•Thus, for an invention to get patent rights , it should fulfil three prerequisites-NoveltyNon-obviousnessUsefulness

SINGLE INVENTIVE STEP

• A single invention or a group of invention can be linked to form a single inventive step

• A single inventive step may give rise to a number of independent claims

• Where a group of inventions is claimed under one application, the requirement of unity of invention is fulfilled only when there is a technical relationship among these inventions

WHO CAN BE A PATENTEE ?

• Persons entitled to apply for patents-True and first inventorHis / Her AssigneeLegal Representative of deceased inventor

assigneeAny Partnership , Company , AOP , BOI

NON-PATENTABLE ITEMS• INVENTIONS RELATING TO ATOMIC ENERGY No patent shall be granted in respect of an invention relating to

atomic energy falling within section 20(1) of the Atomic Energy Act, 1962

• THINGS THAT ARE NOT INVENTIONS Things obviously contrary to established natural laws Mere discovery of scientific principle, new property, new use of a

known substance Which causes serious prejudice to human , animal , plant life or

environment Discovery of micro organism , mineral or natural gas A method of agriculture or horticulture Any process for the medical treatment of human beings , animals or

plants to make them disease free

NON-PATENTABLE ITEMS CONTD. any mathematical , business method , computer program or

algorithms any literary, dramatic, musical or artistic work , aesthetic

creation , cinematographic works or television productions an invention which is a traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known component or components

a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components or a process for producing such substance

the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

IMPORTANT AMENDMENTS

• Patent right can be claimed on a Product or a Process. For e.g. Antibiotic is a product and its preparation is a chemical process.

• But, prior to 2005 Amendment of Patent Act, in India an individual could claim patent for process only and not product. Reason-industrial development , affordable price , reverse engineering esp. in the pharmaceutical industry.

• Certain products which could not claim patent were- food, medicine, alloys , optical glass, semi-conductors and inter-metallic compounds

IMPORTANT AMENDMENTS

• Due to the intervention of GATT , the distinction between product and process was done away with w.e.f. January 1 , 2005.

• Earlier seeds and organisms could not be patented, but after TRIPs recommendations India enacted a separate Act-Biological Diversity Act , 2002 to protect the rights of breeders and innovators of new forms of seeds and plants.

• Prior to Jan.,2005 Amendment , patent right was conferred for 14 years . But, now it has been raised to 20 years.

GRANT OF PATENT PROCESS

WORKING OF PATENTCOMPULSORY LICENSING• Prior to 2005 Amendments , a patentee was given a 3-year period

to put the invention into use.• If during this time ‘reasonable requirements of the public are not

satisfied or the prices charged are unreasonable’ , then the Controller of Patents on the application by the CG would endorse the remark ’ Licences of Right’ against the invention in the register and advertise it in the official gazette.

• For products like food , drug and medicines , Licences of Right was deemed endorsed after the expiry of 3 years.

• But, as per TRIPs recommendations, there has been significant changes made regarding compulsory licensing by the 2002 Amendment.

INTERNATIONAL ARRANGEMENTS

• Chapter XXII of the Act provides international arrangement with countries outside India

• This arrangement grants the patentee-citizen of that country to have similar rights and privileges as are granted to the patentee-citizen of India . E.g. India is member of the Paris Convention .

• Accordingly , the Central Govt. declares in the Official Gazette such country to be a convention country for the purpose of this Act.

SUITS & APPEALS

• Suits concerning infringement of patent shall be file in District Court.

• But , if the counter claim for revocation of patent is made by the defendant , then the suit shall be transferred to the High Court.

• Appeals can be filed against the decision of the Controller of Patents to the Appellate Board formed by the Central Government.

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