About Authors:
Krunal Parikh1*, Mr. Maheshkumar Kataria2
(assistant professor, Department of pharmaceutics)
Seth G.L. Bihani S.D. College of Technical Education,
Institute of Pharmaceutical Sciences and Drug Research,
Sri Ganganagar, Rajasthan, INDIA
*Krunal_2922@yahoo.in
ABSTARCT :
The word Patent originated from the Latin Word "Patene" which means 'to open'. A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention.
Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any inventions, in all fields of technology, and the term of protection available should be the minimum twenty years. Different types of patents may have varying patent terms(i.e., durations).After 1972 The Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31 st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was subsequently replaced by the Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed. However, such applications were to be examined only after 31-12-2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in India, subject to full filment of certain conditions.
Reference Id: PHARMATUTOR-ART-1487
INTRODUCTION
The word Patent originated from the Latin Word "Patene" which means 'to open'. A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention.
Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any inventions, in all fields of technology, and the term of protection available should be the minimum twenty years. Different types of patents may have varying patent terms (i.e., durations).
If a person makes, what he thinks is an invention, he or if he works for an entity, that entity can ask the Government, by filing an application with the Patent Office to give him a certificate in which it is stated what the invention is and that he is the owner of it. Such a right conferred upon the inventor is called 'Patent' by which the inventor, more properly called as the Patentee, can make exclusive use of his invention.
Thus a patent is a monopoly right granted to a person who has invented a new and useful article or a new process of making an article.
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History of indian patent system |
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1856 |
The act vi of 1856 on protection of inventions based on the british patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturers for a period of 14 years. |
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1859 |
The act modified as act xv; patent monopolies called exclusive privileges (making. Selling and using inventions in india and authorizing others to do so for 14 years from date of filing specification). |
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1872 |
The patents & designs protection act. |
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1883 |
The protection of inventions act. |
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1888 |
Consolidated as the inventions & designs act. |
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1911 |
The indian patents & designs act. |
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1972 |
The patents act (act 39 of 1970) came into force on 20th april, 1972. |
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1999 |
On march 26, 1999 patents (amendment) act, (1999) came into force from 01-01-1995. |
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2002 |
The patents (amendment) act 2002 came into force from 20th may 2003 |
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2005 |
The patents (amendment) act 2005 effective from 1st january 2005 |
In India the Law relating to Patents is governed by the Patents Act 1970 along with the recent Amendment . The Indian Patents Act defines an invention as follows:
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 and includes any new & useful improvement of any of them and an alleged invention.Therefore, in order to be patentable, an invention must possess the following characteristics:
a) It should relate to a manner of manufacture.
b) The manner of manufacture should be novel.
c) It should be the outcome of inventive activity.
d) It should have utility.
e) It should not be contrary to law and morality.
The Indian Patents Act also lays down some norms as to which inventions are not patentable. Following inventions are not patentable:
a) An invention which is frivolous or which claims anything obvious or contrary to well established natural laws.
b) An invention, the primary or intended use of which would be contrary to any law or morality or injurious to public health.
c) The mere discovery of a scientific principle or the formulation of an abstract theory.
d) The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs atleast one new reactant.
]e) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
f) The mere arrangement or rearrangement or duplication of known devices each functioning independently of one another in a known way.
g) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
h) A method of agriculture or horticulture.
i) A process for the medical, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
j) An invention relating to atomic energy.
Brief about Indian Patent System
After 1972 The Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31 st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was subsequently replaced by the Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed. However, such applications were to be examined only after 31-12-2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in India, subject to full filment of certain conditions.
The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972
The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of 2005 ) on 4th April, 2005 which was brought into force from 1-1-2005.
THE PATENTS (AMENDMENT) ACT 1999.
The Patents Amendment Act 1999 was passed in March 1999 to confirm with these international obligations and has retrospective effect from 1st January 1995. This act was published in The Gazette of India, on Friday, March 26, 1999. As “ The Patent (Amendment) Act 1999, (No. 17 of 1999).
The main features of the amendments are as follows:
1. SHORT TITLE AND COMMENCEMENT.-
(1) This Act may be called the Patents (Amendment) Act, 1999.
(2) It shall be deemed to have come into force on the 1st day of January, 1995.
2. AMENDMENT OF SECTION 5.-
Section 5 of the Patents Act, 1970 (39 of 1970)(hereinafter referred to as the principal Act) shall be renumbered as sub-section (1) thereof and after sub-section (1) as so renumbered, the following sub-section shall be inserted, namely:-"(2) Not withstanding anything contained in sub-section (1), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as medicine or drug, except the medicine or drug specified under sub-clause (v) of clause (l) of sub-section (1) of section 2, may be made and shall be dealt, without prejudice to the other provisions of this Act, in the manner provided in Chapter IVA.".
3. INSERTION OF NEW CHAPTER IVA.-
After Chapter IV of the principal Act, the following Chapter shall be inserted, namely:
CHAPTER IVA- EXCLUSIVE MARKETING RIGHTS
24A. Application for grant of exclusive rights.-
(1)Notwithstanding anything contained in sub-section (1) of section 12, the Controller shall not, under that sub-section, refer an application in respect of a claim for a patent covered under sub-section (2) of section 5 to an examiner for making a report till the 31st day of December, 2004 and shall, where an application for grant of exclusive right to sell or distribute the article or substance in India has been made in the prescribed form and manner and on payment of prescribed fee, refer the application for patent, to an examiner for making a report to him as to whether the invention is not an invention within the meaning of this Act in terms of section 3 or the invention is an invention for which no patent can be granted in terms of section 4.
(2)Where the Controller, on receipt of a report under sub-section (1) and after such other investigation as he may deem necessary, is satisfied that the invention is not an invention within the meaning of this Act in terms of section 3 or the invention is an invention for which no patent can be granted in terms of section 4, he shall reject the application for exclusive right to sell or distribute the article or substance.
(3)In a case where an application for exclusive right to sell or distribute an article or a substance is not rejected by the Controller on receipt of a report under sub-section (1) and after such other investigation, if any, made by him, he may proceed to grant exclusive right to sell or distribute the article or substance in the manner provided in section 24B.
Explanation. It is hereby clarified that for the purposes of this section, the exclusive right to sell or distribute any article or substance under this section shall not include an article or substance based on the system of Indian medicine as in clause (e) of sub-section (1) of section 2 of the Indian Medicine Central Council Act, 1970 (48 of 1970) and where such article or substance is already in the public domain.
24B. Grant of exclusive rights.-
(1)Where a claim for patent covered under sub-section (2) of section 5 has been made and the applicant has,-
(a) where an invention has been made whether in India or in a country other than India and before filing such a claim, filed an application for the same invention claiming identical article or substance in a convention country on or after the 1st day of January, 1995 and the patent and the approval to sell or distribute the article or substance on the basis of appropriate tests conducted on or after the 1st day of January, 1995, in that country has been granted on or after the date of making a claim for patent covered under sub-section (2) of section 5; or
(b) where an invention has been made in India and before filing such a claim, made a claim for patent on or after the 1st day of January, 1995 for method or process of manufacture for that invention relating to identical article or substance and has been granted in India the patent there for on or after the date of making a claim for patent covered under sub-section (2) of section 5,
and has received the approval to sell or distribute the article or substance from the authority specified in this behalf by the Central Government, then, he shall have the exclusive right by himself, his agents or licensees to sell or distribute in India the article or the substance on and from the date of approval granted by the Controller in this behalf till a period of five years or till the date of grant of patent or the date of rejection of application for the grant of patent, whichever is earlier.
(2)Where, the specifications of an invention relatable to an article or a substance covered under sub- section (2) of section 5 have been recorded in a document or the invention has been tried or used, or, the article or the substance has been sold, by a person, before a claim for a patent of that invention is made in India or in a convention country, then, the sale or distribution of the article or substance by such person, after the claim referred to above is made, shall not be deemed to be an infringement of exclusive right to sell or distribute under sub-section (1):
Provided that nothing in this sub-section shall apply in a case where a person makes or uses an article or a substance with a view to selling or distribute the same, the details of invention relatable thereto were given by a person who was holding an exclusive right to sell or distribute the article or substance.
24C. Compulsory licenses.-
The provisions in relation to compulsory licenses in Chapter XVI shall, subject to the necessary modifications, apply in relation to an exclusive right to sell or distribute under section 24B as they apply to, and in relation to, a right under a patent to sell or distribute and for that purpose the following modifications shall be deemed to have been made to the provisions of that Chapter and all their grammatical variations and cognate expressions shall be construed accordingly, namely:
(a)throughout Chapter XVI,
(i) working of the invention shall be deemed to be selling or distributing of the article or substance;
(ii) references to "patents" shall be deemed to be references to "right to sell or distribute";
(iii) references to "patented article" shall be deemed to be references to "an article for which exclusive right to sell or distribute has been granted";
(b)three years from the date of sealing of a patent in section 84 shall be deemed to be two years from the date of approval by the Controller for exclusive right to sell or distribute under section 24B;
(c)the time which has elapsed since the sealing of a patent under section 85 shall be deemed to be the time which has elapsed since the approval by the Controller for exclusive right to sell or distribute under section 24B;
(d)clauses (d) and (e) of section 90 shall be omitted.
24D. Special provision for selling or distribution.-
(1) Without prejudice to the provisions of any other law for the time being in force, where, at any time after an exclusive right to sell or distribute any article or substance has been granted under sub-section (1)of section 24B, the Central Government is satisfied that it is necessary or expedient in public interest to sell or distribute the article or substance by a person other than a person to whom exclusive right has been granted under sub-section (1) of section 24B, it may, by itself or through any person authorized in writing by it in this behalf, sell or distribute the article or substance.
(2) The Central Government may, by notification in the Official Gazette and at any time after an exclusive right to sell or distribute an article or a substance has been granted, direct, in the public interest and for reasons to be stated, that the said article or substance shall be sold at a price determined by an authority specified by it in this behalf.
24E. Suits relating to infringements.-
All suits relating to infringement of a right under section 24B shall be dealt with in the same manner as if they were suits concerning infringement of patents under Chapter XVIII.
24F. Central Government and its officers not to be liable.-
The examination and investigations required under this Chapter shall not be deemed in any way to warrant the validity of any grant of exclusive right to sell or distribute, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.''.
4. OMISSION OF SECTION 39.-
Section 39 of the principal Act shall be omitted.
5. AMENDMENT OF SECTION 40.-
In section 40 of the principal Act, the words and figures "or makes or causes to be made an application for the grant of a patent outside India in contravention of section 39" shall be omitted.
6. AMENDMENT OF SECTION 64.-
In section 64 of the principal Act, in sub-section (1), in clause (n), the words and figures "or made or caused to be made an application for the grant of a patent outside India in contravention of section 39" shall be omitted.
7. AMENDMENT OF SECTION 118.-
In section 118 of the principal Act, the words and figures "or makes or causes to be made an application for the grant of a patent in contravention of section 39" shall be omitted.
8. INSERTION OF NEW SECTION 157A.-
After section 157 of the principal Act, the following section shall be inserted, namely:-
"157A. Protection of security of India.-Notwithstanding anything contained in this Act, the Central Government shall,-
(a) not disclose any information relating to any patentable invention or any application relating to the grant of a patent under this Act, which it considers prejudicial to the interest of security of India;
(b) take action including the revocation of any patent which it considers necessary in the interest of security of India:
Provided that the Central Government shall, before taking any action under this clause, issue a notification in the Official Gazette declaring its intention to take such action.
Explanation.- For the purposes of this section, the expression "essential security of India" means any action necessary for the security of India which-
(i) relates to fissionable materials or the materials from which they are derived; or
(ii) relates to the traffic in arms, ammunition and implements or war and to such traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment; or
(iii) Which is taken in time of war or other emergency in matter of international relations.".
9. REPEAL AND SAVINGS.-
(1) The Patents (Amendment) Ordinance, 1999 (Ord. 3 of 1999), is hereby repealed
(2) Notwithstanding such repeal, anything done or any action taken under the principal Act, as amended by the Patents (Amendment) Ordinance, 1994 (Ord. 13 of 1994), which ceased to operate, or under the Patents (Amendment) Ordinance, 1999 (Ord. 3 of 1999), shall be deemed to have been done or taken under the corresponding provisions of the principal Act, as amended by this Act.
(3) All applications made in respect of claims for patent of invention specified under sub-section (2) of section 5 of the principal Act, from the date of cesser of the Patents (Amendment) Ordinance, 1994 (Ord. 13 of 1994) till the date on which this Act received the assent of the President (both days includive) shall be deemed to have been validly made as if the provisions of the principal Act, as amended by this Act, had been in force at all material times.(The Patent Amendment act 1999 (No. 17 of 1999), The Gazette of India, Part-II, section-I, Ministry of law, justice and company affairs,(Legislative Department). New Delhi, 26th March, 1999.)
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THE PATENTS (AMENDMENT) ACT, 2002
This act was published in The Gazette of India, on Tuesday, June 25, 2002. As “ The Patent (Amendment) Act 2002, (No. 38 of 2002). By SUBHASH C. JAIN, Secy. to the Govt. of India.
The main features of the amendments are as follows:
1. SHORT TITLE AND COMMENCEMENT.-
(1) This Act may be called the Patents (Amendment) Act, 2002.
(2) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint; and different dates may be appointed for different provisions of this Act and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.
2.SUBSTITUTION OF CERTAIN WORDS FOR THE WORDS "HIGH COURT" AND "COURT".-
In the Patents Act, 1970 (39 of 1970) (hereinafter referred to as the principal Act), for the words "High Court" wherever they occur in sections 21, 43 and 71 and the word "Court" occurring in sections 21 and 71, the words "Appellate Board" and "Board" shall respectively be substituted.
3. AMENDMENT OF SECTION 2.-
In section 2 of the principal Act, in sub-section (1),- (a) for clause (a), the following clauses shall be substituted, namely:- '(a) "Appellate Board" means the Appellate Board referred to in section 116; (ab) "assignee" includes an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person; (ac) "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry;'; (b) for clause (d), the following clause shall be substituted, namely:- '(d) "convention country" means a country or a country which is member of a group of countries or a union of countries or an Inter-governmental organisation notified as such under sub-section (1) of section 133(c) for clause (g), the following clause shall be substituted, namely:- '(g) "food" means any article of nourishment for human consumption and also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink;'; (d) in clause (i),- (i) in sub-clause (i), for the words "Union territory of Delhi", the words "National Capital Territory of Delhi" shall be substituted; (ii) for sub-clause (ii), the following sub-clause shall be substituted, namely:- "(ii) in relation to the State of Arunachal Pradesh and the State of Mizoram, the Gauhati High Court (the High Court of Assam, Nagaland, Meghalaya, Manipur, Tripura, Mizoram and Arunachal Pradesh);"; (iii) in sub-clause (v), for the words "Union territory of Goa, Daman and Diu", the words "State of Goa, the Union territory of Daman and Diu" shall be substituted; (e) after clause (i), the following clause shall be inserted, namely:- '(ia) "international application" means an application for patent made in accordance with the Patent Cooperation Treaty;'; (f) for clause (j), the following clauses shall be substituted, namely:- '(j) "invention" means a new product or process involving an inventive step and capable of industrial application; (ja) "inventive step" means a feature that makes the invention not obvious to a person skilled in the art;'; (g) for clause (m), the following clause shall be substituted, namely:- '(m) "patent" means a patent granted under this Act;'; (h) after clause (o), the following clause shall be inserted, namely:- '(oa) "Patent Cooperation Treaty" means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time ; ' ; (i) for clause (u), the following clause shall be substituted, namely:- '(u) "prescribed" means,- (A) in relation to proceedings before a High Court, prescribed by rules made by the High Court; (B) in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board; and (C) in other cases, prescribed by rules made under this Act.'.
4. AMENDMENT OF SECTION 3.-
In section 3 of the principal Act,- (a) for clause (b), the following clause shall be substituted, namely:- ''(b) an invention the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;"; (b) in clause (c), after the words "an abstract theory", the words "or discovery of any living thing or non-living substance occurring in nature" shall be inserted; (c) clause (g) shall be omitted; (d) in clause (i),- (i) after the word "prophylactic", the words "diagnostic, therapeutic" shall be inserted; (ii) the words "or plants" shall be omitted; (e) after clause (i), the following clauses shall be inserted, namely:- "(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; (k) a mathematical or business method or a computer programme per se or algorithms; (l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (m) a mere scheme or rule or method of performing mental act or method of playing game; (n) a presentation of information; (o) topography of integrated circuits; (p) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.".
5. AMENDMENT OF SECTION 5.-
In section 5 of the principal Act, after sub-section (2), the following Explanation shall be inserted, namely:- 'Explanation.-For the purposes of this section, "chemical processes" includes biochemical, biotechnological and microbiological processes.'.
6. AMENDMENT OF SECTION 7.-
In section 7 of the principal Act, after sub-section (1), the following sub-section shall be inserted, namely:- "(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India, shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.".
7. AMENDMENT OF SECTION 8.-
In section 8 of the principal Act,-
(a) in sub-section (1),- (i) in the opening portion, after the words "he shall file along with his application", the words "or subsequently within such period as the Controller may, for good and sufficient reasons, allow" shall be inserted; (ii) for clause (a), the following clause shall be substituted, namely:- "(a) a statement setting out detailed particulars of such application; and"; (iii) in clause (b), for the words "details of the nature referred to in", the words "detailed particulars as required under" shall be substituted;
(b) for sub-section (2), the following sub-section shall be substituted, namely:-
"(2) At any time after an application for patent is filed in India and till the grant of patent or refusal to grant of patent is made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish information available to him to the Controller within thirty days from the date of receipt of the communication requiring such furnishing of information or within such further period as the Controller may, for good and sufficient reasons, allow.".
8. AMENDMENT OF SECTION 10.-
In section 10 of the principal Act,-
(a) in sub-section (4), after clause (c), the following clause shall be inserted, namely:- "(d) be accompanied by an abstract to provide technical information on the invention: Provided that- (i) the Controller may amend the abstract for providing better information to third parties; and (ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an authorized depository institution as may be notified by the Central Government in the Official Gazette and by fulfilling the following conditions, namely:- (A) the deposit of the material shall be made not later than the date of the patent application in India; (B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution; (C) access to the material is available in the depository institution only after the date of the application for patent in India or if a priority is claimed after the date of the priority; (D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.";
(b) after sub-section (4), the following sub-section shall be inserted, namely:- "(4A) In case of an international application designating India,- (i) the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act; and (ii) the filing date of the application and its complete specification, processed by the patent office as designated office or elected office, shall be the international filing date accorded under the Patent Cooperation Treaty.";
(c) for sub-section (5), the following sub-section shall be substituted, namely:-
"(5) The claim or claims 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, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.".
9. AMENDMENT OF CHAPTER IV.-
In Chapter IV of the principal Act,-
(a) for the Chapter heading "EXAMINATION OF APPLICATIONS", the following Chapter heading shall be substituted, namely:- "PUBLICATION AND EXAMINATION OF APPLICATIONS"; (b) before section 12, the following sections shall be inserted, namely:-
"11A. Publication of applications.- (1) Applications for patents shall not be open to the public for a period of eighteen months from the date of filing or date of priority, whichever is earlier.
(2) Except when a secrecy direction is given under section 35, every application for a patent shall, on the expiry of the period as specified in sub-section (1), be published.
(3) The publication of every application for a patent shall be notified in the Official Gazette.
(4) In case a secrecy direction has been given in respect of an application under section 35, then, it shall be published after the expiry of the period of eighteen months or when the secrecy direction has ceased to operate, whichever is later.
(5) The publication of every application under this section shall include the particulars of the date of application, number of application, name and address of the applicant identifying the application and an abstract.
(6) Upon publication of an application for a patent under this section- (a) the depository institution shall make the biological material mentioned in the specification available to the public; (b) the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public.
11B. Request for examination.-
(1) No application for a patent shall be required to be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within forty-eight months from the date of filing of the application for patent.
(2) In case of an application filed before the commencement of the Patents (Amendment) Act, 2002, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from the date of such commencement or within forty-eight months from the date of the application, whichever is later.
(3) In case of an application in respect of a claim for a patent covered under sub-section (2) of section 5, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from the 31st day of December, 2004 or within forty-eight months from the date of the application, whichever is later.
(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (2) or sub-section (3), the application shall be treate as withdrawn by the applicant: Provided that- (i) the applicant may, at any time after the filing of the application but before the grant of the patent, withdraw the application made by him; and (ii) in a case where a secrecy direction has been issued under section 35, the request for examination may be made within forty-eight months from the date of revocation of the secrecy direction.".
10. AMENDMENT OF SECTION 12.-
In section 12 of the principal Act,-
(a) in sub-section (1),- (i) for the words "When the complete specification has been filed in respect of an application for a patent, the application and specification relating thereto", the words, brackets, figures and letter "When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section
(1) or sub-section (2) or sub-section (3) of section 11B, the application and specification and other documents relating thereto" shall be substituted; (ii) in clause (a), for the words "specification relating thereto", the words "specification and other documents relating thereto" shall be substituted;
(b) in sub-section (2), for the words "specification relating thereto", the words "specification and other documents relating thereto" shall be substituted.
11. AMENDMENT OF SECTION 13.-
In section 13 of the principal Act, in sub-section (2), the words "as the Controller may direct" shall be omitted.
12. SUBSTITUTION OF NEW SECTION FOR SECTION 15.-
For section 15 of the principal Act, the following section shall be substituted, namely:- "15. Power of Controller to refuse or require amended applications, etc., in certain cases.-Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made there under, the Controller may require the application, specification or other document, as the case may be, to be amended to his satisfaction before he proceeds with the application or refuse the application on failure to do so.".
13. AMENDMENT OF SECTION 17.-
In section 17 of the principal Act, for sub-section (2), the following sub-section shall be substituted, namely:-
"(2) Where an application or specification (including drawings) or any other document is required to be amended under section 15, the application or specification or other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant, on the date on which it is refiled after complying with the requirement.".
14. AMENDMENT OF SECTION 21.-
In section 21 of the principal Act,-
(a) in sub-section (1), for the portion beginning with the words "fifteen months" and ending with the words "of this section", the words "twelve months from the date on which the first statement of objections to the application or complete specification or other documents relating thereto is forwarded to the applicant by the Controller," shall be substituted;
(b) sub-section (2) shall be omitted;
(c) in sub-section (3),- (i) for the words, brackets and figure "fifteen months specified in
sub-section (1) or the extended period", the words "twelve months" shall be substituted; (ii) for the words "fifteen months or the extended period, as the case may be", the words "twelve months" shall be substituted;
(d) in sub-section (4), for the words "fifteen months, or as the case may be, the extended period, until the expiration of", the words "twelve months to" shall be substituted.
15. AMENDMENT OF SECTION 22.-
In section 22 of the principal Act, in the proviso, for the words "eighteen months", the words "twelve months" shall be substituted.
16. AMENDMENT OF SECTION 23.-
In section 23 of the principal Act, for the words "filed in pursuance thereof", the words "as accepted by the Controller along with other documents filed by the applicant in pursuance thereof" shall be substituted.
17. AMENDMENT OF SECTION 24C.-
In section 24C of the principal Act,- (a) in clause (c), for the word and figures "section 85", the word and figures "section 84" shall be substituted; (b) for clause (d), the following clause shall be substituted, namely:-
"(d) clause (e) of sub-section (7) of section 84 shall be omitted.".
18. AMENDMENT OF SECTION 25.-
In section 25 of the principal Act,-
(a) in sub-section (1), after clause (i), the following clauses shall be inserted, namely:- "(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention; (k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,";
(b) in sub-section (2), for the words "shall give", the words "may, if so desired, give" shall be substituted;
(c) in sub-section (3), after the words "shall be taken of any", the words "personal document or secret trial or" shall be inserted.
19. AMENDMENT OF SECTION 35.-
In section 35 of the principal Act, in
sub-section (1), the words "to any person or class of persons specified in the directions" shall be omitted.
20. AMENDMENT OF SECTION 36.-
In section 36 of the principal Act, for sub-section (1), the following sub-section shall be substituted, namely:-
"(1) The question whether an invention in respect of which directions have been given under section 35 continues to be relevant for defense purposes shall be reconsidered by the Central Government at intervals of twelve months or on a request made by the applicant which is found to be reasonable by the Controller and if, on such reconsideration it appears to the Central Government that the publication of the invention would no longer be prejudicial to the defense of India or in case of an application filed by a foreign applicant it is found that the invention is published outside India, it shall forthwith give notice to the Controller to revoke the direction and the Controller shall thereupon revoke the directions previously given by him.".
21. INSERTION OF NEW SECTION 39.-
After section 38 of the principal Act, the following section shall be inserted, namely:- "39. Prohibition to apply, under certain circumstances, for patents relevant for defense purposes, etc.-(1) No person shall, except under the authority of a written permit granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention relevant for defense purposes or related to atomic energy unless- (a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and (b) Either no direction has been given under sub-section
(1) of section 35 in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall not grant written permission to any person to make any application outside India without the prior consent of the Central Government.
(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.".
22. AMENDMENT OF SECTION 40.-
In section 40 of the principal Act, after the words and figures "under section 35", the words and figures "or makes or causes to be made an application for grant of a patent outside India in contravention of section 39" shall be inserted.
23. AMENDMENT OF SECTION 43.-
In section 43 of the principal Act, in
sub-section (1),- (a) in clause (c), the word "or" shall be inserted at the end; (b) after clause (c), the following clause shall be inserted, namely:- "(d) the application has not been found to be in contravention of any of the provisions of the Act,".
24. AMENDMENT OF SECTION 45.-
In section 45 of the principal Act, for
sub-section (1), the following sub-section shall be substituted, namely:-
''(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.''.
25. SUBSTITUTION OF NEW SECTION FOR SECTION 48.-
For section 48 of the principal Act, the following section shall be substituted, namely:- "48. Rights of patentees.-Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee- (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India; (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes he product obtained directly by that process in India: Provided that the product obtained is not a product in respect of which no patent shall be granted under this Act.".
26. AMENDMENT OF SECTION 50.-
In section 50 of the principal Act, in
sub-section (2), for the words "make, use, exercise and sell the patented invention", the words and figures "the rights conferred by section 48'' shall be substituted.
27. AMENDMENT OF SECTION 53.-
In section 53 of the principal Act,-
(a) for sub-section (1), the following sub-section shall be substituted, namely:-
''(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.'';
(b) after sub-section (3), the following sub-section shall be inserted, namely:-
"(4) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on the expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.''.
28. AMENDMENT OF SECTION 57.-
In section 57 of the principal Act,-
(a) in sub-section (1), after the word "specification" at both the places where it occurs, the words "or any document relating thereto" shall be inserted;
(b) in sub-section (2), for the words "or a specification", the words" or a complete specification or any document relating thereto" shall be substituted;
(c) For sub-section (3), the following sub-section shall be substituted, namely:-
"(3) Any application for leave to amend an application for a patent or a complete specification or a document relating thereto under this section made after the acceptance of the complete specification and the nature of the proposed amendment may be advertised in the Official Gazette if the amendment, in the opinion of the Controller, is substantive.";
(d) in sub-section (6),- (i) after the words "amend his specification", the words "or any document relating thereto" shall be inserted; (ii) after the words "acceptance of the complete specification", the words "along with other documents filed by the applicant" shall be inserted.
29. AMENDMENT OF SECTION 59.-
In section 59 of the principal Act,-
(i) for sub-section (1), the following sub-section shall be substituted, namely:-
"(1) No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.";
(ii) in sub-section (2),- (a) for the words "complete specification, any amendment of the specification", the words "complete specification along with other documents relating thereto, any amendment of the specification or any other document relating thereto" shall be substituted (b) in clause (a), for the word "specification", the words "specification along with other documents relating thereto" shall be substituted; (c) in clause (b), for the word "specification", the words "specification or any other document relating thereto" shall be substituted.
30. AMENDMENT OF SECTION 60.-
In section 60 of the principal Act,-
(a) in sub-section (1), for the words "one year", the words "eighteen months" shall be substituted;
(b) sub-section (2) shall be omitted.
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