Patent Rights in India





Patent, Patent rights in India, Patent in India, Rahul Dutta, Patent Attorney in India, PCT Application, National Phase PCT application in India, Intellectual Property Lab, Intellectual Property Appellate Board, International Patent System, Patentable Inventions, Prior Art in Patent, Monopoly rights in Patent, Non-obviousness, Patentability conditions.

Part 1: International Patent System

Concept of Patent
The patent rights can be enforced only after securing the patent. Patent restricts others to make, use, offer for sale, sale or import the patented product. Patent is granted for both a product and a process. Patent right locks the functionality aspect and restricts the rights to the patent owner. Patent is a time limited monopoly which is granted from the date of the first filing for twenty years.

The patent application could be either provisional or complete. To exploit the right to propriety, the inventors prefer to file the provisional application at the concept stage of the invention when they feel confident to file the complete application within twelve months time from the date of the provisional application. The difference between the provisional and the complete application is that in the provisional application only the outline of the invention is given and thus a tentative domain of the invention is described. The claim part, the patent rights subsists on this part, is written only in the complete application.

Concept of Priority
Priority is a very important part of patent system. It means that who has right to secure patent to the exclusion to the other applicants in any country. There are two concepts of priority. The first is the first to file concept and the other is first to invent concept. According to the first to file concept, the first applicant has the right exclusion to the others to file and secure patents in the most of the countries which follow the international patent system. This concept is followed by most of the countries including India. The first to invent concept says that the inventor who invented first has the right to file and secure the patent. This concept is followed by the US.

Patentable Inventions
There are three conditions, novelty, non-obviousness and industrial use, for an invention to qualify as a patentable invention irrespective of any domestic patent law. Novelty means that the invention should be not be known in the industry anywhere before. An invention first practiced as a trade secret and later applied for patent does not qualify under this condition. Non-obviousness means that the invention should be such that it add-value to the existing knowledge domain. The teaching of the invention must not be obvious to anyone having knowledge in that particular domain of technology. The third condition makes it clear that patent is granted only for the applied science which has some industrial use. The invention should be either in the form of a product or a process which can be commercially exploited.

The Patent System
Patent rights are territorial in nature and governed by the domestic patent laws. It means that a patent right holder in the US has rights only in the US territories. For securing the same rights, one needs to redo the patent rights securing process in each country of the business interest from the prospective of commercialization of the invention.

To synchronize the domestic patent system at the international level gradually an international understanding developed for protecting industrial property in the nineteenth century when the industrialization was at its peak. The transition of the industrialization into knowledge economy melted the conventional understanding into an agreement which is acting as an international patent law. The international understanding on industrial property, which is another term used for the intellectual property minus copyright, is known as Paris Convention for the protection of Industrial Property. Since it was a convention, it lacked binding force. But it helped in designing the international patent law which came under the banner of the TRIPS Agreement, which has binding force. The binding force means that how what is agreed upon at an international level is translated into the domestic laws of the signatory countries. Treaties and conventions are merely an understanding lacking binding the signatory countries to follow them. But TRIPS is an agreement having deterrence to force the signatory sovereigns to act up on the terms and conditions of the agreement.

Each inventor, either a part of the Paris Convention Union for protection of industrial property or the WTO Contracting country, has twelve months time from the date of the first/basic application to decide and file an application for securing the patent rights in the other member countries. This additional right is known as priority right.

There is time buying system which helps in deferring the patent application filing in the other countries to the maximum of thirty months from the date of the filing the basic application. This system is known as Patent Cooperation Treaty (PCT) and administer by the World Intellectual Property Rights Organization (WIPO). The TRIPS Agreement has borrowed the National Treatment concept from the Paris Convention. The national treatment means that the foreigners would be given the same treatment as the nationals of a country. TRIPS further added Most Favored Nation (MFN) concept in it; which means that any especial favor given by a country to a country will be applicable to rest of the member countries. The concepts of the national treatment and the MFN status provide equality before the laws of a member country to the foreigners.

Hence, there are two options for an applicant to file a patent application in a foreign country. The first one is Paris Convention and the second is exploiting the PCT route. The first route is advisable when an applicant wants to file the application without loosing time. The other route is advisable when the applicants wish to buy some time for any reason to exploit the patent rights later without loosing the priority. Both the options are open for both the Indian and the US nationals in each-other’s country.

Though the TRIPS Agreement directs its signatory countries to grant patent in all the technologies, there are a few exceptions to this direction in India. Similarly there is a fundamental difference in definition of invention. The US patent law includes both inventions and discoveries as a subject matter of patent but India, like most of the countries, accepts only inventions as a patentable subject matter. Another difference is in the treatment of the prior art. The US patent law accepts knowledge existing in some tangible format outside its territories for the consideration of knowledge forming prior art. The US accepts hear-say knowledge existing in its territories. To the contrary, Indian law accepts all kind of information, whether hear-say or in some tangible form, existing anywhere as prior art.

Part 2: Securing Patent Rights in India

The Constitution of India starts with ‘We the People of India..’ wordings and declares herself a Socialist Republic in the preamble itself. The Supreme Court of India in a case declared that Constitution is not to be construed as a mere law, but as the machinery by which laws are made. Though the patent law was framed and repeatedly amended in compliance with India’s commitment to various international treaties, conventions and agreement, none of IP laws is above the Constitution of India. An attempt to make a fine balance between the social welfare commitment to the nation and the rights of the patent owner can be seen in various provisions of the Indian patent law. India is a natural ally to the developing and least developed countries, who see and respect her as their leader. As a leader of the third world countries India has extended social responsibility towards their welfare. This responsibility is also reflected in the Patent Act.

India is a signatory country to the Paris Convention and the WTO. The foreigners draw right to file patent applications in the foreign countries under the provisions of the Paris Convention and the TRIPS Agreement. The foreign applicants have equal rights before the patent law of India and there is no discrimination based on nationality as agreed by India to the above-stated international instruments.

The first patent application is known as the basic application. A foreign national can file the basic application in India drawing rights under the Paris Convention or can file the national phase application in India within twelve months after filing the basic application either in his home country or elsewhere. The twelve month time to file the subsequent application is an international right and is known as Priority Right. By claiming the priority right, the applicant secures preference to other applicants who filed their applications any time later to the basic application filed by the first applicant. English is the official language for filing the application in India by the foreigners.

In case an application has been filed under the provisions of the PCT, it remains suspended for eighteen months from the date of the basic application filing and is not processed. The national phase applications rooting from the PCT application can be filed latest by thirty one months from the date of the basic application filing. In case the national phase application is filed before thirty one months which is the time deadline to enter into the national phase, the patent Office shall not start processing of the national phase application before the expiration of thirty one months from the basic application filing date, else otherwise formally requested to process under other provisions. Here it is important to mention that PCT application is just a time buying process to extend the priority to file the national phase applications. A PCT application in itself does not materialize into any patent; it is the national phase application which may ultimately yields patent.

When an application is made by virtue of an assignment of rights to apply for patent for the invention, the applicant needs to file the right to assignment in the prescribed form within six months from the date of the filing of the application in India. A declaration of inventorship is required to be filed with the complete application or within one month from the date of the filing of the complete application. Besides, the applicant needs to keep the Indian Patent Office update on other national phase applications for the same invention in the prescribed format in the prescribed time.

After expiration of the thirty one months period from the basic application filing date, the application is processed and published in the Patent Journal. Under the normal process there is no need to apply for the publication of the application. There is a provision under the patent law for filing an early publication request. On and from the date of publication of the application the applicant shall have the like privileges and rights as if the application for patent has been granted, provided the applicant shall not be entitled to institute any proceedings for infringement until the grant of the patent.

After publication of the application, the applicant gets forty eight months time from the priority date of the basic application to file a request for an examination of the application. There is no restriction to file a request for examination of the application, but it would be considered only after publication of the application. Ordinarily the first examination report (FER) is send within six months from the date of the examination request or six months from the date of publication, whichever is later.

India has adopted post-grant opposition procedure without loosing her old pre-grant opposition procedure. When a patent application is published but the patent has not been granted, any person in writing may oppose the application on any of the prescribed grounds. Similarly, any person, at any time after the grant of the patent but before the expiry of one year from the date of publication of grant of the patent may give a notice of opposition to the Controller in the prescribed manner.

When the application is found to be in order for the grant of patent complying with the Patent Act, a patent is granted.

The life span of a patent is twenty years starting from the date of the filing of the patent application. For the international applications filed under the Patent Cooperation Treaty (PCT) the twenty years shall be counted from the international (PCT) application filing date.

The patent requires to be renewed each year by paying the renewal fee. In absence of non-renewal of patent, the rights are lapsed. The applicant can file for renewal of the lapsed patent within eighteen months from the date on which the patent has ceased to have effect. There is no right during the suspension of patent due to non-renewal.

The district court has the jurisdiction to try an infringement suit. Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit is transferred to the respective High Court for decision. In an infringement suit the court may grant an injunction and at the opinion of the plaintiff either damages or account of profit. The court may also order for the forfeiture and destruction of the infringing goods without any compensation. The appeals to the orders and decisions of the Controller and all cases of revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court shall go to the Intellectual Property Appellate Board (IPAB).

To balance the monopoly patent rights granted to a parson, there is a complete chapter titled ‘working of patents, compulsory licenses and revocation’ to safeguard the socialist commitment of India. Another chapter titled ‘use of inventions for purpose of Government and acquisition of inventions by central Government’ is an attempt by India not to find her into tight spot to honor a patent against her national or social interests.

© Rahul Dutta

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ABOUT THE AUTHOR: Rahul Dutta
Rahul Dutta is a Patent Attorney based in India. He is heading Intellectual Property Lab, firm dealing exclusively in IP. He is a LL.M. IP Gold Medalist from National Law University, Jodhpur.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.



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