Patents Rights : An Overview

PATENT RIGHTS: AN OVERVIEW*

Dr. J. S. PATIL·

INTRODUCTION

            India is emerging as IT super power. It is stated in a recent survey that India is 12th richest country of the world. It is due to development in services and production that India could attain this level of development. Economic position reached Rs.45 lakh crores. Increase in national production is by 9.4%; But per capita income is only Rs.2500/-. This should be increased by proper utilisation of IT in services and production.[1]The legal regulation of IT related activities, especially the expansive legal regime of the IPR, will go a long way in transforming India into a developed nation. There are as many advantages of the IT as the dangers involved in it. Therefore regulation of IT regime has to be carefully prosecuted so as to maximize the advantages and minimize the dangers.

            In earlier centuries, foreign invaders conquered India. In this century, Indian ancient thoughts and wisdom will conquer the world.[2] Transformation of technology from information technology to knowledge technology to wisdom technology to virtue technology is to be ensured.

CIVILIZATION: SUNRISE OF KNOWLEDGE

            17th Century witnessed Scientific Revolution. 18th Century bought about Political Revolution. 19th Century was the era of Industrial Revolution. Engine (Steam, Int. Combustion) centered activities were the attraction. It dealt with atom and material production. Paradigm was DIVIDE AND RULE. CEO was the “King”. 20th Century witnessed Information Revolution. It was computer centered. It dealt with bits and information. Human being was at the side-wing. Paradigm was PROCESS AND CONTROL. Computer was the “King”. 21st Century is the era of Knowledge Revolution. It is intellect centered. It deals with bits and knowledge. Human beings are at the center-stage. Paradigm is UNIFICATION INTO HOLISM. Customer is the “King”.

KNOWLEDGE IN ANCIENT INDIA

3000-1500BC: Vedic seers were well aware of the motion of the moon, the path of the sun, and occurrence of eclipses. 7th Century BC: Takshashila University was established. 60 subjects were taught and 10,500 students - Indian & Foreign – studied in this university. 6th Century BC: Sushruta used to perform surgery who new Anesthesia. 125 types of surgical instruments were used. 5th Century BC: Charaka made Ayurveda a well-organised science “Medicine can now be regarded as the oldest of Indian sciences and has been proved to be the science in which Indians specialized first” - Julius Jully (1951). 4th Century BC: Nalanda University was established. 4th Century AD: Decimal system with 9 digits & 0 was developed. 5th Century AD: Aryabhata I contributed to Astronomy & Mathematics. 7th Century AD:  Bhaskara made substantial contribution to mathematics. 7th-8th Century AD: Brahmagupta, Uddalaka Asruni. 10th-11th Century AD: Aryabhata. 12th Century AD: Bhaskaracharya II. 8th Century AD: Regression of Science started in India. 19th Century AD: Genuine beginning of modern science started.

700 BC: In Takshashila, the first university of the world existed. More than 10500 students from different countries studied here. More than 60 subjects were taught. 400 BC: In Nalanda, during the time of King Harsha the Chinese traveler Huyantsang studied here and later taught also. In 1205 AD, a group of 18 invaders under the leadership of Khilgi destroyed this where 15000 lived and studied. It seems the big library of Nalanda was burning continuously for 6 months.                                                                          

Indian was the Mother of our Philosophy; Mother of much of our Mathematics; Mother, through the Buddha, of the ideals embodied in Christianity; Mother through the village community of self-government and democracy; Mother India is in many ways the Mother of us all.  - Will Durant, American Historian. I am convinced that everything has come down to us from the banks of Ganges: Astronomy, Astrology, metempsychosis, etc. - Voltaire

PANINI (about 500 BC):  Was Panini a grammarian or father of computer science? Panini uses meta-rules, transformations, and recursions with such sophistication that his grammar has the computing power equivalent to a touring machine. In this sense Panini may be considered the father of computing machines. His work was the forerunner to modern formal language theory, and a precursor to computing. Paninian grammars have also been devised for non-Sanskrit languages. The Backus-Naur form (Panini-Backus form) or BNF grammars used to describe modern programming languages have significant similarities to Panini’s grammar rules. His “Karaka Sidhanta” is similar to semantic network of computer science.

GLOBALIZATION

            The world has witnessed three globalizations. The first globalization occurred from 1st century onwards, in which India was a leading country. The second globalization occurred during 1870-1914.  India could not participate in this as it was under British rule. The third globalization is taking place through GATT (1948) & WTO (1995). India’s beginning in the third globalization is highly promising. According to Rudyard Kipling, East is East, and West is West, and never the twain shall meet. Transport and Communication would create a single planetary society.[3] Unification of the world is made possible by transistor, microprocessor, telephone, satellite, network and wireless technology. Human race in contemporary time is divided by time zones and not geographical zones. People use same books,, journals, consumer goods, automobiles, soft drinks, fast foods, computers, telephones, etc. Same communication system comprising telephone, Internet, fax, E-mail, etc. is used by all across the globe. Same computer hardware and software, same TV networks, same credit cards are used by the peoples of the world.  Computers becoming invisible, networks wireless, money paperless, business placeless, materials atom less (made of bits).

            It is an era of global network of fields, forests, farm labourers, factories, industrial labourers, banks, economics; cities, citizens, keeping the national boundaries and national government as they are. When you buy a global product inIndia it is possible that the raw material is from country A; required knowledge generated in country B; produced in country C; manpower supplied from country D; venture capital from country E.

GLOBAL SUPPLY CHAIN

            A cartoon “Higgletown Heroes” for Disney channel is produced by an all-world supply chain. The network of writers is from their homes in Florida, NY, Chicago, LA, San Fran., & London. Animation of characters in Bangaloreby 8 teams working in parallel with 8 writers. Design & Direction from San Fransisco. Recording in NY & editing from San Fransisco.

GLOBAL APPROACH: BEYOND BOUNDARIES

            Keninchi Ohms, Japan’s Management Guru opines: Nations today should sign a treaty not of independence but of inter-dependence. Pierre Teilhard De Chardin wrote:The age of nations is now over. The time has come for men to shake off ancient prejudices and turn, as one Man, to building the earth. 1983: General Motors of USA and Toyota of Japan started a joint venture. Maruti Suzuki, a booming enterprise, has Japanese technology and India’s trained skilled labour. From ‘League of Nations” to “United Nations” to “World Trade Organization”. Mysore University & Google plan to archive history. Globalization & Technology are reshaping the world.

SUCCESS DURING GLOBALISATION: MIND OVER MINDSET

            FOREIGN RULE: We were ruled by foreigners for over 1000 years.  So we believe that public issues belonged to some foreign ruler and that we have no role in solving them. COMING PROACTIV: We have to proactively solve our own problems and meet the challenges of globalization. MIND OVER MINDSET: Our mind should conquer the mindset of negativism, defeatism, and blaming others syndrome. SEIZE THE OPPORTUNITY: Globalization and Technology are reshaping the world.  It gives India a chance to have a vision to catch up and overtake developed countries. GLOBALLY COMPETITIVE: - Mental Competition: Mind over Mindset     -- National Competition -- International Competition. SUCCESS: The societies which succeeded are the societies where the mind conquers the mindset.                                            

GATT, WTO, and GATS

            GATT (General Agreement on Trade and Tariff): Established in 1948; WTO (World Trade Organization): Established on 1-1-1995; WTO agreements consist of: GATS, TRIPS, TRIMS, MFA, AOA... Decision making body of WTO:  Ministerial; Ministerial meetings held: Singapore (1996), Geneva (1998), Seattle (1999), Doha (2001); GATS (General Agreement on Trade in Services): Came into force in 1996; Objective of GATS: Establish a multilateral framework for ‘Services’ similar to ‘Trade’; Educational Services: One of the 12 multilateral agreements; Excludes purely Government services.

            GATS:  Provides certain guidelines for negotiations. India is a member of World Trade organization (WTO) established in 1995. Under WTO, two areas are identified for multi-lateral agreement: Trade in goods and merchandise; Trade in services covered by General Agreement on Trade and Services (GATS)

TECHNOLOGICAL INDIA TODAY

            One third of all NASA Scientists are Indians. 34% of Microsoft’s creative team is India born. Over 5,000 Indian Professors in US Univ. & Colleges. Over 30,000 Indian doctors in US. GE has the second largest R & D Centre in India with 1000 Ph.D’s. 50% of Fortune 500 Companies outsource work to India. Among 3 nations who have built Supercomputers. Among 6 nations who built Satellites & Launch vehicles. Over 35% startups in Silicon Valley is by Indians. We have largest English speaking technical manpower. Indian Software professionals work in all developed countries. Emerging as a high quality manufacturing destination. 5 Indian Companies won Deming prize for quality in 2004. Indian Companies Becoming Global. Indian brands becoming respectable. India becoming a preferred destination for high quality health service,  R & D, &   manufacturing. India has the potential of becoming IPR super power because of its strength in IT

IPR PROTECTION

TRADITIONAL

ALTERNATE

TECHNOLOGY ACQUISITION

IMITIATE                   ADOPT                       ACQUIRE                   DEVELOP

SURVIVIAL                           LEADERSHIP                        PROGRESS

MEANING OF PROPERTY

1. All legal rights: Blackstone, Hobbes, Locke advocate this application.

2. Proprietary rights (dominium & status): personal rights excluded.

3. Proprietary rights in rem (dominium & obligatio): proprietary rights in personam

 (Law of obligations) is excluded.

4. Corporeal property (dominium corporis & dominium juris): only material.

TYPES OF IPR

PATENTS

Patents Act 1970: Salient Features

1. A more elaborate definition of invention.
2. Declaration of certain inventions as non-patentable.
3. Information as to foreign application.
4. Determination of priority date for each claim.
5. Stringent requirements for description of invention.
6. Global search for novelty.
7. Extension of grounds of opposition; Pre-grant and post-grant opposition; establishment of Opposition Board.
8. Exemption of certain categories of prior publication, communication & use from anticipation.
9. Secrecy of inventions relevant for defense.
10. Use of invention for govt, research & education purpose.
11. More precise definition of rights of co-owners.
12. Elaborate provision for patent of addition.
13. Enlargement of the grounds for revocation of a patent.
14. Stricter requirements for assignments & transfer of patents.
15. Enhancement of the powers of the Controller.
16. Provision for compulsory licenses, licenses of right, and revocation for non-working.
17. Extension of Central Government’s power to use invention.
18. Provision for prevention of abuse of patent rights by restrictive conditions.
19. Provision for appeal to the High Court from the decision of the Controller.

What is a Patent?

            It is a monopoly right for invention of a new and useful article or an improvement of an existing article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period. Anybody can use the invention after expiry of the patent term.

Non-Patentable Inventions

1. Frivolous inventions.
2. Contrary to law, morality, or injurious to public health.
3. Mere scientific principle or abstract theory.
4. New property or new use of known substance.
5. Admixtured substance.
6. Arrangement or rearrangement or duplication of features of known Method of Agriculture or Horticulture.
7. Process of treatment of human beings or animals.
8. Inventions relating to Atomic Energy.
9. Plant or animal as a whole or in part (other than micro-organisms) including seeds, varieties and species and their production or propagation.
10. India’s traditional knowledge (ITK).
11. Computer program or algorithms.
12. Discovery of any living thing or non-living thing substance occurring in nature.
13. A literary, dramatic, musical or artistic creation whatsoever including cinematographic works and television production.
14. Presentation of information.
15. Topography of integrated circuits.

Product Patent for Drugs& Medicine

            EMRs are provided on applications for product patents till Dec. 2004 if they are patentable as per Ss.3-4 of the Act. Conditions to be fulfilled: 1. He must have filed an application for the same invention in a convention country on or after 1st Jan 1995 and obtained the approval to sell or distribute the article in that country by appropriate authority; or 2. He must have already filed after 1st Jan 1995 a claim for the process of manufacturing an identical article and a patent granted there for in India and after making a claim for the patent for the same article has obtained the approval to sell or distribute the product in India till the date of grant of patent or the date of rejection of the application whichever is earlier.[4] EMR is granted to Novartis AG for its drug Gleevec, if enforced, it is priced at Rs. 1, 20,000 as against generic drug costing Rs. 9,000 to Rs. 12,000 per month for treating Chronic Myeloid Leukemia. Just 4 years ago AIDS drug ranged between US$ 10,000 to 12,000 per person per annum. Prices began falling when Indian manufacturers introduced generic versions and costs came down to US$140. If product patent is granted to drugs price escalation of drugs may lead to many problems.[5] India has received 1312 applications for drug patents in 2005, second highest after US (2111 applications).[6]

Drugs, foods & chemicals are brought into product patent regime. EMRs replaced by product patent. Permissions is given to stockpile products to enable early introduction of the generic product. Liberal compulsory licensing norms replaced the earlier stringent provisions. Imports are not considered equivalent to working of the patent.[7]

ITK:   Indigenous Technical Knowledge

            India has rich traditional knowledge of Ayurveda, Sidha, and Yunani medicines. India has over 400 formulations of herbal medicines. Indian Government has released TKDL (Traditional knowledge Digital Library) in 5 International Languages. In the Environment World Conference in Johanessberg, SA in 2002, a tribal from Kerala & a scientist were together honoured: The Tribal had knowledge about the medicinal value of a medicinal plant. The scientist, taking the help of the tribal, prepared a medicine    from the plant

ITYM: Indian Technique of Yoga & Meditation

            Meditation, Yoga, Zen, Vipasyana, and other spiritual techniques of Indian origin have become global. More than 10 Million mainstream Americans practice meditation of some sort or other - Time Magazine. In US, NASA astronants undergo Vipasyana Yoga before space travel. Albert Schumacher of “Small is Beautiful” fame said that he got many ideas during Vipashyana meditation. Kiran Bedi transformed Tihar Jail into Tihar Ashram using Vipashyana. In order to defeat Indian cricket team in India, we practiced yoga taking the help of a yoga teacher.[8]

Yoga Patents in US

            150 Yoga-related copyrights; 134 patents on Yoga accessories; 2315 Yoga trademarks; “Kriyas” are patented mostly by people of Indian origin; Matter is being taken up with the US Govt by AYUSH. REMEDY: Over 1.20 lakh Ayurvedic & Unani formulations have been compliled & work on Yogic Kriyas & Aasans & Siddha formulations will be completed by December. These will be made available to the patent offices of the US and EU

India’s efforts to protect Yoga as ITK

            AYUSH has engaged institutes such as Morarji Desai Institute of Yoga & Kewal Dham of Pune to translate Sanscrit Slokas that describe yogic asanas into English, French & German languages among other languages. Traditional Knowledge Resource: Classification software being used for translation. In the first phase, to be completed by December 2007, work on 150 asanas will be completed. The plan is to cover 1,500 commonly used kriyas and asanas.

Turmeric Patent

            The turmeric patent granted to the University of Mississippi in 1995 has been successfully challenged by CSIR in 1997 as prior art. It provided 32 references from ancient texts to show prior knowledge on the use of turmeric as powder. Even its continuation in respect of surgical wounds as antiseptic is rejected as prior art after knowing of its use on umbilical cord  & recording of the same by a Hakim in Akbar’s period

Neem Patents

            There are more than 40 patents, mainly for Neem pesticides, held by laboratories in U.S.A. & U.K. A U.S.company, W.R. Grace, was granted a patent for Neem as a pesticide. India could not challenge it because the patent was for a formulation which increased the shelf life of the Neem extract. India has granted more than 80 patents on Neem.  W.R.Grace’s patent was revoked as piracy, as the oil from neem has been used traditionally by farmers to prevent fungus.[9]

Basmati

            In September 1997, Ricetec obtained a patent for calling aromatic rice grown grown outside India as Basmati & selling it under any brand name. Ricetec has already been selling brands like Kasmati & Texmati claimed to be Basmati type rice. With the patent it will be able to label its exports of rice also as Basmati. It claimed that basmati is a generic term and that it had invented certain novel basmati lines and grains which make possible production of high quality, high yielding basmati rice worldwide. It claimed to have isolated specific scientific parameters like length-width ratio, starch index, percentage increase on being cooked, etc.

Diabetes Patent

            Cromak Research Inc. was granted patent on Jamun, Karela, Gurmar and Brinjal for curing diabetes in theU.S.[10]

Methi

            Kripal S. Dahliwal was granted patent on Methi in March 1999.[11]

Jute

            “The United Kingdom has granted a patent to Geohess (U.K.) Ltd. on October 25, 1995 on Jute as an environmentally packaging material.” The EPO has also granted the patent over Hessian, a variety of jute cloth used for packaging and as land cover. India has won the battle in August 2004 before EPO. Appeal period lapsed on October 11, 2004. Indian exports of Hessian to Europe: 86000 tonnes in 1999-2000; 51000 tonnes in 2001-2002; 1.42 lakh tonnes in 2003-2004. Now jute manufacturers will be able to export Hessian without having to pay any royalty to GEOHESS. A partial victory was wrested by JMDC from the Brazilian Government, after 12-year long battle on termination and reduction of dumping duty on import of jute bags from India in September 2004.[12]

Patent on Chapati-making Wheat & flour

            European patent is recently granted to Monsanto for a new wheat variety called Nap Hal, a strain of wheat whose gene sequence make it suited to producing crisp breads. It is a cross breed of an Indian variety. Being challenged by RFSTE. Monsanto gets an European patent over the use of Nap Hal wheat to make chapatis (crisp bread), which consist of flour, water and salt. Nap Hal’s qualities are the result of generations of farmers in India who spent years crossbreeding crops and collective, not corporate, efforts should be recognised. Recently, it has been revoked in a case filed by Greene Peace.

Cow Urine Patent

            Patent was granted on pharmaceutical compositions containing cow urine distillate and an antibiotic as a bio-enhancer was granted to the CSIR.[13]

Access to TK Digital Library

            National Institute of Science Communication & Information Resource (NISCAIR), CSIR, is authorised to sign non-disclosure agreement with International Patent Offices for making TKDL accessible to patent examiners. TKDL will prevent misappropriation of TK information particularly with respect to Ayurveda, Unani, Siddha & Yoga at Int. PO. Conditions for access is to make use only for examination & patent search and not to disclose to third party.[14]

Term of Patent

            Originally, it was 14 years for general type of patents. For Food, Medicine and Drug patents, it was 5 years from the date of sealing or 7 years from the date of the patent. Now, it is 20 years for all types of patents after the Second Amendment.

Typical format of a patent document

Object of invention: The invention relates to cosmetic compositions for promoting lightening of skin colour.

Prior art: Published information: Dermatal azelatic acid inhibits melanin biosynthesis. JP 59157009: Ascorbic acid stearate + Hydroquinone (unsafe).

Definition of the invention: The invention provides synergistic compositions suitable for topical application to human skin, comprising dicarboxylic acids/esters/salts in a cosmetically acceptable vehicle. ( This would be followed by the text).

Example:  Compound A gives lightening by 23%. Compound B gives 60% lightening.  Additive A+B would give 83% lightening if the compounds behave independent of each other. Synergy between A and B in the composition causes 90% lightening of the skin as experiment result obtained by a formulation containing A and B in a ratio 1:1.

Main CLAIM: A cosmetic composition for lightening of skin colour comprising 1 to 25 % dicarboxylic acid(s)/esters/salts, 1 to 20% ascarbic acid/esters/salts, 0.1 to 5% vitamin E or its derivatives by eight of composition.

How to obtain a patent?: The Applicant

            An application for patent can be made by: True and first inventor; An assignee in respect of the right to make an application; The legal representative of a deceased person who immediately before the death is entitled to apply. Employer and Employee: Depends on contractual terms. Mere existence of contract of service does not disqualify a servant from taking out a patent.[15] If a man is employed as a draftsman in a drawing office, he is employed to exercise his inventive faculties for the benefit of his master.[16] Employees engaged to carry out improvements cannot take patent for their improvements.[17]

Application for a Patent

            Application should be filed in appropriate patent office based on residence or principal place of business (Rule 4). Forms of application: Form-I: Application for patent when the true & first inventor is the sole or joint applicant. Form-1A: by the assignee or legal representative. Form-1B: Patent of Addition by true & first inventor as sole or joint applicant. Form-1AB: Patent of Addition by assignee or legal representative Form-2:     Convention application. Form-2A: Convention Application by assignee or legal representative. Form-2B: Convention Application for patent of addition. Form-2AB: Convention application by assignee or legal representative.

Content of application

            Separate form for inventor, assignee, legal representative, patent of addition, or convention application. If applicant is assignee or LR, furnish proof of right to apply. Name of true & first inventor is a must in all cases of applications. Declaration as to the possession of the invention by the applicant has to be made. It must be accompanied by a provisional or complete specification. A convention application must be accompanied by complete specification. An application should be confined to one invention only. It should be either in Hindi or English. Information as to foreign application, if any, should be provided. A convention application should be filed within 12 months of the first one. A convention application has to be filed by the same person or LR or assignee, but not that person jointly with a third party. Single convention application for cognate inventions can be made. One application is sufficient for related inventions. Certified copies of complete specification filed with the basic application in a convention country should be furnished.

Examination of application

            Examination of the application by an Examiner as to the following matters: 1. whether the application and specification comply with the Act & rules. 2. Whether there is any lawful ground of objection to the grant of the patent under the Act. 3. Search u/ s.13 for anticipation by prior publication & prior claim in the records of the Patent Office. 4. Any other matter which may be prescribed. Examiner usually submits his report within 18 months. Examiner’s report is not open to public inspection. A search for anticipation is made among the following documents: 1. Specifications filed in pursuance of application for patents made in India on or after 1st January, 1912, but before the date of filing of the applicant’s complete specification. 2. Any documents, other than those mentioned in s.13 (1), published in India or elsewhere, before the date of filing of the applicant’s complete specification. Difference between prior publication (s.13 (1) (a)) & prior claim (s.13 (2)). Former is want of novelty and the latter is cited specification contains a claim identical to or substantially the same as a claim in applicant’s specification. Examination of application is at the request of the applicant.[18]

Consideration of Examiner’s Report

            Objections as to amendment, if any, will be communicated by the Controller. Defective application: Controller may refuse to proceed, or require amendment to his satisfaction. Lack of inventive step: opportunity of hearing to the applicant. He can refuse if it is contrary to law unless it is suitably amended. Division of application: if it relates to more than one invention, it can be remedied by filing a further application. Anticipation by prior publication: he has to show that his specification is not later than the date on which the document is published. Anticipation by prior claiming: reference may be required. Anticipation can be based on knowledge, oral or otherwise, available within any local or of indigenous community. Reference should be made in case of potential infringement. Post-dating requested by the applicant or required by the Controller. Substitution of applicants or joint applicants Is possible. 15 months time for complying with office requirements. 3 months extension possible on application.

Acceptance

            Acceptance of complete specification after the applicant complies with all the requirements of the office within the prescribed time.  serial number will be allotted which will be the number of patent when granted. Advertisement and open to public inspection free of charge. It is as good as patent from the date of advertisement except infringement proceedings. Amendment of application & specification can be made.[19] Opposition to amendment of application & specification can be made by interested persons. Correction of error in applications & documents can be effected. Opposition to the grant of patent can be made by interested persons. Refusal to grant without opposition can be made on the ground of prior publication. Mention and removal of inventor’s name in the patent is also possible.

Opposition

            After publication of application and before grant of patent any person may represent by way of opposition to the Controller on the ground:

1. Obtaining wrongfully.
2. Prior publication in any Indian specification or in any other document in India or elsewhere.
3. Prior claim in a concurrent application.
4. Prior use or public knowledge in India.
5. Obviousness or lack of inventive step.
6. The subject is not an invention and not patentable under the Act.
7. Insufficient description of the invention.
8. Failure to disclose the information relating to foreign application.
9. In the case of convention application, not made within 12 months time.
10. Non-disclosure or wrong mentioning of the source of geographical origin of biological material used for invention.
11. Anticipated having regard to the knowledge of local or indigenous community in India or elsewhere.

            On the same grounds any interested person may give notice of opposition to the Controller within one year from the date of publication of grant of patent[20]

Grant of Patent

            Sealing: Request for sealing in Form-22. Sealing is made after opposition. Time for sealing: if no opposition, 6 months from advertisement; 2 months after final determination of proceedings, if any; in case of death of applicant before expiry of time, 12 months after death. The period of sealing may be extended from time to time by Controller. Date of sealing is material for calculating food &drug patents & to calculate period for filing compulsory license application & ‘licenses of right’ endorsement. Date of patent will be date on which complete specification is filed. But now it is dated as of the date of filing the application. Date of patent is used for calculating the duration of patent.                     

Revocation: Modes:

1. Revocation in the public interest by the Central Govt.
2. Revocation of patents relating to atomic energy by the Controller.
3. Revocation for non-working.
4. Revocation by the High Court on petition for failure to comply with the requirements of the Central Govt. to use the invention.
5. Revocation by the High Court on petition by a person interested on various specified grounds.

The last one is the most common form of revocation.

Grounds for Revocation

Three classes of grounds for revocation of a patent:

a)     Grounds relating to rights of the patentee & his conduct;

b)     Grounds relating to the invention & its quality;

c)     Grounds relating to the description of the invention.

Grounds relating to rights of the patentee & his conduct:

1. Patentee is not entitled to the patent.
2. Patent wrongfully obtained as against the person entitled.
3. Patent obtained by false suggestion or representation.
4. Failure to disclose information regarding foreign application.
5. Non-compliance with directions for secrecy.
6. Amendment of specification obtained by fraud.

Grounds relating to the invention & its quality:

1. Subject of a claim not an invention.
2. Subject of a claim not a patentable invention.
3. Invention claimed was secretly used before the priority date.
4. Invention claimed already the subject of a prior grant.
5. Invention claimed lacks novelty having regard to prior knowledge or prior use.
6. Invention is obvious or does not involve inventive step having regard to prior knowledge or prior use.
7. Invention not useful.
8. The claim was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in any country. (2nd Amendment)

Grounds relating to the description of the invention:

1. Invention not sufficiently described, & the best method of performing it not disclosed.
2. Claims not clearly defined or not fairly based.
3. The complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention. (2nd Amendment)

Sources of Patent information in India

1.National Informatics Center,Patent & Information Division,A Block, CGO Complex, Lodhi Road, New Delhi 110 003.

2.Patent Management Division (CSIR), 14 Sansad Vihar Marg, Special Institutional Area, New Delhi 110 067.

3. National Chemical Laboratory, NICHEM/NCL, Pune 411 008.

4. National Research & Development Council (NRDC), 20-22, Zamroodpur, Kailash Colony, New Delhi 110 048.

5. Patent Information System (PIS), CGO Complex, C Block, Seminary Hills, Nagpur 440 006.

Triomune: AIDS Drug

            Cipla , a Mumbai-based generic AIDS drugs manufacturer has patented its three-in-one combination anti-retroviral (ARV) tablet, Triomune, in South Africa.The Co. is also seeking patents in 17 other countries in Africa, which is the epicenter of the AIDS pandemic. Triomune contains a fixed dose of three generic AIDS drugs, Nevirapine, Stavudine & Lamivudine.

Anti-bacteria ‘weapons’ to fight several diseases

            Ganga Gen Biotechnologies Private Limited (GBPL), a Bangalore-based biotech firm is exploiting an effective anti-bacterial 'weapon', called phages, which are protein-coded, bacteria-destroying, non-living micro-organisms, vaccines from which can put an end to a range of diseases, including tuberculosis and cholera which are rampant inIndia. The GBPL scientists recently achieved the feat of keeping phages within the bacterial cell wall using genetic engineering techniques. This achievement won the GBPL a US patent.

Harvard Oncomouse Case

            Patent was granted in the U.S. on a transgenic non-human mammal all of whose germ cells and somatic cells contain a recombinant activated oncogene sequence introduced into said mammal, or an ancestor of said mammal, at an embryonic stage. Canadian S.C. rejected the ‘hand of man’ doctrine. Bastarche J held,”The word ‘machine’ and ‘manufacture’ do not imply a conscious, sentient living creature.”Patent not granted for Oncomouse. Europe: No final decision is taken on Oncomouse. Distinction is made between ‘animal’ & ‘animal variety’. Former is patentable; latter not. India:A process of treating a malignant tumour was refused grant.

Pigs Patent

            Monsanto seeks patent on pig.[21] Claim 16: A pig offspring produced by a method. Claim 17: A pig herd having an increased frequency of a specific gene. Claim 23: A pig population produced by a method. Claim 30: A swine herd produced by a method. This means the pigs, their offspring, and the use of the genetic information for breeding will be entirely owned by Monsanto.

Human Genes

            Private firms and Universities have patented 20% of human genes in the US. Of the approximately 24,000 genes, more than 4,000 genes have been claimed in the US patents. About 63% are assigned to private firms and 28% are assigned to Universities. Incyte, a Palo Alto, California-based drug company claimed patents on behalf of those 4,000 human genes. It is surprising that in the US patent system human DNA is treated like other natural chemical products.

TRIPS/GATT

            Article 27(1): Patentable subject matter: Invention, whether products or process, in all fields of technology, provided:    * they are new, * involve an inventive step, * capable of industrial application. Subject to Arts. 65(4) & 70(8) & (3) of this Article, patents rights shall be available & enjoyable without discrimination as to the place of invention, the field of technology & whether products are imported or locally produced.

Exclusion from patentability

            Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect public order or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not Members may also exclude from patentability: Diagnostic, therapeutic and surgical methods for the treatment of humans or animals; Plants or animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

            However, Members shall provide  for the protection of plant varieties either by patents or by an effective sui generis system by any combination thereof. The provisions of this sub-paragraph shall be reviewed 4 years after the entry into force of the Agreement Establishing the WTO.[22] This provision is made merely because the exploitation is prohibited by domestic law.[23]

Rights conferred (Art.28)

1.     A patent shall confer on its owner the following exclusive rights: (a) where the subject-matter of patent is a product, to prevent third parties not having his consent from the acts of making, using, offering of sale, selling, or importing for these purposes that product; (b) Where the subject-matter of a patent is a process, to prevent third parties not having his consent from the act of using, the process, & from the acts of using, offering for sale, or importing for these purposes at least the product obtained directly by that process.

2.     Patent owners shall also have the right to assign, or transfer by succession, the patent & to conclude licensing contracts.

Exceptions to Rights conferred (Art.30)

            Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

Term of Protection (Art.33)

            The term of protection available shall not end before the exploitation of period of twenty years counted from the filing date.

Conditions on Patent Applicants Art.29

1.     Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date, or, where priority is claimed, at the priority date of the application.

2.     Members may require an applicant for a patent to provide information concerning his corresponding foreign applications and grants.

Process Patents: Burden of Proof (Art.34)

1.     Defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:

(a)   If the product obtained by the patented process is new;

(b)  If there is a substantial likelihood that the identical product was made by the process & the owner of the patent has been unable through reasonable efforts to determine the process actually used.

2.     Any Member shall be free to provide that the burden of proof indicated in para 1 shall be on the alleged infringer only if the condition referred to in sub-para (b) is fulfilled.

3.     In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting his manufacturing & business secrets shall be taken into account.

Other use without authorisation of the Right-holder Art.31

            Where the law of a Member allows for other use of the subject-matter of a patent without the authorisation of the right-holder, including use by the govt. of third parties authorised by the govt., the following provisions shall be respected:

a)     Authorisation of such use shall be considered on its individual merits;

b)     Such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorisation from the right-holder on reasonably commercial terms and conditions, and that such efforts have not been successful within a reasonable period of time;

c)     The scope and duration of such use shall be limited to the purpose for which it was authorized;

d)     Such use shall be non-exclusive;

e)     Such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;

f)      Any such use shall be authorised predominantly for the supply of the domestic market of the Member authorising such use;

g)     Authorisation of such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorised, to be terminated if and when the circumstances which led to it cease to exist and unlikely to recur;

h)     The right-holder shall be paid adequate remuneration;

i)      The legal validity of any decision relating to authorisation of such use shall be subject to judicial review;

j)      Any decision relating to remuneration is subject to judicial review;

k)     (b) & (f) need not be applied if such use is permitted to remedy anti-competitive practice;

l)      Where such use is authorised to permit the exploitation of a patent which cannot be exploited without infringing another patent, additional conditions shall apply: (i) the invention claimed in the second patent shall involve imp. technical advance of considerable economic significance to the first one; (ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms; (iii) the use authorised in respect of the first patent shall be non-assignable except with the assignment of the second patent.

PATENT COOPERATION TREATY, 1970

·       An inventor of member country can simultaneously seek patent protection in all or any of the member countries, without having to file a separate application in the countries of interest, by designating them in the PCT application.

·       PCT concluded on June 19, 1070.

·       First filing on June 18, 1978.

·       Growth steadily through 1985.

·       Growth exponentially since 1990.

·       WIPO,Geneva, coordinates all activities related to PCT.

·       India joined the PCT on Dec.7, 1998

STRUCTURE OF THE PCT SYSTEM:  MULTIPLE OFFICES

·       INTERNATIONAL BUREAU (IB): The main PCT office of WIPO for PCT coordination, publication and filing.

·       RECEIVING OFFICES (RO): An application may be filed in a designated Patent Office or IB.

·       DESIGNATED OFFICES (DO): All Patent Offices designated by the applicant to receive a copy of the Application & the benefit of PCT filing & research.

·       ELECTED OFFICE (EO): All DO’s that are subsequently identified to receive the result of PCT Examination

PCT Structure: Elected Authorities

·       Int’l Search Authority (ISA): The PO designated by the applicant to perform a search for prior art & issue an Int’l Search Report (ISR) & comment on formalities, including unity of invention.

·       Int’l Preliminary Examining Authority (IPEA)-

·       The PO designated by the Applicant to perform an examination of the Application for compliance with novelty, inventive step & disclosure requirements & issue a Written Opinion (WO) & examination report (IPER).

·       ISA need be the same as the IPEA.

THE BENEFITS OF PCT FILINGS

·       Only one application need be filed.

·       Filed in one language (of the receiving office).

·       Filed in one office.

·       Delays national processing.

·       Opportunity to amend specification & claims.

·       Search, publication & optionally, examination.

·       Can claim priority from earlier applications.

Result of the International Stage

v    An int’l application with specification, drawings & claims.

v    An early effective filing date.

v    A search of prior art (ISR).

v    An examination & opinion on patentability (IPER/IPEP)

    * A change to comment in Ch.I

    * A change to argue IF Ch.II

v    Amended claims (Art. 19 & 34)

v    Easy entry into the national phase.

Preserving Options

Delay of 20-30 months for national filing.

• Delays filing fees
• Delays translation costs
• Delays national attorney costs
• Delays election of countries

         Based on current evaluation of:

                 *Costs

                   *Business Value

                   *Law & Procedures

BENEFITS OF PCT FILING

• HIGH QUALITY SEARCH & EXAMINATION
• U.S. or EPO search & examination usually is high quality & based on extensive search facilities & data bases.
• Often, the same examiner reviews the application in the national stage, thereby facilitating accelerated & favourable review.
• Examination by non-searching office may enhance the quality of the search.

   But note that EPO will not act as ISA or IPEA for applications directed to certain technologies, e.g. Business Methods.

The PCT System

(For applications filed on after Jan.1, 2004)

months

File local

application

File PCT

application

International

Search report

& written opinion

Of the ISA

International

publication

0

12

16

18

or

19(22)

20

30

30

IPRP(Chapter I)

IPRP(Chapter II)

ENTER NATIONAL

PHASE

ENTER

NATIONAL PHASE

EISPE system

IA filed

ISR

ISA opinion on

Patentability

criteria

Int’l publication:IA+ISR

(+Art. 19 amendments)

No demand filed

Demand

1st written IPE opinion=

ISA opinion (unless IPEA

Has declared otherwise)

IPE procedure

International Preliminary report

On patentability by IPEA(IPRP)

(chapter II of the PCT) (=IPER)

IPRP ( Chapter II) to EOs

IPRP ( Chapter II) publicly

Available (on request of EO)

National phase only

International preliminary report

On patentability by ISA (IPRP)

(Chapter I of the PCT)

IPRP (Chapter I)

(+any comments) to DOs

IPRP ( Chapter I) (+ any comments)

Publicly available

National phase only

(+Art.34

Argu. & amd.

0-12 mths

16

Art. 19 amdts

Chapter I

Chapter II

18

Later of:

WO of ISA + 3

OR 22

Applicant comments

On ISA opinion to IB

(Informal

Procedure)

30

(if no IPER

Established)

PROTECTION OF PLANT VARIETIES

            India is one among 12 Mega diversity sites in the world. India is one among the 18 Hotspots of Biodiversity.India has over 47,000 plant & 75,000 animal species. India has over 2,000 species with medicinal & economic       value.  Indian botanical products are well-known: - Vegetables for their taste; - Fruits for their sweetness; - Flowers for their fragrance

            Due to deforestation 15,000 to 50,000 species are getting destroyed every year. 1/5 of biodiversity will be lost in coming 20 years. Out of 4,000 flower plants in south India 2,000 are used for preparing medicines. Many of these plants are endangered. Out of 34,000 endangered species of the world 8,000 are Indian medicinal plants

            Bio-informatics is an interface with Information Technology and Life Sciences, including Biotechnology.  It deals with Computer techniques to store and process the biological information.  It is a fertile new area for information scientists. It deals with the technology of databases. We should use multi media tools to spread bio-diversity awareness

            In Bio-diversity India is only 2nd to Brazil. Out of the 18 hot spots of Biodiversity, India has two: (1) Western ghats (2) Eastern Himalayas. But India is yet to make use of this big opportunity. Malaysia, China, & Singapore created infrastructure & promoted MICE (Meetings, Incentives, Conferences, & Exhibitions). Malaysia has developed into a tropical wonderland of amazing tourist attractions with affordable prices. India has vast opportunities in Eco-tourism. As the largest employment generator, tourism has huge potential, economic and social. IT can be appropriately used for this purpose.

PROTECTION OF PLANT VARIETIES & FARMERS RIGHTS ACT 2001

            This law is passed to provide an alternative protection to plant varieties as provided in Art. 27(3) of TRIPS.

Objectives:

1. Establishing an effective system of protection of plant varieties.
2. Protection of farmers’ rights.
3. Protection of plant breeders’ rights.

Functions of the Authority:

1. Promoting and encouraging development of new varieties of plants.
2. Protecting the rights of farmers and breeders.

Registerable Varieties:

A new variety: novelty, distinctiveness, uniformity & stability. An extant variety: distinctiveness, uniformity & stability.Essentially Derived Variety. Definition of Extant Variety:Sec 2(j) i.notified u/S 5 of Seeds Act 1966; ii.farmers’ variety; iii. Variety of common knowledge; and iv. Variety in public domain.[24]

Duration registration

Rights conferred on breeders

            Exclusive right to produce, sell, market, distribute, import or export the variety. To authorise any person to produce, sell, market, or otherwise deal with the variety. Further non-transferable; Terms may be varied by Registrar; Terms may be cancelled by the Registrar.

Farmers’ Rights

1. Farmers’ to register a new variety.
2. Recognition & reward for conservation of genetic resources.
3. Entitlement to save, use, sow, resow, exchange, share or sell his produce including seed of protected variety (not if branded).
4. Right to receive compensation if propagating material supplied fails to provide required performance.
5. Innocent infringement is protected.
6. Exemption from fee.
7. Share in the Gene Fund.
8. Consent of farmer in the case of EDV from his Farmer’s Variety.

Rights of the Communities

            Claim filing by any person, group, government organisation or NGO on behalf of community for contribution. Compensation will be awarded after due hearing.

Compulsory License

            Authority to issue compulsory license after three years: if reasonable requirements of the public is not satisfied; If not available to the public at reasonable price. Consultation with the Central Government needs before issuing. Terms & conditions & duration of license is to be determined by Authority. Authority can modify or revoke license.

Appellate Tribunal

            It hears appeals from the following orders: registration of a variety; registration of an agent or licensee; claim of benefit sharing; revocation or modification of compulsory license; and payment of compensation.

CONCLUSION

            India has to very carefully pursue its IP policy especially its patent regime to ensure proper protection of ITK, which is very rich as also promote the ITK and its use and utility to the people of India in particular and the global community in general and thereby transform India into a knowledge super power.

* Speech delivered in the Inaugural Function of One Day National Seminar on Patent Rights organized by the Karnataka Institute for Law and Parliamentary Reform, Bangalore and S. C. Namdimath Law College, Bagalkot on 16^th October, 2007.

· Special Officer, Karnataka State Law University, Hubli

[1] Statistics of the Government of India 2006-07

[2] Arnold Toynbee (Famous British Historian)

[3] Arnold Toynbee, in 1947 lecture “The unification of the world”.

[4] 1999 Amendment

[5] Ammu Joseph, Patently unfair, The Hindu, December 12, 2004

[6] Vijay Times, August 17, 2005, P.9

[7] S.5 of the 1970 Act dealing with process patent is deleted by Third Amendment.

[8] Riki Ponting (2004).

[9] The Hindu, March 9, 2005

[10] Patent No.5900240 of 1999

[11] Patent No. 5886029

[12] The Hindu, October 12, 2004, P.16

[13] U.S. Patent No. 6410059

[14] Lawyers Update Vol XII, Part 08, August 2006, Pp16-17

[15]  Mellar V. William Beardmore & Co. Ltd

[16] Vokes Ltd.V.Heather&Adamson V. Kenworthy

[17] Allen V. Rawson

[18] 2nd Amendment

[19] Section 57

[20] Sections 25 and 26

[21] WO 2005/017204

[22] Art.27(3)

[23] Art.27 (2)

[24] Section 15