AUGUMENTED TOPICS

PATENT
A patent is a legal monopoly granted for a limited time to the owner of an invention. It empowers
the owner of an invention to prevent others from manufacturing, using, importing or selling the
patented invention. Patent Act, 1970 as amended in the years 1998 and 1999 along with Patent
Rules, 1972 govern patents in India.
What is Patent?
Patent is a monopoly granted by statute of a country for a limited term over a new and useful
invention that involves inventive step. Invention may either for a product or process. The rights
enjoyed by owner of the patent are proprietary in nature and the patentee or his agent or licensees
has the exclusive right to use and have the benefits of patented invention and prevent
unauthorized use, during the period of patent protection. Period during which the owner enjoys
the benefits is called term of the patent. Registration is a prerequisite for patent protection and
the protection granted is territorial in nature i.e., patent granted in a country will give the owner
of the patent right only within that country.

Indian Law on Patents

The law governing Patents in India is Patent Act, 1970 as amended in the years 1995 and 1999,
along with the patent rules, 1972.
Patent Act do not define the term 'Patent' [s.2 (m)], it simply states that Patent means a patent
granted under this Act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57,
58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapter XVI, XVII & XVIII, and
a Patent granted under the Indian Patents and design Act, 1911 (2 of 1911); the Patents (Second
Amendment) Bill, 1999 states that Patent means a patent granted under this Act.
Patent Act 1970 envisages that 'any invention that has a commercial application and which are
not exempted under the Act are eligible for grant of patent. S.2 (j) the Act defines invention as:
any new and useful
art, process, method or manner of manufacture;
machine apparatus or other Articles;
substance produced by manufacture,
and includes any new and useful improvement of any of them, and an alleged invention;

The Second Amendment Bill, 1999 has introduced a new definition of invention as against 1970,
Act, i.e., 2(j) in 1999 Bill:
invention means a new product or process involving an invention step and capable of industrial
application.
Section 3 speaks about invention not patentable. Inventions which are 'frivolous, contrary to
Natural Law, Contrary to Law or morality or injurious to public health or formulation of an
abstract theory, discovery of any new property or new use for a known substance or a substance
obtained out of a mere admixture or it is a mere arrangement or re-arrangement or duplication or
horticulture, or any process for the medicinal, surgical, curative, prophylactic or other treatment
of human beings', are not patentable.
Where as it is important to note that the Amendment Bill 1999, has proposed major changes to
Section 3. It has made changes to clauses (b) of the Act, i.e.,
'Clause (b) of 1970 Act is prevention of an invention the primary or intended use of which would
be contrary to law or morality or injurious to public health'.
Where as in the bill, it has inserted the later part of sentence:
An invention the primary or intended use or commercial exploitation of which could be
contrary to law or morality or Which causes serious prejudice to human, animal or plant life or
health or to the environment (cl. 3 (a) of the bill)
In the Act section 3 (c) is about abstract theory, but the bill proposes to add after words 'an
abstract theory', the words or discovery of any living things or non-living substance occurring in
nature. (Cl.3 (b) of the bill).
Similarly, 3 (c) of the bill proposes to omit 3 (g) of the Act, which is about method or process of
testing applicable during the process of manufacturing to render more efficiency to machineries.
Sub-clauses (j) to (o), (k) of the bill attempts to make a mathematically or business method or a
computer program or algorithms non-patentable.
(l) is all clear about not patenting literary, dramatic, musical or artistic works, including
cinematographic works and television productions. cl.3(i) proposes to the insert after the word
prophylactic, the words diagnostic, therapeutic. And the words or plants in 3 (i) of the Act
shall be omitted.
Bill has proposed to add further few Clauses after 3 (i) i.e., 3 (j), 3 (k), 3(l), 3(m), 3(n), 3(o).
3 (j) would be plants and animals other than micro-organisms in whole or any part there of
including seeds, varieties and species and essentially technological processes for production or

prolongation of plants and animals. The invention relating to above would not be patentable if
the bill is passed.
(m) of the bill excludes a mere scheme or rule or method of performing mental act or method of
playing game.
a presentation of information is intended to be kept out of patent protection.[cl.(o)]
(o) of the bill excludes topography of Integrated Circuits from being patented since there is
separate legislation for Semi Conductor and Integrated Circuits.
Term of patent
Section 53 speaks about the Term of Patents. Normally a patent remains in force for a period of
14 years from the date of application subject to the payment of the stipulated renewal fees. But
the term differs, when it is related to food, medicine or drug i.e., it is 5 years from the date of
selling of patent or it is 7 years from the date of patent whichever period is shorter.
Enforcing Patent Right
The Patent Act confers on the patentee the exclusive right himself, his agents for licensees, to
make, use, exercise, sell or distribute the invention. If the patent is for an article or substance, the
exclusive right by himself, his agent or licensees to make, use, exercise, sell or distribute such
article or substance in India. If the patent is for a method or process of manufacturing an article
or substance, the exclusive right by himself, his agents or licensees to use or exercise the method
or process in India.
A patentee has a right to sue when a third party does any act that is within the rights conferred on
the patentee. Infringement proceedings can be initiated in District Court within whose
jurisdiction the actual infringement was committed, or where the defendant normally resides or
carries on his business. Section 104 clearly states that no suit shall lie or shall be instituted in any
court inferior to district court.
Relieves which a court may grant in any suit for infringement includes an injunction and at the
option of the plaintiff either damages or an account of profits.
In a suit for infringement of a patent, damages or an account of profits shall not be granted
against the defendant who proves that at the date of the infringement he was not aware and had
no reasonable grounds of believing that the patent existed.
Courts may refuse to grant any damages or an account of profits in respect of any infringement
committed after a failure to pay any renewal fee within the prescribed period and before any
extension of that period.
Where an amendment of a specification by way of disclaimer, correction or explanation has been
allowed under this act after the publication of the specification, no damages or account of profits
shall be granted in any proceeding in respect of the use of the invention before the date of the
decision allowing the amendment, unless the court is satisfied that the specification as originally
published was framed in good faith and with reasonable skill and knowledge.
The 1999 Amendment Bill proposes to insert a sub-section 104A (i), which lays that in any suit
for infringement of a patent, where the subject matter of the patent is a process for obtaining a
new product, the burden of proving that a new and identical product is not made by that process

shall be on the alleged infringer if a substantial likelihood exists that the identical product is
made by the process, and the proprietor, of the patent or a person deriving title or interest in the
patent from him has been unable through reasonable efforts to determine the process actually
used: Provided that the proprietor of the patent or a person deriving title or interest in the patent
from him first proves that the product is identical to the product directly obtained by the patented
process.
However, subsection (2) of 104 A of the bill says that in carrying out with 104 A (1), the court
shall not require him to disclose any manufacturing or commercial secrets, if it appears to the
court that it would be unreasonable to do so.
Rights of exclusive licensee to take proceedings against infringement
The rights of exclusive licensee are governed under Section 109 of the Act. The holder of an
exclusive license can enjoy the like right or a right alike as that of patentee institute a suit in
respect of any infringement of the Patent, which is committed after the date of the license.
However, before he institute suit himself he is mandated under the Act to require the patentee to
initiate the proceeding. Licensee can sue if the patentee on does not institute proceeding on such
calling up.
The court takes into consideration any loss suffered or likely to be suffered by the exclusive
licensee before awarding damages or an account of profits or granting any other relief in any
such suit. The court even considers the profits earned by means of infringement so far as it
constitutes an infringement of the rights of the exclusive licensee as such.
Section 109(2) of the Act envisages that in case of a suit for infringement of a Patent by the
holder of an exclusive license, the patentee shall be added as ad defendant, unless he has joined
as a plaintiff in the suit and such a patentee how is so added as a defendant will not be liable for
any costs unless he enters an appearance and takes part in the proceedings.
Defenses available in suits for infringement (Section 107)
In case of a suit for infringement of a Patent all grounds of revocation under section 64 shall be
available as a grounds for defense. Conditions specified under Section 47(Grant of patents to be
subject to certain conditions) should be implied with in my suit for infringement of a patent by
making, using or any process or by the importation, use or distribution of any medicine or drugs.
Amendment Bill of 1999 has proposed to insert 107A to the Act, according to this, any act of
making or using a patented invention within three years before the expiry of the term of the
patent by any person for the purpose of development and submission of information to any
regulatory authority responsible for grant of marketing approval for the product of invention
does not amount to an infringement of Patent rights.
Similarly, the bill proposes to insert 107A(b) that also does not consider importation (a right
proposed to be granted to the patentee under 1999 second amendment Bill) of patented products
by any person from a person who is duly authorized by the Patentee to sell or distribute the
product, as an infringement.

The defendant can challenge the validity of the patent.

District Courts are not empowered to pronounce the validity of the patent. When it comes to the
question of validity, the District Courts transfer the suit to the High Court.
Patent Useful Links
http://www.ljextra.com/patents/biotech.htmlThis page is part of the Patents Practice Group of
Law Journal Extra. It provides a great deal of sources to the most recent developments on Patent
issues relating to biotechnology. New links are added regularly. The links include articles from
journals and newspapers and more importantly to the entire texts of judgements. The page also
contains some permanent links to sites such as the USPTO and others related to the Human
Genome Project and Genomic Research. An ideal site to know the latest developments in
Biotechnology and IP Law.
http://www.patents.ibm.com/This is the IBM Intellectual Property Network. This site contains a
database of all patent publications made by the USPTO, the WIPO and the EPO since 1971.
Several of these documents are viewable online while provision is made for ordering others. This
site provides access to several important publications, which might otherwise take months to
acquire. The database is also searchable either based on a keyword or on the patent number.
http://www.ljx.com/lawonline/practice/pages/pat_stat.htmlAs part of Law Journal Extra's Patent
Practice group, this page contains a list of all the important Patent legislations in the USA and
internationally. They include the NAFTA treaties, the US Code, the GATT Agreement, the PCT
and the like.
http://www.law.cornell.edu/topics/patent.htmlThis page is Cornell University's Patent
information site. It provides a comprehensive introduction to patent law in the USA along with
links to the relevant constitutional and statutory provisions. The page also has links to the most
recent Supreme Court and Federal Court decisions. It also has links to the important international
treaties and documents.
http://www.patents.com/This site, hosted by the law firm of Oppedahl & Larson, is a brief
overview to the pros and cons of filing for different forms of intellectual property rights in the
USA, the various cost involved, the procedure to be followed and also whom to contact. While
the site does not purport to offer any legal advice, it provides a simple overview.
Juris Diction [http://web.idirect.com/~dcameron/index.html] - Information on biotech law,
information technology law, intellectual property and more.