Conditions of Patentability under Patent Act: Provisions, Cases and Principles

Conditions of Patentability under Patent Act: Provisions, Cases and Principles

Author: Ishika Goyal, Student, Delhi Metropolitan Education (IP university)

Edited by: Madhumita Saha, Student, Lajpat Rai Law College, Sambalpur University, Odisha.

INTRODUCTION

A patent is typically an exclusive right awarded for an invention, product or even a process that is beneficial and provides a new way of doing something or even a new technical solution that is related to a problem. To obtain a patent, Technical information, including inventions, must be made available to the general public in the application for a patent.

It is even more interesting to know about the history of patents. The patent law in India began in 1911, when the Patents and Designs Act, of 1911 was enacted. The Patents Act, of 1970 is the law that governs patents in India until nowadays. Moreover, the patent law was first implemented in 1972. The Office of the Director of Patents, Designs and Trade Marks or CGPDTM is the governing body for Indian patent law. It has its main patent office in Kolkata and branches in New Delhi, Chennai and Mumbai.

Additionally, The CGPDTM office is located in Mumbai. Nagpur hosts the Patent Information System Office and the National Institute of Intellectual Property Management. Even the Director General shall oversee the administration of this Act and advise the Government on matters relating thereto. The Patent Act was amended several times in 1999, 2002, 2005, and 2006 and these amendments were necessary to comply with the TRIPS Patent Act. the TRIPS stands for Trade Aspects of Intellectual Property.

In addition, A major change in patent law occurred in 2005, when product patents were extended to all technological areas such as food, medicine, chemicals and microorganisms. The laws were also amended under the Patents Act in 2012, 2013, and 2014. In this article, we will discuss more about the India Patent Act along with the different Patentability Conditions.

Keywords:

  1. India Patents Act
  2. Indian Patent Act 1970
  3. Patentability Conditions
  4. Patent Act Provisions
  5. Patent Principles

What can be patented?

Scientist Chakrabarty applied for patent protection for his invention of a process for creating bacteria that could degrade several different components of crude oil. He made several assertions about the bacterium, including how it developed, the bacterium itself, and an inoculum that contained the bacterium and a carrier material. Chakrabarty’s application for a patent on the bacteria was rejected because it did not satisfy the necessary subject matter requirements, even though the examiner concluded that a patent was warranted for the procedure and the inoculum.

The patent examiner states that a live organism is not eligible for patent protection under the 1930 Plant Patent Act or 35 U.S.C. Section 101. Conflicting conclusions were made on the subject by several appellate review bodies.

The Indian Patents Act, 1970 made plain the limitations on what can be patented in India in Sections 3 and 4. To receive a patent in India, several requirements must be met. They are as follows:
     1. Patent Subject:

Determining whether the invention is related to a patentable subject matter is the      most crucial step. The Patents Act lists non-patentable subject matter in Sections 3 & 4. Moreover, The innovation is patentable unless it comes under one of the provisions of Sections 3 or 4.

  1. Uniqueness:
    When evaluating an invention’s patent prospects, innovation is a crucial factor. A novelty or new invention is defined as “no invention or technology published” under Section 2(l) of the Patent Act.
  2. Creative actions or ambiguity:
    The characteristic of a patent involves technological advancement of economic importance or both. However, It must be relevant to existing knowledge, and an invention that is not evident to a person knowledgeable in the art is defined as an innovative step under Section 2(ja) of the Patent Act. Additionally, This implies that an individual with expertise in the same sector as the invention should not be able to see the idea immediately. For someone with expertise in the same field, it shouldn’t be both imaginative and obvious.
    4. Suitable for industrial use:
    The Patents Act’s Section 2(ac) defines industrial application as “the invention is capable of being made or used in an industry.” In essence, this indicates that the invention cannot exist in a vacuum. It must apply to all industries, This means that it must be valuable for patents.

These are legal requirements for an invention’s patent. The publication of a competent patent is another crucial need for receiving a patent. A competent patent disclosure is one in which the invention is sufficiently disclosed in a patent draft specification to prevent undue effort by a person with similar expertise from carrying out the invention.

Conditions of the Indian Patent Act 1970

Indian patents are granted under the Indian Patents Act, of 1970 if the innovation meets the following conditions:

  1. The construction must be original. The invention should not be obvious or involve new methods.
  2. It should be well made for business use. Inventions can only be made using construction or methods that can be prevented.
  3. Sections 3 and 4 of the Patents Act 1970 shall not apply.
  4. Nuclear power generation not subject to safeguards: Nuclear power generation facilities falling under clause (1) of section 20 of the Energy Act, 1962, are not subject to safeguards.
  5. Any of the people mentioned there can request the first page, alone or jointly with another person. Each patent application must be for a single invention, presented in the required form and submitted to the Patent Office.

Rights and duties of the patent owner

Patent rights

  1. The patentee has the exclusive right to use, use, sell or distribute the registered product or material in India, to use or use the method, or in practice if the patent is owned by an individual. The patent holder may exercise this right either through his representative or through the licensee. The rights of the patent holder can only be exercised during the term of the patent.
  2. The patent holder has the right to transfer rights or grant a license to make other payment arrangements. The license or assignment must be in writing and registered with the patent officer to be valid and valid. A patent assignment will not be accepted as evidence of patent ownership by anyone unless it is registered, and this applies to the grantor, not the grantee.
  3. The patent holder has the right to surrender his patent, but before accepting the surrender, the surrender notice will be sent to the persons named as beneficiaries of the patent as opposed. , It works. The application for release will also be published in the official gazette so that interested parties can protest.
  4. A patent owner has the right to sue for patent infringement in the district court that has jurisdiction over the action.

Obligations of patentee

  1. It is believed that the government may restrict or forbid the use of a patent under certain conditions. A patented invention may be exploited, or even purchased, by the government for its purposes. If a medication or drug has a patent, the government may import it for its use or distribute it at any hospital, dispensary, or other medical facility that it operates or contracts with. The patent holder’s permission or payment of royalties is not required for the aforementioned use. In addition, the government may demand a patent or sell goods made using a patented technology in exchange for royalties.
  2. The Controller may give any applicant a compulsory license to work the patent if it is not worked sufficiently to meet the legitimate needs of the public at a fair cost. The Indian Patent Act contains a provision known as a compulsory license that gives the government the authority to order a manufacturer of generic drugs to provide affordable medications for the general population even while the product is still covered by a valid patent. In cases where one patent cannot be worked without the other, compulsory licenses may also be sought for related patents.
  3. If there has been no work done on the patented innovation or if the public’s demands have not been met, a patent may be revoked. Patents for defence-related inventions may be subject to various confidentiality clauses, meaning that the controller may restrict or forbid the invention’s release. The application is banned from use upon the continuation of such an order or the prohibition of publishing or transmission of a patented invention, and the Central Government may utilize it in exchange for paying the applicant royalties.
  4. If a patent has lapsed, it may be renewed as long as the patent holder’s rights are not severely restricted. The patent cannot pursue infringement claims where the infringement occurred between the date of the infringement and the date of the application for reinstatement’s announcement.

Grounds of opposition to patents 

Under section 25 of the 1970 Act, a patent application can be rejected on several grounds:

1. False purchase: If the patent was obtained by mistake on the part of the opponent, it can be challenged. The novelty of this invention is evaluated in light of the prior art. Preconceived notions cannot be challenged.

2. Prior publication: If the invention was published before the date on which priority is claimed, it can be rejected. The publication should show the details of the production.

3. Public use: Public use of the invention before the first date is a ground for objection. Secret use is not considered.

4. Of course: If the invention is discovered without a manufacturing process, you can oppose the patent application. Ambiguous cases are referred to the Supreme Court.

5. Unpatentable Inventions: Applications for inventions falling under non-patentable categories will be rejected.

 6. Description is not enough: The description of the object must be clear. Applications that do not match or have insufficient explanations will be rejected.

7. Silence foreign applications: If the applicant has registered for such foreign invention, inform the administrator. Failure to do so may result in objections.

8. Suspend Conference Request: Conference requests must be submitted within 12 months of the initial request to maintain priority. Delay results in failure.

Legal requirements under WIPO for patentability :

All countries have their list of needs and requirements to obtain a patent. Whereas There is no list of requirements for this field, WIPO provides important conditions that must be met to obtain a patent. these are:

  1. The invention for which a patent is applied must meet the requirements of novelty. It should not be like the old art, it should be up to date with the current knowledge in the technical fields.
  2. To be invisible, involves some thinking moves. It is meant to be beyond the reach of a common man with his ordinary faculties. It must be used in industry, that is, industrial use.
  3. The object of the invention must be included in the category of patentable material. When applying for a patent, the information and details of the invention must be clearly stated.

The Patents (Amendment) Bill 2005 passed by the Indian Parliament

The Indian Parliament has passed the Patents (Amendment) Bill, 2005, which replaces the Patents (Amendment) Ordinance, 2004, which was previously passed by the Government of India in December 2004. India was required to introduce product patent protection in these areas from 1.1.2005 under the obligations under the WTO TRIPS Agreement. To fulfil this requirement, the Government of India issued an order in 2004. This decision must be approved by the Parliament. While introducing the Patents (Amendment) Bill 2005 to the Parliament, the Government made some changes in the provisions of this Act.

The doctrine of equivalent patents

Literal and non-literal patent infringements are the two main categories of patent infringements. A literal duplicate of the copyrighted innovation is required for a literal infringement to take place. For instance, it was deemed a literal copy of the copyrighted idea in the 1986 Polaroid Corp v. Eastman Kodak case when Eastman Kodak directly utilized Polaroid’s “instant camera technology.” Conversely, an indirect infringement implies a degree of inadvertent infringement or malicious intent. For instance, in Ravi Kamal Bali v. Kala Tech and others [2008], the product was deemed to be infringing even if its primary body had a different structure since there was no functional or constructional difference between it and the other goods. This would clarify everything. The field of indirect infringements is governed by the Doctrine of Equivalent Patents. The doctrine allows the patent holder to assert a claim even in situations when the patented invention’s claim is not replicated in the product that is being copied. This philosophy has developed to prevent people from making minute modifications to inventions while maintaining the functionality of the final product and preventing them from reaping the rewards of the patentee’s labour and capital.

Case Laws

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

Scientist Chakraborty filed for patent protection after he discovered a way to create a bacterium that could break down various components of crude oil. His assertions included the bacterial growth mechanism, the bacterium itself, and an inoculum that contained the bacterium and a carrier material. Chakrabarty was not granted a patent for the bacteria itself because it did not fit the requirements for patent subject matter, even though the examiner concluded that a patent was warranted for the procedure and the inoculum. A living organism cannot be patented, according to the patent examiner, under 35 U.S.C. Section 101 and the 1930 Plant Patent Act. Diverse appellate review panels arrived at conflicting conclusions regarding the subject.

Novartis v. Union of India (2013)

Novartis applied to the Indian Patents Office and the Patents Controller to get a patent for a medication known as “Gleevec.” However, the application was denied. The corporation appealed and contested each rejection in the Supreme Court.

CONCLUSION

The Indian Patent Act of 1970 governs patents in India, granting exclusive rights for inventions, products, or processes that provide new ways of doing something or technical solutions to problems. The governing body is the Office of the Director of Patents, Designs and Trade Marks (CGPDTM), with offices in Kolkata, New Delhi, Chennai, and Mumbai. The Act has been amended several times to conform to the TRIPS Patent Act, which covers commercial aspects of intellectual property. TA the same time, Each patent application should be linked to an invention and therefore, it should be submitted to the Swedish Patent Office. Whereas, this shows the Patent owners have exclusive rights to use, sell, distribute, transfer rights, grant licenses, file patents and sue for patent infringement. Governments can restrict or restrict the use of patents under certain conditions.

REFERENCES

  1. https://blog.ipleaders.in/what-is-a-patent-law-in-india/#Rights_and_obligations_of_the_patentee
  2. https://blog.ipleaders.in/understanding-doctrine-equivalent-patents/
  3. https://lawfoyer.in/right-to-education-under-article-21-of-the-indian-constitution/#google_vignette
  4. https://supreme.justia.com/cases/federal/us/447/303/