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Patents
Amendment Ordinance, 2004
The Patents
Amendment Ordinance, 2004 ("Ordinance"), which amends the Patents Act,
1970 ("Act"), has been promulgated after receiving assent from the President
of India. Since 1995 this is the third amendment, which seeks to comply
with India's commitment under Agreement on Trade Related Intellectual
Property Rights ("TRIPS"). This Ordinance will be valid for a period of
6 months, within which time both the houses of the Parliament of India
will need to pass a bill to confirm the amendment. Else the Ordinance
will lapse. In that case a new ordinance will have to be promulgated.
Some
of the important amendments sought to be made by the Ordinance are
-
Introduction
of Product Patent and removal of the EMR provisions:
- The Ordinance
removes the bar on patentability of pharmaceuticals and agro-chemicals
from January 1, 2005. Thus, product patents can now be granted
in India. The black box applications for product patents will
be examined beginning January 1, 2005.
- The provisions
for Exclusive marketing rights (EMRs) have been removed. As
required by TRIPS, a transitional arrangement in the form of
EMRs was introduced since 1995 pending introduction of the product
patent.
- The applications
for patent in respect of which EMRs were granted will be examined
for the grant of patent immediately on the commencement of the
Ordinance.
- All suits
relating to infringement of the EMRs granted before January
1, 2005 will be dealt with in the same manner as if they were
suits concerning infringement of patents under the Patents Act.
-
Software
Patents: Earlier amendment introduced a clause which said that
computer programme per se are not patentable. The experts had interpreted
that software with technical effect could be patented as language
of such amendment was similar to that in England where software
as such was not patentable. Now, as per the current amendments,
the Ordinance clarifies that software having (i) Technical application
of computer programs to industry; and (ii) combination of computer
program with the hardware - can be patented if they otherwise fulfill
the test of patentability. This provision will give further boost
to the thriving software industry in India.
-
Change
in the Procedure for grant, publication and opposition of patent:
- All the
applications would be published after expiration of the period
to be specified by the Rules, except on the grounds of secrecy
or when the application is abandoned or withdrawn. The applicant
could make an application for earlier publication.
- The stage
of acceptance and advertisement of the application for opposition
has been replaced by the stage of grant of patent.
- The new
provisions allow both pre-grant and post-grant opposition. The
pre-grant opposition can be filed anytime after the publication
of the patent application but before a patent is granted. The
post-grant opposition can be filed within a period of one year
from the date of publication of the granted patent. The grounds
on which pre-grant opposition can be filed are limited - (i)
patentability including novelty, inventive step and industrial
applicability; (ii) non-disclosure or incorrect mention of source
and geographical origin of biological material used in the invention
and anticipation of invention by knowledge (oral or otherwise)
available within any local or indigenous community in India
or elsewhere.
-
Rights
prior to the Grant: The Ordinance clarifies that post-publication
of the application for patent grant and until the date of the grant
of a patent, the applicant shall have the like privileges and rights
as if a patent for the invention has been granted on the date of
publication of the application. However, he shall not be entitled
to institute any proceedings for infringement until the patent has
been granted.
-
Security
Provisions: The ordinance also prohibits any person resident
in India from applying for and being granted any patent for an invention
outside India without written permission of the Controller of Patents.
The application for a patent for the same invention has to be filed
in India first, not less then six weeks before the application outside
India. Before granting such permission in respect of invention,
which is relevant for defense purpose or atomic energy, the Controller
has to obtain prior consent of the Central Government.
-
The
term of the patent (which is 20 years) in respect of national
phase applications under the Patent Cooperation Treaty shall now
be computed from the international filing date and not from the
date of filing of the national phase application, as was the case
prior to amendment.
-
Import
of patented article: Due to the amendment to Section 107A of
the Act, importing a patented invention solely for uses reasonably
related to the development and submission of information required
under any Indian law or in a foreign law, that regulates the manufacture,
construction, use, sale or import of any product does not constitute
infringement within the meaning of the Act.
-
Compulsory
License: A new provision has been inserted in the Chapter of
Compulsory License. The provision provides for grant of license
to manufacture and export the patented product to any country having
insufficient or no manufacturing capacity in the pharmaceutical
sector to address public health problems provided a compulsory license
has been granted in that country. The amendment seeks to implement
the agreement on Para 6 of Doha Declaration on TRIPS and public
health. This will allow Indian companies to produce and export AIDS
drugs to African and South East Asian countries.
-
The
Ordinance also introduces heavy penalty for offences under the Act.
You
can direct your queries to Gowree
Gokhale or Apurva Mehta
Source:
Patents Amendment Ordinance, 2004
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