Patent System in India At Asia Pacific LES Conference- Hangzhou By Rahul Vartak LES - INDIA Partner, Krishna & Saurastri Associates 16 th October, 2013 –

TreatyEntry into force of the Treaty Paris Convention for the Protection of Industrial Property, December 7, 1998 Patent Cooperation TreatyDecember 7, 1998 Budapest Treaty on the International Recognition of the Deposit of Micro- organisms for the Purposes of Patent Procedure December 17, 2001 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks July 8, 2013 Berne Convention for the Protection of Literary and Artistic Works April 1, 1928

Patent Law First Law – 1856 :PROTECTION OF INVENTIONS THE INDIAN PATENTS & DESIGNS ACT THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20 TH APRIL ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO FORCE FROM THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist JANUARY 2005

4 India Patent Office - Overview

Section 8 Divisional applications Working requirement

6 SECTION 8 (1)SECTION 8 (2) What to fileDetails/Status of Corresponding Applications Search & Examination Reports of Corresponding Applications When to fileAlong with the Application & 6 Months from change in status 6 Months from Request of controller - First Examination Report Which forms to file Form 3No Forms

7 SECTION 8 (1)SECTION 8 (2) What to fileDetails/Status of Corresponding Applications Search & Examination Reports of Corresponding Applications When to fileAlong with the Application & 6 Months from change in status 6 Months from Request of controller - First Examination Report Which forms to file Form 3No Forms Section 8 (1) is thus an ongoing obligation to submit information regarding the statement of undertaking made on Form 3 Section 8(2) is to be complied with on Request of Controller

Section 16: Power of Controller to make orders respecting division of application:- A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, OR with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application. 8

LG ELECTRONICS, INC Vs. THE CONTROLLER OF PATENTS Decided : 10 th AUGUST, We agree with the applicants arguments that the applicant can file an application as divisional application of his own before the grant of patent. However IPO is mandated by the law to ascertain that the divisional application so filed is on account of disclosure of plurality of distinct invention in the parent application 9

We are convinced that the phrase “if he so desires” used in Section 16 is not unconditional and it does not give the applicant an unqualified liberty to file a divisional application even when there is no situation of plurality of the distinct inventions contained in the mother application. 10

BAYER ANIMAL HEALTH GMBH Vs. THE CONTROLLER GENERAL OF PATENTS & DESIGNS Decided : 29 th OF OCTOBER, 2012 The basis of a divisional application is the existence of a plurality of invention. This is a sine qua non for seeking a division of an application. 11

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All Patentees and Licensees' are required to furnish information in Form No.27 on working of patents as prescribed under Section 146 of the Patents Act (as amended) read with Rule 131 of the Patents Rules 2003 (as amended). Attention of the Patentees/licensees are also invited to provisions of Section 122 of the Patents Act, 1970 (as amended) wherein penalty is prescribed for non-submission of such Information. Public Notice, December

● S. 122 Refusal or failure to supply information (1)If any person refuses or fails to furnish— (b) to the Controller any information or statement which he is required to furnish by or under section 146. he shall be punishable with fine which may extend to ten lakh rupees. (approx USD 20000) (2)If any person …furnishes information or statement which is false and which he either knows or has …reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both. 14

69. Registration of assignments, transmissions, etc.— (1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.

Chemtura Corporation Vs Union of India and Others Delhi High Court Patent revoked for non compliance with section 8 – Foreign filing details, but It was also submitted that the patent itself had not been worked by the Plaintiff and the three approved manufacturers of the Plaintiff who were claimed to be its licencees. The fact that they were licencees was also contested since the licence would have to be in writing and be registered in terms of Sections 68 and 69 of the Act