INDIAN PATENT SYSTEM Recent Advances IPR ADVANTAGE : Dr. W.M. DHUMANE SENIOR JOINT CONTROLLER OF PATENTS & DESINGS, PATENT OFFICE , MUMBAI e-mail: wmdhumane@rediffmail.com

INTELLECTUAL PROPERTY Creation of Human Intellect Knowledge Assets – Tradable Commodities - capital IPR- A Key component for success in Business Tool for Competitiveness IPR - “New wealth of Nations

INTELLECTUAL PROPERTY Not just a tool of exploitation, but a tool of empowerment Knowledge-based economy Characterized by creation, possession, utilization and proliferation of knowledge assets Countries which pay adequate attention to innovation and protection of IPRs win in international competition; Knowledge assets are fast gaining importance over physical assets in Industry

INTELLECTUAL PROPERTY There will be no self-relied innovation without protection of IPRs. To protect IPRs is necessary for inspiriting domestic self-relied innovation To protect IPRs is to respect work, respect knowledge, respect talents and respect creation IPR is to encourage technological innovation and improve IP awareness of the whole society

Legislative Framework Department of IP &P covers Patents Act, 1970 (as amended in 2005); Patents Rules, 2003(amended in 2006) Designs Act, 2000 ; Designs Rules, 2001 Trade Marks Act 1999; Trade Marks Rules 2002 Geographical Indications of Goods Act, 1999; Geographical Indications of Goods Rules, 2002 The Protection of Plant Varieties and Farmers’ Rights Act, 2001 & Rules 2003 Department of Education covers Copyrights Act 1957 (amended in 1999)

- A Visual Symbol as Word, Name, Logo, Label etc AREAS PATENTS: - Inventions -Technical Solution to a Technical problem INDUSTRIAL DESIGNS: - External features appealing to an eye - New Shape, Pattern or Configuration TRADE MARK: - A Visual Symbol as Word, Name, Logo, Label etc - Applied on Article of Manufacture or Service - To indicate the origin of manufacture/service.

COPYRIGHT- Artistic creation Proprietary right comes into existence as soon as the work is created GEOGRAPHICAL INDICATIONS Identifies agricultural,natural or manufactured goods originating from a definite territory in India possessing special quality or reputation based upon unique characteristics of the geographical location

What is a Patent ? A new product or process involving an Inventive Step and capable of Industrial application New (novel), if it does not form a part of state of the art Inventive Step - A feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art Capable of industrial application means- invention is capable of being made or used in any kind of industry

PATENTS Patent is an exclusive monopoly right - granted by Government of India for an Invention to the Inventor or his Assignee as a Territorial Right In lieu of Disclosure of invention to the Government Term of Patent: 20 years from date of filing “ Arth Karicheye Vidhya’ (create wealth from knowledge) – Chanakya “ Patents add fuel of interest to the fire of genius’ - Abraham Lincon “Patents are like knowledge check posts on the Innovation Highway

Patent System - Objectives To encourage inventions Patents to be worked in India on commercial scale and to the fullest extent without undue delay Benefits to be available to the public at affordable price Not granted merely to enjoy right for Importation Not to impede protection of Public Health and Nutrition Not to prohibit Govt to Protect Public Interest, specially in sectors of vital importance for socio- economic and technological development of India Not to be abused by a patentee and to ensure that the patentee does not resort to practices which unreasonably restrain trade or adversely affect international transfer of Technology To give Mutual Advantage to Producers and Users To ensure Balance of Rights and Obligations

INVENTIONS – NOT Patentable ( S. 3 & 4 ) (a) An Invention Which is frivolous or which claims anything obviously contrary to the well established Natural Laws (b) Primary or intended use or commercial exploitation of which could be Ccntrary to Public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment (c ) Mere Discovery of a Scientific Principle or Formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in nature (d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance

INVENTIONS – NOT Patentable ( S. 3 & 4 ) OR the mere discovery of any new property or new use for a known substance OR of the mere use of a known process, machine or apparatus, unless such known process results in a new product or employs at least one new reactant 3 d : Explanation : For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers, complexes, combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

(e) A substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance (f) Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way (h) Method of Agriculture or Horticulture (i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of animals to render them free of disease or to increase their economic value or that of their products

Plants & animals in whole or any part thereof other than micro- organisms, but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals (k) A mathematical method or a business method or algorithms or a computer programme per se A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions ( m) A mere scheme or rule or method of performing mental act or method of playing game

n) Presentation of information O) Topography of integrated circuits. p) An invention which, in effect, is the Traditional Knowledge or an aggregation or duplication of known properties of traditionally known component or components Section (4) : Inventions relating to atomic energy falling within the section 20(1) of the ATOMIC ENERGY ACT, 1962.

Patent Grant Procedure Filing of patent application Early Publication Publication after 18 months Opposition By Third Party Representation ( Pre Grant Opposition) Request for examination Examination: Grant or Refusal Publication of Grant of patent Opposition to the patent (Post Grant Opposition) Decision By Controller

[MEANS CHALLENGE TO NOVELTY OF CLAIMED INVENTION ] RELATIVE NOVELTY ANTICIPATION [MEANS CHALLENGE TO NOVELTY OF CLAIMED INVENTION ] PRIOR PUBLICATION PRIOR CLAIM PRIOR worldwide in India PUBLIC USE in India PATENT LITERATURE NON-PATENT LITERATURE The invention should be new [novel] to the public on the date of filing the application or on a priority date

NO ANTICIPATION NO ANTICIPATION, if the invention is : Published in pursuance of application filed before 1-1-1912 OR Obtained from the applicant and published without his consent OR Communicated to the Govt for investigation purpose OR A) Displayed / exhibited /used with the consent of inventor at an industrial or other exhibition, notified by Govt and / or published as a consequence thereof OR B) RESEARCH PAPER on invention read by the inventor before a learned society and/ or published with the consent of the inventor in transactions of such society

And the application for patent is filed within twelve months from such display / exhibition / reading / publication Prior Use- if publicly worked in India only for the reasonable trial which was reasonably necessary and An application for patent is filed within one year from the date of such trial Used/published in India or elsewhere after filing Provisional /Conventional Application

Inventive Step When the invention is just an automatic or obvious extension of Prior Art, the invention lacks in inventive step. To judge the inventive step, the question to be answered is- “ Would a person with ordinary skills in the art have thought of the alleged invention? If the answer is No, then the invention is non- obvious The question -“ Is there an inventive step “? arises only if there is novelty

Inventive Step It is not enough that the invention is novel i.e.,difference exists over the state of art, but that this difference must be substantial and significant For constituting an Inventive Step, Prior Art as a whole is to be considered. Thus, the subject matter is compared with combination of publications or other disclosures , unlike in novelty

Single Inventive Concept Patent is granted for - A single invention or group of inventions , linked so as to form a single inventive concept and there is a technical relationship among those inventions There may be number of independent claims in the same or different categories The common Single technical feature must be inventive enough to fulfill the requirement of non-obviousness

Sufficiency of Disclosure Application must disclose the invention as a whole, in a sufficiently clear and complete manner, to enable the person skilled in the art, to whom the invention relates , to make and use the invention The skilled person may use his common general knowledge to supplement the invention He is not expected to carry out comprehensive search to obtain further details and He should be able to reproduce the claimed step using information given in the application without any inventive efforts

INDIAN PATENT SCENARIO Pre- Modernization Scenario: Legislative limitations, Limited Scope for patenting , Limited Patent Term Patent Act not in tune with global scenario Lack of proper search facility Long Delay in Processing and Grant Processing totally Manual Lack of Trained Manpower Lack of proper Infrastructure and Logistic Lack of computerized environment Low awareness Low Filing

Patenting …Now Patent Act totally revamped: Patentability Criteria Running the Race Successfully Patentability Criteria Publication & Examination Processing simplified; No of forms reduced Patent Term Compatibility in global atmosphere Meeting rights and Obligations

Patents Act ( As amended), 2005 - Salient Features Enacted w.e.f.1-1-2005 Both product and process patent provided. Publication of applications after 18 months with facility for early publication. Examination on request. Both pre-grant and post-grant opposition. Fast track mechanism for disposal of appeals. Provision for protection of bio-diversity and traditional knowledge. Term of patent: 20 years Substantially reduced time-lines.

Safeguards for Users and Society in Patents Law (1) Concerns : Public health, national security and public interest No ever greening: No patent for a new use of a known drug or substance (Section 3): Compulsory licences (Section 84) : Availability of products at reasonable price ensured Special Provision of Compulsory license during national emergency, extreme urgency or public non-commercial use (section 92) to ensure availability of drugs at reasonable prices.

Safeguards for Users and Society in Patents Law(2) Government use of Patents for public purpose : Compensation by mutual agreement between the Government and patent holder failing which by the High Court (Section 102) Revocation for Patent for non-working of the patented invention ; not being available to the public at reasonably affordable price (Section 85). Revocation of Patent by the Government in public interest (Section 66) Bolar provison (Section 107). : facilitates availability of generic version of the patented product at competitive prices immediately on expiry of the patent. Patent can be revoked in the interest of security of India (Section 157 A).

BENEFITS OF PATENTS TO PANTENTEE - I Exclusive Right- to make, use, exercise, sell or distribute an Invented Article or Process in India. Right can be shared , licensed or sold Right to initiate Legal Proceedings against Infringement. The Invention can be commercially exploited without fear of copying, imitation or unauthorised use during Term of Patent.

BENEFITS OF PATENTS- II Published patent specifications: An ocean of scientific Knowledge and technological information Patented inventions - Open to public for free use after the term expires or ceases to be in force Avoids duplication of Research and acts as a stepping Stone for further Research. “You need not reinvent the wheel” Patents give valuable guidance for- Planning R & D Planning strategic protection for IP- assets Forging strategic alliances Identifying possible collaborators /competitors

Benefits of Patents III Helps industry to improve existing technology to give cheaper and better products Identifies emerging technologies, research areas and business opportunities Patent Portfolio- Measure of Company’s Success Tool for increasing negotiating power Establishes as a Pre-eminent Player in the market Patent - A Tool for International Trade

Modernization of IPO Focus Physical infrastructure Development Human resources Strengthening Computerization RE-engineering of IP-procedures IP Promotion & Awareness Updating Search Facilities; Patent Databases Dissemination of IP data IP- Manuals being finalized Updating basic Services IPO-functioning transparent, user-friendly and speedy.

New Patent Office Procedure IPOJ RMID-1 RMID RECS-1 RMID-2 RECS RECS-2 RMID-3 RECS-3 RMID-4 Tech G-1 GPM-1 GPM E&G GPM-2 Tech G-2 GPM-3 Tech G-3 Tech G-4

Comparative Trends of IPRs Granted/Registered Year 2004-05 2005-06 2006-07 2007-08 2008-09 Patents 1911 4320 7539 15316 16061 Designs 3728 4175 4250 4928 4772 Trade Marks 45015 184325 109361 100857 102257 G.I.R. 3 24 31 45

Patenting Activity In India Myths about patents Concept- knowledge is not a tradable commodity Insufficient institutional infrastructure Inadequate focus during project planning and execution Pro-reverse engineering mindset General complacent attitude Temptation to acquire short term gains Professional and financial insecurity Major part of R&D being in Govt sector Less emphasis on IPR- oriented research in PROs Lack of Public awareness

Must Do… Promote Cultivation of IP Culture Increase Capacity to Create IPRs Encouraging IP- Commercialization and Utilization Expediting Development of Legal System for IP Strengthening IP- Administration, examination and registration Formulate and implement region and industry- specific strategies on IP Strengthen IP-information dissemination and international cooperation Enhance professional training so as to raise the competence

Strong Academia - Industry partnership Leads to Economic value addition to S&T Academia ought to unlock the innovation potential of its knowledge base Academia-industry should move to long term trust-based relationship Collaboration should address the gaps between R & D and market ; undertake cooperative programs with industry Industry should be involved at an early stage in Technology Development and R&D project implementation Successful Enterprises should integrate R&D (in-house / outsourced) in their long term corporate strategy

Vision “To transform Indian IPO by 2012 into a World class Organization through adoption of transparent, automated, customer friendly procedures assuring time bound quality services” www.ipindia.nic.in

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