2. (c) 2002 Sandeep K. Rathod Patents: An Introduction A Presentation at Zydus Research Centre Oct. 19, 2002 by Sandeep K. Rathod B. Com, L.L.B. Sr. Exe. IPR Cell - Legal Dept. Cadila Healthcare Ltd.

3. (c) 2002 Sandeep K. Rathod Introduction to Intellectual Property The property or product of one’s mind or intellect Difference between intellectual property and other forms of property: Intellectual property is intangible i.e. it cannot be defined or identified by physical parameters but it needs to be expressed in some discernible way to be protected Intellectual property is intangible i.e. it cannot be defined or identified by physical parameters but it needs to be expressed in some discernible way to be protected In business terms - proprietary knowledge In business terms - proprietary knowledge

4. (c) 2002 Sandeep K. Rathod Types of Intellectual Property Copyrights Copyrights Trademarks Trademarks Patents Patents Content/ multimedia/Undisclosed information Content/ multimedia/Undisclosed information

5. (c) 2002 Sandeep K. Rathod Patent : Is a grant of a monopoly right by an Authority to an inventor/ assignee to use, sell,distribute, license his invention his invention for a limited term in return of complete disclosure that shall be available for public use after the expiry of the term. A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.

6. (c) 2002 Sandeep K. Rathod History The Patent Law of 1856 The Patent and Designs Act, 1911. The Patents Act, 1970

7. (c) 2002 Sandeep K. Rathod Current Law in India The current law of Patents is governed by the Patents Act, 1970 along with the relevant rules. The Act was last amended vide the Patent Amendment Act of 1999.The current law of Patents is governed by the Patents Act, 1970 along with the relevant rules. The Act was last amended vide the Patent Amendment Act of 1999. The latest amendment to this Act is in the form of the Patent (SECOND AMENDMENT) BILL, 1999 passed by the Parliament in May 2002.The latest amendment to this Act is in the form of the Patent (SECOND AMENDMENT) BILL, 1999 passed by the Parliament in May 2002.

8. (c) 2002 Sandeep K. Rathod ADMINISTRATION The Patent Office, under the Ministry of Commerce & Industry, Department of Industrial Policy & Promotion, has been established to administer the various provisions of the Patents Law relating to the grant of Patents & The Designs Law, relating to the registration of Industrial Designs. There are 4 regional offices: Delhi, Mumbai, Kolkata & Chennai

9. (c) 2002 Sandeep K. Rathod WHO CAN APPLY Application may be made, either alone or jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee. The inventor is entitled to be mentioned in the patent if he applies to do so. Application may be made jointly by two or more corporations as assignees.

10. (c) 2002 Sandeep K. Rathod PATENTABLE INVENTIONS An invention means any new and useful art, process, method or manner of manufacture; machine, apparatus or other article; or substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

11. (c) 2002 Sandeep K. Rathod WHAT IS NOT PATENTABLE (1) (1) An invention that is frivolous or that claims anything obviously contrary to well-established natural laws; (2) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health; (3) The mere discovery of a scientific principle or the formulation of an abstract theory;

12. (c) 2002 Sandeep K. Rathod WHAT IS NOT PATENTABLE (2) (4) 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; (5) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

13. (c) 2002 Sandeep K. Rathod WHAT IS NOT PATENTABLE (3) (6) The mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way; (7) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient, or for the improvement or restoration of the existing machine, apparatus or other equipment, or for the improvement or control of manufacture;

14. (c) 2002 Sandeep K. Rathod WHAT IS NOT PATENTABLE (4) (8) A method of agriculture or horticulture; (9) Inventions relating to atomic energy. In the case of inventions relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds) & substances intended for use or capable of being used as food. No patent will be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture will be patented.In the case of inventions relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds) & substances intended for use or capable of being used as food. No patent will be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture will be patented.

15. (c) 2002 Sandeep K. Rathod APPROPRIATE OFFICE FOR FILING AN APPLICATION Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business, place or domicile in India, then appropriate office will be according to the address of service in India given by the applicant or party.

16. (c) 2002 Sandeep K. Rathod DOCUMENTS REQUIRED Application form in triplicate. Provisional or complete specification in triplicate. If the provisional specification is filed it must be followed by complete specification within 12 months (15 months with extension). Drawing in triplicate (if necessary). Abstract of the invention (in triplicate). Information and undertaking listing the number, filing date and current status of each foreign patent application in duplicate.

17. (c) 2002 Sandeep K. Rathod DOCUMENTS REQUIRED (2) Priority document (if priority date is claimed). Declaration of inventorship where provisional specification is followed by complete specification or in case of convention application. Power of attorney (if filed through Patent Agent). Fee in cash/by local cheque/ by demand draft.

18. (c) 2002 Sandeep K. Rathod E XAMINATION & PUBLICATION All the applications for patent accompanied by complete specification are examined substantively. A first examination report stating the objection(s) is communicated to the applicant or his agents. Application or complete specification may be amended in order to meet the objection(s). Normally all the objections must be met within 15 months from the date of first examination report.

19. (c) 2002 Sandeep K. Rathod OPPOSITION Notice of opposition must be filed within four months of notification in the Gazette. Extension of one month is available, but must be applied for before expiry of initial four month period. There are specific grounds that can be raised in an opposition proceeding.

20. (c) 2002 Sandeep K. Rathod GRANT/ SEALING OF PATENT If the application is not opposed or the opposition is decided in favour of the applicant or is not refused the patent is granted or sealed on payment of sealing fee within 6 months from the date of advertisement. However, it is extendable by three months.

21. (c) 2002 Sandeep K. Rathod TERM OF PATENT A patent lasts for 14 years from the date of filing the complete specification (if an application is filed with provisional specification on January 1, 1989, and a complete specification is filed on January 1, 1990, the duration is counted from January 1, 1990). However, for food, drug and insecticide patents, the life is seven years from the date of complete specification, or five years from date of sealing, whichever is shorter.

22. (c) 2002 Sandeep K. Rathod That’s the end of basics! These are the basics of the Patent Act, 1970. If interested, we can look at the advanced aspects of Patent Law in India.

23. (c) 2002 Sandeep K. Rathod Salient features of the Indian Patent Act, 1970: A more elaborate definition of invention; Abolition of product patents for drugs and medicines including certain classes of chemicals; Declaration of certain inventions as non- patentable; more stringent requirements regarding the description of the invention; Extension of the area of search for novelty among documents published anywhere in the world; Extension of the grounds for opposing the grant of a patent;

24. (c) 2002 Sandeep K. Rathod Salient features of the Indian Patent Act, 1970: Exempting certain categories of prior publication, prior communication and prior use from anticipation; provisions for secrecy of inventions relevant for defense purposes; Provision for use of inventions for the purpose of Government or for research or instruction to pupils; A more precise definition of the rights of co- owners of patents; Reduction in the term of patents relating to drugs, medicines and substances used as food;

25. (c) 2002 Sandeep K. Rathod Features of the 1999 Amendment  Retrospective operation (w.e.f. January 1, 1995) and revalidation of all black box applications received by the Indian Patent Office.  Black box applications for product patents are limited to "medicine or drug" defined as follows:  all medicines for internal or external use of human beings or animals;

26. (c) 2002 Sandeep K. Rathod Features of 1999 Act (Contd.) Black box applications for product patents are limited to "medicine or drug" defined as follows:  All substances intended to be used for or in the maintenance of public health, or the prevention or control of any epidemic disease among human beings or animals; and;  Insecticides, germicides, fungicides, weedicides and all other substances intended to be used for the protection or preservation of plants.

27. (c) 2002 Sandeep K. Rathod EMRs (1999 Act) Exclusive Marketing Rights (EMRs) for products as above may be acquired subject to fulfillment of following conditions:  An application in India seeking patent protection for product per se is filed on or after January 1, 1995 (Black Box application);  Corresponding application is filed in a convention country before Indian filing but not before January 1, 1995 and a patent is granted on such application on or after the Indian filing;

28. (c) 2002 Sandeep K. Rathod EMRs (1999 Act) (2) Exclusive Marketing Rights conditions (Contd.):  Marketing approval has been granted in such convention country on or after the Indian filing; and  Marketing approval has been granted in India by the concerned Indian authorities.

29. (c) 2002 Sandeep K. Rathod New Bill passed by Parliament (Both Houses) in May 2002. Salient Features at a glance:  Increase in term of patents from 14 to 20 years.  Simpler definition of Invention.  A group of inventions linked to single inventive concept can be covered in a single application.

30. (c) 2002 Sandeep K. Rathod New Bill (May 2002) (2) Salient Features at a glance:  Burden of proving that the patented process is not violated is on the alleged infringer.  Making and using of patented invention for obtaining marketing approval within three (3) years before the expiry of patent.  The concept of “inventive step” has been defined for the first time.

31. (c) 2002 Sandeep K. Rathod New Bill (May 2002) (3) Salient Features at a glance:  Definition of “Food” is restricted to food for human consumption.  Barring patenting of testing methods now deleted.  The patentability of community/ traditional knowledge is now barred.

32. (c) 2002 Sandeep K. Rathod New Bill (May 2002) (4) New additions to NOT patentable category.  Discovery of any living thing or non-living substance occurring in nature;  Process for diagnostic, therapeutic treatment of human, animals or plants; Plants and animals other than micro- organisms in whole or any part.  Mathematical or business method or a computer program or algorithms