Indian Patent Law

Udai SJC on May 05, 2007

Nitin Gupta
 Intellectual Property
“Intellectual Property is the Property, which has
been created by exercise of Intellectual Faculty”

• Patent
• Industrial Design
• Trademark
• Copyright
• Geographical Indication
• Layout design of industrial circuits
 Patent
• Set of exclusive rights
– Given to the inventor
– By the state
– For a fixed period of time

• In exchange of Public disclosure of certain details of the invention that

is
– Novel
– Has an inventive step
– Capable of industrial application

• Including the right

– To prevent others from making/using/selling the invention

• But not necessarily the right

– To make/use/sell the invention
 Patent v/s Copyright
• Copyright
– Original works of authorship
– Protects the form of expression, not the subject matter
– Longer duration (life+70)
– Automatically granted

• Examples
– Art
– Software
Another way to protect your creation
 And one more,
if you are an emperor
Money  Industry  Patents
 Indian Patent Office
• Administered by

– Office of the Controller General of Patents, Designs &

Trade Marks (CGPDTM)

– ~300 examiners

– Headoffice Kolkata

– Patents now granted in 2-3 years

 Patent Applications in India
9000

8000

7000
Number of Applications

6000

5000
Domestic
Foreign
4000

3000

2000

1000

0
19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19
70- 75- 80- 84- 85- 86- 87- 98- 89- 90- 91- 92- 93- 94- 95- 96- 97- 98-
71 76 81 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99
Year

US received 288K patent applications in 1999

 Patent Validity

• A patent is valid if
– satisfies common requirements
– not proven invalid
 Patent Opposition
• Pre-grant Opposition
– Patent applications are published
– Non-compliance
– Non/wrong-disclosure

• Post-grant Opposition
– Within 12 months of grant of a patent
– Misconduct, public display, non-patentable
 Patent Infringement

• A patent is not infringed until proven

otherwise
– onus on the patent owner
 Compulsory License
• After three years of patent, anyone can request a license
from the govt. on these grounds

– That the reasonable requirements of the public with

respect to the patented invention have not been satisfied

– That the patented invention is not available to the

public at reasonably affordable price

– Export of pharmaceuticals to poor countries

 Not Patentable

• Atomic energy
• Traditional knowledge
• Scientific principle
• Abstract theory
• Discovery of natural substances
• New form of a known substance
• Mixture of known compounds
• Methods of agriculture
 History of Indian Patent System
1856 The Act of 1856 on protection of invention

1911 Indian patents & designs act

1972 Patents act (act 39 of 1970)

– only process patents | 14 year, 7 year (food/drug)
1975 India joins WIPO

1999 India signs TRIPS (after joining WTO)

– 10 year “ultimatum” starting from 1995
1999, 2002, Amendments
2004, 2005 -Product patents | 20 years patent period | EMR | Burden of
Proof

http://ipindia.nic.in/ipr/patent/history.htm
 TRIPS
• Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS)

• WTO

• Formulated 1986-1994

• Uniform patent regime in 147 member countries

 Indian Patent Act of 1970
Only process not product patents in food,
medicines, chemicals
Term of patents 14 years; 5-7 in chemicals,
drugs
Compulsory licensing and license of right
Several areas excluded from patents (method of
agriculture, any process for medicinal surgical
or other treatment of humans, or similar
treatment of animals and plants to render them
free of disease or increase economic value of
products)
Government allowed to use patented invention
to prevent scarcity
TRIPS
Process and product patents in almost all fields
of technology
Term of patents 20 years
Limited compulsory licensing, no license of
right
Almost all fields of technology patentable. Only
area conclusively excluded from patentability is
plant varieties; debate regarding some areas in
agriculture and biotechnology
Very limited scope for governments to use
patented inventions
 How TRIPS came into being
• Until 1989, India opposed IPR policies in GATT

• US pressure – Restrictions on Indian food exports

• Liberalization – early 1990s

• Both Congress and BJP favoring globalization in late 1990s

• Need for FDI

• Indian companies becoming stronger – demand patents

• Industry bodies lobbying for patents

• CSIR supporting patents

 Effect on India Pharma Companies

Force Indian companies to Indian companies don’t have

innovate enough funds for R&D
Increase competition Not a level playing field

Western companies may partner Indian companies already

with Indian companies to sell selling those, as generics 
their drugs
Western companies not
interested in tropical diseases!
-opportunity for Indian
companies
 Ranbaxy’s Patent Filings
180

160

140

120

100

80
170
60 146

40
86
20 49
24 32
0
1999 2000 2001 2002 2003 2004
 Effect on Patients

Encouragement for Expensive medicine

development of new drugs

No Generics 
availability affected
 AIDS
• Gilead: Tenofovir
– $5718 / patient / year

• Cipla: Tenvir
– $ 700 / patient / year
– Plans to make available for $350 in Africa

• Gilead granted patent, Cipla fighting

• Gilead licensed Tenofovir to some Indian
companies in 2006 for low price
 Cancer: Novartis
• Gleevec: $26,000/yr, Generic: 1/10th price

• Gleevec invented in 1993

• India rejected patent application in 1995

• Novartis produced a minor variant

• Granted exclusive marketing rights

• In 2005, Patent amendment prohibits minor variants – In 2006, Novartis lost the rights

• Filed petition again – still ongoing

• Novartis claims it is giving away free to 99% patients in India

– Mere publicity.. Only for few months.
 Effect on Agriculture

Protection to genetically Expensive seeds

modified seeds

Protection to plant They used to be protected

varieties by milder PVP laws
 Summary

• Good in long term, bad in short