PATENTS - Revocation

·      Revocation of patents can be made under Section 64 of the Indian Patents Act 1970.

·      Revocation means:

o   Cancellation of the rights granted to a person by the grant of a patent. 

·      The patent can be revoked: 

o   On a petition of any person interested or 

o   By the Central Government or 

o   on a counter claim in a suit for infringement of the patent by the High Court or 

o   on the basis of the grounds mentioned in section 64

GROUNDS FOR REVOCATION

1.     The Claims are invalid;

2.     The Patentee is not entitled for the patent;

3.     Wrongful obtainment of patent;

4.     The subject of any claim is not an invention;

5.     The subject of the invention is not new;

6.     The subject claimed is obvious;

7.     The subject claimed is not useful;

8.     The description of the invention as disclosed in the specification is not elaborate;

9.     The scope of invention disclosed in claims is insufficient;

10. The patent was obtained on a false suggestion or representation;

11. The subject in claim not patentable matter;

12. The invention was secretly used in India before the priority date;

13. The details, required under the Patent Law, has not been disclosed or wrongfully disclosed;

14. Secrecy direction has been issued against the invention;

15. The amendment  of patent application stands outside the scope of the Patent Law

16. The origin of biological material was wrongfully disclosed or not disclosed;

17.  The invention claimed is anticipated by prior knowledge in any local community.

INITIATION OF REVOCATION PROCEEDINGS

1. Central Government :

Central Government directs the Controller to revoke the patent,

•       if the invention relates to defence purposes,

•       if the patent is for an invention relating to atomic energy, and

•       if the Central Government feels that the patent or the manner in which it is exercised is prejudicial to public

2. Revocation of patents in the High Court as counter claim  in an infringement suit

3. Controller:

•       If a compulsory license has been granted for a patent, and if a person applies to the Controller on the ground that the patented invention is not worked at the optimum to meet the requirements of the public.
•       If an independent patent has been granted for any modification or improvement on the main invention, the Controller on the patentee’s request may revoke the independent patent on modification of that invention and grant him patent of addition.
•       If the patentee surrenders the patent the Controller may revoke the patent.

PATENTS - Compulsory Licensing

•       Compulsory licenses are licenses that are granted by a government to an individual or company seeking to use patents, copyrighted works or other types of intellectual property, to do so without seeking the owner's consent.

•       Compulsory licenses-involuntary contracts between a willing buyer and an unwilling seller imposed or enforced by the state.

•       The individual or company granted compulsory license  have to pay the owner a set fee for the license.

•       Objective of granting compulsory license is to prevent the abuse of monopoly granted.

•       Nations currently have the right to issue compulsory licenses on patents and copyrights.

COMPULSORY LICENSES UNDER INTERNATIONAL LAW

Paris Convention for the Protection of Industrial Property :

•       The purpose of the Paris Convention was to establish a system for inventors to protect their inventions internationally.

•       Article 5

•       The Paris Convention for the Protection of Industrial Property states "each contracting state shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work."

Berne Convention for the Protection of Literary and Artistic Works-Article 11bis(2) and Article 13(1) provide the legal basis for compulsory licensing at international level.

TRIPS - Trade related aspects of intellectual property

•       The World Trade Organization provisions on intellectual property.

•       Contains rules on patents, copyrights and trademarks.

•       Compulsory licenses and a number of restrictions on the use of compulsory licenses-Article 31 of TRIPS.

India is a party to above international agreements for the protection of intellectual property that have provisions regulating compulsory licensing.

COMPULSORY LICENSES AND PATENTS

•       The grant of a patent gives its owner (patentee) a limited period of exclusivity where the patentee can prevent others from practicing the patented invention.

•       This limited period of exclusivity affords the patentee control over the invention’s price and, in turn, gives the patentee a mechanism by which he/she can regain research and development costs.

•       This right to exclusivity is enforced in most countries by the judicial system, with the unauthorized manufacture, use, sale, offer to sale, or import of a patented technology deemed to be infringement.

•       The government has the power to revoke or limit a previously granted exclusive patent right.

•       Compulsory licensees take away the patentee’s exclusive control over the patented technology.

•       Specific terms vary from country to country,

•       Three basic situations:

1.     where a dependent patent is being blocked: Where a patented invention (‘dependent patent’) cannot be worked without exploiting an earlier patented invention (‘original patent’), the owner of the dependent patent generally must obtain a license over the original patented invention.

2.     the patent is not being worked, or

3.     the invention relates to food or medicine.

INDIA:

•       Any interested person after expiry of three years from grant of patent, may make an application to the Controller for grant of compulsory license on the grounds that:

1.     The reasonable requirements of the public with respect to the patented invention have not been satisfied,

2.     Or the patented invention is not available to the public at a reasonable price, or

3.     The patented invention is not worked in territory of India.
 

•       The controller may grant compulsory license if the above conditions are satisfied upon such terms as he may deem fit.

•       While granting the compulsory license the Controller shall take into account

1.     the nature of invention,

2.     time elapsed,

3.     ability of applicant to work the invention,

4.     Applicant’s efforts for obtaining a license on reasonable terms.

•        Above not applicable in certain cases-

1.      national emergency, or

2.      extreme urgency, or

3.      public non-commercial use, or

4.     on establishment of a ground of anti competitive     practices adopted by the patentee.

•       Terms and conditions of Compulsory License

1.     Royalty and other remuneration, if any, reserved to the patentee, or other person beneficially entitled to the patent.

2.     Patented invention should be worked to the fullest extent by the person to whom the license is granted.

3.     Patented article should be made available to the public at reasonably affordable prices.

4.     License granted is a non-exclusive license.

5.     The right of licensee is non-assignable.

6.     License is for the balance term of the patent unless a shorter term is consistent with public interest.

CASE: NATCO Vs. BAYER

•       The Controller General of India passed an order of compulsory license against Bayer’s patent on drug Nexavar on March 09, 2012, which is India’s first compulsory license post TRIPS era.

•        NEXAVAR- anti-cancer drug, chemically known as Sorafenib tosylate (Patent-holder Bayer Corporation)

•        Hyderabad-based Natco had filed an application for issue of compulsory license to manufacture the low-cost version of Nexavar.

•        The compulsory license was granted in accordance with the grounds described under section 84 of the Indian Patent Act.

•       The license is valid till expiry of the patent in 2021.

•        The compulsory license enables Natco to sell the drug at a price not exceeding Rs 8,880 for a pack of 120 tablets (one month's therapy) as against Rs 2,84,428 being the cost of Nexavar sold by Bayer. 

•        The order also makes it obligatory for Natco to supply the drug free of cost to at least 600 needy patients per year.

•        Natco will have to pay 6% royalty on sales to Bayer for the drug on a quarterly basis.

PATENTS - Stages from Filing to Grant of a Patent

HOW TO FILE A PATENT APPLICATION

•       Documents can be filed in the patent office

•       through online( e-filing) www.ipindiaonline.gov.in/online or

•       through post or 

•       can be submitted by hand

GENERAL PROCEDURE FOR OBTAINING A PATENT

•       Filing of patent application

•       Publication after 18 months

•       Pre Grant Opposition /Representation by any person.

•       Request for examination

•       Examination: Grant or Refusal

•       Publication of Grant of patent

•       Post Grant Opposition to grant of patent

•       Decision By Controller

DOCUMENTS REQUIRED FOR FILING OF A PATENT APPLICATION

1.    Covering letter- indicating the list of documents;

2.    Application for Grant of Patent in Form 1 [section 7, 54 & 135 and Rule 20(1)] in duplicate;

3.    Complete/Provisional specification in Form 2 in duplicate [Section 10; Rule 13]

4.    Statement and Undertaking in Form 3 [Section 8; Rule 12];

5.    Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney)

6.    Declaration of Inventor-ship in Form 5 (only in case of an Indian Application; (Rule 4.17);

7.    Certified true copy of the Priority document (in case priority is claimed);

8.    Requisite Statutory fees (cheque / DD).

SPECIFICATIONS

•       Provisional specification:

•       a provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention.

•       No patent is granted on the basis of a provisional specification.  

•       Complete specification:

•       the complete specification is the document in which all the details of the invention for which patent protection is desired are disclosed

CONTENTS OF SPECIFICATION

•       Title of the invention

•       Field of the invention 

•       Background of the invention (PRIOR ART)

•       Object of the invention

•       Summary of the invention

•       Brief description of drawings, if any

•       Detailed description of the invention

•       Examples

•       Claims- not required in provisional

•       Abstract- not required in provisional

PROVISIONAL SPECIFICATION…..

•       It should describe the nature of invention & contain the description of essential features of the invention.

•       Claims and abstract are not a part of provisional specification

•       Fees is same as for complete specification

•       Complete specification must be filed within 12 months from date of filing of provisional application. 

COMPLETE SPECIFICATION

•       Compared with the provisional, the complete specification shall:

a.     contain the full description of the invention and its operation, 

b.     the best method of making the invention. 

c.     end with a claim or claims, which are the most  important component in the complete patent specification. It is the legal operative part which define and determine the legal protection sought for. 

d.    be accompanied by an abstract to provide technical information on the invention.

•       If applicant mentions a biological material in the specification, which cannot be described in such a way to satisfy clauses  a) and b), and

•       If material is not available to the public, the application shall be completed  by depositing the material to the international depository authority,

•       Deposit of the material shall be made not later than date of filing of patent application.

•       In India biological material can  be submitted at Institute of Microbial Technology (IMTECH), Chandigarh.

STATUTORY FEES

COGNATE FILING

•       In addition to this, u/s 9(2)- there is a provision that where two or more applications in the name of same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and controller is of the opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification may be filed in respect of all such provisional applications. 

COMPLETE TO PROVISIONAL

•       u/s 9(3)-complete application can be converted to provisional application on request by the applicant to the controller of the patents at any time within twelve months from the date of filing of the application.

POST DATING

•       u/s 9(4)-where a complete specification has been filed in pursuance of an application accompanied by provisional specification, the controller, may, if the applicant so requests, at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

PUBLICATION

•       [Rule 24] A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application containing title, abstract, application no. and name of applicant[s] and inventor[s].

•       This way, the world is informed about the fact that a patent can be expected on that particular invention. 

•       Someone else using the invention could then switch to a different technology, or make reservations to pay for a license once the patent is granted. 

•       Request for early publication: [Rule 22A] To expedite the process of grant of patent a request for publication under Section 11(A)(2) can be made in Form 9 any time after filing of the application. Upon such request, the application will be published in one month from the date of such request.

•       Fees for Request for Early Publication for Natural person is Rs. 2,500

•       Fees for Request for Early Publication for Other than natural person is Rs. 10,000

IMPORTANCE OF PUBLICATION

•       On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, 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.

•       The applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted

•       Right of the patentee in the case of applications filed u/s 5(2) shall accrue from the date of grant of the patent

PRE-GRANT OPPOSITION

•       Section 25(1)] Upon publication, but before the grant of patent any person, based on different grounds may file a pre grant opposition, in writing, represent by way of opposition to the Controller against the grant of patent. 

•       However the opposition will be taken by the patent office only after the filing of Request for Examination.

•       Time limit: May be filed within 3 months from the date of publication of the application [sec 25(1); rule 55(1)] OR Before the grant of patent, whichever is later.

•       Fee:

•       NO FEE

REQUEST FOR EXAMINATION

•       No Request, No Grant

•       In Form 18 [sec. 11B; rules 20(4)(ii) and 24B(1)(i)] in duplicate within period of 48 months from date of filing or priority.

•       Statutory Fees for Request for Examination for Natural person is Rs. 2,500

•       Statutory Fees for Request for Examination for other than natural person  is Rs.10,000

FIRST EXAMINATION REPORT

•       After proper examination of patent application, on the criteria of novelty, inventiveness and industrial application, which involves checking all the literature available to it to find documents that describe the invention in part or in whole. In this search, only documents that were published before the date of filing of the application are to be considered. 

•       The Patent Examiner will issue a First Examination Report (FER) and will send along with the application and specification to the applicant or authorized agent.

AMENDMENT OF OBJECTIONS BY THE APPLICANT

•       The issued FER give an opportunity to the applicant to file a response and overcome the objections raised by the Examiner.

•       Time limit: [Rule 24B(4)(iii)] Within 12 months from the date on which the First Examination Report has been issued to the applicant, the application should be placed in order of acceptance.

•       In case of the unjustified response, the Controller has power to refuse the grant of patent or ask for amended claim[s] or make order for the Division of Application [Section 15, 16].

GRANT OF PATENT

•       The Controller will grant the application upon overcome the all objections raised in the FER.

•       On the grant of a patent the application will be accorded a number, called serial number in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911(2 of 1911).

POST GRANT OPPOSITION

•       [Section 25(2)] Upon grant of patent, any interested person, based on different grounds may file a post grant opposition in Form 7 to the Controller against the grant of patent.

•       Time limit: Within one year after the grant of a patent.

•       Statutory Fees for Notice of Opposition for Particular Natural person is Rs.1,500

•       Statutory Fees for Notice of Opposition for other than natural person  is Rs.6,000

FEES

•       The period for payment of renewal fees may be extended to a period but not more than six months if the request for extension in Form 4 with fees.

•       Statutory Fees for extension in Form 4 for Particular Natural person is Rs.300 per month

•       Statutory Fees for extension in Form 4 for Other than natural person  is Rs.1,200 per month

FILING OF INTERNATIONAL APPLICATION

•       It is possible to file an international application in India in all patent offices. All these offices act as Receiving Office (RO) for international application.

•       International application can be filed directly to International Bureau (IB), Geneva, on-line.

DOCUMENTS REQUIRED FOR FILING

•       Covering letter indicating list of documents:

•              Request 

•              Complete specification in triplicate

•              Abstract- in triplicate

•              Fees- transmittal fees   

FEES PAYABLE UNDER PCT

•       Transmittal Fee: Rs. 8000/-

•       Fee for priority document: Rs. 4000/- each

•       International Fee: $ 1,184 for 30 pages

•       Fee for each page in addition to 30 pages: $ 13

•       Search fee: According to search authority

SEARCH AUTHORITIES ALONG WITH FEE