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Important Points to Consider for Patent Registration in India: Lawyers Advice

 > Corporate Lawyer  > Important Points to Consider for Patent Registration in India: Lawyers Advice

Important Points to Consider for Patent Registration in India: Lawyers Advice

The Patents Act, 1970 governs the Patent Law in India and given the number of inventions claiming to be unique in modern times, the law is extremely serious about granting Patents. An invention which is pointless in its operation or in contravention to something already established is almost immediately rejected.

At times, heavy amounts of fine have to be paid by people claiming patents for trivial inventions. The Patent must be capable of profitable exploitation but it cannot be against public morality or public order. A patent should be beneficial to the public in some manner.

Important Case Laws in the development of Indian Patent Law: –
In the case of Cipla Ltd. vs. Hoffmann-La Roche Ltd. & Anr. (RFA (OS) 92 of 2012), wherein the difference between product and substance dichotomy was extensively explained. It was also pointed out that the Patent Act does not envisage a deed of assignment of a patent to be compulsorily registered for not being an immovable property.

As seen in the case of Merck Sharp & Dohme Corporation & Anr vs. Glenmark Pharmaceuticals Ltd. (CS(OS) 586 of 2013), the size of consideration will not be adequate to question a license agreement. A trademark for the same can be allocated even for a normal or small consideration i.e., even on one Rupee or one Dollar.

Persons entitled to apply for Patents: –
The following can apply for a patent:
• Any individual, who claims to be the first and true inventor of the invention;
• By any deceased individual, who immediately before his death was entitled to make such an application through their Legal Representative
• The assignee to the person who claims to be the true and first inventor, in respect of the right to make such an application.

Process of Getting a Patent: –
The process of getting a Patent can get very complicated and problematic. The procedure starts with an application which is filed with the Indian Patent Office. There are four Patent Offices in India which are located in Kolkata, Chennai, Delhi and Mumbai.

An interim specification must be filed with the application for patent and the core specification must be filed within twelve months of filing the Patent application. A specification explains the invention, its operation and the ideal method of using it. Subsequently, to ensure there is no objection, the application for the Patent is published.

The Patentee must request the Patent Controller for an examination after the application is published. The Patent Controller then scrutinizes the application and confirms that the process is not in public knowledge as well as the usability of the product. During this process, it is the duty of the Patent Controller to guarantee that application is not infringing upon another Patent. The Patent Controller also has the right to either modify the application or accept it. After such acceptance, the Patent is ultimately granted.

Grant of a Patent: –
The case of Dr. Snehlata C. Gupte vs. Union of India & Ors. (W.P. (C) 3516 of 2007) was a noteworthy example about when a patent can be said to have been granted. It stated that a patent must be approved as quickly as possible as per Section 43 of the Patent Act if the patent is not in infringement of the Act or not refused by the Controller by virtue of his power. The case highlights that the Controller’s intention to grant on the filed application can be considered as a date of grant of the patent.
The Supreme Court case of Novartis AG vs. Union of India (CIVIL APPEAL Nos. 2706-2716 of 2013), can also be considered as landmark case with regards to the Indian Patent System. Novartis AG had been asserting their patent with the logic that if the rights of the investors are not protected, it will harm research and development.

Compulsory License of Patent in India: –
The first compulsory license of patent in India was granted to the Natco Pharma Ltd. for manufacturing the medicine called Nexavar which is utilised in treating kidney and liver cancer. The medicine was a common version of a patented medicine by Bayer Corporation. The latter was selling it for a month’s course at Rs. 2.80 lakhs, whereas the former guaranteed making it available at a price of Rs. 8,800. Natco was therefore, asked to pay 6% of its net sales to the Bayer Corporation, as seen in the case of Natco Pharma Ltd. vs. Bayer Corporation (FAO(OS) (COMM) 158 of 2019).

Important legal points to consider while applying for Patent registration in India:
• One of the most significant aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject to the execution of some conditions. At any point, after the three years from the date of the granting of a patent have expired, anyone interested may file an application to the Patent Controller for a grant of compulsory license of the patent.
• It must be noted that except if he is already the holder of a licence under the patent, an application for compulsory licensing may be made by any individual provided that the patented invention is not operating in Indian territory or if the patented invention is not accessible to the public at a sensible price or if the reasonable necessities of the public with respect to the patented invention have not been fulfilled.
• An assignment in a patent, license or the creation of any other interest in a patent is allowed. In the case of patents, assignment is legal only when it was in writing and the agreement is in the form of a document specifying all the terms and conditions as well as the rights and duties of the parties to the agreement.
• In the case of Chemtura Corporation vs. Union of India (CS (OS) No. 930 of 2009), it was highlighted that regulatory necessities must be satisfied and facts must not be tampered with. The case emphasized on the fact that Section 8 of the Act is mandatory and must be followed on a timely basis.
• Patent infringement suits can only be initiated after the patent has been granted but can consist of a retrospective claim from the date of publication of the application for grant of the patent. Violation of a patent consists of the illegal making, importing, using, offering for selling or sale of any patented invention within India.
• Under the Patents Act, 1970 only a civil suit can be initiated in a court of law. Additionally, a suit for infringement can be defended on various reasons including the grounds on which the very grant of the patent was illegal in India and on the basis of such defence, cancellation of Patent can also be claimed.

In conclusion, patents have always been an extremely vital part of intellectual property as they address scientific inventions which are designed to the help society and to give financial benefits to the creator. Patents have played an extremely crucial role in inspiring individuals to invent medications for various diseases. Patent laws have also played a significant role for businesses to patent their original products and have profited the most from such laws.
Authored By: Adv. Anant Sharma & Parinay Gupta

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