Unit - 5
Law relating to Intellectual property
Intellectual property (IP) rights are legal and institutional devices to protect creations of the mind such as inventions, works of art and literature, and designs. Intellectual property right is the legally enforceable power to exclude others from using the information created or to set the terms on which it can be used. The objective of the agreement on TRIPS is to give adequate and effective protection to the intellectual property rights to reward creativity and inventiveness. TRIPS sets out minimum protection to be given to each category of intellectual property in the national laws of each WTO member. It lays down procedures and remedies to be provided by each country for intellectual rights enforcement. The agreement on TRIPS lays down minimum standards of protection that countries must provide for intellectual property rights. One of the other important features of the agreement is that it also requires countries to ensure effective enforcement of these rights. Its rules apply to:
- Copyright and related rights;
- Trademarks;
- Patents;
- Geographical indications;
- Industrial designs;
- Layout designs of integrated circuits; and
- Undisclosed information.
COPYRIGHT-
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
Such classification of copyright is discussed below-
Figure: Types of work eligible for copyright
- Literary Works
They are not limited to works of literature like plays, novels or poems and instead include all forms of written documents. Works like technical books, scripts, research work, computer programs or database, thesis also form a part of the literary work. For example – Madeline and the Wedding is a copyrighted script of the animated show Madeline Series.
b. Dramatic Works
They are similar to literary works but include a piece of recitation. Works like choreography, the arrangement of play, scenic arrangement come under Dramatic type of copyright works.
c. Artistic Works
Copyright protection covers works of art. These include paintings, sculptures, graphics, drawings, maps, charts, photographs, caricatures and cartoons. For example – Tom and Jerry are famous copyrighted cartoon characters.
d. Musical Works
They can be protected in two different ways. The lyrics of a song fall under literary work while the music tune (notation) can be protected under musical works. They need to be submitted in a written format.
e. Sound Recordings
Both non-musical and musical sound recording can be protected by copyright, regardless of the medium of storage. They include recorded speech, podcasts, interviews, soundtracks, speeches. All sorts of music created automatically falls under copyright protection.
f. Movies
A cinematographic work is a combination of both video films and sound recording. Any work recorded with moving visuals or images, with or without a sound recording is considered a cinematographic film. For example – Computer Games, Feature Films or Animation Movies.
TRADEMARKS-
Trademarks are another familiar type of intellectual property rights protection. A trademark is a distinctive sign which allows consumers to easily identify the particular goods or services that a company provides. Some examples include McDonald’s golden arch, the Facebook logo, and so on. A trademark can come in the form of text, a phrase, symbol, sound, smell, and/or colour scheme. Unlike patents, a trademark can protect a set or class of products or services, instead of just one product or process.
The Trademarks Act, 1999, allows the registration of various types of trademarks such as word marks, service marks, collective marks, certification marks, series marks logos/symbols and many other. Such types are-
Figure: Types of trade mark
a. Word Marks
Word Marks are the most common types of trademarks that are registered in India. These refer to any marks that are used to identify the products and services of a trading company or service-providing company. If the name of your product or service is text- based (contains text only) it will be registered under Word Marks. For Example - The word Nestle® is a registered as a Word-Mark.
b. Service Marks
Service Marks represent the service which a company or business deals in. They distinguish different services available in the market and is filed under trademark classes 35-45. For example - FedEx is a registered courier delivery service provider.
c. Logos and Symbols
A logo is a printed/painted figure/design/character and do not consist of any letters/words/numerals. For word marks that are also used as a logo, the trademark needs to be registered both as a word mark and a device mark. In India, the registration for both these aspects can be made in a single application. For example - Apple has a registered logo which is used on each of their products.
d. Shape of Goods
The shape of goods is categorized in Trade Dress (appearance of a product) wherein, other than a logo or label a product can also be distinguished based on its packaging. For example - The bottle of Coca-Cola is distinguished from other brands on the basis of its bottle's shape.
e. Series Marks
Series marks are trademarks which have a common syllable, prefix or suffix, thus denoting as a family of marks sharing a 'common name.' They should differ only as to matters of non-distinctive characters (goods, price, quality or size). For example - McDonald's have a series of 'Mc' registered as word mark which represents their different product range such as Mc Chicken, Mc Veggie etc.
f. Collective Trademarks
These marks are linked with a group of people and not one single product or service. These trademarks are primarily owned by an organization, institutes or any association. They can be used by members of the organization to represent them as one the part. For Example - A chartered accountant can use the “CA" device as he is a registered member of the Institute of Chartered Accountants.
g. Certification Mark
The certification mark is created to show a specific quality standard that the company has met. This means that the public will be aware that the trader's goods or services are certified as it has met a particular standard, as defined by the certifying body that owns the certification mark. Certification marks are used to define "Standard" of goods and services. For Example - FSSAI - Certification for the quality of packaged food products.
h. Geographical Indicators
A geographical indication is used on products to show the unique nature, reputation and quality the products possess based on the place of origin. The Geographical Indicators are awarded by the GI Registry and is granted to natural, agricultural, manufactured and handicraft products that come from a specific geographical origin. For Example -Assam Tea is a GI under the Intellectual Property Rights.
PATENTS-
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
There are three different categories that patents can fall under:
a) Utility:
A utility patent protects the creation of a new or improved product, process, composition of matter, or machine that is useful.
b) Design:
A design patent protects the ornamental design on a useful item.
c) Plant:
A plant patent protects new kinds of plants produced by cuttings or other nonsexual means.
For example,
- Pen with scanner
With a machine as small as a pen, you can transfer text from paper directly into a computer. Christer Fåhraeus invented the C-pen.
- Steel kidneys
After receiving a grant from the state in 1946, Nils Alwall, a doctor in Lund, began developing a dialysis machine for people suffering from kidney disease. Just over twenty years later, his inventions started to be mass produced.
PATENTS AND DESIGNS-
A design patent is a form of legal protection of the unique visual qualities of a manufactured item. A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation or both. In other words, a design patent provides protection for the ornamental design of something that has a practical utility.
In the United States, that means an item that is substantially similar to something that has the protection of a design patent may not be made, copied, used or imported into the country. In other countries, a registered design may act as an alternative to a design patent. In certain European countries, patent protection for designs may be obtained for a fee and by meeting basic registration requirements.
How a Design Patent Works
An item or object that is protected by a design patent carries broad protection from copyright infringement. A design that was not intended to be a copy and which was devised independently from an existing, design patent-protected item may still infringe upon that design patent.
In some countries, such as the U.S., Canada, China, Japan, and South Africa, applications for design patents are kept secret until they are granted. In Japan, secrecy can be extended to three years after registration is granted. The first U.S. Design patent was awarded in 1842 for printing typefaces and border (fonts).
Design Patent Examples
Some examples of design patents include ornamental designs on jewellery, automobiles or furniture, as well as packaging, fonts and computer icons (such as emojis). Some famous design patent objects include the original curvy Coca-Cola bottle (1915) and the Statue of Liberty (1879).
When a company’s product design has substantial cachet, a design patent solidifies its competitive advantage by penalizing other firms that try to develop similar-looking items. For example, Apple has been awarded damages reportedly totalling more than $900 million from Samsung, which violated its iPhone design patents.
SECRETS-
Trade secrets are the secrets of a business. They are proprietary systems, formulas, strategies, or other information that is confidential and is not meant for unauthorized commercial use by others. This is a critical form of protection that can help businesses to gain a competitive advantage. Although intellectual property rights protection may seem to provide a minimum amount of protection, when they are utilized wisely, they can maximize the benefit and value of a creation and enable world-changing technology to be developed, protected, and monetized. For example, Coca Cola Formula, KFC Secret Spice –Mix, McDonald’s Big Mac sauce, Google search algorithm etc.
Trade secrets in India are generally governed by Article 39 of the TRIPS Agreement which lays down 3 essential conditions.
Figure: Essential of trade secret
a. Secret
The information must be secret which is not generally known amongst, or readily accessible to, circles that normally deal with the kind of information in question. For example, KFC Secret Spice –Mix.
b. Commercial Value
This information must have some commercial value attached to it. The KFC products have commercial value in the market.
c. Reasonable efforts by the rightful holder to keep its secrecy
The rightful holder of the trade secret should have taken reasonable efforts to keep it secret.
Pre-Independence Copyright law in India
The Copyright Law of India was enacted by the British colony and like most of the acts of that time; it was an imitation of the English law.
The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission. All suits and infringement related to copyright came under the jurisdiction of the highest local civil court. The act was replaced by the copyright act of 1914.
The act of 1914 was the first 'modern' copyright law of India. It was the first law to include all works of art and literature under the ambit of copyright. It was a replica of the English law of 1911. It was done by the British to ease the passage of literature over colonial subcontinent.
Post-Independence Copyright law in India
The Copyright Act of 1957 came into force on the 21st of January, 1958 replacing the 1911 act. The act besides amending the copyright law also introduced milestone changes such as provisions for setting up copyright office under the control of Registrar of copyright for registration of books and other works of art. It also established a copyright board to deal with the disputes relating to copyright.
Meaning of copyright –
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
According to section 14 of the copyright Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely: —
(a) in the case of a literary, dramatic or musical work, not being a computer programme, —
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public; (iv) to make any cinematograph film or sound recording in respect of the work;
(iv) to make any translation of the work;
(v) to make any adaptation of the work;
(vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme, —
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.
(c) in the case of an artistic work, —
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or
(C) depiction in two-dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film, —
(i) to make a copy of the film, including—
(A) a photograph of any image forming part thereof; or
(B) storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;
(iii) to communicate the film to the public;
(e) in the case of a sound recording, —
(i) to make any other sound recording embodying it including storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;
(iii) to communicate the sound recording to the public
Computer programs
Section 2 (ffc) “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;
Ownership of copyrights and assignment
The provisions related to ownership of copyright and assignments are discussed below-
First owner of copyright (Section 17)
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(e) in the case of a work to which the provisions of section 41 apply, the international organization concerned shall be the first owner of the copyright therein.
Assignment of copyright (Section 18)
(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.
Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work:
Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilization of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void:
Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilization of such work except to the legal heirs of the authors or to a collecting society for collection and distribution and any assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
Mode of assignment (section 19)
(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.
(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.
(3) The assignment of copyright in any work shall also specify the amount of 4 [royalty and any other consideration payable], to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.
(4) Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.
(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.
(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.
(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994 (38 of 1994).
(8) The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member shall be void.
(9) No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilisation of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form.
Criteria of infringement
The criteria related to infringement are discussed below-
When copyright infringed (Section 52)
Copyright in a work shall be deemed to be infringed—
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act—
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or
(b) when any person—
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.
Certain acts not to be infringement of copyright (Section 52)
(1) The following acts shall not constitute an infringement of copyright, namely, —
(a) a fair dealing with any work, not being a computer programme, for the purposes of—
(i) private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;
(c)transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:
Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a
Period of twenty-one days or till he receives an order from the competent court refraining from facilitation access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;
(d) the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;
(e) the reproduction or publication of any work prepared by the Secretariat of a Legislature or, where the legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;
(f) the reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force;
(g) the reading or recitation in public of reasonable extracts from a published literacy or dramatic work;
(h) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for instructional use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for such use in which copyright subsists:
Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.
(j) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording;
(k) the causing of a recording to be heard in public by utilising it, —
(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;
(n) the storing of a work in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a 2 [non-commercial public library for the use of the library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access:
Provided that where the identity of the author of any such work or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than [sixty years] from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identity is known or, if the identity of more authors than one is known from the death of such of those authors who dies last;
(q) the reproduction or publication of—
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government;
(iv) any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority, as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder—
(v) if no translation of such Act or rules or orders in that language has been previously been produced or published by the Government; or
(vi) where a translation of such Act or rules or orders in that language has been produced or published by the Government, if the translation is not available for sale to the public: Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government.
Internet piracy is the act of downloading a file from the internet, or by procuring an online software through a compact disc. Methods of conducting internet piracy are websites offering free downloads of software, auctions selling illegally obtained software or P2P servers which transfer programs.
Internet piracy has become a huge copyright issue, in the past few years. The unhindered growth of technology along with the increase in cybercrimes has made internet piracy issues quite common in today’s day and age. Here are a few reasons why internet piracy is becoming such a huge problem-
- Easy and wide distribution using the internet
- No limits as to the number of people that a material can be distributed to
- Difficult to distinguish between the original and the fake copies
- Hardly any cost associated with the illegal distributing
- Easy to access copyrighted material without the threat of being raced down.
In India, the Copyright Act 1957 along with the Information Technology Act, 2000 deal with the several facets of piracy. However, of late, there has been an increasing need for more pieces of legislation that can help us conclusively deal with the problem of internet piracy. With more and more technological advancements, the need for enforcement of strong copyright laws to deal with complex internet piracy cases has become essential.
The main legislation for the protection of art from copyright issues is the Copyright act of 1957. The copyright act was amended in 2012 to bring under its umbrella the various forms of online piracy that takes place. Section 65 A of the new copyright (amendment) act, 2012 protects the owners of copyrighted materials in case of a breach. Section 65 A states that “any person who circumvents an effective technological measure applied to protect any of the rights conferred by this Act, to infringe such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” Such punishment is bound to deter several cybercriminals from using or misusing the copyrighted data. This section is meant for “protection of technological measures” and is key to curb digital piracy.
Section 65 B of the Copyright (Amendment) Act, 2012 provides “Protection of Rights Management Information”. The section states that “any person, who knowingly- (1) removes or alters any rights management information without authority, or (2) distributes, imports for distribution broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” This is essential to protect unauthorized access and misuse of sensitive information.
Another piece of legislation that deals with digital piracy is the Information Technology Act, 2000. Section 66 of the Information Technology Act provides for punishment with up to 3 years of imprisonment and fines up to Rs 2 lakhs for illegal online distribution of copyrighted content.
A rather new measure that the Indian courts have taken to reduce the cases of digital piracy in India is the “john doe” order”. John Doe orders require very little information about the accused and his identity is unknown at the time of filing of the petition. All the above-mentioned pieces of legislation along with these new John Doe orders help block potential threats before the release of new movies and govern the entire digital piracy scenario in India. However, several different aspects of digital piracy are still not dealt with, by Indian legislation. There are several issues and challenges regarding online piracy in India that still need a lot of work.
Key takeaways
- The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission.
Historical perspective
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
An invention relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
Meaning
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
Law relating to Patents under Patents Act, 1970
What are not inventions (Section 3)
The following are not inventions within the meaning of this Act, —
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or 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 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.
(e) 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;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) Omitted by the Patents (Amendment) Act, 2002
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Inventions relating to atomic energy not patentable (Section 4)
No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
Persons entitled to apply for patents (Section 6)
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say, —
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Information and undertaking regarding foreign applications (Section 8)
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
Provisional and complete specifications (Section 9)
(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of 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 to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.
(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a 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.
Contents of specifications (Section 10)
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method
By which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely: —
(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.
(4A) In case of an international application designating' India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
Secrecy directions relating to inventions relevant for defence purposes (section 35)
(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
(2) Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.
(3) Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply as if the invention where one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.
Grant of patents (Section 43)
(1) Where an application for a patent has been found to be in order for grant of the patent and either—
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.
Amendment of patent granted to deceased applicant (Section 44)
Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Date of patent (Section 45)
(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of publication of the application.
Form, extent and effect of patent (Section 46)
(1) Every patent shall be in the prescribed form and shall have effect throughout India.
(2) A patent shall be granted for one invention only:
Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.
Grant of patents to be subject to certain conditions (Section 47)
The grant of a patent under this Act shall be subject to the condition that—
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
Rights of patentees (Section 48)
Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent
Third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India (Section 49)
(1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—
(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or
(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,
As the case may be.
(2) This section shall not extend to vessels, aircrafts or land vehicles owned by persons ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or within the territorial waters of that foreign country or otherwise within the jurisdiction of its courts.
Rights of co-owners of patents (Section 50)
(1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
(2) Subject to the provisions contained in this section and in section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to rights conferred by section 48 for his own benefit without accounting to the other person or persons.
(3) Subject to the provisions contained in this section and in section 51 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under the patent shall not be granted and share in the patent shall not be assigned by one of such persons except with the consent of the other person or persons.
(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of a patent, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.
(5) Subject to the provisions contained in this section, the rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.
(6) Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created before the commencement of this Act.
Power of Controller to give directions to co-owners (Section 51)
(1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent, or the exercise of any right under section 50 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3) Before giving any directions in pursuance of an application under this section, the Controller shall give an opportunity to be heard—
(a) in the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;
(b) in the case of an application under sub-section (2), to the person in default.
(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.
Term of patent (Section 53)
(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.
(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
(3) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Term of patents of addition (Section 55)
(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1) the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
Validity of patents of addition (Section 56)
(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(2) For the removal of doubts, it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.
Applications for restorations of lapsed patents (Section 60)
(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within such period as may be allowed under sub-section (4) of section 142, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
(2) [Omitted by the Patents (Amendment) Act, 2002]
(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.
Procedure for disposal of applications for restoration of lapsed patents (Section 61)
(1) If, after hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(4) The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to be entered in the register but which has not been so entered.
Surrender of patents (Section 63)
(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall publish the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after such publication, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
Revocation of patents (Section 64)
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the
Priority date of the claim or to what was published in India or elsewhere in any of the, documents referred to in section 13:
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person.
Register of patents and particulars to be entered therein (Section 67)
(1) There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments, extension, and revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and directions of the Central Government, the register shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy of, or extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other electronic form, —
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed to include references to the keeping of record of those particulars comprising the register or part of the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references to the rectification of the record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register.
Registration of assignments, transmissions, etc. (Section 69)
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof to title of his satisfaction, —
(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence thereunder authenticated in the prescribed
Manner and also such other documents as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so, requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.
Under the Patent Act 1970, every invention must pass a two-step test in order to be patentable – namely, it must:
- Not fall in any of the categories specifically excluded under Section 3 of the Patent Act; and
- Pass the well-known three-pronged test of novelty, inventive step and industrial applicability.
The following are the excluded biotechnology-related inventions.
- Section 3(b) – inventions contrary to public morality
Inventions for which the primary or intended use or commercial exploitation is contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are not patentable. Examples include genetic modification of animals which results in suffering of the modified animal without any substantial medical or other benefit, and inventions causing adverse environmental impact.
2. Section 3(c) – discoveries, things isolated from nature, plants and animals
Discoveries of living things or non-living substances occurring in nature are not patentable subject matter. Thus, micro-organisms isolated from nature and DNA, RNA or proteins isolated from living organisms are not patentable. Although naturally occurring micro-organisms are not patentable, genetically modified micro-organisms and vaccines are patentable, subject to other requirements. Synergistic compositions of new or known micro-organisms can also be patentable, as can processes for isolating such substances. To remove any ambiguity, the act was amended in 2002 to include “biochemical, biotechnological and microbiological processes” within the definition of potentially patentable chemical processes. Plants and animals or their parts – including seeds, varieties and species – are not patentable. Further, essentially biological processes for the production of plants or animals (e.g. Conventional methods of plant breeding and tissue culture techniques) are also not patentable.
3. Section 3(d) – new forms or uses of known substance
A new form of a known substance is not patentable unless it differs significantly in properties with regard to the known efficacy. This provision essentially prevents the ever greening of patents through trivial modifications or incremental innovations. However, its interpretation has been the source of polarising debate among legal professionals, academics, non-governmental organisations and pharmaceutical companies.
4. Section 3(e) – mere admixture
The mere admixture of two or more previously known substances is not patentable, unless it is shown that the combinative effect of such substances is more than the sum of their individual effects. In other words, such a combination should result in a synergistic effect. The synergism must be properly demonstrated in the complete specification by providing appropriate experimental data.
5. Section 3(i) – methods of treatment and diagnosis
The act does not prevent patenting of pharmaceuticals and medical devices. Thus, medicinal compounds, drugs, formulations, stents, surgical sutures and staplers are patentable. However, Section 3(i) precludes from patentability:
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings; or
- Any treatment of animals which renders them free of disease or increases their economic value (or that of their products).
In India the 1970 patent Act exclude mathematical or business or a computer program per se or algorithms from patentability. In the last 10 years of India's experiments with TRIPS compliance in the domain of patents, put a major test in section.3. In 2004 a major amendment was introduced in section 3 through Patent Amendment Ordinance with respect to the patentability of computer programs. By the new clause sec.3 (k), a computer program per se other than its technical application to industry or a combination with hardware; a mathematical method or business method or algorithms.
Unlike the copyright law which merely protects the expression of an idea, patent law protects the concepts of the invention. Currently some countries protect computer software like any other invention as long as it is a proper subject for patent protection i.e., if it is a new and useful process involving an inventive step and capable of industrial application. The subjects which are excluded from patent protection are laws of nature, natural phenomena, abstract ideas and mathematical expressions of scientific truths. Mathematical and scientific expressions are denied patent protection because technology is suppressed against the desires of the authors of the constitution, if such patents are granted.
Comparing to the protection given under patent law, the protection given by copyright and trade secrets has limited scope. The owner of the copyright over an item of software has the right to prevent any other person from copying the code as it is written but does not have the right to prevent the utilization of the idea behind the code, providing that the person utilizing the idea must use it in a manner that is different from the arrangement of the code. The copyright law is also limited to prohibit unauthorized copying of the protected work but it does not prohibit all forms of copying. The expression of a method of operation and principles of a computer program cannot be protected by copyright. Functional aspects of a computer program are excluded from copying. A patent provides more secure protection than the copyright and the trade secret. It protects the 'idea' or 'functionality' of the software. Copying of an idea is very easy to do and anybody can describe it simply, that is might a patent is restricting from doing.
If a computer software is merely an algorithm it should not be protected under patents. The term of algorithm is not defined in the patent act. If the invention is technical in nature it will entitled to get protection under patents. The mathematical algorithms which per se are not regarded as patentable subject matter universally, they are merely considered as abstract ideas or mental steps.
Advantages of patent protection
Patenting software has three specific advantages over both copyright and trade secret protection.
- If a patent holder files a patent infringement claim he cannot be faced with the defence of independent creation.
- The patent grants the creator a monopoly right to license his product and since disclosure of the invention is a requirement of patentability, the inventor need not concern himself with the secrecy problems facing copyright and trade secret holders.
- The patent holder receives a 20-year monopoly over the invention, during which time others are prohibited from making using or selling the invention.
There has not been any international convention which granting patent to computer software. The Paris convention, 1883, on the protection of industrial property, leaves it to member countries to specify the protectable subject matter for patents.
The World Intellectual Property Organization (WIPO) 1978 provided that for granting patent protection for computer software it must fulfil the criteria of new and inventive technical solutions. However, in most of the countries, the question of patentability cannot be answered with any degree of certainty.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) describes patentable subject matter under article 27.1, subjects to certain exceptions or conditions under the agreement "patent shall be available for inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application". TRIPS prohibit any field specific exclusion of patents.
Form of application (section 7)
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.
Examination of application (Section 12)
(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely: —
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.
Opposition of patent
Patent opposition, if used appropriately, can act as an important tool to prevent the grant of frivolous patents.
Types of patent opposition proceeding
- Pre-grant opposition proceedings – grounds and procedure
According to Section 25(1) of the Patents Act, 1970, any person may, in writing, oppose the grant of a patent following publication of the patent application but before the grant of the patent based on the grounds stated in Sections 25(1)(a) to (k). The representation for opposition is filed in Form-7(A) along with a statement and evidence in support of the opposition. The opponent may also request a hearing if desired. The legislature has intentionally retained a six-month window before the grant of a patent from the date of publication of the application, providing third parties an opportunity to oppose the grant of a patent. However, the representation can be filed only if a request for examination of the patent application has already been filed. After consideration of the representation, if the controller decides that there is merit in the representation, he or she will give notice of the opposition to the applicant. After receiving notice, the applicant files a reply to the representation along with evidence, if any is available, within three months of receipt of the notice.
A pre-grant opposition can be filed only on the following grounds:
- Wrongful obtainment of the invention (Section 25(1)(a) of the Patents Act);
- Anticipation by prior publication (anywhere in the world) (Section 25(1)(b));
- Anticipation by prior claiming in India (Section 25(1)(c));
- Public knowledge or public use in India before the priority date (Section 25(1)(d));
- Obviousness and lack of inventive step in the invention (Section 25(1)(e));
- Being an excluded subject matter (such as those inter alia provided in Section 3) (Section 25(1)(f));
- Insufficiency of disclosure of the complete specification (Section 25(1)(g));
- Non-compliance of the requirement of Section 8 or furnishing materially false information (Section 25(1)(h));
- Non-filing of the application within 12 months of filing the first application in a convention country (Section 25(1)(i));
- Non-disclosure or wrongful mention of the source or geographical origin of biological material (Section 25(1)(j)); and
- Anticipation with regard to traditional knowledge of any community anywhere in the world (Section 25(1)(k)).
2. Post-grant opposition proceedings – grounds and procedure
According to Section 25(2) of the Patents Act, any person interested can file a post-grant opposition within 12 months of the date of publication of the grant of a patent on any of the grounds prescribed, by giving a notice of opposition to the controller. The grounds of post-grant opposition are identical to those for pre-grant opposition. After receipt of the notice, the controller informs the patentee of the opposition and orders an opposition board to examine the opposition and give the controller its recommendation.
Grant and sealing of patent (Section 43)
(1) Where, a complete specification in pursuance of an application for a patent has been accepted and either-
(a) the application has not been opposed under section 25 and the time for the filing of the opposition has expired; or
(b) the application has been opposed and the opposition has been finally decided in favour of the applicant; or
(c) the application has not been refused by the Controller by virtue of any power vested in him by this Act, the patent shall, on request made by the applicant in the prescribed form, be granted to the applicant or, in the case of a joint application, to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the register.
(2) Subject to the provisions of sub-section (1) and of the provisions of this Act with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of a period of six months from the date of advertisement of the acceptance of the complete specification:
(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pending before the Controller or the High Court, the request may be made within the prescribed period after the final determination of that proceeding;
(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.
(3) The period within which under sub-section (2) a request for the sealing of a patent may be made may, from time to time, be extended by the Controller to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period:
Provided that the first-mentioned period shall not be extended under this sub-section by more than three months in the aggregate.
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva. The Patent Cooperation Treaty (PCT) provides us with an overview of an international treaty which is duly administered by the World Intellectual Property Organization (WIPO). The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States. It is administered by the World Intellectual Property Organization. (WIPO). The PCT is an international treaty which provides a system for filing a patent application and allow us to obtain patents in multiple countries around the world on the basis of a single patent application. As PCT simplifies the procedure for obtaining Patent protection in many countries, making it more efficient and economical for: a) Users of the patent system i.e an applicant/(s) and inventors b) National Offices. The PCT simplifies the patent filing process for applicant and the ultimate decision to grant a patent vest exclusively with each national or regional Patent Office. A single PCT application has the same legal effect as a national Patent application in each of the PCT Contracting States. Without the PCT, we would have to file a separate patent application in each country separately and independently. PCT save applicant time, effort and expense of preparing separate applications in various languages and file it in different signatory’s states. Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month period as provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.
Basic Features of PCT System
- Formal examination done by one office.
- Retrieval is carried out by one office.
- International publication done by one office.
- Examination and authorization finished by national office.
- Single application with legal effect in all PCT countries.
- 148 countries and 4 regional patent systems.
Advantages
- A single application in single language filed in a single country called the international application.
- Provides a strong basis for patenting decisions to the users.
- Harmonizes formal requirements.
- Used by the world’s major corporations, universities and research institutions when they seek international patent protection.
- This single application has the effect of filing simultaneously in different countries (designated countries).
- Protects applicant from certain inadvertent errors.
- Evolves to meet user needs.
The rights of patentee are-
- Right to exploit the Patent
When the new invention is a product, the Patentee has the exclusive rights to use, make, import, or sell for these purposes related to an invention in India. On the other hand, when the invention of the inventor is a procedure or process of manufacturing of any article or substance, the right to exploit means the exclusive right exercise or use the procedure or method in the territory of India.
2. Right to Grant License
The Patentee of a Patent is given the right to grant license or transfer rights or enter into some arrangement for some consideration. The assignment or license to be valid and legitimate it is required to be in writing and should be registered with the Controller of Patent. Unless a document of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent, and such a rule is applicable to the assignee, not the assignor.
3. Right to Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a Patent at any time and at his/her own discretion. The advertisement for such an offer of surrender is required to be done in the Journal. The publication is done to give an opportunity to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee apprehends his/her non-performance of the Patent in the future and upon which he/she decides to surrender the Patent.
4. Right to sue for Infringement
The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction to try the suit.
5. Right to Use and Enjoy Patent
The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or the patented substance or article in India or to practice or utilize or the process or techniques associated with the invention. Such rights can be exercised either by the Patentee himself/herself or by his/her licensees or agents.
Obligations of patentee
- Duty to Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all required data related to the remote uses of comparative or same invention documented by him/her or through him/her or through someone by him/her at the time of applying or within 6 months of applying. The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the applications and, in addition to the above, an endeavour to disclose all the points of interest of any subsequent applications that might be documented at the future stages. Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data required by the Controller of Patent with regards to the relating of any remote applications at whatever point demand is made by the Controller of Patents within a time period of 6 months of such a demand by the Controller of Patent. The first part of the obligation of Patentee begins when a man records an application of Patent. On the other hand, the second part begins after a demand is made by the Controller of Patents under the Patents Act, 1970.
2. Duty to Request for Examination
Not like other Intellectual Property Rights, the Registration process of Registration of Patent does not accommodate any kind of programmed examination of the grant of Patent application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the growth or development connected for Patent.
3. Duty to Respond to Objections
The Controller of Patent before accepting the examination request passes it to the analyst who looks at the growth and gives a report to the Controller of Patent known as the First Examination Report (FER). On certain cases there may be some protests which will be brought up in the First Examination Report, it is the right of Patentee to reply to such opposition complaints and consent to the corresponding within a time period of a year of the issuance of the First Examination Report (FER) falling which the application of the Patentee will be considered to be surrendered by the Controller of Patent.
4. Duty to clear all Objections
It is the obligation of the owner of the Patent to respond to the raised objections as well as to clear and remove each one of the raised objections and, in addition, certain oppositions raised against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go for a consultation and clear all the objections and, in addition, oppositions, if are raised any, against the invention of the inventor.
5. Duty to Pay Statutory Fees
The Patentee has an obligation to pay all the statutory expenses required to get a grant of a Patent in the process of Registration without failure generally, his/her application for the grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions recognized with payment of charges and, in addition, the consequences for non-payment of such prescribed fees. After this process is imitated to and the Patentee of Patent clears every one of the restrictions and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a Patent to the invention and publishes it in the Journal, or generally, the Controller rejects such a Patent.
The term of every patent in India is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years begins from the international filing date. It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent can also be claimed.
Burden of proof in case of suits concerning infringement (Section 104 A)
(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, —
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
Power of court to grant relief in cases of groundless threats of infringement proceedings (Section 106)
(1) Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens any other person by circulars or advertisements or by communications, oral or in writing addressed to that or any other person, with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs, that is to say—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid the court may grant to the plaintiff all or any of the reliefs prayed for.
Reliefs in suit for infringement (Section 108)
(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.
(2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.
Key Takeaways
- The history of patent law in India starts from 1911 when the Indian patents and designs act, 1911 was enacted. The present patents act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to patents in India. The patents act, 1970 was again amended by the patents (amendment) act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to exclusive marketing rights (EMRS) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
References:
1. B.S. Patil, Legal Aspects of Building and Engineering Contracts, 1974.
2. The National Building Code, BIS, 2017
3. RERA Act, 2017
4. Meena Rao (2006), Fundamental concepts in Law of Contract, 3rd Edn. Professional Offset
5. Neelima Chandiramani (2000), The Law of Contract: An Outline, 2nd Edn. Avinash Publications Mumbai
6. Avtarsingh (2002), Law of Contract, Eastern Book Co.
7. Dutt (1994), Indian Contract Act, Eastern Law House
8. Anson W.R. (1979), Law of Contract, Oxford
Unit - 5
Law relating to Intellectual property
Intellectual property (IP) rights are legal and institutional devices to protect creations of the mind such as inventions, works of art and literature, and designs. Intellectual property right is the legally enforceable power to exclude others from using the information created or to set the terms on which it can be used. The objective of the agreement on TRIPS is to give adequate and effective protection to the intellectual property rights to reward creativity and inventiveness. TRIPS sets out minimum protection to be given to each category of intellectual property in the national laws of each WTO member. It lays down procedures and remedies to be provided by each country for intellectual rights enforcement. The agreement on TRIPS lays down minimum standards of protection that countries must provide for intellectual property rights. One of the other important features of the agreement is that it also requires countries to ensure effective enforcement of these rights. Its rules apply to:
- Copyright and related rights;
- Trademarks;
- Patents;
- Geographical indications;
- Industrial designs;
- Layout designs of integrated circuits; and
- Undisclosed information.
COPYRIGHT-
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
Such classification of copyright is discussed below-
Figure: Types of work eligible for copyright
- Literary Works
They are not limited to works of literature like plays, novels or poems and instead include all forms of written documents. Works like technical books, scripts, research work, computer programs or database, thesis also form a part of the literary work. For example – Madeline and the Wedding is a copyrighted script of the animated show Madeline Series.
b. Dramatic Works
They are similar to literary works but include a piece of recitation. Works like choreography, the arrangement of play, scenic arrangement come under Dramatic type of copyright works.
c. Artistic Works
Copyright protection covers works of art. These include paintings, sculptures, graphics, drawings, maps, charts, photographs, caricatures and cartoons. For example – Tom and Jerry are famous copyrighted cartoon characters.
d. Musical Works
They can be protected in two different ways. The lyrics of a song fall under literary work while the music tune (notation) can be protected under musical works. They need to be submitted in a written format.
e. Sound Recordings
Both non-musical and musical sound recording can be protected by copyright, regardless of the medium of storage. They include recorded speech, podcasts, interviews, soundtracks, speeches. All sorts of music created automatically falls under copyright protection.
f. Movies
A cinematographic work is a combination of both video films and sound recording. Any work recorded with moving visuals or images, with or without a sound recording is considered a cinematographic film. For example – Computer Games, Feature Films or Animation Movies.
TRADEMARKS-
Trademarks are another familiar type of intellectual property rights protection. A trademark is a distinctive sign which allows consumers to easily identify the particular goods or services that a company provides. Some examples include McDonald’s golden arch, the Facebook logo, and so on. A trademark can come in the form of text, a phrase, symbol, sound, smell, and/or colour scheme. Unlike patents, a trademark can protect a set or class of products or services, instead of just one product or process.
The Trademarks Act, 1999, allows the registration of various types of trademarks such as word marks, service marks, collective marks, certification marks, series marks logos/symbols and many other. Such types are-
Figure: Types of trade mark
a. Word Marks
Word Marks are the most common types of trademarks that are registered in India. These refer to any marks that are used to identify the products and services of a trading company or service-providing company. If the name of your product or service is text- based (contains text only) it will be registered under Word Marks. For Example - The word Nestle® is a registered as a Word-Mark.
b. Service Marks
Service Marks represent the service which a company or business deals in. They distinguish different services available in the market and is filed under trademark classes 35-45. For example - FedEx is a registered courier delivery service provider.
c. Logos and Symbols
A logo is a printed/painted figure/design/character and do not consist of any letters/words/numerals. For word marks that are also used as a logo, the trademark needs to be registered both as a word mark and a device mark. In India, the registration for both these aspects can be made in a single application. For example - Apple has a registered logo which is used on each of their products.
d. Shape of Goods
The shape of goods is categorized in Trade Dress (appearance of a product) wherein, other than a logo or label a product can also be distinguished based on its packaging. For example - The bottle of Coca-Cola is distinguished from other brands on the basis of its bottle's shape.
e. Series Marks
Series marks are trademarks which have a common syllable, prefix or suffix, thus denoting as a family of marks sharing a 'common name.' They should differ only as to matters of non-distinctive characters (goods, price, quality or size). For example - McDonald's have a series of 'Mc' registered as word mark which represents their different product range such as Mc Chicken, Mc Veggie etc.
f. Collective Trademarks
These marks are linked with a group of people and not one single product or service. These trademarks are primarily owned by an organization, institutes or any association. They can be used by members of the organization to represent them as one the part. For Example - A chartered accountant can use the “CA" device as he is a registered member of the Institute of Chartered Accountants.
g. Certification Mark
The certification mark is created to show a specific quality standard that the company has met. This means that the public will be aware that the trader's goods or services are certified as it has met a particular standard, as defined by the certifying body that owns the certification mark. Certification marks are used to define "Standard" of goods and services. For Example - FSSAI - Certification for the quality of packaged food products.
h. Geographical Indicators
A geographical indication is used on products to show the unique nature, reputation and quality the products possess based on the place of origin. The Geographical Indicators are awarded by the GI Registry and is granted to natural, agricultural, manufactured and handicraft products that come from a specific geographical origin. For Example -Assam Tea is a GI under the Intellectual Property Rights.
PATENTS-
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
There are three different categories that patents can fall under:
a) Utility:
A utility patent protects the creation of a new or improved product, process, composition of matter, or machine that is useful.
b) Design:
A design patent protects the ornamental design on a useful item.
c) Plant:
A plant patent protects new kinds of plants produced by cuttings or other nonsexual means.
For example,
- Pen with scanner
With a machine as small as a pen, you can transfer text from paper directly into a computer. Christer Fåhraeus invented the C-pen.
- Steel kidneys
After receiving a grant from the state in 1946, Nils Alwall, a doctor in Lund, began developing a dialysis machine for people suffering from kidney disease. Just over twenty years later, his inventions started to be mass produced.
PATENTS AND DESIGNS-
A design patent is a form of legal protection of the unique visual qualities of a manufactured item. A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation or both. In other words, a design patent provides protection for the ornamental design of something that has a practical utility.
In the United States, that means an item that is substantially similar to something that has the protection of a design patent may not be made, copied, used or imported into the country. In other countries, a registered design may act as an alternative to a design patent. In certain European countries, patent protection for designs may be obtained for a fee and by meeting basic registration requirements.
How a Design Patent Works
An item or object that is protected by a design patent carries broad protection from copyright infringement. A design that was not intended to be a copy and which was devised independently from an existing, design patent-protected item may still infringe upon that design patent.
In some countries, such as the U.S., Canada, China, Japan, and South Africa, applications for design patents are kept secret until they are granted. In Japan, secrecy can be extended to three years after registration is granted. The first U.S. Design patent was awarded in 1842 for printing typefaces and border (fonts).
Design Patent Examples
Some examples of design patents include ornamental designs on jewellery, automobiles or furniture, as well as packaging, fonts and computer icons (such as emojis). Some famous design patent objects include the original curvy Coca-Cola bottle (1915) and the Statue of Liberty (1879).
When a company’s product design has substantial cachet, a design patent solidifies its competitive advantage by penalizing other firms that try to develop similar-looking items. For example, Apple has been awarded damages reportedly totalling more than $900 million from Samsung, which violated its iPhone design patents.
SECRETS-
Trade secrets are the secrets of a business. They are proprietary systems, formulas, strategies, or other information that is confidential and is not meant for unauthorized commercial use by others. This is a critical form of protection that can help businesses to gain a competitive advantage. Although intellectual property rights protection may seem to provide a minimum amount of protection, when they are utilized wisely, they can maximize the benefit and value of a creation and enable world-changing technology to be developed, protected, and monetized. For example, Coca Cola Formula, KFC Secret Spice –Mix, McDonald’s Big Mac sauce, Google search algorithm etc.
Trade secrets in India are generally governed by Article 39 of the TRIPS Agreement which lays down 3 essential conditions.
Figure: Essential of trade secret
a. Secret
The information must be secret which is not generally known amongst, or readily accessible to, circles that normally deal with the kind of information in question. For example, KFC Secret Spice –Mix.
b. Commercial Value
This information must have some commercial value attached to it. The KFC products have commercial value in the market.
c. Reasonable efforts by the rightful holder to keep its secrecy
The rightful holder of the trade secret should have taken reasonable efforts to keep it secret.
Pre-Independence Copyright law in India
The Copyright Law of India was enacted by the British colony and like most of the acts of that time; it was an imitation of the English law.
The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission. All suits and infringement related to copyright came under the jurisdiction of the highest local civil court. The act was replaced by the copyright act of 1914.
The act of 1914 was the first 'modern' copyright law of India. It was the first law to include all works of art and literature under the ambit of copyright. It was a replica of the English law of 1911. It was done by the British to ease the passage of literature over colonial subcontinent.
Post-Independence Copyright law in India
The Copyright Act of 1957 came into force on the 21st of January, 1958 replacing the 1911 act. The act besides amending the copyright law also introduced milestone changes such as provisions for setting up copyright office under the control of Registrar of copyright for registration of books and other works of art. It also established a copyright board to deal with the disputes relating to copyright.
Meaning of copyright –
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
According to section 14 of the copyright Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely: —
(a) in the case of a literary, dramatic or musical work, not being a computer programme, —
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public; (iv) to make any cinematograph film or sound recording in respect of the work;
(iv) to make any translation of the work;
(v) to make any adaptation of the work;
(vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme, —
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.
(c) in the case of an artistic work, —
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or
(C) depiction in two-dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film, —
(i) to make a copy of the film, including—
(A) a photograph of any image forming part thereof; or
(B) storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;
(iii) to communicate the film to the public;
(e) in the case of a sound recording, —
(i) to make any other sound recording embodying it including storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;
(iii) to communicate the sound recording to the public
Computer programs
Section 2 (ffc) “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;
Ownership of copyrights and assignment
The provisions related to ownership of copyright and assignments are discussed below-
First owner of copyright (Section 17)
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(e) in the case of a work to which the provisions of section 41 apply, the international organization concerned shall be the first owner of the copyright therein.
Assignment of copyright (Section 18)
(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.
Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work:
Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilization of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void:
Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilization of such work except to the legal heirs of the authors or to a collecting society for collection and distribution and any assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
Mode of assignment (section 19)
(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.
(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.
(3) The assignment of copyright in any work shall also specify the amount of 4 [royalty and any other consideration payable], to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.
(4) Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.
(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.
(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.
(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994 (38 of 1994).
(8) The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member shall be void.
(9) No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilisation of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form.
Criteria of infringement
The criteria related to infringement are discussed below-
When copyright infringed (Section 52)
Copyright in a work shall be deemed to be infringed—
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act—
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or
(b) when any person—
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.
Certain acts not to be infringement of copyright (Section 52)
(1) The following acts shall not constitute an infringement of copyright, namely, —
(a) a fair dealing with any work, not being a computer programme, for the purposes of—
(i) private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;
(c)transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:
Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a
Period of twenty-one days or till he receives an order from the competent court refraining from facilitation access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;
(d) the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;
(e) the reproduction or publication of any work prepared by the Secretariat of a Legislature or, where the legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;
(f) the reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force;
(g) the reading or recitation in public of reasonable extracts from a published literacy or dramatic work;
(h) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for instructional use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for such use in which copyright subsists:
Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.
(j) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording;
(k) the causing of a recording to be heard in public by utilising it, —
(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;
(n) the storing of a work in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a 2 [non-commercial public library for the use of the library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access:
Provided that where the identity of the author of any such work or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than [sixty years] from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identity is known or, if the identity of more authors than one is known from the death of such of those authors who dies last;
(q) the reproduction or publication of—
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government;
(iv) any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority, as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder—
(v) if no translation of such Act or rules or orders in that language has been previously been produced or published by the Government; or
(vi) where a translation of such Act or rules or orders in that language has been produced or published by the Government, if the translation is not available for sale to the public: Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government.
Internet piracy is the act of downloading a file from the internet, or by procuring an online software through a compact disc. Methods of conducting internet piracy are websites offering free downloads of software, auctions selling illegally obtained software or P2P servers which transfer programs.
Internet piracy has become a huge copyright issue, in the past few years. The unhindered growth of technology along with the increase in cybercrimes has made internet piracy issues quite common in today’s day and age. Here are a few reasons why internet piracy is becoming such a huge problem-
- Easy and wide distribution using the internet
- No limits as to the number of people that a material can be distributed to
- Difficult to distinguish between the original and the fake copies
- Hardly any cost associated with the illegal distributing
- Easy to access copyrighted material without the threat of being raced down.
In India, the Copyright Act 1957 along with the Information Technology Act, 2000 deal with the several facets of piracy. However, of late, there has been an increasing need for more pieces of legislation that can help us conclusively deal with the problem of internet piracy. With more and more technological advancements, the need for enforcement of strong copyright laws to deal with complex internet piracy cases has become essential.
The main legislation for the protection of art from copyright issues is the Copyright act of 1957. The copyright act was amended in 2012 to bring under its umbrella the various forms of online piracy that takes place. Section 65 A of the new copyright (amendment) act, 2012 protects the owners of copyrighted materials in case of a breach. Section 65 A states that “any person who circumvents an effective technological measure applied to protect any of the rights conferred by this Act, to infringe such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” Such punishment is bound to deter several cybercriminals from using or misusing the copyrighted data. This section is meant for “protection of technological measures” and is key to curb digital piracy.
Section 65 B of the Copyright (Amendment) Act, 2012 provides “Protection of Rights Management Information”. The section states that “any person, who knowingly- (1) removes or alters any rights management information without authority, or (2) distributes, imports for distribution broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” This is essential to protect unauthorized access and misuse of sensitive information.
Another piece of legislation that deals with digital piracy is the Information Technology Act, 2000. Section 66 of the Information Technology Act provides for punishment with up to 3 years of imprisonment and fines up to Rs 2 lakhs for illegal online distribution of copyrighted content.
A rather new measure that the Indian courts have taken to reduce the cases of digital piracy in India is the “john doe” order”. John Doe orders require very little information about the accused and his identity is unknown at the time of filing of the petition. All the above-mentioned pieces of legislation along with these new John Doe orders help block potential threats before the release of new movies and govern the entire digital piracy scenario in India. However, several different aspects of digital piracy are still not dealt with, by Indian legislation. There are several issues and challenges regarding online piracy in India that still need a lot of work.
Key takeaways
- The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission.
Historical perspective
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
An invention relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
Meaning
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
Law relating to Patents under Patents Act, 1970
What are not inventions (Section 3)
The following are not inventions within the meaning of this Act, —
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or 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 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.
(e) 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;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) Omitted by the Patents (Amendment) Act, 2002
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Inventions relating to atomic energy not patentable (Section 4)
No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
Persons entitled to apply for patents (Section 6)
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say, —
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Information and undertaking regarding foreign applications (Section 8)
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
Provisional and complete specifications (Section 9)
(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of 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 to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.
(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a 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.
Contents of specifications (Section 10)
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method
By which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely: —
(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.
(4A) In case of an international application designating' India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
Secrecy directions relating to inventions relevant for defence purposes (section 35)
(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
(2) Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.
(3) Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply as if the invention where one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.
Grant of patents (Section 43)
(1) Where an application for a patent has been found to be in order for grant of the patent and either—
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.
Amendment of patent granted to deceased applicant (Section 44)
Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Date of patent (Section 45)
(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of publication of the application.
Form, extent and effect of patent (Section 46)
(1) Every patent shall be in the prescribed form and shall have effect throughout India.
(2) A patent shall be granted for one invention only:
Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.
Grant of patents to be subject to certain conditions (Section 47)
The grant of a patent under this Act shall be subject to the condition that—
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
Rights of patentees (Section 48)
Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent
Third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India (Section 49)
(1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—
(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or
(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,
As the case may be.
(2) This section shall not extend to vessels, aircrafts or land vehicles owned by persons ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or within the territorial waters of that foreign country or otherwise within the jurisdiction of its courts.
Rights of co-owners of patents (Section 50)
(1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
(2) Subject to the provisions contained in this section and in section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to rights conferred by section 48 for his own benefit without accounting to the other person or persons.
(3) Subject to the provisions contained in this section and in section 51 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under the patent shall not be granted and share in the patent shall not be assigned by one of such persons except with the consent of the other person or persons.
(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of a patent, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.
(5) Subject to the provisions contained in this section, the rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.
(6) Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created before the commencement of this Act.
Power of Controller to give directions to co-owners (Section 51)
(1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent, or the exercise of any right under section 50 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3) Before giving any directions in pursuance of an application under this section, the Controller shall give an opportunity to be heard—
(a) in the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;
(b) in the case of an application under sub-section (2), to the person in default.
(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.
Term of patent (Section 53)
(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.
(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
(3) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Term of patents of addition (Section 55)
(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1) the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
Validity of patents of addition (Section 56)
(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(2) For the removal of doubts, it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.
Applications for restorations of lapsed patents (Section 60)
(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within such period as may be allowed under sub-section (4) of section 142, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
(2) [Omitted by the Patents (Amendment) Act, 2002]
(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.
Procedure for disposal of applications for restoration of lapsed patents (Section 61)
(1) If, after hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(4) The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to be entered in the register but which has not been so entered.
Surrender of patents (Section 63)
(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall publish the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after such publication, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
Revocation of patents (Section 64)
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the
Priority date of the claim or to what was published in India or elsewhere in any of the, documents referred to in section 13:
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person.
Register of patents and particulars to be entered therein (Section 67)
(1) There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments, extension, and revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and directions of the Central Government, the register shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy of, or extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other electronic form, —
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed to include references to the keeping of record of those particulars comprising the register or part of the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references to the rectification of the record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register.
Registration of assignments, transmissions, etc. (Section 69)
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof to title of his satisfaction, —
(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence thereunder authenticated in the prescribed
Manner and also such other documents as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so, requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.
Under the Patent Act 1970, every invention must pass a two-step test in order to be patentable – namely, it must:
- Not fall in any of the categories specifically excluded under Section 3 of the Patent Act; and
- Pass the well-known three-pronged test of novelty, inventive step and industrial applicability.
The following are the excluded biotechnology-related inventions.
- Section 3(b) – inventions contrary to public morality
Inventions for which the primary or intended use or commercial exploitation is contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are not patentable. Examples include genetic modification of animals which results in suffering of the modified animal without any substantial medical or other benefit, and inventions causing adverse environmental impact.
2. Section 3(c) – discoveries, things isolated from nature, plants and animals
Discoveries of living things or non-living substances occurring in nature are not patentable subject matter. Thus, micro-organisms isolated from nature and DNA, RNA or proteins isolated from living organisms are not patentable. Although naturally occurring micro-organisms are not patentable, genetically modified micro-organisms and vaccines are patentable, subject to other requirements. Synergistic compositions of new or known micro-organisms can also be patentable, as can processes for isolating such substances. To remove any ambiguity, the act was amended in 2002 to include “biochemical, biotechnological and microbiological processes” within the definition of potentially patentable chemical processes. Plants and animals or their parts – including seeds, varieties and species – are not patentable. Further, essentially biological processes for the production of plants or animals (e.g. Conventional methods of plant breeding and tissue culture techniques) are also not patentable.
3. Section 3(d) – new forms or uses of known substance
A new form of a known substance is not patentable unless it differs significantly in properties with regard to the known efficacy. This provision essentially prevents the ever greening of patents through trivial modifications or incremental innovations. However, its interpretation has been the source of polarising debate among legal professionals, academics, non-governmental organisations and pharmaceutical companies.
4. Section 3(e) – mere admixture
The mere admixture of two or more previously known substances is not patentable, unless it is shown that the combinative effect of such substances is more than the sum of their individual effects. In other words, such a combination should result in a synergistic effect. The synergism must be properly demonstrated in the complete specification by providing appropriate experimental data.
5. Section 3(i) – methods of treatment and diagnosis
The act does not prevent patenting of pharmaceuticals and medical devices. Thus, medicinal compounds, drugs, formulations, stents, surgical sutures and staplers are patentable. However, Section 3(i) precludes from patentability:
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings; or
- Any treatment of animals which renders them free of disease or increases their economic value (or that of their products).
In India the 1970 patent Act exclude mathematical or business or a computer program per se or algorithms from patentability. In the last 10 years of India's experiments with TRIPS compliance in the domain of patents, put a major test in section.3. In 2004 a major amendment was introduced in section 3 through Patent Amendment Ordinance with respect to the patentability of computer programs. By the new clause sec.3 (k), a computer program per se other than its technical application to industry or a combination with hardware; a mathematical method or business method or algorithms.
Unlike the copyright law which merely protects the expression of an idea, patent law protects the concepts of the invention. Currently some countries protect computer software like any other invention as long as it is a proper subject for patent protection i.e., if it is a new and useful process involving an inventive step and capable of industrial application. The subjects which are excluded from patent protection are laws of nature, natural phenomena, abstract ideas and mathematical expressions of scientific truths. Mathematical and scientific expressions are denied patent protection because technology is suppressed against the desires of the authors of the constitution, if such patents are granted.
Comparing to the protection given under patent law, the protection given by copyright and trade secrets has limited scope. The owner of the copyright over an item of software has the right to prevent any other person from copying the code as it is written but does not have the right to prevent the utilization of the idea behind the code, providing that the person utilizing the idea must use it in a manner that is different from the arrangement of the code. The copyright law is also limited to prohibit unauthorized copying of the protected work but it does not prohibit all forms of copying. The expression of a method of operation and principles of a computer program cannot be protected by copyright. Functional aspects of a computer program are excluded from copying. A patent provides more secure protection than the copyright and the trade secret. It protects the 'idea' or 'functionality' of the software. Copying of an idea is very easy to do and anybody can describe it simply, that is might a patent is restricting from doing.
If a computer software is merely an algorithm it should not be protected under patents. The term of algorithm is not defined in the patent act. If the invention is technical in nature it will entitled to get protection under patents. The mathematical algorithms which per se are not regarded as patentable subject matter universally, they are merely considered as abstract ideas or mental steps.
Advantages of patent protection
Patenting software has three specific advantages over both copyright and trade secret protection.
- If a patent holder files a patent infringement claim he cannot be faced with the defence of independent creation.
- The patent grants the creator a monopoly right to license his product and since disclosure of the invention is a requirement of patentability, the inventor need not concern himself with the secrecy problems facing copyright and trade secret holders.
- The patent holder receives a 20-year monopoly over the invention, during which time others are prohibited from making using or selling the invention.
There has not been any international convention which granting patent to computer software. The Paris convention, 1883, on the protection of industrial property, leaves it to member countries to specify the protectable subject matter for patents.
The World Intellectual Property Organization (WIPO) 1978 provided that for granting patent protection for computer software it must fulfil the criteria of new and inventive technical solutions. However, in most of the countries, the question of patentability cannot be answered with any degree of certainty.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) describes patentable subject matter under article 27.1, subjects to certain exceptions or conditions under the agreement "patent shall be available for inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application". TRIPS prohibit any field specific exclusion of patents.
Form of application (section 7)
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.
Examination of application (Section 12)
(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely: —
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.
Opposition of patent
Patent opposition, if used appropriately, can act as an important tool to prevent the grant of frivolous patents.
Types of patent opposition proceeding
- Pre-grant opposition proceedings – grounds and procedure
According to Section 25(1) of the Patents Act, 1970, any person may, in writing, oppose the grant of a patent following publication of the patent application but before the grant of the patent based on the grounds stated in Sections 25(1)(a) to (k). The representation for opposition is filed in Form-7(A) along with a statement and evidence in support of the opposition. The opponent may also request a hearing if desired. The legislature has intentionally retained a six-month window before the grant of a patent from the date of publication of the application, providing third parties an opportunity to oppose the grant of a patent. However, the representation can be filed only if a request for examination of the patent application has already been filed. After consideration of the representation, if the controller decides that there is merit in the representation, he or she will give notice of the opposition to the applicant. After receiving notice, the applicant files a reply to the representation along with evidence, if any is available, within three months of receipt of the notice.
A pre-grant opposition can be filed only on the following grounds:
- Wrongful obtainment of the invention (Section 25(1)(a) of the Patents Act);
- Anticipation by prior publication (anywhere in the world) (Section 25(1)(b));
- Anticipation by prior claiming in India (Section 25(1)(c));
- Public knowledge or public use in India before the priority date (Section 25(1)(d));
- Obviousness and lack of inventive step in the invention (Section 25(1)(e));
- Being an excluded subject matter (such as those inter alia provided in Section 3) (Section 25(1)(f));
- Insufficiency of disclosure of the complete specification (Section 25(1)(g));
- Non-compliance of the requirement of Section 8 or furnishing materially false information (Section 25(1)(h));
- Non-filing of the application within 12 months of filing the first application in a convention country (Section 25(1)(i));
- Non-disclosure or wrongful mention of the source or geographical origin of biological material (Section 25(1)(j)); and
- Anticipation with regard to traditional knowledge of any community anywhere in the world (Section 25(1)(k)).
2. Post-grant opposition proceedings – grounds and procedure
According to Section 25(2) of the Patents Act, any person interested can file a post-grant opposition within 12 months of the date of publication of the grant of a patent on any of the grounds prescribed, by giving a notice of opposition to the controller. The grounds of post-grant opposition are identical to those for pre-grant opposition. After receipt of the notice, the controller informs the patentee of the opposition and orders an opposition board to examine the opposition and give the controller its recommendation.
Grant and sealing of patent (Section 43)
(1) Where, a complete specification in pursuance of an application for a patent has been accepted and either-
(a) the application has not been opposed under section 25 and the time for the filing of the opposition has expired; or
(b) the application has been opposed and the opposition has been finally decided in favour of the applicant; or
(c) the application has not been refused by the Controller by virtue of any power vested in him by this Act, the patent shall, on request made by the applicant in the prescribed form, be granted to the applicant or, in the case of a joint application, to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the register.
(2) Subject to the provisions of sub-section (1) and of the provisions of this Act with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of a period of six months from the date of advertisement of the acceptance of the complete specification:
(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pending before the Controller or the High Court, the request may be made within the prescribed period after the final determination of that proceeding;
(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.
(3) The period within which under sub-section (2) a request for the sealing of a patent may be made may, from time to time, be extended by the Controller to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period:
Provided that the first-mentioned period shall not be extended under this sub-section by more than three months in the aggregate.
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva. The Patent Cooperation Treaty (PCT) provides us with an overview of an international treaty which is duly administered by the World Intellectual Property Organization (WIPO). The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States. It is administered by the World Intellectual Property Organization. (WIPO). The PCT is an international treaty which provides a system for filing a patent application and allow us to obtain patents in multiple countries around the world on the basis of a single patent application. As PCT simplifies the procedure for obtaining Patent protection in many countries, making it more efficient and economical for: a) Users of the patent system i.e an applicant/(s) and inventors b) National Offices. The PCT simplifies the patent filing process for applicant and the ultimate decision to grant a patent vest exclusively with each national or regional Patent Office. A single PCT application has the same legal effect as a national Patent application in each of the PCT Contracting States. Without the PCT, we would have to file a separate patent application in each country separately and independently. PCT save applicant time, effort and expense of preparing separate applications in various languages and file it in different signatory’s states. Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month period as provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.
Basic Features of PCT System
- Formal examination done by one office.
- Retrieval is carried out by one office.
- International publication done by one office.
- Examination and authorization finished by national office.
- Single application with legal effect in all PCT countries.
- 148 countries and 4 regional patent systems.
Advantages
- A single application in single language filed in a single country called the international application.
- Provides a strong basis for patenting decisions to the users.
- Harmonizes formal requirements.
- Used by the world’s major corporations, universities and research institutions when they seek international patent protection.
- This single application has the effect of filing simultaneously in different countries (designated countries).
- Protects applicant from certain inadvertent errors.
- Evolves to meet user needs.
The rights of patentee are-
- Right to exploit the Patent
When the new invention is a product, the Patentee has the exclusive rights to use, make, import, or sell for these purposes related to an invention in India. On the other hand, when the invention of the inventor is a procedure or process of manufacturing of any article or substance, the right to exploit means the exclusive right exercise or use the procedure or method in the territory of India.
2. Right to Grant License
The Patentee of a Patent is given the right to grant license or transfer rights or enter into some arrangement for some consideration. The assignment or license to be valid and legitimate it is required to be in writing and should be registered with the Controller of Patent. Unless a document of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent, and such a rule is applicable to the assignee, not the assignor.
3. Right to Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a Patent at any time and at his/her own discretion. The advertisement for such an offer of surrender is required to be done in the Journal. The publication is done to give an opportunity to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee apprehends his/her non-performance of the Patent in the future and upon which he/she decides to surrender the Patent.
4. Right to sue for Infringement
The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction to try the suit.
5. Right to Use and Enjoy Patent
The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or the patented substance or article in India or to practice or utilize or the process or techniques associated with the invention. Such rights can be exercised either by the Patentee himself/herself or by his/her licensees or agents.
Obligations of patentee
- Duty to Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all required data related to the remote uses of comparative or same invention documented by him/her or through him/her or through someone by him/her at the time of applying or within 6 months of applying. The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the applications and, in addition to the above, an endeavour to disclose all the points of interest of any subsequent applications that might be documented at the future stages. Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data required by the Controller of Patent with regards to the relating of any remote applications at whatever point demand is made by the Controller of Patents within a time period of 6 months of such a demand by the Controller of Patent. The first part of the obligation of Patentee begins when a man records an application of Patent. On the other hand, the second part begins after a demand is made by the Controller of Patents under the Patents Act, 1970.
2. Duty to Request for Examination
Not like other Intellectual Property Rights, the Registration process of Registration of Patent does not accommodate any kind of programmed examination of the grant of Patent application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the growth or development connected for Patent.
3. Duty to Respond to Objections
The Controller of Patent before accepting the examination request passes it to the analyst who looks at the growth and gives a report to the Controller of Patent known as the First Examination Report (FER). On certain cases there may be some protests which will be brought up in the First Examination Report, it is the right of Patentee to reply to such opposition complaints and consent to the corresponding within a time period of a year of the issuance of the First Examination Report (FER) falling which the application of the Patentee will be considered to be surrendered by the Controller of Patent.
4. Duty to clear all Objections
It is the obligation of the owner of the Patent to respond to the raised objections as well as to clear and remove each one of the raised objections and, in addition, certain oppositions raised against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go for a consultation and clear all the objections and, in addition, oppositions, if are raised any, against the invention of the inventor.
5. Duty to Pay Statutory Fees
The Patentee has an obligation to pay all the statutory expenses required to get a grant of a Patent in the process of Registration without failure generally, his/her application for the grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions recognized with payment of charges and, in addition, the consequences for non-payment of such prescribed fees. After this process is imitated to and the Patentee of Patent clears every one of the restrictions and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a Patent to the invention and publishes it in the Journal, or generally, the Controller rejects such a Patent.
The term of every patent in India is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years begins from the international filing date. It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent can also be claimed.
Burden of proof in case of suits concerning infringement (Section 104 A)
(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, —
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
Power of court to grant relief in cases of groundless threats of infringement proceedings (Section 106)
(1) Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens any other person by circulars or advertisements or by communications, oral or in writing addressed to that or any other person, with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs, that is to say—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid the court may grant to the plaintiff all or any of the reliefs prayed for.
Reliefs in suit for infringement (Section 108)
(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.
(2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.
Key Takeaways
- The history of patent law in India starts from 1911 when the Indian patents and designs act, 1911 was enacted. The present patents act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to patents in India. The patents act, 1970 was again amended by the patents (amendment) act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to exclusive marketing rights (EMRS) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
References:
1. B.S. Patil, Legal Aspects of Building and Engineering Contracts, 1974.
2. The National Building Code, BIS, 2017
3. RERA Act, 2017
4. Meena Rao (2006), Fundamental concepts in Law of Contract, 3rd Edn. Professional Offset
5. Neelima Chandiramani (2000), The Law of Contract: An Outline, 2nd Edn. Avinash Publications Mumbai
6. Avtarsingh (2002), Law of Contract, Eastern Book Co.
7. Dutt (1994), Indian Contract Act, Eastern Law House
8. Anson W.R. (1979), Law of Contract, Oxford
Unit - 5
Law relating to Intellectual property
Intellectual property (IP) rights are legal and institutional devices to protect creations of the mind such as inventions, works of art and literature, and designs. Intellectual property right is the legally enforceable power to exclude others from using the information created or to set the terms on which it can be used. The objective of the agreement on TRIPS is to give adequate and effective protection to the intellectual property rights to reward creativity and inventiveness. TRIPS sets out minimum protection to be given to each category of intellectual property in the national laws of each WTO member. It lays down procedures and remedies to be provided by each country for intellectual rights enforcement. The agreement on TRIPS lays down minimum standards of protection that countries must provide for intellectual property rights. One of the other important features of the agreement is that it also requires countries to ensure effective enforcement of these rights. Its rules apply to:
- Copyright and related rights;
- Trademarks;
- Patents;
- Geographical indications;
- Industrial designs;
- Layout designs of integrated circuits; and
- Undisclosed information.
COPYRIGHT-
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
Such classification of copyright is discussed below-
Figure: Types of work eligible for copyright
- Literary Works
They are not limited to works of literature like plays, novels or poems and instead include all forms of written documents. Works like technical books, scripts, research work, computer programs or database, thesis also form a part of the literary work. For example – Madeline and the Wedding is a copyrighted script of the animated show Madeline Series.
b. Dramatic Works
They are similar to literary works but include a piece of recitation. Works like choreography, the arrangement of play, scenic arrangement come under Dramatic type of copyright works.
c. Artistic Works
Copyright protection covers works of art. These include paintings, sculptures, graphics, drawings, maps, charts, photographs, caricatures and cartoons. For example – Tom and Jerry are famous copyrighted cartoon characters.
d. Musical Works
They can be protected in two different ways. The lyrics of a song fall under literary work while the music tune (notation) can be protected under musical works. They need to be submitted in a written format.
e. Sound Recordings
Both non-musical and musical sound recording can be protected by copyright, regardless of the medium of storage. They include recorded speech, podcasts, interviews, soundtracks, speeches. All sorts of music created automatically falls under copyright protection.
f. Movies
A cinematographic work is a combination of both video films and sound recording. Any work recorded with moving visuals or images, with or without a sound recording is considered a cinematographic film. For example – Computer Games, Feature Films or Animation Movies.
TRADEMARKS-
Trademarks are another familiar type of intellectual property rights protection. A trademark is a distinctive sign which allows consumers to easily identify the particular goods or services that a company provides. Some examples include McDonald’s golden arch, the Facebook logo, and so on. A trademark can come in the form of text, a phrase, symbol, sound, smell, and/or colour scheme. Unlike patents, a trademark can protect a set or class of products or services, instead of just one product or process.
The Trademarks Act, 1999, allows the registration of various types of trademarks such as word marks, service marks, collective marks, certification marks, series marks logos/symbols and many other. Such types are-
Figure: Types of trade mark
a. Word Marks
Word Marks are the most common types of trademarks that are registered in India. These refer to any marks that are used to identify the products and services of a trading company or service-providing company. If the name of your product or service is text- based (contains text only) it will be registered under Word Marks. For Example - The word Nestle® is a registered as a Word-Mark.
b. Service Marks
Service Marks represent the service which a company or business deals in. They distinguish different services available in the market and is filed under trademark classes 35-45. For example - FedEx is a registered courier delivery service provider.
c. Logos and Symbols
A logo is a printed/painted figure/design/character and do not consist of any letters/words/numerals. For word marks that are also used as a logo, the trademark needs to be registered both as a word mark and a device mark. In India, the registration for both these aspects can be made in a single application. For example - Apple has a registered logo which is used on each of their products.
d. Shape of Goods
The shape of goods is categorized in Trade Dress (appearance of a product) wherein, other than a logo or label a product can also be distinguished based on its packaging. For example - The bottle of Coca-Cola is distinguished from other brands on the basis of its bottle's shape.
e. Series Marks
Series marks are trademarks which have a common syllable, prefix or suffix, thus denoting as a family of marks sharing a 'common name.' They should differ only as to matters of non-distinctive characters (goods, price, quality or size). For example - McDonald's have a series of 'Mc' registered as word mark which represents their different product range such as Mc Chicken, Mc Veggie etc.
f. Collective Trademarks
These marks are linked with a group of people and not one single product or service. These trademarks are primarily owned by an organization, institutes or any association. They can be used by members of the organization to represent them as one the part. For Example - A chartered accountant can use the “CA" device as he is a registered member of the Institute of Chartered Accountants.
g. Certification Mark
The certification mark is created to show a specific quality standard that the company has met. This means that the public will be aware that the trader's goods or services are certified as it has met a particular standard, as defined by the certifying body that owns the certification mark. Certification marks are used to define "Standard" of goods and services. For Example - FSSAI - Certification for the quality of packaged food products.
h. Geographical Indicators
A geographical indication is used on products to show the unique nature, reputation and quality the products possess based on the place of origin. The Geographical Indicators are awarded by the GI Registry and is granted to natural, agricultural, manufactured and handicraft products that come from a specific geographical origin. For Example -Assam Tea is a GI under the Intellectual Property Rights.
PATENTS-
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
There are three different categories that patents can fall under:
a) Utility:
A utility patent protects the creation of a new or improved product, process, composition of matter, or machine that is useful.
b) Design:
A design patent protects the ornamental design on a useful item.
c) Plant:
A plant patent protects new kinds of plants produced by cuttings or other nonsexual means.
For example,
- Pen with scanner
With a machine as small as a pen, you can transfer text from paper directly into a computer. Christer Fåhraeus invented the C-pen.
- Steel kidneys
After receiving a grant from the state in 1946, Nils Alwall, a doctor in Lund, began developing a dialysis machine for people suffering from kidney disease. Just over twenty years later, his inventions started to be mass produced.
PATENTS AND DESIGNS-
A design patent is a form of legal protection of the unique visual qualities of a manufactured item. A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation or both. In other words, a design patent provides protection for the ornamental design of something that has a practical utility.
In the United States, that means an item that is substantially similar to something that has the protection of a design patent may not be made, copied, used or imported into the country. In other countries, a registered design may act as an alternative to a design patent. In certain European countries, patent protection for designs may be obtained for a fee and by meeting basic registration requirements.
How a Design Patent Works
An item or object that is protected by a design patent carries broad protection from copyright infringement. A design that was not intended to be a copy and which was devised independently from an existing, design patent-protected item may still infringe upon that design patent.
In some countries, such as the U.S., Canada, China, Japan, and South Africa, applications for design patents are kept secret until they are granted. In Japan, secrecy can be extended to three years after registration is granted. The first U.S. Design patent was awarded in 1842 for printing typefaces and border (fonts).
Design Patent Examples
Some examples of design patents include ornamental designs on jewellery, automobiles or furniture, as well as packaging, fonts and computer icons (such as emojis). Some famous design patent objects include the original curvy Coca-Cola bottle (1915) and the Statue of Liberty (1879).
When a company’s product design has substantial cachet, a design patent solidifies its competitive advantage by penalizing other firms that try to develop similar-looking items. For example, Apple has been awarded damages reportedly totalling more than $900 million from Samsung, which violated its iPhone design patents.
SECRETS-
Trade secrets are the secrets of a business. They are proprietary systems, formulas, strategies, or other information that is confidential and is not meant for unauthorized commercial use by others. This is a critical form of protection that can help businesses to gain a competitive advantage. Although intellectual property rights protection may seem to provide a minimum amount of protection, when they are utilized wisely, they can maximize the benefit and value of a creation and enable world-changing technology to be developed, protected, and monetized. For example, Coca Cola Formula, KFC Secret Spice –Mix, McDonald’s Big Mac sauce, Google search algorithm etc.
Trade secrets in India are generally governed by Article 39 of the TRIPS Agreement which lays down 3 essential conditions.
Figure: Essential of trade secret
a. Secret
The information must be secret which is not generally known amongst, or readily accessible to, circles that normally deal with the kind of information in question. For example, KFC Secret Spice –Mix.
b. Commercial Value
This information must have some commercial value attached to it. The KFC products have commercial value in the market.
c. Reasonable efforts by the rightful holder to keep its secrecy
The rightful holder of the trade secret should have taken reasonable efforts to keep it secret.
Pre-Independence Copyright law in India
The Copyright Law of India was enacted by the British colony and like most of the acts of that time; it was an imitation of the English law.
The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission. All suits and infringement related to copyright came under the jurisdiction of the highest local civil court. The act was replaced by the copyright act of 1914.
The act of 1914 was the first 'modern' copyright law of India. It was the first law to include all works of art and literature under the ambit of copyright. It was a replica of the English law of 1911. It was done by the British to ease the passage of literature over colonial subcontinent.
Post-Independence Copyright law in India
The Copyright Act of 1957 came into force on the 21st of January, 1958 replacing the 1911 act. The act besides amending the copyright law also introduced milestone changes such as provisions for setting up copyright office under the control of Registrar of copyright for registration of books and other works of art. It also established a copyright board to deal with the disputes relating to copyright.
Meaning of copyright –
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
According to section 14 of the copyright Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely: —
(a) in the case of a literary, dramatic or musical work, not being a computer programme, —
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public; (iv) to make any cinematograph film or sound recording in respect of the work;
(iv) to make any translation of the work;
(v) to make any adaptation of the work;
(vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme, —
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.
(c) in the case of an artistic work, —
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or
(C) depiction in two-dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film, —
(i) to make a copy of the film, including—
(A) a photograph of any image forming part thereof; or
(B) storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;
(iii) to communicate the film to the public;
(e) in the case of a sound recording, —
(i) to make any other sound recording embodying it including storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;
(iii) to communicate the sound recording to the public
Computer programs
Section 2 (ffc) “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;
Ownership of copyrights and assignment
The provisions related to ownership of copyright and assignments are discussed below-
First owner of copyright (Section 17)
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(e) in the case of a work to which the provisions of section 41 apply, the international organization concerned shall be the first owner of the copyright therein.
Assignment of copyright (Section 18)
(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.
Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work:
Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilization of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void:
Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilization of such work except to the legal heirs of the authors or to a collecting society for collection and distribution and any assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
Mode of assignment (section 19)
(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.
(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.
(3) The assignment of copyright in any work shall also specify the amount of 4 [royalty and any other consideration payable], to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.
(4) Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.
(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.
(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.
(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994 (38 of 1994).
(8) The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member shall be void.
(9) No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilisation of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form.
Criteria of infringement
The criteria related to infringement are discussed below-
When copyright infringed (Section 52)
Copyright in a work shall be deemed to be infringed—
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act—
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or
(b) when any person—
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.
Certain acts not to be infringement of copyright (Section 52)
(1) The following acts shall not constitute an infringement of copyright, namely, —
(a) a fair dealing with any work, not being a computer programme, for the purposes of—
(i) private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;
(c)transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:
Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a
Period of twenty-one days or till he receives an order from the competent court refraining from facilitation access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;
(d) the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;
(e) the reproduction or publication of any work prepared by the Secretariat of a Legislature or, where the legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;
(f) the reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force;
(g) the reading or recitation in public of reasonable extracts from a published literacy or dramatic work;
(h) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for instructional use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for such use in which copyright subsists:
Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.
(j) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording;
(k) the causing of a recording to be heard in public by utilising it, —
(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;
(n) the storing of a work in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a 2 [non-commercial public library for the use of the library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access:
Provided that where the identity of the author of any such work or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than [sixty years] from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identity is known or, if the identity of more authors than one is known from the death of such of those authors who dies last;
(q) the reproduction or publication of—
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government;
(iv) any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority, as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder—
(v) if no translation of such Act or rules or orders in that language has been previously been produced or published by the Government; or
(vi) where a translation of such Act or rules or orders in that language has been produced or published by the Government, if the translation is not available for sale to the public: Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government.
Internet piracy is the act of downloading a file from the internet, or by procuring an online software through a compact disc. Methods of conducting internet piracy are websites offering free downloads of software, auctions selling illegally obtained software or P2P servers which transfer programs.
Internet piracy has become a huge copyright issue, in the past few years. The unhindered growth of technology along with the increase in cybercrimes has made internet piracy issues quite common in today’s day and age. Here are a few reasons why internet piracy is becoming such a huge problem-
- Easy and wide distribution using the internet
- No limits as to the number of people that a material can be distributed to
- Difficult to distinguish between the original and the fake copies
- Hardly any cost associated with the illegal distributing
- Easy to access copyrighted material without the threat of being raced down.
In India, the Copyright Act 1957 along with the Information Technology Act, 2000 deal with the several facets of piracy. However, of late, there has been an increasing need for more pieces of legislation that can help us conclusively deal with the problem of internet piracy. With more and more technological advancements, the need for enforcement of strong copyright laws to deal with complex internet piracy cases has become essential.
The main legislation for the protection of art from copyright issues is the Copyright act of 1957. The copyright act was amended in 2012 to bring under its umbrella the various forms of online piracy that takes place. Section 65 A of the new copyright (amendment) act, 2012 protects the owners of copyrighted materials in case of a breach. Section 65 A states that “any person who circumvents an effective technological measure applied to protect any of the rights conferred by this Act, to infringe such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” Such punishment is bound to deter several cybercriminals from using or misusing the copyrighted data. This section is meant for “protection of technological measures” and is key to curb digital piracy.
Section 65 B of the Copyright (Amendment) Act, 2012 provides “Protection of Rights Management Information”. The section states that “any person, who knowingly- (1) removes or alters any rights management information without authority, or (2) distributes, imports for distribution broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” This is essential to protect unauthorized access and misuse of sensitive information.
Another piece of legislation that deals with digital piracy is the Information Technology Act, 2000. Section 66 of the Information Technology Act provides for punishment with up to 3 years of imprisonment and fines up to Rs 2 lakhs for illegal online distribution of copyrighted content.
A rather new measure that the Indian courts have taken to reduce the cases of digital piracy in India is the “john doe” order”. John Doe orders require very little information about the accused and his identity is unknown at the time of filing of the petition. All the above-mentioned pieces of legislation along with these new John Doe orders help block potential threats before the release of new movies and govern the entire digital piracy scenario in India. However, several different aspects of digital piracy are still not dealt with, by Indian legislation. There are several issues and challenges regarding online piracy in India that still need a lot of work.
Key takeaways
- The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission.
Historical perspective
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
An invention relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
Meaning
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
Law relating to Patents under Patents Act, 1970
What are not inventions (Section 3)
The following are not inventions within the meaning of this Act, —
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or 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 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.
(e) 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;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) Omitted by the Patents (Amendment) Act, 2002
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Inventions relating to atomic energy not patentable (Section 4)
No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
Persons entitled to apply for patents (Section 6)
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say, —
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Information and undertaking regarding foreign applications (Section 8)
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
Provisional and complete specifications (Section 9)
(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of 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 to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.
(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a 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.
Contents of specifications (Section 10)
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method
By which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely: —
(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.
(4A) In case of an international application designating' India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
Secrecy directions relating to inventions relevant for defence purposes (section 35)
(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
(2) Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.
(3) Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply as if the invention where one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.
Grant of patents (Section 43)
(1) Where an application for a patent has been found to be in order for grant of the patent and either—
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.
Amendment of patent granted to deceased applicant (Section 44)
Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Date of patent (Section 45)
(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of publication of the application.
Form, extent and effect of patent (Section 46)
(1) Every patent shall be in the prescribed form and shall have effect throughout India.
(2) A patent shall be granted for one invention only:
Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.
Grant of patents to be subject to certain conditions (Section 47)
The grant of a patent under this Act shall be subject to the condition that—
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
Rights of patentees (Section 48)
Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent
Third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India (Section 49)
(1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—
(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or
(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,
As the case may be.
(2) This section shall not extend to vessels, aircrafts or land vehicles owned by persons ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or within the territorial waters of that foreign country or otherwise within the jurisdiction of its courts.
Rights of co-owners of patents (Section 50)
(1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
(2) Subject to the provisions contained in this section and in section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to rights conferred by section 48 for his own benefit without accounting to the other person or persons.
(3) Subject to the provisions contained in this section and in section 51 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under the patent shall not be granted and share in the patent shall not be assigned by one of such persons except with the consent of the other person or persons.
(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of a patent, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.
(5) Subject to the provisions contained in this section, the rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.
(6) Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created before the commencement of this Act.
Power of Controller to give directions to co-owners (Section 51)
(1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent, or the exercise of any right under section 50 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3) Before giving any directions in pursuance of an application under this section, the Controller shall give an opportunity to be heard—
(a) in the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;
(b) in the case of an application under sub-section (2), to the person in default.
(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.
Term of patent (Section 53)
(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.
(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
(3) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Term of patents of addition (Section 55)
(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1) the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
Validity of patents of addition (Section 56)
(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(2) For the removal of doubts, it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.
Applications for restorations of lapsed patents (Section 60)
(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within such period as may be allowed under sub-section (4) of section 142, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
(2) [Omitted by the Patents (Amendment) Act, 2002]
(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.
Procedure for disposal of applications for restoration of lapsed patents (Section 61)
(1) If, after hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(4) The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to be entered in the register but which has not been so entered.
Surrender of patents (Section 63)
(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall publish the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after such publication, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
Revocation of patents (Section 64)
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the
Priority date of the claim or to what was published in India or elsewhere in any of the, documents referred to in section 13:
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person.
Register of patents and particulars to be entered therein (Section 67)
(1) There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments, extension, and revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and directions of the Central Government, the register shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy of, or extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other electronic form, —
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed to include references to the keeping of record of those particulars comprising the register or part of the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references to the rectification of the record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register.
Registration of assignments, transmissions, etc. (Section 69)
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof to title of his satisfaction, —
(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence thereunder authenticated in the prescribed
Manner and also such other documents as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so, requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.
Under the Patent Act 1970, every invention must pass a two-step test in order to be patentable – namely, it must:
- Not fall in any of the categories specifically excluded under Section 3 of the Patent Act; and
- Pass the well-known three-pronged test of novelty, inventive step and industrial applicability.
The following are the excluded biotechnology-related inventions.
- Section 3(b) – inventions contrary to public morality
Inventions for which the primary or intended use or commercial exploitation is contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are not patentable. Examples include genetic modification of animals which results in suffering of the modified animal without any substantial medical or other benefit, and inventions causing adverse environmental impact.
2. Section 3(c) – discoveries, things isolated from nature, plants and animals
Discoveries of living things or non-living substances occurring in nature are not patentable subject matter. Thus, micro-organisms isolated from nature and DNA, RNA or proteins isolated from living organisms are not patentable. Although naturally occurring micro-organisms are not patentable, genetically modified micro-organisms and vaccines are patentable, subject to other requirements. Synergistic compositions of new or known micro-organisms can also be patentable, as can processes for isolating such substances. To remove any ambiguity, the act was amended in 2002 to include “biochemical, biotechnological and microbiological processes” within the definition of potentially patentable chemical processes. Plants and animals or their parts – including seeds, varieties and species – are not patentable. Further, essentially biological processes for the production of plants or animals (e.g. Conventional methods of plant breeding and tissue culture techniques) are also not patentable.
3. Section 3(d) – new forms or uses of known substance
A new form of a known substance is not patentable unless it differs significantly in properties with regard to the known efficacy. This provision essentially prevents the ever greening of patents through trivial modifications or incremental innovations. However, its interpretation has been the source of polarising debate among legal professionals, academics, non-governmental organisations and pharmaceutical companies.
4. Section 3(e) – mere admixture
The mere admixture of two or more previously known substances is not patentable, unless it is shown that the combinative effect of such substances is more than the sum of their individual effects. In other words, such a combination should result in a synergistic effect. The synergism must be properly demonstrated in the complete specification by providing appropriate experimental data.
5. Section 3(i) – methods of treatment and diagnosis
The act does not prevent patenting of pharmaceuticals and medical devices. Thus, medicinal compounds, drugs, formulations, stents, surgical sutures and staplers are patentable. However, Section 3(i) precludes from patentability:
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings; or
- Any treatment of animals which renders them free of disease or increases their economic value (or that of their products).
In India the 1970 patent Act exclude mathematical or business or a computer program per se or algorithms from patentability. In the last 10 years of India's experiments with TRIPS compliance in the domain of patents, put a major test in section.3. In 2004 a major amendment was introduced in section 3 through Patent Amendment Ordinance with respect to the patentability of computer programs. By the new clause sec.3 (k), a computer program per se other than its technical application to industry or a combination with hardware; a mathematical method or business method or algorithms.
Unlike the copyright law which merely protects the expression of an idea, patent law protects the concepts of the invention. Currently some countries protect computer software like any other invention as long as it is a proper subject for patent protection i.e., if it is a new and useful process involving an inventive step and capable of industrial application. The subjects which are excluded from patent protection are laws of nature, natural phenomena, abstract ideas and mathematical expressions of scientific truths. Mathematical and scientific expressions are denied patent protection because technology is suppressed against the desires of the authors of the constitution, if such patents are granted.
Comparing to the protection given under patent law, the protection given by copyright and trade secrets has limited scope. The owner of the copyright over an item of software has the right to prevent any other person from copying the code as it is written but does not have the right to prevent the utilization of the idea behind the code, providing that the person utilizing the idea must use it in a manner that is different from the arrangement of the code. The copyright law is also limited to prohibit unauthorized copying of the protected work but it does not prohibit all forms of copying. The expression of a method of operation and principles of a computer program cannot be protected by copyright. Functional aspects of a computer program are excluded from copying. A patent provides more secure protection than the copyright and the trade secret. It protects the 'idea' or 'functionality' of the software. Copying of an idea is very easy to do and anybody can describe it simply, that is might a patent is restricting from doing.
If a computer software is merely an algorithm it should not be protected under patents. The term of algorithm is not defined in the patent act. If the invention is technical in nature it will entitled to get protection under patents. The mathematical algorithms which per se are not regarded as patentable subject matter universally, they are merely considered as abstract ideas or mental steps.
Advantages of patent protection
Patenting software has three specific advantages over both copyright and trade secret protection.
- If a patent holder files a patent infringement claim he cannot be faced with the defence of independent creation.
- The patent grants the creator a monopoly right to license his product and since disclosure of the invention is a requirement of patentability, the inventor need not concern himself with the secrecy problems facing copyright and trade secret holders.
- The patent holder receives a 20-year monopoly over the invention, during which time others are prohibited from making using or selling the invention.
There has not been any international convention which granting patent to computer software. The Paris convention, 1883, on the protection of industrial property, leaves it to member countries to specify the protectable subject matter for patents.
The World Intellectual Property Organization (WIPO) 1978 provided that for granting patent protection for computer software it must fulfil the criteria of new and inventive technical solutions. However, in most of the countries, the question of patentability cannot be answered with any degree of certainty.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) describes patentable subject matter under article 27.1, subjects to certain exceptions or conditions under the agreement "patent shall be available for inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application". TRIPS prohibit any field specific exclusion of patents.
Form of application (section 7)
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.
Examination of application (Section 12)
(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely: —
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.
Opposition of patent
Patent opposition, if used appropriately, can act as an important tool to prevent the grant of frivolous patents.
Types of patent opposition proceeding
- Pre-grant opposition proceedings – grounds and procedure
According to Section 25(1) of the Patents Act, 1970, any person may, in writing, oppose the grant of a patent following publication of the patent application but before the grant of the patent based on the grounds stated in Sections 25(1)(a) to (k). The representation for opposition is filed in Form-7(A) along with a statement and evidence in support of the opposition. The opponent may also request a hearing if desired. The legislature has intentionally retained a six-month window before the grant of a patent from the date of publication of the application, providing third parties an opportunity to oppose the grant of a patent. However, the representation can be filed only if a request for examination of the patent application has already been filed. After consideration of the representation, if the controller decides that there is merit in the representation, he or she will give notice of the opposition to the applicant. After receiving notice, the applicant files a reply to the representation along with evidence, if any is available, within three months of receipt of the notice.
A pre-grant opposition can be filed only on the following grounds:
- Wrongful obtainment of the invention (Section 25(1)(a) of the Patents Act);
- Anticipation by prior publication (anywhere in the world) (Section 25(1)(b));
- Anticipation by prior claiming in India (Section 25(1)(c));
- Public knowledge or public use in India before the priority date (Section 25(1)(d));
- Obviousness and lack of inventive step in the invention (Section 25(1)(e));
- Being an excluded subject matter (such as those inter alia provided in Section 3) (Section 25(1)(f));
- Insufficiency of disclosure of the complete specification (Section 25(1)(g));
- Non-compliance of the requirement of Section 8 or furnishing materially false information (Section 25(1)(h));
- Non-filing of the application within 12 months of filing the first application in a convention country (Section 25(1)(i));
- Non-disclosure or wrongful mention of the source or geographical origin of biological material (Section 25(1)(j)); and
- Anticipation with regard to traditional knowledge of any community anywhere in the world (Section 25(1)(k)).
2. Post-grant opposition proceedings – grounds and procedure
According to Section 25(2) of the Patents Act, any person interested can file a post-grant opposition within 12 months of the date of publication of the grant of a patent on any of the grounds prescribed, by giving a notice of opposition to the controller. The grounds of post-grant opposition are identical to those for pre-grant opposition. After receipt of the notice, the controller informs the patentee of the opposition and orders an opposition board to examine the opposition and give the controller its recommendation.
Grant and sealing of patent (Section 43)
(1) Where, a complete specification in pursuance of an application for a patent has been accepted and either-
(a) the application has not been opposed under section 25 and the time for the filing of the opposition has expired; or
(b) the application has been opposed and the opposition has been finally decided in favour of the applicant; or
(c) the application has not been refused by the Controller by virtue of any power vested in him by this Act, the patent shall, on request made by the applicant in the prescribed form, be granted to the applicant or, in the case of a joint application, to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the register.
(2) Subject to the provisions of sub-section (1) and of the provisions of this Act with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of a period of six months from the date of advertisement of the acceptance of the complete specification:
(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pending before the Controller or the High Court, the request may be made within the prescribed period after the final determination of that proceeding;
(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.
(3) The period within which under sub-section (2) a request for the sealing of a patent may be made may, from time to time, be extended by the Controller to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period:
Provided that the first-mentioned period shall not be extended under this sub-section by more than three months in the aggregate.
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva. The Patent Cooperation Treaty (PCT) provides us with an overview of an international treaty which is duly administered by the World Intellectual Property Organization (WIPO). The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States. It is administered by the World Intellectual Property Organization. (WIPO). The PCT is an international treaty which provides a system for filing a patent application and allow us to obtain patents in multiple countries around the world on the basis of a single patent application. As PCT simplifies the procedure for obtaining Patent protection in many countries, making it more efficient and economical for: a) Users of the patent system i.e an applicant/(s) and inventors b) National Offices. The PCT simplifies the patent filing process for applicant and the ultimate decision to grant a patent vest exclusively with each national or regional Patent Office. A single PCT application has the same legal effect as a national Patent application in each of the PCT Contracting States. Without the PCT, we would have to file a separate patent application in each country separately and independently. PCT save applicant time, effort and expense of preparing separate applications in various languages and file it in different signatory’s states. Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month period as provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.
Basic Features of PCT System
- Formal examination done by one office.
- Retrieval is carried out by one office.
- International publication done by one office.
- Examination and authorization finished by national office.
- Single application with legal effect in all PCT countries.
- 148 countries and 4 regional patent systems.
Advantages
- A single application in single language filed in a single country called the international application.
- Provides a strong basis for patenting decisions to the users.
- Harmonizes formal requirements.
- Used by the world’s major corporations, universities and research institutions when they seek international patent protection.
- This single application has the effect of filing simultaneously in different countries (designated countries).
- Protects applicant from certain inadvertent errors.
- Evolves to meet user needs.
The rights of patentee are-
- Right to exploit the Patent
When the new invention is a product, the Patentee has the exclusive rights to use, make, import, or sell for these purposes related to an invention in India. On the other hand, when the invention of the inventor is a procedure or process of manufacturing of any article or substance, the right to exploit means the exclusive right exercise or use the procedure or method in the territory of India.
2. Right to Grant License
The Patentee of a Patent is given the right to grant license or transfer rights or enter into some arrangement for some consideration. The assignment or license to be valid and legitimate it is required to be in writing and should be registered with the Controller of Patent. Unless a document of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent, and such a rule is applicable to the assignee, not the assignor.
3. Right to Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a Patent at any time and at his/her own discretion. The advertisement for such an offer of surrender is required to be done in the Journal. The publication is done to give an opportunity to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee apprehends his/her non-performance of the Patent in the future and upon which he/she decides to surrender the Patent.
4. Right to sue for Infringement
The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction to try the suit.
5. Right to Use and Enjoy Patent
The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or the patented substance or article in India or to practice or utilize or the process or techniques associated with the invention. Such rights can be exercised either by the Patentee himself/herself or by his/her licensees or agents.
Obligations of patentee
- Duty to Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all required data related to the remote uses of comparative or same invention documented by him/her or through him/her or through someone by him/her at the time of applying or within 6 months of applying. The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the applications and, in addition to the above, an endeavour to disclose all the points of interest of any subsequent applications that might be documented at the future stages. Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data required by the Controller of Patent with regards to the relating of any remote applications at whatever point demand is made by the Controller of Patents within a time period of 6 months of such a demand by the Controller of Patent. The first part of the obligation of Patentee begins when a man records an application of Patent. On the other hand, the second part begins after a demand is made by the Controller of Patents under the Patents Act, 1970.
2. Duty to Request for Examination
Not like other Intellectual Property Rights, the Registration process of Registration of Patent does not accommodate any kind of programmed examination of the grant of Patent application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the growth or development connected for Patent.
3. Duty to Respond to Objections
The Controller of Patent before accepting the examination request passes it to the analyst who looks at the growth and gives a report to the Controller of Patent known as the First Examination Report (FER). On certain cases there may be some protests which will be brought up in the First Examination Report, it is the right of Patentee to reply to such opposition complaints and consent to the corresponding within a time period of a year of the issuance of the First Examination Report (FER) falling which the application of the Patentee will be considered to be surrendered by the Controller of Patent.
4. Duty to clear all Objections
It is the obligation of the owner of the Patent to respond to the raised objections as well as to clear and remove each one of the raised objections and, in addition, certain oppositions raised against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go for a consultation and clear all the objections and, in addition, oppositions, if are raised any, against the invention of the inventor.
5. Duty to Pay Statutory Fees
The Patentee has an obligation to pay all the statutory expenses required to get a grant of a Patent in the process of Registration without failure generally, his/her application for the grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions recognized with payment of charges and, in addition, the consequences for non-payment of such prescribed fees. After this process is imitated to and the Patentee of Patent clears every one of the restrictions and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a Patent to the invention and publishes it in the Journal, or generally, the Controller rejects such a Patent.
The term of every patent in India is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years begins from the international filing date. It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent can also be claimed.
Burden of proof in case of suits concerning infringement (Section 104 A)
(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, —
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
Power of court to grant relief in cases of groundless threats of infringement proceedings (Section 106)
(1) Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens any other person by circulars or advertisements or by communications, oral or in writing addressed to that or any other person, with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs, that is to say—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid the court may grant to the plaintiff all or any of the reliefs prayed for.
Reliefs in suit for infringement (Section 108)
(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.
(2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.
Key Takeaways
- The history of patent law in India starts from 1911 when the Indian patents and designs act, 1911 was enacted. The present patents act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to patents in India. The patents act, 1970 was again amended by the patents (amendment) act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to exclusive marketing rights (EMRS) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
References:
1. B.S. Patil, Legal Aspects of Building and Engineering Contracts, 1974.
2. The National Building Code, BIS, 2017
3. RERA Act, 2017
4. Meena Rao (2006), Fundamental concepts in Law of Contract, 3rd Edn. Professional Offset
5. Neelima Chandiramani (2000), The Law of Contract: An Outline, 2nd Edn. Avinash Publications Mumbai
6. Avtarsingh (2002), Law of Contract, Eastern Book Co.
7. Dutt (1994), Indian Contract Act, Eastern Law House
8. Anson W.R. (1979), Law of Contract, Oxford
Unit - 5
Law relating to Intellectual property
Intellectual property (IP) rights are legal and institutional devices to protect creations of the mind such as inventions, works of art and literature, and designs. Intellectual property right is the legally enforceable power to exclude others from using the information created or to set the terms on which it can be used. The objective of the agreement on TRIPS is to give adequate and effective protection to the intellectual property rights to reward creativity and inventiveness. TRIPS sets out minimum protection to be given to each category of intellectual property in the national laws of each WTO member. It lays down procedures and remedies to be provided by each country for intellectual rights enforcement. The agreement on TRIPS lays down minimum standards of protection that countries must provide for intellectual property rights. One of the other important features of the agreement is that it also requires countries to ensure effective enforcement of these rights. Its rules apply to:
- Copyright and related rights;
- Trademarks;
- Patents;
- Geographical indications;
- Industrial designs;
- Layout designs of integrated circuits; and
- Undisclosed information.
COPYRIGHT-
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
Such classification of copyright is discussed below-
Figure: Types of work eligible for copyright
- Literary Works
They are not limited to works of literature like plays, novels or poems and instead include all forms of written documents. Works like technical books, scripts, research work, computer programs or database, thesis also form a part of the literary work. For example – Madeline and the Wedding is a copyrighted script of the animated show Madeline Series.
b. Dramatic Works
They are similar to literary works but include a piece of recitation. Works like choreography, the arrangement of play, scenic arrangement come under Dramatic type of copyright works.
c. Artistic Works
Copyright protection covers works of art. These include paintings, sculptures, graphics, drawings, maps, charts, photographs, caricatures and cartoons. For example – Tom and Jerry are famous copyrighted cartoon characters.
d. Musical Works
They can be protected in two different ways. The lyrics of a song fall under literary work while the music tune (notation) can be protected under musical works. They need to be submitted in a written format.
e. Sound Recordings
Both non-musical and musical sound recording can be protected by copyright, regardless of the medium of storage. They include recorded speech, podcasts, interviews, soundtracks, speeches. All sorts of music created automatically falls under copyright protection.
f. Movies
A cinematographic work is a combination of both video films and sound recording. Any work recorded with moving visuals or images, with or without a sound recording is considered a cinematographic film. For example – Computer Games, Feature Films or Animation Movies.
TRADEMARKS-
Trademarks are another familiar type of intellectual property rights protection. A trademark is a distinctive sign which allows consumers to easily identify the particular goods or services that a company provides. Some examples include McDonald’s golden arch, the Facebook logo, and so on. A trademark can come in the form of text, a phrase, symbol, sound, smell, and/or colour scheme. Unlike patents, a trademark can protect a set or class of products or services, instead of just one product or process.
The Trademarks Act, 1999, allows the registration of various types of trademarks such as word marks, service marks, collective marks, certification marks, series marks logos/symbols and many other. Such types are-
Figure: Types of trade mark
a. Word Marks
Word Marks are the most common types of trademarks that are registered in India. These refer to any marks that are used to identify the products and services of a trading company or service-providing company. If the name of your product or service is text- based (contains text only) it will be registered under Word Marks. For Example - The word Nestle® is a registered as a Word-Mark.
b. Service Marks
Service Marks represent the service which a company or business deals in. They distinguish different services available in the market and is filed under trademark classes 35-45. For example - FedEx is a registered courier delivery service provider.
c. Logos and Symbols
A logo is a printed/painted figure/design/character and do not consist of any letters/words/numerals. For word marks that are also used as a logo, the trademark needs to be registered both as a word mark and a device mark. In India, the registration for both these aspects can be made in a single application. For example - Apple has a registered logo which is used on each of their products.
d. Shape of Goods
The shape of goods is categorized in Trade Dress (appearance of a product) wherein, other than a logo or label a product can also be distinguished based on its packaging. For example - The bottle of Coca-Cola is distinguished from other brands on the basis of its bottle's shape.
e. Series Marks
Series marks are trademarks which have a common syllable, prefix or suffix, thus denoting as a family of marks sharing a 'common name.' They should differ only as to matters of non-distinctive characters (goods, price, quality or size). For example - McDonald's have a series of 'Mc' registered as word mark which represents their different product range such as Mc Chicken, Mc Veggie etc.
f. Collective Trademarks
These marks are linked with a group of people and not one single product or service. These trademarks are primarily owned by an organization, institutes or any association. They can be used by members of the organization to represent them as one the part. For Example - A chartered accountant can use the “CA" device as he is a registered member of the Institute of Chartered Accountants.
g. Certification Mark
The certification mark is created to show a specific quality standard that the company has met. This means that the public will be aware that the trader's goods or services are certified as it has met a particular standard, as defined by the certifying body that owns the certification mark. Certification marks are used to define "Standard" of goods and services. For Example - FSSAI - Certification for the quality of packaged food products.
h. Geographical Indicators
A geographical indication is used on products to show the unique nature, reputation and quality the products possess based on the place of origin. The Geographical Indicators are awarded by the GI Registry and is granted to natural, agricultural, manufactured and handicraft products that come from a specific geographical origin. For Example -Assam Tea is a GI under the Intellectual Property Rights.
PATENTS-
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
There are three different categories that patents can fall under:
a) Utility:
A utility patent protects the creation of a new or improved product, process, composition of matter, or machine that is useful.
b) Design:
A design patent protects the ornamental design on a useful item.
c) Plant:
A plant patent protects new kinds of plants produced by cuttings or other nonsexual means.
For example,
- Pen with scanner
With a machine as small as a pen, you can transfer text from paper directly into a computer. Christer Fåhraeus invented the C-pen.
- Steel kidneys
After receiving a grant from the state in 1946, Nils Alwall, a doctor in Lund, began developing a dialysis machine for people suffering from kidney disease. Just over twenty years later, his inventions started to be mass produced.
PATENTS AND DESIGNS-
A design patent is a form of legal protection of the unique visual qualities of a manufactured item. A design patent may be granted if the product has a distinct configuration, distinct surface ornamentation or both. In other words, a design patent provides protection for the ornamental design of something that has a practical utility.
In the United States, that means an item that is substantially similar to something that has the protection of a design patent may not be made, copied, used or imported into the country. In other countries, a registered design may act as an alternative to a design patent. In certain European countries, patent protection for designs may be obtained for a fee and by meeting basic registration requirements.
How a Design Patent Works
An item or object that is protected by a design patent carries broad protection from copyright infringement. A design that was not intended to be a copy and which was devised independently from an existing, design patent-protected item may still infringe upon that design patent.
In some countries, such as the U.S., Canada, China, Japan, and South Africa, applications for design patents are kept secret until they are granted. In Japan, secrecy can be extended to three years after registration is granted. The first U.S. Design patent was awarded in 1842 for printing typefaces and border (fonts).
Design Patent Examples
Some examples of design patents include ornamental designs on jewellery, automobiles or furniture, as well as packaging, fonts and computer icons (such as emojis). Some famous design patent objects include the original curvy Coca-Cola bottle (1915) and the Statue of Liberty (1879).
When a company’s product design has substantial cachet, a design patent solidifies its competitive advantage by penalizing other firms that try to develop similar-looking items. For example, Apple has been awarded damages reportedly totalling more than $900 million from Samsung, which violated its iPhone design patents.
SECRETS-
Trade secrets are the secrets of a business. They are proprietary systems, formulas, strategies, or other information that is confidential and is not meant for unauthorized commercial use by others. This is a critical form of protection that can help businesses to gain a competitive advantage. Although intellectual property rights protection may seem to provide a minimum amount of protection, when they are utilized wisely, they can maximize the benefit and value of a creation and enable world-changing technology to be developed, protected, and monetized. For example, Coca Cola Formula, KFC Secret Spice –Mix, McDonald’s Big Mac sauce, Google search algorithm etc.
Trade secrets in India are generally governed by Article 39 of the TRIPS Agreement which lays down 3 essential conditions.
Figure: Essential of trade secret
a. Secret
The information must be secret which is not generally known amongst, or readily accessible to, circles that normally deal with the kind of information in question. For example, KFC Secret Spice –Mix.
b. Commercial Value
This information must have some commercial value attached to it. The KFC products have commercial value in the market.
c. Reasonable efforts by the rightful holder to keep its secrecy
The rightful holder of the trade secret should have taken reasonable efforts to keep it secret.
Pre-Independence Copyright law in India
The Copyright Law of India was enacted by the British colony and like most of the acts of that time; it was an imitation of the English law.
The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission. All suits and infringement related to copyright came under the jurisdiction of the highest local civil court. The act was replaced by the copyright act of 1914.
The act of 1914 was the first 'modern' copyright law of India. It was the first law to include all works of art and literature under the ambit of copyright. It was a replica of the English law of 1911. It was done by the British to ease the passage of literature over colonial subcontinent.
Post-Independence Copyright law in India
The Copyright Act of 1957 came into force on the 21st of January, 1958 replacing the 1911 act. The act besides amending the copyright law also introduced milestone changes such as provisions for setting up copyright office under the control of Registrar of copyright for registration of books and other works of art. It also established a copyright board to deal with the disputes relating to copyright.
Meaning of copyright –
Copyright does not protect ideas. Rather, it only covers “tangible” forms of creations and original work–for example, art, music, architectural drawings, or even software codes. The copyright owner has the exclusive right to sell, publish, and/or reproduce any literary, musical, dramatic, artistic, or architectural work created by the author.
According to section 14 of the copyright Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely: —
(a) in the case of a literary, dramatic or musical work, not being a computer programme, —
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public; (iv) to make any cinematograph film or sound recording in respect of the work;
(iv) to make any translation of the work;
(v) to make any adaptation of the work;
(vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme, —
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.
(c) in the case of an artistic work, —
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or
(C) depiction in two-dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film, —
(i) to make a copy of the film, including—
(A) a photograph of any image forming part thereof; or
(B) storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film;
(iii) to communicate the film to the public;
(e) in the case of a sound recording, —
(i) to make any other sound recording embodying it including storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;
(iii) to communicate the sound recording to the public
Computer programs
Section 2 (ffc) “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;
Ownership of copyrights and assignment
The provisions related to ownership of copyright and assignments are discussed below-
First owner of copyright (Section 17)
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(e) in the case of a work to which the provisions of section 41 apply, the international organization concerned shall be the first owner of the copyright therein.
Assignment of copyright (Section 18)
(1) The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof: Provided that in the case of the assignment of copyright in any future work, the assignment shall take effect only when the work comes into existence.
Provided further that no such assignment shall be applied to any medium or mode of exploitation of the work which did not exist or was not in commercial use at the time when the assignment was made, unless the assignment specifically referred to such medium or mode of exploitation of the work:
Provided also that the author of the literary or musical work included in a cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for the utilization of such work in any form other than for the communication to the public of the work along with the cinematograph film in a cinema hall, except to the legal heirs of the authors or to a copyright society for collection and distribution and any agreement to contrary shall be void:
Provided also that the author of the literary or musical work included in the sound recording but not forming part of any cinematograph film shall not assign or waive the right to receive royalties to be shared on an equal basis with the assignee of copyright for any utilization of such work except to the legal heirs of the authors or to a collecting society for collection and distribution and any assignment to the contrary shall be void.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
Mode of assignment (section 19)
(1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.
(2) The assignment of copyright in any work shall identify such work, and shall specify the rights assigned and the duration and territorial extent of such assignment.
(3) The assignment of copyright in any work shall also specify the amount of 4 [royalty and any other consideration payable], to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.
(4) Where the assignee does not exercise the rights assigned to him under any of the other sub-sections of this section within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.
(5) If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.
(6) If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within India.
(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5) or sub-section (6) shall be applicable to assignments made before the coming into force of the Copyright (Amendment) Act, 1994 (38 of 1994).
(8) The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member shall be void.
(9) No assignment of copyright in any work to make a cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilisation of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.
(10) No assignment of the copyright in any work to make a sound recording which does not form part of any cinematograph film shall affect the right of the author of the work to claim an equal share of royalties and consideration payable for any utilization of such work in any form.
Criteria of infringement
The criteria related to infringement are discussed below-
When copyright infringed (Section 52)
Copyright in a work shall be deemed to be infringed—
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act—
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or
(b) when any person—
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.
Certain acts not to be infringement of copyright (Section 52)
(1) The following acts shall not constitute an infringement of copyright, namely, —
(a) a fair dealing with any work, not being a computer programme, for the purposes of—
(i) private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;
(c)transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:
Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a
Period of twenty-one days or till he receives an order from the competent court refraining from facilitation access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;
(d) the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;
(e) the reproduction or publication of any work prepared by the Secretariat of a Legislature or, where the legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;
(f) the reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force;
(g) the reading or recitation in public of reasonable extracts from a published literacy or dramatic work;
(h) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for instructional use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for such use in which copyright subsists:
Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.
(j) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or a sound recording if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with the activities of the institution or the communication to such an audience of a cinematograph film or sound recording;
(k) the causing of a recording to be heard in public by utilising it, —
(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not being a hotel or similar commercial establishment) as part of the amenities provided exclusively or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;
(n) the storing of a work in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a 2 [non-commercial public library for the use of the library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an unpublished literary, dramatic or musical work kept in a library, museum or other institution to which the public has access:
Provided that where the identity of the author of any such work or, in the case of a work of joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be, the provisions of this clause shall apply only if such reproduction is made at a time more than [sixty years] from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author whose identity is known or, if the identity of more authors than one is known from the death of such of those authors who dies last;
(q) the reproduction or publication of—
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the Government if such report has been laid on the Table of the Legislature, unless the reproduction or publication of such report is prohibited by the Government;
(iv) any judgment or order of a court, tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority, as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any rules or orders made thereunder—
(v) if no translation of such Act or rules or orders in that language has been previously been produced or published by the Government; or
(vi) where a translation of such Act or rules or orders in that language has been produced or published by the Government, if the translation is not available for sale to the public: Provided that such translation contains a statement at a prominent place to the effect that the translation has not been authorised or accepted as authentic by the Government.
Internet piracy is the act of downloading a file from the internet, or by procuring an online software through a compact disc. Methods of conducting internet piracy are websites offering free downloads of software, auctions selling illegally obtained software or P2P servers which transfer programs.
Internet piracy has become a huge copyright issue, in the past few years. The unhindered growth of technology along with the increase in cybercrimes has made internet piracy issues quite common in today’s day and age. Here are a few reasons why internet piracy is becoming such a huge problem-
- Easy and wide distribution using the internet
- No limits as to the number of people that a material can be distributed to
- Difficult to distinguish between the original and the fake copies
- Hardly any cost associated with the illegal distributing
- Easy to access copyrighted material without the threat of being raced down.
In India, the Copyright Act 1957 along with the Information Technology Act, 2000 deal with the several facets of piracy. However, of late, there has been an increasing need for more pieces of legislation that can help us conclusively deal with the problem of internet piracy. With more and more technological advancements, the need for enforcement of strong copyright laws to deal with complex internet piracy cases has become essential.
The main legislation for the protection of art from copyright issues is the Copyright act of 1957. The copyright act was amended in 2012 to bring under its umbrella the various forms of online piracy that takes place. Section 65 A of the new copyright (amendment) act, 2012 protects the owners of copyrighted materials in case of a breach. Section 65 A states that “any person who circumvents an effective technological measure applied to protect any of the rights conferred by this Act, to infringe such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” Such punishment is bound to deter several cybercriminals from using or misusing the copyrighted data. This section is meant for “protection of technological measures” and is key to curb digital piracy.
Section 65 B of the Copyright (Amendment) Act, 2012 provides “Protection of Rights Management Information”. The section states that “any person, who knowingly- (1) removes or alters any rights management information without authority, or (2) distributes, imports for distribution broadcasts or communicates to the public, without authority, copies of any work, or performance knowing that electronic rights management information has been removed or altered without authority shall be punishable with imprisonment which may extend to two years and shall also be liable to fine.” This is essential to protect unauthorized access and misuse of sensitive information.
Another piece of legislation that deals with digital piracy is the Information Technology Act, 2000. Section 66 of the Information Technology Act provides for punishment with up to 3 years of imprisonment and fines up to Rs 2 lakhs for illegal online distribution of copyrighted content.
A rather new measure that the Indian courts have taken to reduce the cases of digital piracy in India is the “john doe” order”. John Doe orders require very little information about the accused and his identity is unknown at the time of filing of the petition. All the above-mentioned pieces of legislation along with these new John Doe orders help block potential threats before the release of new movies and govern the entire digital piracy scenario in India. However, several different aspects of digital piracy are still not dealt with, by Indian legislation. There are several issues and challenges regarding online piracy in India that still need a lot of work.
Key takeaways
- The first copyright act of India was enacted in 1847, during the regime of East India Company. As per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years. The government had the power to grant the publishing license after the death of the author if the owner of the copyright refused permission.
Historical perspective
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
An invention relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
Meaning
A patent is used to prevent an invention from being created, sold, or used by another party without permission. Patents are the most common type of intellectual property rights that come to people’s minds when they think of intellectual property rights protection. A Patent Owner has every right to commercialize his/her/its patent, including buying and selling the patent or granting a license to the invention to any third party under mutually agreed terms.
Law relating to Patents under Patents Act, 1970
What are not inventions (Section 3)
The following are not inventions within the meaning of this Act, —
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or 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 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.
(e) 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;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) Omitted by the Patents (Amendment) Act, 2002
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Inventions relating to atomic energy not patentable (Section 4)
No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
Persons entitled to apply for patents (Section 6)
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say, —
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Information and undertaking regarding foreign applications (Section 8)
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.
Provisional and complete specifications (Section 9)
(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of 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 to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.
(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a 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.
Contents of specifications (Section 10)
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method
By which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely: —
(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.
(4A) In case of an international application designating' India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
Secrecy directions relating to inventions relevant for defence purposes (section 35)
(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
(2) Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.
(3) Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply as if the invention where one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.
Grant of patents (Section 43)
(1) Where an application for a patent has been found to be in order for grant of the patent and either—
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.
Amendment of patent granted to deceased applicant (Section 44)
Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Date of patent (Section 45)
(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of publication of the application.
Form, extent and effect of patent (Section 46)
(1) Every patent shall be in the prescribed form and shall have effect throughout India.
(2) A patent shall be granted for one invention only:
Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.
Grant of patents to be subject to certain conditions (Section 47)
The grant of a patent under this Act shall be subject to the condition that—
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
Rights of patentees (Section 48)
Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent
Third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India (Section 49)
(1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily resident in such country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—
(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or
(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,
As the case may be.
(2) This section shall not extend to vessels, aircrafts or land vehicles owned by persons ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in the ports or within the territorial waters of that foreign country or otherwise within the jurisdiction of its courts.
Rights of co-owners of patents (Section 50)
(1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
(2) Subject to the provisions contained in this section and in section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to rights conferred by section 48 for his own benefit without accounting to the other person or persons.
(3) Subject to the provisions contained in this section and in section 51 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under the patent shall not be granted and share in the patent shall not be assigned by one of such persons except with the consent of the other person or persons.
(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of a patent, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.
(5) Subject to the provisions contained in this section, the rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.
(6) Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created before the commencement of this Act.
Power of Controller to give directions to co-owners (Section 51)
(1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent, or the exercise of any right under section 50 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3) Before giving any directions in pursuance of an application under this section, the Controller shall give an opportunity to be heard—
(a) in the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;
(b) in the case of an application under sub-section (2), to the person in default.
(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.
Term of patent (Section 53)
(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.
(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
(3) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Term of patents of addition (Section 55)
(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1) the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
Validity of patents of addition (Section 56)
(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(2) For the removal of doubts, it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.
Applications for restorations of lapsed patents (Section 60)
(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within such period as may be allowed under sub-section (4) of section 142, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
(2) [Omitted by the Patents (Amendment) Act, 2002]
(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.
Procedure for disposal of applications for restoration of lapsed patents (Section 61)
(1) If, after hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(4) The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to be entered in the register but which has not been so entered.
Surrender of patents (Section 63)
(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall publish the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after such publication, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
Revocation of patents (Section 64)
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the
Priority date of the claim or to what was published in India or elsewhere in any of the, documents referred to in section 13:
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person.
Register of patents and particulars to be entered therein (Section 67)
(1) There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments, extension, and revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and directions of the Central Government, the register shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy of, or extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other electronic form, —
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed to include references to the keeping of record of those particulars comprising the register or part of the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references to the rectification of the record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register.
Registration of assignments, transmissions, etc. (Section 69)
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof to title of his satisfaction, —
(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence thereunder authenticated in the prescribed
Manner and also such other documents as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so, requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.
Under the Patent Act 1970, every invention must pass a two-step test in order to be patentable – namely, it must:
- Not fall in any of the categories specifically excluded under Section 3 of the Patent Act; and
- Pass the well-known three-pronged test of novelty, inventive step and industrial applicability.
The following are the excluded biotechnology-related inventions.
- Section 3(b) – inventions contrary to public morality
Inventions for which the primary or intended use or commercial exploitation is contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are not patentable. Examples include genetic modification of animals which results in suffering of the modified animal without any substantial medical or other benefit, and inventions causing adverse environmental impact.
2. Section 3(c) – discoveries, things isolated from nature, plants and animals
Discoveries of living things or non-living substances occurring in nature are not patentable subject matter. Thus, micro-organisms isolated from nature and DNA, RNA or proteins isolated from living organisms are not patentable. Although naturally occurring micro-organisms are not patentable, genetically modified micro-organisms and vaccines are patentable, subject to other requirements. Synergistic compositions of new or known micro-organisms can also be patentable, as can processes for isolating such substances. To remove any ambiguity, the act was amended in 2002 to include “biochemical, biotechnological and microbiological processes” within the definition of potentially patentable chemical processes. Plants and animals or their parts – including seeds, varieties and species – are not patentable. Further, essentially biological processes for the production of plants or animals (e.g. Conventional methods of plant breeding and tissue culture techniques) are also not patentable.
3. Section 3(d) – new forms or uses of known substance
A new form of a known substance is not patentable unless it differs significantly in properties with regard to the known efficacy. This provision essentially prevents the ever greening of patents through trivial modifications or incremental innovations. However, its interpretation has been the source of polarising debate among legal professionals, academics, non-governmental organisations and pharmaceutical companies.
4. Section 3(e) – mere admixture
The mere admixture of two or more previously known substances is not patentable, unless it is shown that the combinative effect of such substances is more than the sum of their individual effects. In other words, such a combination should result in a synergistic effect. The synergism must be properly demonstrated in the complete specification by providing appropriate experimental data.
5. Section 3(i) – methods of treatment and diagnosis
The act does not prevent patenting of pharmaceuticals and medical devices. Thus, medicinal compounds, drugs, formulations, stents, surgical sutures and staplers are patentable. However, Section 3(i) precludes from patentability:
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings; or
- Any treatment of animals which renders them free of disease or increases their economic value (or that of their products).
In India the 1970 patent Act exclude mathematical or business or a computer program per se or algorithms from patentability. In the last 10 years of India's experiments with TRIPS compliance in the domain of patents, put a major test in section.3. In 2004 a major amendment was introduced in section 3 through Patent Amendment Ordinance with respect to the patentability of computer programs. By the new clause sec.3 (k), a computer program per se other than its technical application to industry or a combination with hardware; a mathematical method or business method or algorithms.
Unlike the copyright law which merely protects the expression of an idea, patent law protects the concepts of the invention. Currently some countries protect computer software like any other invention as long as it is a proper subject for patent protection i.e., if it is a new and useful process involving an inventive step and capable of industrial application. The subjects which are excluded from patent protection are laws of nature, natural phenomena, abstract ideas and mathematical expressions of scientific truths. Mathematical and scientific expressions are denied patent protection because technology is suppressed against the desires of the authors of the constitution, if such patents are granted.
Comparing to the protection given under patent law, the protection given by copyright and trade secrets has limited scope. The owner of the copyright over an item of software has the right to prevent any other person from copying the code as it is written but does not have the right to prevent the utilization of the idea behind the code, providing that the person utilizing the idea must use it in a manner that is different from the arrangement of the code. The copyright law is also limited to prohibit unauthorized copying of the protected work but it does not prohibit all forms of copying. The expression of a method of operation and principles of a computer program cannot be protected by copyright. Functional aspects of a computer program are excluded from copying. A patent provides more secure protection than the copyright and the trade secret. It protects the 'idea' or 'functionality' of the software. Copying of an idea is very easy to do and anybody can describe it simply, that is might a patent is restricting from doing.
If a computer software is merely an algorithm it should not be protected under patents. The term of algorithm is not defined in the patent act. If the invention is technical in nature it will entitled to get protection under patents. The mathematical algorithms which per se are not regarded as patentable subject matter universally, they are merely considered as abstract ideas or mental steps.
Advantages of patent protection
Patenting software has three specific advantages over both copyright and trade secret protection.
- If a patent holder files a patent infringement claim he cannot be faced with the defence of independent creation.
- The patent grants the creator a monopoly right to license his product and since disclosure of the invention is a requirement of patentability, the inventor need not concern himself with the secrecy problems facing copyright and trade secret holders.
- The patent holder receives a 20-year monopoly over the invention, during which time others are prohibited from making using or selling the invention.
There has not been any international convention which granting patent to computer software. The Paris convention, 1883, on the protection of industrial property, leaves it to member countries to specify the protectable subject matter for patents.
The World Intellectual Property Organization (WIPO) 1978 provided that for granting patent protection for computer software it must fulfil the criteria of new and inventive technical solutions. However, in most of the countries, the question of patentability cannot be answered with any degree of certainty.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) describes patentable subject matter under article 27.1, subjects to certain exceptions or conditions under the agreement "patent shall be available for inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application". TRIPS prohibit any field specific exclusion of patents.
Form of application (section 7)
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.
Examination of application (Section 12)
(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub- section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely: —
(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.
(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.
Opposition of patent
Patent opposition, if used appropriately, can act as an important tool to prevent the grant of frivolous patents.
Types of patent opposition proceeding
- Pre-grant opposition proceedings – grounds and procedure
According to Section 25(1) of the Patents Act, 1970, any person may, in writing, oppose the grant of a patent following publication of the patent application but before the grant of the patent based on the grounds stated in Sections 25(1)(a) to (k). The representation for opposition is filed in Form-7(A) along with a statement and evidence in support of the opposition. The opponent may also request a hearing if desired. The legislature has intentionally retained a six-month window before the grant of a patent from the date of publication of the application, providing third parties an opportunity to oppose the grant of a patent. However, the representation can be filed only if a request for examination of the patent application has already been filed. After consideration of the representation, if the controller decides that there is merit in the representation, he or she will give notice of the opposition to the applicant. After receiving notice, the applicant files a reply to the representation along with evidence, if any is available, within three months of receipt of the notice.
A pre-grant opposition can be filed only on the following grounds:
- Wrongful obtainment of the invention (Section 25(1)(a) of the Patents Act);
- Anticipation by prior publication (anywhere in the world) (Section 25(1)(b));
- Anticipation by prior claiming in India (Section 25(1)(c));
- Public knowledge or public use in India before the priority date (Section 25(1)(d));
- Obviousness and lack of inventive step in the invention (Section 25(1)(e));
- Being an excluded subject matter (such as those inter alia provided in Section 3) (Section 25(1)(f));
- Insufficiency of disclosure of the complete specification (Section 25(1)(g));
- Non-compliance of the requirement of Section 8 or furnishing materially false information (Section 25(1)(h));
- Non-filing of the application within 12 months of filing the first application in a convention country (Section 25(1)(i));
- Non-disclosure or wrongful mention of the source or geographical origin of biological material (Section 25(1)(j)); and
- Anticipation with regard to traditional knowledge of any community anywhere in the world (Section 25(1)(k)).
2. Post-grant opposition proceedings – grounds and procedure
According to Section 25(2) of the Patents Act, any person interested can file a post-grant opposition within 12 months of the date of publication of the grant of a patent on any of the grounds prescribed, by giving a notice of opposition to the controller. The grounds of post-grant opposition are identical to those for pre-grant opposition. After receipt of the notice, the controller informs the patentee of the opposition and orders an opposition board to examine the opposition and give the controller its recommendation.
Grant and sealing of patent (Section 43)
(1) Where, a complete specification in pursuance of an application for a patent has been accepted and either-
(a) the application has not been opposed under section 25 and the time for the filing of the opposition has expired; or
(b) the application has been opposed and the opposition has been finally decided in favour of the applicant; or
(c) the application has not been refused by the Controller by virtue of any power vested in him by this Act, the patent shall, on request made by the applicant in the prescribed form, be granted to the applicant or, in the case of a joint application, to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the register.
(2) Subject to the provisions of sub-section (1) and of the provisions of this Act with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of a period of six months from the date of advertisement of the acceptance of the complete specification:
(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pending before the Controller or the High Court, the request may be made within the prescribed period after the final determination of that proceeding;
(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.
(3) The period within which under sub-section (2) a request for the sealing of a patent may be made may, from time to time, be extended by the Controller to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period:
Provided that the first-mentioned period shall not be extended under this sub-section by more than three months in the aggregate.
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva. The Patent Cooperation Treaty (PCT) provides us with an overview of an international treaty which is duly administered by the World Intellectual Property Organization (WIPO). The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States. It is administered by the World Intellectual Property Organization. (WIPO). The PCT is an international treaty which provides a system for filing a patent application and allow us to obtain patents in multiple countries around the world on the basis of a single patent application. As PCT simplifies the procedure for obtaining Patent protection in many countries, making it more efficient and economical for: a) Users of the patent system i.e an applicant/(s) and inventors b) National Offices. The PCT simplifies the patent filing process for applicant and the ultimate decision to grant a patent vest exclusively with each national or regional Patent Office. A single PCT application has the same legal effect as a national Patent application in each of the PCT Contracting States. Without the PCT, we would have to file a separate patent application in each country separately and independently. PCT save applicant time, effort and expense of preparing separate applications in various languages and file it in different signatory’s states. Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month period as provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.
Basic Features of PCT System
- Formal examination done by one office.
- Retrieval is carried out by one office.
- International publication done by one office.
- Examination and authorization finished by national office.
- Single application with legal effect in all PCT countries.
- 148 countries and 4 regional patent systems.
Advantages
- A single application in single language filed in a single country called the international application.
- Provides a strong basis for patenting decisions to the users.
- Harmonizes formal requirements.
- Used by the world’s major corporations, universities and research institutions when they seek international patent protection.
- This single application has the effect of filing simultaneously in different countries (designated countries).
- Protects applicant from certain inadvertent errors.
- Evolves to meet user needs.
The rights of patentee are-
- Right to exploit the Patent
When the new invention is a product, the Patentee has the exclusive rights to use, make, import, or sell for these purposes related to an invention in India. On the other hand, when the invention of the inventor is a procedure or process of manufacturing of any article or substance, the right to exploit means the exclusive right exercise or use the procedure or method in the territory of India.
2. Right to Grant License
The Patentee of a Patent is given the right to grant license or transfer rights or enter into some arrangement for some consideration. The assignment or license to be valid and legitimate it is required to be in writing and should be registered with the Controller of Patent. Unless a document of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent, and such a rule is applicable to the assignee, not the assignor.
3. Right to Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a Patent at any time and at his/her own discretion. The advertisement for such an offer of surrender is required to be done in the Journal. The publication is done to give an opportunity to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee apprehends his/her non-performance of the Patent in the future and upon which he/she decides to surrender the Patent.
4. Right to sue for Infringement
The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction to try the suit.
5. Right to Use and Enjoy Patent
The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or the patented substance or article in India or to practice or utilize or the process or techniques associated with the invention. Such rights can be exercised either by the Patentee himself/herself or by his/her licensees or agents.
Obligations of patentee
- Duty to Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all required data related to the remote uses of comparative or same invention documented by him/her or through him/her or through someone by him/her at the time of applying or within 6 months of applying. The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the applications and, in addition to the above, an endeavour to disclose all the points of interest of any subsequent applications that might be documented at the future stages. Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data required by the Controller of Patent with regards to the relating of any remote applications at whatever point demand is made by the Controller of Patents within a time period of 6 months of such a demand by the Controller of Patent. The first part of the obligation of Patentee begins when a man records an application of Patent. On the other hand, the second part begins after a demand is made by the Controller of Patents under the Patents Act, 1970.
2. Duty to Request for Examination
Not like other Intellectual Property Rights, the Registration process of Registration of Patent does not accommodate any kind of programmed examination of the grant of Patent application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the growth or development connected for Patent.
3. Duty to Respond to Objections
The Controller of Patent before accepting the examination request passes it to the analyst who looks at the growth and gives a report to the Controller of Patent known as the First Examination Report (FER). On certain cases there may be some protests which will be brought up in the First Examination Report, it is the right of Patentee to reply to such opposition complaints and consent to the corresponding within a time period of a year of the issuance of the First Examination Report (FER) falling which the application of the Patentee will be considered to be surrendered by the Controller of Patent.
4. Duty to clear all Objections
It is the obligation of the owner of the Patent to respond to the raised objections as well as to clear and remove each one of the raised objections and, in addition, certain oppositions raised against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go for a consultation and clear all the objections and, in addition, oppositions, if are raised any, against the invention of the inventor.
5. Duty to Pay Statutory Fees
The Patentee has an obligation to pay all the statutory expenses required to get a grant of a Patent in the process of Registration without failure generally, his/her application for the grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions recognized with payment of charges and, in addition, the consequences for non-payment of such prescribed fees. After this process is imitated to and the Patentee of Patent clears every one of the restrictions and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a Patent to the invention and publishes it in the Journal, or generally, the Controller rejects such a Patent.
The term of every patent in India is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years begins from the international filing date. It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent can also be claimed.
Burden of proof in case of suits concerning infringement (Section 104 A)
(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, —
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.
Power of court to grant relief in cases of groundless threats of infringement proceedings (Section 106)
(1) Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens any other person by circulars or advertisements or by communications, oral or in writing addressed to that or any other person, with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs, that is to say—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid the court may grant to the plaintiff all or any of the reliefs prayed for.
Reliefs in suit for infringement (Section 108)
(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.
(2) The court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.
Key Takeaways
- The history of patent law in India starts from 1911 when the Indian patents and designs act, 1911 was enacted. The present patents act, 1970 came into force in the year 1972, amending and consolidating the existing law relating to patents in India. The patents act, 1970 was again amended by the patents (amendment) act, 2005, wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to exclusive marketing rights (EMRS) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
References:
1. B.S. Patil, Legal Aspects of Building and Engineering Contracts, 1974.
2. The National Building Code, BIS, 2017
3. RERA Act, 2017
4. Meena Rao (2006), Fundamental concepts in Law of Contract, 3rd Edn. Professional Offset
5. Neelima Chandiramani (2000), The Law of Contract: An Outline, 2nd Edn. Avinash Publications Mumbai
6. Avtarsingh (2002), Law of Contract, Eastern Book Co.
7. Dutt (1994), Indian Contract Act, Eastern Law House
8. Anson W.R. (1979), Law of Contract, Oxford
