Legal Aspects of Legal Aspects of Bi Business SBJ Cd554 Subject Code 554
Legal Aspects of Legal Aspects of Bi Business SBJ Cd554 Subject Code 554
Legal Aspects of Legal Aspects of Bi Business SBJ Cd554 Subject Code 554
Legal Aspects of
B i
Business
S bj C d 554
Subject Code 554
‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
Chapter 7
I t ll t l P
Intellectual Property
t
Legislations
Legislations
1
Introduction
Man is a wonderful being with great imagination, marvelous
g g g ,
creation and high skill. In some of the situations, man is beyond
the nature. With the emerging and fast growing business and
market environments, computers and information technology,
man’s contributions and creations are simply wonderful. These
creations are to be protected In order to protect inventions and
creations are to be protected. In order to protect inventions and
creations, a separate legislation has been enacted, which is
known as Intellectual Property Legislation‐Patents Act, 1970.
p y g ,
2
Intellectual Property legislation: Patents Act 1970
The convention establishing World Intellectual Property
h i bli hi ld ll l
Organization (WIPO) has given a wide definition of IPRs.
According to these definitions the IPRs shall incluse the rights
According to these definitions, the IPRs shall incluse the rights
relating to:
1. literary, artistic and scientific work
2. Performances of performing artists, phonograms and
broadcasts
3 Inventions in all fields of human endeavor
3. I i i ll fi ld f h d
4. Scientific discoveries
5 Industrial designs
5. Industrial designs
6. Trade marks, service marks, commercial names and
designations
7. Protection against unfair competition and all other rights
resulting from intellectual activity in the industrial, scientific,
lit
literacy or artistic fields.
ti ti fi ld
3
4
5
Section 2: Definitions and interpretation
(a) "assignee"
assignee includes the legal representative of a deceased assignee,
includes the legal representative of a deceased assignee,
and references to the assignee of any person include references to the
assignee of the legal representative or assignee of that person;
(b) "Controller" means the Controller‐General of Patents, Designs and
"C ll " h C ll G l fP D i d
Trade Marks referred to in section 73;
((c)) "convention application" means an application for a patent made by
pp pp p y
virtue of section 135;
(d) "convention country" means a country notified as such under sub‐
section (1) of section 133
section (1) of section 133;
(f) "exclusive license" means a license from a patentee which confers on
the licensee, or on the licensee and persons authorized by him, to the
exclusion of all other persons (including the patentee), any right in
respect of the patented invention, and "exclusive licensee" shall be
construed accordingly;
construed accordingly;
(g) "food" means any article of nourishment and includes any substance
intended for the use of babies, invalids or convalescents as an article of
food or drink;
6
Section 2: Definitions and interpretation
Section 2: Definitions and interpretation
(h) "government undertaking" means any industrial under taking
carried on‐
()
(i) by a department of the government; or
f
(ii) by a corporation established by a Central, Provincial or State
Act, which is owned or controlled by the government; or
Act, which is owned or controlled by the government; or
(iii) by a government company as defined in section 617 of the
Companies Act, 1956 (1 of 1956), and includes the Council of
S i tifi
Scientific and Industrial Research and any other institution which is
dI d t i lR h d th i tit ti hi h i
financed wholly or for the major part by the said council;
7
Section 2: Definitions and interpretation
f d
(l) "medicine or drug" includes‐
(i) all medicines for internal or external use of human beings or
animals,
(ii) all substances intended to be used for or in the diagnosis,
t t
treatment, mitigation or prevention of diseases in human beings
t iti ti ti f di i h b i
or animals,
( )
(iii) all substances intended to be used for or in the maintenance of
public health, or the prevention or control of any epidemic disease
among human beings or animals,
(iv) insecticides germicides fungicides weedicides and all other
(iv) insecticides, germicides, fungicides, weedicides and all other
substances intended to be used for the protection or preservation
of plants,
(v) all chemical substances which are ordinarily used as
intermediates in the preparation or manufacture of any of the
medicines or substances above referred to;
medicines or substances above referred to;
8
Section 2: Definitions and interpretation
(m) "patent" means a patent granted under this Act and includes
for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58,
63 65 66 68 69 70 78 134 140 153 154 and 156 and Chapters
63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapters
XVI, XVII and XVIII, a patent granted under the Indian Patents and
Designs Act, 1911 (2 of 1911);
( )"
(n) "patent agent" means a person for the time being registered
" f h i b i i d
under this Act as a patent agent;
(o) "patented article" and "patented process" mean respectively
an article or process in respect of which a patent is in force;
(p) "patentee" means the person for the time being entered on the
register as the grantee or proprietor of the patent;
g g p p p
(q) "patent of addition" means a patent granted in accordance
with section 54;
with section 54;
9
Section 2: Definitions and interpretation
( )"
(t) "person interested" includes a person engaged in, or in
i d" i l d di i
promoting, research in the same field as that to which the
invention relates;;
(y) "true and first inventor" does not include either the first
importer of an invention into India, or a person to whom an
invention is first communicated from outside India
invention is first communicated from outside India.
(j) "invention" means any new and useful‐
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture and includes any new
(iii) substance produced by manufacture, and includes any new
and useful improvement of any of them, and an alleged invention;
10
11
Meanings of inventions
Patent is granted to inventions. The invention should satisfy the
Patent is granted to inventions The invention should satisfy the
following three tests to get a patent:
1. Test of Novelty: The subject matter should be new.
2. Test of utility: It should be useful.
3. Test of durability: The subject matter should be capable of
being marketed for communication purpose.
12
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;
t t ll t bli h d t l l
(b) an invention the primary or intended use of which would be
contrary to law or morality or injurious to public health;
y y j p ;
(c) the mere discovery of a scientific principle or the formulation of an
abstract theory;
(d) the mere discovery of any new property or new use for a known
(d) 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
aggregation of the properties of the components thereof or a
process for producing such substance;
13
The following are not inventions within the meaning of this Act,‐
(f) the mere arrangement or re‐arrangement
(f) the mere arrangement or re arrangement or duplication of known
or duplication of known
devices each functioning independently of one another in a known way;
(g) a method or process of testing applicable during the process of
manufacture for rendering the machine, apparatus or other equipment
f t f d i th hi t th i t
more efficient or for the improvement or restoration of the existing
machine, apparatus or other equipment or for the improvement or
, pp q p p
control of manufacture;
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic or
any process for the medicinal surgical curative prophylactic or
other treatment of human beings or any process for a similar
treatment of animals or plants to render them free of disease or to
increase their economic value or that of their products.
14
1. Ordinary patent:
It is a patent normally obtained by filing application under
It is a patent normally obtained by filing application under
Section 6(1) of the Patent Act, 1970.
2. Patent of addition:
It is a patent for improvement in or modification of an
invention for which a patent application has already been
made or it has been granted under Sections 54 to 56 of this
Act containing provisions regarding application, sealing of
patent renewal fees terms of patent and validity period of
patent, renewal fees, terms of patent and validity period of
patent of addition.
A patent of addition remains in force only as long as the
p y g
patent for the original invention remains in force.
3. A patent granted in respect of a convention:
application filed u/s 135 of the Act under reciprocity
l fl d / f h d
arrangements, the convention application has to be made
within one year from the date of the first application made
within one year from the date of the first application made
in a convention country in respect of that invention. 15
Exclusive Marketing Rights
Exclusive Marketing Rights
Under WTO arrangement, India had to provide “Product Patent”
to MNCs for inventions relating to pharmaceutical and
g p
agrochemical products from 1‐1‐1995 and the grant of such
patents provided Exclusive Marketing Rights for five years after
attaining marketing approval or grant of patent whichever is
earlier.
This applies to inventions for which patent applications are filed
This applies to inventions for which patent applications are filed
on or after 1‐1‐1995 in India or abroad. Thus, “Product Patent”
and Exclusive Marketing Rights are not available for products
g g p
developed and patented abroad before 1‐1‐1995.
In order to meet these obligations, under Article 70(8) and (a) of
TRIP agreement of WTO, the Patent Amendment Act, 1999 in a
new chapter IV A on Exclusive Marketing Rights and the provisions
are contained in Section 24 A to 24 E w e f 1 1 1995
are contained in Section 24 A to 24 E w.e.f. 1‐1‐1995.
16
1. Section 24 A: Applications for grant of Exclusive Rights
pp g g
2. Section 24 B: Grant of Exclusive Rights
3. Section 24 C: Compulsory Licenses
4. Section 24 D: Special Provision under public Invent
5. Section 24 E : Suits relating to infringements
6
6. Section 24 F : Central government and its officers not to be liable
Section 24 F : Central government and its officers not to be liable
17
Procedure for Grant of Patent
F ll i
Following are the steps for grant of a patent under this Act:
h f f d hi A
1. Filing
1 Filing an application for a patent
an application for a patent
2. Examination of application
3. Acceptance of the application and advertisement of such
acceptance in the official gazette.
4. Overcoming opposition, if any, to the grant of patent
5 Grant and sealing of patent
5. G d li f
18
Section 7. Form of application
(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.
h ll b d i th ib d f d fil d i th t t ffi
(2) Where the application is made by virtue of an assignment of the
(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.
19
Section 7. Form of application
(3) Every application under this section shall state that the applicant is
in possession of the invention and shall name the owner claiming to
b h
be the true and first inventor; and where the person so claiming is not
df d h h l
the applicant or one of the applicants, the application shall contain a
declaration that the applicant believes the person so named to be the
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) shall be
accompanied by a provisional or a complete specification.
20
Section 47. Grant of patents to be subject to certain conditions
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
p
patent is granted or any article made by using a process in respect of
g y y g p p
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
by or on behalf of the government for the purpose merely of its own
use;
21
47. Grant of patents to be subject to certain conditions
The grant of a patent under this Act shall be subject to the condition
that‐
(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
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
h i i fi i il d
22
47. Grant of patents to be subject to certain conditions
The grant of a patent under this Act shall be subject to the condition
that‐
(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
di i d b i t d b th t f th
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 medical institution
which the Central Government may, having regard to the public
service that such dispensary hospital or medical institution renders
service that such dispensary, hospital or medical institution renders,
specify in this behalf by notification in the Official Gazette.
23
Section 154. Loss or destruction of patents
If a patent is lost or destroyed, or its non‐production is accounted for
to the satisfaction of the Controller, the Controller may at any time, on
application made in the prescribed manner and on payment of the
prescribed fee, cause a duplicate thereof to be sealed and delivered to
the applicant.
the applicant.
24
A patentee is a person who enjoys the right of patent.
A patent confers exclusive rights to the first and true inventor.
There is an elaborate procedure for grant of patent under this Act
and Patent Office will take all possible precautions before granting
a ‘patent’.
U d th
Under the provisions of this Act, it is open to any person to
ii f thi A t it i t t
challenge the validity of the patent. If the grounds for challenging
the grant of patent are valid or the Government in public interest
the grant of patent are valid or the Government in public interest
deems it fit, the exclusive rights granted to inventor shall be
withdrawn. Any such withdrawal of rights granted to patentee is
termed as revocation of patent.
27
Register of Patents (Section 67‐72)
Sealing of Patent is done at patent office at Kolkata. The
Controller shall enter in Register of Patent relevant details in
Controller shall enter in Register of Patent relevant details in
respect of patents such as:
1. Names, addresses and nationality of the patentees
2. Title of the invention
3
3. D t f th
Date of the patent, date of sealing etc.
t t d t f li t
4. Renewal fees and date of renewal
5
5. Change of patentee’ss address, if any.
Change of patentee address if any
28
Working of Patents:
g
The general principle is that patents for inventions are granted
for being used and not for hoarding. It is essential to secure
that:
h
1. Patents are granted to encourage inventions and to secure
that the inventions are worked in India on a commercial
that the inventions are worked in India on a commercial
scale and to the fullest extent that is reasonably practicable
without undue delay
2. They are not granted merely to enable patentees to enjoy a
monopoly for the importation of the patented article
3 The protection and enforcement of patent rights contribute
3. Th i d f f i h ib
to the promotion of technological innovation and to the
transfer and dissemination of technology to the mutual
transfer and dissemination of technology to the mutual
advantage of producers and users of technological
knowledge and in a manner conducive to social and
economic welfare and to a balance of rights and obligations.
29
Compulsory Licenses (Section 84)
At any time, after the expiration of 3 years from the date of
the sealing of patent, any person interested may make an
application to the Controller alleging that the reasonable
application to the Controller alleging that the reasonable
requirements of public are not satisfied and patented
invention is not available to the public at a reasonable price
p p
and praying for the grant of compulsory license to work the
patented invention.
30
Powers of Controller in granting Compulsory licenses
(
(Section 88)
)
Where the controller is satisfied on applications made
under Section 84, he may, subject to provision of those
sections, order the grant of licenses under the patent to
such customers of the applicant as he thinks fit as well as to
such customers of the applicant as he thinks fit as well as to
the applicant.
31
General purpose for Granting Compulsory Licenses
(Section 89)
The powers under section 84 shall be exercised to secure:
a That patented invitations are worked on a commercial scale
a. That patented invitations are worked on a commercial scale
in India without undue delay and to the fullest extent that is
reasonably practicable.
yp
b. That the interests of any person for the time being working
or developing an invention in India under the protection of
a patent are not unfairly prejudiced.
32
Termination of Compulsory License (Section 94)
Termination of Compulsory License (Section 94)
1. On an application made by the patentee or any other
pp y p y
person deriving title or interest in the patent, a
compulsory license granted under section 84 may be
terminated by the controller, if and when the
circumstances that gave rise to the grant thereof no longer
exist and such circumstances are unlikely to recur;
exist and such circumstances are unlikely to recur;
Provided that the holder of the compulsory license shall
have the right to object to such termination.
g j
2. While considering an application under sub section (1),
the Controller shall take into account the interest of the
person who had previously been granted the license is not
h h d i l b d h li i
unduly prejudices.
33
Infringement of patents (Section 104‐117)
This Act grants statutory rights to patentee, his agents alone to
work or exploit the invention. If some other person violates or
encroaches upon the statutory right the patent is said to be
encroaches upon the statutory right, the patent is said to be
infringed. The Patent Act 1970 does not specify infringement
but provides for Rights and Exclusive license, under Section
but provides for Rights and Exclusive license, under Section
84, to take legal action against infringements.
34
Register of patent agents (Section 125)
As per section 125 as per Patent (Amendment) Act, 2002, the
Controller shall maintain “register” of patents in which the names
and addresses of all persons qualified to have their names under
and addresses of all persons qualified to have their names under
section 126, shall be entered. The rule also makes that the
Controller should keep the register of patents in electronic force.
Controller should keep the register of patents in electronic force.
35
Appellate Board (Section 116)
Subject to provisions of this Act, the Appellate Board established
under section 83 of the Trade Marks Act, 1999 shall be the
Appellate Board for the purpose of this Act and the said Appellate
Board shall exercise the jurisdiction, power and authority
conferred on it by or under this Act
conferred on it by or under this Act.
36
The patents Act, 1970 provides penalties in respect of
following violations of the Act:
1 Contraventions
1. Contraventions of secrecy relating to inventions relevant for
of secrecy relating to inventions relevant for
defense purposes: Imprisonment upto 2 years or fine or both.
2. Falsification of entries in Register etc.: Imprisonment upto 2
years or fine or both.
3. Unauthorized claim of patent Rights: Fine upto 10000.
4 Wrongful use of words about patent office: imprisonment upto 6
4. Wrongful use of words about patent office: imprisonment upto 6
months or fine or both.
5. Refusal or failure to supply information to Central Government
or the Controller: imprisonment upto 6 months or fine or both.
6. Practicing by Non‐Registered Patent Agent: fine upto 10000 for
the first offence and 40000 for subsequent offences.
the first offence and 40000 for subsequent offences.
7. In case of offences by companies: Any person responsible for the
conduct of the business shall be prosecuted and punished
according to the law.
di t th l
37
International arrangements (Section 133‐139)
Notification as to convention countries
With a view to the fulfilment of a treaty, convention or
arrangement with any country outside India which affords to
arrangement with any country outside India which affords to
applicants for patents in India or to citizens of India, similar
privileges are granted to its own citizens in respect of grant of
patents and the protection of patent rights.
The Central Government may, by notification in the official gazette,
declare such country to be a conventions country for the purposes
declare such country to be a conventions country for the purposes
of this Act. (Section 133).
38
Notification as to countries not providing for reciprocity:
Notification as to countries not providing for reciprocity:
Where any country specified by the Central Government in this
behalf by notification in the official Gazette does not accord to
citizens of India, the same rights in respect of the grant of
patents and the protection of patent rights as it accords to its
patents and the protection of patent rights as it accords to its
own nationals, no national of such country shall be entitled
either solely or jointly with any other person:
either solely or jointly with any other person:
a. To apply for the grant of a patent or to be registered as the
proprietor of a patent
b. To be registered as the assignee of the proprietor of a patent
or
c To apply for a license or hold any license under a patent
c. To apply for a license or hold any license under a patent
granted under this Act (Section 134).
39
THANK YOU
40