TRIPS AND IMPACT ON

INDIA

Dr. S.K.MITRA
THE PATENT OFFICE
KOLKATA
 Technology & The Evolution Of Homo Sapiens

Stone Age Metal working and improved

agriculture carried civilisation
out of Stone Age.

Industrial Revolution (19th Gave rise to mighty machines

Century) and modern cities.

20th Century Age of Physics and Chemistry,

Atom Bomb, Transistor, Laser,
Microchips, Drugs, Pesticides,
Polymers

21st Century Age of Biology and Genetics,

Dolly, Gene Therapy and Genetic
Engineering
Contrary to most entrepreneurs gut
reactions, it is a good thing when
your competitors are doing well,
unless, of course, their success
comes at your expense. However,
the best way to beat competition is
to be ahead of Competition by
having exclusivity in the market
place.
 Indian Mindset : Pre-1991
- Protected & Sellers Markets
- Dependency on Government For All industrial Activity &
Favours
- Unviable Economies of scale in Production
- Unrealistic Restrictions to growth, eg., under the licencing
System and MRTP Act
- Cost Plus norms for pricing, leading to no margins for R&D
- Administered prices for some sectors and Subsidies for
others
- Restrictions on Imports
- Aversion for taking business risks
- Mistrust of partners
 For India To Be A World Power

We need to be --
 Up-to-date and not backward in our
knowledge base.
 Competitive and not incompetent in the
global arena.
 Innovative and not imitative in all our
endeavours.
 Nurturing and not stifling creativity right
from childhood.
 A Nation’s Most Valuable Asset:
“ Intellectual Capital “
To put real cash on the bottom line, one
needs to know how to manage and
measure the ultimate intangible
“ Knowledge “
And yet only a few Nations know how to
generate new knowledge and protect
that intellectual capital from erosion and
loss.
 And one of the
best ways of
making this capital
pay is through
protection of IPR
We Live In An Age of Possibilities. A
hundred years Ago, we moved from the
farm to the factory. Now we move to an
age of Technology, Information and
Global Competition ( For creation of
Wealth, Its Utilisation and World
Domination )*
President Clinton-1996

* Words in brackets the author’s

 We Need To Learn The New
Game Of Utilising R&D Results

Benjamin Franklin may have

discovered electricity, but it was
the man who invented the meter
who made the money.
Thus, Leadership In Technology Can
Be Guarded Only Through --

 Continuous and incremental improvements

in technology Through R&D.
 Ensuring that technological innovations
are patentable.
 Protection of the technology area from
third-party entry through patents.
 A Fundamental Issue
World Without Protection Of Intellectual Property

 Industrial activity will be stifled due to new products,

not being discovered, developed and marketed.
 Industrial R&D will be discouraged.
 No reward system for scientists and their sponsors.
 Cumbersome secrecy modalities will be resorted to.
 Public will have no access to current state of scientific
knowledge.
 Legal systems for technology transfer will not be
available.
The question is whether countries like India, due to their
developmental status, have a right to claim free access to
products and technologies developed by others at high
cost.
 Issues - Perceptions

Did encouragement of innovation via IPR

Systems contribute to economic develop-
ment of industrialised countries?
OR
Are they instruments for economic
domination by industrialised nations?
 Protection Of
Intellectual Property Rights Provides

 Encouragement for creation of intellectual

property through innovation.
 Reward system for success.
 Global competitiveness in technology areas.
 Incentives for investments in intellectual
pursuits.
How To Protect Your Innovation
From Piracy

 Legal ways including IPR

 Moral ways by inculcating values
 Bonded approach
 Secrecy modalities
 Agreements Establishing WTO

Multi-lateral General Agreement Plurilateral

Agreements Agreement on TRIPS Trade
on Trade in on Trade in Agreements
Goods Services
 Existing WTO Commitments

TRIPS: Trade related to Intellectual Property

India has to implement TRIPS provisions in two phases,
the first by 1st Jan. 1995 by permitting Product Patent
Filing, granting EMRs and revoking Section 39 of IPA
1970, the second by 2000, full amendment consistent
with TRIPS to be legislated; however implementation only
by 1st Jan. 2005.
TRIMS : Trade related Investment Measures.
GATS : General Agreement on Trade in Services.
AOA : Agreement on Agriculture.
 Challenges Of The First Decade Of New Millennium On
Protection Of Sovereign Assets And Rights
Areas Of Action
Intellectual Property Protection
Patents
Trade Marks
Copy Rights
Designs
Trade Secrets (undisclosed information)

Bio-Assets Protection
Biodiversity
Germ Plasms
Geographical indications
Plant varieties
 Intellectual Property

Industrial Copyrights
Property
 Inventions /  Literature
Patents  Music
 Trade Marks  Art
 Designs  Photography
 Cinematography
 Trade Related Intellectual
Property Rights (TRIPS)
Deals with:
- Copyrights & Related Rights
- Trade Marks
- Geographical Indications
- Industrial Designs
- Layout Designs of Integrated Circuits
- Protection of Undisclosed Information
(Trade Secrets)
- Patents
Most Favoured Nation Treatment ( MFN)
( Under TRIPS)
 Each Member shall accord to the Nationals of other
Members treatment no less favourable than it accords
to its own Nationals with respect to protection of IPR.

 Any advantage, favour , privilege or immunity

granted by a Member to Nationals of any other
Country shall be accorded immediately and
unconditionally to the Nationals of all the other
Member Countries.
 Patentable Subject
Matter (TRIPS)
Article 27
Patents shall be available for any invention,
whether products or processes, in all fields
of technology, provided they are new,
involve an inventive step and are capable
of industrial application.
Patents must be available and patent rights
enjoyable without discrimination as to the
place of invention, field of technology and
whether products are imported or locally
produced.
 TRIPS- Are We Having Interpretation
and Implementation Problems ?
-Article 31 provides for prevention of anti-
competitive practices which will threaten food
security of people in developing Countries.
-Article 67 mandates technical assistance to
developing countries.
-Article 30 does provide for Issue Of Compulsory
Licences, if Public good warrants it.
 TRIPS Agreement Refers To Five
Specific Grounds For Granting
Compulsory Licences

 Refuse to deal
 Emergency & extreme urgency
 Anti-competitive practices
 Non-commercial use
 Dependent patents
 PATENTS

Provide Information on :
- Technology contents of the Innovation
- Commercial Aspects of Utility of the invention
- Legal Obligations
- Owner’s Rights & Strategies for commercialisation

Patents are filed very early in the innovation-product

development-production-marketing chain and hence
cannot provide technology inputs, the so-called ‘know-how’,
for project implementation.

However, patents can be exploited by third parties only

if they aregranted a licence by the patentee on mutually
agreed terms of payment .
 TYPES OF PATENT INFORMATION
Commercial :
- Activity of Competitors
- Owners of Patented Technology
- Trends in Technology development
Technical:
- Prior Art
- Deficiencies in Prior Art
-Solution offered by the Invention
Legal:
- Scope of the Claims
- Ownership & Assignment Rights
- Validity, Maintenance Status
 Basic Requirements For Patenting

Establishing beyond Doubt that the concerned

Invention is:
- Novel (Not known , Not Used)
- Inventive ( Non-obvious to any one equally
skilled in the Art)
- Commercially useful
* If any one of the above conditions is not satisfied, the
patent cannot be granted or if granted, could be revoked.
 Unsolved Issues On
Patenting Rights
 Patents On Life Forms & Agriculture.
Patenting Of Biotech Products, including
Genes, DNA Sequences, Gene Therapy etc
Patenting Of Natural Products
Protection Of Traditional Knowledge
Protection Of Traditional Systems Of
Medicine
 Article 27.3(b) Of TRIPS
Article 27.3: Describes Rules regarding ownership of
Plants Animals & Biological Processes. Most of the
wording is deliberately ambiguous and open to different
interpretations.

 Allows Members not to have Patent regimes for the

above, except for micro-organisms.

 Requires some form of protection for plant varieties -

Eg., Sui Generis System- Review
due in 2000 AD.

 Micro-organisms not defined.

 IPR Issues Impacting On
Agriculture
Section 27.3
Deals with Protection of Living Organisms
of TRIPS
Sui Generis Special Legislation on Protection of Plant
System Varieties.
 Sovereignty of Bio-diversity Assets.
CBD  Benefits sharing.
 Community Rights over knowledge, products.

Genetic Germ Plasms, Genetic Resources, Gene

Resources Therapy, Transgenics.
On ownership, utilisation and commercial
Ethical & exploitation. Moral issues on creation of life
Moral Issues (Plants, Animals and Micro-organisms.
 The Indian Systems of Medicines

 Can we evolve a system of Protection for

them?
 The Indian systems have their own concepts
converted into different practices and
products depending on the Practitioners. They
cannot be protected by convention IPR
Protection systems.
 New innovative approaches are required to
protect them under possible ‘Sui-Generis’
Systems.
 Doctrine Of Nature Principle & IPR

 Any natural material of plant, animal or microbial

kingdom is the gift of God to mankind and hence,
cannot enjoy private ownership or rights and IPR.
 Active components isolated by known physical
methods from natural products constitute only
discoveries and not invention, and are not patentable.
 Microorganisms are patentable under TRIPS,
however, the term has not been defined.
 New uses of natural products can be patented only
in countries where utility patents are permitted.
 Drafting Of A Patent Application
 Abstract
 State of the art description
 Highlights of the present invention in relation to the
closest prior art.
 Description of the invention in its broadest scope.
 Examples of representative of all the major
components, products under generic claims, processes.
 Claims with the main (generic) claim covering the
broadest scope possible within the ambit of the
description and examples.
 Sub-generic claims within the scope of the main claim.
 Individual product / processes / utility claims.
 Certain Basic Concepts Of Patent Drafting

1. Invention to be sufficiently and explicitly described for any one

equally skilled in the art to practice.
2. Unitary invention in one application.
3. The scope and coverage to match with examples provided.
4. All the inventors who have contributed to be included as
patentees.
5. Applicants may be different from inventors by virtue of an
assignment.
6. The patent application to be drafted in accordance with the laws of
the country where filed.
7. Provisional or convention application to be followed by complete
specification in every country where invention is to be protected.
8. Provisional specification need not have claims and all examples.
Major Changes In Indian Patents Act (1970) And New IPR

IP Act 1970 Change Envisaged

Product Patent in food, pharmaceuticals Product patents to be provided in all
and chemicals sector not provided; only branches of technology.
process patents are provided.
Duration is 7 years in food and phamaceu- Uniform duration of 20 years from the
tical sector; 14 years in all other sectors. date of filing for all patents.
Compulsory licensing and in case of food, Compulsory licensing on the merits of
pharmaceutical and chemical sectors, each case; the patent holder will have to
licences of right. be heard.
No system of protecting plant varieties in Effective sui generis for protection of
India. plant varieties.
Patenting of life forms are now allowed. Micro-organisms to be patented.
Importation does not amount to working No discrimination between imported
of the patent. and domestic products.
The burden of proof is on the plaintiff. In case of process patents, the burden
of proof on the alleged infringer.
 Options For Implementing TRIPs

Patent Provisions :
-Concept of The invention- Art 27.1
-Exceptions To Patentability- Art 27.2 &3
-Criteria for Patentability- Art 27.1
-Rights Conferred- Art 28
-Disclosure - Art. 29
-Interpretation of Claims- Not speciified
-Foreign Applications & Grants- Art 29
Exceptions to Exclusive Rights- Art 30
Compulsory Licences- Art. 30
Reversal of Burden of Proof- Art 43

Transitional Periods- Art 66.1