General Introduction

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GENERAL INTRODUCTION

INTRODUCTION

A human endeavour which promotes Social, Economical, Scientifical or Cultural Development of the society must be encourage and the creator or the innovator needs to be rewarded by suitable legal protection for his intellectual creation. Consequently Intellectual Property Right are those legal rights which govern the use of creation of Human Brains. Protection of Intellectual Properties is a very critical element in the offshore business model.A human being is the sole proprietor of his brains and even law gives him a proprietor right in it. Property has always been a symbol of power and strength for every individual and that is why every individual tries to maximise his property. John Locke had pointed out, a person has his property, two things:1)

The person himself or to say the human body.

2)

The skill of doing labour with his body and the work of his hand.

The patent system is designed to encourage inventions that are useful to society by granting inventors absolute right to make profit from their inventions. But patents cannot protect each and every person who

conceives

an

invention.

Hence

an

invention

must

fulfill

certain

criteria

to

be

patentable. Patentability refers to the substantive conditions that must be met for a patent to be held valid. As patent laws are different in different countries, the patentability criteria also vary from country to country. The invention must satisfy the requirements under the context of a national or multinational body of law to be granted a patent. Although the patentability criteria differ from country to country depending on the law of the land, there exists some commonality between them. In order to be patentable, an invention must be novel, have utility, and differ from what skilled users might expect. These standard requirements [1]

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are given different shapes by the legislative and judicial systems of different countries. Let’s discuss how the criteria are interpreted in different countries. A patent is a contract between the inventors or applicant for the patent and the State, whereby the inventor or applicant gets a monopoly from the State for ascertain period in return for disclosing full details of the invention. The patent system thus ensures that information on new inventions is made available for eventual public use so as to encourage technical and economic development and discourage secrecy. If an inventor or company has an invention, which they consider to be novel and inventive, they may apply for a patent.

This may be granted only after a detailed examination by a patent office. Once the patent is granted the inventor or Applicant has the sole right to make, use or sell the invention for a limited period.

This period is usually twenty years. There can also be confusion about what exactly can be protected by the patent system. Patents can only be applied to inventions. These usually have an industrial dimension. An invention is normally a new product, which involves a new principle of operation or an improvement to an old principle. Alternatively it may refer to a new or improved industrial process. Things, which do not involve manufacture, are not usually considered to be inventions. For example, a new scientific theory or a new surgical procedure would not be considered to be patentable for this reason. The patent system is designed to encourage inventions that are useful to society by granting inventors absolute right to make profit from their inventions. But patents cannot protect each and every person who conceives an invention. Hence an invention must fulfill certain criteria to be patentable. Patentability refers to the substantive conditions that must be met for a patent to be held valid. As patent laws are different in different countries, the patentability criteria also vary from country to country.

The invention must satisfy the requirements under the context of a national or multinational body of law to be granted a patent. Although the patentability criteria differ from country to country depending on [2]

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the law of the land, there exists some commonality between them. In order to be patentable, an invention must be novel, have utility, and differ from what skilled users might expect. These standard requirements are given different shapes by the legislative and judicial systems of different countries

A patent is a contract between the inventors or applicant for the patent and the State, whereby the inventor or applicant gets a monopoly from the State for ascertain period in return for disclosing full details of the invention. The patent system thus ensures that information on new inventions is made available for eventual public use so as to encourage technical and economic development and discourage secrecy. If an inventor or company has an invention, which they consider to be novel and inventive, they may apply for a patent.

This may be granted only after a detailed examination by a patent office. Once the patent is granted the inventor or Applicant has the sole right to make, use or sell the invention for a limited period.

A Patent is a form of property. An invention is the creation of intellect applied to capital and labour, to produce something new and useful. Such creation becomes the exclusive property of the inventor on grant of patent. Thed patentee’s exclusive proprietary right over the invention is an intellectual property right. The owner of the “patent”,is entitled to deal with his such property in the same manner as owner of any other movable property deals with his property.

ORIGIN

The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for [3]

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public inspection). A patent (/ˈpætənt/ or /ˈpeɪtənt/) is a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time, in exchange for the public disclosure of the invention. Patent means a standard patent or an innovation patent. The origins of a system of monopoly rights granted in respect of inventions has been traced back to classical times. However, the modern system of patent protection developed in Venice in the mid-15th century. Inventions are typically an apparatus, a product or a manufacturing process. Often they can be monopolised by means of patents, but by no means always. Commercial success in exploiting an idea or using know-how to create opportunities requires legal advice which is informed, well-presented and works for your business. This is the service our solicitors aim to provide.

What is patentable? An invention is patentable if: (a) the invention is new; (b) it involves an inventive step; (c) it is capable of industrial application

Once the patent is granted the inventor or Applicant has the sole right to make, use or sell the invention for a limited period.A patent is a 20-year monopoly right to work an invention.

Inventions not PatentableInventions which are:

(a) frivolous (b) contrary to morality or law (c) injurious to public health (d) formulation of an abstract theory (e) discovery of any living thing or non-living thing substance occuring in nature [4]

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(f) a mere arrangement or re-arrangement of known devices each functioning independently of each other. (g) a mere discovery of scientific principles (h) a mere discovery of a new property or a new use of a known substance (i) a substance obtained by a mere admixure resulting only in the aggregation of the components thereof or a process for producing such substance (j) a method of agriculture or horticulture (k) any process for surgical, curative, diagnostic or other treatment of humanbeings (l) plant and animals in whole or any part thereof otherthan micro-organisms (m) a presentation of information (n) topography of integrated circuits (o) an invention which in effect is trraditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components (p) invention relating to atomic energy not patentable (q) a mathematical method or a business method (r) a literary, dramatic, musical or aesthetic creation (s) a mere scheme or rule or method of performing mental act or method of playing games

HISTORY AND ECONOMIC BACKGROUND:

Patents in some form or the other have been recognized since times immemorial. The history of patents and patent laws is generally considered to have started in Italy with a Venetian Statute of 1474 which was issued by the Republic of Florence. They issued a decree by which new and inventive devices, once they had been put into practice, had to be communicated to the Republic in order to obtain legal protection against potential infringers. The first patent in the United States was granted in 1970 to Samuel Hopkins for making ‘pot ash and pearl ash by a new process’. A patent is thus a statutory [5]

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privilege granted by the Government to an inventor, and to other persons deriving their rights from the inventor, for a fixed period of years, to exclude other persons from manufacturing, using or selling a patented product, or from utilizing a patented method or process. At the expiration of the period of the patent, the patented invention is available to the general public or as it is sometimes put, falls into the public domain.

In 500 BC, in the Greek city of Sybaris in what is now southern Italy, "Encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year."

The Florentine architect Brunelleschi received a three-year patent for a barge with hoisting gear, that carried marble along the Arno River in 1421. In 1449, King Henry VI granted the first English patent with a license of 20 years to John of Utynam for introducing the making of colored glass to England. Patents in the modern sense originated in 1474, when the Republic of Venice enacted a decree that new and inventive devices, once put into practice, had to be communicated to the Republic to obtain the right to prevent others from using them. England followed with the Statute of Monopolies in 1624, under King James I, which declared that patents could only be granted for "projects of new invention." During the reign of Queen Anne (1702– 14), lawyers of the English Court developed the requirement that a written description of the invention must be submitted. The patent systems in many other countries, including Australia, are based on British law and can be traced back to the Statute of Monopolies.

In 1641, Samuel Winslow was granted the first patent in North America by the Massachusetts General Court for a new process for making salt.

In France, patents were granted by the monarchy and by other institutions like the "Madison du Roi" The Academy examined novelty. Examinations were generally done in secret with no requirement [6]

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to publish a description of the invention. Actual use of the invention was deemed adequate disclosure to the public. The

French patent system was created during the Revolution in 1791. Patents were granted without examination since inventor's right was considered as a natural one

UK patent law is set out in the Patents Act 1977 as amended (PA 1977). The Act gives effect to the European Patent Convention 1973 (EPC) and Revised EPC 2000 and the Patent Co-operation Treaty 1970 (PCT). It also contains provisions that will give effect to the Community Patent Regulation, if and when that latter measure comes into force. The Patents Act 1852(UK), established the British Patent Office, appointed commissioners of Patents to administer the system, established a uniform and single patent for the whole United Kingdom, established provisional protection from the date of application, simplified the system of grant and greatly reduced costs through the establishment of standard fees. 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 Section 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

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A patent is a grant of exclusive rights to commercially exploit a novel, inventive and industriallyapplicable advance in forms or uses of technology for a term of years. An applicant for a patent must supply a complete specification that describes the nature of what has been invented, explains the best method of performing he invention known to the inventor and ends with definition of those embodiments or uses of the invention for which the applicant/patentee claims the exclusive rights.

A patent is not a right to practice or use the invention. Rather, a patent provides the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from the filing date subject to the payment of maintenance fees. A patent is a limited property right the government gives inventors in exchange for their agreement to share details of their inventions with the public. Like any other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away, or simply abandoned.

A patent, being an exclusionary right, does not necessarily give the patent owner the right to exploit the patent. For example, many inventions are improvements of prior inventions that may still be covered by someone else's patent. An inventor who obtains a patent on improvements to an existing, still under patent mouse trap design can only legally build the improved mouse trap with permission from the patent holder of the original mouse trap. The owner of the improved mouse trap patent can exclude the original patent owner from using the improvement.

It refers to a grant of some privilege, property or authority made by the government or the sovereign of the country to one or more individuals. The instrument by which such grant is made is known as ‘Patent’.

Some countries have "working provisions" that require the invention be exploited in the jurisdiction it covers. Consequences of not working an invention vary from one country to another, ranging from revocation of the patent rights to the awarding of a compulsory license awarded by the courts to a party wishing to exploit a patented invention. The patentee has the opportunity to challenge the revocation or [8]

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license, but is usually required to provide evidence that the reasonable requirements of the public have been met by the working of invention.

A patent is a form of intellectual property. A Patent is a grant by the government. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time, in exchange for the public disclosure of the invention.

The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. These claims must meet relevant patentability requirements, such as novelty and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.

A patent is a monopoly imposed by the state.

It is a 20-year monopoly right to work an invention. Its justifications are: 

Reward for the inventor.



Encouragement to investment.

Dissemination of information through publication of the invention.

Any person, including a body of persons whether incorporated or not, may apply for a patent. However, a patent can only be granted to an “eligible person”, defined in the Patents Act1990.

A Patent is a legal monopoly granted for a limited time to the owner of an invention. It empowers the [9]

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owner of an invention to prevent others from manufacturing, selling, using or importing the patented invention.

Patent Act, 1970 as amended in the year 1998 and 1999 along with the Patent rules,1972 govern patents in India.

Patent is a monopoly granted by statueof a country for a limited term over a new and useful invention that involves inventive step. Invention may either for a product or process.

The rights enjoyed by owner of the patent are proprietary in nature and the patentee or his agent or licensees has the exclusive right to use and have the benefits of patenteed invention and to prevent unauthorised use, during the period of patent protection.

Period during which the owner enjoys the benefits is called term of the patent. Registration is a prerequisite for patent protection and the protection granted is territorial in nature,i.e. patent granted in a country will give the owner of the patent right only within that country.

Under prevailing Indian Patent Act, 1970, a patent is a transferrable property and these rights derived their from may be sold or assigned to another person temporarily, completely or in part (license).

OBJECT OF PATENT:

The object of granting a patent is to encourage and develop new technology and industry. The theory upon which the patent system is based is that the opportunity of acquiring exclusive rights in an invention stimulates technical progress in four ways

[10]

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:(i) that it encourages research and invention, (ii) in induces an inventor to disclose his discoveries instead of keeping them as a trade secret; (iii) it offers a reward for the expenses of developing inventions to the stage at which they are commercially practicable, and (iv) it provides an inducement to invest capital in new lines of production which might not appear profitable if many competing producers embarked on them simultaneously. The object of granting a patent is to encourage and develop new technology and industry. An inventor may disclose the new invention only if he is rewarded; otherwise he may work it secretly. In consideration of grant of monopoly for a limited period, the inventor discloses the details of the new invention and the method of working it so that after the expiry of monopoly period others can use the invention or improve upon it.

The consideration for grant of a patent monopoly is: (i) the working of the invention within the country so as to result in the establishment in the country of a new industry or an improvement of an existing industry which would profitably employ the labour and capital of the country and thus increase the national wealth, and (ii) disclosure to the public of the invention and the manner of its working so that on the expiry of the life of the patent the public are enabled to work the invention themselves and in comparison with each other.

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In countries other than India, the terms of patent for all inventions varies from 16 to 20 years whereas in India it was 14 years except for food and drug patents for which the term was five years. By the Patent Amendment Act, 2002 it increases the term to 20 years. Most of the discoveries and inventions made in the technology in all fields are published in the patent specifications filed at the patent offices of different countries.

A Patent of addition shall be granted for a term equaal to that of a patent for the main invention or for so much of the term for the patent of main invention as has not expired. However, if the patent for the main invention is revoked, the Court or the Controller, on request made by the patentee may order that the patent of addition shall become an independent patent for the remainder of the term for the patent of the main invention. No renewal fees shall be payable in respect of patent of addition, but if any patent becomes an independent patent, the same fees shall thereafter be payable, as if the patent had been originally granted as an independent patent.

A world-wide exchange of technical information has been made possible only by the publication of such patent specifications. But for the existence of patent system which enables the inventors to disclose their inventions without fear of the benefits of their labour being lost to competitors, much of the technological innovations would have remained secret.

The adoption of some kind of patent protection for invention in almost all countries and the everincreasing number of applications for patents received by the patent offices in all industrially advanced countries in an indication of the universal recognition of the value of a patent system.

[12]

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The value of the patent system is demonstrated by the fact that in almost all advanced countries the number of patents granted has shown substantial increase. However, only a small percentage of the granted patents lasts the full term as most of them are either unworkable or have no commercial value or superseded by subsequent inventions.

Quite a number of them are retained for speculative reasons or to prevent competition. The Patents Act contains provisions against abuse of patent rights by providing for compulsory licensing and even for revoking the patents for non-working. Besides the publication of the specification enables competitors to experiment and find out ways of designing around the patent, thus encouraging bringing out substitute products for the patented goods.

The Patent Law recognises the exclusive right of a patentee to gain commercial advantage out of hisinvention. This is to encourage the inventors to invest their creative faculties, knowing that their inventions would be protected by law and no one else would be able to copy their inventions for a certain period during which the respective inventor would have exclusive rights.

In Case of Bishwanath Prasad Radhey Shyam V Hindustan Metal Industries, (1979) 2 SCC 511 It has been held by the Supreme Court that, “the object of patent law is to encourage scientific research, new technology and industrial progress.

The Supreme Court observed that the fundamental principles of patent law is to grant a patent only for an invention which must be new and useful. The thrust is on novelty and utility. It is essential for the validity of patent that it must be the inventor’s own discovery as opposed to a mere verification of what [13]

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was already known before the date of the invention. The invention must be more than a mere workshop improvement.

SIGNIFICANCE OF PATENT LAW:

A patent is an exclusive right granted by a country to an inventor, allowing the inventor to exclude others from making, using or selling his or her invention in that country during the life of the patent. It does not give the inventor the right to use or "practice" the invention, and thus the right is subject to any prior rights that others may have to related inventions. So for example, if you have a patent on a “vessel to hold coffee” and I have a patent on a “handle for a vessel”, then I can prevent you from putting a handle on a coffee cup and you can prevent me from attaching a cup to my handle.

A patent is issued to the individual inventor and not to a company, although it is typical practice to have employees assign inventions to their employer. Patent protection is available for any product, processor design that meets certain requirements of novelty, no obviousness and utility. For most categories of inventions, patent protection in the United States lasts for 20 years from the date the patent is filed (under prior law it was 17 years from the date the patent issued).

In the United States, a patent application must be filed with the Patent & Trademark Office no later than one year after a description of the invention is published or publicly disclosed or the invention is first put on sale or made available for commercial use. In general, disclosure under a signed confidentiality agreement is not deemed to be "public disclosure."

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Because of this one-year rule, it is possible to test market the invention before having to decide to invest in a patent filing. However, in most foreign countries patent protection is not available for inventions that are publically disclosed prior to the filing of a patent application. In addition, in foreign countries, the "first to file" a patent will prevail in a dispute among inventors, whereas in the United States the "first to invent" wins if the patent application is filed within the one year period. Under international treaties, a patent filing in the United States is deemed to be a filing for foreign purposes as of the date of the domestic filing. As a result, a safe approach is to file in the United States before publicly disclosing the invention. By using this approach, you'll preserve your ability to obtain a foreign patent; however, in order to obtain the foreign patent, you'll still have to make a foreign filing within one year of the U.S. filing.

Although foreign patent filings may be made individually in each foreign country, they are usually made less than one of two international treaties: the Patent Cooperation Treaty or the European Patent Convention. Filing under these treaty provisions can preserve your rights and limit the upfront filing fees required. However, eventually you will have to pay the patent filing fees in each country in which you want to obtain a patent.

Unfortunately, patent applications aren't published or made available by the U.S. Patent and Trademark Office until at least 18 months after filing. As a result, there is no direct way of knowing what patents your competitors may be in the process of obtaining.

Obtaining a patent in the United States usually takes 18 to 24 months and can be expensive, depending on how well the inventor does in describing the invention in writing. Plan on budgeting between $10K and $25K for obtaining a patent in the U.S.maintenance fees and foreign filing fees are extra. A 2002 [15]

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report from the General Accounting Office has estimated that the cost for a small company to obtain and maintain a patent in 10 industrial nations ranges from $160,000 to $330,000.

If you are early on in a venture and don’t have funds to spare, you might consider the low cost “provisional patent” process, which allows you to file a description of your invention with the USPTO, thereby obtaining an early filing date- you will have to file your full patent application within one year. The provisional application does not have to contain claims and does not have to meet all of the formalities of required of a full application.

Search out a patent lawyer who specializes in "prosecuting” patents in the technical area that the invention covers. Although a good patent lawyer will understand the patent prosecution process, a patent lawyer who works in a particular technology area can add immense value by writing the patent claims to anticipate developments in

the technology field. Ask your general business lawyer for references to patent specialists. Also, university technology licensing offices are also a good source for references to patent lawyer specializing in your technology field.

Twenty years ago patents weren't very valuable in the sense that they were not upheld in court that often. Today as a result of changes in the patent laws, inventors are more often prevailing in multi-million dollar lawsuits. For example, the holder of a patent on the bar code process has reportedly received over $450 million in royalties and judgments.

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Be aware that triple damages can be obtained in "willful infringement cases". Obtaining a written "no infringement" opinion from an independent patent lawyer before you introduce a product will help overcome a "willful infringement" claim. Many companies view a patent portfolio as essential, even if they don't plan a vigorous program of enforcement litigation. They believe that having a portfolio of patents allows them to settle infringement claims against them by "cross licensing" patents with the other side.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries This case can be considered to be the most important case in inventive step jurisprudence in India. Though the case was decided in 1978, the principles laid down in the case are followed even today and have been codified in the Indian Patent Act. The patent in the case related to a means for holding utensils for turning purposes. According to a preferred feature of the invention disclosed in the patent, the pressure end of the spindle was rotatable mounted and for that purpose it comprised an independent piece engaged by a hollowed end in a spindle, said hollowed end being preferably fitted with ball bearings to enable the said independent piece to revolve with friction when it was in contractual relationship with the utensil. The patent disclosed that the independent piece had a forward pointed end or a blunt end, which was firmly held against the utensil. The validity of the patent was challenged on the ground of lack of novelty and inventive step. The Court started its analysis of inventive step by stating that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement and must independently satisfy the test of invention or inventive step . it stated that to be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than what was already existing . As per the court, an invention would have an inventive step if the combinations of old known integers may be so combined that by their working inter relation they produce a new process or improved result. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty would not according [17]

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to the Court qualify for the grant of a patent. The Court then stated that an invention must not be the obvious or natural suggestion of what was previously known and if a person was able to make the invention based on the knowledge existing on the priority date, the invention would lack inventive step.

After considering the prior art in the case, the court stated that the patented invention was merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which was no more than a Workshop improvement . The invention, according to the court, was a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. According to the Court, the invention did not lie outside the Track of what was known before and it would have been obvious to any skilled worker in the field in the light of existing knowledge. As the invention involved a mere addition of a lever and bracket, which did not involve a substantial exercise of the inventive power or innovative faculty by the inventor, the Court stated that the invention was obvious.

Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application, the Court observed that the novelty of the invention was negated. In the light of its analysis, the court concluded that the invention lacked novelty and inventive step. This case can be considered to be the most important case in inventive step jurisprudence in India. Though the case was decided in 1978, the principles laid down in the case are followed even today and have been codified in the Indian Patent Act.

GENERAL PRINCIPLES APPLICABLE TO WORKING OF PATENT:

Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely,— [18]

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(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;

(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article; (c) that the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the 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;

(d) that patents granted do not impede protection of public health and nutrition and should act as instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India;

(e) that patents granted do not in any way prohibit Central Government in taking measures to protect public health;

(f) that the patent right is not abused by the patentee or person deriving title or interest on patent from the patentee, and the patentee or a person deriving title or interest on patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and

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(g) that patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public.

PATENT SYSTEM IN INDIA:

Intellectual Property Rights:

Intellectual Property Rights are statutory rights once granted allows the creator or owner of the intellectual property to exclude others from exploiting the same commercially for a given period of time. It allows the creator or owner to have the benefits from their work when these are exploited commercially. IPR are granted to an inventor or creator, designer in lieu of the discloser of his/her knowledge.

Governing Laws in India for IPR as follows:

1. Patent Act 1970 2. Trade Marks Act (1958 original) 1999 3. The Copyright Act 1957 4. The design Act 2000 5. Geographical Indication of Goods (Registration and Protection) Act 1999 6. Plant Variety and Farmers Right Protection Act 2001 [20]

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The term ‘Patent’ acquired statutory meaning in India when the Patents Act. 1970 was enacted.

Patent, under the Act, is granted by the Controller to the inventor for a period of 20 years. It is exclusive right to make use, exercise and vend his invention. The Patents (amendment) Act, 2005 defines patent under sction 2(m) as: “Patent” means a patent for any invention granted under this Act.

The Act conveys to the inventor substantive rights and secures to him the valuable monetary right which he can enforce for his own advantage either by using it himself or by conveying the privelges to others. He recieves something tangible; something which has present existinng value which protects him from some competition and is the source of gain and profit.

After the expiry of the period for which exclusive right is granted to the inventor, the invention canbe put to use by any person other than the one to whom a patent has been granted.

Patents issued by the Indian Patent Office confer upon the patent holder, whether product or process, an exclusive right, under which, no third party can exercise the patentee's right without the patentees consent. More specifically, the rights conferred, in respect of a product patent, are the act of making, using, offering for sale, selling or importing for those purposes the patented product in India and in respect of a process patent, the act of using that process, using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. Additionally, the product obtained by using the patented process is not one in respect of which no patent shall be granted under this Act. It means that no process patent will be granted if the resulting product is unpatentable under the Act. Such rights have been conferred by Section 48 of the Patents Act. However, patents granted in India are in addition

subject

to

the

conditions

specified [21]

in

Section

47,

which

are

as

follows:

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(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.

LEGAL PERSPECTIVE PERTAINING TO PATENT:

India notified the Patents (Amendment) Rules 2006, bringing in changes to provide transparency, decentralization of the functioning of patent offices and simplify the procedures making them userfriendly. As per the changes notified under the Patents (Amendment) Rules, 2006, patent applications are now to be mandatory published within one month after expiry of the statutory period of 18 months. In [22]

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case of request for an early publication, the application is to be published within one month from the date of request. This step will introduce an element of certainty regarding the date of publication, which was hitherto not available. Further, with a view to enforcing transparency and ensuring time bound disposal of patent applications, definitive time frames have been prescribed for various activities by the patent offices. A patent application now has to be referred to an examiner within one month of a request for its examination and the controller will be required to take a decision within one month of its

submission, it said, adding that the first examination report must be issued in six months of the date of request for examination of a patent.

LAWS, LEGISLATIONS & AGREEMENTS PERTAINIG TO PATENT

Patent Cooperation Treaty The Washington Diplomatic Conference on the Patent Cooperation Treaty was held in Washngton from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed on the last day of the conference on June 19, 1970. The Treaty entered into force on January 24, 1978, initially with 18 contracting states. The first international applications were filed on June 1, 1978. The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.

Patent Cooperation Treaty (PCT) 1970

The PCT enables patent protection for an invention to be sought simultaneously in member states designated by the applicant. An international search is conducted by one of the 10 major patent offices, of which Australia is one, and the report lists citations of prior art which are relevant to the novelty and the inventiveness of the application. [23]

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The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

A single filing of an international application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA).Finally, the relevant national or regional authorities administer matters related to the examination of application if provided by national law and issuance of patent.

A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority. In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.

The contracting states, the states which are parties to the PCT, constitute the International Patent Cooperation Union.

Patent Cooperation Treaty members: [24]

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Any contracting state to the Paris Convention for the protection of the Industrial Property can become a member of the PCT. A majority of the world's countries are signatories to the PCT, including all of the major industrialized countries with a few exceptions, including Argentina, Saudi Arabia, Taiwan and Iran. As of June 18, 2012, there were 146 contracting states to the PCT. Panama became the 146th contracting state on June 7, 2012, and the PCT entered into force for that country on September 7, 2012.

The main features of TRIPS relevant are:



The requirement to have a patent system to be a member of the WTO;



A minimum patent term set at 20 years;



The requirement to protect artificially developed new varieties of microorganisms through patents



No areas of technology are to be excluded from patent protection’ with the optional exceptions of medical methods for the treatment of humans, and of new life forms above the micro-organism level;

 The requirement to protect new plant varieties, within the patent system or with a

separate system of

breeder’s rights, or both;



The imposition of limitations to the application of compulsory licensing and government use of patents, and the



Requirement for adequate compensation; [25]

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

Reversal of the burden of proof for process patents, and prohibition of any distinction in patent rights based on whether goods are locally produced or imported; and



The requirement to develop a legal system for protecting trade secrets from unfair disclosure in accordance with



Principles of fair competition

Patent Law Treaty 2000

Recently, WIPO has been discussing the need for a Patent Law Treaty, After long negotiations, it was agreed that for the time being the treaty will not harmonize substantive issues such as threshold tests of novelty and inventive step but will harmonize mainly administrative issues such as filing procedures. The Law governing Patents in India is Patent Act, 1970 as amended in the years 1998, 1999, along with the Patent rules, 1972.

Patent Act doesn’t define the term Patent(section 2 (m)), it simply states that ‘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 and Chapters XVI, XVII, XVIII and Patents granted under Indian Patents and Designs Act, 1911. Patent act envisages that, ‘any invention that has a commercial application and which are not exempted [26]

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under this Act are eligible for grant of patent.

Patent Act, 1970

The Patent Act,1970 is a landmark in the industrial development of India. The basic philosophy of the Act is that the patents are granted to encourage inventions and to ensure that these inventions are workrd on the commercial scale without undue delay. The word invention has been defined under the Patent Act, 1970 as amended from the time to time. A Patent is an exclusive right granted by a country to the owner of an invention to make use, manufacture and market the invention provided the invention satisfies certain condition stipulated in the law exclusively.

The basic obligation in the area of patent is that the invention in all branches of technology whether products or processes shall be patentable, if they meet three tests of being new, involving an inventive state &

being capable of industrial application.

In addition to general security exemption which applies to the entire TRIPS Agreement specific exclusion are permissible from the scope of patentability of Inventions. The prevention of whose commercial exploitation is necessary to protect public order or morality, human, animal, plant, liffe or health or to avoid serious prejudice to the environment.

Comprehensive review of the Patent Act, 1970 was also made anda bill to amend the Patent Act, 1970 was introduced in Parliament on 20th december, 1999 and notified on 25th of June, 2002 to make Patent Law, TRIPS compatible. [27]

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India amended its Patent Act again in 2002 to meet the second set of obligations which had to take effect from 1st of January, 2000. This amendment provides for 20 years as the term of Pattent, reversal or burden of proof etc. came into force on 20th May, 2003.

The Indian Patents Act, 1970 and the Patent Rules, 2003 regulate the grant, the operative period, the revocation and infringement, etc., of the patents.

The Patent Act, 1970 has accordingly adopted the crieteria set out in the EPC for United Kingdom patents.

INFRINGEMENT

Patent means a standard patent or an innovation patent. Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. Patents are territorial, and infringement is only possible in a country where a patent is in force. For example, if a patent is filed in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to make the patented item in their country

A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent. Infringement of patent Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner's permission. If someone infringes your patent, you can take legal action and claim damages against them.

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If you have a granted patent for a product, you can mark that product as patented. This is known as displaying your patent rights. Showing your patent protection could deter others from using or accidentally infringing your patent without permission. It could also help you claim for damages if someone does infringe it. Even if your product is not marked, you can still take legal action for infringement.

A patent is infringed by any act that interferes with the full enjoyment of the monopoly granted to the patentee. This includes making, using and selling the invention. Infringement is determined by comparing the alleged infringement with the patent claims, as purposively construed. If the accused device takes all of the essential elements of the invention, there is infringement. An invention for a process is infringed by using the process or knowingly offering it for use, and disposing of, offering to dispose of, using, importing or keeping for disposal or otherwise a product obtained directly from the patented process (s. 60(1)(b) and (c) PA 1977).

Infringement can consist of taking away essential features of the patented invention; utilizing claimed features; copying patented substances; mechanical equivalence; taking part of the invention. while the patent is in force. Use by the government or for government purposes is not infringement. Such use must be paid for on terms to be agreed upon before or after use. Accidental or temporary use, use for research, use on foreign vessels, do not constitute infringement. 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 unauthorized 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 [29]

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What can amount to infringement?

(1) The colourable imitation .of an invention.

(2) Immaterial variation in the invention.

(3) Mechanical equivalents.

(4) Taking essential features of the invention.

To "infringe" means to encroach upon in a way that violates law or the rights of another. Thus, patent infringement means an encroachment upon the domain belonging to a patent owner that is described by the claims of the patent. Because a patent gives its owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention, patent rights may be compared to real property rights. The damages awarded to a patent owner against an infringer can be very large.

Chapter XVIII of the Indian Patents Act, 1970, deals with suits concerning infringement of patents. Under this Act, suits for an infringement of patent shall be instituted in a court not inferior to a District Court having jurisdiction to try the suit. But where the defendant files a counter-claim for revocation of the patent, the suit along with the counter-claim must be transferred to the High Court for decision. Thus, Indian law permits a challenge to registration in the infringement action in the form of asking for revocation. Other laws may require a separate challenge to registration or an application for revocation before either administrative authorities or the court. According to the provisions of the Indian Patents Act 1970, what constitutes infringement is not defined in the act. Therefore, any violations of the rights conferred on the patentee under the act may result in an infringement of patent. The Patent Act, 1970 expressly provides that the use by a person other than the patentee, patentee’s [30]

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assignee or licensee would be an infringement of the patent and as such illegal, leaving apart its use by Government for public purpose and the permissible use for research experiments or imparting knowledge to students.

Patent

Infringement

Suits

in

India

It is to be noted that Indian Limitations Act governs the period of limitation for bringing a suit for infringement of patent, which is three years from the date of infringement. A suit for patent infringement is required to be filed in a district court having jurisdiction to try the suit, the jurisdiction is governed by the Civil Procedure Code (C.P.C.) the cause of action must have arisen in a place within the jurisdiction of the court where the suit is to be filed. However, where the defendant counter claims revocation of the patent the suit along with the counter claim will be transferred to the High Court. The legal provision with regards to jurisdiction is provided in Section 104 of the Patents Act, which is as follows:

Section

104

Jurisdiction—

No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit:

Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

Additionally, in any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a new product or there is substantial likelihood that the identical product is made by the patented process and the patentee could not establish through reasonable efforts to determine the process actually used by the infringer, the court may direct the defendant to prove that the process used by him [31]

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to obtain the product, identical to the product of the patented process, is different from the patented process, 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. In considering whether a party has discharged the burden imposed upon him by sub-section (1) of Section 104(A), 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. In a suit for infringement under Section 104, the defendant of counter-claim for revocation of a Patent may revoke a Patent without any separate petition for revocation.

Section 104 (A) Burden of proof in case of suits concerning infringement.— (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:

(c) 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.

In Re. Hiralal Banjara A.I.R. 1937 [32]

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An assignee of a patent who has not registered the assignment under section 63 is not a patentee within the meaning of the Act; he has, therefore, no right to bring any suit for infringement of the patent.

Section 60: Meaning of infringement

This section is the first of a group (ss.60 to 71) relating to infringement.

Section 60 governs what constitutes infringement of a patent for an invention under the Act while the patent is in force. Its provisions also apply, to the extent defined by section 69, inrelation to a patent application under the Act which has been published but not granted. References to the proprietor of a patent are therefore to be construed as including references to the applicant. References to the proprietor are also to be construed as including references to an exclusive licensee and, in the case of two or more joint proprietors, are to be construed as set out in section 66.

Matrix Laboratories Limited V F. Hoffman, 2012 (1) CTC 381;(2012) 2 MLJ 221

Infringement of Patent- Territorial jurisdiction- Suit for infringement of Patent filed by Respondent in Madras High Court on the ground that revocation petition filed by them before IPA Board , ChennaiPlaintiff contended that mere filing of revocation petition before IPA board cannot grant territorial jurisdiction to Madras High Court-Held, filing of revocation petition in Chennai is by statutory compulsion-Mere filing of an application for revocation in IPA Board, Chennai cannot give rise to a cause of action for filing suit in Madras High Court.

A UK patent only protects you in the UK. To protect your invention in other countries you will need a patent in those countries. Otherwise, anyone can legally make, sell or use your invention abroad. [33]

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The UK Supreme Court has ruled that companies found to have infringed patents can rely on the subsequent amendment of patent claims to exonerate them from liability for damages. The Supreme Court made its ruling in a case involving Virgin Atlantic Airways and Zodiac Seats. patentees are likely to argue that if a defendant is allowed to continue their activities and the patent is found to be valid and infringed, the damage incurred by the patentee will be greater and more likely irreparable,". The Court of Appeal has determined in favour of Virgin issues essential to the existence of the cause of action for infringement of the unamended patent, which are the basis of the claim for damages," Lord Sumption said in the Supreme Court's ruling.

In the United Kingdom, a patent provides its proprietor with the right to exclude others from utilizing the invention claimed in that patent

Types of Patent Infringement

Patent infringement may be if the form of direct, indirect, or contributory infringement.

1 Direct Infringement

The working of a patented invention without the consent of the patent holder or without obtaining a license on the patent constitutes a direct infringement of the patent or the exclusive license of the patent. The Patent Law defines the meaning of working as follows depending upon the types of invention involved:

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(i) In case of a product invention, the acts of manufacturing, using, transferring, leasing or importing the product, or subscribing for the transfer or lease of the product (including the display for transfer or lease; hereinafter the same shall apply)

(ii) In case of a method invention, the act of using the method; and

(iii) In case of a method invention for manufacturing a product, in addition to the acts in above, the acts of using,

transferring, leasing or importing the product manufactured by means of such method, or subscribing for the transfer or lease of the product.

2 Indirect Infringement

If a person actively encourages another to make, use, or sell the invention, that person is liable for indirect infringement. Induced or indirect infringement involves the active inducement (encouragement) of infringement of a patent by others. For example, if a supplier sells an ingredient recommending that it be used for a given condition, such as to cause weight loss, and there is a patent covering the use of that ingredient to cause weight loss in persons taking the product, the supplier would have induced its customers to infringe the patent owner's patent, even though the supplier itself never used the product for weight-loss purposes.

In other words, if the supplier's label would lead customers to use the product in a manner that would infringe a use patent, or to combine the product with other ingredients to form a patented composition, then the supplier has induced infringement via its customers. While the inducement is typically found on labels or product brochures, it can also occur through oral statements made by sales personnel, or any other communication that would induce a customer or another person to infringe the patent in question.

3 Contributory Infringement [35]

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Contributory infringement of a patent occurs when a company offers to sell or sells a device that is a material part of a patented invention - but not the whole invention. Such a device has no other use other than be part of a more complex device that infringes an existing patent, and such device is not a staple article of commerce.

Supplying products which are staple articles of commerce is not an act of contributory infringement in and of itself, but it can become one if the supply is accompanied by an incentive to commit other infringing acts (manufacture, sale, offer for sale etc.). For example, where a patent on an active ingredient has expired but there still exists a patent on a specific formulation of said active ingredient, supplying said product will not be considered as an act of contributory infringement. However, if the supplier incites its client to manufacture the specific formulation which is still under patent protection, this could be considered as an act of contributory infringement. The burden of proof in such a case is on the patentee.

Contributory infringement exists only if an essential element of the invention is supplied. What is to be regarded as an essential element is a matter of fact. It is important to note that even if not all the means for implementing the invention are supplied or offered, there might still be contributory infringement. An example in the pharmaceutical field would include the supply of chemical intermediates of synthesis, if they comprise the essential structure of the final product.

The supply of products is not the only type of act leading to contributory infringement. For example, the offer to supply machines or devices capable of performing a patented process is also forbidden as are offers for supplying technical data such as, in the pharmaceutical field, CMC files.

Again, the burden of the proof that the supplier knows or cannot ignore that the supply or the offer is suitable and intended for implementing the invention is on the patentee.

A patent is infringed by any act that interferes with the full enjoyment of the monopoly granted to the patentee. This includes making, using and selling the invention. Infringement is determined by comparing the alleged infringement with the patent claims, as purposively construed. If the accused device takes all of the essential elements of the invention, there is infringement. An invention for a [36]

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process is infringed by using the process or knowingly offering it for use, and disposing of, offering to dispose of, using, importing or keeping for disposal or otherwise a product obtained directly from the patented process (s. 60(1)(b) and (c) PA 1977).

An invention for a product is infringed by making, disposing of, offering to dispose of, using, importing, or keeping for disposal or otherwise a product falling within the claims of the patent (s. 60(1)(a) PA 1977).

F.Hoffmann-La Roche Ltd, & Anr. V Cipla Ltd. 159 (2009) DLT234

Infringement of-Pharmaceutical product-Multiple Challenges to validity of patents-Grant of interim injunction-Plaintiff’s prayer for grant of an interim injunction, to restrain the Defendant/Respondent from manufacturing, offering for sale, selling and exporting the drug Erlotinib, for which the Plaintiff No.2 claimed to hold a patent jointly with Pfizer Products Inc. was declined by the Single Judge-Hence, the present appeal- Plaintiff contended that they hold a valid patent in respect of Erlotinib Hydrochloride (polymorphs A and B), which was not shown by the defendant to have been obtained by fraud and hence the plaintiff had made out a prima facie case of infringement and an injunction should automatically follow-Defendant contended that under the Patents Act,1970 there is no presumption of validity of a patent and multiple challenges to validity of patent can be sustained at the pre-grant and post-grant stages.

Held-Patent Act doesn’t contemplate multiple challenges to the validity of a patent. Mere registration of the patent does not guarantee its resistance to subsequent challenges.

An action for infringement can only be brought after grant of the patent, but damages can be recovered under Section 69 for infringing acts conducted after publication of the application, but before grant, provided those acts infringe the claims both as published and as granted, and provided the defendant can be shown to have been aware of the existence of the patent (or patent application). The protection conferred by publication of the application is known as provisional protection. Publication of European applications and Patent Cooperation Treaty (PCT) applications confers provisional protection in the same manner, provided the application is published in English. [37]

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Burden not on patentee in case of infringement

Where the subject-matter of patent is a process for obtaining a product, the defendant is 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:

(i)the subject-matter of the patent for obtaining a new product; or

(ii)there is a substantially 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.

Section 104 of the Patent Act, 1970 provides that a suit for infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. In appropriate cases, where the High Court has original jurisdiction to try the suit, the suit shall be instituted in the High Court. When an action for infringement has been instituted in a District Court and the defendants make a counter-claim for revocation. Section 104A provides for burden of proof in case of suits concerning infringement.

A Suit for infringement can be instituted only after the patent has been sealed. When a specification has been accepted and published, i.e, during the period when opposition has been called and is being decided, the applicant cannot institute a suit for infringement, but damages sustained due to the infringement committed during the period, i.e, between the date of publication of acceptance of complete specification and the date of grant may be claimed in another suit- a separate suit for damages but not a suit for infringement.

When the term of patent has expired and infringement occurred during the term of the patent, a suit can [38]

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be instituted during the term or even after the expiry of the term.

In case a patent had lapsed and was subsequently restored, no suit or other proceeding can be brought for infringement committed between the date of publication of application for restoration.

When a patent was obtained wrongfully by a person and later granted to the true and first inventor, no suit for infringement can be instituted for any infringement occuring before the period of such grant to the true and first inventor.

Prima facie proof of infringement

The plaintiff must first establish such facts as will satisfy the court that there are strong prima facie reasons for acting on the supposition that the patent is valid. The most cogent evidence for this purpose is either that there has been a previous trial in which the patent has been held to be valid, or that the patentee has worked annd enjoyed the patent for many yearswithout the disputes or may be that as between the parties, the plaintiff is relieved from the onus of establishing validity; as where the defendant has admitted it or is placed in his relationship to the plaintiff as to be estopped from denying it.

Acts not to be considered as infringement

(1) Any act of making constructing using, selling or importing a patented invention solely for use reasonably related to the development and submission of information required under any law for the time being in force in India, or in country other than India, that regulates the manufacture, construction, use, sale or import of any product. (2) Importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product.

WHO IS ENTITLED TO SUE [39]

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Only the person who has a right in the patent can institute a suit for infringement.

The following persons are entitled to sue-

(1) The patentee.

(2) The exclusive licensee if the license is registered.

(3) A compulsory licensee when the patentee refuses or neglects to institute proceedings.

(4) A licensee other than the above two licensees.

(5) Assignee.

(6) Co-owners of a patent.

Persons who can be sued (1) Person who infringes the patent that violates the monopoly right of patentee can be sued for infringement. (2)

When two or more persons jointly infringed the patent.

(3)

Agents and servants of a principal who is responsible for the infringement.

(4)

The consignees of an infringing article. [40]

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The onus is on the plaintiff to establish infringement.

REMEDIES

Whenever the monopoly rights of the patentee are violated, his rights are secured again by the Act through judicial intervention.

Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent, by an action for patent infringement in a United States federal court), although some countries such as France and Austria have criminal penalties for wanton infringement. Typically, the patent owner seeks monetary compensation for past infringement, and seeks an injunction that prohibits the defendant from engaging in future acts of infringement. To prove infringement, the patent owner must establish that the accused infringer practices all the requirements of at least one of the claims of the patent. An accused infringer has the right to challenge the validity of the patent allegedly being infringed in a countersuit. A patent can be found invalid on grounds described in the relevant patent laws, which vary between countries. Often, the grounds are a subset of requirements for patentability in the relevant country. Although an infringer is generally free to rely on any available ground of invalidity such as a prior publication, for example, some countries have sanctions to prevent the same validity questions being reiterated. An example is the UK Certificate of contested validity.

Patent licensing agreements are contracts in which the patent owner the licensor agrees to grant the licensee the right to make, use, sell, and/or import the claimed invention, usually in return for a royalty or other compensation. It is common for companies engaged in complex technical fields to enter into multiple license agreements associated with the production of a single product. Moreover, it is equally [41]

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common for competitors in such fields to license patents to each other under cross-licensing agreements in order to share the benefits of using each other's patented inventions.

The Patent Act, 1970 lays down thereliefs which the patentee is entitled to claim when his patent has been infringed. The Act prescribes that the civil remedy lies in institution of a suit in a court of competent jurisdiction. The prescription of relief in suits for infringement is based on the principle ‘where there is a wrong there is remedy’. The plaintiff on satisfying the Court about infringement of his patent would be entitled to suitable relief.

Whenever the monopoly rights of the patentee are violated, his rights are secured again by the Act through judicial intervention. The remedies available to a successful claimant in a private civil infringement action include: The patentee has to institute a suit for infringement. The patentee has to institute a suit for infringement.

The relief’s which may be awarded in such a suit are –

Interlocutory/ interim injunction

Damages or account of profits.

Permanent injunction

(1) Interlocutory/ interim injunction- An IP owner does not have to wait until it wins on liability at trial to secure an injunction: it can, in certain circumstances, obtain such an injunction on an interim emergency basis, usually pending a full trial of the matter.

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In M.R.F.Limited versus Metro Tyres Limited, 1990 The plaintiff sought an injunction restraining the defendant from selling autorikshaw tyres having prominent features of the tread pattern similar to that of the tread pattern of the autorikshaw tyres of the plaintiff. While granting injunction to the plaintiff, the Court observed that CS(OS)No. 1355/2006 Page 11 of 23 in India, all the tyres are black andcircular, the prominent distinguishing feature being the tread pattern and other featuresof arrangement. The Court felt that tread is an essential and integral part of the tyreitself performing purely a functional and utilitarian role.

The Court was of the view that unlike a wrapper, a label or a container, the tread was not something external to the tyre but it was an indivisible part. It was also observed that when a purchaser goes to purchase a scooter tyre manufactured by the plaintiff and that tyre is not available whereas the tyre of the defendant is available, the shopkeeper may point out the tread pattern in the tyre of the defendant and the purchaser may purchase the tyre having regard to the similarity of the tread pattern irrespective of the manufacturers. The Court felt that similarity of the tread pattern may also raise a presumption of common origin or close business association between the plaintiff and the defendant.

The Court was of the view that merely because the plaintiff had not secured registration of the design under the Designs Act or under the Patent Act, it cannot be said that the tread pattern of the plaintiff ‟s tyres could be copied by the defendant.

The Year 2008 saw several important decisions in the area of patent law, the most hotly-debated branch of intellectual property law in India. Each passing year brings further nuanced decisions in this area of the law. The landscape of decisions prior to 2008 was not particularly encouraging in respect of the grant of injunctions in patent cases. It was generally accepted that any sort of challenge to the validity of a patent would lead to the Court declining an interim injunction.

The cases of Bilcare v Amartara (2007, Delhi High Court), Bilcare v Associated Capsule (2007, Delhi High Court), Standipack Pvt. Ltd. v M/s Oswal Trading Co. Ltd.(2000, Delhi High [43]

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Court) and Garware v Mr. Kanoi (2006, Gujarat High Court) were among the important cases where interim injunctions were declined to patentees.

Against this backdrop, the Madras High Court decision in Bajaj Auto Ltd. v TVS Motor Company Ltd. (2008) was a refreshing change. The decision granted an interim injunction to the plaintiff, after examining the parameters for grant of an injunction in patent infringement cases.Bajaj Auto Limited filed a suit against TVS Motor Company Ltd for permanent injunction in respect of its registered patent titled “An improved Internal combustion engine working on a four stroke principle” under patent number 195904.

The said invention relates to combustion of lean air fuel mixture in small bore ranging from 45mm to 70mm internal combustion engine working on four stroke principle. TVS Motor Company filed a counterclaim of revocation citing prior art to render Bajaj’s patent invalid. Further TVS contended that the subject matter of the patent was now in the public domain as it was first registered in favour of a third party 20 years ago, and had now run its course.

The Honorable Madras High Court reiterated the basic principles of granting interim injunction as follows:

(i) The plaintiff must prove/show prima facie case that the patent is valid and infringed (ii) Balance of convenience is in favour of the plaintiff, and (iii) Irreparable loss that may be caused to the plaintiff by not granting an order of injunction. [44]

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The counsel for TVS argued that section 13(4) of the Patents Act, which provides that the grant of patent does not certify for its validity, precludes a determination that a prima facie case is made out merely because a patent has been registered. The counsel for Bajaj based his arguments on a harmonious construction of section 13 (4) and section 48 of the Patents Act, which provides for the exclusionary rights of a patentee against third parties in respect of the patented product or process. The Court granted Bajaj an interim injunction, holding that the classic tests for grant of an injunction were satisfied.

The Court reaffirmed the antiquated yardstick to ascertain the validity of a patent that is the “six-year” rule. The rule states that if a patent is more than six years old and there has been actual use of the patented product or process, presumption of validity of patent must be drawn. The court applying the test of adverse effect held that the question of whether a patent was “obvious” will have to be decided in an appropriate manner in a fully fledged trial. The Court held that at the interim stage, it is sufficient to show that the patent has prima facie novelty. In the present case, the Honorable Court was of the view that the tests of injunction were met and therefore an interim injunction was granted.

The Madras High Court in Mariappan v A.R. Safiullah (2008), considered the issue of whether a patent could be considered prima facie valid, by virtue of registration under the Patents Act. The provision in question was Section 13(4) of the Patents Act. In the facts of the case, the plaintiff was the registered owner of the patent for “food-grade laminated paper, method and apparatus for manufacture the laminated paper”. The plaintiff also held a design registration for the same product. The plaintiff filed a suit for permanent injunction restraining infringement of the plaintiff’s patent rights and design rights by the defendants. The defendants filed a counterclaim attacking the validity of the patent on the ground of lack of inventive step.

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The Honorable Court in the present case went into the lack of inventive step and laid down principles pertaining to the patentability of new substances produced by known methods from known materials as follows:

(i) An invention consisting of the production of a new substance from known materials by known methods cannot be held to be patentable subject-matter merely on the ground that the substances produced are new. This could lead to a situation where the substance produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge or of useful materials.

(ii) Such an invention may however be held to be patentable provided that the substances produced are not only new but also useful. This is subject to the qualification that the substances produced must be truly new, as opposed to being merely additional members of a known series. Their useful qualities must also be the inventor’s own discovery as opposed to mere verification by him of previous predictions.

(iii) Even where an invention consists of the production of further products belonging to a known series of products whose useful attributes have already been described or predicted, it may be patentable provided that the conditions for the grant of a selection patent are satisfied.

Then the Honorable division Bench went into the question of prima facie validity of a patent as provided under Section 13(4) of the Patents Act, 1970.

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In patent infringement actions, the courts should follow approach indicated in American Cyanamide. The governing principle is that the court should first consider whether, if the plaintiff were to succeed at trial, he could be adequately compensated by an award of damages for the loss sustained during the pendency of the hearing. If damages would be adequate and the defendant is in a financial position to pay them, then no interlocutory injunction ought to be granted.

If, on the contrary, it is found that the defendant could be compensated by way of damages at the final stages of the suit, and an undertaking for paying such damages would be an adequate remedy, then there would be no ground to refuse an interlocutory injunction. If there is doubt as to adequacy of respective remedies, then the question of balance of convenience arises.

The Courts should follow a rule of caution, and not always presume that patents are valid, especially if the defendant challenges the validity of the patent.

The standard applicable to judge a defendant’s challenge of a patent is whether the challenge is a genuine one, as opposed to a vexatious defense.

An interim injunction will be declined only if the challenge appears to be a genuine one. If the balance is approximately equal, the Court may consider the relative strength of each party’s case. The Court also opined that unlike cases involving infringement in relation to products, the Courts have to tread with care in the case of pharmaceutical products and more specifically when life-saving drugs are involved. The Court declined Roche an injunction on the ground that several unidentified members of the public may suffer as a result of the injunction, as Roche’s drug was priced much higher than Cipla’s drug. The

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Court considered the fact that patients who were already being treated with Cipla’s drug would be adversely affected if the injunction were to be granted.

The Court therefore held that the test of balance of convenience would have to take into account factors such as the likelihood of injury to unknown parties and the fact that there may be a risk of denial of remedies. The decision was subject to appeal proceedings, which are pending before a Honorable Division Bench of the Delhi High Court.

In summary, 2008 was an eventful year for patent law. The trend of declining interim injunctions to patentees continued in Roche. However the reasons for the refusal have now been better enunciated.

In Schneider Electric SA V Telemecanique Control Ltd., 2003 PTC 383 Del

In this case, the whole controversy for the limited purpose of the application for the interim injunction revolved around the point whether the plaitiff company is the rightful successor-in-interest of the Parent French Company LTE. The Court held that the plaintiff alone is the rightful successor-in-interest of LTE. Interim relief granted.

(2) Damages or account of profits.

The concept of damages is to provide monetary compensation to the patent holder for past infringements. Damages take the form of money paid by the infringer in an amount adequate to [48]

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compensate for the infringement but not less than what a reasonable royalty would be. The court or arbitrator may increase the damage award up to three times if it deems the infringement to be "willful and wanton."

Any law which provides protection to intellectual property and creates legal rights in it must necessarily provide remedies if the rights are infringed. Indian patents law has always had its roots in the UK patents law. However, unlike Great Britian where the concept of a patent originated from the exercise of Royal Prerogative to grant monopolies, in India a patent has always been the sole creation of statutes of Indian Legislature. The first Indian law relevant to patents was enacted in 1856 for grant of exclusive privileges to inventors.

This Act was however, found defective and was re-enacted in 1859. In 1872 the Patents and Designs Protection Act was passed followed by Inventions Act of 1883 and Inventions and Designs Act of 1888. Subsequently, Indian Patents Act and Designs Act, 1911 was passed which replaced all previous legislations. This Act established for the first time in India a system of patent administration under the management of Controller of Patents.

Account of profits

The purpose of this remedy is to deprive the infringer of the profits which he has improperly made by wrongful acts committed in breach of the patentee's rights and to transfer those profits to the patentee. The remedy is rarely used however because, unlike in Germany, the infringer may set off against gross revenue both direct costs and apportioned indirect costs (i.e. overheads).

English law has since at least the time of the Middle Ages provided a restitutionary remedy for the invasion of private property rights: the rights owner is entitled to deprive the infringer of the unjust enrichment that has accrued to him as a result of his unlawful activities. In the context of IPRs this leads to the remedy of an ac-count of profits being available: these are the defendant’s (and not the claimant’s) profits made as a result of his infringement. It is generally considered that an account of profits is not available for breach of confidence [49]

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In the UK, the patentee has a choice between either his lost profits or an account of the infringer's profits. In the first case the damages are intended to be compensatory; the second, restitutionary. In calculating the patentee's lost profits, the general rule is that the measure of damages is to be, as far as possible, that sum of money that will put the patentee in the position as he would have been in had there been no infringement. In calculating the infringer's profits, the purpose of the remedy is to deprive the infringer of the profits which he has wrongly made by his infringements and to transfer those profits to the patentee.

(3) Permanent injunction

• an award of costs • delivery up/destruction of infringing items and items used to make them • tracing orders

As an alternative to restitution, the IPR owner can seek the compensatory remedy of an award of damages. The aim of an award of damages is to compensate the IPR owner for the invasion of his rights: the award of a monetary sum is intended to put him back, as far as practicable, in the position he would have been in if there had been no infringement. The usual tortious rules as to remoteness and causation apply to limit the amount that can be recovered.

An IPR owner can not claim both an account of profits and damages: he must choose one or the other. In practice after the trial on liability has concluded, the successful IP owner is given a short period within which to make his election. Often this is done after there has been some disclosure by the unsuccessful infringer of basic financial information relating to the infringement, which is intended to enable the IP owner to make a more informed decision. Additional statutory damages can be awarded for copyright infringement which is flagrant.

Lost profits [50]

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The patentee can recover loss which was (i) foreseeable, (ii) caused by the infringement, and (iii) not excluded from recovery by public or social policy. Where the patentee has exploited his patent by manufacture and sale he can claim (a) lost profit on sales by the infringer that he would have made otherwise; (b) lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price; and (c) a reasonable royalty on sales by the infringer which he would not have made

Standipack Private Limited V Oswal Trading Co. Ltd.1999 PTC(19) (Del)

Provisional and complete specification-Revocation of – Plaintiff filed an application for temporary injunction restraining the defendant from manufacturing or using the patented porch of the plaintiff – Plaintiff filed the complete specification-Plaintiff filed the complete specification later then the date of application-Patent is taken as registered when complete specification are submitted-Post-dating of the patent can be done only to the date of filing of the complete specifications.

A claimant for infringement may be awarded a range of remedies (under section 61), depending on the facts of the particular case. Damages may be awarded to rectify financial harm suffered, an injunction may be granted to prevent further action by the infringer, an account of profits may be ordered, an order for the delivery up or destruction of infringing items may be made or a declaration that the patent is valid and infringed may be granted to the patentee. Both damages and an account of profits may not be ordered in respect of the same infringement. Limitations on damages or costs may apply under certain circumstances, for example if the defendant was unaware of the patent's existence or where the patent was subject to a transaction that was not registered at the Patent Office within 6 months

Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent, by an action for patent infringement in a United States federal court), although some countries (such as France and Austria) have criminal penalties for wanton infringement.[14] Typically, the patent owner seeks monetary compensation for past infringement, and seeks an injunction that prohibits the defendant from engaging in future acts of infringement. To prove infringement, the patent owner must establish that the accused infringer practises all the requirements of at least one of the claims of the patent. (In many jurisdictions the scope of the patent may not be limited to what is literally stated in the claims, for example due to the doctrine of equivalents).

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In regard to civil remedies from the court for patent infringement, it is possible to seek an injunctive order against

the infringement, demand damages, demand restitution for unjust enrichment, or seek measures for recovery of reputation on such infringement. Further, if the infringement case turns criminal, the alleged infringer may be found punishable as a result of court criminal procedures.

There are varieties of injunctive relief against patent infringement (Patent Law Article 100), and the action below may be taken;

Demand that the alleged infringer stop such infringement,

Demand that the person who acts in a way likely to infringe on the patent at issue take preventive measures, or

Demand the destruction of products constituting such infringement (including products resulting from the infringement of the invention to manufacture the product), the elimination of equipment used for such infringement, or any other measures necessary to prevent such infringement.

Of these options, it is only possible to demand (3) with (1) or (2). As for injunctive relief, no intent or negligence on the side of the infringer is required to exercise the right to demand these measures.

Moreover, in the event that the patent infringements have actually occurred, and if the problem is not immediately addressed irrecoverable damages could possibly be incurred therefrom, the patentee may before trial petition the court to issue a preliminary injunction order to stop such infringement.

With regard to patents, the remedies available consequent on a finding of patent infringement are specifically identified in section 47 of the Patents Act 1992 which states that [52]

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“the proprietor of the patent in respect of any act of infringement which he alleges is entitled to make a claim -

(a) for an injunction restraining the defendant from any apprehended act of such infringement;

(b) for an order requiring the defendant to deliver up or destroy any product covered by the patent in relation to which the patent is alleged to have been infringed or any article in which the product is inextricably comprised;

(c) for damages in respect of the alleged infringement;

(d) for an account of the profits derived by the defendant from the alleged infringement;

(e) for a declaration that the patent is valid and has been infringed by the defendant.

A plaintiff in patent infringement proceedings may claim damages in respect of such infringement under Section 47 (1) (c) or an account of profits derived by the defendant under Section 47 (1) (d). However a plaintiff cannot be awarded both damages and an account for lost profits as section 47 (2) makes clear: “The Court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.”

Irish courts will tend to follow the principles espoused by English case law, whereby damages tend to be compensatory and not punitive. The measure of damages is to be, so far as is possible, that sum of [53]

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money which will put the injured party in the same position as he would have been in if he had not sustained the wrong. A way of calculating damages in patent infringement proceedings is on the basis of the loss of profits by the proprietor.

In cases where the effect of the infringement is to divert sales from the owner of the patent to the infringer, the measure of damages will then normally be the profit which would have been realised by the owner of the patent if the sales had been made by him – The United Horse-Shoe Co. -v- John Stewart (1888) 13 AC 401. If it is not possible to calculate damages on a loss of profit basis, then it should be possible to be compensated on a “notional royalty basis”, i.e. the measure of damages payable will be the amount which the defendant would have paid by way of royalty to act legally instead of acting illegally.

In Smith, Kline & French Laboratories v Doncaster Pharmaceuticals [1989] FSB 401, damages were assessed on the basis of the difference between the price the infringer would have had to pay in order to lawfully import the products. It does not appear that a claim of exemplary damages is available to a plaintiff except in very exceptional circumstances

English law has since at least the time of the Middle Ages provided a restitutionary remedy for the invasion of private property rights: the rights owner is entitled to deprive the infringer of the unjust enrichment that has accrued to him as a result of his unlawful activities. In the context of IPRs this leads to the remedy of an ac-count

of profits being available: these are the defendant’s (and not the claimant’s) profits made as a result of his infringement. It is generally considered that an account of profits is not available for breach of confidence

Attorney General v Blake (Jonathan Cape Ltd, third party) [2000] All ER (D)

As an alternative to restitution, the IPR owner can seek the compensatory remedy of an award of [54]

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damages. The aim of an award of damages is to compensate the IPR owner for the invasion of his rights: the award of a monetary sum is intended to put him back, as far as practicable, in the position he would have been in if there had been no infringement. The usual tortious rules as to remoteness and causation apply to limit the amount that can be recovered.

Gerber Garment Technology Inc v Lectra Systems Ltd and another (1994) IP & T Digest 15

An IPR owner cannot claim both an account of profits and damages: he must choose one or the other. In practice after the trial on liability has concluded, the successful IP owner is given a short period within which to make his election. Often this is done after there has been some disclosure by the unsuccessful infringer of basic financial information relating to the infringement, which is intended to enable the IP owner to make a more informed decision. Additional statutory damages can be awarded for copyright infringement which is flagrant.

Period of limitation

The period a limitation for instituting a suit for patent infringement is three years from the date of infringement. Who is entitled to sue Only the person who has a right in the patent can institute a suit for infringement. The following persons are entitled to sue:(1) The patentee.

(2) The exclusive licensee if the licence is registered.

(3) A compulsory licensee when the patentee refuses or neglects to institute proceedings.

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(4) A licensee other than the above two licensees can bring an action for infringement upon the terms of the contract between the licensor and licensee.

(5) Assignee, he can sue only after the application for registration of the assignment in his favour has been filed. If a patent is assigned after the commencement of action,the assignee is to be joined as a coplaintiff. An assignee cannot sue for infringement which occurred prior to assignment.

The plaintiff is not obliged to give a notice to the defendant before instituting a suit. Court will issue a notice.

The patent laws "promote the Progress of Science and useful Arts" by rewarding innovation with a temporary monopoly. The monopoly is a property right; and like any property right, its boundaries should be clear. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in "full, clear, concise, and exact terms," as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor's exclusive rights

CONCLUSION

IPRs are essentially negative in character: they all confer on their owners the right to stop others doing certain things, without the rights owner’s consent. The practical manifestation of this ability to stop infringers is the prohibitory injunction. A prohibitory injunction is an order, made by a court, requiring a named individual or individuals to refrain from doing certain defined acts, which are the exclusive preserve of the IPR owner. In most IPR infringement cases the prohibitory injunction is by far and away the most important remedy in practice. [56]

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An IP owner does not have to wait until it wins on liability at trial to secure an injunction: it can, in certain circumstances, obtain such an injunction on an interim emergency basis, usually pending a full trial of the matter.

From the above discussion here we can conclude that, Patentability refers to the substantive conditions that must be met for a patent to be held valid. As patent laws are different in different countries, the patentability criteria also vary from country to country. The invention must satisfy the requirements under the context of a national or multinational body of law to be granted a patent. Although the patentability criteria differ from country to country depending on the law of the land, there exists some commonality between them. In order to be patentable, an invention must be novel, have utility, and differ from what skilled users might expect.

The consideration for grant of a patent monopoly are the working of the invention within the country so as to result in the establishment in the country of a new industry or an improvement of an existing industry which would profitably employ the labour and capital of the country and thus increase the national wealth, and disclosure to the public of the invention and the manner of its working so that on the expiry of the life of the patent the public are enabled to work the invention themselves and in comparison with each other.

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