NEW PATENT RULES IN INDIA.

Regulations revised to avoid Patent delays 

The Government on May 11, 2006 ushered in a shorter timeframe for processing patent applications by notifying the Patent (Amendment) Rules, 2006. The new rules bring in more transparency, decentralization of the functioning of Patent offices and simplify various procedures associated with grant of Patent applications. The move follows introduction of product patents in line with India’s commitment to the World Trade Organization (WTO). 

As per the changes notified under the Patents (Amendment) Rules, 2006, patent Applications are now to be published within one month after expiry of the statutory period of 18 months. 

In case of request for an early publication, the application is to be published within one month from the date of request. The step will introduce an element of certainty regarding the date of publication. 

Further, with a view to enforcing transparency and ensuring time bound disposal of patent applications, definitive timeframes have been prescribed for various activities of 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 the submission, and the first examination report must be issued in six months of the date of request for examination of a patent. 

In order to decentralize as well as facilitate the patent administration, all patent related activities can now be performed by all the Patent Offices at Kolkata, Chennai, Delhi and Mumbai. The time for granting permission to file Patents abroad has been reduced to just 21 days. 

Seeking to make the system more use-friendly, the timeframe available for applicants and the public has also been extended. Accordingly, the timeframe for making a request for examination has been extended from 36 to 48 months while the time for filing a pre-grant opposition extended from three to six months and the time for filing reply to pre-grant opposition has been extended from one to three months and that for meeting the requirements of the First Examination Report increased to 12 months.

NEW PATENT LAWS IN INDIA

As India is a member of the World Trade Organization and has to have a new patent law to fulfill the obligations under the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement), the new law, has come into force on January 1, 2005. India became a member of the Paris Convention and the Patent Coop-Treaty (PCT) with effect from December 7, 1998. Since then, two amendments, one in April 1999 and the other in May 2002, were enacted. The third is the last amendment before a new Indian Patent Act is created.

The procedures for grant of patents have also been simplified and rationalized. The salient objectives of the Bill are the following:-

1. Introduce the product patent regime for all inventions
2. To delete the provisions relating to Exclusive Marketing Rights which will become redundant with the advent of the Product Patent regime.
3. To introduce the provision of grant of Compulsory Licenses to supply drugs to countries which have no manufacturing capacities to meet their acute public health problems as per the TRIPS Agreement on the DOHA Declaration on Public Health, and to strengthen issues related to national security.

Nearly 12,000 patent applications, a majority of them from multinational pharma companies, have been taken out for processing by the government on January 1, as the government has complied with its WTO obligations by issuing an Ordinance to bring about product patents for chemicals, agrochemicals and food sectors. The applications have been lying in the ‘mailbox’ provided by the government for submission of applications in the run-up to the introduction of product patents. Patents registrations, based on the mailbox applications, would be awarded only with prospective effect. The patent will be available from the day of award and not the day of application. The new proviso introduced to circumscribe rights in respect of mailbox applications to prospective effect will protect local manufacturers from unfair charges.

PATENTS EXTENDED TO PHARMA, CHEMICALS & FOOD.

Patents would be granted only prospectively and the protection will be valid for 20 years from the date of application. Producers of generic drugs can continue to sell them till the innovator gets a patent. There is also a provision to grant compulsory license to an Indian Company to produce and export a drug under patent to countries with insufficient or no manufacturing capacity to meet a public health needs. Compulsory licenses would be issued to a local drug firm to manufacture a patented drug if the patented invention is not available for public at “reasonably affordable price and if the patent holder has not worked in the territory of India”.

The government has reserved the right to issue compulsory licenses under certain conditions during the three-year grace period from grant of patent. The government also has the power to acquire a patent to meet a national requirement. The Ordinance also facilitates production and marketing of patented products immediately after expiry of a patent by permitting preparatory action by non-patentees during life of a Patent. Also, parallel imports to make a drug available at the lowest international price, has been allowed. Imports alone will not suffice the working of a patent and local protection is mandatory. Provisions relating to processing have been streamlined and simplified procedures will ensure processing within four years against the current processing period of about eight years.

EMBEDDED SOFTWARE GETS PATENT PROTECTION

The government had decided to allow patent protection for embedded software. As of now, software applications embedded in hardware were provided only copyright protection. The ordinance issued by the government, to comply with India’s commitment to WTO, provides for award of patents to software embedded in hardware applications, like mobile phones, TVs and computers and provisions relating to patenting of software-related inventions, when they are in combination with hardware, have been modified. The facility is available for these inventions when they have technical applications to industry. The modification will help the Indian industry, which is strong in software, to protect its intellectual property rights.