INTELLECTUAL PROPERTY RIGHTS ASSIGNMENT 2017-18

Dr. SHAKUNTALA MISRA NATIONAL REHABILITATION UNIVERSITY, LUCKNOW

AN ASSIGNMENT

ON

A STUDY OF PATENT SYSTEM IN INDIA IN THE LIGHT OF PATENT COOPERATION

TREATY

UNDER THE SUPERVISION OF

SHAIL SHAKYA

SUBMITTED TO SUBMITTED BY

SHAIL SHAKYA VIDITA KATYAYINI PANDEY

ASSISTANT PROFESSOR B.COM.LLB (Hons.)
FACULTY OF LAW 5th SEMESTER (2017-18)
D.S.M.N.R.U D.S.M.N.R.U

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TABLE OF CONTENTS

1) INTRODUCTION3
1.1 Historical Background..3

2) PATENTABLE SUBJECT MATTER...4

2.1 Novelty.4
2.2 Non-Obviousness..4-5
2.3Industrial Utility5
2.4 Reasonableness.5

3) ESSENTIALS OF PATENT COOPERATION TREATY.6

3.1 Comparison of Indian Patent Law with Patent Cooperation Treaty6

4) INFRINGEMENT OF PATENT7
4.1 Types of Infringement..7
4.2 Prosecution History Estoppels..7
4.3 National Treatment Principle7-8

5) CONCLUSION....9

6) BIBLIOGRAPHY..10

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1. INTRODUCTION

Human being is supposed to get the benefits of his labour whether it is physical or mental in
nature. As the society advanced the intellectual inputs gained more importance as compare to
the physical labour. It becomes very important to praise a person for his invention and provide
him some benefit for his contribution and to praise everyone else to do inventions for the
betterment of the society. An Intellectual Property Right is a right in relation to a product of a
mind. The right is based on something which is intangible in nature and that as per prevalent
ideology it is considered to be private in nature. The right which is provided is an exclusive
right as it is the right in rem which is enforceable against anyone.

Patent is a kind of certificate which is provided to those people who make invention. Invention
means which is described under Indian Patent Act, 1970 as an inventive step which is capable
of industrial use and that invention should not be invented elsewhere in the world in order to
be categorized as a New Invention1. New invention means the invention which has substantial
difference with the application of human mind it should not be mere discovery. Patent
certificate are given in order to promote inventions and the main aim of Indian Patent law is to
give benefits to the patent holder before his invention comes in public domain.

1.1 HISTORICAL BACKGROUND

India was under British rule for a long period. Law in British India was modeled on the lines
of British Law. In England, A Venetian law of 1474 provided a system for granting ten year
privilege to inventors of new arts and machines. Statutes of Monopolies, 1624 allowed patent
monopolies for 14 years. The industrial Revolution in Britain brought many changes in the law
relating to Patents2

In the era of nineteenth century new inventions in the field of art, process, method or manner
of manufacture, machinery, apparatuses and other substances, produced by manufacturers were
on the increase and the inventors became very much interested that the inventions done by
them should not be infringed by anyone else by copying them or by adopting the methods used
by them. In order to save the interests of inventors the then British rulers enacted the Indian
Patent and Design Act, 1911 (2of1911). Since then due to substantial changes in the political
and economical conditions of the country, it was found desirable to enact comprehensive law
on the subject3.

1
Refer to S. 2(l) of Indian Patent Act, 1970(Act 15 of 2005)
2
Dr. S.R. Myneni, Law of Intellectual Property 439 (Asia Law House, Hyderabad, 7th edn., 2014).
3
Introduction to Indian Patent Act, 1970(Act 15 of 2005)

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2. PATENTABLE SUBJECT MATTER

It is a statutory grant conferring exclusive right to manufacture the patented product according
to the patented process for a limited period of time, that is, a period of 20 years 4. There are
certain condition which needs to be fulfilled in order to get obtain a patent on certain inventions.
In addition to the conditions stated, a patent will be granted only where the invention is not an
excluded category under section 3 and 4 of the Indian Patent Act, 1970. A patent should stand
on the following grounds:

(a) Novelty.
(b) Non-Obviousness or Inventiveness.
(c) Industrial Utility.
(d) Reasonableness.
2.1 NOVELTY

Novelty means newness. Novelty is determined through extensive literatures and patent
searches5. Novelty is the most important criteria to check whether the invention in the field of
art, process, manner of manufacture etc, is new or not. Novelty is assessed in a global context
in order to grant patent.

In the case of Catnic Components v. C. Evans & Co.6 This case is related to discovery of
Lintel. Catnic Components claimed the patent for this and they were granted the patent by
U.S.P.T.O. But the patent was challenged by the C. Evans & Co. as they were already
manufacturing the lintel before ten years. Therefore, they asked for the cancellation of the
patent granted to Catnic Components as it already exists in prior art thereby defeating the
criteria of Novelty. The Court held that utility of lintel manufactured by Catnic Components
already exists in prior art for the result of which C. Evans was already manufacturing it.
Therefore, patent to Catnic Components is invalid.

2.2 NON-OBVIOUSNESS

Non-Obviousness is also known as inventiveness. In order to get patent granted an invention

should be non-obvious or else it is not an invention. It should have definite skill to carry out
complete specifications. A person can obvious if he anticipate it by use or claimed
specifications falls in prior art.

In the case of KSR v. Teleflex7, this case is based on the criteria of non-obviousness. In order
to increase the ability of the engine KSR started producing shaft paddle by slide modifications.

4
http://icrier.org/pdf/wp166.pdf (Lat visited on 13/11/2016 at 9:02PM)
5
Krishan Keshav, Intellectual Property Rights 242 (Singhal Law Publications, Delhi, 4th edn., 2009)
6
1983 FSR 512
7
550 U.S. 398

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On the other hand Teleflex submitted that it is an infringement of patent while KSR submitted
that it is anticipation by use. Walter Abele Free Man Test was propounded in the present case
which is popularly known as Teaching-Suggestion-Motivation test .U.S. Court regarding the
dispute held

i) That the Teaching-Suggestion-Motivation test should be look entirely.

ii) That a specification if enables a Phosita (person having ordinary skill in art) to carry out the
improvement there is no infringement on the ground that similar invention does not exist.

iii) The Court held that in any enabling disclosure the Phosita differentiates with the invention.

iv) That if the specification enables by Teaching-Suggestion-Motivation to carry out

improvement in existing invention there is no infringement of patent. Therefore, the Court said
that there is a requirement of differentiated category of Phosita.

2.3INDUSTRIAL UTILITY

Industrial Utility simply means that the invention should be exploitable. Patent to be qualify
the process it should be of industrial utility.

In the case of Brenner v. Mason8, Brenner was engaged in performing some experiment on
steroids. He derived Alpha Steroid by altering the composition and submitted that alpha steroid
is useful. Manson on the other hand claimed that the set chemical compound is already known
and patented in his name. As Steroid lacks Industrial Utility thereby not fit to be granted a
patent. Court Held:

i) That the Brenner was unable to identify the utility of alpha Steroid.

ii) That an inventor should always desirable the way an invention should be used. As the alpha
steroid does not have industrial utility thereby not qualifying for patentability.

2.4 REASONABLENESS

In order to qualify for the process of patent reasonableness is one of the ground on which the
patent should stand affirmative. The invention for which the patent has been claimed should
involved application of human mind with the substantial changes as required. Anything which
is already existing in nature and if someone claims patent for that the patent shall not stand as
it is only a mere discovery of naturally existing things.

Any invention is given patent but the country may exclude some on the ground of public
morality, national security, health at any time.

8
383 U.S. 519 (1966)

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3. ESSENTIALS OF PATENT COOPERATION TREATY

The Patent Cooperation Treaty was completed on June 19th, 1970 and entered into force only
on January 24th, 1978. This is a special agreement under the Paris Union and is open to any
country that is a member of the Paris Union. The Nations which are members of the Union of
the States for cooperation in the filing, searching and examination of applications for the
protection of inventions, and for rendering special technical services get benefited. This treaty
facilitates the filing of separate applications in the member countries9.

The Patent Cooperation Treaty makes it possible to seek protection for an invention
simultaneously in each of a large number of countries by filing an international patent
application an application may be filed by anyone who is a national or resident of a contracting
state. It may generally be filed with the national patent office of the contracting State of which
the applicant is a national or resident or, at the applicants option, with the International Bureau
of WIPO in Geneva and so on at other locations.

3.1 COMPARISON OF INDIAN PATENT LAW WITH PATENT COOPERATION TREATY

Indian Patent Laws are made in compliance with the various International Treaties governing
the Patent System one of which is Patent Cooperation Treaty. As patent is International Issue
and India being a member to it, is responsible to maintain the standards which needs to be
maintain according to the norms of the International Treaties.

Fundamental to patent law is the requirement of a disclosure of an invention sufficient to enable

one skilled in the field to reproduce it. Normally it is done by written disclosure containing all
the required specifications. The Patent Cooperation Treaty created a Union. The Union is has
an Assembly. Every State party to the Patent Cooperation Treaty is a member of the Assembly.
Among the most important tasks of the Assembly are the amendments of the regulations issued
under the Treaty, the adoption of the biennial program and budget of the Union, and the fixing
of certain fees connected with the use of Patent Cooperation Treaty system.

In Short Indian Patent laws are subjected to the various International Treaties and are bound
for the amendments as per the changes in the International Treaties in order to remain as the
member of the Assembly.

9
Dr. S.R. Myneni, Law of Intellectual Property 432 (Asia Law House, Hyderabad, 7th edn., 2014).

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4. INFRINGEMENT OF PATENT

Patents law deals with the protection conferred upon the inventions. Under the Patent law,
certain kinds of exclusive privileges are granted to the inventor for a specified period of time.
According to the World Intellectual Property Organisation (WIPO), Patent law is a legal
framework that establishes a system which supports and encourages technological inventions
and promotes economic development10.

As provided under section 48 of the Indian Patent Act that a patent holder has the exclusive
right to prevent the third party from the act of making, using, offering for sale, selling for those
purposes that product in India. But there is an exception to it, in the case of experimental use
the exclusive right of the patent holder is not violated but on the condition that the experiment
is not marketed.

4.1 TYPES OF INFRINGEMENT

There are mainly three kinds of Infringement:

a) Literal Infringement.

If an invention is based on literal interpretation of specification it is literal infringement of

patent which is redressable by civil Court11.

b) Infringement in Pith and Marrow

Pith and Marrow is define as, where the function is same and result is also same. In other words
the basic substantial feature of an invention12.

c) Infringement in Equivalents.

Equivalent means the function and way of performance is derived either through
Specification or Phosita. It should not be mere absolute identity for equivalent13.

4.2 PROSECUTION HISTORY ESTOPPEL

It means that if a person has once prosecuted for a patent of an invention then that person cannot
prosecute again for the same invention14. It is similar to section 11 of Code of Civil Procedure.

4.3 NATIONAL TREATMENT PRINCIPLE

10
Ananth Padmanabhan, Intellectual Property Rights Infringement and Remedies449 (Lexis Nexis Butterworths
Wadhwa, Nagpur, 1st edn., 2012)
11
Graver Tank & Manufacturing v. Linda Air Products Co., 339U.S. 605
12
Improver Corporation v. Remington Consumer Product Ltd [1990] F.S.R. 181
13
Warner Jenkinson Co. v. Hilton Davis Chemical Co. , 520 U.S. 17
14
Ibid

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The principle of National Treatment Principle says that if once an application is filed in India
by a person non-resident of India and if it accepted by the controller of patent then that case
will be treated as an Indian person. It is because of conflict of Jurisdiction.

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5. CONCLUSION

The main of patent law not in India only but throughout the world is to identify the intellect in
an individual and thereby protecting the intellectual property and promoting the invention in
their valuable form. It not only provides benefit to the patent holder but also provides the
benefit to the public at large. Indian Patent law is working on the standards and norms laid
down in various International Treaties in order to protect the intellectual property.

The areas of further improvement in the Indian Patent Law:

1. Although the Act is protecting the inventions in its original form as per the International
Obligations but in some part the implementation needs to be performed in more effective way.

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6. BIBLIOGRAPHY

PRIMARY SOURCES

STATUTES

1. THE PATENT ACT, 1970 (ACT 15 OF 2005)

2. PATENT COOPERATION TREATY

SECONDARY SOURCES

JOURNALS & MANUALS

1. PURI MAHIMA & VARMA ANJALI, INTELLECTUAL PROPERTY CONVENTIONS AND

INDIAN LAW (JULY 2005).

2. A MANUAL ON INTELLECTUAL PROPERTY RIGHTS, (BIRLA INSTITUTE OF

TECHNOLOGY & SCIENCES)

BOOKS

1. Dr. MYNENI S.R., LAW OF INTELLECTUAL PROPERTY, (ASIA LAW HOUSE, 7TH Edn.)

2. PADMANABHAN ANANTH, INTELLECTUAL PROPERTY RIGHTS INFRINGEMENT AND

REMEDIES, (LEXIS NEXIS, 1ST Edn.)

3. KESHAV KRISHAN, INTELLECTUAL PROPERTY RIGHTS, (SINGHAL LAW

PUBLICATIONS, DELHI, 4TH Edn., 2009 )

WEBSITES

1. www.judis.nic.in

2. www.indiankannon.com

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