Patentability Criteria in

INDIA & US .

ASHUTOSH
Patent Policy
 CONVERGENCE


vIndian & US Patent Laws are converging

 on substantive aspects of patentability
 criteria.

Patentability Criteria
v
v
v
vNovelty
 - Prior art based


vIndian Patent Offices – rely on prior art



vUSPTO now insists on Prior Art Disclosure as

compulsory –

Patentability Criteria
 Non-obviousness / inventive step


vIndia liberal on obviousness



vUS was liberal on obviousness but now

it is behaving bit exceptionally rigid
after some specific cases.

Patentability
 USA


 “Anything under the sun involving manual

intervention”.


INDIA
“INVENTIONS not PATENTABLE”

3(a) TO 3(p)

3(d) New Forms without enhanced efficancy.

3(p) Traditional Knowledge.


Non-patentability
 Compulsory for microorganisms and life
forms including plants –


v Disclosure of Origin (Budapest Treaty)

v Benefit Sharing
v Biodiversity Act

(The Biological Diversity Act, 2002)
Plant Patentability


US - Plant Patents

India - Plant Varieties Protection Act

 (
The Protection of Plant Varieties and Farmers Rights Act, 2001
(http://agricoop.nic.in)
Patentability Criteria


Anticipation –
India - rigid on single Prior art-based

anticipation
Insists “mosaic” of Prior arts are not

“anticipation”
PCT/US - Often cites close prior arts as

affecting Patentability
Unity of Invention


 India – more liberal on

 group of inventions


USPTO – very restrictive

Insists on electing one invention / Filing

Divisionals


 Even Process / Composition / use as

separate inventions
Timelines

 India – Rigid on extensions

 Normally extensions not granted


 US – very liberal
 protracted prosecution
 Court order based fast tracking
Publication / Public Domain
Information
India – Bibliography


US/EU – Full Patent



US – Total Transparency – “Public Pair”

EU – Legal Status

 Patent Family
Patent Office Procedures

India – Post dating

(allows) Complete to Provisional

 Cognates
 Addition Patents


US – Liberal procedures

(allows) C.I.Ps

 Amendments / RCE
US vs. INDIA

US grants
4Patent Term extensions/adjustments
4Data Exclusivity
4Orange Book Listings
4180 Day Exclusivity
4
INDIA does not grant any of above
Indian Patent/Regulatory

Unlike USA/Europe, the Patent



Regulatory link has not been

formalised.


Generic launch friendly Indian policy


Oppositions
USA –
Opportunity to protest “Amicus Curie” in

litigation


India–
Pre-grant Opposition

Post-grant Opposition

Counterclaim for Revocation

Government use option

Research Exemptions


India –
Research & Educational Exemptions

More liberal & broad

Sec. 47A – Educational

Sec. 107A – Research for ANDA

Compulsory Licence
USA –
28 USC 1498

India –
Sec. 63 to 94 & 92A

Govt. use – Sec. 99 to 103


THANK YOU