The Patents (Amendment) Act 2002 was passed by Parliament in May 2002 and notified in June 2003. The Act came into force in May 2003 and has brought about many changes.
Outstanding Features:
The salient features of the Patents (Amendment) Act 2002 are as follows:
A. Modification of the term invention:
The second. 2 (1)(j) of the Patents (Amendment) Act 2002, defines the term “invention” as “a new product or process that involves an inventive step and is capable of industrial application” Where “inventive step” means a characteristic that makes the invention not obvious to the person skilled in the art.
The above “invention” means anything new and useful.
(i) Art, process, method or way of manufacturing;
(ii) machine, apparatus or other article;
(iii) Substance produced by manufacturing;
and includes any new and useful improvement of any of them, and an alleged invention.
B. Consideration of the application (Sec. 11(b)):
India has opted for a deferred examination system. This means that the Controller will not start the examination of the application. Examination of an application will now be conducted only upon request of the applicant or on Form 19 with fees of Rs 1000 for the individual applicant or Rs 3000 for the legal entity other than an individual, at the appropriate office of the Patent Office ( Rule 24).
The request must be made within forty-eight months from the date of filing the application. When an application was filed before May 20, 2003 (i.e., before the Patents (Amendment) Act, 2002 came into force), an application for examination is required to be made within a period of twelve months as of May 20, 2003 or forty-eight months from the filing date, whichever is later. If the exam is not requested, the application will be considered withdrawn by the applicant. The applicant or agents may also withdraw the application at any time (prior to the grant of the patent) after filing the application.
C. Publication/Notification of Application (Sec. 11(a)):
After the expiration of 18 months from the filing date or the priority date, whichever is earlier, the Controller shall notify the content of the applications included in the provision in the Gazette of India, Part III, Section 2 ( Rule 25).
D. Term of the Patent (Sec.53):
The patent term has been extended to twenty years for existing patents and patents granted on pending applications. This period is computed from the date of submission of the application.
Previously, the patent term for the method or process of manufacturing a substance (for example, food, medicine, drug, etc.) was five years from the date of patent sealing, or seven years from from the date of the patent, whichever period is shorter and in respect of any other invention, fourteen years from the date of the patent.
E. Burden of proof (Art. 104 A):
The burden of proof in a process patent infringement proceeding has been reversed and placed on the Defendant.
F. Rates (First List):
The fees for filing a new patent application have been reduced from Rs 1,500 to Rs 750 for an individual applicant and from Rs 5,000 to Rs 3,000 for a legal person.
G. Prohibition of applying abroad (Art. 39):
No person shall file an application or patent for an invention without applying in India or without the written permission of the Central Government. If the applicant is not interested in obtaining a patent in India or the invention is not patentable according to Indian law, then he or she must mandatorily file an application for the said invention and must wait for the expiration of six weeks after filing the application and then only file the corresponding foreign application for the same invention.
H. Patent Date (Sec. 45):
The date of all patents will be the filing date of the patent application. Under the 1970 Patent Act, the patent date was the filing date of the complete specification. The date of the patent is very important in determining the term of the parent.
I. Rights of the patent holder (art. 48):
The rights can be considered negative because the rights of the patent holder, in the case of the product patent, prevent third parties without the consent of the patent holder from manufacturing, using, offering for sale, selling or importing into India and rights in the case of a process patent, prevent third parties, without the consent of the patent holder, from using that process and offering for sale or selling in India or importing for such purposes the product obtained directly by that process, provided that the product obtained is not patentable under the Law.
J. The Branch Powers (Rule 4):
Branches of the Patent Office have been given more powers. Under Sec. 68, actions such as making a patent seal application, registration of assignment (according to Sec. 68), etc., must be carried out at the corresponding branches of the patent office and not at the central office as in the previous case.
K. Board of Appeals (Sec. 2 (1a)):
The Appeal Board appointed under the Trade Marks and Merchandise Act 1999 shall be the Appeal Board for the purposes of the Patents Act. This Appeals Board hears and decides appeals of the controller’s decision. The Appeal Board Headquarters will be in Chennai.
It is clear that the definition of the term invention in the 2002 Patent Law has broadened the scope of protection. The controller has also been invested with the power to consider the question of the obviousness of the disclosed invention while conducting the examination of the application to consider the grant of a patent for the invention. In this context, it should be noted that in the Patents Act 1970, the Controller has no direct power to consider the question of obviousness. The power is only for the opponents while they oppose the patent draft under Sec. 25 of the Patents Act of 1970. The effect of this amendment is that it may not be possible to obtain a patent for trivial modifications.
L. Time to put the application in order of acceptance (Art. 21):
The term for placing an application in order of admission after its first examination is reduced to 12 months (non-extendable) from the date of the First Examination Report (FER). The first response to the first examination report must be made within 4 months from the date of its issuance.
Mr. Unity of Invention (Sec. 10(5)):
The concept of ‘unit of invention’ has been extended to include a group of inventions linked to form a single inventive concept. The claims in a specification must relate to a single invention or a group of inventions linked to form a single inventive concept. Now, through this amendment, it is possible to claim more than one process in a single application if these processes belong to a group and are closely linked.
N. Electronic Communication (Rule 6):
Documents can also be submitted by electronic transmission duly legalized. In such a case, the document must be clear, duly addressed and sent, and its original must be presented within fifteen days following the date of receipt of the communication. Drawings can also be submitted electronically.
O. Declaration and Undertaking (Rule 12(4)):
For the presentation of the Declaration and Commitment in Form 3, a provision has been made to request an extension of more than three months.
P. Declaration of inventor-vessel (Rule 13 (6)):
The declaration of inventor ship in Form 5 must be submitted together with the complete specification. An extension of one month beyond this period can be secured by submitting an application on Form 4 with fees of Rs 250/pm if the applicant is an individual or Rs 1000/pm if the applicant is a legal entity.
Q. Summary (Rule 13 (a) to (d)):
When submitting the application accompanied by a complete specification, an abstract of the invention of a maximum of 150 words must be submitted.
A. Request (Rule 20 (1)):
A patent application corresponding to an international application (PCT application) must be filed on Form 1A.
S. Law licenses (Art. 86 to 88):
The Provisions relating to “licences of law” are eliminated.
T. Restoration of expired patent (Art. 60):
The term to present the request for restitution of the expired patent is extended from one year to eighteen months.
