The Patents (Amendment) Act, 2002 was passed by Parliament in May, 2002 and notified in June, 2003. The Act has been made effective from May, 2003 and has brought about lot of changes.
The salient features of the Patents (Amendment) Act 2002 are as follows:
A. Modification of term invention:
The Sec. 2 (1)(j) of Patent (Amendment) Act 2002, defines the term “invention” as “a new product or process involving an inventive step and capable of industrial application” Where “Inventive step” means a feature that makes the invention not obvious to person skilled in the art.
Earlier “invention” means any new and useful –
(i) Art, process, method or manner of manufacture;
(ii) Machine, apparatus or other article;
(iii) Substance produced by manufacture;
and includes any new and useful improvement of any of them, and an alleged invention.
B. Examination of application (Sec. 11(b)):
India has opted for a deferred examination system. This means the Controller will not initiate examination of the application. Examination of an application will now be taken up only upon request by applicant or in the Form 19 with fees of Rs.1000 for individual applicant or Rs. 3000 for legal entity other than an individual, at the appropriate office of the Patent office (Rule 24).
The request is to be made within forty-eight months from the application filing date. Where an application was filed prior to May 20, 2003 (i.e. before the commencement of the Patent (Amendment) Act 2002), a request for examination is required to be made within a period of twelve months from May 20, 2003 or forty-eight months from the filing date, whichever is later. Upon failure to request examination, the application shall be treated as withdrawn by the applicant. The applicant or agents can also withdraw the application at any time (before the grant of the patent) after filing the application.
C. Publication/Notification of the Application (Sec. 11 (a)):
After the expiry of 18 months from the date of filing or the date of priority whichever is earlier, the Controller will notify the contents of the applications falling within the provision in the Gazette of India Part-III Sec.2 (Rule 25).
D. Term of Patent (Sec.53):
The term of patent has been enlarged to twenty years for existing patents and patents granted on pending applications. This term is calculated from the date of filing of the application.
Earlier the term of patent for method or process of manufacture of substance (e.g. food, medicines, drugs etc.) was five years from the date of the sealing of the patent, or seven years from the date of patent whichever period is shorter and in respect of any other invention, fourteen years from the date of the patent.
E. Burden of proof (Sec. 104 A):
The burden of proof in a proceeding for process patent infringement has been reversed and imposed on Defendant.
F. Fees (First Schedule):
The fees for filing a new application for patents has been reduced from Rs. 1500 to Rs. 750 in the case of an individual applicant and from Rs. 5000 to Rs. 3000 in the case of legal entity.
G. Prohibition to apply abroad (Sec. 39):
No person shall file an application or patent for an invention without applying in India or without the written permission of the Central Govt. If the applicant is not interested to secure a patent in India or the invention is not patentable according to the Indian law, he has to mandatorilly file an application for the said invention and has to wait for the expiry of six weeks after filing the application and then only file the corresponding application abroad for the same invention.
H. Date of Patent (Sec. 45):
The date of every patent will be the date of filing the application for patent. According to The Patent Act 1970, the date of patent was the date of filing of complete specification. The date of patent is very important to determine the term of parent.
I. Rights of patentee (sec.48):
The rights can be consider as negative because the rights of patentee, in the case of product patent, prevent third parties without the consent of the patentee, from making, using, offering for sale, selling or importing into India and the rights in the case of process patent, prevent third parties without the consent of the patentee, from the act of using that process and offering for sale or selling in India or importing for those purposes the product obtain directly by that process, provided that the product obtained is not patentable under the Act.
J. The Powers of the Branch Office (Rule 4):
The branch offices of the Patent office have been vested with more powers. Under Sec. 68 the actions such as making a request of sealing of patents, registration of assignment (under Sec. 68) etc has to be made in the appropriate Branch offices of the Patent office and not at the Head Office as the case earlier.
K. Appellate Board (Sec. 2 (1a)):
Appeal Board appointed under the Trade and Merchandise Marks Act 1999 shall be the Appeal Board for purposes of Patents Act. This Appellate Board hears and decides appeals from the decision of the controller. The Head Quarter of the Appeal Board is to be in Chennai.
It is clear that the definition of term invention in Patent Act, 2002 has enlarged the scope of protection. The controller has also been vested with the power to consider the question of obviousness of the invention disclosed while conducting the examination of application for considering the grant of a patent for the invention. In this context it should be noted that in the Patent Act, 1970 the Controller has no direct power to consider the question of obviousness. The power is only for the opponents while opposing the draft of patents under Sec. 25 of the Patent Act, 1970. The effect of this amendment is that it may not be possible to get a patent for trivial modifications.
L. Time for placing the application in order for acceptance (Sec. 21):
The time frame for putting an application in order for acceptance subsequent to its first examination has been shortened to 12 months (non-extendible) from the date of First Examination Report (FER). The first reply to the first examination report is required to be made within 4 months of the date of its issuance.
M. Unity of Invention (Sec. 10(5)):
The concept of ‘unity of invention’ has been broadened to include a group of inventions linked so as to form a single inventive concept. The claims in a specification should relate to a single invention or a group of invention linked so as to form a single inventive concept. Now, by this amendment it may be possible to claim more than one process in a single application if these processes fall under one group and are closely linked.
N. Electronic Communication (Rule 6):
The documents can also be filed by electronic transmission duly authenticated. In that event the document should be clear, properly addressed and mailed and its original has to be submitted within fifteen days from the date of receipt of communication. The drawings can also be filed electronically.
O. Statement and Undertaking (Rule 12(4)):
For filing the Statement and Undertaking on Form 3 a provision has been provided to seek extension beyond three months.
P. Declaration of inventor-ship (Rule13 (6)):
The declaration of inventor ship on Form 5 should be filed along with the complete specification. An extension of one month beyond this period can be secured by filing a request on Form 4 with the fees Rs. 250/- pm if the applicant is an individual or Rs. 1000/- pm if the applicant is a legal entity.
Q. Abstract (Rule 13 (a) to (d)):
While filing the application accompanied with a complete specification, an abstract of the invention maximum 150 words have to be filed.
R. Application (Rule 20 (1)):
An application for patent corresponding to International application (PCT application) has to be filed on Form 1 A.
S. Licenses of right (Sec. 86 to 88):
The Provisions relating to “licenses of right” deleted.
T. Restoration of lapsed patent (Sec. 60):
The time for filing the request for restoration of the lapsed patent has been extended from one year to eighteen months.