Feb 27, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Parallel Import is an important topic related to Exhaustion of Rights principle whereby the right holders’ IP rights in respect of a product are considered exhausted (i.e. he no longer can exercise any rights) when that product has been put on the market by the IP holder, or by an authorized party. After a patented product has been sold by the patentee or by others with the consent of the patentee, the IP right is said to be exhausted. It can no longer be exercised by the owner of the patent or patentee.
For example, if an inventor obtains a patent on a new oximeter, the inventor can exercise his rights and legally prohibit other companies from making, using, selling, offering for same and even importing such oximeter in the territory where he has patent protection, but cannot prohibit customers who have bought this oximeter from the patent owner from reselling it to third parties.
U/S 107A, [Certain acts not to be considered as infringement], importation of patented products by any person from a person, who is duly authorized under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights. Therefore, it is possible to import the patented products from the licensee of the patentee in any country without the permission of the Patentee.
The purpose of Parallel import is to check the abuse of patent rights and to control the price of patented product by taking away the monopolistic power of the patent holder. Parallel import (also called grey market imports) is not unauthorized, unofficial or illegal sale, nor it the sale of pirated and counterfeited products, rather parallel imports are genuine, often branded, products that do not violate an IP right and legal in most of the nations.
Illustration
Suppose a company called Blue Pharma has a patent for a drug in India. This company has licensed its patent to red Pharma in Russia. Here Blue Pharma is Patentee while Red Pharma is Licensee and is authorized by patentee to see the drug. Now Green pharma in India, buys the drug from Red Pharma and imports to India. Even though Blue pharma has patent rights in India and it can prevent Green pharma from importing the drug in India, as principle of exhaustion of patent rights comes into picture. Since Green Pharma is buying and getting drug imported from Red Pharma where red pharma is duly authorized under the law to produce and sell or distribute the product, importation of drug by green pharma in India shall not be considered as an infringement of patent rights.
Parallel import is helpful in controlling prices of the goods and prevents patentee from abusing his/her patent rights.
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Feb 25, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Inventor has been given a special emphasis and privileges in patent law. This makes it important for the right person to be called as inventor to file patent application. That’s why the term True and first inventor has been used in the act. True and first inventor, under section 2 of Indian Patents Act 1970 is a person who invents an invention for the first time himself and is an inventor in real sense.
“True and first inventor” does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India.
In V.B. Mohd Ibrahim v. Alfred Schafrank, it was held that a person, such as a financial partner, who has not contributed any skill or technical knowledge towards the invention cannot be said to have any capacity to invent, and hence cannot be said to be the inventor.
Section 6 [Persons entitled to apply for patents] describes the persons who can apply for a patent. An application for a patent may be made by any of the following persons:
(a) By any person claiming to be the true and first inventor of the invention. However, “true and first inventor” does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India. The person shall in true sense be the first and true inventor and shall get credit for the invention; hence the patent shall be filed by him.
(b) By assignee of the person claiming to be the true and first inventor in respect of the right to make such an application. The assignee can further assign invention to any other party and after such assignment such other party becomes assignee. Such assignee can also file the patent application [Section 2 (1)(ab)].
(c) By the legal representative of any deceased person who immediately before his death was entitled to make such an application. Legal representative means a person who in law represents the estate of a deceased person [Section 2 (1)(k)]. In case the application is filed by the legal representative of a deceased person, death certificate along with other appropriate legal instruments as proof of right shall be filed along with the application.
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Feb 24, 2023 | Contracts, Indian Patents Act 1970, IPR & Business, Patent, Startups
Indian patent law allows more than one person to come together and apply jointly for a patent. Upon grant of such patent, these applicants become joint/co-owners of the granted patent. Co-ownership of a patent might be unavoidable in certain scenarios when more than two parties have jointly invested or have common interests with respect to commercialisation of the patented product. Applicants who have joint ownership of a patent should be aware of the risks & legal ramifications involved because joint ownerships involve a great deal of shared investment and experience, both of which may be wasted if the applicants are not aware of risks and legal implications.
Co-ownership of a patent is dealt under sections 50 and 51 of the Indian Patents Act, 1970. Section 50 [Rights of co-owners of patents] lists out the rights of the joint owners as below:
- Each co-owner is entitled to an equal and undivided share in the patent, unless there is an agreement to the contrary. Co-owners may be two or more and they shall own equal share in the patent, by default. However, this equal share in the patent may be changed by executing an agreement where there is a clear mention of share each co-owner holds.
- Each co-owner is entitled to equal patent rights, as mentioned Section-48 [right of patentee], for his own benefit without accounting to the other person or persons. Each co-owner can independently commercialise the patent without seeking permission of other co-owner (s).
- If a patented article is sold by one of the co-owners, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.
As stated above, when a patent is jointly owned, all joint owners can commercialise the patent independently without consulting the other co-owners; however, a license for such patent shall not be granted to any third party by any of the co-owners without consent of the other co-owners. Further, a share in the patent shall not be assigned by one of the owners without consent of the other co-owners or joint owners. If proper care is not taken with respect to this clause while entering into a joint ownership of a patent, this may lead to dispute amongst the co-owners. Further, when a patented technology is sold by any one of the co-owners of the patent, the right that the buyer of the property acquires in the technology will be the same rights he would have acquired if the patent were not jointly held.
A patent shall be treated as a movable property (property that can be moved from one place to another) and rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents. Movable property includes personal items such as clothing, jewellery, household goods such as furniture, decorative items and appliances and so on. For better understanding, let us take the following example.
Let us consider a situation where a patent has two joint owners: A and B. According to Indian Patents Act, 1970 both of them have an equal and undivided share in the patent and both of them can exercise the rights granted to them under section 48 of the Act on their own without accounting or waiting for the other’s consent. Here, the patent should be handled like a movable property for the purposes of ownership and devolution of patent rights.
Though co-owners can enjoy equal patent rights and privileges, the problem starts when one of them wishes to assign or license the patent. If a patent has to be licensed in India, it has to be written, duly executed and registered. If A wants to license the patent to someone, A must obtain B’s permission. If B is not willing to consent to such licensing, the situation becomes complicated. In such circumstances A is left with only one option. A has to approach the Controller, seeking his power to direct B to agree to the licensing under Section 51 (1) of the Indian Patents Act 1970. This section empowers the Controller to give directions to joint owners regarding the sale or lease of the patent, grant of licenses etc. Powers of the Controller to give directions to co-owner in case of sale or lease or execution of instrument are as follows:
- If a patent is co-owned, the Controller may give directions for the sale or lease of the patent or any interest therein or the exercise of any right under Section-50 to any of the co-owners. Such direction is given by the Controller only when application is made to him in the prescribed manner by any of the co-owners.
- If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for carrying out of any direction given under this section within 14 days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
Illustration
Maya is registered as grantee of a patent and she fails to execute the instrument (license agreement) with 14 days after being requested by the co-owner of the patent. If the co-owner makes an application to the Controller, any other person can execute the instrument in the name and on behalf of Maya.
- Before giving any directions under this section, the Controller shall give an opportunity for the following to be heard:
- In the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;
- In the case of an application under sub-section (2), to the person in default.
- No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.
Approaching the Controller for directions might turn out to be a time-consuming process. Also, it may lead to uncertainty as it will be the Controller who then will decide about the directions to be given. No directions will be given under this section so as to affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their rights or obligations as such, or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent. This situation may get further complicated if the ownership of the patent itself is in question. These possibilities make it imperative for the parties to take utmost care while entering into a joint ownership of a patent.
This whole complexity can be taken care of if both A and B enter into an agreement about how they would exercise the licensing rights each of them have in order to avoid such complexities later. So, a lot of hardships may be prevented if a little precaution is taken at the time of entering a joint ownership of a patent, specifically at the time of entering into an agreement about the licensing of the patent.
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Feb 24, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Priority Document is a certified copy of the earlier-filed patent application, issued by the Indian Patent Office (IPO) and it has seal of Indian Patent office. When an international patent application is filed, at PCT/Convention country, copy of specification certified by the Controller to authenticate contents of specification, application number and priority date along with other details shall be submitted. And this certified copy of the specification is called as Priority Document.
The request to obtain Priority document shall be made in the national office of the applicant, filing where he claims priority. Where priority document is not in English language, an English translation of it, duly verified by the applicant or the person duly authorized by him shall be filed.
U/S 138 [Supplementary provisions as to convention applications], priority document should be submitted within three months from the date when required by the Controller. If the document is not in English, then a translated copy should be furnished.
U/R 19 [International applications filed with appropriate office as receiving office], International application shall be submitted in triplicate along with prescribed fee. On receipt of a request from the applicant and on payment of the prescribed fee by him, the appropriate office shall prepare a certified copy of the priority document and promptly transmit the same to the International Bureau of the World Intellectual Property Organization for the purpose of an international application filed with the appropriate office with an intimation to the applicant and the head office.
U/R 21 [Filing of Priority Document], priority document shall be obtained from the national office and shall be submitted by the applicant at PCT at the time of filing PCT application. Where priority document is not in the English language, an English translation of it, duly verified by the applicant or the person duly authorized by him shall be filed.
Instead of getting hard copies of Priority Document, one may request IPO to provide the code unique for each priority application and the code can be shared with second filing office (Convention or PCT). One can request for preparation and transmittal of DAS Code so that IPO will share directly with WIPO once as PCT Application Number is provided at the time of filing request. DAS code may be requested in advance to be entered in the PCT application while filing. IPO may share DAS Code directly with WIPO as well as with registered email ID. Priority document/DAS Code should be submitted to PCT within 16 months from the date of priority
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Feb 23, 2023 | PCT
Patent Cooperation Treaty or PCT is an important treaty, concluded in 1970. The uniqueness of PCT stems from the fact that it provides a unified procedure for filing patent applications in its contracting states, earning it the title of “International Application”. As on 1st September 2020, 153 countries are contracting states of PCT (details may be viewed here: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf). PCT is administered by the World Intellectual Property Organization (WIPO), primarily created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. Headquartered in Geneva, Switzerland, WIPO began operations on 26th April 1970 when the convention came into force. Key responsibilities of WIPO include extending technical & legal assistance in the area of intellectual property, conducting research on various areas of IPR and ensuring the proper facilitation of international IP protection.
Steps to file PCT Application
PCT is one of the most preferred ways to file patent application in multiple counties. Steps to file PCT application are as below:
- Applicant is required to file patent application (provisional or complete application) in his home country first to claim date of priority.
- Within 12 months from the date of priority, PCT application shall be filed.
- PCT application may be filed directly with International Bureau of WIPO (online) or via a Receiving Office (RO), which ultimately transmits PCT application to International Bureau.
As soon as the PCT application is filed, international phase starts. The application is searched by International Search Authority or ISA at a later point in time and international search report and written opinion is generated. This report is very important as it gives detailed patentability analyses of the invention. The inventor can consider this report and can take a decision regarding the number of countries in which the application must be filed.
Before International Phase ends, i.e., within 30 or 31 months from the date of priority, PCT national phase application, in PCT-contracting states shall be filed. The applicant may chose any number of countries out of 153 contracting states of PCT. The deadline to enter national phase is 30 months in majority of the countries but some countries like India follow a deadline of 31 months from the date of priority.
Advantages of PCT application filing
The main advantages of filing PCT application are as below:
- PCT is a unified platform that enables applicants to file their patent application in multiple countries claiming priority from the application filed in their home country’s national office. Please note that the applicant can file patent application via PCT route only in the countries that are member states or contracting states of PCT.
- The process of filing PCT application is completely hassle-free. The application may be filed online, requiring the filing of only a single application.
- Unlike convention application filing where international application has to be filed within 12 months from the date of priority, PCT allows the applicant a time window of 30 or 31 months from the date of priority to file application in individual countries that are PCT contracting states.
- International Search Authority (ISA) gives written opinion on patentability of invention which helps applicant to take right decision with respect to national phase filing.
Myths and facts
Even though PCT is a popular and a convenient way to file patent application in multiple countries, there are a lot of myths surrounding PCT filing, as listed below:
Myth 1: PCT grants patent
Fact: PCT is a patent filing platform and does not grant patents. Patents are granted only by national offices when PCT-national phase application is filed and prosecuted as per national laws of the given country (ies). PCT does not have any authority to grant patents.
Myth 2: PCT filing ensures grant of patent globally
Fact: Filing PCT application does not mean that you have an automatic protection in all contracting states of PCT. Instead, you get protection in the contracting states of PCT only if you file national phase application there and your patent is granted by such national offices.
Myth 3: Foreign attorney files PCT application
Fact: The patent agent of your country is authorised to file PCT application, which means you don’t need a foreign attorney to file PCT application. However, a local attorney belonging to the country in which the PCT is being filed will be required for filing PCT National Phase application in that specific country.
Myth 4: PCT filing fee takes care of all expenses
Fact: Applicants often ask whether they are required to file separate fees at the time of filing PCT national phase application as they have already paid PCT filing fees. The fact is that PCT national phase filing fees is independent of PCT filing fees. The fee that the applicant paid to PCT is only for PCT filing and for generating the search report. When a national phase application is to be filed, applicant needs to pay fees for each country for filing and prosecution of the application.
Myth 5: With PCT, National Phase application may be filed in any country
Fact: By filing PCT application, national phase application can only be filed in PCT contracting states. Before considering PCT filing, it is highly recommended to look into list of PCT contracting states on the official website of WIPO to ensure that the countries where you desire to file application is a contracting state of PCT.
Even though PCT is a popular and convenient way to file international application, all pros and cons shall be weighed carefully before opting for PCT route.
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