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Preface

Indian Patent Attorneys, Examiners and other IPR professionals will have to remove several expressions close to their heart from their daily lexicon. The age old prosecution steps of 'Putting the Application in Order for Acceptance', 'Notice of Acceptance', 'Advertisement of Notice of Acceptance', 'Opposition before Grant', 'Sealing of Patent' etc. have no place in Indian patent practice any more.

On December 26, 2004 the President of India promulgated an Ordinance to amend the national patents law. The Ordinance came into force on January 1, 2005 marking the culmination of a decade long efforts by the Government of India to make the Patents Act compliant with the TRIPS Agreement. A Presidential Ordinance is, however, a temporary legislative measure. It will cease to operate at the expiration of six weeks from the reassembly of the Parliament. The Government of India has the onerous task of getting the Patents Amendment Bill, 2003 passed by the Parliament, which contains the same provisions as that of the Ordinance. However, the rights and obligations created by the Ordinance are ordinarily not extinguished by any subsequent event.

 

The Patent Rules were amended pursuant to the promulgation of the Patents (Amendment) Ordinance, 2004 (hereinafter the Ordinance). The new set of Rules [known as the Patents (Amendment) Rules, 2005] was notified by the Government of India on December 28, 2004 and came into force on January 1, 2005. The new rules made sweeping changes in the Indian patent prosecution system.

This article highlights the major amendments introduced by the Patents (Amendment) Ordinance, 2004 and the Patents (Amendment) Rules, 2005. The article is divided into 2 sections, the first section deals with the substantive amendments and the second section deals with the procedural changes.

Section I

 

 

Section I

Substantive Amendments

1. Product Patents for 'Food', 'Drug' and 'Pharmaceuticals' The Ordinance repealed the controversial Section 5 of the Indian Patents Act, 1970. For over three decades only processes were patentable in respect of inventions relating to 'food, drug, and medicines' and 'substances produced by chemical processes'. From 1st January, 2005, patents will be granted for all categories of inventions.
 
2. Restrictions on 'New Use' diluted The 'new use for a known substance' was not patentable so far. The Ordinance amended this provision and qualified the word 'new use' with the prefix 'mere'. This makes only 'mere new use' unpatentable. While the interpretative scope of this amendment is yet to be seen, it is likely that this provision would lead to the acceptance of 'Swiss-Type Claims' in India.
 
3. Patentability of Computer Programs - India moving closer to the EPO practices The Patents Act originally excluded Computer program per se and mathematical and business methods from patentability. There has been wide spread criticism on the ambiguity of the wording of the law. The Ordinance attempts to remove this ambiguity by specifying that a computer program in combination with hardware is patentable. Also, it is specified that the technical applications of computer programs to industry is patentable.
 
4. No more 'Exclusive Marketing Rights' and 'Mail Box' Applications The Ordinance repealed the provisions concerning 'Exclusive Marketing Rights' (EMRs) and 'the WTO/Mail Box' Applications. This is yet another provision that was subjected to heated debates at the WTO and in the Indian Parliament. EMRs are transitional protection for inventions relating to medicines and agro-chemicals that India had to provide for 10 years ending January 1, 2005. India failed to do so, until 1999, which led to disputes at the WTO. The Ordinance recognizes all EMRs granted and provides that all EMR applications currently pending will be treated as the Request for Examination of the corresponding Mail Box Application.
 
5. WTO Doha Concessions recognized - Compulsory License for export of patented pharmaceutical products The Doha Declaration on TRIPS and Public Health permitted export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity. The Ordinance recognizes this provision. Compulsory license shall be available for export of patented pharmaceutical products like the antiretroviral drugs to countries like the South Africa.
 
6. Representations can be made opposing the grant of patent (known in India as pre-grant opposition) So far India provided for opposition to patent applications once the application is accepted and the acceptance is advertised in the Gazette of India. The Ordinance has provided for post grant opposition. The Ordinance, however, includes a provision to file Representations by any person as soon as the application is published opposing the grant of patent. The Representation may include a statement and evidence to prove that the subject invention is not patentable. However, a Representation shall be entertained only when a request for examination of the application has been filed.

 

 
 
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