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INTRODUCTION

The law of patents represents the fascinating interface between science and law. It is the threshold where the language of science meets the language of the law. It is in this confluence of ideas and forms, expressed in what is commonly known as a patent specification, that the technical aspects of an invention are described and its legal aspects demarcated. As a techno-legal document, a patent specification embodies the rights in an invention and explains the science of it. In this way, patent specifications embody the challenges of both science and law. And what is true in science is also true in law as well: the controversies constantly revolve around differences over the meaning of words. The law of patents is a legal framework that establishes a system which supports and encourages technological innovation and promotes economic development. It encompasses a conglomeration of legislations, judicial decisions, patent specifications, scientific documents, legal opinions, and everything that can be shrunk into the ambit of the phrase the state of the art. Though taught, studied and till now, even practiced as a sister subject along with Trademarks and Copyright, which together form the classic intellectual property triumvirate, the law of patents deserves to stand in a distinct plane. In 23 topic-oriented chapters, this book explains the law of patents in India and addresses the issues faced by inventors, patent owners, licensees, patent agents, patent examiners, lawyers and judges in dealing with patents. Chapter 1 (Patent as an intellectual property right) puts patents in context. Patents are a form of intellectual property rights which protect inventions. They grant a limited monopoly in return of disclosure of technical information. This chapter traces the origin of patents in the United Kingdom and follows the development of law in India where rights of inventors were initially protected through exclusive privileges before they were replaced by a system of patent grants. Soon after independence, the
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government constituted special committees to study and suggest changes in the patent law to suit the needs of this country. Of great prominence is the work submitted by Justice N Rajagopala Ayyangar, commonly referred to as the Ayyangar Committee Report, which set the tone for the Patents Act 1970. The critical decision of not providing product patents for pharmaceuticals was suggested by the Committee which found its way into the Act. Twenty-five years later, when India agreed to implement the regime change suggested by the TRIPS Agreement to provide for product patents universally for all inventions, it was given a ten-year transition period to bring about these changes. Three critical amendments followed in 1999, 2002 and 2005, which together brought the Patents Act in full compliance with the TRIPS Agreement. This chapter further discusses the importance of patents for pharmaceuticals. It also surveys the various international agreements on patents and the relevance of foreign decisions in understanding issues under the Patents Act. Chapter 2 (Patentable inventions) deals with inventions that can be the subject matter of patent protection. Inventions were earlier defined with the central emphasis around the concept a manner of manufacture. It is a tribute to judicial creativity that this concept served as the basis for the patent law through British law countries accommodating the advances in technology from 1623 without the need for legislative intervention. The duality of a patent right in that it tries to balance the right of an inventor in the invention with the need of the competitors to engage in further research, is reflected in the manner in which patentable inventions are defined. The fine balance between the permissible and the prohibited is manifested in the way in which patentable inventions are understood. To qualify for a grant, the invention must not only satisfy the three prerequisites of novelty, inventive step and industrial application, but should also be excluded from the long list of statutory exceptions in sections 3 and 4 of the Patents Act. Chapter 3 (Pharmaceutical inventions) lends credence to the sub-title of this book. The chapter deals with the provisions of the Act which affect pharmaceutical inventions. Due to the effect of art 27 of the TRIPS Agreement, patent laws cannot discriminate different fields of technology. Nevertheless, exceptions are provided in such a manner that, though they are capable of application in all fields of technology, they are more likely to be employed for pharmaceutical inventions. Take for instance the provisions regarding exclusive marketing rights, patentability of known substances and known processes, Bolar exemptions and provision for parallel imports and compulsory licensing. The exceptions to patentability in section 3 will determine the fate of many inventions in this country. The ingredients of
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the controversial section 3(d) are analysed and its application with regard to selection patents, novelty of use and Swiss form of claims is discussed. The impact of the Mashelkar Committee Report and the constitutional validity of section 3(d), which was recently challenged before the Madras High Court are also discussed. Chapter 4 (Biotechnological inventions) broadly outlines the application of patent law to biotechnology. Patentability of micro-organisms, microbiological processes, essentially biological process, plant and animals are discussed in the light of the policy advanced by the Patents Act. Chapter 5 (Specification) deals with the documents that embody patent rights. A patent specification is a techno-legal document, which describes the science of the invention and demarcates the legal limits of the invention for which protection is claimed. The history of the law of patents has essentially been a study of how inventors, lawyers and judges have understood a patent specification and interpreted them. Patent specifications are curious documents in that they are written by a group of experts (patent agents), embody the rights of a group of creative people (inventors), are addressed to a hypothetical group of skilled persons (persons skilled in the art), and may, if the case so demands, be interpreted and constructed by a legally trained group of persons (examiners and judges). For generations, members of the legal profession, who by virtue of their training engage into meticulous verbal analysis of these scientific explanations, have exercised their judgment with regard to its validity. Inventors cannot be seen as entirely comfortable with the manner in which their unilateral statements describing the invention are construed by judges, with little or no training in the sciences, who nevertheless hold the construction of patents as their prerogative. Chapter 6 (Construction of a patent) deals with the principles of construction of a patent. In this chapter you will be surprised to learn that an inventor need not necessarily mean what he says in his specification. The chapter begins with a not-so-happy note for the inventor who is told that the construction of a patent is for the court alone. The courts will not allow any covetous claims and would disclaim any sinister interpretation of the word. You may say what you like, but the courts are going to construct your invention from the perspective of a third partythe fictitious, person skilled in the art, whom Lord Hoffmann referred to as the varied cast of imaginary and sometimes improbable people. This fictitious legal characterthe person skilled in the arthas been the very nemesis of many inventions, quite understandably so, as he has been eternally attributed with the incapability of inventing anything on his own. Sometimes, you will find this judicially constructed person too good to exist. Yet he exists,
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so it would seem, solely for the sake of others. You will also find him most knowledgeable, possessing almost encyclopaedic knowledge of the art of his calling, but lacking in that inventive spark needed for inventing things on his own. Such a person, you will find to your relief and surprise, need not be a personit may be a team of persons spread out globally, each working without the knowledge of the other. Your limits of imagination will be stretched when you find that law has endowed this person with great perseverance for knowing everything and with the enviable capacity of not getting bored! Chapter 7 (Patent application) details the procedure of applying for a patent. It charters the course the true and first inventor should follow in making and prosecuting an application before the Patent Office. The chapter details the manner of preferring different kinds of applications under the Patents Act, including convention applications, PCT applications and application of a patent of addition. The procedure followed by the Patent Office in examining and publishing the application is also discussed along with the provisions on secrecy directions. The chapter also details the various procedures under the Act to settle entitlement disputes which may arise between an employer and its employees over an invention. Chapter 8 (Exclusive marketing rights) discusses the impact of the introduction of a new form of monopoly right known as the exclusive marketing rights (EMR). The grant of EMR under the Patents Act led to the worlds first contentious case on EMR. The case involved various interpretational issues and posed several challenging questions with regard to the grant of an interim monopoly pending the disposal of a patent application. The case also illustrates the different standards of patentability that exists amongst the countries and indicates why a universal patent still remains a far-fetched dream. Chapter 9 (Grant of a patent) enumerates the consequences of a successful grant. Upon the grant of a patent, the patentee becomes entitled to rights under the Patents Act subject to some restrictions. The chapter deals with the rights conferred by patents and the restrictions which curtail such rights. Chapter 10 (Amendment of a patent) details the procedure of amendment of patent application, patent specification and other related documents. The Patents Act provides for amendment both before and after the grant of patent. The powers of the Controller, Appellate Board and the high court to amend a patent give rise to interesting questions with regard to the scope of such amendments. Chapter 11 (Term of a patent) discusses the importance of keeping a patent alive by the payment of renewal fees and taking stringent actions
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against any infringers. The cost involved in keeping a patent alive clearly indicates that patents are not for the common man. Little wonder this, as patents are, by definition, granted for uncommon technology. To prosecute a patent professionally in the patent office and to keep it alive for 20 years diligently paying the renewal fees and protecting the patent from infringements that may occur in any nook and corner of this vast country, requires expertise and resources which are way beyond the capabilities of the common man. In what might appear to be a curious case of fact mimicking fiction, the anguish of a common man seeking a patent as captured by Charles Dickens in A Poor Mans Tale of a Patent, a century ago, would still seem to hold true: Thereby I say nothing of my being tired of my life, while I was patenting my invention. But I put this: Is it reasonable to make a man feel as if, in inventing an ingenious improvement meant to do good, he had done something wrong? How else can a man feel, when he is met by such difficulties at every turn? All inventors taking out a Patent must feel so. And look at the expense. How hard on me, and how hard on the country if theres any merit in me (and my invention is took up now, I am thankful to say, and doing well), to put me to all that expense before I can move a finger! Make the addition yourself, and itll come to ninety-six pound, seven, and eight pence. No more, and no less. Chapter 12 (Patent office, appellate board and central government) deals with institutions under the Patents Act. The patent office can be regarded as an institution that upholds the true spirit of patent law with regard to disclosure. Inventors know very well how a disclosure can kill the novelty of their invention. It would appear that the hallowed premises of the patent office will not permit any disclosure, regardless of whether it kills anything or not. Though law provides for certain kinds of information that you may carry home, it is silent with regard to much of what is required. Outsiders (pre-grant opponents) who poke their noses into others patents without paying the customary thoroughfare (fees) are in for a fair amount of surprise. There has been a wide array of interesting exercisesranging for a simple pleading request to a petition under the Right to Information Act 2005 invoked to take some printed matter out of these secured premises. Chapter 13 (Opposition proceedings) deals with opposition to a patent before and after its grant. An opposition proceeding is the touchstone for testing the validity of a patent early in its life. The purpose of opposition proceedings is to give a competitor the opportunity of opposing unjustified
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protective rights. The unique nature of pre-grant opposition under the Patents Act presents a variety of challenges which are discussed in this chapter: Is a pre-grant opposition a proceeding inter partes? Is the opponent a party to the proceeding? If he is not, then can the opponent be expected to discharge the burden of proof? Is the Controller obliged to hear the opponent? Is the opponent entitled to know the applicants defence? Is there a statutory appeal against an order passed pursuant to a pre-grant opposition? Chapter 14 (Grounds of opposition) discusses the 11 common grounds of pre-grant and post-grant opposition. It also discusses the interrelationship between opposition proceedings and revocation proceedings under the Patents Act. Chapter 15 (Revocation proceedings) details the proceedings by which a patent can be revoked. The Patents Act gives the power of revocation to four different authorities: the Controller, the Appellate Board, the high court and the Central Government. The manner in which these powers are exercised is discussed in detail in this chapter. Chapter 16 (Grounds of revocation) discusses the 17 common grounds on which a patent may be revoked by the Appellate Board or the high court. The most common grounds of revocation, lack of novelty and lack of inventive step receive special treatment in this chapter. Chapter 17 (Declaration of non-infringement) discusses one of the precautionary remedies open to a competitor to avoid an injunction in an infringement suit which could bring his operations to a standstill. Chapter 18 (Threat of infringement) discusses another remedy available to a competitor faced with a groundless threat of infringement. The chapter also details how threat notices should be sent to competitors. Uncomfortable issues, such as what happens when the lawyer who issues the threat notice is made a party to the proceeding, and who should, in such cases, bears the cost, damages etc have been analysed. The remedies discussed in chapters 17 and 18 can be employed tactically to choose the jurisdiction of court that may ultimately deliberate on the issue of infringement. Chapter 19 (Infringement of a patent) discusses the approach of the courts in determining infringement. Unlike trademarks and copyright, where a simple comparison of the competing products can show infringement, the determination of infringement in the case of a patent involves finding answers to a series of complex questions, which include: Whether the alleged act fell within the scope of the invention as defined in the claims; Whether the alleged act violated any right of the patentee as defined under the Patents Act; Who is liable for the alleged act; and whether the alleged act fell within the acts which do not amount to infringement under the Patents Act or under any other valid exception.
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Chapter 20 (Infringement proceedings) discusses the most important aspect of patent lawaction for infringement. Infringement refers to any intrusion into the rights of a patentee protected under the Patents Act, for which the patentee has a remedy. A patentee will have to institute a suit for infringement to protect his rights in a patent. A suit for infringement can be filed, before the district court or the high court, only after the grant of a patent, and that too in respect of an infringement committed after the date of publication of the application. This chapter discusses the procedure and practice followed by the courts in an infringement suit. The defences to infringement and the forms of relief in respect of infringement are also discussed. Chapter 21 (Transfer of a patent) discusses the right of a patentee to transfer or assign any of his rights in patent. The Patents Act empowers any person registered as a grantee or proprietor of a patent to assign, grant licences under, or otherwise deal with the patent for consideration. The power to transfer a right in a patent is broad in its scope as it includes the right to transfer a patent in whole or in part and the right to assign or licence a patent, exclusively or generally. Chapter 22 (Compulsory licences) deals with a form of restriction imposed on the absolute exploitation of a patent. It is quite ironic that one of the provisions in chapter XVI of the Patents Act provides for revocation of patents on the ground that they were not worked in India. If nonworking is to be a ground for removing something, then the chapter on compulsory licences in the Patents Act would have been the first causality. The provisions on compulsory licences have not been worked in this country. Yet how we work the provision on compulsory licensing, which is discussed in this chapter, will have a huge bearing on how use without authorisation under the TRIPS Agreement is understood and employed. Chapter 23 (Use and acquisition of inventions by government) discusses the right of the government to use and acquire inventions. Simply put, this provision forms the statutory cause for the force majeure clause you will often find in licensing agreements.

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