INDIA - New Patent Act - The Controversies

India finally amended its Patents Act and Rules to become fully compliant with TRIPS on 26th Decemer 2004 by an Ordinance and followed by Act being passed in January 2005. The black box applications filed under WTO brand from 1/1/1995 were opened for processing. Even though amendment opens all areas of technolgy in respect of product patents, some controversies have been created in interpretation of amendments. Product patent applications in field of food and chemicals in general which have been filed before 1/1/2005 and are under process have been denied product protection and restricted to process patent only.The patent office view is that since Act before amendment, by section 5(1)(b) was not allowing product patent, amendment can be effected for product patent in these fields only for applications filed after 1/1/2005. Of course in case of black box applications in filed of drugs product patents are being granted.

Intellectual Property - What it is

Patents are by far most technically demanding branches of intellectual property. In basic terms, a patent is a monopoly right granted by government to a person who has invented a new useful articles or an improvement of an article or a new process of making an article. It is a negative right, granted to exclude others from making, using or selling invention within a certain jurisdiction for a limited period of time. A patent granted by a patent office is applicable within geographical boundaries of that country only. There is no International or World Patent. An inventor has to file an application in each country, where he seeks to protect his invention. There are regional and/or International treaties to facilitate procedure to seek protection like European Patent Organization (EPO) and Patent Co-operation Treaty (PCT). Trade Marks popularly known as brand name, is an identification symbol which may be a word, a device, a label or numeral etc. or a combination of word and design, a slogan or even a distinctive sound, which identifies and distinguishes goods or services of one party from those of another. Used to identify a service, it can be called a Service Mark. In general, term trademark can be used to refer to both trademarks and service marks. Normally, a trademark for goods is word or design that appears on product or on its packaging, while a service mark is usually word or design that is used in advertising to identify source or provider of services. Registration of a trademark is not mandatory, but does confer very substantial commercial benefits. When taking legal action against others, registered trademark users need only base their case on registration, whereas users of unregistered trademarks must rely exclusively on passing off for protection. Suing for infringement of a trademark is much simpler than launching a common law action for passing off to protect any unregistered trade mark. The Concept of 'passing off ' is common law remedy and it is available for a trademark or a trade name on basis of 'prior user' status. Designs means only features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in finished article appeal to and are judged solely by eye, but does not include any mode or principle of construction or anything with is in substance a mere mechanical device, and does include any trade mark. A design in order to be registrable must be new or original not previously published.