[Ip-health] What changes does the Indian Patent Act need?View-2

[Ram]

 From the Economic Times, another perspective on the proposed changes
in the Indian Patent Act- "Ram" (Prabhu Ram)

What changes does the Indian Patent Act need?

The changes, while complying with TRIPS, must protect our national
interests in a balanced and equitable manner

Prabuddha Ganguli
CEO
Vision-IPR

The Indian Patent Act is on the verge of another long awaited welcome
track change to ensure enhanced protection of inventions by the
scrapping of Section 5 of the IPA (1970). That will allow product
patents related to substances resulting from chemical reactions,
pharmaceuticals, agro-chemicals and foods.

But non-patentable inventions will be defined in Section 3 of the new
Act. These changes will enable India to meet its TRIPS obligations.

The standard criteria for the patentability of inventions should be
novelty (N), non-obviousness i.e., the invention must have an
inventive step (INS) and it must have usefulness i.e., be capable of
industrial application (U). India's key strengths are in "incremental
inventions", especially in pharmaceuticals and foods through
formulations etc.

Recent debates on whether only new chemical entities should be
patentable or whether formulations should be considered as subject
matter for patent, or even include diverse structural forms of
molecules/solid state phases (polymorphs), are misplaced as the
patentability of an invention should not be guided by subjectivity.

That should only be decided along with the three internationally
accepted criteria (NINSU).

The new Act should also provide for transparent guidelines for the
examination of patents with regard to software so that software
patents do not get restricted only to embedded software.

Section 47 (3) makes provisions for the experimental use of a patented
invention. However it states that the grant of a patent under the Act
shall be subject to the condition that "any machine, apparatus or
other article in respect of which the patent is granted, or any
article made by the use of the process in respect of which a patent is
granted, may be made or used, by any person, for the purpose merely of
experiment or research including the imparting of instructions to
pupils"

In this statement, the word "merely" should be deleted. That would
allow anyone to use a patented invention for experimentation or
research without restriction. However if they went commercial with a
patented invention, the patentee would continue to have the right
under Section 48 to enforce his right.

Therefore the removal of the word merely from Section 47(3) would not
dilute the right of a patentee but would give the option to use
patented inventions to encourage R&D, which is the key purpose of a
patent system.

The draft Bill proposes a system of post-grant opposition. However the
concern is that India is now moving to a new product patent regime and
Indian patent examiners will need time to gain experience in examining
product patents.

They are not familiar with the construction of product claims and
therefore wrong claims may be granted patents while, simultaneously,
legitimate claims may not be granted thanks to inexperience. Every
wrong grant could entail major social loss.

Therefore we should continue with the pre-grant opposition system for,
say, a period of three years till our patent examiners gain expertise.
Till then the public must have the option to oppose a patent, accepted
by the patent office before it proceeds to grant.

The proposed system in the draft Bill, of post-grant opposition with
an option to submit documents to the controller by way of objections
after the statutory 18 months of publication, is not appropriate.

India provided for a mailbox provision with effect from January 1,
1995, in Section 5(2) of IPA (1970), after its first amendment. India
also provided for the option of EMR in Sections 24 a-e. All
applications in the mailbox would be examined after India moves the
product patent regime.

The new Act should lay clear guidelines w.r.t. the date from which any
product patent will be effective, especially for mail-box applications
since these were filed between January 1, 1995 and January 1, 2005
during which India did not grant product patents. Such clarity would
aid courts to arrive at a calculation of damages, if any, in matters
related to the infringement of patents.

The Indian Act should define the term "working of patents" as it is
crucial in matters related to the issuance of compulsory licences.
Sections 83/84 of the present Act is silent on any clear definition on
"working of patents".

These changes would ensure India's compliance with TRIPS and also
protect national interests in a balanced and equitable manner.

(The author is also adjunct professor, IIT, Bombay)


Story link: http://economictimes.indiatimes.com/articleshow/965921.cms