A Patent is not a license to make money, it is a license to prevent others from making money.
— Kalyan C. Kankanala
Author: Khushi Sehgal, 4th Year of BBA.,LLB (Hons.) From Bennett University, Greater Noida.
The term ‘Patent’ is one of the forms of Intellectual Property Rights which provides various legal rights to the owner of an invention for preventing the use, sale or manufacturing of his invention by anyone else for a limited period of time. In other words, the owner of a patent is granted the legal right to prevent others from creating, using, or selling the invention for a set amount of time. As per Intellectual Property Law, A patent is a grant from the government that gives an inventor the sole permission to create, use, and sell his invention for a period of 20 years. If an invention is both novel and useful, then a patent will be awarded. Thus, there are various rights that are available with the owner of the invention in case if anyone has used or created or sold his invention in other’s name. In order to get protection for such kind of infringement, the Patent Act, 1970 provides various measures and remedies. The Indian Patent Act, 1970 also provides other provisions relating to Patents in India like applicability, jurisdiction, burden of proof, cancellation of patents etc.
When someone manufactures, uses, or sells a work of intellectual property without first getting permission in writing from the owner of the patent, that act constitutes patent infringement. So, in this article, the concept of patent enforcement will be discussed. Patent enforcement is the process of enforcing the rights contained in an invention or patent. When a patent is violated, the patent owner can approach the courts to obtain an injunction and monetary compensation. The protection of the inventor's intellectual property rights is guaranteed by the patent enforcement. It grants the patent holder exclusive rights over the sale and production of the patented product. In order to avoid such things, there are various rights available with the patent holder to prevent his invention from getting copied.
PATENTS – A BRIEF
The Patents Act, 1970 defines the term ‘Patent’ as a patent for any invention granted under this Act, under Section 1 (m) of the Act. The term ‘Patent’ is one of the forms of Intellectual Property Rights which provides various legal rights to the owner of an invention for preventing the use, sale or manufacturing of his invention by anyone else for a limited period of time. In other words, the owner of a patent is granted the legal right to prevent others from creating, using, or selling the invention for a set amount of time. An invention is a product or a technique that, in general, offers a new way of doing something or presents a new technical solution to a problem. A patent is an exclusive right awarded for an invention. Technical details concerning the innovation must be made public in a patent application in order to obtain one.
History of Patents
It should be noted that the law that continues to govern patents in India is the Patents Act of 1970. In 1972, it initially became operative. The Indian Patent Act is administered by the Office of the Controller General of Patents, Designs, and Trade Marks, or CGPDTM. The Patent Office is headquartered in Calcutta and has offices there as well as in Mumbai, New Delhi, and Chennai. Mumbai serves as the location of the CGPDTM office. The Patent Information System office and the National Institute for Intellectual Property Management are both located in Nagpur. The Controller General oversees the execution of the Act and counsels the executive branch on related issues. The Patents Act has been altered numerous times, most recently in 1999, 2002, 2005, and 2006. These changes were necessary to bring the Patents Act into compliance with TRIPS. Trade-Related Aspects of Intellectual Property Rights is known as TRIPS. The Patent Act underwent a significant change in 2005 when product patents were expanded to cover all technological domains, including food, medicines, chemicals, and microorganisms. In 2012, 2013, and 2014, the Rules under the Patent Act were also modified.
Features of Patent (Amendment) Act, 2005
There are various features of Patent (Amendment) Act, 2005 such as: the expansion of product patent protection to include goods in the chemical, food, and pharmaceutical industries; a product patent shall be valid for a period of twenty years; introduction of a clause that permits the granting of a mandatory licence for import of patented pharmaceutical products from India (in accordance with the Doha Declaration on TRIPS and Public Health); Section 3(d), provided that such importing country has either granted a mandatory licence for import or by notification or other means permitted importation of such products.
Rights granted by a Patent
It should be also noted that if the patent is for process, the patentee has the right to stop others from using the method or process of making the product generated directly from the process available for sale, selling it, or bringing it into India. The patentee has also the right to stop others from creating, using, offering for sale, selling, or importing the patented product in India if the patent was granted for a product.
What inventions can be patented?
According to the Patent Act, 1970, a novel product or procedure that involves an inventive step and may be used in industry qualifies as an invention and is eligible for patent protection. To take patent for any invention, there are few requirements that must be fulfilled which are: it must be a new substance or novelty should be there – novelty means that the invention made must be new and it should not be used or known to public earlier, there must be an inventive step in the product – a new inventive step must be there in the invention and it should not be obvious to the person who is skilled in the act, it must be capable for industrial application – it means that the invention should be capable to be used in industry, and it should not fall under Section 3 and 4 of the Patents Act, 1970.
It should be clearly noted that as long as the innovation does not fall into one of the categories listed in sections 3 (What are not inventions) and 4 (Inventions relating to atomic energy not patentable) of the Patent Act as being ineligible for patent protection. As per Section 3 of the Patents Act, 1970, there are various inventions that are not patented such as: invention which is frivolous in nature, only mere discovery of a scientific principle or a known substance is there which does not result in increasing the known efficacy of a known substance, a substance obtained by a mere admixture of products, mere arrangement or re-arrangement of known substance etc. whereas on the other hand, Section 4 of the Patents Act, 1970 states that No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
Who can apply for patents in India?
Any of the following individuals may submit an application for a patent for an invention, either individually or jointly with another individual:
The true and first inventor
True and first inventor’s assignee
The legal representative of the deceased true and first inventor or his/her assignee.
Infringement of Patents
When someone manufactures, uses, or sells a work of intellectual property without first getting permission in writing from the owner of the patent, that act constitutes patent infringement. The party seeking to enforce a patent must prove that the unlawful product matches the "claims" made for the innovation in order to establish that patent infringement took place. Alternately, the patent holder could demonstrate that the illegally produced item is "sufficiently equivalent" to theirs and will likely confuse customers. In other words, a prohibited act using a patented invention which is carried out without the patent owner's consent is referred to as patent infringement. Usually, permission is given in the form of a licence. Using or selling the patented invention is often included in the definition of patent infringement, though it may differ depending on the jurisdiction.
Patents are territorial in nature, and only in a country where a patent is in effect, there is a possibility of infringement. For instance, if a patent is obtained in the United States, no one in the United States may manufacture, use, sell, or import the copyrighted object. The extent of protection may vary from one nation to another because the patent is subject to various patentability standards and may not even be substantively reviewed in some nations' patent offices. A party (other than the patentee or licensee of the patentee) is typically deemed to be infringing a patent if they produce, import, use, sell, or offer for sale patented technology or invention while the patent is in effect and within the nation that issued the patent.
Types of patent infringements:
Direct Infringement: This happens when someone creates something without the patent owner's permission. Here, the patent proprietor may pursue legal action against a person for a direct infringement even if the infringer is not aware of the patent's existence.
Unintentional Infringement: The infringement may not have been done intentionally by the offender. However, you must have encouraged or helped others do so.
Induced Infringement: It refers to pressuring someone into making a patented idea. The indirect breach and this term are commonly used interchangeably.
Contributory Infringement: It is when someone provides a part or an invention to help another party violate a patent. There cannot be any other appropriate use for that product or fraction.
Infringement happens when without the patent owner's permission, another party may produce, market, or utilise a patented product. The owner may file a lawsuit to demand that the violator stop their behaviour and pay damages for the unauthorised use.
Enforcement of Patents in India
Patent enforcement is the process of enforcing the rights contained in an invention or patent. When a patent is violated, the patent owner can approach the courts to obtain an injunction and monetary compensation. Patent owners immediately file for temporary injunctions to prevent infringing parties from engaging in actions that could constitute patent infringement. When a third party infringes on a patent owner's rights, the patent owner has the option of suing the offending or third party. The protection of the inventor's intellectual property rights is ensured through the enforcement of a patent. It grants the patent holder exclusive rights over the production and marketing of the patented goods. The invention's full set of rights are conferred upon the patentee by the patent. With this privilege, the creator can control who can use the invention, how it can be utilised, and how much. An inventor must submit an application for the issuance of a patent to his invention in order to enforce his rights. The inventor shall be given the exclusive rights following the conclusion of official considerations and procedures. The protection of the inventor's intellectual property rights is guaranteed by the patent enforcement. It grants the patent holder exclusive rights over the sale and production of the patented product. This right gives the creator the authority to control how and how much the invention can be employed by users. An inventor must submit an application for the invention's patent grant in order to enforce these rights. The inventor receives the exclusive rights upon the conclusion of formal procedures and evaluations.
Rights of patent enforcement with the patent holder
The owner of a patent is entitled to a number of benefits, including the ability to grant licences to third parties and allow them to sell and produce the patented product. A patent holder has the right to sue anyone who infringes on their patent rights in order to enforce their patent. Despite what might seem obvious, suing for patent enforcement requires a valid patent. Patent infringement occurs when one or more of the patent holder's rights are violated. This indicates that the patented invention will be charged with patent infringement if it is used, manufactured, or sold for profit by anyone. In the event that their rights have been violated, patent holders have the option of going before either a district court or a high court. If the defendant is found guilty of infringement, the courts may award both damages and a permanent injunction.
There is an exclusive right that is available with the patent holder under TRIPS Agreement which is stated under Article 28. By laying forth broad guidelines for the enforcement of IP rights, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) established international law. Further, there are various rights that are available with the patent holder under Patents Act, 1970 such as:
Ability to use the patent: The right to use, sell, produce, and distribute the patented goods is granted to the patent holder in India. If the innovation involves a production method, the patent holder retains the right to share the method to a third party. Additionally, the patent holder's agent has the authority to enforce this claim.
The right to grant or transfer licences: The owner of a patent has the authority to delegate or give licences to third parties for the purpose of producing and distributing the patented goods. When there are several patent owners for a patented product, all patent owners must agree to issue the licence to a third party as a group. Only until the Controller has properly approved the request is the licence deemed to be issued. The assignment or licence must therefore be in writing and filed with the Patent Controller in order to be valid and legitimate.
Right to file suit in case of infringement: Patent infringement is the word used to describe any violation of a patent holder's rights. A patentee may file a complaint with either a district court or a high court to have any rights violations addressed. In the event that the defendant is found guilty of infringing, the court may decide to award the plaintiff damages or a long-term injunction.
Right to exploit the patent: The right to produce, use, sell, and distribute the patented goods is granted to the patent holder in India. If the innovation involves a manufacturing method, the patent holder has the right to delegate the process to another individual with the patentee's consent. The patent holder's agent may exercise this right.
Limitations of patent holder’s rights
Private and non-commercial use of patents: The innovation cannot be used privately by the patent holder, and no monopoly over commercial activities is allowed. The government may issue a third party a forced licence if it determines that the patent holder is not using the patented invention for financial gain. The Patents Act's Sections 84 and 92 address compulsory licencing. It may be used if the patented product is not reasonably priced or accessible to the general population. In situations involving pharmaceutical medications, this is typically done. Section 85 of the Patents Act has another provision dealing to restrictions on both private and commercial use. In the event of non-use, it allows for the controller to revoke patents.
Experimental/scientific use: Section 47(3) of Patents Act, 1970 provides that anyone may utilise the patented method or product in order to conduct research or conduct any type of experiment. The creation of this exception was crucial to safeguard people engaged in "bona fide" study and experimentation. It allows third parties to conduct research utilising the patented substance without fear of being charged with violating the rights of the patent holder.
Regulatory use: The Indian Patents Amendment Act, 2005, introduced Section 107 A. This clause gives generic drug producers an exemption so they can utilise the patented product to gather data and, as a result, apply for marketing authorization outside of the country. Another name for this is bolar provision. Nevertheless, following the patented product's expiration date, which is 14 years from the day the patent application was filed, manufacturers can only use, manufacture, and sell the product on the market.
Judicial organisations that deal with patent related disputes
There are four judicial/quasi-judicial organisations in India that deal with patent-related disputes. So, in case of any dispute, the patent holder can directly go to such bodies and can file against the other party.
Indian Patent Office (IPO): If a patent application complies with Indian patent laws, the IPO will grant it. The IPO takes part in resolving disputes involving patent grant and post-grant opposition. Creating and executing rules and procedures is one of the IPO's primary administrative responsibilities.
IP Appellate Board (IPAB): The IPAB started operating in April 2007 to hear cases involving patents in the nation. It hears appeals from Controller of Patents judgments as well as revocation actions. To manage IP issues, the IPAB employs both technical and legal specialists.
District courts and High courts: The first judicial body (adjudicating body) that can hear cases involving patent infringement is the district court system in India. The appeals from district court rulings are heard by and resolved by the Indian High courts.
Supreme Court: Appeals against decisions by the IPAB and High Courts are heard and decided by the Supreme Court of India. Since the Supreme Court is the highest court of appeal, its rulings are final and cannot be challenged.
Remedies available with the patent holder
There are various remedies available for the patent holder in case of enforcement of patents.
Injunction: There are two types of injunctions that the court can grant. The court may impose temporary limits or restraining orders against the defendant to stop its infringing activity while the final order is pending. This is known as a temporary or interim injunction. Permanent Injunction: The court may issue a final injunction prohibiting the defendant from carrying out the unlawful action. Preliminary (temporary or interim) injunction and permanent injunction are provided under Order 39, Rule 1-2 of Code of Civil Procedure, 1908.
Anton Pilled Order: Upon the request of the aggrieved party or the plaintiff, the court may appoint a Local Commissioner to hold or seal invading materials or records in the respondent's premises;
John Doe order: When necessary, the court may issue a warrant authorising the local police to search any location where encroaching or infringing activities are allegedly carried out by the alleged infringer. This warrant is for an unidentified respondent, and it may be used in relation to any unknown respondent.
Lodging a criminal complaint with the Judicial magistrate or metropolitan magistrate.
Filing an application under section 91, 93 of CrPC for issuance of search & seizure warrants.
Lodging an FIR under section 156 of CrPC.
Challenges for infringement/enforcement
In India, civil courts can be used to enforce patent rights. There aren't any specialised IP courts established up to handle cases.
The backlog and the timing of the decision: The primary difficulty in enforcing patent rights is the length of time it takes for the court to reach a judgement. If the opposing party challenges the validity of the patent, a patent case typically takes between five and seven years to reach a final verdict following a trial. Case management hearings and time-limited trials provided by the Commercial Courts Act aid in accelerating the procedure.
In addition to the existing international standards, Section 3 of the Act adds new criteria for an invention's patentability. According to Section 3, among other things, inventions involving derivatives of medical and surgical procedures, farming, plants, and animals alone are not patentable. As a result, these inventions are examined more closely, and patent holders encounter more difficulties.
In accordance with Section 115 of the Act, a consultant may be appointed to assist the Courts in offering advice and technical support. Due to the infrequent use of such an appointment, it is not helpful in the decision-making process. Although it has not been implemented, the provision presents an opportunity for the use of technical and legal skills.
The Patents Act of 1970 explicitly states the patentee's rights. However, there are many instances of patent violation. Only when the laws are properly in place and develop over time to reflect evolving circumstances can a patentee's rights be protected. In the event that their patent rights are violated, patentees have the exclusive right to file a lawsuit in court. However, the patentee's rights must be exercised within the legal restrictions set forth by the law. To get the most out of your rights, it is essential to thoroughly understand them and uphold them. Additionally, patentees must be aware of the restrictions on these rights as well as the commitments that must be made.