27 Sep
2018

Patents in Asia 2018/2019: India

Top legal experts in India provide an exclusive insight into the country’s patent prosecution and litigation strategy for 2018

How do you get a patent in your jurisdiction?

Types of protection and eligibility criteria

Indian patent law is governed by the Patents Act 1970 and the Patents Rules 2003. To be patentable, an invention must be:

  • a new product or process involving an inventive step and be capable of industrial application – according to the act, ‘invention’ is limited to a new product or a process; and
  • statutory as per the Patents Act.

According to the act, non-patentable subject matter includes:

  • an invention contrary to public order or morality;
  • the discovery of a scientific principle or the formulation of an abstract theory;
  • the discovery of any living thing or non-living substance that occurs in nature;
  • the discovery of a new form of a known substance, which does not enhance its efficacy;
  • the discovery of any new property or new use for a known substance;
  • the mere use of a known process, unless it results in a new product or uses at least one new reactant;
  • a substance that is merely a mixture of two other substances;
  • a process for merely producing a mixture of substances;
  • the arrangement or re-arrangement, or duplication of, known devices that already function independently of each other;
  • a process for the medicinal, surgical, curative, diagnostic, therapeutic or other treatment of humans;
  • a method of agriculture or horticulture;
  • a process for the treatment of animals to cure a disease or increase their economic value or that of their products;
  • plants and animals in whole or any part thereof, other than microorganisms – essentially, biological processes for the production or propagation of plants and animals;
  • a mathematical method, business method, computer program or algorithm;
  • a literary, dramatic, musical or artistic work, or any other aesthetic creation, including cinematographic works and television productions;
  • a scheme, rule or method of performing a mental act or playing a game;
  • the presentation of information;
  • the topography of integrated circuits; or
  • traditional knowledge.

The patent application – process and costs

A patent can be filed by the inventor or an assignee, either alone or with any other person. The applicant can be an individual, a start-up or a small entity.

The application can be filed at any of the patent offices at Kolkata, Delhi, Chennai and Mumbai. Each of these offices has territorial jurisdiction.

After the patent has been filed, the applicant must formally file a request for examination (RFE) within 48 months of the effective filing date. There is also a provision for filing a request for expedited examination.

The types of patent application include the following:

  • An ordinary application – this is an application which is not a convention or Patent Cooperation Treaty (PCT) application and can be accompanied by a provisional or a complete specification.
  • A national stage application – this type of application must be filed within 31 months of the effective filing date of the international application. This period is non-extendable.
  • A convention application – this type of application must be filed within 12 months of the date of the first application. This period is non-extendable.

One or more divisional applications may be filed by the applicant suo motu or with a view to remedying an objection raised by the controller, on the ground that the claims of the complete specification relate to more than one invention. The application for a patent of addition can be filed for any improvement in or modification of an invention disclosed in the main application.

Most applications are published 18 months from the filing date or priority date (the effective filing date), whichever is earlier. Subject to an applicant’s request, the patent office may publish the application sooner.

An application is examined only after the application has been published and the applicant has filed an RFE.

After examination, the patent office issues an examination report. The applicant must respond to this within six months of the date of the first examination report. This can be extended by three months by filing a request, in the required format and with the necessary fee.

If the controller is not satisfied with the response to the examination report, the applicant has the opportunity to speak before the application is refused. Where the application is approved, the patent is granted and a letter is issued to the applicant.

After a patent is granted, the patentee must pay a renewal fee to maintain it. The fee is payable at the expiration of the second year from the date of the patent and any succeeding year.

Patents are valid for 20 years from the date of filing of the patent application. For a patent granted pursuant to a PCT national phase application, the term of the patent is 20 years from the international filing date pursuant to the PCT.

The official costs associated from patent filing until grant range from $80 to $400, based on the status of the patent applicant. The fees charged by a patent agent from filing until grant range from $700 to $28,000. The annual patent renewal fee ranges from $30 to $90 for small entities and $60 to $180 for large entities, depending on the year of payment of the renwal fee.

Technology-based considerations (eg, software and pharmaceuticals)

While filing patent applications, due consideration must be given to avoid non-statutory subject matter.

For example, in case of a software-based invention, the claims must indicate the technical environment in which the software will operate.

What are the major administrative procedures in your jurisdiction?

Appealing patent office decisions

There are two options available for appealing the decision of the patent office or the controller of patents:

  • The applicant can request that the controller review or set aside their decision or order. The request must be made in the prescribed format (Form 24) within one month of the date of the order.
  • The applicant can also file an appeal at the Intellectual Property Appellate Board (IPAB) against the controller’s order. The appeal must be filed within three months of the date of the order.

Third-party challenges – oppositions and invalidations

The Patents Act allows a third party to initiate opposition proceedings at the pre-grant or post-grant stage. Opposition proceedings can be initiated only under the grounds listed in the act, as follows:

  • Pre-grant opposition – anyone can initiate pre-grant opposition proceeding by filing a representation in the prescribed format (Form 7A) at the appropriate patent office and providing a copy to the applicant. The representation can be filed after the publication of the application, but this must be done before the grant of the patent.
  • Post-grant opposition – the post-grant opposition can be filed only by an interested person. According to the act, an ‘interested person’ includes a person engaged in, or in promoting, research in the field to which the invention relates. The post-grant opposition is initiated by filing a notice of opposition in the prescribed format (Form 7), along with a copy of the written statement to the appropriate office.

The controller’s decisions or orders in a pre-grant and post-grant opposition can be challenged before the IPAB.

The revocation proceedings against a patent may be initiated by any third party by filing:

  • a revocation petition at the IPAB; or
  • a counterclaim for revocation in an infringement suit against the patent at the High Court.

The proceedings can be initiated by a third party only on the grounds listed in Section 64 of the act.

Administrative enforcement options

Customs enforcement of IP rights (including patents) is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 under the Customs Act 1962, which is designed to strengthen the statutory and executive guidelines, thereby assisting patent holders in enforcing their rights at India’s border.

How are patents enforced through the courts?

Key forums and their composition

Under the Patents Act 1970 the district courts are the courts of first instance for patent infringement actions. If the defendant challenges the validity of the patent during an infringement action, the action must be transferred to high court. However, the high courts of Delhi, Bombay, Calcutta and Madras exercise original jurisdiction for patent infringement actions within their pecuniary jurisdiction.

The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act has recently been enacted, which established a separate commercial division in the high courts to deal with commercial matters (including IP disputes).

Trial flow – discovery, trial, witnesses, timing and cost

Patent infringement proceedings take the form of a civil suit before a civil court – India no longer has a jury system – with all matters decided by a judge.

As part of the rules and practices concerning the filing of evidence in patent infringement proceedings in India, the following are usually employed:

  • documents and affidavits;
  • witness evidence; and
  • expert evidence.

Legal doctrines, available remedies and the appeals process

The legal doctrine is demonstrated through case law, as follows:

  • There is no presumption of validity for a granted patent under Indian law, as held by the Supreme Court in Bishwanath Prasad v Hindustan Metal Industries ((1979) 2 SCC 5).

  • The first step in the assessment of patent infringement is to determine the scope of the patent’s rights, which is ascertained through the construction of the claims. In Merck Sharpe Dohme v Glenmark Pharmaceuticals the High Court of Delhi held that the patent’s scope depends on:
    • the nature of the claims made; and
    • the enabling disclosures specified by the patentee in the patent specification.
  • A patent specification must be given a purposive construction, rather than a purely literal one (Catnic Components Ltd v Hill & Smith ((1981) FSR 60)).
  • Indian courts have tacitly recognised the doctrine of equivalents – in Raj Prakash v Mangat Ram Chowdhury (1978) AIR Delhi 1 the Delhi High Court held that the “pith and marrow” of the invention claimed must be looked at.

The remedies available include:

  • civil proceedings;
  • cease and desist letters to the infringer;
  • arbitration; and
  • alternative dispute resolution.

The relief available includes:

  • preliminary injunctions;
  • security deposits;
  • permanent injunctions;
  • monetary remedies;
  • the delivery or destruction of infringing goods;
  • recall orders;
  • the declaration of infringement and validity; and
  • search and preservation orders

Appeals: A district court order can be appealed to a single judge at a high court. An appeal against the order of a single high court judge can be referred to a larger bench of a high court. An appeal can be made on the following grounds (among others):

  • an incorrect appreciation of fact or law; or
  • a violation of the principles of natural justice.

Further, appeals against decisions of the high court division bench (consisting of two judges) must be made to the Supreme Court. Appeal proceedings generally last between two and five years.

Costs and timeframe: The cost for filing and pursuing a patent infringement action can range between $50,000 and $100,000.

Patent infringement proceedings typically last two to three years.

How are patents commercialised in your jurisdiction?

A licence agreement undergoes two major steps:

  • Documentation – under Section 68 of the Patents Act 1970, a patent licence is valid when the agreement between the parties is recorded in a document, which embodies all the terms and conditions governing their rights and obligations and such agreement is duly executed.

  • Registration – after the agreement takes place, the party that has acquired the licence must register the title or interest in the concerned patent within six months from the date of agreement.

Patent working requirements and pharma-specific rules

The patentee or a licensee of the patent must file a statement of working of patents annually, indicating the extent to which the patented invention has been worked on a commercial scale in India. The statement must be filed within three months of the end of each calendar year. Failure to provide this information is a punishable offence with a fine of up to $15,000. Further, providing false information intentionally is punishable by imprisonment of up to six months, a fine, or both. Further, the failure to work or the insufficient working of patents may be grounds on which a request for compulsory licence may be made to Indian patent offices.

Laws and rules applicable to licensing (including FRAND)

Indian jurisprudence on FRAND licensing practices for SEPs is relatively nascent. Indian courts and the Competition Commission of India (CCI) – the country’s antitrust authority – have only just begun to decide such cases concerning calculating FRAND royalties.

In the first two antitrust complaints concerning SEPs, the CCI’s initial orders seemed to favour using the smallest saleable patent-practising component to determine FRAND royalties.

However, in two SEP infringement suits, the Delhi High Court used the value of the downstream product as a royalty base and relied on comparable licences to determine a FRAND royalty. Moreover, the court places the burden on the defendant to prove that the rates offered by the plaintiff were not compliant with FRAND obligations.

In a recent decision concerning FRAND licences, the Delhi High Court’s assessment of FRAND royalties has not followed its own precedent. Here, the court did not assess FRAND rates based on comparable licences, but simply inferred them from the parties’ conduct and the plaintiff’s assertion that its licence was on FRAND terms. The court accepted the plaintiff’s argument that the patent royalty rates should be determined by evidence of prior negotiation between the parties.

Inventor remuneration issues

There are no fixed guidelines; the applicants and inventor are free to decide inventor remuneration before conception of the invention or its practice. An agreement related to inventor remuneration is enforceable through the Indian Contract Act and common law principles of equity.

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Rahul Sharma

Rahul Sharma
Managing associate
rahul.sharma@lexorbis.com

Rahul Sharma is an engineering graduate from the University of Rajasthan, specialising in electronics and communication, and a registered patent agent. Mr Sharma is registered with the Bar Council of Delhi and has a master’s in law from Delhi University. He has 11 years’ experience as a patent consultant and has been working in the software field for one year. Mr Sharma has worked with overseas and domestic attorneys and organisations, for prosecuting international patent applications before the USPTO and the EPO, as well as national phase applications before the Indian Patent Office.

Charul Yadav

Charul Yadav
Associate partner
charul@lexorbis.com

Charul Yadav is an advocate registered with the Bar Council of India and a patent agent. Ms Yadav holds a master’s in biotechnology and heads the biotechnology practice at LexOrbis. She has over 14 years’ experience in handling patent-related matters. She regularly advises clients on IP strategy and portfolio management. Ms Yadav has extensive experience in handling matters involving prior art searching, patentability assessment, freedom-to-operate and validity opinions, patent prosecution, patent drafting, infringement, and opposition and revocation proceedings.