Indian Patent Law Question And Answers

Indian Patent Law

Question 1. Concerning the relevant legal enactments, write short notes on the following: Company Secretary as patent agent.
Answer:

A person shall be qualified as a patent agent if the person is

Citizen of India
Completed the age of 21 years
Has obtained a degree in science, engineering, or technology
Passed the prescribed qualification exams or worked for not less than ten years as an examiner or discharged the functions of the controller.

In light of the above legal provisions, if a Company Secretary fulfills the above conditions, and satisfies the condition then he will be eligible to act as a patent agent.

Question 2. Concerning the relevant legal enactments, write short notes on the following: Element of ‘novelty’ in an invention
Answer: One of the prerequisites for anything to be regarded as an invention is something having inventive steps. Novelty means anything new or strange which is thus an indispensable part of anything to be construed as.

Question 3. Regarding the relevant legal enactments, write short notes of the following: Contents of a complete specification
Answer: The specification is the description of the invention. The specification can be provisional or complete.

The contents of the complete specifications are

Describe the invention, its operation, its use, and its methods.
It must disclose the best method of performing the invention.
Ends with a claim defining the scope of the invention.
Must provide technical information on the invention.
A declaration as to the inventorship of the invention.

Patents Act in India

Question 4. About the relevant legal enactments, write short notes on the following:
Term of patents
Answer:

Provisions relating to the term period of patents are covered under section 53 of the Patents Act 1970.
The term period of patents is 20 years from the date of applying for the patent.
However, non-payment of renewal fees may result in the cessation of the patent.

Question 5. About the relevant legal enactments, write short notes on the following: Restoration of lapsed patents
Answer: Sections 60 to 62 deal with provisions relating to the restoration of lapsed patent, it provides that where the patent has ceased to have effect by reasons of failure to pay any renewal fees within the period prescribed then the patentee may within eighteen months from the date on which the patent ceased to have effect, make an application for restoration of the patent.

If the controller is satisfied that the failure to pay fees was unintentional he may advertise the application. Any person interested may oppose the restoration and after considering the opposition, the controller will make appropriate orders.

Question 6. Concerning the relevant legal enactments, write short notes on the following: Patent Agent
Answer:

A person shall be qualified as a patent agent if the person is

Citizen of India
Completed the age of 21 years
Has obtained a degree in science, engineering, or technology
Passed the prescribed qualification exams or worked for not less than ten years as an examiner or discharged the functions of the controller.
In the light of the above legal provisions, if a Company Secretary who fulfils the above conditions, satisfies the condition then he will be eligible to act as a patent agent.

Question 6. Regarding the relevant legal enactments, write short notes on the following:
Inventive step, General principles apply to the working of the patented invention.
Answer:

Inventive step

The inventive step has been defined in Section 2(1) of the Patents Act, of 1970.
Inventive step means a feature of an invention, that involves technical advance as compared to the knowledge or having economic significance or both that makes the invention which is not obvious to a person skilled in the art.

General principles applicable to working of patented invention Some of the principles applicable to working of patented invention covered in Section 83 of the Patents Act, 1970 are as under:

Patents are granted to encourage inventions.
Patents are not granted to merely enable patentees to enjoy a monopoly.
Patents granted do not prohibit the Central Government from taking measures to protect public health.
The benefits of patented invention should be available at reasonable prices to the public.
Patents granted should act as an instrument to promote public interest especially in sectors of vital importance.
Patent rights should not be abused by the patentee.

Indian Patent Law Distinguish Between

Question 1. Distinguish between the following: ‘Invention’ and ‘patentable invention’ under the Patents Act, 1970.
Answer: Section 2 of the Patent Act defines an invention as a new product or process involving an inventive step and capable of Industrial application.

The term ‘inventive step’ has been defined under the Patent Act as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art.

Any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e. the subject matter has not fallen into the public domain or that it does not form part of the state of the art, which is registered with Controller of Patent is a patentable invention. Section 3 enumerated the list of inventions which are not patentable.

Question 2. Distinguish between the following: ‘Provisional specification’ and ‘complete specification’ under the Patents Act, 1970.)
Answer:

A provisional specification is a document, which contains the description regarding the nature of an invention.

The description, however, does not contain the details regarding the invention. Also, it does not contain the claims. The provisional specification is filed to claim the priority date of an invention.

The advantage of a provisional specification is that it can be filed as soon as the patent is conceived and for the recorded priority date.

However, the application is only examined after the complete specification has been filed. Section 9 of the Patents Act, 1970 stipulates that where an application for a patent (not being a convention application or an application filed under PCT designation India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.

A complete specification is a document, which contains a detailed description of the invention along with the drawings and claims.

Also, the description regarding prior art is included in the complete specification. Section 10 dealing with contents of Specifications provides that every specification, whether provisional or complete, shall describe the invention and begin with a title sufficiently indicating the subject matter to which the invention relates.

Every complete specification is required to
Fully and particularly describe the invention and the operation or use and the method by which it is to be performed; disclose the best method of performing the invention that is known to the applicant and for which he is entitled to claim protection;
End with a claim or claims defining the scope of the invention for which protection is claimed; and
Be accompanied by an abstract to provide technical information on the invention.

Question 3. Distinguish between the following: ‘Patent’ and ‘patent of addition’.
Answer:

Patent means a patent granted under the Patent Act, of 1970.
A patent is a grant from the government that confers on the grantee, for a limited period, the exclusive privileges of making, selling, and using the invention for which the patent has been granted and also of authorizing others to do so.
The patent gives its owner a monopoly right to make & sell the subject matter of the patent for a defined period.

Patent of addition.

Patent of Addition is a patent for improvement in, or modification of an invention for which invention, a patent has already been applied for or granted.
A patent of addition will remain in force as long as the patent for the original invention remains in force.

Question 4. Distinguish between the following: ‘Surrender of a patent’ and ‘revocation of a patent’ under the Patents Act, 1970.
Answer:

Surrender of patents:

Surrender of patents has been provided in Section 63 of the Patents Act, 1970.
As per the provisions of the Act, patentee of the patentee can offer to surrender his patent, at any time by giving notice to the controller.
The Controller shall publish the offer in the prescribed manner, once the offer is made by the patentee.
Any person within the prescribed period after such publication may give notice of opposition to the controller.
If the controller is satisfied after hearing the patentee & any opponent, he may accept the offer & by order revoke the patent.

Revocation of Patents:

‘Revocation of patents’ has been covered in Section 64 of the Patents Act, 1970.
As per the provisions of the Act, a patent may be revoked by any person, Central Government.
If the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no patent can be granted, it may direct the controller to revoke the patent.

Question 5. Mention any five inventions which are not patentable under the Patents Act, of 1970.
Answer:

Inventions not patentable under The Patents Act, 1970 Section 3 of the Patents Act, 1970 provides that the following are not inventions and hence not patentable:

An invention that is frivolous or which claims anything contrary to well-established natural laws
An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal, or plant life or health or the environment;
The mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of that substance the mere discovery of any property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
A method of agriculture or horticulture; any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic, or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties, and species and essentially biological processes for production or propagation of plants and animals;
A computer program per se other than its technical application to industry or a combination with hardware;
A literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
A mere scheme or rule or method of performing a mental act or method of playing a game;
A presentation of information;
Topography of integrated circuits;
An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Section 4 prohibits the grant of a patent in respect of an invention relating to atomic energy falling within Sub-section (1) of Section 20 of the Atomic Energy Act, 1962.

Question 6. Mention five important grounds for opposition to the grant of patents.
Answer:

Section 25 provides that any person can apply for the opposition grant of a patent on the following grounds:

That the applicant had wrongfully obtained the whole or part of the invention from him or the person from whom he claims.
That the invention has been published before the priority date of the claim.
That the invention claimed is publicly known or used
That the invention claimed does not involve any inventive step.
That the invention is not patentable under the Act.
The complete specification does not describe the invention properly.
The complete specification is provided after the specified time.

Question 7. Client XYZ has approached you to get a patent on a drug for curing insomnia. What are the steps involved in registering the patent? Describe with examples.
Answer:

Prior art on the subject must be examined to find out the “novelty”. Patent searches have to be organized.
Similarly, the innovative part has to be seen along with usefulness.
Disclosures and publication of the discovery must be in place.
Claims must be prepared along with detailed specifications, drawings, and manufacturing processes.
The drug must also be physically available to establish its identity.
The patent office will examine the claims and publish the results for objections.
Finally, the patent will be granted and duly registered.

Question 3. ‘There are two kinds of opposition in a grant of patent.’ Discuss the provisions of pre-grant opposition and procedure followed in such situations as per the Patent legislation.
Answer:

There are two types of opposition to the grant of a patent as per the Patent Amendment Act, of 2005. They are:

Pre-Grant Opposition
Post-Grant Opposition.
Pre-Grant Opposition

Section 25 of the Act deals with opposition to the grant of a patent and provides that where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of a patent on the following grounds and the Controller on request of such person shall hear him and dispose of the representation in the prescribed manner and specified time.

The grounds for the Pre-Grant opposition are as follows:

That the applicant for the patent or the person under or through whom he claims wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
That the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim –
In any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January 1912;

In India or elsewhere, in any other document: Provided that the ground specified in sub-clause

Shall not be available where such publication does not constitute an anticipation of the invention under sub-section (2) or sub-section (3) of section 29;
That the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
That the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

Explanation: For this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for reasonable trial or experiment only;

That the invention so far as claimed in any claim of the complete specification is obvious and does not involve any inventive step, having regard to the matter published as mentioned in the clause or having regard to what was used in India before the priority date of the applicant’s claim; That the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
That the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
That the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;
In the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
That the complete specification does not disclose or wrongly mention the source or geographical origin of biological material used for the invention;
That the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
The grounds for both pre and post-grant opposition are identical and there is nothing to preclude a pre-grant opponent from subsequently filing a post-grant opposition. However, despite the similarities, there are also several procedural differences between the two types of opposition.
The primary difference between pre-grant and post-grant opposition is that though pre-grant proceedings may be initiated by “any person”, only a “person interested” can institute a post-grant opposition.
The Indian Patents Act defines a “person interested” as including a person engaged in, or in promoting, research in the same field as that to which the invention relates.
Moreover, the Indian Patents Act does not explicitly allow the opponent to be heard in a pre-grant opposition. The opponent has to request a hearing and the rules do not detail how a hearing is to be conducted.
The opponent’s right to be heard solely depends upon the discretion of the Controller, who decides the same based on the merit of the opposition.
Additionally, the rules are also not clear whether the opponent will be heard in the presence of the applicant.

Opposition Proceedings

Rule 55 dealing with opposition by representation against the grant of a patent requires the representation for opposition under section 25(1) to be filed at the appropriate office within a period not exceeding three months from the date of publication of the application under section 11 A of the Act, or before the grant of a patent, whichever is later and includes a statement and evidence, if any, in support of the representation and a request for hearing if so desired.

The Controller has been empowered to consider such representation only when a request for examination of the application has been filed.

On consideration of the representation, if the Controller thinks that the patent application shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect.

On receiving the notice the applicant shall, if he so desires, file his statement and evidence, if any in support of his application within one month from the date of the notice.

On consideration of the statement and evidence filed by the applicant, the Controller may either refuse to grant a patent on the application or require the complete specification to be amended to his satisfaction before the patent is granted.

After considering the representation and submission made during the hearing if so requested, the Controller shall proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of a patent on that application, ordinarily within one month from the completion of the above proceedings.

In the case of Novartis Ag v. Natco Pharma Ltd. on 25 January 2006, a patent application was filed in India on 17th July 1998 by Novartis AG, Switzerland, claiming Switzerland’s priority date of 18th July 1997.

Upon publication, the grant of the patent was opposed by Natco Pharma Ltd., India on 26th May 2005.

The grounds for opposition were:

Anticipation by prior publication
Lack of inventive step
Non-patentability under section 3(d)
Wrongfully claiming the priority

The title compound was already known in a US patent (filed in 1993). The US patent claimed a pharmaceutically acceptable salt of the base compound.

Another Document, “Nature Medicine” (5th May, 1 996) also described the title compound. Also, the claimed salt inherently existed in the most stable form of the salt.

Hence, the claims of the application for the product and process in respect of the title compound stood anticipated by prior publications.

Additionally, based on section 3(d) the product claim amounted to a mere discovery of a new form of the known substance.

Further, the application had claimed Swiss priority, but Switzerland was not a convention country on the date of filing in Switzerland.

Hence, no priority of the Swiss application could be claimed in respect of the Indian application.

Given the above findings and arguments, the Controller ruled that the above patent application cannot proceed for grant of patent.

Question 4. To qualify for the grant of a patent under the Patents Act, of 1970, the invention must be non-obvious. However, determining whether an invention is non-obvious is one of the most difficult tasks in patent law. Discuss.
Answer:

To grant a Patent to an invention, determining whether an invention is non-obvious or not, i.e. determining whether it involves an inventive step or not, is one of the most difficult tasks in Patent law.

The mere coalition of two or more things without the exercise of inventive ingenuity is not a subject matter for a patent. It is an invention if the process or manufacture of an article requires some ingenuity or has an inventive step.

However, simplicity is not necessarily an objection to securing a patent for an invention.

Even if the product and/or the process may be perfectly simple and very common, yet there may be an invention, if the inventor has developed a variant, which will render it more useful.

After all, a disposable razor, a safety pin, and a retractable tape measure all seem obvious now, yet none of these items were obvious at the time they were invented.

The point of view from which it needs to be ascertained as to whether a particular invention is ‘non-obvious or not is that of a person skilled in the particular art to which the invention relates.

An invention that has an inventive step, however small, but having regard to the condition of the state-of-the-art in the particular field on the date of filing or the priority date of the patent application, whichever is earlier constitutes a step forward and may be a subject matter for a patent. Thus, one must review the scope and content of the prior art existing in the particular field to determine if the invention is non-obvious.

Secondly, consideration must be given to the differences or enhancements carried out between the Prior Art and the Invention at hand. Thirdly, as already stated, if the invention would be obvious to a person having primary skill in the art to which the invention pertains, it cannot be patented. The Supreme Court in the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries interpreted the term inventive step.

In this case, the Court opined that ‘obviousness’ has to be strictly and objectively judged.

The test laid down by the Court to determine obviousness was: ‘Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the ‘priority date’, who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have come up with the invention in question’ Simply put, according to the test, what has to be determined is whether, at the time the invention was made, any other person skilled in the same field as the invention could have come up with the same invention, if faced with the same problem.

Question 4. Many life-saving drugs are patented by multinational pharmaceutical companies and many times there is a shortage of these medicines in the market. In this context explain the working of patented inventions and can government issue licenses for the protection of the general public.
Answer: Section 83 of the Patents Act, 1970 deals with general principles applicable to the working of Patented Invention, it provides that in exercising the powers conferred for working of Patents and Compulsory Licenses, regard shall be had to the following general considerations, namely:

Patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;

That they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article;
That the protection and enforcement of patent rights contribute to the promotion of technological innovation and the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations;
That patents granted do not impede the protection of public health and nutrition and should act as instruments to promote public interest, especially in sectors of vital importance for the socio-economic and technological development of India;
That patents granted do not in any way prohibit the Central Government from taking measures to protect public health;
That the patent right is not abused by the patentee or person deriving title or interest on a patent from the patentee, and the patentee or a person deriving title or interest on a patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and That patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public.

Compulsory Licenses

The provisions for Compulsory Licenses are made in the Patents Act, of 1970 to prevent the abuse of the grant of a Patent as a monopoly and to make the way for commercial exploitation of the invention by any interested person.

According to Section 84 of the Patents Act, 1970, any person interested can make an application for grant of compulsory license for a Patent after three years from the date of grant of that Patent on any of the following grounds:

That the reasonable requirements of the public for the patented invention have not been satisfied, or
That the patented invention is not available to the public at a reasonably affordable price, or
That the patented invention has not worked in the territory of India.

An application for Compulsory License may be made by any person notwithstanding that he is already the holder of a license under the Patent and no person shall be estopped from alleging that the reasonable requirements of the public to the patented invention are not satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price because of any admission made by him, whether in such a license or otherwise or because of his having accepted such a license.

Thus, while the law confers some exclusive monopoly rights upon the individuals (Patent Holders) in respect of their inventions as a credit or reward for the time, efforts, and capital spent by them in coming up with such an invention, it equally draws a balance by making provisions thereby ensuring that grant of such a right does not run counter to the interest of society / general public and thus in case there is a shortage of any life-saving drug which is a subject matter of Patent by a Multinational Corporation, the Government is entitled to direct such Patent Holder or itself grant the right to a potential player to carry on production of such life-saving product to ensure that there is no short supply of it in the public.

Question 5. Ajit developed a method of hedging against price fluctuation in the energy market. He used a simple concept of mathematics and a familiar statistical approach to achieve the above purpose. Ajit termed it as an innovative procedure to calculate the risk at this competitive time. Advise him on the patentability of his innovation
Answer:

As per the Patents Act, of 1970, the condition of patentability has to be satisfied. The criteria are threefold, i.e., Novelty, Inventive Step, and Industrial Applicability. However, section 3 of the Act lists the inventions as nonpatentable subject matter.

Section 3 (k) provides those mathematical or business methods or a computer program perse or algorithms are not inventions and therefore not patentable. Mathematical methods are considered to be the act of mental skill.

A method of calculation, formulation of equations, finding square roots, cube roots, and all other methods directly involving mathematical methods are therefore not patentable.

With development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself.

A mathematical method is carried out on numbers and provides a result in numerical form and is not patentable. If low-quality business methods or mathematical methods are allowed to be patentable, it may damage the public perception of the patent system.

It may create enormous monopoly power much more than the cost of so-called invention. The given problem since it is a simple concept of mathematics and a familiar statistical approach. It is therefore not patentable.

Indian Patent Law Practical Questions

Question 1. Sitca Healthcare (hereinafter referred to as ‘applicant’) filed a divisional patent application on 1 1 m May 2007 numbered 00077/np/2007 for an invention “crystal modification of active pharmaceutical ingredient” for the patent application number 00072/np/2007 having german priority patent application number 1404/97dated 10th june, 2003 It was observed during the substantial examination that claims 1-10 of parent application were reproduced verbatim in the claimed invention as claims 1-10.

If the subject matter of any claimed invention relates to more than one invention, an applicant can file further application any time before the grant of patent u/s 16(1) of the Patents (Amendment) Act, 2005.

Since claims of the claimed invention and claims of the parent application are verbatim, hearing was offered to the applicant to decide the allowability of divisional status to the claimed invention u/s 16 of the Act.

The Applicant replied that the Controller can offer a hearing for deciding the divisional status only after sending a gist of objections to the applicant and allowing him to file a reply.

He further stated that the Controller cannot decide the divisional status unless examined and passed through sections 12,14 and 15 of the Patents Act.

There is no such direction or any other guiding principle laid down in the Act as to how a Controller should proceed with the divisional status of an application.

The Controller observed that the application shall define distinct subject matter when compared with claims of the parent application, which is the first and foremost requirement to qualify as a divisional application u/s 1 6 of the Act.

Once claims of the claimed invention fulfill the requirement for the divisional application u/s 1 6, it can be further allowed for substantial examination, which will save time and effort of the patent administration and also it is a logical approach as well.

Since the subject matter of claims 1-10 is verbatim with claims 1-10 of the parent application, there is no need for conducting a substantial examination to assess the novelty, inventive step, and other patentability criteria for the present application.

The applicant claims the same set of claims submitted in the parent application in multiple further applications.

The Controller further observed that the reason for filing such a divisional application is to prosecute once again the same set of claims already claimed in the abandoned parent application and also to extend the life of the application.

If the subject matter of claims of the further application is not distinct from the claims of the parent application, divisional status shall not be granted.

It is, therefore, a wilful attempt to obtain multiple patents for a single subject matter through many further applications by misusing the provision of section 16 of the Act.

Even though each component of claims 1-10 of the divisional application is verbatim with the claims 1-10 of the parent case, the intention of the applicant by hook or crook is to extend the life of the application utilizing the divisional route, that too, on the last date of submitting reply to first examination report (FER) of the parent case.

There were 10 claims at the time of filing the claimed invention where claims 1-9 related to ‘modification A of the compound 1-(2, 6-difluorobenzyl) – 1H- 1,2,3-trizole-4-carboxamide (namide)’ (hereinafter referred as ‘product claims’) and claim 10 related to pharmaceutical preparation.

On 15 July 2011, the applicant amended the originally filed 10 claims into 12 claims by filing Form-13 u/s 57 and u/s 81(1) of the Act and Rules.

The applicant amended ‘modification A of the compound namide’ in all the claims 1-10 into ‘crystal modification A of the compound namide’ and also added two new claims relating to ‘method of preparing A of the compound namide’ which is neither claimed in the International application nor the National Phase application.

In response to the FER, the applicant further amended claim 11 by incorporating many additional features including identity and quality of the solvent for recrystallization, filtration conditions necessary to generate a suspension with initial crystal, stirring time, and temperature.

The patent application was opposed by way of pre-grant representation u/s 25(1) of the Act, by the Indian Pharmaceutical Alliance, a Society registered under the Societies Registration Act, 1860 (hereinafter referred to as ‘Opponent’).

After the hearing notice was served, the Applicant further amended all the ‘product claims’ into ‘21 method claims as a method for preparing crystal modification A of the compound namide’.

In the earlier amendment, the applicant introduced a new matter in claim 11 & 12 ‘method of preparing A of the compound namide’ but the later amendment converted all the claims into ‘method for preparing crystal modification A of the compound namide’, the principal claim.

The applicant submitted a set consisting of 13 method claims which they desired to rely on during the hearing, (hereinafter referred to as ‘amended claims’).

The patent agent for the applicant submitted that Rule 55 (5) of the Patents Rules, 2003 gives power to the Controller to require the complete specification to be amended to his satisfaction during the opposition, before proceeding to refuse the application.

The patent agent for the applicant submitted that amendment of claims is a primary right conferred upon the applicant by the Patents Act and it is possible to amend the claims to avoid overlapping with the citations, and the Controller should require the same rather than proceeding to reject the application.

It is further submitted that the amended claims on file now fall well within the scope of Section 59.

The patent agent submitted that it is a well-accepted fact that ‘product claims’ cover in its scope the process of its manufacture as well and therefore the amendment made to claims of this application satisfies

Section 59 of the Act is that the amendment is made by way of a ‘disclaimer’ wherein the scope of the product is disclaimed and the claims are now restricted to the process of its preparation.

Also that the scope of the claims is not extended and no new subject matter is added.

The process claims are well supported by the description, especially on page 2 and last 3 lines, page 3 and 2nd para, and in examples 1, 2, 3, 4, and 5.

Keeping the above in view, prepare your arguments for the opponent of the patent, covering the division of the patent, the right of opposition under the Patents Act, and the legal provisions applicable to modification of specification.

Issues in the present case

Can the Applicant Impose, upon the Controller to have and accept the division application?
Does the applicant have the right to amend the patent specification and how?
Can the applicant amend the specification by replacing product claims with process claims in compliance with the provisions of the Patent Act 1970?

The opponents would respectfully like to draw the kind attention of the Learned Controller towards the following findings and facts in the matter of the finally amended claims.

Section 16 of the Patent Act, of 1970 dealt with the power of the Controller to make orders respecting the division of application.

A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, remedy the objection raised by the controller on the ground that the claims of the complete specification related to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

Since claims of the claimed invention and claims of the parent application are verbatim.

There is no such direction or any other guiding principle laid down in the Act, as to how the controller should proceed with the divisional status of an application.

Further application shall define distinct subject matter when compared with claims of the parent application, which is the first and foremost requirement to qualify as divisional application u/s 16 of the Act.

Applicant cannot claim the same set of claims claimed in the parent application in multiple further applications.

It is observed that the reason for filling such a divisional application is to prosecute once again the same set of claims. If the subject matter of claims of the further application is not distinct from the claims of the parent application, divisional status shall not be granted.

In the case of LG Electronics Inc. Vs Controller of Patents, the Honble Intellectual Property Appellate Board (IPAB) held that the applicant cannot take undue advantage of Section16 for extending to prosecute the same subject matter.

Section 57 deals with the Amendment of application and specification or any document relating thereto before the Controller.

1. Subject to the provisions of Section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification or any document relating thereto to be amended subject to such condition,

If any as the Controller thinks fit: Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification or any document relating thereto under this section, while any suit before a Court the infringement of the patent or any proceeding before the High Court for the revocation of the patent in pending, whether the suit or proceeding commenced before or after the filing of the application to amend.