Question: Define Patents.

What are the conditions to be satisfied by an invention to be

patentable? What is the term of patent in Indian system.
A patent is one of the types of Intellectual Property Rights. Many people are unclear about the
concept of intellectual property rights. The average person assumes that IPR is reserved for extremely
serious inventors when they hear people discuss it. It is untrue. Anything you make with your mind
belongs to you and is intellectual property. Such a creator’s ownership rights over their works are
known as intellectual property rights. It is as simple as it looks difficult. To claim IPR, you do not
need to invent something revolutionary. Intellectual property law allows even simple works of art
created by children to be safeguarded. An intellectual property right is an intangible right. Like
normal property, you have a right to your intellectual property. An exclusive monopoly is granted to
the owner of the intellectual property right to profit from the creation. You can decide whether to sell
it or keep it in reserve. The catch is that only you can decide whether to give consent to someone
using your intellectual property.

Types of Intellectual Property Rights

Intellectual property law governs the use of Intellectual Property Rights (IPR). Industrial property
rights and copyrights are the two categories into which intellectual property rights fall. Patents,
trademarks, designs, integrated circuits, geographical indications, plant variety protection, trade
secrets, traditional knowledge, and biodiversity are all examples of intellectual property rights.
Authorship rights, artistic rights, film rights, transmission rights, performer rights, etc. are all included
in copyrights. Trade secret protection (like data exclusivity) is non-existent in India.

Criteria for patentability

Only if an innovation complies with the criteria for patentability will it be eligible for a patent grant in
India. The innovation must meet all of the conditions that evaluate its suitability for a patent grant
from various angles to be considered patentable. Compared to other standards, some of them are
easier to meet, but all of them are equally crucial for determining patentability. The following are the
three requisites for patentability criteria:

Novelty

Only if a product or method is both innovative and inventive, will it be regarded as an invention under
the Patents Act. Simply said, novelty refers to anything being new compared to what it was on the
priority date of the patent application. If an innovation departs from the “prior art,” which is what
already exists, it will be seen as unique. Previous art references are never pooled for novelty analysis;
rather, novelty is always evaluated in light of a particular prior art reference at a time. However, a
prior art citation may be interpreted to include general knowledge of the art that isn’t stated explicitly
in the reference. Novelty is included in many sections relating to inspection, anticipation, objection,
and revocation but is not defined by the Patents Act.

Inventive step

Of all the criteria for patentability, the inventive step criterion is the most ambiguous and difficult to
define. The Indian Patents Act offers non-obviousness and technical advancement or economic
relevance as two criteria for evaluating inventive steps. The Patents Act defines inventive steps
in Section 2(ja). The inventor must make a creative contribution to the invention. It needs to be
something that a skilled craftsperson wouldn’t anticipate. Let’s say an innovator creates a device to
address a technological issue. A different expert in the same sector offers the same solution by
drawing on his knowledge or absorbing instruction. The inventor’s technological solution won’t be
regarded as original in that situation because it was just a suggestion or motive. The Supreme Court
defined the term “inventive step” in the Biswanath Prasad Radhey Shyam case in 1978, and it is being
used for inventive step analysis today.

Industrial application

According to Section 2(ac) of the Patents Act, “the creation is a patent of being used or created in a
sector.” It implies that a product must be useful to be patentable because the invention cannot exist in
a vacuum and must apply to all fields. A product will be deemed to be industrially applicable if it can
be produced consistently and has at least one application in a given industry. For a procedure to meet
this condition, the industry must be able to employ it. Users that are uncertain, hazy, future, or non-
specific are not regarded as legitimate users. The same is true when a product or procedure is used in
a minimal or untrustworthy way.

The Delhi High Court noted that an invention must be economically feasible in a case involving Cipla
and Roche after reviewing various Indian and international cases about the utility or industrial
application criteria. Commercial use is required, although commercial development need not be
demonstrated. Fundamentally, the invention must serve the function stated in a patent specification
and have a practical application. Nothing more will be necessary to demonstrate an invention’s utility
for patentability.

Term of a Patent
Section 53(1) of The Patents Act 1970 sheds light on the term of patents. Term of patent is a period of
time during which the applicant is awarded exclusive rights to exclude others from infringing i.e.,
making, using, selling, importing, or distributing the patented invention without the permission of the
applicant. The set of exclusive rights for a patent is granted to an applicant for a limited period of
time, which is 20 years. The patentee will have the exclusive rights to exclude others from making,
using, selling, importing, or distributing the patented invention for a period of those 20 years.
However, once the term of the patent is completed, the patent is termed expired, implying that the
patented invention can now be made, used, sold, imported, or distributed by anyone without needing
the permission of the patentee.

During the term of the patent i.e., 20 years (assuming the patent is active), the patentee can have a
monopoly in the market over the patented product by stopping others from commercially exploiting
the patent or can license the patent to other entities. The patentee can also claim damages from entities
that infringe upon the patent, however, can only claim damages for infringements that might have
occurred after the date of publication of the application until the expiry of the patent. This is where the
term of a patent plays a vital role.

The term of a patent is a fixed 20 year term, however, calculation of start of the term of a patent may
change based on the approach of an applicant in filing a patent application in India. Calculation of
start of the patent term (considering just the 3 types of applications mentioned in the foregoing) is
different in two scenarios, one in case of Ordinary application and one in case of Convention
application or PCT National phase application.

Ordinary Application
In case of an Ordinary application, the patent term starts from the earliest priority date. In a scenario
where a provisional application is filed followed by a complete application within the 12 months due
date, the date of filing the provisional application (one with earliest priority date) is considered for
calculating the term of the patent. For example, assuming a provisional application being filed on
January 01, 2000 followed by a complete application filed on January 01, 2001. Assuming that a
request for early publication was field using Form 9 on January 01, 2001 along with the complete
application, the application may be published within 2 weeks from the date of filing the request
(January 15, 2001 will be assumed as the date of publication for further explanation). The application
may then be prosecuted and may be granted. In the instant case, the term of the patent is considered
from the earliest priority date i.e., date of filing the provisional application. The expiry of the instant
patent application will be on January 01, 2020.

Now, since the application was published on January 15, 2001, the patentee has the right to claim
damages, if any, from entities infringing on the patent from January 15, 2001 until the expiry of the
patent.

Convention application/PCT National phase Application

In case of Convention application, an application (provisional/complete) may be first filed in a
convention country and then enter India within 12 months from the earliest priority date of the
convention application. In this case the date of filing the application in India is considered for
calculating the term of the patent. For example, assuming a provisional application being filed on
January 01, 2000 in a convention country followed by a complete application in India filed on January
01, 2001. Now, similar to the ordinary application, assuming that a request for early publication was
field using Form 9 on January 01, 2001 along with the complete application, the application may be
published within 2 weeks from the date of filing the request (January 15, 2001 will be assumed as the
date of publication for further explanation). The application may then be prosecuted and may be
granted. In the instant case, the term of the patent is considered from the date of filing the application
in India i.e., date of filing the complete application in India which is January 01, 2001 in the instant
case. Therefore, the expiry of the instant patent application will be on January 01, 2021.

Similarly, in case of PCT National phase Application, a provisional application is filed in any of the
PCT member country including India, and then file a PCT application within 12 months from the
earliest priority date, the date of filing the PCT application is considered for calculating the term of
the patent. For example, assuming a provisional application being filed on January 01, 2000 in any
PCT member country followed by a PCT application filed on January 01, 2001 simultaneously
entering India on the same date. Now, similar to the ordinary application, assuming that a request for
early publication was field using Form 9 on January 01, 2001 along with the complete application, the
application may be published within 2 weeks from the date of filing the request (January 15, 2001 will
be assumed as the date of publication for further explanation). The term of the patent in this case is
considered from the date of filing the PCT application which is January 01, 2001 in the instant case.
Therefore, the expiry of the instant patent application will be on January 01, 2021.

In view of the two scenarios explained in the foregoing viz., the Convention application and the PCT
National phase application, since the term of the patent expires on January 01, 2021 and not on
January 01, 2020 as in case of an Ordinary application, and also that the applications in case of
Convention and PCT National phase were published on January 15, 2001, the patentee has the right to
claim damages, if any, from entities infringing on the patent from January 15, 2001 until the expiry of
the patent, which is January 01, 2021 thereby giving the patentee an extended period of protection
(which is almost one year in this case) as compared to the Ordinary application filing route.