India has amended its patent law to comply with TRIPS by presidential decree. Because of the mode of adoption, the decree must be ratified by Parliament (which is not currently in session) within six months. Apparently there were issues within India’s governing coalition about the language to be used in legislation which prevented the legislation from being introduced to Parliament before it went into recess.
Most provisions of the decree come into effect on January 1, 2005.
The main features of the decree are as follows:
- The bars on the patentability of substances used as foods, medicines or drugs and the bar on patentability of substances produced by a chemical reaction are repealed. Concomitant with this the provisions providing for exclusive marketing rights that were adopted by the Patents Act 1999 are omitted from the revised Act. As a consequence of these changes, applications for protection of pharmaceutical or agrochemical products that have been filed under “black box” or “mail box” provisions of the former law can now be examined as long as a request for their examination is timely filed.
- Section 3(d) of the Indian Patent Law which bars the grant of patents for new uses is amended to insert the word “mere” before “new use.” The significance of this change is not clear, but it may be intended to counter the practice of Indian examiners rejecting the use of functional language in claims on the ground that such language is simply a disguised way of trying to claim new uses of old products.
- The prohibition on patenting of computer software is amended to read: a computer programme per se other than its technical application to industry or a combination with hardware; a mathematical method or a business method or algorithm.
- The obligation to advise the Controller as to the status of foreign applications and ability of the Controller to require details of the prosecution thereof has been extended from the acceptance date up to the date of grant.
- Where an application is based on an Indian provisional application, the possibility of delaying filing of the complete specification for more than one year is repealed.
- Depositories in which biological materials may be deposited to meet the enablement requirement are confined to Budapest Treaty IDA’s. The deposit must be made before filing of the Indian application.
- The provision of the Act providing for 18 month publication is modified to provide that the point at which publication is to occur will be prescribed by rules made by the Controller. There is no indication yet of the period that is to be set by such rules.
- The term for requesting examination has been changed from a fixed four year period to one that is to be set by rule. We have unconfirmed advice that the rule will set a three year term rather than the current four year term.
- The period within which a divisional application may be filed or within which an application may be post dated is extended from the date of acceptance to the date of grant.
- The period within which the requirements of the Act must be complied with (including the term within which acceptance of application must be secured) is to be fixed by rules made by the Controller. This may result in a change from the current requirements that the first office action must be responded to within four months and that the application must be place d in order for acceptance within one year of the issue of the first action.
- The opposition provisions (which previously permitted opposition after completion of examination but prior to grant) are replaced by new provisions (1) permitting the filing of information to be considered by the examiner (but giving no right of participation in the proceedings) at any time after publication of the application but prior to grant and (2) the possibility of filing an opposition during a period of one year after grant.
- The grace period within which an Indian application must be filed following publication at an exhibition or disclosure to a learned society is extended from six months to twelve months.
- The old secrecy provisions for inventions made by persons resident in India have been reinstated. If an invention is made by an Indian resident no foreign applications can be filed until a period of six weeks has elapsed from filing of an Indian application unless a specific permit is granted by the Controller for this purpose.
- Provisions relating to compulsory licensing of pharmaceutical products have been expanded to make it clear that such licenses can be granted for manufacture and export to “any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided that compulsory license has been granted by such country.”
- The exclusions from patent infringement for steps reasonably relating to development of data required for marketing approval has been expanded to include importation of the patented invention.
- The definition of a convention country is expanded to cover all countries that are party to a treaty that affords reciprocal rights to Indians.
Some additional provisions relating to the Appellate Tribunal will come into effect later.
If you require any further information, please let us know.