Year: 2020

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). It sets down minimum standards for the regulation by national governments of many forms of intellectual property (IP) as applied to nationals of other WTO member nations. TRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) between 1989 and 1990 and is administered by the WTO.

The TRIPS agreement introduced intellectual property law into the multilateral trading system for the first time and remains the most comprehensive multilateral agreement on intellectual property to date. In 2001, developing countries, concerned that developed countries were insisting on an overly narrow reading of TRIPS, initiated a round of talks that resulted in the Doha Declaration. The Doha declaration is a WTO statement that clarifies the scope of TRIPS, stating for example that TRIPS can and should be interpreted in light of the goal “to promote access to medicines for all.”

Specifically, TRIPS requires WTO members to provide copyright rights, covering authors and other copyright holders, as well as holders of related rights, namely performers, sound recording producers and broadcasting organisations; geographical indications; industrial designs; integrated circuit layout-designs; patents; new plant varieties; trademarks; trade names and undisclosed or confidential information. TRIPS also specifies enforcement procedures, remedies, and dispute resolution procedures. Protection and enforcement of all intellectual property rights shall meet the objectives to contribute to the promotion of technological innovation and to 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.

Requirements

TRIPS requires member states to provide strong protection for intellectual property rights. For example, under TRIPS:

• Copyright terms must extend at least 50 years, unless based on the life of the author. (Art. 12 and 14)
• Copyright must be granted automatically, and not based upon any “formality”, such as registrations, as specified in the Berne Convention. (Art. 9)
• Computer programs must be regarded as “literary works” under copyright law and receive the same terms of protection.
• National exceptions to copyright (such as “fair use” in the United States) are constrained by the Berne three-step test
• Patents must be granted for “inventions” in all “fields of technology” provided they meet all other patentability requirements (although exceptions for certain public interests are allowed (Art. 27.2 and 27.3) and must be enforceable for at least 20 years (Art 33).
• Exceptions to exclusive rights must be limited, provided that a normal exploitation of the work (Art. 13) and normal exploitation of the patent (Art 30) is not in conflict.
• No unreasonable prejudice to the legitimate interests of the right holders of computer programs and patents is allowed.
• Legitimate interests of third parties have to be taken into account by patent rights (Art 30).
• In each state, intellectual property laws may not offer any benefits to local citizens which are not available to citizens of other TRIPS signatories under the principle of national treatment (with certain limited exceptions, Art. 3 and 5). TRIPS also has a most favored nation clause.
• The TRIPS Agreement incorporates by reference the provisions on copyright from the Berne Convention for the Protection of Literary and Artistic Works (Art 9), with the exception of moral rights. It also incorporated by reference the substantive provisions of the Paris Convention for the Protection of Industrial Property (Art 2.1). The TRIPS Agreement specifically mentions that software and databases are protected by copyright, subject to originality requirement (Art 10).

Article 10 of the Agreement stipulates: “1. Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971). 2. Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.”

Post-TRIPS expansion

In addition to the baseline intellectual property standards created by the TRIPS agreement, many nations have engaged in bilateral agreements to adopt a higher standard of protection. These collection of standards, known as TRIPS+ or TRIPS-Plus, can take many forms. General objectives of these agreements include:

• The creation of anti-circumvention laws to protect Digital Rights Management systems. This was achieved through the 1996 World Intellectual Property Organization Copyright Treaty (WIPO Treaty) and the WIPO Performances and Phonograms Treaty.
• More stringent restrictions on compulsory licenses for patents.
• More aggressive patent enforcement. This effort has been observed more broadly in proposals for WIPO and European Union rules on intellectual property enforcement. The 2001 EU Copyright Directive was to implement the 1996 WIPO Copyright Treaty.
• The campaign for the creation of a WIPO Broadcasting Treaty that would give broadcasters (and possibly webcasters) exclusive rights over the copies of works they have distributed.

The Patents Act provides certain safeguards for restoring a lapsed patent. Accordingly a patent that is ceased to have effect because of failure to pay the prescribed fees within the prescribed period under Section 53 of the Act or within such period, allowed under Section 142 of the Act.

The patentee of his legal representative, may, make an application in the prescribed manner for the restoration of the lapsed patent. In the case where the patent was held by two or more persons jointly then with the leave of the Controller one or more of them without joining others may submit the application for restoration within eighteen months from the date on which the patent is ceased to have effect. Though the renewal fees can be paid by any person, the application for the restoration of a lapsed patent, the application has to be made by the patentee or his legal representative.

If the patentee fails to pay the renewal fee within the prescribed period and also within the extendable period of six months by requesting extension of time, the patent ceases to have effect or lapses from the date of expiration. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse.

Within one year of an application for restoration of patent that lapsed should be made. If an overdue annuity is not paid within the extension period, the one year period for seeking restoration commences from the date of recordal.

Section 60 Indian Patent Act:

(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under sub-section (3) of section 53, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.

(2) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary

The Essential Requirements to Restore a Patent:

1. Under Section 60 of the Patents Act 1970, an application for restoration of lapsed patent should be made by patentee or his legal representative.
2. Prescribed fee on Form 15
3. Proof to support that failure of the renewal/ maintenance was unintentional.

Although there is no additional fee for Patent of addition, but the patent holder or the patentee has to submit each form individually for each additional patent with that of the parent restoration application.

Effect of non-payment of renewal fees

To keep the patent in force for its prescribed term, an annual renewal fee is paid to the patent Office. If the same is not paid in the stipulated period then it lapses (ceased to have effect) and becomes a public property. The Act provides certain Safeguards for restoring a lapsed patent.

Accordingly, a patent which is to have effect by reason of Failure to pay the prescribed renewal fees within the prescribed period under Section 53 of the Act, the patentee or his legal representative may make an application in the prescribed manner, for the restoration of the lapsed patent. In case where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them, without joining others, may submit the application for restoration within eighteen months from the date on which the patent ceased to have effect ( Section 60(1)).

Procedure for Disposal of Application for Restoration

a) When the Controller is prima facie satisfied that the failure to pay renewal fee was unintentional and there had been no undue delay, the application for restoration will be published in the official journal.

b) If the Controller is satisfied that a prima facie case for restoration has not been made, the Controller may issue a notice to the applicant to that effect. Within one month from the date of notice, if the applicant makes a request to be heard on the matter, a hearing shall be given and the restoration application may be disposed. If no request for hearing is received within one month from the date of notice by the Controller, the application for restoration is refused. In case of rejection of the application for restoration, a speaking order shall be issued.

c) Any person interested may give Notice of Opposition, in the prescribed manner, to the application within two months of the date of Publication in the official journal on the grounds that the failure to pay the renewal fee was not unintentional or that there has been undue delay in the making of the application.

d) The Notice of Opposition shall include a statement setting out the nature of the opponent’s interest, the grounds of opposition, and the facts relied upon. The notice of opposition shall be sent to the applicant expeditiously by the Controller.

e) The procedure specified in rules 57 to 63 for post grant opposition for filing of written statement, reply statement; reply evidence, hearing and cost shall apply in this case.

f) When no opposition is received within a period of two months from the date of publication of the application for restoration, or opposition, if any, is disposed of in favour of the Patentee, the Controller shall issue an order allowing the application for restoration. The unpaid renewal fee and the additional fee, as mentioned in the first schedule, shall be paid within one month from the date of order of the Controller.

g) The fact that a patent has been restored shall be published in the official journal.

h) To protect the persons who have begun to use the applicant’s invention between the date when the Patent ceased to have effect and the date of Publication of the Application for restoration, every order for restoration includes the provisions and other conditions, as the Controller may impose, for protection and compensation of the above-mentioned persons. No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a Patent committed between the date on which the Patent ceased to have effect and the date of the Publication of the Application for restoration of the patent.

Opposition to the Restoration af a Lapsed Patent

• If after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application he shall publish the application in the prescribed manner and within the prescribed period any person interested may give notice for opposition for the restoration of the patent on either or both of the following grounds:-

a) That the failure to pay the renewal was not unintentional; or

b) That there has been undue delay in the making of the application for restoration (Section 61(1)).

• No other Grounds are prescribed for filing such notice o opposition for the restoration of a lapsed patent. Only person interested can file the notice of opposition for the restoration of the lapsed patent.
• The time period for filing the notice of opposition is two months from the date of publication and the same is filed on Form 14 with its prescribed fee. Indian Patent Act and the rules do not provide any extension beyond the period of two months for filing the opposition. However, a petition under Rule 138 of Patent Rules can be filled seeking extension of time beyond the two months period with its prescribed fees. It should be noted that the petition for extension to be filed within the period of two months only. Since the grant of the extension under rule 138 is the discretionary power of the Controller, the grant of extension cannot be taken for granted.

Rights of Patentee of Lapsed Patent which have been Restored SECTION 62

• On the restoration of a patent, the rights of the patentee shall be subject to such provision as may be prescribed by the Controller in his order and to such other provisions as he thinks fit to impose for the protection of compensation of persons who might have began to avail them of. Or the patented invention between the date when the patent ceased to have effect and the date of publication of the application for the restoration of patent Section 62(1),
• On the lapsing of the patent due to Nonpayment of the renewal fees, the patentee loses his right in the patent and the invention becomes public property. The provision contained in section 62 of The Act is to safeguard the interests of those persons who after ascertain from the Register of Patents that the patent has lapsed due to Nonpayment of the renewal fees and become public property had started commercially using the invention

Surrender of patents

(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.

(2) Where such an offer is made, the Controller shall advertise the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.

(3) Any person interested may, within the prescribed period after such advertisement, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.

(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.

Invention under the Patent Act

The Act under Section 2(1)(j) defines “invention” as a new product or process involving an inventive step capable of industrial application.

The term “industrial application” refers to capable of industrial application in relation to an invention means that the invention is capable of being made or used in an industry. One of the pre-requisite of invention is that it should be new i.e. the invention proposed to be patented has not been in the public domain or that it does not form part of the state of the art.

Under the Patent Act, both processes and products are entitled to qualify as inventions if they are new, involve an inventive step and are capable of industrial application.

Requirements to Qualify as Invention

1. The Invention must be new;
2. Invention must involve an inventive step;

• The invention must be capable of industrial application or utility;

1. The invention shouldn’t come under the inventions which are not patentable under Section 3 and 4 of the Patent Act, 1970;

Non-patentable inventions are enumerated under Section 3 and 4 of the Patent Act. Such inventions are delineated below:

• Any Invention which is frivolous or which claims anything obviously contrary to well established natural laws is not patentable.
• Inventions which are contrary to public order or morality is not patentable.
• An idea or discovery cannot be a subject matter of a patent application.
• Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance is not patentable.
• An invention obtained through a mere admixture or arrangement is not patentable.
• A method of agriculture or horticulture cannot be subject matter of patent.
• A process involving medical treatment of human and animals or to increase their economic value cannot be subject matter of a patent.
• Plants and animals in whole or in part are not patentable.
• A mathematical or business method or a computer program per se or algorithms is excluded from patent protection.
• Matters that are subject matter of copyright protection like literary, dramatic, musical or artistic work is not patentable.
• Any scheme or rule.
• Presentation of information
• Topography of integrated circuits.
• Traditional knowledge.
• Inventions relating to atomic energy
• As defined in Section 2 (j)the term “invention means a new product or process involving an inventive step and capable of application”. The invention should be of absolute novelty as neither it has been used nor published in any part of the world.

Section 3 And 4 Of The Indian Patent Act

Section 3 and Section 4 of the Patent Act is highly debatable and deals with the list of exclusions that are non-patentable that do not satisfy the above conditions. Following are not the “inventions” under the meaning of this act:

(a) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine giving 100% efficiency, or any machine giving output without an input cannot be considered as obvious and cannot be patented.

b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of which could be contrary to public order or morality (that is against the accepted norms of the society and is punishable as a crime) or which causes serious prejudice to human, animal or plant life or health or to the environment.

Example–As in Biotechnology, termination of the germination of a seed by inserting a gene sequence that could lead to the disappearance of butterflies, any invention leading to theft or burglary, counterfeiting of currency notes, or bioterrorism.

(c) Inventions that are a mere discovery of something that already exists in nature.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living or non-living substances occurring in nature.

Explanation–Mere discovery of something that is already existing freely in nature is a discovery and not an invention and hence cannot be patented unless it is used in the process of manufacturing an article or substance. For instance, the mere discovery of a micro-organism is not patentable.

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Landmark Cases of Non-patentable Inventions

In Bilski V. Kappos,

This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied for the patent on hedging risks on commodities trading but their patent got rejected by the US Supreme Court on grounds that an abstract idea cannot be patented.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.

The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or 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.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they are significantly different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.

The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or 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.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they are significantly different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

Case laws

In Glochem Industries Ltd vs Cadila Healthcare Ltd14,[2]

The Bombay High Court held that “Section 3 (d) consists of all fields including the field of pharmacology. Further, in this case, the court held that “the test to decide whether the discovery is an invention or not? It is on the patent applicant to show that the discovery has resulted in enhancement of known therapeutic efficacy of the original substance and if the discovery is nothing other than the derivative of a known substance, then, it must be shown that the properties in derivatives are significantly different in terms of efficacy. So under this sub-section, the very discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance will not be treated as an invention.

In Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies,

The Delhi High Court held that “a method of replacing conventional antennae with split-sector antennae; a split-sector asymmetric antenna for replacing conventional antennae – are all mere uses for the asymmetric antenna already known. Under Section 3(d) the subject matter claimed is therefore not an invention.

In Novartis Ag v. Union of India15,

The Supreme Court of India said that “mere discovery of an existing substance would not amount to the invention”. The Supreme Court of India further, in this case, held that for pharmaceutical patents apart from tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify”.

(e) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.

A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not considered the invention.

Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of synergistic effect i.e., interaction of two or more substances or agents to produce a combined effect greater than the separate effect.

(f) Mere aggregation or duplication of devices working in a known way is not an invention.

The mere aggregation or re-arrangement or duplication of known devices each functioning independently of one another in a known way.

Explanation- mere improvement on something or combinations of different matters known before cannot be patentable unless this produces a new result or article.

(h) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and mushrooms or improving the soil is not an invention and cannot be patentable.

(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human and animals are non-patentable.

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.

Explanation: those medicinal methods administering medicines orally or injecting it, surgical methods like stitch free surgeries, curative methods as curing plaques etc does not fall under the ambit of the invention and are non- patentable.

Case law

In Mayo Collaborative Services V. Prometheus Laboratories, Inc20.

In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes the treatment or cure of diseases) is not patentable as it claims a law of nature”.

(j) Essential biological processes for the production or propagation of animals and plants is not an invention.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

(k) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms;

Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities related to business methods or algorithms (which are like the law of nature) cannot be patented.

(l) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing all these which are related to creativity cannot be patented and fall under the gamut of Copyright Act, 1957.

(m) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather these are mere brain exercises and hence are not patented.

(n) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an invention and hence are not patentable, for example, railway timetables, calendars etc.

(o) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

(p) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of the traditionally known component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from generations to generations of a community and is already known cannot be patented for example the antiseptic properties of turmeric.

(q) Atomic-Energy inventions are non -patentable.

Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall within sub-section (1) of section 20 of the Atomic Energy Act, 1962.

Will NCPI (Bhim) Qualify For Patents?

Unified Payments is a payments mechanism that allows bank customers to send and receive money via a smartphone in real time. These payments settlements technology has been developed by NPCI (National Payments Corporation of India) which is a Reserve Bank of India backed entity with support from Indian banks.

NPCI indicated that the proximity-based solution offered by Tone Tag(a Bangalore based tech startup) could employ a tone, a sound, a near field communication (NFC), a radio-frequency identification device (RFID) or deploy ultra-high frequency (UHF) technology or a combination of these relying upon algorithm encryption. The request for proposal of NCPI added a  clause that raises questions about whether NPCI’s RFP violates Section 3(k) of the Act, as amended in 2002, lists ‘a mathematical or business method or a computer programme per se or algorithms’ under ‘inventions not patentable.

Patentability of Artificial Intelligence

The AI applications are modern-day machine learning functions and are of significant importance, especially in the commercial AI sector. However, the question is, should AI be patentable?

Indian Patent System for AI-based inventions

In India for patenting an AI technology one needs to follow the Computer-related Inventions (CRIs) guidelines which exclude a computer programme or algorithms from being patented (under 3(k) of the Indian Patent Act). At present these guidelines are focused on computers/algorithm/software based inventions and also are used to examine AI based inventions.

To claim for patenting the inventions based on AI following are needed:

• Describe hardware (eg computer system, server, sensors etc.) along with AI algorithms in your patent;
• Claim working method/process of the invention which uses AI; and
• Refrain from focussing directly on programming codes/algorithms of AI.

The word “Artificial Intelligence” can be seen in claims of the granted patents but it is to be noted that this word is used to represent part of a system that utilizes data/commands provided by AI system. However, no focus is made on the operating principle of AI.