As a part of examination of the subject, the Committee considered the subject in detail in its five meetings wherein it heard the views of Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry; Confederation of Indian Industry (CII); legal associates i.e. Amarjit & Associates, Ajay Sahni & Associates, and Subramaniam & Associates; Department of Pharmaceuticals, Ministry of Chemicals & Fertilizers; Department of Agriculture Research and Education, Ministry of Agriculture and Farmers’ Welfare and Federation of Indian Chambers of Commerce and Industry (FICCI).
India’s accession to the TRIPS Agreement in 1995 led to fundamental changes in our patent regime. Subsequently, the Patents (Amendment) Act, 2005 came into force on 1st January, 2005 for meeting the international obligations and flexibilities under the TRIPS Agreement. Since the provisions were made almost 15 years back, revisiting and reviewing provisions in The Patent Act, 1970 is essentially needed. After discussions with the above stakeholders, the Committee in its Report made several observations followed by relevant recommendations. This article features the prominent observations and recommendations, made in relation to the amendment of the Patents Act, 1970.
The Committee made a few important recommendations regarding Section 3 of the Act which deals with patentable subject matter.
- Section 3(b) prohibits patenting of any scientific invention if the Controller deems it to be ‘contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment’. The words used are of wide import and can be interpreted in different ways by each Controller. For an individual authority to have such wide discretion with no guidelines as to what would come under each ground runs antithetic to objectiveness in law. Thus, the Committee recommends that the statutory provision be amended so as to a safeguard mechanism is included, to restrain the Controller from exercising his powers arbitrarily.
- Another problem that arises from the restriction in Section 3(b) is that socially useful inventions may be refused patents if the Controller’s moral compass does not align with the invention applied for at the Patent Office. For example, nicotine chewing gums that help in quitting cigarettes and smoking devices which make smoking less hazardous are not patentable in India due to their perceived immorality. It is suggested that the law be amended to include socially useful inventions and innovations as patentable products and prohibit only those inventions whose subject product is against any law in force.
- Section 3(c) prohibits the patenting of living organisms as well as mere discovery of non-living substances found in nature. The Report recommends that the feasibility of granting patents to non-living substances should be explored and a study needs to be carried out on the possible impact such patenting would have, on public interest.
- Section 3(j) is an important clause dealing with protection of plant and seed varieties, and the bar on patenting them. Essentially biological processes for production or propagation of plants are also barred from being patented under the Act. The Committee has come to an important conclusion in this regard which may also be viewed as its recommendation to the Parliament- patenting of plant and seed varieties should be allowed, and the Government should be made a stakeholder in the patent, with the private player inventor being a co-owner(s). The said patent should then be made available at subsidized rates to farmers in need. This would allow the farmers of the country to enjoy subsidies while private players can be charged market value for use of patents. The Committee however recommends a thorough analysis to be conducted by the Department, on the feasibility and consequences of such patenting. Proper discussions need to be held accompanied by wide consultations with representatives from every stakeholder group to examine such reformations.
The Committee has made an important recommendation regarding the time period allowed towards filing a request for examination, as well as regarding the abandonment of applications that do not comply with the timeline laid down in the statute.
- Section 11B of the Patents Act, 1970 read with Rule 24B of the Patents Rules, 2003 stipulates that a request for examination of the application should be filed within 48 months from the date of filing the application. Such a long period of 4 years makes the patent granting process tediously long and also slows down the momentum with which IPRs are vested and administered in the economy.
- Under Section 21(1) an application for a patent shall be deemed to have been abandoned unless the applicant has complied with all the requirements imposed on him by or under this Act within such period as may be prescribed.Requirements in this case would mean submission of documents, payment of fees and filing of any supporting documents. In countries such as the US such lapses by the applicant can be easily rectified by submission of a reasonable explanation and in some cases an additional penalty being imposed. However, in India, an application is deemed as abandoned. Such inflexibilities in the system complicate the patenting process.Abandonment of application with affording an opportunity to explain themselves, or present their case in a hearing, may discourage individuals from filing for patents. Therefore, the Committee recommends that the statute be amended to introduce flexibility to condone minor lapses on the part of the applicant. This would foster a sense of encouragement amongst persons to engage in innovation and research. It would also instill faith in the system.
The Committee is of the view that increase in patents in the country owing to technological advancements and innovation would lead to a precipitous rise of IPR disputes and infringements posing a threat to the judicial system. It, therefore, recommends the Department that the provision of jurisdiction under Section 104 of the Patent Act should be amended to promote establishing of alternative dispute resolution mechanisms in India such as arbitration, mediation, etc. for ensuring speedy justice to patentees in IPR litigations. The modification in the Act should also be followed by setting up of zonal IPR mediation or arbitration centers in districts with expertise in IPR matters.
EVERGREENING OF PATENTS
- Section 3(d) of the Act is seen as a safeguard measure enacted for public interest. It prevents the evergreening of patents by refusing protection to frivolous inventions which can be seen as minor improvements on existing science/technology. Thus, the provision prevents evergreening. If this is not done, minor improvements on an existing patent would extend the life of the patent for a further period of 20 years and so on and so forth, preventing the patented knowledge from entering public domain. It, therefore, ensures generic competition by patenting only novel and genuine inventions.
- Section 3(d) holds special relevance in the realm of pharmaceutical patents. Often, new and novel drugs are produced by carrying out incremental research on known compounds, with the resultant chemical exhibiting new properties or more efficiency within known properties. The Supreme Court of India in the landmark Novartis case refused patent protection to Gleevec in India, as it was only a betterment of a previously patented drug. However, some criticism has been levelled against the Indian regime, for preventing such patents was not compliant with TRIPS and Doha Declaration. However, this Committee stands in agreement with a 2016 UN Report which stated that developing countries must fully utilise the liberties given under TRIPS and the Doha Declaration to adopt stringent definitions of ‘patentability’ and ‘invention’ in order to suppress evergreening and propel development in the country. The provision is a catalyst for genuine innovations since it guards against frivolous successive patents and is acting in favour of public interest.