ABSTRACT

Patents consists of the bundle of exclusive rights and it originates from the Latin term ‘literae patentes’ which can be termed as ‘open letter’.  The basic idea behind granting the patents was to encourage the participation of people in inventions and to award the inventor by securing his invention. This was utmost important for India as after independence, India was struggling to become commercially stronger and to stand on its own feet it required enthusiasm in the youth for inventions. The mere objective was to award the person for his hard work and to set up an example in public which in legal sense signifies quid pro quo.

The paper deals with Ayyangar’s report, abuse of dominant position and circumstance under whichrevocation of patents is justifiable in light with the latest case laws and developments along with the study of laws relating to patents in U.K. and U.S. Presently.

Keywords:

• Exclusive rights.
• Literae patentes.
• Quid Pro Quo.
• Ayyangar’s Report.
• Abuse of Dominant Position.
• Revocation of Patents.

INTRODUCTION of patents laws

Patents Law is one of the type of “Industrial Property” being treated as an Intellectual Property. Property can be divided into two sub heads. Firstly, tangible property which is governed by the Property Act, 1882. Second is an intangible property which is governed by Intellectual Property Law which consists of different Acts to govern different types of Intellectual Property.

Currently, we have two domestic legislation relating to Patents law in India first is Patents Act, 1970 (with Amendments) and second is Patents Rules 1972 which has made vital changes to the prior 1911 Act. As India got independent in 1950 the inventions in all the fields were boosted after several years of Independence thus, lagging behind the speed of development in other Western as well as European Countries. And, this is the reason why the areas of Intellectual Property law specifically Patents laws haven’t developed much in India which in turn created have created ambiguity in the provisions of law.

Intellectual Property have evolved with time through International Conventions, Treaties (For instance TRIPS Agreement, World Copyright Treaty), National Statutes and Judicial Pronouncement. The Western Law is much more developed than Indian Laws in area of Intellectual Property. The harmonization of Patents law in International aspect depends completely on the International treaties and convention. It shall also be noted that the cost involved in the protection of patents at international scale is quiet hefty and perhaps this creates a gap in the harmonization of Patents Laws completely[1]. Perhaps, this is the reason why the protection of patents is territorial in nature and does not involves the concept of universal/global patent.

Ever since the Patents law was created the scenario for the inventions changed in all over the world. Abraham Lincoln  is the only American president who was being awarded the patent for inventing the “Device for buoying vessels over shoals” in May 1849[2].All though the history of inventions begin just when the first ever “wheel” was invented which was found in Mesopotamia during 5,500 B.C[3].  “Patent” is granted to the first and truthful inventor along with the exclusive right for a quid pro quo for his invention.

The considerations are as follows[4]:-

• The working of the invention within the country so as to facilitate the birth of a new industry in the country or as to improve the existing one.
• Disclosure to the public regarding the manner of working of the patent.

The basic objective behind introducing the Patent system based on the interest of general public at large, as on one hand granting patents motivate patentee on the other hand the invention also helps the public so the relation and benefit here is bilateral in nature. The Patent system also facilitates the disclosure of the invention rather than keeping it expressly as a trade secret, the disclosure here also facilitates further research in the subject. 

Also, the fact cannot be undermining that the said system also helps economy to grow further providing healthy competition and the abuse of the Patents have also been taken care of by provisions of the Act which relates to the abuse of the position of dominance. Where it is stated that the practice of monopoly shall be considered the abuse of the position and as a preventive step the system of “compulsory licensing” is introduced which is mainly given for various medicines and drugs etc. And, to safeguard the nation from the abuse of the position of dominance or public interest at large the stringent process of Revocation of patents has been inculcated in the Act.

A.   ANALYSIS OF CONDITIONS WHERE PATENTS CAN BE REVOKED

In India the Patents Act lists down various grounds for the Revocation of patents so as to not provide absolute rights to the Patents Holders and to regulate their right taking into consideration the well-being of the society at large.

Classifications are as follows[5]:-

1. Under Section 66 Revocation of patents in Public interest by the Central Government Suo moto.
2. Under Section 65 Revocation of patents relating to atomic energy by the comptroller.

• Under section 85 Revocation by the controller for non-working of the patent.

1. Under section 64 (1) (4) & (5) revocation by the Appellate Board on petition by a person interested or the Central Government or the High Court on a counter claim in a suit for infringement on any grounds, revocation by the High Court on petition for failure to comply with the request of the Central Government to use the invention.

ANALYSIS

The first view of the above mentioned sections makes it very clear that the revocation of patents is usually done taking into consideration public interest and public policy so that directly or indirectly there is no abuse of patents by the patent holder. Hence, following the Ayyangar’s report[6] Section 140 and 141 of the Act was also created to provide remedy where the Patent rights are abused. In the case of Hindustan Unilever Limited (HUL)[7] the patents granted to them for “PURE IT” was revoked when Tata Chemicals Ltd. filed a suit for revocation as per section 8 of the Act. The case made it very clear that the non-compliance of the directions of secrecy can lead to revocation of patents. The term “secrecy” here signifies section 35 of the Patents Act which suggests that the patented invention can be used for defence purposes and thus, the communication of such information against the directions of the specified authority can lead to the revocation of patents.

Section 66 inculcates the provision for the revocation of patents in public interest where it is conclusively determined that the patents were exercised in the manner which was not justified in the public interest and when the manner in which it was used was prejudicial to public at large.This was recognised in U.K. Law[8] and as the Patent law of India is heavily based on the U.K. Laws , the principle was inculcated in the Patents Act of India from there. The “Jamun” patent granted to Avesthagen Limited was revoked on the grounds that it was affecting the public interest by being prejudicial to public as the company filed for a patent in European Patent office which in turn infringed the Traditional knowledge Digital Library[9].

The Atomic Energy Act, 1962 lays down Section 20 (1) which specifies that the Central Government has the power not to grant the patents for any invention which in their opinion could facilitate the  control, production or disposal of anything related to atomic energy or anything similar to radioactive substance.[10] The vital point here is that no such provision is present in U.K. Laws. As per the authors analysis the said provision was inculcated taking into consideration the political conditions in India and especially Kashmir related issue. The case considering the provision is Raytheon v. Controller of Patents[11].Under the provisionthe notice is also being served to the applicant and other person said to interested party for the revocation of patent. The controller here also has the power to deal with the objection by making few amendments so that it surpasses the scope of the s.20 of the Atomic Energy Act.

Under Section 85 of the Act[12] also the provisions are given which gives the authority to Controller for non-working in the case where the compulsory licence has been granted in respect of the patent, in instances where two years have passed since the date of ordering the first compulsory license and where in spite of the compulsory license or licenses being granted, the patented invention has not been worked in India or that reasonable requirements of the public in respect of the patented invention has not been satisfies, or that the patented invention is not available to the public at a reasonably affordable price.So, in a nutshell the said provision deals with the situations where “compulsory licenses” have been granted to the patent holder. The compulsory license is being granted for the patents where the reasonable requirements of the public with respect to the patented invention was not satisfied or in the situations where the patented invention was not granted to the public at reasonable price or in the situations where the patented invention wasn’t worked in the territory of India[13]. There are various requirements for compulsory licenses which are being listed in Section 90 of the Act.

Section 64 (1) of the Act has been inculcated taking into reference s. 32 of the U.K. Patents Act, 1949. The provision enables the High Court to revoke the patents if the petition is being filed by any person interested or by the Central Government by the Appellate Board or on a counter claim by the defendants in a suit regarding the infringement of the Patents. The grounds being listed here are wrongful obtainment of Patent right[14], failure in order to disclose vital information’s regarding the foreign applications[15], where the directions for the secrecy is not complied [16] and where the amendment of specification is being obtained by fraud[17].

The strange thing about the provision is that it was included in the Indian Patents Act by referring to U.K. Patents laws but presently U.K Patents Act lists down the grounds for revocation only under section 72 of the Act which includes revocation on the ground of ambiguity, novelty and false suggestions etc.

 The Central Government may also petition the High Court for the revocation of the patents right of the Patentee where they are of the opinion that the patentee did not comply with the terms and condition for the use[18] of Patented invention in India. The instant provision gives authority only to the Central Government and not State Government and notice here is served to the Patentee as well as all the interested persons.

B.Analysis Of THE Provisions Of THE U.K. And US.  Patent Laws.

Though Indian Patents Laws are based and designed referring to the U.K. Legislation on Patents but the U.K. laws presently specifies only five grounds[19] for the revocation of Patents namely Non Patentability, Non- Entitlement, Insufficiency, Added matter and un allowable post grant extension.  And, the compulsory licensing for food and medicines being vested in 1949 Act has been struck off as well as the essentials for restoration of patents which are lapsed are also made more stringent and modified to some extent. The U.K. laws are comparatively much more developed than Indian Patent Laws. In fact, India have vested various provisions of revocation in the Act from U.K. laws. But, U.K. itself have now removed a lot of provisions from its Act there by modifying the Act. And, presently India haven’t modified its laws at par with U.K. laws.

The controversy regarding US Patent laws first appeared in the case of Diamond v. Chakrabarty’s[20] where the oil eating living bacterium was considered a patent eligible subject matter and the patent was granted to the biotech researcher and investor . This case triggered a lot of negative opinions where some considered it as “barbaric” in nature.[21] Later, the Supreme court also in J.E.M. Ag Supply, Inc. v. pioneer Hi-Bred International, Inc.,[22]held that the reproducible plants both sexually and asexually can be considered as the “subject of utility” despite of the stringent scheme legislated[23] by Congress for the matters relating to the patentability for both categories of plants.

The diversity of legislations relating to Patents Laws is evident here. And, this also emphasises on the importance of harmonization of patents laws. As, we are trading globally and utilising the fruits of inventions of the patentee globally there is a need for universal parameters while granting of patents as the public welfare demands the system of International Patents as it will widen the access of the invented products to the public at large from different countries as well and the International patents system would also regulate the global economy.

The key towards harmonization of Patents laws shall be non-discrimination in the terms of granting the patents as well as while revocation of patents. In the process of harmonizing of the Patent laws the International organisation like OECD can play great roles to simplify it. Though the journey towards harmonization of patent laws is tough but baby steps can be taken so that in coming future the laws completely become universal in nature at least to some extent.

The harmonization of the Patents law will also fill the gap between public welfare as it would be beneficial for all the countries both economically as well as politically as this will also facilitate the diplomatic relations between countries and maintain coherence. By the “welfare” here the author wants to suggests the inventions which are beneficial for public health or protection of environment etc. Though the TRIPS Agreement has tried to harmonize the laws relating to Intellectual Property but it has failed to fill the gap considering public goods which was balanced by Doha Declaration to some extent. The main issue and barrier in the harmonization of the Patents Laws is to create a balance between legitimate interests of all the parties, the patent holder as well as the country.

v  “WIPO AND THE HARMONIZATION OF PATENT LAWS” – AN ANALYSIS

Backdrop- The Paris convention considering the Protection of Industrial Property, 1883 was the first step towards harmonization of the patent laws. During 1983 the discussions regarding scope of Patent law took place which was evolving with the help of the Experts Committees who were involved in drafting a treaty supplement to the Paris Convention. But it failed and the new treaty was not adopted. After the failure of the 1991 many provisions were added in the Trade Related of Intellectual Property Rights (TRIPS Agreement). But the vital issues like inventive steps and novelty were not addressed[24].

It was 1995, when more serious discussions regarding patent laws were held which eventually resulted in the adoption of “Patent Law Treaty” also known as PLT in year 2000 which has so far harmonized the basic formal procedures focusing the National and Regional applications for patents[25].

Later, as the Globalization was at its peak the demand for harmonization going beyond mere formalities persuaded the Standing Committee on the Law of Patents (SCP) of WIPO to bring uniformity in the substantive part of the patent laws and to conclude Substantive Patent Law Treaty. Further, the Negotiation took place and was kept hold in 2006[26].And, since then the Negotiations continues to be kept on hold[27].

Patent cooperation Treaty:

The “patent cooperation Treaty” had so far facilitated the process for the protection of the patented invention in all the member states by filing the Application but the procedure is cumbersome as well as very costly.  There are only two options for the patentee if he wants his inventions to be protected globally first is that one can at his option file the patent application in all of the countries where he wants his invention to be patented at the same time or can be filed in Paris Convention country and then within the period of 12 months the application can be filed in other Paris Convention Countries.  And, the other is obviously the filing of an application under PCT within 12 months since the date of filing the application. Though the second option is more feasible[28]. In year 2016 there were total 3 million patent applications filed under PLT[29]and every year the number of patent applications are increasing.

FINDINGS

The analysis of the above mentioned subject matter in the project have provided me with the in depth knowledge of the concept of the Revocation of patents and the grounds for the grant of patents in India along with Comparative analysis of US. And U.K. laws. The author has observed that the laws relating to patents is evolving world-wide as per the need of an hour.

And, that the grounds for revocation in India is justifiable which is evident from the analysis of the case laws mentioned in the project. Though somewhere the provisions are not similar to that of U.K. or U.S. Perhaps this is because of the different political and economic condition prevailing in India. For instance, Section 20 (1) specifies that the Central Government has the power not to grant the patents for any invention which in their opinion could facilitate the control, production or disposal of anything related to atomic energy or anything similar to radioactive substance. Thus, the provisions relating to revocation of patents is stringent in India so that the monopoly/ abuse of dominant position is not practiced in India and if it is then the patent can be revoked and also the provisions for revocations of patents directly suggests the fact that the interest of general public have been kept on the top of everything.

Lastly, the author is of the opinion that (Patent Law Treaty) PLT is praise worthy but it can also not be undermined that the process of filing of Application is not cost efficient and demands a lot of investment starting from hiring lawyers to every step after that. The territorial nature of “Patents” to some extent is hindering globalization and the harmonization in the “substantive” patent law would bring a lot of positive change in the trade globally.

[1]Ruth L. Okediji, Patent Law In Global Perspective: Public welfare and the International patent system (first published in 2014) 3.

[2]Vj Taraporevala, Law of intellectual Property (first published In 2013, 2^nd Edition) 19.

[3]Vj Taraporevala, Law of intellectual Property (first published In 2013, 2^nd Edition) 21.

[4]Raj Prakash v Mangatram chowdhary [1978],AIR 1978 Del 1 [11], [38].

[5] P Narayan, Intellectual Property Law: Revocation and Surrender Of Patents (published in 2017, 4^TH edition) 347.

[6]ibid 823-829.

[7] V. Kasturi Rangan, Mona Sinha, Hindustan Unilever’s ‘Pureit’ Water Purifier (2011) 9-511-067 (Harvard Business School).

[8]The principle was inculcated following the principle from Section 6 of the Statute of Monopolies (1682), Terell on patents, 12^th ED., para 6.

[9]Indian Institute of Patent and Trademark Attorney, ‘Revocation Avesthagen Patent’ (2012), https://www.iipta.com/avesthagen-patent-revoked/.

[10]Atomic Energy Act 1962, s. 20 (3).

[11] Raytheon v. Controller of Patents (1976) IPLR 21.

[12] Patents Act 1970, s. 85.

[13] Patents Act 1970, s. 84.

[14] Patents Act 1970, s. 64 (1)(c).

[15] Patents Act 1970, s. 64 (1) (m).

[16] Patents Act 1970, s. 64 (1) (n).

[17] Patents Act 1970, s. 64 91) (o).

[18] Patents Act 1970, s. 99.

[19] Patents Act 1977(U.K.), s. 72 “Subject to the following provisions of this Act, the court or the comptroller may by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say

(a) the invention is not a patentable invention;

(b) that the patent was granted to a person who was not entitled to be granted that patent;

(c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;

(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed;

(e) the protection conferred by the patent has been extended by an amendment which should not have been allowed”.

[20]Diamond v. Chakrabarty, 447 U.S. para 309.

[21]Ruth L. Okediji, Margo A. Bagley, Patent Law In Global Perspective: Subject Matters And Patentability (published in 2014) 150.

[22] J.E.M. Ag Supply, Inc. v. pioneer Hi-Bred International, Inc.,534 U.S. 124, 134 (2001).

[23]Plant Patents Act 1930, s. 161-164,35 U.S.C. (2000).

[24] World Intellectual Property Organization,Patent Law Harmonization, http://www.wipo.int/patent-law/en/patent_law_harmonization.htm.

[25]World Intellectual Property Organization, Patent Law Harmonization, http://www.wipo.int/patent-law/en/patent_law_harmonization.htm.

[26]World Intellectual Property Organization, Patent Law Treaty [1970], http://www.wipo.int/patent-law/en/patent_law_harmonization.htm.

[27]ibid.

[28] ibid.

[29] WIPO, Patents Application Indicators [2017],  http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017-chapter2.pdf.