Agreement on the Trade related aspect of intellectual property rights (TRIPS) is one of the agreements of the World Trade organisation (WTO) document. We being members of the WTO have to accept it. It talks about following seven kinds of Intellectual Property Rights:
TRIPS provides minimum standard to be observed by the members. We have to amend our laws to bring them in conformity with the TRIPS. The time limit to do so is provided in Article 65 Part VI (TRANSITIONAL ARRANGEMENT) of the TRIPS. Under this provision, we had to amend our laws by 31.12.2004.
Patents {dealt under Article 27 to 34 (Section 5 Part II) of the TRIPS} are the most powerful of all intellectual property rights. They can prevent a process or manufacture of a product. It is an exclusive right given by law to the inventors to make use of, and exploit their inventions for a limited period of time in exchange for a full description of how to perform the invention. Patents play important role and its importance to understand their implication and prepare for the same. But first some words about patents.
HISTORICAL BACKGROUND
Historically, the word ‘patent’ has come from the Latin phrase ‘litterae patents’ literally meaning letters patent. Patent means open and letters patent was used to refer to open letters conferring privileges, rights, ranks, or titles by sovereign bodies/rulers (see End-note-1). They were official documents and were ‘open’ as they were publicly announced.
Initially, these letters were issued (around the sixth century) in Europe for the discovery and conquest of foreign lands on behalf of the ruler. Patents came to be related to inventions around the 15th Century and the first patent law—as we understand it today—was passed on March 14, 1474 by the Venetian Senate (see End-note-2).
The grant of exclusive privilege to inventors spread from Italy to other European nations. Countries (that lacked technology) started granting exclusive patents (rights) to foreign inventors in exchange of introducing the technological innovation in that country. However, the unlimited duration of exclusive rights created unfair monopolies, and the British Parliament enacted the Statute of Monopolies in 1623. It prohibited royal monopolies but it reserved the right to grant “letters patent” for inventions up to 14 years.
In the United States, Article I Section 8 of the Constitution authorises Congress to create a national patent system to promote the Progress of Science and useful Arts: by ‘securing for limited times to ... Inventors the Exclusive Right to their respective ... Discoveries’. Congress passed the first US Patent Statute in 1790. France enacted its patent system the following year. By the end of the 19th century many countries, including India, enacted patent laws.
The first Patents Act in India was Act No. VI of 1856. It was an Act for granting exclusive privilege to inventors. It received the assent of the Governor General on 25th February 1856. This Act was repealed by Act No. IX of 1857 on the ground that it was passed without obtaining the previous sanction of her majesty. This is the reason indicated in the preamble of the Act No. 15 of 1859 (for preamble see below) (see End-note-3), which was passed by the Legislative Council of India to encourage inventions of new manufacturers and for protecting their privileges.
Act No. 15 of 1859 was replaced by Inventions and Designs Act, 1888 (Act No. 5 of 1888). This was further replaced by the Indian Patents and Designs Act, 1911 (Act No. 2 of 1911). In 1967 the Government of India, introduced a patent bill that culminated in the Patents Act, 1970 (the Patents Act).
The Patents Act has been amended by three amending Acts, namely Act No. 17 of 1999 (the 1999 Amendment), Act No. 38 of 2002 (the 2002 Amendment) Act no. 15 of 2005 (the 2005 Amendment). In between ordinance no. 7 of 2004 (the 2004 Ordinance) was also promulgated but it was repealed by the 2005 Amendment. There are changes between the 2004 Ordinance and the 2005 Amendment. The 1999 amendment has been enforced. Most of the 2002 Amendment was enforced with effect from 20.5.2003. The 2005 Amendment has been enforced from 1.1.2005.except for sections 37(a) (ii), 37(b), 41, 42, 47 59 to 63 (both inclusive) and section 74 of this amendment. These amendments are of some importance and I will refer to them later.
GRANT OF PATENT—PROCEDURAL SIMPLIFICATION
Every country has its own patents law. In general, inventors must apply for patents in each country where they wish to manufacture, use, or sell their inventions. International efforts have been made to facilitate this process. The details are as follows:
Patents can be granted for inventions. The word ‘invention’ {section 2(1)(j) of the Act} read with the word ‘inventive step’ {Section 2(1)(ja) of the Act} means a new product or process that is capable of industrial application. Invention must be novel and useful. It must involve technical advance as compared to the existing knowledge or having economic significance or both. It should not be obvious to a person skilled in the art.
The words invention and inventive steps should also be seen in light of section 3 of the Patents Act that defines what are not inventions. A new word 'new invention' has been substituted by the 2005 Amendment as section 2(1)(l). This word is not used anywhere else. A thing can not be an invention unless it is new. Section 2(1)(l) explains the word 'new invention' and should be seen as an explanation to section 2(1)(j) of the Patents Act which defines the word 'invention'. Section 2(1)(l) may also be seen as an elucidation of section 3(p) of the Patents Act explaining what is not an invention.
The word 'new invention' {section 2(1)(l)} as well as section 3 of the Patents Act further explain and qualify grant of Patents. Section 2(1)(l) clarifies that the invention or technology should not be such that could have been anticipated by publication in any document or used in the country or elsewhere in the world before date of filing patent application; it should neither be in public domain nor should it form part of prior Art.
Section 4 of the Act is an exception to the grant of Patents. It excludes the grant of patents to inventions relating to Atomic Energy.
PATENTS — RIGHTS AND LIABILITIES
Patents can be inherited by the heirs of a patentee. A patentee may sell (assign) or mortgage a patent. (Chapter XIII of the Act: REGISTER OF PATENTS).They have right to exclude others from making, using, or selling the invention and may authorise others to do any of these things by a licence and receive royalties or other compensation for the privilege (Chapter VIII of the Act: GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY).
A person, making unauthorised use of a patented invention, may be sued by the patentee for damages and can be restrained to prevent further infringement. However, we have not provided criminal prosecution for the infringer (Chapter XVIII of the Act: SUITS CONCERNING INFRINGEMENT OF PATENTS). TRIPS mandates members to provide criminal procedures and penalties in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale, but not for the violation of patents (Article 61 of the TRIPS).
A patentee may not market an invention or even licence it to someone who wants to market it. Such a situation might keep a useful invention from being of service to the public. Thus in many countries patent law includes a clause that stipulates compulsory working of an invention. This means that the patentee must manufacture/utilise the invention or licence it to someone who will (Chapter XVI of the Act: WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION).
PATENTS: PRODUCT— PROCESS
Generally in the developing countries patents for product in medicine, or drugs or substances produced by chemical process were not granted. In India also section 5 provided that patent for processes only—and not for the product—may be granted for the following substances,
TRIPS does not make any such distinction. The distinction had to be removed by 31.12.2004 and in the meantime, in view of Article 70(7) and 70(8) of the TRIPS, a provision had to be made for filing patent applications and creation of exclusive marketing rights (EMR) in respect of these products. This was done by the 1999 Amendment by amending section 5 and addition of Chapter IV-A (EXCLUSIVE MARKETING RIGHTS) in the Patent Act. Section 5 after the 1999 Amendment provided that a claim for patent of an invention for a substance itself intended for use, or capable of being used as medicine or drug {except for medicine or drug specified under sub-clause (v) of clause (l) of sub-section (1) of Section 2 of the Act} was to be dealt with under chapter IV-A of the Patents Act. The 2005 Amendment has deleted section 5 as well as Chapter IV-A (EXCLUSIVE MARKETING RIGHTS). Of course by section 77 (Transitional Provision) of the 2005 Amendment every application filed under chapter IV-A in respect of application covered under section 5(2) of the Patents Act (as it stood earlier) is to be treated as request for examination for grant of patent under section 11B(3) of the Patents Act as amended by the 2005 Amendment.
Grant of product patent—in respect of those substances where no patent could be granted earlier—will affect the prices of these products, and the economy of our country. We should find appropriate solutions within the TRIPS. This can be done under sub-article (2) and (3) of Article 27 of the TRIPS.
Article 27(2) and 27(3) of the TRIPS provide which inventions may be excluded from patentibility. Article 27(2) permits exclusion from patentibility of invention whose prevention of commercial exploitation is necessary on the following grounds:
Article 27(3) also permits exclusion of following items from patentability:
The plant varieties under the TRIPS have to be protected by patents or an effective sui generis system or by combination of both. The protection for plant varieties has been done in our country by enacting separate Act titled as 'The Protection of Plant Varieties and Farmers' Rights Act 2001' (Act No. 53 of 2001). The other Act in this regard is the Biological Diversity Act, 2002. Some other steps have also been taken by amending the Patents Act by the 2002 and 2005 Amendments. The preamble to the 2002 Amendment states that it has been enacted, ‘to make the law not only TRIPS compliant but also to provide therein necessary and adequate safeguards for protection of public interest, national security, bio-diversity, traditional knowledge, etc.'
Section 3 of the Patent Act is titled 'what are not inventions'. It provides exceptions to the inventions. It was amended by the 2002 Amendment. Among the others it substituted section 3(b), amended 3(i) and added sub-section (j) to (p). The 2005 Amendment has substituted section 2(1)(l) in the definition clause defining the word 'new invention' and has substituted section 3(d).
Exclusions mentioned in section 3(b) and 3(j) are in the TRIPS. Section 3(k) is covered under general definition, however some exclusions—mentioned in section 3(k) and clause 3(p)—are neither part of the TRIPS nor part of the patent laws of some countries. This has led to difficulties and allegation of bio-piracy. This should be ironed out.
PROBLEMATIC AREAS: GLOBAL SOLUTIONS
Patents could be for process or product. If a patent is taken out for a process in arriving at a known product, any other person may take out a patent for another process for arriving at the same known product. Nevertheless when a patent is taken out for a new product which was not known before and the patent describes one specific process in making the new product, then the patent is entitled to protection against any other process in making the same product. Any person who even adopts a different process in arriving at the same product infringes the patent (Section 48 of the Patents Act). Should this be the law? Should a person arriving at same product by different process be also prohibited? Will economy be better served if such patent is not granted?
In earlier times, patents were granted for fourteen years presumably due to the reason that it took about seven years to train the trainees and fourteen years to train two generations of trainees. In England It was increased to sixteen years in the early part of the twentieth century. We followed suit and the sixteen year period was provided in the previous Act dealing with Patents. In the Patents Act the period was 14 years except for some categories where the norm was five or seven years (section 53 of the Patents Act). TRIPS mandates protection of patents for twenty years. We have also provided the same by the 2002 amendment. The field of Information Technology is moving with geometrical progression. In the field of medicine and drugs, often the question is between life and death and many nations are still developing. Is period of twenty years in all fields a reasonable one. Will it better in case shorter period is provided?
TRIPS has provided a minimum protection that should be granted in the area of IPRs. If we wish to be part of the WTO then we have to modify our laws and make them TRIPS compliant. Nevertheless in case some provisions are against our national interest then we could act as a catalyst in changing opinion among the other nations. The Substantive Patents Law Treaty (SPLT) is being sponsored by the WIPO to further harmonise the substantive part of patent law. It is still in its formative stage. This may change the International opinion about patents. It appears that we are not participating in it. We should participate and protect our national interest. We should see that the legislative intent stated in section 3 (k) with reservation mention under succeeding heading and 3(p) is included in SPLT. This is to point out that we alongwith Brazil, Pakistan, Peru, Thailand, and Tanzania have proposed amendments in TRIPS (article 29 bis) regarding disclosure of Origin of Biological Resources and/or Associated Traditional knowledge. This is to ensure that there is mutually supportive relationship between TRIPS and the Convention on Biological Diversity (CBD).
COMPUTER PROGRAMME
Law - US
Section 3 of the Indian Patents Act explains those that are not inventions. Patents cannot be granted for discoveries and inventions mentioned in section 3 of the Patent Act. There is no such limitation in the US law as the Congress intended to include anything under the sun that is made by man, but the US Supreme Court in the Chakrabarty case (see End-note-4) held,
‘This is not to suggest that … [law] has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus a new mineral discovered in the earth or a new plant found in the wild is not a patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestation of nature, free to all men and reserved exclusively to none.’
The US Supreme Court in Parker v. Flook (437 US 584: 57 L Ed 2d 451) also held that a method for updating alarm limits during catalytic conversion, which is a mathematical formula, is not patentable.
The US Patents Act neither specifically refers to programmes for computers, nor to the business methods. The US Supreme Court in the Gottschalk case (Gottschalk Vs Benson (409 US 63=34 L Ed 2d 273) held that a computer program - involving a method to convert binary-coded-decimal numerals into pure binary numerals - cannot be patented for the reason,
The Diehr case (Diamond v. Diehr, (1981) 450 US 175: 67 L Ed 2d 155) was a case involving a process for curing rubber that included a computer programme. Rubber in a mould is to be heated for a given time according to the Arrhenius equation, named after its discoverer Svante Arrhenius. The inventor had found a process for constantly measuring temperature inside the mould, which was fed to a computer that opened the mould at the right time. The court by a five to four decision held that a patentable claim does not become unpatentable merely if it uses a mathematical formula, computer programme, or a computer. In short, a computer programme may not be patentable as such but may be patentable as a part of an industrial process.
Traditionally, the processes concerned with technology only could be patented. Many other activities including business methods, or data analysis which one would consider processes, were excluded from patents. However, since the Diehr case, there has been a shift in the US. US Patent and Trade Office (USPTO) has issued a Manual of Patent Examining Procedures containing guidelines for patenting inventions. Its earlier policy for computer related inventions {Paragraph 706.03(a)} was as follows (See Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2nd Cir. 1908) and Wait (in re:), 24 USPQ 88, 22 CCPA 822 (1934)):
The aforesaid change was noticed by the US court of appeal in the State Street case (State Street Bank v. Signature Financial Group, 149 F. 3D 1352) and the court held that,
In short the law in the US is that, an abstract idea by itself never satisfies the requirements of the Patents law. However an abstract idea when practically applied to produce a useful, concrete and tangible result satisfies it. Today, USPTO has one chapter on Patent Business Methods and is granting patents to software techniques for business methods and data analysis, if they are useful. Australia and Japan have also followed suit. Some examples of patents of business methods granted in US are:
In the US ‘Business Method Patent Improvement Act of 2000’ was introduced in the Congress on October 3, 2000 and would apply to all pending applications as well as to all patents issued. It will restrict the ability of the USPTO to issue business method patents. Among the others it would create a presumption of obviousness where a computer has been used primarily to implement a known business method. It has not yet been passed and many feel that it may never be passed.
Law—Europe
Article 52(2)(2) of the European Patent Convention 1973 (EPC) specifically states that ‘schemes, rules and methods for performing mental acts, playing games or doing business, and programmes for computers’ will not be regarded as inventions. This is also the law of the member countries of the European Patent convention: computer programmes and business methods cannot be patented there. However in practise, it is not so.
The European Patent Office (EPO) is an organization formed by convention EPC; it does not work under the European Commission. The EPO and a number of patent offices of the EPC's member countries have been granting software patents. However, there’s been no consistent practice among all EPO member countries, and there’s been a good deal of uncertainty whether software patents are even enforceable (see here also). In order to harmonise the practise, the European Commission proposed a draft directive in 2002 on the subject. But the text was never agreed upon. Some feared that Europe would get a much more liberal regime, like that of the US. Others feared that they would lose the patent protection they already enjoyed. As a result, on 6th July 2005, the proposal was defeated in the European Parliament.
The result of the aforesaid debate is that the inconsistent practice regarding software patents is still continuing. The European Patent Office (EPO) has now launched a web-site to provide information about,
Law—India
Section 3 of the Patents Act provides what are not inventions and thus cannot be patented. Section 3(k) provides that mathematical or business method or computer programmes per se or algorithms are not inventions for purposes of the Patents Act. The word 'computer programme' is modified by the word ‘per se'. This word means standing alone, or by itself, or in itself. It shows that under section 3(k) a computer programme standing alone or by itself cannot be patented. Nevertheless it also means that a computer programme—not standing alone— may be patented; it leaves doubts regarding its scope. The courts may interpret it in the same manner as the Europeans are doing or could go all the way as is being done in the US: of course its finer boundaries will be determined when courts actually interpret these words (see End-note-5).
Period
Many feel that patents may not be granted for doing business on the Internet and in any case the period of 20 years is too long as computer technology changes every two years (see here).
Method of Patenting
Presently, patent applications for inventions involving computer programme merely contain flow chart but not the source code. Patents are granted in exchange for a full description of the invention as well as how to perform it. In case source code is not disclosed then whether there is full disclosure. These questions need to be addressed judicially.
The law regarding patentability of computer programmes is still in flux. There is no specific reference to computer programme in the TRIPS though there is reference to it in EPC. The following questions may be settled globally:
PLANT VARIETIES AND BIODIVERSITY
Patents can not be granted on anything that occurs in nature or on its properties. However, a product that is new invention and obtained through an inventive step from a thing in nature, may be patented. A process or product in public or traditional knowledge can not be patented as it is not a new invention; so also aggregation or duplication of known properties of traditionally known components: in both cases, prior art exists.
In our country patents could not be granted on substances intended for or capable of being used as food, or medicine, or drug, or prepared or produced by chemical processes. This does not mean that these substances were not in existence or use in our country.
Patents, for some of the aforesaid products or the ones based on traditional knowledge have been granted in different countries in ignorance of prior art: some of them have been cancelled too. We have already enacted the Biological Diversity Act, 2002 and as the preamble indicates, it has been enacted to provide,
Basmati Rice
Rice Tec Inc, a Texas based US company, was selling rice under the brand name of Kasmati and Taxmati without much success. In 1994 Rice Tec filed an application in the US Patent and Trade Organisation (USPTO) claiming patent for 20 Basmati rice grains. USPTO granted patents to in all claims in 1997. We filed an application for re-examination of three patents in April 2000. The Rice Tec withdrew three that were objected to by India and a fourth one also. Later on they were asked to withdraw 11 others that they did. Rice Tec was also ordered to change the title of its patent from “Basmati Rice Lines and Grains” to “Rice Lines Bas 867RT1121 and RT 117”. Ultimately they were granted patents on five in August 2001.
It is relevant to point out that the Public Interest litigation (PIL) are like alarms. They remind the government to wake up before it is too late. One such PIL in the Basmati controversy was Research Foundation for Science, Technologies & Ecology vs Ministry of Agriculture : 1999 (1) SCC 655. The action in this controversy was result of this PIL.
Basmati Rice is grown in the foothills of Himalayas. This is how it acquired its label and fame. It is not grown in any other part of the world. The same variety grown anywhere else may not be claimed as Basmati; it is a geographical indicator. We had filed objections against the patent application of Rice Tec but Basmati was not claimed as a ‘geographical indicator'. Rice Tec can still sell its rice—grown in the US—calling it Basmati. The official website of Rice Tec states that Taxmati is no. 1 selling Basmati rice in America. We have already enacted the Geographical Indication of Goods (Registration and Protection Act), 1999. We may consider claiming Basmati as a geographical indicator so that no one is able to take any advantage of its name.
Wheat
Monsanto had obtained a patent on 21.5.2003 from the Munich office of Europen Patent Office (EPO) on genetically modified wheat strain. This variety, called Galatea, was bred by Unilever. Mosanto acquired Galate, when it brought Unilever. It is said that it possess genetic characteristic derived from a common variety in our country known as Nap Hal which is used to make Chapati. Nap Hal has less gluten than other wheat varieties, which gives it lower viscoelasticity, meaning it expands less during baking. This makes it perfect for crisp breads such as Chapati.
A PIL (Research Foundation for science, Technology and Ecology vs. Union of India WP (Civil) No. 67 of 2004) was filed in the Supreme Court for not taking any action on the grant of wheat patent. Notices were issued in this petition. Greenpeace with support of NGOs had filed legal opposition to the patent in the EPO. This patent was ultimately cancelled by the EPO on 23.9.2004.
Neem: Azadirachta Indica
Neem (Azadirachta Indica) is Sarva Rog Nirvarini – curer of all illness. Numerous patents have been granted on products using Neem or utilising its properties. Some of them are to Indian companies also. Only one such patent has been cancelled. This patent was granted to WR Grace and US department of Agriculture for extending shelf life of Neem oil (azadirachtin). Shell life of Neem oil is extended by crushing the seeds in an aprotic solvent. Broadly aprotic solvents are those that do not exchange hydrogen ion (protons) with the substances dissolved in them; they do not participate in hydrogen bonding (for example ethers, ketones, benzene). Protic solvents have hydrogen attached to electronegative atoms such as oxygen and nitrogen and participate in hydrogen bonding (for example water and alcohols).
A coalition of Environmental groups challenged the patent. This challenge was upheld and European Patent Office cancelled the patent granted on 10.5.199 on the ground that the invention was not novel and was in public use in India.
Haldi: Turmeric
Many patents using turmeric have been granted for treating degenerative musculoskeletal diseases such as rheumatoid and osteoarthritis. One patent was granted in March 1995, two expatriate Indians at the University of Mississippi Medical Centre, Jackson, US for use of turmeric to heal wounds. We filed an objection with the USPTO challenging the patent on the grounds of ‘prior art’. This objection was upheld and the patent was cancelled.
Isabgol: Psyllium Husk
Patents have been granted on various uses of Psyllium husk. These patents have been granted to inventors in the US and in Japan. These patents are for use of psyllium husk in pharmaceutical/drug composition to reduce cholesterol, improve bowel movements, laxatives, and improve palatability.
Saunf: FENNEL
Patents have been granted on various uses of fennel to inventors in China, Japan, Germany, France, Russia, U. K. and Canada. These patents are for use of fennel,
Dhania: CORIANDER
Patents have been granted for use of coriander to inventors in Russia, Japan, China, and the US. These patents are for use of coriander,
Jeera: CUMIN
Patents have been granted for use of cumin;
as spices/condiments in flavouring and seasoning of food stuffs;
as a mouth freshener;
for use in pharmaceutical composition as a blood flow enhancer; and
for treatment of psoriasis, arthritis, gout and high cholesterol.
Surajmukhi: SUNFLOWER
Patents have been granted for various use of sunflower to the inventors in, Germany, Spain, Russia, France and US. These patents are for use of sunflower,
Moongphali: PEANUT
Patents have been granted for various uses of peanut. These patents are for use of peanut,
Patents for various uses of Castor have been granted to inventors in United States, Japan and Germany. Some inventors in India have also been granted some patents. These patents are for use of castor,
Cromak Research Inc, a New Jersey-based company in US has obtained an American patent for an edible herbal mixture comprising karela, jamun, and brinjal for use of cure in diabetes.
Jar Amla: Phyllanthus Niruri
Fox Chase Cancer centre USA has applied for grant of patent for the use of phyllanthus Niruri for curing hepatitis.
(a) Examine,
(b) Keep our traditional/public knowledge on the website with documentary details. This will show prior art and will prevent patents being granted in their ignorance.
(c) Examine patents already granted and if necessary objections may be taken.
(d) Work towards substantive harmonisation of patents regarding exceptions to inventions (some steps have been taken by proposing addition of Article 29bis in the TRIPS).
End-note-1: In the nineteenth century the British Parliament had enacted an Act for establishing High Courts, in India. It was among the other things enacted that it should be lawful for Majesty to erect and establish a High Court by letter Patent under the Great seal of the United Kingdom. The High Court of Calcutta, Madras, Bombay and Allahabad were established by issuance of Letters Patent.
End-note-2: The law passed by Venetian Senate stated,
'We have among us men of great genius, apt to invent and discover ingenious devices ... Now, if provisions were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventors' honour away, more men would then apply their genius, would discover, and would build devices of great utility for our common wealth.'
End-note-3: The preamble of the Act narrates the reason for repealing the earlier Act no. VI of 1856 and enacting this one. It is as follows:
'Whereas Act VI of 1856, entitled “An Act for granting exclusive privileges to Inventors,” was passed by the Legislative Council of India without the sanction of Her Majesty to the passing thereof having been previously obtained and signified in pursuance of the Statute passed in the seventeenth year of the reign of Her Majesty, entitled “An Act to provide for the Government of India:” and whereas Her Majesty's Law Officers having given it as their opinion that the Legislative Council of India was not competent to pass Act VI of 1856 without previously obtaining the sanction of the Crown, and the Court of Directors of the East India Company having in pursuance of the power vested in them by law disallowed Act VI of 1856 and having signified to the Governor general of India in Council their dis-allowance thereof, the said Act was repealed by Act IX of 1857; and whereas it is expedient, for the encouragement of Inventors of new manufacturers that certain exclusive privileges in their inventions should be granted to them in India, and that exclusive privileges obtained under the said Act should be protected: It is enacted as follows (The Sanction of her Majesty to the passing of this Act having being previously obtained and signified in pursuance of said Statute).'
End-note-4: The case is reported in Diamond v. Chakrabarty, 447 US 303: 65 L Ed 2d 144. Plasmids are hereditary units physically separate from the chromosomes of the cell. In a prior research, Chakrabarty and an associate discovered that plasmids control the oil degradation abilities of certain bacteria. In particular, the two researchers discovered plasmids capable of degrading camphor and octane, two components of crude oil. In the work represented by the patent application at issue here, Chakrabarty discovered a process by which four different plasmids, capable of degrading four different oil components, could be transferred to and be maintained stably in a single Pseudomonas bacterium, which itself has no capacity for degrading oil. The new bacteria were not ‘products of nature‘, because Pseudomonas bacteria containing two or more different energy generating plasmids are not naturally occurring.
At present, biological control of oil spills requires the use of a mixture of naturally occurring bacteria, each capable of degrading one component of the oil complex. In this way, oil is decomposed into simpler substances which can serve as food for aquatic life. However, for various reasons, only a portion of any such mixed culture survives to attack the oil spill. By breaking down multiple components of oil, Chakrabarty’s micro-organism promises more efficient and rapid oil-spill control and his application was allowed.
End-note-5: Section 3(k) as it stands today was substituted by the 2002 Amendment. It was replaced by section 3(k) and 3(ka) by the Patents Amendment Ordinance 2004 (the 2004 Ordinance). Section 3(ka) as substituted by the 2004 Ordinance excluded mathematical method or business method or algorithms from the field of invention. It was the same as was provided by the 2002 Amendment in Section 3(k). However, the law regarding computer programme was further clarified in section 3(k) by the 2004 Ordinance. After the 2004 Ordinance, computer programme per se was further qualified by the phrase 'other than its technical application to industry or a combination with hardware'. It showed that the computer programme in its technical application to industry or a combination with hardware only could be patented: a scope narrower than US approach but perhaps wider than European approach. The 2004 ordinance has been repealed by the Patents Amendment Act 2005 (Act 15 of 2005) (the 2005 Amendment) however it left the section 3(k) as was substituted by the 2002 Amendment intact; it did not incorporate the amendments in 3(k) or substitution of 3 (ka) as proposed by the 2004 Ordinance.
- Copyright and Related Rights
- Trademarks
- Geographical Indications
- Industrial designs
- Patents
- Layout - designs (Topographies) of Integrated Circuits
- Protection of Undisclosed Information
TRIPS provides minimum standard to be observed by the members. We have to amend our laws to bring them in conformity with the TRIPS. The time limit to do so is provided in Article 65 Part VI (TRANSITIONAL ARRANGEMENT) of the TRIPS. Under this provision, we had to amend our laws by 31.12.2004.
Patents {dealt under Article 27 to 34 (Section 5 Part II) of the TRIPS} are the most powerful of all intellectual property rights. They can prevent a process or manufacture of a product. It is an exclusive right given by law to the inventors to make use of, and exploit their inventions for a limited period of time in exchange for a full description of how to perform the invention. Patents play important role and its importance to understand their implication and prepare for the same. But first some words about patents.
HISTORICAL BACKGROUND
Historically, the word ‘patent’ has come from the Latin phrase ‘litterae patents’ literally meaning letters patent. Patent means open and letters patent was used to refer to open letters conferring privileges, rights, ranks, or titles by sovereign bodies/rulers (see End-note-1). They were official documents and were ‘open’ as they were publicly announced.
Initially, these letters were issued (around the sixth century) in Europe for the discovery and conquest of foreign lands on behalf of the ruler. Patents came to be related to inventions around the 15th Century and the first patent law—as we understand it today—was passed on March 14, 1474 by the Venetian Senate (see End-note-2).
The grant of exclusive privilege to inventors spread from Italy to other European nations. Countries (that lacked technology) started granting exclusive patents (rights) to foreign inventors in exchange of introducing the technological innovation in that country. However, the unlimited duration of exclusive rights created unfair monopolies, and the British Parliament enacted the Statute of Monopolies in 1623. It prohibited royal monopolies but it reserved the right to grant “letters patent” for inventions up to 14 years.
In the United States, Article I Section 8 of the Constitution authorises Congress to create a national patent system to promote the Progress of Science and useful Arts: by ‘securing for limited times to ... Inventors the Exclusive Right to their respective ... Discoveries’. Congress passed the first US Patent Statute in 1790. France enacted its patent system the following year. By the end of the 19th century many countries, including India, enacted patent laws.
The first Patents Act in India was Act No. VI of 1856. It was an Act for granting exclusive privilege to inventors. It received the assent of the Governor General on 25th February 1856. This Act was repealed by Act No. IX of 1857 on the ground that it was passed without obtaining the previous sanction of her majesty. This is the reason indicated in the preamble of the Act No. 15 of 1859 (for preamble see below) (see End-note-3), which was passed by the Legislative Council of India to encourage inventions of new manufacturers and for protecting their privileges.
Act No. 15 of 1859 was replaced by Inventions and Designs Act, 1888 (Act No. 5 of 1888). This was further replaced by the Indian Patents and Designs Act, 1911 (Act No. 2 of 1911). In 1967 the Government of India, introduced a patent bill that culminated in the Patents Act, 1970 (the Patents Act).
The Patents Act has been amended by three amending Acts, namely Act No. 17 of 1999 (the 1999 Amendment), Act No. 38 of 2002 (the 2002 Amendment) Act no. 15 of 2005 (the 2005 Amendment). In between ordinance no. 7 of 2004 (the 2004 Ordinance) was also promulgated but it was repealed by the 2005 Amendment. There are changes between the 2004 Ordinance and the 2005 Amendment. The 1999 amendment has been enforced. Most of the 2002 Amendment was enforced with effect from 20.5.2003. The 2005 Amendment has been enforced from 1.1.2005.except for sections 37(a) (ii), 37(b), 41, 42, 47 59 to 63 (both inclusive) and section 74 of this amendment. These amendments are of some importance and I will refer to them later.
GRANT OF PATENT—PROCEDURAL SIMPLIFICATION
Every country has its own patents law. In general, inventors must apply for patents in each country where they wish to manufacture, use, or sell their inventions. International efforts have been made to facilitate this process. The details are as follows:
- The first effort to ease multinational patent differences was the International Convention for the Protection of industrial Property. It was adopted in Paris in 1883. It was amended several times. It gave inventors, who file an application in one member country, the benefit of using that first filing date for applications in other member states.
- The Patent Cooperation Treaty 1970 (PCT) simplifies the filing of patent applications on the same invention in different countries by providing, among the other things, centralised filing procedures and a standardised application format. We have accepted the PCT on 7.12.1998 with declaration on ‘Reservations’ detailed in sub article 5 of Article 64.
- The European Patent Convention, implemented in 1977, created a European Patent Office that can issue a European Patent, which acquires the status of a national patent in each of the member nations designated by the applicant.
- The WIPO has framed the Patent Law Treaty (PLT). It was adopted on June 1, 2000. We have so far not signed it. The PLT is subject to the PCT and attempts to further simplify procedural requirements for obtaining patents in different countries. It does not affect the substantive law relating to patents. The WIPO is separately sponsoring Substantive Patents Law Treaty (SPLT) to harmonise substantive part of the patent law.
Patents can be granted for inventions. The word ‘invention’ {section 2(1)(j) of the Act} read with the word ‘inventive step’ {Section 2(1)(ja) of the Act} means a new product or process that is capable of industrial application. Invention must be novel and useful. It must involve technical advance as compared to the existing knowledge or having economic significance or both. It should not be obvious to a person skilled in the art.
The words invention and inventive steps should also be seen in light of section 3 of the Patents Act that defines what are not inventions. A new word 'new invention' has been substituted by the 2005 Amendment as section 2(1)(l). This word is not used anywhere else. A thing can not be an invention unless it is new. Section 2(1)(l) explains the word 'new invention' and should be seen as an explanation to section 2(1)(j) of the Patents Act which defines the word 'invention'. Section 2(1)(l) may also be seen as an elucidation of section 3(p) of the Patents Act explaining what is not an invention.
The word 'new invention' {section 2(1)(l)} as well as section 3 of the Patents Act further explain and qualify grant of Patents. Section 2(1)(l) clarifies that the invention or technology should not be such that could have been anticipated by publication in any document or used in the country or elsewhere in the world before date of filing patent application; it should neither be in public domain nor should it form part of prior Art.
Section 4 of the Act is an exception to the grant of Patents. It excludes the grant of patents to inventions relating to Atomic Energy.
PATENTS — RIGHTS AND LIABILITIES
Patents can be inherited by the heirs of a patentee. A patentee may sell (assign) or mortgage a patent. (Chapter XIII of the Act: REGISTER OF PATENTS).They have right to exclude others from making, using, or selling the invention and may authorise others to do any of these things by a licence and receive royalties or other compensation for the privilege (Chapter VIII of the Act: GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY).
A person, making unauthorised use of a patented invention, may be sued by the patentee for damages and can be restrained to prevent further infringement. However, we have not provided criminal prosecution for the infringer (Chapter XVIII of the Act: SUITS CONCERNING INFRINGEMENT OF PATENTS). TRIPS mandates members to provide criminal procedures and penalties in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale, but not for the violation of patents (Article 61 of the TRIPS).
A patentee may not market an invention or even licence it to someone who wants to market it. Such a situation might keep a useful invention from being of service to the public. Thus in many countries patent law includes a clause that stipulates compulsory working of an invention. This means that the patentee must manufacture/utilise the invention or licence it to someone who will (Chapter XVI of the Act: WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION).
PATENTS: PRODUCT— PROCESS
Generally in the developing countries patents for product in medicine, or drugs or substances produced by chemical process were not granted. In India also section 5 provided that patent for processes only—and not for the product—may be granted for the following substances,
- Intended for use or capable of being used as food or as medicine or drug,
- Prepared or produced by chemical processes.
TRIPS does not make any such distinction. The distinction had to be removed by 31.12.2004 and in the meantime, in view of Article 70(7) and 70(8) of the TRIPS, a provision had to be made for filing patent applications and creation of exclusive marketing rights (EMR) in respect of these products. This was done by the 1999 Amendment by amending section 5 and addition of Chapter IV-A (EXCLUSIVE MARKETING RIGHTS) in the Patent Act. Section 5 after the 1999 Amendment provided that a claim for patent of an invention for a substance itself intended for use, or capable of being used as medicine or drug {except for medicine or drug specified under sub-clause (v) of clause (l) of sub-section (1) of Section 2 of the Act} was to be dealt with under chapter IV-A of the Patents Act. The 2005 Amendment has deleted section 5 as well as Chapter IV-A (EXCLUSIVE MARKETING RIGHTS). Of course by section 77 (Transitional Provision) of the 2005 Amendment every application filed under chapter IV-A in respect of application covered under section 5(2) of the Patents Act (as it stood earlier) is to be treated as request for examination for grant of patent under section 11B(3) of the Patents Act as amended by the 2005 Amendment.
Grant of product patent—in respect of those substances where no patent could be granted earlier—will affect the prices of these products, and the economy of our country. We should find appropriate solutions within the TRIPS. This can be done under sub-article (2) and (3) of Article 27 of the TRIPS.
Article 27(2) and 27(3) of the TRIPS provide which inventions may be excluded from patentibility. Article 27(2) permits exclusion from patentibility of invention whose prevention of commercial exploitation is necessary on the following grounds:
- to protect ordre public (pubic order) or morality
- to protect human, animal or plant life or health
- to avoid serious prejudice to the environment.
Article 27(3) also permits exclusion of following items from patentability:
- Diagnostic therapeutic and surgical methods for treatment of humans or animals.
- Plants and animals other than micro organisms.
- Essentially biological processes for the production of plants other than non-biological and microbiological processes.
The plant varieties under the TRIPS have to be protected by patents or an effective sui generis system or by combination of both. The protection for plant varieties has been done in our country by enacting separate Act titled as 'The Protection of Plant Varieties and Farmers' Rights Act 2001' (Act No. 53 of 2001). The other Act in this regard is the Biological Diversity Act, 2002. Some other steps have also been taken by amending the Patents Act by the 2002 and 2005 Amendments. The preamble to the 2002 Amendment states that it has been enacted, ‘to make the law not only TRIPS compliant but also to provide therein necessary and adequate safeguards for protection of public interest, national security, bio-diversity, traditional knowledge, etc.'
Section 3 of the Patent Act is titled 'what are not inventions'. It provides exceptions to the inventions. It was amended by the 2002 Amendment. Among the others it substituted section 3(b), amended 3(i) and added sub-section (j) to (p). The 2005 Amendment has substituted section 2(1)(l) in the definition clause defining the word 'new invention' and has substituted section 3(d).
- Substituted section 3(b) provides for exclusion of inventions whose primary or intended or commercial exploitation could be contrary to public order or morality or which could cause serious prejudice to human, animal or plant life or health or to the environment {Article 27(2) of the TRIPS}.
- Section 3(d) excludes the discovers of any new property; or new use of for a known substance; or mere use of a known process, machine or apparatus unless such known process resulted in a new product or employs at least one new reactant.
- Amended section 3(i) provides for exclusion of any process for the medicinal curative prophylactic diagnostic therapeutic or other treatment of human beings or any similar process for a similar treatment of animals or to render free of disease or to increase their economic value or that of their product {Article 27 (3) of the TRIPS}.
- Section 3(j) provides for exclusion of plants, animals including seeds, varieties and species and essentially biological process for production or propagation of plants and animals.
- Section 3(k) provides for exclusion of mathematical or business method or a computer programme per se or algorithms.
- Section 3(p) {read with section 2(1)(l)} provides for exclusion of inventions that are in effect traditional knowledge or are aggregation or duplication of known properties of traditionally per se known components.
Exclusions mentioned in section 3(b) and 3(j) are in the TRIPS. Section 3(k) is covered under general definition, however some exclusions—mentioned in section 3(k) and clause 3(p)—are neither part of the TRIPS nor part of the patent laws of some countries. This has led to difficulties and allegation of bio-piracy. This should be ironed out.
PROBLEMATIC AREAS: GLOBAL SOLUTIONS
Patents could be for process or product. If a patent is taken out for a process in arriving at a known product, any other person may take out a patent for another process for arriving at the same known product. Nevertheless when a patent is taken out for a new product which was not known before and the patent describes one specific process in making the new product, then the patent is entitled to protection against any other process in making the same product. Any person who even adopts a different process in arriving at the same product infringes the patent (Section 48 of the Patents Act). Should this be the law? Should a person arriving at same product by different process be also prohibited? Will economy be better served if such patent is not granted?
In earlier times, patents were granted for fourteen years presumably due to the reason that it took about seven years to train the trainees and fourteen years to train two generations of trainees. In England It was increased to sixteen years in the early part of the twentieth century. We followed suit and the sixteen year period was provided in the previous Act dealing with Patents. In the Patents Act the period was 14 years except for some categories where the norm was five or seven years (section 53 of the Patents Act). TRIPS mandates protection of patents for twenty years. We have also provided the same by the 2002 amendment. The field of Information Technology is moving with geometrical progression. In the field of medicine and drugs, often the question is between life and death and many nations are still developing. Is period of twenty years in all fields a reasonable one. Will it better in case shorter period is provided?
TRIPS has provided a minimum protection that should be granted in the area of IPRs. If we wish to be part of the WTO then we have to modify our laws and make them TRIPS compliant. Nevertheless in case some provisions are against our national interest then we could act as a catalyst in changing opinion among the other nations. The Substantive Patents Law Treaty (SPLT) is being sponsored by the WIPO to further harmonise the substantive part of patent law. It is still in its formative stage. This may change the International opinion about patents. It appears that we are not participating in it. We should participate and protect our national interest. We should see that the legislative intent stated in section 3 (k) with reservation mention under succeeding heading and 3(p) is included in SPLT. This is to point out that we alongwith Brazil, Pakistan, Peru, Thailand, and Tanzania have proposed amendments in TRIPS (article 29 bis) regarding disclosure of Origin of Biological Resources and/or Associated Traditional knowledge. This is to ensure that there is mutually supportive relationship between TRIPS and the Convention on Biological Diversity (CBD).
COMPUTER PROGRAMME
Law - US
Section 3 of the Indian Patents Act explains those that are not inventions. Patents cannot be granted for discoveries and inventions mentioned in section 3 of the Patent Act. There is no such limitation in the US law as the Congress intended to include anything under the sun that is made by man, but the US Supreme Court in the Chakrabarty case (see End-note-4) held,
‘This is not to suggest that … [law] has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus a new mineral discovered in the earth or a new plant found in the wild is not a patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestation of nature, free to all men and reserved exclusively to none.’
The US Supreme Court in Parker v. Flook (437 US 584: 57 L Ed 2d 451) also held that a method for updating alarm limits during catalytic conversion, which is a mathematical formula, is not patentable.
The US Patents Act neither specifically refers to programmes for computers, nor to the business methods. The US Supreme Court in the Gottschalk case (Gottschalk Vs Benson (409 US 63=34 L Ed 2d 273) held that a computer program - involving a method to convert binary-coded-decimal numerals into pure binary numerals - cannot be patented for the reason,
- The method was so abstract as to cover both known and unknown uses of the binary-coded-decimal to pure binary conversion;
- The end use could vary and could be performed through any existing machinery or future-devised machinery or without any apparatus;
- The mathematical formula involved had no substantial practical application except in connection with a digital computer; and
- The result of granting a patent would be to improperly issue a patent for an idea.
The Diehr case (Diamond v. Diehr, (1981) 450 US 175: 67 L Ed 2d 155) was a case involving a process for curing rubber that included a computer programme. Rubber in a mould is to be heated for a given time according to the Arrhenius equation, named after its discoverer Svante Arrhenius. The inventor had found a process for constantly measuring temperature inside the mould, which was fed to a computer that opened the mould at the right time. The court by a five to four decision held that a patentable claim does not become unpatentable merely if it uses a mathematical formula, computer programme, or a computer. In short, a computer programme may not be patentable as such but may be patentable as a part of an industrial process.
Traditionally, the processes concerned with technology only could be patented. Many other activities including business methods, or data analysis which one would consider processes, were excluded from patents. However, since the Diehr case, there has been a shift in the US. US Patent and Trade Office (USPTO) has issued a Manual of Patent Examining Procedures containing guidelines for patenting inventions. Its earlier policy for computer related inventions {Paragraph 706.03(a)} was as follows (See Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2nd Cir. 1908) and Wait (in re:), 24 USPQ 88, 22 CCPA 822 (1934)):
‘Though seemingly within the category of a process or method, a method of doing business can be rejected as not being within the statutory classes.’This paragraph was deleted and a new paragraph {706.03(a)} was added,
‘Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims’.
The aforesaid change was noticed by the US court of appeal in the State Street case (State Street Bank v. Signature Financial Group, 149 F. 3D 1352) and the court held that,
‘Whether the claims are [patentable or not] should not turn on whether the claimed subject matter does “business“ instead of something else.’The court also held that,
‘To be patentable an algorithm must be applied in a “useful“ way.
...
We hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces a useful, concrete and tangible result.'
In short the law in the US is that, an abstract idea by itself never satisfies the requirements of the Patents law. However an abstract idea when practically applied to produce a useful, concrete and tangible result satisfies it. Today, USPTO has one chapter on Patent Business Methods and is granting patents to software techniques for business methods and data analysis, if they are useful. Australia and Japan have also followed suit. Some examples of patents of business methods granted in US are:
- Single click to order goods in an on-line transaction;
- An on-line system of accounting;
- On-line rewards incentive system;
- On-line frequent buyer programme; and
- Programmes letting customers set their own prices for hotel booking etc
In the US ‘Business Method Patent Improvement Act of 2000’ was introduced in the Congress on October 3, 2000 and would apply to all pending applications as well as to all patents issued. It will restrict the ability of the USPTO to issue business method patents. Among the others it would create a presumption of obviousness where a computer has been used primarily to implement a known business method. It has not yet been passed and many feel that it may never be passed.
Law—Europe
Article 52(2)(2) of the European Patent Convention 1973 (EPC) specifically states that ‘schemes, rules and methods for performing mental acts, playing games or doing business, and programmes for computers’ will not be regarded as inventions. This is also the law of the member countries of the European Patent convention: computer programmes and business methods cannot be patented there. However in practise, it is not so.
The European Patent Office (EPO) is an organization formed by convention EPC; it does not work under the European Commission. The EPO and a number of patent offices of the EPC's member countries have been granting software patents. However, there’s been no consistent practice among all EPO member countries, and there’s been a good deal of uncertainty whether software patents are even enforceable (see here also). In order to harmonise the practise, the European Commission proposed a draft directive in 2002 on the subject. But the text was never agreed upon. Some feared that Europe would get a much more liberal regime, like that of the US. Others feared that they would lose the patent protection they already enjoyed. As a result, on 6th July 2005, the proposal was defeated in the European Parliament.
The result of the aforesaid debate is that the inconsistent practice regarding software patents is still continuing. The European Patent Office (EPO) has now launched a web-site to provide information about,
- The law and practice under the European Patent Convention in the field of computer-implemented inventions and
- Proposed legislative reforms in Europe in this field.
Law—India
Section 3 of the Patents Act provides what are not inventions and thus cannot be patented. Section 3(k) provides that mathematical or business method or computer programmes per se or algorithms are not inventions for purposes of the Patents Act. The word 'computer programme' is modified by the word ‘per se'. This word means standing alone, or by itself, or in itself. It shows that under section 3(k) a computer programme standing alone or by itself cannot be patented. Nevertheless it also means that a computer programme—not standing alone— may be patented; it leaves doubts regarding its scope. The courts may interpret it in the same manner as the Europeans are doing or could go all the way as is being done in the US: of course its finer boundaries will be determined when courts actually interpret these words (see End-note-5).
Period
Many feel that patents may not be granted for doing business on the Internet and in any case the period of 20 years is too long as computer technology changes every two years (see here).
Method of Patenting
Presently, patent applications for inventions involving computer programme merely contain flow chart but not the source code. Patents are granted in exchange for a full description of the invention as well as how to perform it. In case source code is not disclosed then whether there is full disclosure. These questions need to be addressed judicially.
The law regarding patentability of computer programmes is still in flux. There is no specific reference to computer programme in the TRIPS though there is reference to it in EPC. The following questions may be settled globally:
- Computer program is protected as a copyright. Should it also be protected as a patent?
- In case computer program is to be protected as a patent then under what conditions should it protected?
- What should be the period of protection? Should it be 20 years as in the case of other patents or less than that?
- What should be method of patenting? Should source code be disclosed?
PLANT VARIETIES AND BIODIVERSITY
Patents can not be granted on anything that occurs in nature or on its properties. However, a product that is new invention and obtained through an inventive step from a thing in nature, may be patented. A process or product in public or traditional knowledge can not be patented as it is not a new invention; so also aggregation or duplication of known properties of traditionally known components: in both cases, prior art exists.
In our country patents could not be granted on substances intended for or capable of being used as food, or medicine, or drug, or prepared or produced by chemical processes. This does not mean that these substances were not in existence or use in our country.
Patents, for some of the aforesaid products or the ones based on traditional knowledge have been granted in different countries in ignorance of prior art: some of them have been cancelled too. We have already enacted the Biological Diversity Act, 2002 and as the preamble indicates, it has been enacted to provide,
- Conservation of biological diversity,
- Sustainable use of its components, and
- Fair and equitable sharing of the benefit arising out of the use of biological resource knowledge.
Basmati Rice
Rice Tec Inc, a Texas based US company, was selling rice under the brand name of Kasmati and Taxmati without much success. In 1994 Rice Tec filed an application in the US Patent and Trade Organisation (USPTO) claiming patent for 20 Basmati rice grains. USPTO granted patents to in all claims in 1997. We filed an application for re-examination of three patents in April 2000. The Rice Tec withdrew three that were objected to by India and a fourth one also. Later on they were asked to withdraw 11 others that they did. Rice Tec was also ordered to change the title of its patent from “Basmati Rice Lines and Grains” to “Rice Lines Bas 867RT1121 and RT 117”. Ultimately they were granted patents on five in August 2001.
It is relevant to point out that the Public Interest litigation (PIL) are like alarms. They remind the government to wake up before it is too late. One such PIL in the Basmati controversy was Research Foundation for Science, Technologies & Ecology vs Ministry of Agriculture : 1999 (1) SCC 655. The action in this controversy was result of this PIL.
Basmati Rice is grown in the foothills of Himalayas. This is how it acquired its label and fame. It is not grown in any other part of the world. The same variety grown anywhere else may not be claimed as Basmati; it is a geographical indicator. We had filed objections against the patent application of Rice Tec but Basmati was not claimed as a ‘geographical indicator'. Rice Tec can still sell its rice—grown in the US—calling it Basmati. The official website of Rice Tec states that Taxmati is no. 1 selling Basmati rice in America. We have already enacted the Geographical Indication of Goods (Registration and Protection Act), 1999. We may consider claiming Basmati as a geographical indicator so that no one is able to take any advantage of its name.
Wheat
Monsanto had obtained a patent on 21.5.2003 from the Munich office of Europen Patent Office (EPO) on genetically modified wheat strain. This variety, called Galatea, was bred by Unilever. Mosanto acquired Galate, when it brought Unilever. It is said that it possess genetic characteristic derived from a common variety in our country known as Nap Hal which is used to make Chapati. Nap Hal has less gluten than other wheat varieties, which gives it lower viscoelasticity, meaning it expands less during baking. This makes it perfect for crisp breads such as Chapati.
A PIL (Research Foundation for science, Technology and Ecology vs. Union of India WP (Civil) No. 67 of 2004) was filed in the Supreme Court for not taking any action on the grant of wheat patent. Notices were issued in this petition. Greenpeace with support of NGOs had filed legal opposition to the patent in the EPO. This patent was ultimately cancelled by the EPO on 23.9.2004.
Neem: Azadirachta Indica
Neem (Azadirachta Indica) is Sarva Rog Nirvarini – curer of all illness. Numerous patents have been granted on products using Neem or utilising its properties. Some of them are to Indian companies also. Only one such patent has been cancelled. This patent was granted to WR Grace and US department of Agriculture for extending shelf life of Neem oil (azadirachtin). Shell life of Neem oil is extended by crushing the seeds in an aprotic solvent. Broadly aprotic solvents are those that do not exchange hydrogen ion (protons) with the substances dissolved in them; they do not participate in hydrogen bonding (for example ethers, ketones, benzene). Protic solvents have hydrogen attached to electronegative atoms such as oxygen and nitrogen and participate in hydrogen bonding (for example water and alcohols).
A coalition of Environmental groups challenged the patent. This challenge was upheld and European Patent Office cancelled the patent granted on 10.5.199 on the ground that the invention was not novel and was in public use in India.
Haldi: Turmeric
Many patents using turmeric have been granted for treating degenerative musculoskeletal diseases such as rheumatoid and osteoarthritis. One patent was granted in March 1995, two expatriate Indians at the University of Mississippi Medical Centre, Jackson, US for use of turmeric to heal wounds. We filed an objection with the USPTO challenging the patent on the grounds of ‘prior art’. This objection was upheld and the patent was cancelled.
Isabgol: Psyllium Husk
Patents have been granted on various uses of Psyllium husk. These patents have been granted to inventors in the US and in Japan. These patents are for use of psyllium husk in pharmaceutical/drug composition to reduce cholesterol, improve bowel movements, laxatives, and improve palatability.
Saunf: FENNEL
Patents have been granted on various uses of fennel to inventors in China, Japan, Germany, France, Russia, U. K. and Canada. These patents are for use of fennel,
- in various pharmaceutical composition for treatment of colic, female infertility, other gynaecological disorders, burns, hernia, promoting hair growth, treating skin diseases as a breast enhancer;
- in mouthwash composition and to prevent snoring;
- in food stuffs for seasoning of food, adding taste and flavor to sauce and liquor;
- as food supplement (fennel tea) and mouth freshener;
- as herbal mixture in cigarettes as a substitute to tobacco to avoid nicotine addiction,
- as house perfume/deodorant; and
- as natural pesticide composition.
Dhania: CORIANDER
Patents have been granted for use of coriander to inventors in Russia, Japan, China, and the US. These patents are for use of coriander,
- as spices and condiments in food stuff to add flavour to curries, sauce, vegetable seasoning and to reduce food odour.
- in herbal drink composition like vodka, sedoi kavkav, etc;
- in pharmaceutical drugs/compositions for improving haematopoietic functions, treatment of microbial infection of farm animals;
- as herbal nutritional supplement (for aphrodisiac); and
- in artificial fire log.
Jeera: CUMIN
Patents have been granted for use of cumin;
as spices/condiments in flavouring and seasoning of food stuffs;
as a mouth freshener;
for use in pharmaceutical composition as a blood flow enhancer; and
for treatment of psoriasis, arthritis, gout and high cholesterol.
Surajmukhi: SUNFLOWER
Patents have been granted for various use of sunflower to the inventors in, Germany, Spain, Russia, France and US. These patents are for use of sunflower,
- as preparation of lubricant/varnish (surface active lubricants, spinning lubricants, reagents for drilling oil/gas wells and wood/metal varnish, anti-wear agent for engine fuel system, sealing liquid and additive promoting hydrocarbon combustion);
- in pharmaceutical compositions (hair growth agent, teeth/gum care composition, anti-snoring mixture, treatment of burns and skin diseases, decreased loss of tocopherols, oral drench mixture for treating parasitic diseases) as dietary supplement for animals to prevent shedding).
- in cosmetic compositions for skin care (anti-wrinkling cream, nail cream, anti-aging composition and use in preparation of soaps, margarine, etc.);
- in food stuffs (like vegetable oil for stir-frying, anti-adherent liquid for tortillas, slowing crystals for improving quality of condensed milk, fat substitute and as filler for low fat sandwich cookies); and
- in insect control formulations.
Moongphali: PEANUT
Patents have been granted for various uses of peanut. These patents are for use of peanut,
- in food stuffs and consumables like oil quality, butter, protein cake, nut spread with less stickiness and increased flavour, blended nut spreads and creamy chocolate flavoured nut spread;
- in agriculture for plant improvement and in plant protection compositions;.
- in pharmaceutical drugs;
- for preparing lubricant/grease, coating material, for removing colour from sugar, separating agent for dusting solder oxides, cosmetic composition, antibody against peanut agglutinin, etc.;
- for pesticide compositions and environmentally safe well fluid for drilling and
- in enhanced peanut plant line (plant improvement).
Patents for various uses of Castor have been granted to inventors in United States, Japan and Germany. Some inventors in India have also been granted some patents. These patents are for use of castor,
- in various pharmaceutical compositions as a surfactant, solvating agent, as oil in water emulsion for soft gelatine capsules, sustained release pharmaceutical tablets with tramadol base, long acting injectable formulations containing hydrogenated castor oil, aqueous preparations containing hardly soluble drug;
- for treatment of various skin/eye/ear disorders, promoting hair growth, and cure of diabetes, cancer, HIV, arthritis, trest infestation, blood pressure, etc.
- in preparation of polyurethane resins, polyurea elastomer systems with improved adhesion to substrates, foamable polyurethane compositions with a good flow behaviour, rigid polyurethane foams, polyurea elastomer with increased adhesion, low viscosity polymer polyols, waterproof plastic foam, other coating materials and foams;
- in cosmetic compositions, low residue solid antiperspirant, gelling agent, hydro alcoholic cosmetic micro emulsions, softening agents, solvating surfactant, etc., personal care products, soaps, skin tanning, nail, anti-perspirant composition;
- in agricultural compositions in pesticides/insecticides and for coating of fertilizers;
- in products like ink/dyes/paints, lubricant/grease, rubber composition, detergent composition, cleaved products, etc.;
- in preparation of polyurethane resins, in textile dyes and in agro-product(pesticide composition) and Bayer AG (8) for use in injectable formulations of agricultural use, polyurethane compositions with low viscosity;
- in antiperspirant composition and desensitizing dentifrice with reduced astringency;
- in pharmaceutical medicants for coating of capsules.
Cromak Research Inc, a New Jersey-based company in US has obtained an American patent for an edible herbal mixture comprising karela, jamun, and brinjal for use of cure in diabetes.
Jar Amla: Phyllanthus Niruri
Fox Chase Cancer centre USA has applied for grant of patent for the use of phyllanthus Niruri for curing hepatitis.
CONCLUSIONS
The questions concerning patents have to be sorted out globally. Sooner it is done better would it be. We should,(a) Examine,
- The reasons of granting product patent in case it can be manufactured by a process different than that prescribed when patent was granted;
- Whether patents regarding computer software should be granted or not; and
- What should be period of patent?
- Whether source code should be disclosed or not.
(b) Keep our traditional/public knowledge on the website with documentary details. This will show prior art and will prevent patents being granted in their ignorance.
(c) Examine patents already granted and if necessary objections may be taken.
(d) Work towards substantive harmonisation of patents regarding exceptions to inventions (some steps have been taken by proposing addition of Article 29bis in the TRIPS).
End-note-1: In the nineteenth century the British Parliament had enacted an Act for establishing High Courts, in India. It was among the other things enacted that it should be lawful for Majesty to erect and establish a High Court by letter Patent under the Great seal of the United Kingdom. The High Court of Calcutta, Madras, Bombay and Allahabad were established by issuance of Letters Patent.
End-note-2: The law passed by Venetian Senate stated,
'We have among us men of great genius, apt to invent and discover ingenious devices ... Now, if provisions were made for the works and devices discovered by such persons, so that others who may see them could not build them and take the inventors' honour away, more men would then apply their genius, would discover, and would build devices of great utility for our common wealth.'
End-note-3: The preamble of the Act narrates the reason for repealing the earlier Act no. VI of 1856 and enacting this one. It is as follows:
'Whereas Act VI of 1856, entitled “An Act for granting exclusive privileges to Inventors,” was passed by the Legislative Council of India without the sanction of Her Majesty to the passing thereof having been previously obtained and signified in pursuance of the Statute passed in the seventeenth year of the reign of Her Majesty, entitled “An Act to provide for the Government of India:” and whereas Her Majesty's Law Officers having given it as their opinion that the Legislative Council of India was not competent to pass Act VI of 1856 without previously obtaining the sanction of the Crown, and the Court of Directors of the East India Company having in pursuance of the power vested in them by law disallowed Act VI of 1856 and having signified to the Governor general of India in Council their dis-allowance thereof, the said Act was repealed by Act IX of 1857; and whereas it is expedient, for the encouragement of Inventors of new manufacturers that certain exclusive privileges in their inventions should be granted to them in India, and that exclusive privileges obtained under the said Act should be protected: It is enacted as follows (The Sanction of her Majesty to the passing of this Act having being previously obtained and signified in pursuance of said Statute).'
End-note-4: The case is reported in Diamond v. Chakrabarty, 447 US 303: 65 L Ed 2d 144. Plasmids are hereditary units physically separate from the chromosomes of the cell. In a prior research, Chakrabarty and an associate discovered that plasmids control the oil degradation abilities of certain bacteria. In particular, the two researchers discovered plasmids capable of degrading camphor and octane, two components of crude oil. In the work represented by the patent application at issue here, Chakrabarty discovered a process by which four different plasmids, capable of degrading four different oil components, could be transferred to and be maintained stably in a single Pseudomonas bacterium, which itself has no capacity for degrading oil. The new bacteria were not ‘products of nature‘, because Pseudomonas bacteria containing two or more different energy generating plasmids are not naturally occurring.
At present, biological control of oil spills requires the use of a mixture of naturally occurring bacteria, each capable of degrading one component of the oil complex. In this way, oil is decomposed into simpler substances which can serve as food for aquatic life. However, for various reasons, only a portion of any such mixed culture survives to attack the oil spill. By breaking down multiple components of oil, Chakrabarty’s micro-organism promises more efficient and rapid oil-spill control and his application was allowed.
End-note-5: Section 3(k) as it stands today was substituted by the 2002 Amendment. It was replaced by section 3(k) and 3(ka) by the Patents Amendment Ordinance 2004 (the 2004 Ordinance). Section 3(ka) as substituted by the 2004 Ordinance excluded mathematical method or business method or algorithms from the field of invention. It was the same as was provided by the 2002 Amendment in Section 3(k). However, the law regarding computer programme was further clarified in section 3(k) by the 2004 Ordinance. After the 2004 Ordinance, computer programme per se was further qualified by the phrase 'other than its technical application to industry or a combination with hardware'. It showed that the computer programme in its technical application to industry or a combination with hardware only could be patented: a scope narrower than US approach but perhaps wider than European approach. The 2004 ordinance has been repealed by the Patents Amendment Act 2005 (Act 15 of 2005) (the 2005 Amendment) however it left the section 3(k) as was substituted by the 2002 Amendment intact; it did not incorporate the amendments in 3(k) or substitution of 3 (ka) as proposed by the 2004 Ordinance.
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