Challenges in Patent Prosecution
Contributor: Noyonika Kar
Introduction
A patent can be awarded for an innovation that pertains to a product, technology, or design that is novel, has an industrial application, and involves an inventive step. It is an exclusive right that gives the creator the legal authority to restrict anybody else from creating, using, selling, or exporting the invention’s technology to a third party. To acquire a patent for an innovation, the initial step in the procedure is to file a patent application with the Indian Patent office.
Applicants for patents in India have frequently showcased their dissatisfaction with the country’s intellectual property administration, citing a lack of openness in the country’s patent filing and inspection procedures. The “Patents Act of 1970” (hereinafter “the Act”) is the primary piece of legislation that directs how patents are recognized and enforced in India.
Laws Governing Patents - Indian & International Perspectives
A patent is one of the techniques employed in the process of protecting and promoting scientific inventions that have the potential to be utilised in the industrial sector. However, in India, few scientific institutes and even fewer businesses take the required measures to protect their inventions by way of patents. This is particularly true for research groups.
As mentioned before, in India, the law relating to patents is contained in the Act of 1970, which has been amended in the years 1995, 1999, 2002 and 2005 respectively to meet the challenges of changing times and also to meet India’s obligations under the “Agreement on Trade-Related Aspects of Intellectual Property Rights” (hereinafter “TRIPS”), which India is a signatory to. Further, the “Patents Rules, 2003” have also been amended several times to keep them in line with international trends and requirements.
The importance of patents has increased tremendously over the last few decades which is evident from the fact that every company is now creating its strong Patent portfolio. It is thus important to know the advantages involved in getting a Patent and also how the Patent benefits an Inventor. The objective of this article is to develop public awareness about Patent laws in India, discuss the procedural mechanism involved in obtaining a Patent, and talk about the potential challenges that arise in the course of patent prosecution.
Challenges In Patent Prosecution
Chapter XVIII of the Act contains the legislation relating to patent infringement litigation. If a patent infringement suit is filed, Section 104 of the Act provides that the Court of First Instance that has jurisdiction over the matter is a District Court. Furthermore, if the Defendant files a counterclaim for patent revocation, the case would be transferred to the High Court for resolution.
Only five of the High Courts have the competence to hear cases in their early stages under the principle of original jurisdiction. One of the most serious challenges in patent litigation is a lack of qualified judicial officials to deal with the complicated technical issues generated by patents.
The Act contains specific provisions, covered in Section 3, that make the patentability of an invention relating to subject matter such as:
- pharmaceutical drug derivatives;
- stem cell patentability;
- diagnostic methods and kits;
- isolated DNA sequences;
- computer-related inventions, etc. non-patentable.
These provisions are in addition to the global patentability requirements of novelty, inventive step, and industrial applicability for innovations. As a result, increased degrees of scrutiny and testing are being applied to these developments. Even though the Indian Patent Office has issued guidelines on the patentability of software, biotech technologies, and pharmaceutical inventions, patent holders continue to confront several practical challenges, some of which are listed below:
Defences Which Can Be Used By Whom The Copyright Have Been Infringed
1) Inventions relating to computers:
Section 3(k) prohibits the possibility of obtaining a patent for computer programs or algorithms. However, the problem arises due to the inconsistency of opinions of different controllers regarding the requirements that must be met by hardware for them to be patentable.
2) Pharmaceuticals and their derivatives:
Section 3 restricts the ability to obtain a patent for a derivative or derivatives of a medicinal compound. To overcome the barrier established by Section 3, a derivative must demonstrate a significant increase in its therapeutic efficacy over the original drug. According to the arguments offered and the court rulings, the objection indicated in Section 3(d) should, in theory, only be raised in the situation of medicinal substance derivatives. Despite this, the issue is frequently raised for any applications using pharmaceutical drugs, even those involving novel compounds.
3) Inventions related to life sciences and biotechnology fields:
Because in-vitro diagnostic techniques and kits are designated as diagnostic and therapeutic methods, the life sciences industry faces difficulties in patenting these inventions. Furthermore, isolated DNA sequences may face challenges because they do not match the criteria for unique content. As a result, in these cases, the patentee will have a difficult time convincing the controller that the subject matter in question is patentable.
4) The number of incomplete jobs and the time allotted:
The main barrier that must be overcome to successfully enforce patent rights is the already existent backlog of cases before the Courts. Even though the “Commercial Courts Act of 2015” was created to expedite the process of dealing with intellectual property concerns, the massive backlog continues to provide a hurdle for innovators seeking a quick resolution to their legal conflicts.
5) Subject matter experts in their respective fields:
Section 115 of the Act provides for the appointment of a consultant to assist the Courts in providing technical assistance and direction. Due to the infrequency with which such an appointment is used, it does not contribute to the decision-making process. Even though it provides an opportunity for the application of both technology and legal knowledge, the provision has yet to be implemented.
Conclusion
The patent system has witnessed levels of use in recent years that would have been inconceivable only ten years ago. Even five years ago, this would have been unimaginable. There have never been more patent applications, and there are several examples of how patents have contributed to the development of an ever-expanding range of technology. Despite its achievements, the patent system has struggled to achieve general acceptance. This is true both within the inner circle of patent administrators and users and among the system’s intended beneficiaries in society at large. The system is now confronted with two key challenges: the first is an internal difficulty related to the system’s real operation, and the second is an external impediment related to the patent system’s policy role as well as its economic and social impact.
