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PATENTS (AMENDMENT) ACT, 2002

Ministry of Law and Justice

Act nº 38 of 2002


  • Act nº 38 of 2002

Preamble

PATENTS (AMENDMENT) ACT, 2002

(Act No. 38 of 2002)

[25th June, 2002]

PREAMBLE

An Act further to amend the Patents Act, 1970

BE it enacted by Parliament in the Fifty-third year of the Republic of India as follows :--

Section 1. Short title and commencement

(1) This Act may be called the Patents (Amendment) Act, 2002.

(2) It shall come into force on such1date as the Central Government may, by notification in the Official Gazette, appoint;2 and different dates may be appointed for different provisions of this Act and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

1. By Notification No. S.O.561(E) Dated 20.05.2003 the Central Government hereby appoints the 20th day of May, 2003 as the date on which the following provisions of the Act shall come into force, namely:-

1. Sub-clauses (ab) and (ac) of clause (a), clauses (b), (c), (d), (e), (f), (g), (h) and sub-clauses (A) and (C) of clause (i) of section 3;

2. Section 4 to section 34

3. Clause (b) of section 36;

4. Section 37 to section 46

5. Section 48 to section 63

6. Clauses (a), (b), (c) and (e) of section 64;

7. Section 65 and section 66.

2. Enforcement date for "Sections 3(a)(a) and 3(i)(u)(b), 35, 36(a), 47 and 64(d)" as notified by Notification No. S.O. 510(E) Dated 02.04.2007 is 02.04.2007.


Section 2. Substitution of certain words for the words "High Court" and "Court"

In the Patents Act, 1970 (39 of 1970) (hereinafter referred to as the principal Act), for the words "High Court" wherever they occur in sections 21, 43 and 71 and the word "Court" occurring in sections 21 and 71, the words "Appellate Board" and "Board" shall respectively be substituted.

Section 3. Amendment of section 2

In section 2 of the principal Act, in sub-section (1),--

(a) for clause (a), the following clauses shall be substituted, namely :--

'(a) "Appellate Board" means the Appellate Board referred to in section 116;

(ab) "assignee" includes an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person;

(ac) "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry;';

(b) for clause (d), the following clause shall be substituted, namely :--

'(d) "convention country" means a country or a country which is member of a group of countries or a union of countries or an Inter-Governmental organization notified as such under sub-section (1) of section 133;';

(c) for clause (g), the following clause shall be substituted, namely :--

'(g) "food" means any article of nourishment for human consumption and also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink;';

(d) in clause (i),--

(i) in sub-clause (i), for the words "Union territory of Delhi", the words "National Capital Territory of Delhi" shall be substituted;

(ii) for sub-clause (ii), the following sub-clause shall be substituted, namely :--

"(ii) in relation to the State of Arunachal Pradesh and the State of Mizoram, the Gauhati High Court (the High Court of Assam, Nagaland, Meghalaya, Manipur, Tripura, Mizoram and Arunachal Pradesh);";

(iii) in sub-clause (v), for the words "Union territory of Goa, Daman and Diu", the words "State of Goa, the Union territory of Daman and Diu" shall be substituted;

(e) after clause (i), the following clause shall be inserted, namely :--

'(ia) "international application" means an application for patent made in accordance with the Patent Co-operation Treaty;';

(f) for clause (j), the following clauses shall be substituted, namely :--

'(j) 'invention' means a new product or process involving an inventive step and capable of industrial application;

(ja) 'inventive step' means a feature that makes the invention not obvious to a person skilled in the art;';

(g) for clause (m), the following clauses shall be substituted, namely :--

'(m) "patent" means a patent granted under this Act;';

(h) after clause (o), the following clause shall be inserted, namely :--

'(oa) "Patent Co-operation Treaty" means the Patent Co-operation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time;';

(i) for clause (u), the following clause shall be substituted, namely :--

'(u) "prescribed" means,--

(A) in relation to proceedings before a High Court, prescribed by rules made by the High Court;

(B) in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board; and

(C) in other cases, prescribed by rules made under this Act.'.

Section 4. Amendment of section 3

In section 3 of the principal Act,--

(a) for clause (b), the following clause shall be substituted, namely :--

"(b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;";

(b) in clause (c), after the words "an abstract theory", the words "or discovery of any living thing or non-living substance occurring in nature" shall be inserted;

(c) clause (g) shall be omitted;

(d) in clause (i),--

(i) after the word "prophylactic", the words "diagnostic, therapeutic", shall be inserted;

(ii) the words "or plants" shall be omitted;

(e) after clause (i), the following clauses shall be added, namely :--

"(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals ;

(k) a mathematical or business method or a computer program per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;

(o) topography of integrated circuits :

(p) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.".

Section 5. Amendment of section 5

In section 5 of the principal Act, after sub-section (2), the following Explanation shall be inserted, namely :--

'Explanation.--For the purposes of this section, "chemical process" includes biochemical, biotechnological and microbiological process.'.

Section 6. Amendment of section 7

In section 7 of the principal Act, after sub-section (1), the following sub-section shall be inserted, namely :--

"(1A) Every international application under the Patent Co-operation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.".

Section 7. Amendment of section 8

In section 8 of the principal Act,--

(a) in sub-section (1),--

(i) in the opening portion after the words "he shall file along with his application", the words "or subsequently within such period as the Controller may, for good and sufficient reasons allow" shall be inserted;

(ii) for clause (a), the following clause shall be substituted, namely :--

"(a) a statement setting out detailed particulars of such application; and";

(iii) in clause (b), for the words "details of the nature referred to in", the words "detailed particulars as required under" shall be substituted;

(b) for sub-section (2), the following sub-section shall be substituted, namely :--

"(2) At any time after an application for patent is filed in India and till the grant of patent or refusal to grant of patent is made thereon, the Controller may also require the applicant to furnish details as may be prescribed relating to the processing of the application in a country outside India, and in that event the applicant shall furnish information available to him to the Controller within thirty days from the date of receipt of the communication requiring such furnishing of information or within such further period as the Controller may, for good and sufficient reasons, allow.".

Section 8. Amendment of section 10

In section 10 of the principal Act,--

(a) in sub-section (4), after clause (c), the following clause shall be inserted, namely :--

"(d) be accompanied by an abstract to provide technical information on the invention :

Provided that--

(i) the Controller may amend the abstract for providing better information to third parties; and

(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an authorised depository institution as may be notified by the Central Government in the Official Gazette and by fulfilling the following conditions, namely :--

(A) the deposit of the material shall be made not later than the date of the patent application in India;

(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;

(C) access to the material is available in the depository institution only after the date of the application for patent in India or if a priority is claimed after the date of the priority;

(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.".

(b) after sub-section (4), the following sub-section shall be inserted, namely :--

"(4A) In case of an international application designating India,--

(i) the title, description, drawings, abstracts and claims filed with the application shall be taken as the complete specification for the purposes of this Act; and

(ii) the filing date of the application and its complete specification processed by the patent office as designated office or elected office, shall be the international filing date accorded under the Patent Cooperation Treaty.";

(c) for sub-section (5), the following sub-section shall be substituted, namely :--

"(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.".

Section 9. Amendment of Chapter IV

In Chapter IV of the principal Act,--

(a) for the Chapter heading "Examination of Applications", the following Chapter heading shall be substituted, namely :--

"PUBLICATION AND EXAMINATION OF APPLICATIONS";

(b) before section 12, the following sections shall be inserted, namely :--

"11A. Publication of applications.--

(1) Applications for patents shall not be open to the public for a period of eighteen months from the date of filing or date of priority, whichever is earlier.

(2) Except when a secrecy direction is given under section 35, every application for a patent shall, on the expiry of the period as specified in sub-section (1), be published.

(3) The publication of every application for a patent shall be notified in the Official Gazette.

(4) In case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period of eighteen months or when the secrecy direction has ceased to operate, whichever is later.

(5) The publication of every application under this section shall include the particulars of the date of application, number of application, name and address of the applicant identifying the application and an abstract.

(6) Upon publication of an application for a patent under this section--

(a) the depository institution shall make the biological material mentioned in the specification available to the public;

(b) the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public.

11B. Request for examination.--

(1) No application for a patent shall be required to be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within forty-eight months from the date of filing of the application for patent.

(2) In case of an application filed before the commencement of the Patents (Amendment) Act, 2002, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from the date of such commencement or within forty-eight months from the date of the application, whichever is later.

(3) In case of an application in respect of a claim for a patent covered under sub-section (2) of section 5, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from 31st day of December, 2004 or within forty-eight months from the date of the application, whichever is later.

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (2) or sub-section (3), the application shall be treated as withdrawn by the applicant :

Provided that--

(i) The applicant may, at any time after the filing of the application but before the grant of the patent, withdraw the application made by him; and

(ii) in a case where a secrecy direction has been issued under section 35, the request for examination may be made within forty-eight months from the date of revocation of the secrecy direction."

Section 10. Amendment of section 12

In section 12 of the principal Act,--

(a) in sub-section (1),--

(i) for the words "When the complete specification has been filed in respect of an application for a patent, the application and specification relating thereto", the words, brackets, figures and letter "When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub-section (2) or sub-section (3) of section 11B, the application and specification and other documents relating thereto" shall be substituted;

(ii) in clause (a), for the words "specification relating thereto", the words "specification and other documents relating thereto" shall be substituted;

(b) in sub-section (2), for the words "specification relating thereto", the words "specification and other documents relating thereto" shall be substituted.

Section 11. Amendment of section 13

In section 13 of the principal Act, in sub-section (2), the words "as the Controller may direct" shall be omitted.

Section 12. Substitution of new section for section 15

For section 15 of the principal Act, the following section shall be substituted, namely :--

"15. Power of Controller to refuse or require amended applications in certain cases.--Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may require the application, specification or other document, as the case may be, to be amended to his satisfaction before he proceeds with the application or refuse the application on failure to do so.".

Section 13. Amendment of section 17

In section 17 of principal Act, for sub-section (2) the following sub-section shall be substituted, namely :--

"(2) Where an application or specification (including drawings) or any other document is required to be amended under section 15, the application or specification or other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant on the date on which it is refiled after complying with the requirement.".

Section 14. Amendment of section 21

In section 21 of the principal Act,--

(a) in sub-section (1) for the portion beginning with the words "fifteen months" and ending with the words "of this section" the words "twelve months from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller" shall be substituted;

(b) sub-section (2) shall be omitted;

(c) in sub-section (3),--

(i) for the words, brackets and figure "fifteen months specified in sub-section (1) or the extended period," the words "twelve months" shall be substituted;

(ii) for the words "fifteen months or the extended period, as the case may be", the words "twelve months" shall be substituted.

(d) in sub-section (4) for the words "fifteen months, or as the case may be, the extended period, until the expiration of", the words "twelve months to" shall be substituted.