The Patents Act 1970 and Its Amendments

1The first amongst the major amendments was introduced, rather hesitantly, by the Parliament in 1999. The prelude to the amendment was filled with interesting developments. India was obliged to introduce product patents for pharmaceutical substances under the TRIPS Agreement. The TRIPS Agreement, however, provided for a 10-year transition period for developing countries that were in the process of extending product patent protection to areas of technology not capable of protection in its territory. (TRIPS Agreement, art 65(4).) As India did not provide for product patents for pharmaceutical substances, it availed of the transition period which ended on 31 December 2004.

2Certain stop-gap arrangements were introduced in the interregnum. The TRIPS Agreement required the countries under transition to provide for a means by which patent applications for pharmaceutical and agricultural chemical products can be filed. (Ibid, art 70(8).) This was popularly called the 'mail-box' or the 'black-box' system. This system of entertaining applications was based on the patentability criteria as laid down in the TRIPS Agreement as applied on the date of filing in India, or where priority is available and is claimed, on the priority date of the application. (Ibid, art 70(8)(c).) The applications filed through the 'mail-box' were to be processed by the Indian Patent Office only after the expiry of the 10-year transition period which came to an end on 31 December 2004.

3The TRIPS Agreement also provided for another interim arrangement consequent to the application of product patents for pharmaceuticals made through the 'mail-box'. Where an application for product patent has been made under art 70(8)(a) of the TRIPS Agreement, Exclusive Marketing Rights (EMR) shall be granted for a period of five years subject to certain conditions. (Ibid, art 70(9).) The protection available under EMR was very similar to the one extended by a product patent. India was expected to have the mail-box system and EMR in place from the date on which the TRIPS Agreement came into force, ie, 1 January 1995. Thus, the effect of the 10-year transition period which exempted India from implementing product patents was nullified by the introduction of EMR, as art 70(9) which introduced EMR with immediate effect clearly stipulates that it shall prevail over art 65 which grants the 10-year transition period. As a result, India could not enjoy the benefits of the transition period. (Jayashree Watal, Intellectual Property Rights in the WTO and Developing Countries, OUP, 2001, p 118.)

4As if in protest of the injustice done, India delayed the implementation of the above two measures till March 1999. These measures were introduced only after United States lodged a complaint against India before the Dispute Settlement Body of the WTO. (See 'India-Patent Protection for Pharmaceutical and Agricultural Chemical Products' (US Complaint), Report of the Panel, WT/DS50/R, 5 September 1997; 'India-Patent Protection for Pharmaceutical and Agricultural Chemical Products' (US Complaint), Report of the Appellate Body, WT/DS50/AB/R, 19 December 1997; 'India-Patent Protection for Pharmaceutical and Agricultural Chemical Products' (EC Complaint), Report of the Panel, WT/DS79/R, 24 August 1998.) The Patents (Amendment) Act 1999 introduced provisions for 'mail-box' applications and EMR with retrospective effect from 1 January 1995.

5The Patents (Amendment) Act 2002, passed on 25 June 2002 was a further step in conforming Indian patent laws to the obligations under the TRIPS Agreement. The Patents (Amendment) Act 2002 and the Patents Rules 2003 came into force on 20 May 2003. The changes introduced by the amendment Act include a uniform patent term of 20 years from the date of application; provision for publication of application after 18 months whether or not the application is accepted; provision for third parties to obtain marketing approval from regulatory authorities within three years before the expiration of the patent term; provision for increased penalty for unauthorised claim of patent right and for refusal or failure to supply information; provision for appeals against the order of Controller and Central Government and application for rectification of register of patents to the Intellectual Property Appellate Board; provision for filing international application under PCT simultaneously with an application filed before the Controller in India; and provision for protection of bio-diversities and of traditional knowledge. (Patents (Amendment) Act 2002, s 27.) (Ibid, s 9.) (Ibid, s 39.) (Ibid, ss 49 and 50.) (Ibid, s 47.) (Ibid, ss 6 and 58.)

6The Patents Bill 2003 was introduced to bring about the third conforming amendment to the Patents Act. The Bill however lapsed after its introduction in the Rajya Sabha on 22 December 2003. As the deadline for complying with the TRIPS Agreement was nearing, the Government introduced the Patents Ordinance 2004 on 26 December 2004. The ordinance was, by and large, an improvement on the Patents Amendment Bill 2003. The ordinance was succeeded by the Patents Amendment Bill 2005 which was introduced in the Lok Sabha and the Rajya Sabha on 22 March 2005 and 23 March 2005 respectively.

7The Amendment Act of 2005 came into force with retrospective effect from 1 January 2005. (Certain provisions like ss 37(a)(ii) and (b), 41, 42, 47, 59 to 63 and 74 shall come into force on such date as the Central Government may appoint by notification in the Official Gazette.) The salient features of the Amendment include the omission of s 5 and the consequent introduction of product patents for pharmaceutical substances; the omission of ch IV A dealing with EMR; provisions for acceptance of complete specification and advertisement of the same stand omitted; provision for publication of the application of patent introduced; opposition can be made at the time of publication on the same ground on which the grant of patent can be opposed; opposition can be made within 12 months after the grant of patent; prior written permission of the Controller required for a resident of India to apply for any patent in a foreign country; though registration of assignments is still required, the assignment of patent shall be valid even if it is not registered; provision for sealing of patent has been omitted; no suit for infringement can be instituted before the date of publication of application;and advertisements and notifications in the Official Gazette replaced by publication in the Official Journal. (Patents (Amendment) Act 2005, s 4.) (Ibid, s 21.) (Ibid, s 20.) (Ibid, ss 25 and 26.) (Patents Act 1970, s 39.) (Patents (Amendment) Act 2005, s 68.) (Ibid, ss 45 and 105(4).)