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RESTORATION OF PATENTS BY – UTKARSH YADAV & AKANKSHA CHOUDHARY
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RESTORATION OF PATENTS
AUTHORED BY – UTKARSH YADAV & AKANKSHA CHOUDHARY
Institute – Chanakya National Law University
ABSTRACT
This article discusses the restoration of lapsed patents in India. The
author explains that patents are a
type of intellectual property that give inventors exclusive rights to their
creations for a limited time. In
India, patents can lapse if the renewal fee is not paid on time. However, the Indian Patent Act also provides a
mechanism for restoring lapsed patents. The article outlines the requirements for filing an application
for restoration, as well as the grounds on which the Controller of Patents may grant restoration. The article also
discusses some of the case law related
to restoration of patents in India. Finally,
the author concludes that restoration of patents is an important legal mechanism that helps to protect
the rights of inventors and encourage innovation.
Keywords: Patent,
Restoration, application, invention
INTRODUCTION
From the very beginning of human existence scientific inventions are part
of human life. Scientific inventions
are very important because all the revolutionary changes that had taken place in
this world have made significant changes in the lifestyle
of humans. We humans have unique ability
to invent tools and this ability differentiate us from other living species.
Many a times conflict arises among inventors of their original
inventions and copying of invention are also done by many for the sake of prestige, popularity or money. And due to these circumstances, the requirement for patent
laws were felt by people in order to protect their original inventions. A Patent is a type of intellectual property
and it’s simply a right of an inventor over his or her inventions. When granted, gives right to the patentee
to prevent others
from using that particular
invention in the territory to which
the patent applies.[1]
Patent gives legal right to an owner to prevent others
from making, selling
or using an invention of the inventor for a limited period of
time. Intellectual property (IP) refers to
creations of the mind, such as inventions; literary and artistic
works; designs; and symbols, names and images used in commerce.[2]
Patents are not just mere concept but they actually play a vital role in life, we can
say that patents inspire innovation and it leads to development of new
technologies in almost every field.
The use of Intellectual Property
Rights is governed
by Intellectual Property Law. Some examples of intellectual property
rights are patent,
trademark, geographical indications, plant variety protection and
biodiversity.
The term “patent” is derived from the
old Latin word “patentem” and old
French word “patente”, which indicates the open letter, it was
first appeared in the late 13th century. It was the 1580s
when the current meaning of the term “patent” was given, which is that a patent
is a government issued permit to create and sell a particular good. To register a patent an application has to be filed with the government and once the government accepts
the application, the patent usually last for
20 years from the date of the application.[3]
Intellectual property rights (IPRs) are a set of legal rights which protects the creation of human mind,
for e.g. inventions, literary and artistic
works, symbols, names,
images, and designs.
license, or assign their creations
for a particular period of time.
There are several types of IPRs in order
to provide different forms of protection for different creations, such as patents,
trademark, copyrights, trade secrets, and industrial designs.
The aim of IPRs
is to encourage innovation and creativity which can be done so by providing a
robust legal framework which can reward the creators for their effort which
will further encourage them to come up with new innovative ideas.
Innovation can also be encouraged by providing the creators financial
incentive so that they can further invest it in research and development. Inventors have right to exclude others from using their inventions, giving them a certain period of time to commercialize
their invention and hence, earn profit from it. When the inventions are
disclosed to public, a balance between promoting the innovation and right of
public to access the new technologies and ideas is required and the patent law is designed in such a way to seek a balance
between the interests of creators
and the general
public.
The process of obtaining a patent
involves, a patent application must be filed by the inventor with the
appropriate government agency, like the Patent Office situated in India. A
detailed description about the invention must be given in the
application along with any drawings or
other
supporting materials which
are necessary for the invention to be understood. The process of
filing a patent application can be complex and lengthy depending upon the
reviews and amendments. Once the inventor is granted a patent,
he/she must enforce their patent rights, such as filing lawsuits before appropriate authority in case of infringement of patent.
Overall, patent law plays a critical
role in encouraging innovation and promoting economic growth by providing legal
protections and financial incentives to the inventors.
AIMS AND OBJECTIVES
·
To know about the concept
of restoration of patent and its potential benefits.
·
To know about
the different grounds
for restoration of patent.
·
To know about the consequences of patent lapse
and importance of patent protection.
HYPOTHESES
·
Efficient and accessible restoration mechanisms can foster economic
growth by encouraging technology transfer, licensing
agreements, and increased participation in global innovation networks.
RESEARCH QUESTIONS
·
What are the different grounds
for restoration of patent?
·
What are the potential benefits
of restoration of patent?
·
What are the economic advantages of successfully restored
patents?
RESEARCH METHODOLOGY
·
The researcher will be relying
on Doctrinal Method
of research to complete the project. These include various secondary sources of literature and insights.
NATURE OF RESEARCH
·
The method of research is purely doctrinal
for the purpose of this project.
SOURCES OF DATA
SECONDARY SOURCES:
·
Journal
·
Articles
·
Websites
MODE OF WRITING
·
The mode of writing employed
for this project
is descriptive along with analysis
of the information so
collected.
LIMITATION OF THE STUDY
The researcher has territorial, monetary and time limitations in
completing the project. For having a
bird’s eye view of the particular topic, effective and extended reading over a
long period of time is required but
after going through several articles the researcher has a clear understanding of topic but it would have been clearer if she would have read more articles and books of different
writers.
MODE OF CITATION
·
The researcher has followed Blue Book Citation
(20th Edition) in this project
report.
LITERATURE REVIEW
1.
PATENT- TYPES
& LAWS RELATED
TO THEM IN INDIA – SHRISHTI MITTAL
This
article by the author give descriptive analysis of patent laws in India and it introduces the topic in a simplified way
giving a clear meaning of the term patent. It
also discusses the history and origin of the concept of patent. Next
author moves forward to explain the different kinds of patent
and who are the persons
entitled to apply
for the patent in India and types of patent application in India. This article also discusses the procedure for registration of patent and the grounds
on which the patent registration can be refused. This article then dives into the topic of
patent infringement and the different
landmark judgements around patent infringement. Thus this paper gives an elabotary
view regarding patent registration in India.
PATENT LAW IN INDIA
Patents
Act, 1970 governs the patent law regime in India, it also has been amended
several times in order to align with international standards
and norms. Patents
Act, 1970 is the primary
legislation which governs patents in India and this act came into effect
in 1972.[4] This
act was again amended by the Patents
(Amendment) Act, 2005, wherein product patent was extended to food, drugs, chemicals, and
micro-organisms. The role that intellectual property plays are very crucial for fostering innovation and
technological advancements, without any innovation or technological advancement a country can’t aspire to grow. India, which is a rapidly
developing nation recognizes the importance of role played by
intellectual property in shaping the country by encouraging innovations.
Not
every invention can get patented. It’s very crucial that all the conditions of
patentability get fulfilled
only then patent
is granted to any owner. Section 3 and Section
4 of the Patent Act, 1970
talks about all those exceptions that are not considered as inventions and
hence are non- patentable. The invention must not fall under the non-patentable categories, such as discoveries, mathematical methods, computer
programs, and methods
of agriculture or horticulture. The three conditions which need to be satisfied
by the inventor to get a patent
and these are as
follows-
1.
The invention should not be in existence, it
should be novel and which involves an inventive
step.
2.
It should be capable of commercial application.
3.
The invention may relate to a product,
process or a significant improvement to the previous invention, which implies it should be non-obvious.[5]
The
application process for patent in India involves filing an application for
patent with the Indian Patent Office
(IPO). The duty of IPO is to examine the patent application and to determine
whether the invention
fulfills the patentability criteria. Upon satisfaction of IPO that the invention
meets all the requirements, it grants the patent, and now the patentee can enjoy
its exclusive rights upon his invention for a period of 20 years from the date
of filing the application.
Compulsory
licensing is also provided in the Indian patent law, which authorize a third
party that he can use the patented
invention even without the consent of patentee under certain circumstances, this can be allowed when the invention
is not being used or it is not available
at a reasonable price to
the public.
As
per Section 53 of the Patent Act, 1970, a renewal fee is required to be paid by
the patentee till the date of
possession given by the IPO. In case the renewal fee is not paid by the
patentee within the prescribed time
period then such a patent will lapse.[6] So
certain safeguards are provided
in the Patent Act, 1970 for restoration of lapsed patent in India. when the patent
ceased to have effect because
of non-payment of fee within the time prescribed under the Section
53of the Patent Act, 1970,
or within such time period,
allowed under Section
142 of the Patent ACT, 1970.
The patentee or their legal representative can file an application for the
restoration of lapsed patent as in
provided under the Patent Act, 1970. In case of patent held jointly by two or more persons, then one or more of the
joint holders of patent or without joining others can submit an application for restoration of lapsed patent,
but the permission of Controller of Patent is required to file such an application for restoration of patent in case of joint holders
of patent.
Such
an application for restoration must be filed within 18 months from the date on
which the patent ceases to have
effect. However, the renewal fee for the application of restoration of lapsed patent can be paid by any person. Still, it is required that the patentee
himself/herself or by his/her
legal representative should file the application for restoration. The
application for restoration can be
filed within one year from
the date on which such patent lapsed.
In conclusion, patent law in India plays
an important role in encouraging innovation and it also protects the rights of inventors and
creators. Over time the patent regime in India has evolved to meet the international standards and to
provide a favorable environment for business to invest in research
and development.
RESTORATION OF PATENT
An
annual renewal fee is paid to the patent office in order to keep the patent in
force, if in the stipulated time period it is not paid then the patent will cease to have effect
and it will eventually become a public property. Certain
safeguards are provided for restoration of lapsed patent by the Act.[7]
Some of the essential requirements for restoration of patent are as follows:
1.
Section 60 of the Patent Act, 1970 provides the
provision for restoration of lapsed patent, it says that an application for restoration should be filed by
the patentee or their legal
representatives.
2.
Prescribed fee on Form 15
3.
Proof to show that the failure of the renewal
or maintenance fee was unintentional.
Section 60 of the Patent Act talks about restoration of lapsed patent:
(1) Where a patent has ceased to have effect by reason of failure
to pay any renewal fee within the period prescribed under section 53 or
within such period as may be allowed under sub- section (4) of section 142, the patentee or his legal
representative, and where the patent was held by two or more persons
jointly, then, with the leave of the Controller, one or more of them without
joining the others, may, within eighteen months from the date on which the
patent ceased to have effect, make an application for the restoration of the
patent.
(2) [Omitted]
(3) An
application under this section shall contain a statement, verified in the
prescribed manner, fully setting out
the circumstances which led to the failure to pay the prescribed fee, and the controller may require from the
applicant such further evidence as he may think necessary.[8]
Although there is no
requirement of additional fee to be paid for patent of addition, but it’s required
that the patent holder must submit each form for each additional patent
individually together with the patent restoration application.
OPPOSITION TO THE RESTORATION OF A LAPSED
PATENT:
If after hearing the applicant if the
Controller is prima facie satisfied that the failure to pay the renewal or maintenance fee was unintentional and that the application was filed without
making any undue delay then
he shall publish the application in the prescribed manner and any interested person may give a notice for opposition for the patent restoration within the prescribed period on either or both
of the following grounds:
1)
That the failure to pay the renewal or maintenance fee was not unintentional; or
2)
While
making the application for restoration of patent undue delay has been caused by the applicant.
Only these two grounds
will be considered, a notice of opposition for the restoration of a lapsed
patent on any other ground will not be considered. The person who has an interest
can only file
a notice of opposition for the restoration of a lapsed patent.
The stipulated time
period for filing the notice of opposition is two months from the date of publication and the same is filed on Form
14 along with its prescribed fee. Extension beyond the stipulated time period that is two months cannot be made.
However, a petition seeking extension
of time beyond two months can be filed under Rule 138 of Patent rules along
with its prescribed fee.[9] However,
the petition for extension of time period must be filed within the period
of two months only. The power to grant extension under Rule 138 is discretionary power of the controller
so it cannot be taken for granted.
RIGHTS OF PATENTEES OF LAPSED PATENTS
WHICH HAVE BEEN RESTORED
Section 62 talks about the rights of patentees of lapsed patents
which have been restored:
1) Where a patent
is restored, the rights of the patentee shall be subject to such provisions as may
be prescribed and to such other provisions as the Controller thinks fit to impose
for the protection or compensation of persons who may have begun to avail themselves
of, or have taken definite steps by contract or otherwise to avail themselves
of, the patented invention between the date when the patent ceased to have
effect and the date of publication of the application for restoration of the patent
under this chapter.
2) No suit or
other proceeding shall be commenced or prosecuted in respect of an infringement
of a patent committed between the date on which the patent ceased to have effect
and the date of the publication of the application for restoration of the patent.[10]
If
the patent lapses due to the non-payment of the renewal fees, the patentee will
lose all his rights and the invention will eventually become a public property.
The provision given in Section 62 of the Patent Act is to safeguard the
interest of those persons who after ascertain from the Register of patents that
the patent has lapsed due to non-payment of the renewal fees and become public
property had started commercially using the invention.[11]
CASE LAWS RELATED
TO RESTORATION OF PATENT
Some of the Indian case laws dealing
with the restoration of patent in India
are as follows:
F. Hoffmann-La Roche Ltd v. Cipla Ltd (2009)[12] – This
case not just talks about the balance
between the innovation and access to affordable medicines but also
highlights the issues of protection of patent
in the pharmaceutical industry.
In this case, the issue involved
was that Roche had a patent for the drug, Erlotinib hydrochloride, which was used to treat
cancer. And according to Roche, their patent was infringed by the Cipla as they manufactured a generic version
of the drug and used to sell them and they used the same active
pharmaceutical ingredient which was identical to Roche’s drug. On the other hand, Cipla argued that the
patent of Roche was invalid and therefore, it should be cancelled on the
grounds that it was obvious and also lacked novelty.
The court was of opinion
that Roche’s patent was infringed by the Cipla so they passed an order in which Cipla was directed to stop
the manufacturing of the drug and were also prohibited
from selling that drug. However, the court was not satisfied with the Roche’s
claim for damages as his patent was
expired due to the non-payment of the renewal fee. However, the patentee argued that the failure on
his part to pay the renewal fee was unintentional. The court further held that if there is a bona fide mistake due to
which the patentee was not able to pay the renewal fee then the patent can
be restored.
Glaxo Group Ltd v. Controller of Patents (2010)[13] – This
is a landmark judgment which was heard before the Intellectual Property Appellate Board (IPAB) in India in 2010. In this case an application for patent was filed by the Glaxo
Group Ltd. for a drug named “lapatinib ditosylate” which was used to cure certain type of breast cancer.
The Indian Patent Office rejected the application citing the grounds
of “novelty” and “inventive” step as according
to them the drug did not fulfill
these criteria. So, the Glaxo
Group Ltd. filed an appeal against the decision to the IPAB.
The issue involved in
this case was that whether the drug fulfilled the criteria of “inventive step”.
The argument of Glaxo Group Ltd. was that the drug was a significant improvement over other existing treatment
used to cure breast cancer,
and therefor fulfills
all necessary requirements of “inventive step”.
On the other hand, the Controller of Patents, viewed
the drug as mere “discovery” rather than an “invention”. In this case it was decided that Section 3(d) of the Patents Act, 1970 would be applicable which talks about “what are not inventions” and the drug was treated as mere discovery and
not an invention therefore, the rejection of application for patent was
valid.
Section 3(d) of the
Patents Act, 1970 says that the mere discovery of a new form of a known substance
which does not result in the
enhancement of the known efficacy of that substance or the
mere discovery of any new property or new use for a known substance or of the
mere use of a known process, machine
or apparatus unless such known process results in a new product or employs
at least one new reactant.[14]
CONCLUSION
In India, restoration of
patent is an important legal mechanism which helps the inventors or creators who have inadvertently allowed their patent
to lapse. The efforts and investments made by
the creators or inventors are acknowledged by this mechanism, which further
encourages them to create more
innovations, and this also protects the intellectual property rights of creators. When a secure legal environment
is provided to inventors, this helps in encouraging the innovation and creativity in a country
as the inventors will be assured that their intellectual property rights are protected.
There are several factors
which are considered by the Indian
Patent Office while examining the application
of patent restoration, a rigorous examination of patent application is
conducted including the reasons for the lapse of patent,
the intent of inventor, reason for the delay, and its impact on public interest all are
considered to make sure that only deserving patents are restored, and the interest
of public is not harmed.
The restoration of patent
in India is a positive step, and it’s very helpful in building a robust and innovative economy. It encourages
creators to invest in new innovative ideas, even when there is risk because it is known to creators that their
intellectual property rights will be protected. India
can attract more investment and talent if fair and transparent process
for patent restoration is provided, and this can
position India as a hub for innovation in the global economy.
[1] Saumya Singh and Prashant Shivam,
Patent Laws and their Service for IP Rights, Manupatra (Jul. 13, 2022),
[2] What is Intellectual Property,
WIPO, <https://www.wipo.int/about-ip/en
/>
[3] Sneha
Mahawar, What is a Patent, Ipleaders (Aug. 16, 2022), <https://blog.ipleaders.in/patent-law-
2/#What_is_a_patent>
[4] Shrishti Mittal, Patent- Types
& Laws related to them in India, Manupatra (Apr. 16, 2021),
[5] Ibid.
[6] The Patent Law, 1970
(India), Section 53, <https://ipindia.gov.in/writereaddata/Portal/ev/sections-index.html>
[7] Sakshi Sharda, Restoration of
Lapsed Patent in India: A Complete Overview, Corpbiz (Apr. 30, 2020),
[8] The Patent Law, 1970 (India),
Section 60, <https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps60.html>
[9] Priyanka Rastogi & Vijaya
Singh, Restoration of Lapsed Patents: An Indian Perspective, Mondaq (May. 06, 2014),
<https://www.mondaq.com/india/patent/311398/restoration-of-lapsed-patents-an-indian-perspective>
[10] The
Patent Law, 1970 (India), Section 62, <https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps62.html>
[11] Rastogi & Singh, supra note
1.
[12] CS (OS) No.89/2008 and C.C. 52/2008
[13] CIVIL APPEAL NO. 5588 OF 2008
[14] The Patent law, 1970 (India),
Section 3(d), <https://ipindia.gov.in/writereaddata/Portal/ev/sections-
index.html>
Article Information
RESTORATION OF PATENTS BY – UTKARSH YADAV & AKANKSHA CHOUDHARY
Authors: UTKARSH YADAV, AKANKSHA CHOUDHARY
- Journal IJLRA
- ISSN 2582-6433
- Published 2024/03/27
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
- Access Open Access
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