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THE PATENTS (AMENDMENT) ACT, 2002
(No. 38 OF 2002)
[25th June, 2002.]
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:—
Short title and commencement
1. (I) This Act may be called the Patents (Amendment) Act, 2002.
(2) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint; 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.
Substitution of certain words for the words "High Court" and "Court".
2. In the Patents Act, 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.
Amendment of section 2.
3. 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 organisation notified as such under sub-section (/) 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) in sub-clause (/), 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 (0. the following clause shall be inserted, namely:—
\ia) "international application" means an application for patent made in accordance with the Patent Cooperation Treaty;';
(f) for clause if), the following clauses shall be substituted, namely:—
'(i) "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 clause shall be substituted, namely:—
(m) "patent" means a patent granted under this Act;1;
(h) after clause (o), the following clause shall be inserted, namely:—
'(oa) "Patent Cooperation Treaty" means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time; '
(i) for clause («), 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.'.
4. 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 would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;";
(h) in clause (e), 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"
(ii) the words "or plants" shall be omitted;
(e) after clause (/), the following clauses shall be inserted, namely:—
"(j) plants and animals in whole or any part thereof other than microorganisms
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 programme per se or algorithms;
(I) 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.".
Amendment of section 5.
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 processes" includes biochemical, biotechnological and microbiological processes.'.
Amendment of section 7.
6. In section 7 of the principal Act, after sub-section (I), the following subsection shall be inserted, namely:—
"(1A) Every international application under the Patent Cooperation 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.".
Amendment of section 8.
7. 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;
(it) for clause (a), the following clause shall be substituted, namely:—
"(a) a statement setting out detailed particulars of such application; and";
(Hi) 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.".
Amendment of section 10.
8. In section 10 of the principal Act,—
(a) in sub-section (4), after clause (c), the following clause shall be inserted, namely:—
"{(I) 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 authorized 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 ( 0 , the following sub-section shall be inserted, namely:—
"(4A) In case of an international application designating India,—
(i) the title, description, drawings, abstract 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.".
Amendment of Chapter IV.
9. 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:—
Publication of applications.
“11A. (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 subsection (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.
(J) 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.
Request for examination.
11B. (/) 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 the 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
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