Term Of Protection
From Advocatespedia, The Law Encyclopedia
Patent protection is the legal protection granted to the owner of a patent over his or her intellectual property and the methods by which he or she can pursue action against someone who infringes upon the patent.
|Term Of Protection|
|Published on||26 May 2019|
The term of a patent is the maximum period during which it can be maintained in force. It is usually expressed in a number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have to be regularly paid in order to keep the patent in force. Otherwise the patent lapses before term.
The term of a patent or specific "claims" in a patent may also be curtailed by judgment of a court, as where a claim or patent is held "invalid" under the relevant law, and thus no longer enforceable.
Term of Patent
The term of every patent in India is twenty years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of twenty years begins from the priority date
• Payment of Renewal Fee
It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
• Restoration of Patent
A request for restoration of patent can be filed within eighteen months from the date of cessation of patent along with the prescribed fee. After the receipt of the request, the matter is notified in the official journal for further processing of the request.
• Patent of Biological Material
If the invention uses a biological material which is new, it is essential to deposit the same in the International Depository Authority ("IDA") prior to the filing of the application in India in order to supplement the description. If such biological materials are already known, in such a case it is not essential to deposit the same. The IDA in India located at Chandigarh is known as Institute of Microbial Technology (IMTECH).
Section 53 provides that the term of every patent granted after the commencement of the Patents (Amendment) Act, 2002 and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, shall be twenty years from the date of filing of application for the patent.
Explanation to Section 53(1) clarifies that the term of patent in case of international applications filed under the PCT designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty.
A patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed Further on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Rule 80 requires that to keep a patent in force, the renewal fees specified in the First Schedule should be paid at the expiration of the second year from the date of the patent or of any succeeding year and the same should be remitted to the patent office before the expiration of the second or the succeeding year. Sub-rule (1A) inserted by Patents (Amendment) Rules, 2005 provides that the period for payment of renewal fees may be extended to such period not being more than six months if the request for such extension of time is made in Form 4 with the fee specified in the First Schedule. While paying the renewal fee, the number and date of the patent concerned and the year in respect of which the fee is paid is required to be quoted. The annual renewal fees payable in respect of two or more years may be paid in advance.
One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject to the fulfillment of certain conditions. At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller of Patents for grant of compulsory license of the patent, subject to the fulfillment of following conditions, i.e.
• the reasonable requirements of the public with respect to the patented invention have not been satisfied; or
• that the patented invention is not available to the public at a reasonable price; or
• that the patented invention is not worked in the territory of India.
It is further important to note that an application for compulsory licensing may be made by any person notwithstanding that he is already the holder of a license under the patent. For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not available to the public at a reasonable price by reason of any admission made by him, whether in such a licence or by reason of his having accepted such a licence. The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may order the patentee to grant a licence upon such terms as he may deem fit. However, before the grant of a compulsory license, the Controller of Patents shall take into account following factors:
• The nature of invention;
• The time elapsed, since the sealing of the patent;
• The measures already taken by the patentee or the licensee to make full use of the invention;
• The ability of the applicant to work the invention to the public advantage;
• The capacity of the applicant to undertake the risk in providing capital and working the invention, if the application for compulsory license is granted;
• As to the fact whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions;
• National emergency or other circumstances of extreme urgency;
• Public non commercial use;
• Establishment of a ground of anti competitive practices adopted by the patentee.The grant of compulsory license cannot be claimed as a matter of right, as the same is subject to the fulfilment of above conditions and discretion of the Controller of Patents. Further judicial recourse is available against any arbitrary or illegal order of the Controller of Patents for grant of compulsory license.