TRIPS Agreement provides that
patents shall be available for any invention whether products or processes,
in all fields of technology (ART. 27). A transition period of 5 years
is offered to all developing countries to make their laws compatible
with the TRIPS Agreement. Moreover the countries that do not provide
for product patents in certain areas can avail of further period of
five years for amending their laws to provide for product patents.
India does not grant product patents for food, drugs, pharmaceuticals
and products produced by chemical process.
Patents Amendment Act 1999 was passed in March 1999 to confirm with
these international obligations and has retrospective effect from
1st January 1995. The main features of the amendments are as follows:
Section 5 (2) has been inserted by this amendment which provides
for filing of applications for patent of a product in the field
of drugs, medicines and agro-chemicals. It also includes alloys,
optical glass, semi-conductors and inter-mechanic compounds. These
applications are kept pending till the law is suitably amended.
Exclusive Marketing Rights (EMR):-
As per the TRIPS agreement, India has provided for EMR as a pipeline
protection for pharmaceutical and agro-chemical products. EMR constitutes
a monopoly right given to the patent applicant even before the grant
of a patent. It is a right conferred upon the applicant to distribute
and market his product in India without the same having been subjected
to examination by applying the test and criteria for grant of a
To be eligible for EMR the following conditions are to be fulfilled:
1) The applicant will have to file an application in India
containing claims for products. Theses applications are kept in
the " Mail Box" i.e. no action is taken on them.
2) File application
and obtain a patent for identical invention in a member country.
3) Obtain marketing
approval from the same convention country.
4) Obtain marketing
approval from the appropriate authority in India; and
5) Then file an application
to the controller of patents for the grant of EMR in India.
In case of inventions made
in India, the applicant does not have to obtain product patent and
marketing approvals from some other member country but has an option
to have his process patent for identical invention obtained in India.
Also, EMR is not available
for products for which applications have been made before 1.1. 1995
Exclusive Marketing Rights is only for selling and distributing
the product but not for manufacturing the same and is granted for
five years from the date of the EMR application or till the patent
is granted on his mail box application, or his patent application
is rejected whichever is earlier.
Amendments have also been made to protect the public interest.
EMR is available only till 31-12-2004
An applicant in India can file an application for a patent outside
India simultaneously while filing the same in India. Earlier the
applicant was required to file such application only after the expiry
of six weeks after the date on which the application was filed in
The present amendment also provides for the protection of security
of India. According to the provisions the Central Government shall
not disclose any information relating to any patentable invention
or any application relating to the grant of patent under this Act,
which it considers prejudicial to the interest of security of India.
It shall take action including the revocation of any patent, which
it considers necessary in the interest of security of India. This
provision is universally found in the Patent Legislation.
Further the Patent Rules have been modified to make them simpler.
These rules have made the forms simpler, thus facilitating convenience
Patent Co-operation Treaty (PCT): India has joined the Paris Convention.
Eventually it has become a member of PCT.
II (A) has been inserted in the Indian Patent Rules, by way of this
amendment. This chapter deals with International Applications under
PCT. PCT provides for filing of an international applications where
protection is sought in different countries. Filing of such an application
has the same effect as if the application had been filed separately
in each of the countries in which protection is desired. The Indian
Patent Office has been designated as the receiving office for PCT