India is a party to the Convention Establishing the World Intellectual Property Organization (WIPO) (1975) and to other international conventions on intellectual property.336 India has signed bilateral cooperation MOUs on IPRs with Australia, France, Japan, and Switzerland; and with the European Patent Office, the German Patent Office, the US Patent and Trade marks Office, and WIPO. There is also a joint statement of Intent of Bilateral Cooperation between India and the United Kingdom.337 These agreements focus on capacity building and the creation of public awareness to facilitate enforcement of IPRs.
India's WTO contact point for intellectual property purposes is the Department of Commerce.338 The institutional and legal framework with respect to the protection of intellectual property rights has not changed substantially since the previous review of India in 2007 (Table III.29). The Department of Industrial Policy and Promotion (DIPP), in the Ministry of Commerce and Industry, covers patents, trade marks, designs, and geographical indications, all of which are administered by the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM), except for the provisions related to patent revocations and to infringements regarding patents, trade marks, designs, and geographical indications, which are dealt with by the judicial authorities. The departments of Higher Education, Information Technology, and Agriculture and Cooperation are in charge of copyright protection, protection of layout designs, and the protection of new varieties of plants, respectively.339
Geographical Indication of Goods (Registration and Protection) Act 1999, in force since September 2003
Monopolies and Restrictive Trade Practices Act 1969, as amended
Plant variety protection
Protection of Plant Varieties and Farmers' Rights Act 2001, entered into force in June 2002
Source: WTO Secretariat.
The Intellectual Property Appellate Board (IPAB) was constituted in 2003 to hear appeals against the decisions of the registrar of trade marks and geographical indications.340 However, as of 2007 the IPAB has also heard appeals regarding patents.341 All appeals regarding patents that were pending before the various high courts, were transferred to the IPAB; and all new Rectification Applications under the Patents Act 1970, have since then been filed before the IPAB.342
The Patent System in India is governed by the Patents Act 1970 (No. 39 of 1970) as amended by the Patents (Amendment) Act 2005, and by the Patents Rules 2003, as amended by the Patents (Amendment) Rules 2006, effective 5 May 2006. There have been no changes to this legislation since the previous Review of India.
Applications for patents may be submitted to the CGPDTM by nationals of any country. The Patent Office, under the Department of Industrial Policy and Promotion (DIPP) at the Ministry of Commerce and Industry, performs the statutory duties in connection with the granting of patents. There are patent offices in Chennai, Delhi, Kolkata, and Mumbai that deal with patent applications originating within their respective territorial jurisdictions. Applicants who are non‑resident or have no domicile or no place of business in India, must employ a patent agent to file the patent application.343 The location of the applicant determines the appropriate patent office where applications for patents should be filed.344
Patent protection may be granted to any invention relating to either a product or process that is new, involves an inventive step, and is capable of industrial application (Section 2(1)(j)). The Act also sets out products or processes that are not recognized as inventions and are therefore not patentable.345 Section 3(d) of the Patent Act refers to the scope of patentability of pharmaceutical and other chemicals and calls for proof of efficacy of the substance. The claimed substances should differ significantly in properties from the known substances with regard to efficacy, which needs to be proved at the time of filing or during the patent application to prove inventive step. Patents of addition for an improvement to a patented product can be granted to the holder of the original patent for the same period as the validity of the original patent.
Patent protection is a territorial right. Hence, for protection to be effective outside the Indian territory the applicant must file a corresponding application for the same invention in Convention countries346, within 12 months from the filing date in India. It is also possible to file an international application (a Patent Convention Treaty (PCT) application) in India, in any of the different patent offices. In general, it is not necessary to obtain prior permission from the Patent Office to file a patent application abroad, unless: the applicant is an Indian resident and the invention originated in India; the applicant does not wish to file a patent application in India prior to filing abroad; the applicant is an Indian resident, an application has been filed in India, and less than six weeks have passed from the date of application; or when the invention relates to atomic energy or defence purposes.
Applications for patents should be filed before the publication of the invention and should not be disclosed or published until then. Generally, a patent application cannot be filed for an invention that has been published or publicly displayed. However the Patents Act provides a grace period of 12 months for filing a patent application from the date of publication of an invention in a journal or its public display in an exhibition organized by the Government, or its disclosure before any learned society or published by the applicant.347
A patent application must be examined before the granting of a patent. Applications are only examined if requested by the applicant or by another interested party within 48 months of the date of application, failing which the application is deemed to have been withdrawn. If all the requirements are met, the patent is granted and notified in the Patent Office Journal. If the application is found to be in order for grant, the patent is granted, provided no pre‑grant opposition is filed or pending.348
Patent rights accrue from the date of publication of the patent application, which is within one month after completion of 18 months of its filing or earlier, if requested by the applicant. On average, it takes between 10 and 60 months to grant a patent, depending on the information provided by the applicant and the opposition the application generates. Post‑grant opposition may be filed in the Patent Office up to 12 months from publication of the grant of the patent in the Patent Office Journal.349
The term of every patent in India is 20 years from the date of filing of the patent application, irrespective of whether it is filed with a provisional or a complete specification. For applications filed under the PCT the term of 20 years begins from the international filing date. Patent renewal fees are payable from the third year onwards.
Compulsory licensing is permitted under certain circumstances. Anyone interested in working a patent may, after the expiry of three years from the date of grant of the patent, apply for grant of a compulsory licence if: the reasonable requirements of the public with respect to the patented invention have not been satisfied; the patented invention is not available at a reasonably affordable price; or it is not worked in India.350 Two years after a compulsory licence has been granted, the Central Government or any interested person may request the revocation of the patent. The Controller (of the Patent Office) must normally make a decision within one year. No compulsory licences have been granted since 2005.351 The Central Government may, if necessary (as in the case of a national emergency), provide for the issue of a compulsory licence for a patented product through a notification in the Official Gazette (Section 92) and may use a patented invention for government purposes (Section 100). Compulsory licences are also permitted for exports of patented pharmaceutical products in certain exceptional circumstances352, when the Government declares an emergency. The authorities noted that the Department of Industrial Policy and Promotions has issued a discussion paper on compulsory licensing with a view to developing a predictable environment to use such measure.
The Act stipulates that parallel imports are allowed when authorized under the law.353 The authorities noted that: "under the law" should be interpreted as the law of the country where the item is being produced.
In 2009/10 India granted 6,168 patents; 37,334 patents were in force, of which 6,781 were granted to Indians and 30,554 to foreigners resident abroad. As a result of modernization, restructuring of offices, and procedural improvements, including a time‑limit of three months for examiners to complete examinations once complete documentation is received, the number of patents granted relative to the number of patent applications has increased.354 Patent applications increased from 4,824 in 1999/00 to 36,877 in 2008/09; the number of applications examined rose from 2,824 to 10,296 and the number granted increased from 1,591 to 16,061.355
The Indian Patent Office has been recognized as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT.
Contravention of secrecy provisions relating to certain inventions or falsification of any information relating to the Patents Register is punishable by a fine or imprisonment for up to two years. False representation of any article sold in India as being patented in India or for which an application has been made is punishable by a fine of up to Rs 100,000.356 Appeals may be made to the Appellate Board. Since 2007, 215 appeals regarding patents have been filed before IPAB.
Trade marks are protected under the Trade Marks Act 1999, and the Trade Marks Rules 2002, both in force since September 2003. In 2009, the Trade Mark (Amendment) Bill 2009 was introduced in Lok Sabha (the lower house of Parliament).357 The Trade Mark (Amendment) Act 2010 was passed by both houses of parliament, but is still not in force. The Act will enter into force once the Trade Marks (Amendment) Rules 2010358 , and its amendment are notified.359 This amendment will enable India to accede to the Madrid Protocol.360 Membership of the Protocol will help Indian companies to register their trade marks in the Protocol member countries through a single application.
Trade mark law in India is a "first‑to‑file" system that requires no evidence of prior use of the mark in commerce. Any person claiming to be the proprietor of a trade mark used or proposed to be used in commerce may apply for registration in writing or electronically to one of the offices of the Trade Marks Registry within their territorial limits.361 A single application may be used for registration of a trade mark for different classes of goods and services. The law protects product, service, certification, and collective trade marks. Protection is also granted to well known marks, as well as service and collective marks. The Office of Trade Marks does not maintain a register of well known marks. The law stipulates the types of trade marks that would be refused for registration.362
As a signatory to the Paris Convention, India recognizes foreign priority provided that the application in India is filed within six months of filing of the application abroad.
The registration of a trade mark in the Office of the Controller General of Patents, Trade Marks, Industrial Designs, and Geographical Indications typically takes about two to three years, subject to the trade mark not being opposed by a third party. A trade mark application may be filed in any of the Registry offices in Ahmedabad, Delhi, Chennai, Kolkata or Mumbai, based on the territorial jurisdiction. The steps involved in the registration process in India have not changed during the review period.363 Proprietors of trade marks may file a trade mark application only if they have a place of business in India, otherwise the application must be filed through a trade mark agent/attorney.
The Trade Marks Office reviews filed applications to ensure that they are complete. When an application for registration of a trade mark has been accepted, it is published. Any person may oppose the registration, within three months from the date of its advertisement. If the trade mark is not opposed, the registration will proceed and the Trade Marks Registry will issue a registration certificate. Where registration of a trade mark is not completed within 12 months from the date of the application, the Registrar after giving notice to the applicant, treats the application as abandoned. Appeals against a decision by the Registrar are made to the Intellectual Property Appellate Board (IPAB).364
Registration is not necessary to exercise the right over a trade mark, which is also acquired by use. However, registration of a trade mark gives the owner the exclusive right to the use of the registered trade mark and facilitates the seeking of relief in the appropriate courts in case of infringement of the exclusive right. The exclusive right is subject to any conditions entered on the register, such as limitation of area of use. The Trade Marks Act 1999, preserves common law rights in respect of an unregistered trade mark. Hence, even when a trade mark is unregistered the right holder is entitled to protection and may initiate action against a third party under the law.
Trade marks applications increased from 90,236 in 2001/02 to 130,172 in 2008/09; and the number of trade marks registered increased from 8,010 in 1999/00 to 102,257 trade marks in 2008/09.365 As at November 2010, there were approximately 400,000 applications pending at various stages.
The period of trade mark protection is ten years, renewable for further periods of ten years on payment of the prescribed fee. A trade mark can be removed from the Register on grounds of non‑use if the registered mark is not used for a continuous period of five years and three months from the date it was registered, or if the renewal fee is not paid. Appeals against a decision by the Registrar are made to the IPAB.366
The Trade Marks Act 1999 provides for both civil and criminal remedies. Penalties for falsification of trade marks and selling or providing goods that infringe trade marks include a prison term of six months to three years, and a fine of between Rs 50,000 and Rs 200,000. Second or subsequent convictions may lead to imprisonment for one to three years and a fine of between Rs 100,000 and Rs 200,000. Falsely representing a trade mark as registered may lead to imprisonment for up to three years and/or a fine. Other penalties include imprisonment for up to two years and/or a fine for improper description of a place of business as connected with the Trade Marks Office and for falsification of entries in the Register. If the offence is committed by a company, the company as well as every person in charge, and responsible to the company would be deemed guilty of the offence.
There are also provisions under the trade mark and customs laws that allow Customs to stop the importation of infringing goods. In 2007, the customs authorities promulgated guidelines, under which right holders may record their registered trade marks with the customs authorities.367 These guidelines authorize customs officials to seize goods infringing the trade marks of the right holder at the border without a court order.368 According to the authorities, there have been no such instances. After suspending clearance of suspected goods, the customs authorities inform the right holder, who must join in the proceedings against the importer within the prescribed period, otherwise Customs releases the suspended goods. Customs officers may destroy the suspended goods or dispose of them after it has been determined that the goods have infringed the trade marks of the right holder, and that no legal proceeding is pending in relation to such determination. Goods amounting to Rs 434 million were seized by Customs during May 2007 to March 2010.369 The re‑exportation of goods infringing trade marks in an unaltered State is also prohibited. Under the trade mark law, the police have the power to suo moto conduct raids and seizure operations.