The Patents Act, 1970: Salient Features and the TRIPS Amendments

1. History in brief

Act VI of 1856 gave exclusive privileges to inventors for fourteen years, followed by the Act of 1859 and the Patents and Designs Protection Act, 1872. The Indian Patents and Designs Act, 1911 governed until 1972. After independence, the Bakshi Tek Chand Committee (1949–50) and Justice N. Rajagopala Ayyangar's Report on the Revision of the Patents Law (1959) found that foreign patentees held most patents and did not work them in India. The Patents Act, 1970 was based on the Ayyangar Report and came into force on 20 April 1972 with the Patents Rules, 1972.

2. Salient features of the 1970 Act as enacted

1. Process patents only for substances intended for use as food, medicine or drugs, and substances produced by chemical processes (old s.5). Product patents were available in other fields.
2. Shorter term for those process patents: seven years from filing or five years from sealing, whichever was shorter; fourteen years for other patents.
3. Definition of invention requiring novelty and utility, with the s.3 list of things that are not inventions and s.4 on atomic energy.
4. Licences of right automatically endorsed on food and drug process patents after three years from sealing, so any person could obtain a licence on royalty capped by the Act.
5. Working requirement and compulsory licences (s.84) after three years, with the general principles in s.83 and revocation for non-working (s.89, now s.85).
6. Government use and acquisition of inventions (ss.99–103).
7. Opposition before grant by any person interested.
8. Restrictive conditions in licences made void (s.140).
9. Revocation on stated grounds (s.64) and in the public interest (s.66).

The result was a weak-protection regime for drugs that let Indian firms make patented drugs by new processes, which is how India's generic industry grew.

3. What TRIPS required

• Patents for inventions in all fields of technology, products and processes, without discrimination as to field, place of invention or whether products are imported or locally made (Art 27(1)).
• Permitted exclusions only: ordre public and morality, diagnostic, therapeutic and surgical methods, and plants and animals other than micro-organisms (Art 27(2)–(3)).
• Exclusive rights of making, using, offering for sale, selling and importing (Art 28).
• Term of at least twenty years from filing (Art 33).
• Reversal of burden of proof for process patents (Art 34).
• Conditions on use without authorisation (compulsory licences) (Art 31).
• For developing countries without product patents in a field, a transition to 1 January 2005 (Art 65(4)), with a mailbox to receive applications from 1995 (Art 70.8) and exclusive marketing rights (Art 70.9).

4. The Patents (Amendment) Act, 1999

India failed to provide a legal mailbox by 1995; the US complained, and the WTO Appellate Body held against India in India — Patent Protection for Pharmaceutical and Agricultural Chemical Products (1997), finding that administrative instructions were not enough. The 1999 Act, with retrospective effect from 1 January 1995, created the mailbox for product patent applications on drugs and agrochemicals, to be examined from 2005, and provided for exclusive marketing rights (old Chapter IVA) for five years or until grant or rejection.

5. The Patents (Amendment) Act, 2002

• Uniform twenty-year term from filing for all patents (s.53).
• New definitions of “invention” (with inventive step and industrial application) and of “inventive step”.
• Expanded s.3: business methods, computer programmes per se and algorithms, plants and animals, essentially biological processes, traditional knowledge, and topography of ICs.
• Reversal of burden of proof for process patents (s.104A).
• Bolar exception and parallel imports (s.107A).
• Disclosure of source of biological material; new grounds for opposition and revocation.
• Compulsory licence provisions rewritten in TRIPS terms (s.84, s.92), and appeals moved to the Intellectual Property Appellate Board, which began hearing patent matters in 2007.
• Publication of applications at eighteen months (s.11A) and examination only on request (s.11B).
• Licences of right abolished.

6. The Patents (Amendment) Act, 2005

First promulgated as an Ordinance at the end of 2004 and then enacted, it completed TRIPS compliance:

• Old s.5 deleted: product patents in all fields, including drugs, food and chemicals.
• Exclusive marketing rights provisions deleted; mailbox applications taken up for examination.
• Section 3(d) rewritten to exclude new forms of known substances that do not enhance known efficacy, with the Explanation on salts, polymorphs, isomers and other derivatives.
• The Ordinance's proposal to allow patents for software with a technical application to industry or in combination with hardware was dropped, leaving s.3(k) as enacted in 2002.
• Pre-grant opposition by any person on listed grounds (s.25(1)), and a new post-grant opposition within one year of grant (s.25(2)).
• Section 92A: compulsory licences for export of medicines to countries without manufacturing capacity, implementing the 2003 WTO decision.

7. Pre- and post-TRIPS compared

8. Later changes

The Tribunals Reforms Act, 2021 abolished the IPAB, and appeals and revocation petitions went to the High Courts; the Delhi High Court framed its Intellectual Property Division Rules in 2022. The Patents (Amendment) Rules, 2024 reduced the time for requesting examination to thirty-one months from priority, changed the working statement (Form 27) to once every three financial years, introduced a certificate of inventorship, and revised the pre-grant opposition procedure, including a preliminary check by the Controller on whether a prima facie case is made out.

How this is examined

Q3 of 2024. Spend a third on the 1970 Act's features and the rest on the amendments, one heading per amendment. End with the table, the 2021 and 2024 changes, and the assessment. Name the WTO mailbox dispute; it explains why the 1999 amendment was retrospective.