TRIPS Patent Provisions, the Patent Law Treaty, the SPLT and the Budapest Treaty
Law of Patents in India · Unit V · Topic 17 of 17 · 7 min read
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Cases checked to exist. Read the judgment before quoting a holding.
Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.
1. TRIPS: the patent provisions
TRIPS (1994) is the only one of these instruments that sets substantive minimum standards for patents and backs them with WTO dispute settlement. Its Section 5 of Part II, Articles 27 to 34, is the core.
| Article | Content | Indian provision |
|---|---|---|
| 27.1 | Patents for any inventions, products or processes, in all fields of technology, if new, inventive and industrially applicable; enjoyed without discrimination as to place of invention, field of technology, or whether products are imported or locally produced | s.2(1)(j); s.5 (process-only rule) omitted in 2005 |
| 27.2 | Exclusion to protect ordre public or morality, including human, animal or plant life or health and the environment, if commercial exploitation is prevented for that reason | s.3(b) |
| 27.3 | Optional exclusions: (a) diagnostic, therapeutic and surgical methods; (b) plants and animals other than micro-organisms, and essentially biological processes, with plant varieties protected by patents or an effective sui generis system | s.3(i), s.3(j); PPV&FR Act, 2001 |
| 28 | Exclusive rights: making, using, offering for sale, selling, importing the product; using the process and the acts in respect of the direct product; assignment and licensing | s.48 |
| 29 | Disclosure clear and complete enough for a skilled person; members may require best mode and foreign filing information | ss.8, 10 |
| 30 | Limited exceptions that do not unreasonably conflict with normal exploitation or unreasonably prejudice the patentee, taking account of third parties | s.47, s.107A |
| 31 | Other use without authorisation (compulsory licences, government use), with conditions | ss.84–94, 100–103 |
| 32 | Judicial review of revocation or forfeiture | s.117A, s.64 |
| 33 | Term not ending before twenty years from filing | s.53 |
| 34 | Process patents: burden on defendant to prove a different process in specified cases | s.104A |
The surrounding provisions matter as much. Articles 7 and 8 state the objectives and allow public health measures. Article 39 protects undisclosed test data against unfair commercial use, which India reads as not requiring data exclusivity. Article 40 permits control of anti-competitive licensing. Article 65.4 gave developing countries until 2005 for product patents in new fields, with mailbox applications (Art 70.8) and exclusive marketing rights (Art 70.9) in the meantime. Article 31bis, in force from 2017, allows compulsory licences for export of medicines (s.92A).
Disputes. India — Patents (Appellate Body, 1997) found India's administrative mailbox inadequate, leading to the 1999 amendment. Canada — Pharmaceutical Patents (Panel, 2000) read Article 30 to allow a regulatory-review exception but not stockpiling before expiry, and read Article 27.1's non-discrimination rule as applying to exceptions too. The Supreme Court in Novartis AG v. Union of India, 2013 INSC 198, treated section 3(d) as within the room TRIPS leaves members to define invention and inventive step.
2. The Patent Law Treaty (2000)
Adopted at a WIPO diplomatic conference in Geneva on 1 June 2000 and in force from 2005, the PLT harmonises and simplifies the formal procedures of national and regional patent offices. It does not touch substantive patentability. Its main features:
- Filing date requirements are capped at three elements: an indication that the documents are intended as an application, indications identifying or allowing contact with the applicant, and a part that appears to be a description. Claims, fees and translations can follow.
- A maximum list of formal requirements: offices may not demand more than the PCT requires for international applications, and must accept PCT form and content.
- Representation: no compulsory local agent for filing, payment of fees and receipt of a filing date.
- Relief for missed time limits: extension, continued processing, and reinstatement of rights where the failure occurred despite due care or was unintentional.
- Restoration of priority where the later application is filed within two months after the twelve-month Paris period, on the same standard.
- Electronic filing, and limits on evidence and certification requirements.
India is not a party. Many of the PLT's ideas appear in the Patents Rules, 2003 as amended in 2016 and 2024: electronic filing, extensions of time under rule 138, and a filing date given on a provisional specification.
3. The draft Substantive Patent Law Treaty
From 2000 the WIPO Standing Committee on the Law of Patents (SCP) worked on a treaty to harmonise substantive law: the definition of prior art, novelty, inventive step (non-obviousness), industrial applicability (utility), sufficiency of disclosure, claim drafting and interpretation, and a grace period. The aim was that an invention examined in one office would receive the same result in another, reducing duplicated search and examination.
Negotiations stalled by about 2006. The main reasons:
- Developing countries, led by Brazil, Argentina and India, saw harmonisation as a move to fix TRIPS-plus standards and remove flexibilities such as India's section 3(d) and strict inventive step. They asked for disclosure of the origin of genetic resources and traditional knowledge, and for a development agenda (adopted by WIPO in 2007).
- The US first-to-invent system was incompatible with the first-to-file rule used everywhere else. The America Invents Act, 2011 moved the US to first-inventor-to-file, which removed one obstacle.
- Disagreement on grace periods and on the reach of patentable subject matter (software, business methods).
The SCP now works on narrower topics (exceptions and limitations, quality of patents, patents and health), and harmonisation proceeds through office cooperation such as the Patent Prosecution Highway and work-sharing among the large offices. In 2024 WIPO members concluded a separate Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, requiring disclosure of origin in patent applications, which India supported and which mirrors s.10(4)(d)(ii)(D) and s.25(1)(j) of the Patents Act.
4. The Budapest Treaty (1977)
The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure was concluded on 28 April 1977 and entered into force in 1980.
The problem. An invention involving a micro-organism often cannot be described in words well enough for a skilled person to reproduce it. Patent offices therefore require a deposit of a sample with a culture collection. Without the Treaty, an applicant seeking protection in many countries would need to deposit in each.
- A single deposit with any International Depositary Authority (IDA) is recognised by every contracting state for the purposes of its patent procedure.
- IDAs are culture collections that give assurances of permanence, impartiality and availability, and are recognised by the Treaty's Assembly on the nomination of a contracting state.
- Samples are stored for at least thirty years, and at least five years after the last request for a sample.
- Samples are furnished to the industrial property office, to the depositor, and to persons legally entitled under the applicable patent law.
- The Treaty sets uniform procedures for receipt, viability testing and furnishing of samples.
India acceded in 2001. The Microbial Type Culture Collection and Gene Bank at the Institute of Microbial Technology, Chandigarh became India's first IDA, and others have followed. Section 10(4)(d)(ii) of the Patents Act requires an applicant whose invention uses biological material that cannot be adequately described to deposit it with an IDA under the Budapest Treaty no later than the date of filing, to refer to the deposit in the specification, and to disclose its source and geographical origin. Access is available after the application is published.
5. The instruments compared
| Instrument | Year | Type | India |
|---|---|---|---|
| Paris Convention | 1883 | Principles: national treatment, priority, independence | Member from 1998 |
| PCT | 1970 | Single international application | Member from 1998 |
| Budapest Treaty | 1977 | Single deposit of micro-organisms | Member from 2001 |
| TRIPS | 1994 | Substantive minimums with enforcement | Bound from 1995 |
| PLT | 2000 | Formalities | Not a party |
| SPLT | Draft | Substantive harmonisation | Opposed the draft |
How this is examined
A 16-mark question on “international legal instruments on patents”, or short notes on the PLT, the SPLT or the Budapest Treaty. For the long answer, open with territoriality, take Paris and the PCT briefly from the Unit I note, then use sections 1 to 4 here and the comparison table. For a short note on Budapest, explain the problem first; the Treaty's provisions then follow naturally.
Now try the real questions: Law of Patents in India past question papers.