Patentability Criteria in INDIA & US.

ASHUTOSH

Patent Policy

CONVERGENCE

Indian & US Patent Laws are converging on substantive aspects of patentability criteria.

Patentability Criteria

Novelty- Prior art based

Indian Patent Offices – rely on prior art

USPTO now insists on Prior Art Disclosure as compulsory –

Patentability Criteria

Non-obviousness / inventive step

India liberal on obviousness

US was liberal on obviousness but now it is behaving bit exceptionally rigid after some specific cases.

PatentabilityUSA

“Anything under the sun involving manual intervention”.

INDIA“INVENTIONS not PATENTABLE”3(a) TO 3(p)3(d) New Forms without enhanced efficancy.3(p) Traditional Knowledge.

Non-patentability

Compulsory for microorganisms and life forms including plants –

Disclosure of Origin (Budapest Treaty) Benefit Sharing Biodiversity Act

(The Biological Diversity Act, 2002)

Plant Patentability

US - Plant PatentsIndia - Plant Varieties Protection Act(

The Protection of Plant Varieties and Farmers Rights Act, 2001)

(http://agricoop.nic.in)

Patentability Criteria

Anticipation – India - rigid on single Prior art-based

anticipationInsists “mosaic” of Prior arts are not

“anticipation”PCT/US - Often cites close prior arts as

affecting Patentability

Unity of Invention

India – more liberal on group of inventions

USPTO – very restrictiveInsists on electing one invention / Filing

Divisionals

Even Process / Composition / use as separate inventions

Timelines

India – Rigid on extensions Normally extensions not granted

US – very liberalprotracted prosecutionCourt order based fast tracking

Publication / Public Domain Information

India – Bibliography

US/EU – Full Patent

US – Total Transparency – “Public Pair”EU – Legal Status

Patent Family

Patent Office Procedures

India – Post dating(allows) Complete to Provisional

CognatesAddition Patents

US – Liberal procedures(allows) C.I.Ps

Amendments / RCE

US vs. INDIA

US grants Patent Term extensions/adjustments Data Exclusivity Orange Book Listings 180 Day Exclusivity

INDIA does not grant any of above

Indian Patent/Regulatory

Unlike USA/Europe, the Patent Regulatory link has not been formalised.

Generic launch friendly Indian policy

Oppositions

USA – Opportunity to protest “Amicus Curie” in

litigation

India–Pre-grant OppositionPost-grant OppositionCounterclaim for RevocationGovernment use option

Research Exemptions

India –Research & Educational ExemptionsMore liberal & broadSec. 47A – EducationalSec. 107A – Research for ANDA

Compulsory Licence

USA – 28 USC 1498

India –Sec. 63 to 94 & 92AGovt. use – Sec. 99 to 103

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