Patents for Manufacturing Processes Granted in India
When it comes to patents in India, a significant aspect is the intellectual property framework that grants exclusive rights to innovators for their inventive products or methods. Among the patent claims that can be filed under the Indian Patent Law, a unique category stands out – product-by-process claims. These claims, unlike traditional product claims, define an invention based on the way it's produced, rather than the product itself.
Let's dive deep into product-by-process claims:
Product Claims vs Process Claims
Product claims, as simple as they seem, protect the product as is, irrespective of its production process. Meanwhile, process claims safeguard the method or manufacturing process, giving the patentee the exclusive right to prevent unauthorized use, sales, and imports of products obtained directly from the process within India [1].
In simpler terms, a patent for a product could cover a new drug molecule, regardless of how it's synthesized or formulated, while a process patent may cover the unique method used to synthesize or formulate the drug molecule.
The Uncertain Pre-2012 Landscape
Pre-2012, the Indian patent scene was fraught with ambiguity surrounding product-by-process claims. With the Indian Patent Law being noticeably silent on the explicit criteria for these claims, inventors were left to grapple with inconsistent decisions by Controllers [2]. The lack of clear guidelines in the Manual of Patent Office Practice and Procedure (MPPP), 2011 only added to the confusion. Inventors, left to navigate uncharted territory, struggled to protect their innovations.
Current Guidelines for Constructing Product-by-Process Claims
While specific guidelines for constructing product-by-process claims in the Indian Patent Office are yet to be explicitly detailed, standard principles for patent claims can be applied:
- Clear and Concise Language: Claims must be written using clear and concise language, ensuring they are enforceable [2].
- Specification Support: Every claim must be fully supported by the description in the patent specification [2].
- Legal Boundaries: Claims should define the legal boundaries of the patent protection, ensuring they are clearly defined and not overly broad or vague [2].
The Court's Interpretation and Enforcement
Indian courts, when it comes to enforcing patent claims like product-by-process claims, often employ tactics such as:
- Cease and Desist Letters: These are sent to infringers, demanding the cessation of infringing activities [2].
- Infringement Lawsuits: Patentees may file lawsuits seeking remedies like injunctions and damages for the infringement [2].
- Interpretation of Claims: Courts interpret patent claims to ensure they adhere to the legal requirements set by the Patents Act, 1970 [2].
The approach of Indian courts to product-by-process claims may vary, but they generally base their decisions on the principles of patent law and established precedents [3].
It's always recommended to exercise caution when drafting such claims, and to ensure they're necessary. In circumstances where the product cannot be defined or distinguished from the prior art except by referring to the claimed process, these types of claims may be appropriate, but it's advisable to back them up with independent process claims as well [2].
[1] https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps48.html[2] Manual of Patent Office Practice and Procedure (MPPP), 2011 (Version 01.11), modified on March 22, 2011[3] IPAB Order No.200/2012 arising out of OA/11/2009/PT/DEL, The Research Foundation of State University of New York vs Asst. Controller General of Patents, dated August 10, 2012.[4] Guidelines for examination of Patent Applications in the field of Pharmaceuticals, published on October, 2014, paragraphs 7.9 and 7.10, pages 15-17.[5] Section 2(1)(ja) of the Indian Patents (Amendment) Act, 2005 - "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention non-obvious to a person skilled in the art.[6] Glivec Decision, Novartis vs Union of India, Supreme Court of India, Civil Appeal Nos. 2706-2716 of 2013 (Arising out of SLP(C) Nos. 20539 - 20549 of 2009, paragraph 156, page 81.[7] https://indiankanoon.org/doc/145816686/
- The lack of explicit criteria for product-by-process claims under the Indian Patent Law prior to 2012 led to uncertainty and inconsistent decisions by Controllers, making it challenging for innovators to protect their rights.
- To create product-by-process claims in the Indian Patent Office, it's essential to follow standard principles such as using clear and concise language, ensuring each claim is fully supported by the patent specification, and defining the legal boundaries clearly.
- Indian courts, when enforcing patent claims like product-by-process claims, might employ methods like sending cease and desist letters, filing infringement lawsuits, and interpreting claims in accordance with the Patents Act, 1970.
- It's crucial to exercise caution when drafting product-by-process claims, and to consider backing them up with independent process claims, especially when the product cannot be defined or distinguished from the prior art except by referring to the claimed process.
