Patentability Criteria In India & Us .

Patentability Criteria in INDIA & US . ASHUTOSH

Patent Policy 

CONVERGENCE

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

Patentability Criteria v v v vNovelty  - Prior art based 

vIndian Patent Offices – rely on prior art 

vUSPTO now insists on Prior Art Disclosure as compulsory – 

Patentability Criteria 

Non-obviousness / inventive step

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vIndia liberal on obviousness  

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

Patentability 

USA

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“Anything under the sun involving manual intervention”.

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

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Non-patentability 

Compulsory for microorganisms and life forms including plants –

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v v v 

Disclosure of Origin (Budapest Treaty) Benefit Sharing Biodiversity Act

(The Biological Diversity Act, 2002)

Plant Patentability 

US - Plant Patents India - Plant Varieties Protection Act 

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(

The Protection of Plant Varieties and Farmers Rights Act, 2001 (http://agricoop.nic.in)

Patentability Criteria 

Anticipation – India - rigid on single Prior art-based anticipation Insists “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 

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USPTO – very restrictive Insists on electing one invention / Filing Divisionals 

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Even Process / Composition / use as separate inventions

Timelines India – Rigid on extensions  Normally extensions not granted 

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US – very liberal  protracted prosecution  Court order based fast tracking 

Publication / Public Domain Information India – Bibliography

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US/EU – Full Patent

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US – Total Transparency – “Public Pair” EU – Legal Status  Patent Family 

Patent Office Procedures India – Post dating (allows) Complete to Provisional  Cognates  Addition Patents 

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US – Liberal procedures (allows) C.I.Ps  Amendments / RCE 

US vs. INDIA US grants 4Patent Term extensions/adjustments 4Data Exclusivity 4Orange Book Listings 4180 Day Exclusivity 4 INDIA does not grant any of above 

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

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Generic launch friendly Indian policy

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Oppositions USA – Opportunity to protest “Amicus Curie” in litigation 

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India– Pre-grant Opposition Post-grant Opposition Counterclaim for Revocation Government use option 

Research Exemptions 

India – Research & Educational Exemptions More liberal & broad Sec. 47A – Educational Sec. 107A – Research for ANDA 

Compulsory Licence USA – 28 USC 1498 

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India – Sec. 63 to 94 & 92A Govt. use – Sec. 99 to 103 

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