Recent Developments In Patent System – Intellectual Property Rights Laws and Practices Important Questions

Question 1.
Company ABC is specialized in the area of creating software as per the needs of the clients. It developed software which enhances the performance of the computer in terms of speed. Company ABC wants to provide IPR protection to the software. Please advise on this issue to the company.
Computer Software is a matter of Intellectual Property Rights protection and recognized at International Level by the Agreement on Trade-Related Aspects of Intellectual Property Rights.

TRIPS provides patents as well as copyright protection to the computer software. However, there are conceptual differences between patents and copyright. Hence, the protection of the computer software has to qualify the eligibility criteria of the patents or copyright to claim the protection of IPR. For the protection of software for patent rights, the eligibility criteria of novelty, non-obviousness, etc. have to be with regard to the software. Although, the Patents Act, 1970 excludes certain innovations from the purview of the Patent Act, 1970.

Section 3 and 4 of the Patent Act specify a list of subject matter that is not patentable, in particular, “a mathematical or business method or a program per se or algorithm’ is of specific importance to a software innovation (Section 3(k)). The Indian Patent law does not contain any specific provision regarding the protection of computer software. Computer software on the other hand is protected as applicable to literary and aesthetic works. The computer software that does not have a technical effect is protected under copyright law. A computer program is therefore dealt with literary work and the law and practice in relation to literary works will apply to computer programs. For copyright protection, computer software needs to be original, and sufficient effort and skill must be put into making it the original work of the author.

A program that generates the multiplication of tables or algorithm may not suffice the degree of effort required for protection. Apart from it, the work should be first published in India or if published outside India, the author on the date of publication should be a citizen of India.

Question 2.
Write a brief note on Patentable Inventions in Biotechnology.
Patentable Inventions in Biotechnology:
The exciting developments in the domain of biotechnology have resulted in intensive R&D activities all over the world including India. After information technology, biotechnology is increasingly recognized as the next wave in the knowledge-based economy. Biotechnology has been at the core of a number of important developments in the pharmaceutical, agrochemical, energy, and environmental sectors. In particular, progress in the field of molecular biology, biotechnology, and molecular medicine has highlighted the potential of biotechnology for the pharmaceutical industry.

Conventionally, a micro-organism is considered as an organism that is microscopic, i.e., too small to be seen by the naked human eye and can be viewed only under a microscope, usually, an ordinary light microscope. Micro-organisms include bacteria, fungi, viruses, protists, and other prokaryotes as well as some microscopic plants (phytoplankton) and animals (zooplankton). The US Supreme Court ruled that genetically altered micro-organisms were indeed patentable based on the following criteria:

  • They were man-made;
  • They were products of human manipulation and therefore considered similar to any other invention;
  • They had a specified industrial application (one criterion for patenting is that the invention has utility).

Further, Supreme Court cited the fact that there was precedence for patenting living matter. Since 1930 certain asexually reproduced plants have been protected by patents. Furthermore, in 1970 the Plant Variety Protection Act allowed for the protection of some sexually reproduced plants. As a result of the Supreme Court’s decision, the US biotechnology industry flourished and many US patents have been granted on human-made higher life forms such as transgenic mice, fish, etc. Thus, microorganisms, plants, and animals have now all received U.S. patenting status. Europe views patenting of “man-made” life in much the same manner as the U.S. patent office.

TRIPS Agreement obliges member states to patent micro-organisms. Article 27.3 permits WTO member countries to exclude two specific classes of subject matter from patentability:

  1. diagnostic, therapeutic, and surgical methods for the treatment of humans or animals; and
  2. plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than nonbiological and microbiological processes.

Though the TRIPS agreement mandates patent protection for micro-organisms, it does not define microorganisms; thus there is no standard definition for member nations to follow.

To comply with the World Trade Organization (WTO), Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, India amended the Patents Act, 1970 with effect from January 2005. The Indian Patent Act has now a specific provision in regard to patenting of micro-organisms and microbiological processes. It is now possible to get a patent for a microbiological process and also products emanating from such processes. The most vital distinction between the legal practices of India and developed countries is that India does not allow patenting of micro-organisms that already exist in nature, as the same is considered to be a discovery as per the provisions of Section 3(d) of the Patents Act, 1970 and therefore not patentable.’But genetically modified versions of the same microorganisms that result in enhancement of its known efficacies are patentable.

Another requirement is the sufficiency of disclosure which is very important. The Patents Act, 1970 stipulates that a sufficient and clear description of the .invention should be given. The Act or the Rule, however, does not stipulate any condition or procedure to meet the requirement of sufficiency of disclosure in the case of inventions involving the use of biological material, which are very difficult to describe in words.

It has been the practice of the Patent Office from time immemorial to follow the practice adopted by the foreign patent offices by allowing the accession No., accorded by a depository institution either foreign or Indian in the patent specification to satisfy the requirement of sufficiency of disclosure of the invention desired to be patented.

Question 3.
Write a brief note on the Biodiversity Act, 2002.
The Biodiversity Act, 2002
Pursuant to the CBD, India enacted the Biological Diversity Act in 2002, and notified Biological Diversity Rules in 2004, to give effect to the provisions of this Convention. The Act is implemented through a three-tiered institutional structure at the national, state, and local levels. The National Biodiversity Authority (NBA) has been set up in October 2003 in Chennai. As per Section 8(4) of the Act, the NBA consists of a Chairperson, five non-official and ten ex-officio members to be appointed by the Central Government to represent various Ministries.

The Biological Diversity Act, 2002 is an Act of the Parliament of India for the preservation of biological diversity in India and provides a mechanism for equitable sharing of benefits arising out of the use of traditional biological resources and knowledge. The Act was enacted to meet the obligations under Convention on Biological Diversity (CBD), to which India is a party. The is an Act to provide for the conservation of biological diversity, sustainable use of its components and fair and equitable sharing of the benefits arising out of the use of biological resources, knowledge, and for matters connected therewith or incidental thereto.

Whereas India is rich in biological diversity and associated traditional and contemporary knowledge systems relating thereto. And whereas India is a party to the United Nations Convention on Biological Diversity signed at Rio de Janeiro on the 5th day of June 1992. The vision of the NBA is the conservation and sustainable use of India’s rich biodiversity and associated knowledge with people’s participation, ensuring the process of benefit sharing for well being of present and future generations. The mission of the NBA is to ensure effective implementation of the Biological Diversity Act, 2002 and the Biological Diversity Rules 2004 for conservation of biodiversity, sustainable use of its components, and fair and equitable sharing of benefits arising out of the utilization of genetic resources.

Biodiversity and Biological Resource Biodiversity has been defined under Section 2(b) of the Act as “the variability among living organisms from all sources and the ecological complexes of which they are part, and includes diversity within species or between species and of eco-systems”. The Act also defines, Biological resources as “plants, animals and micro-organisms or parts thereof, their genetic material and by-products (excluding value-added products) with actual or potential use or value, but does not include human genetic material.”

National Biodiversity Authority and State Biodiversity Boards The National Biodiversity Authority (NBA) is a statutory autonomous body, headquartered in Chennai, under the Ministry of Environment and Forests, Government of India established in 2003 to implement the provisions under the Act. State Biodiversity Boards (SBB) have been created in 28 States along with 31,574 Biological management committees (for each local body) across India.

Question 4.
How has a software patent been defined? Briefly discuss some of the important issues concerning software patents.
A software patent is generally defined as a patent that protects some programming technique. The Foundation for a Free Information Infrastructure (FFII) has defined a software patent as being a patent on any performance of a computer realized by means of a computer program.
The important issues concerning software patenting are as follows:

  • Whether software patents should be allowed, and if so, where the boundary between patentable and non-patentable software should lie;
  • Whether the invention step and non-obviousness requirement is applied too loosely to software; and
  • Whether patents covering software discourage, rather than encourage, innovation.

Question 5.
Discuss the criteria of patentability of software in India.
The criteria of patentability of software in India are:

  • They are man-made;
  • They were products of human manipulation and thereof considered similar to any other invention;
  • They had a specified industrial application.

Question 6.
How is the requirement of sufficiency of disclosure met in the case of micro-organisms?
In the case of micro-organisms sufficiency of disclosure is very important. The Patent Act, 1970 stipulates that a sufficient and clear description of the invention should be given. The Act or the Rule, does not stipulate any condition or procedure to meet the requirement of sufficiency of disclosure in the case of inventions involving the use of biological material, which are very difficult to describe.

CS Professional Intellectual Property Rights Laws and Practices Notes