FACTUAL BACKGROUND The present case pertains to the widespread illegal mining activity going on in…
Section 53 of the Patents Act, 1970 deals with the determination of term of patent in India. Subsection 1 of section 53 provides that the term of every patent granted, after 20th May 2003, and the term of every patent which is not expired and is not ceased to have effect, on 20th May 2003, under this Act, shall be twenty years from the date of filing of the application for the patent.
Rules applying to the calculation of the term of every patent granted before 20th May 2003 i.e. commencement of the Patents (Amendment) Act, 2002, are based on the field to which the invention relates. Being specific, patent expiration date is fourteen years from the date of the patent (date of filing application), except for the inventions claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as a medicine or drug, for which patent expiration date is the earlier of two dates, first of them being five years from the date of sealing (grant) of the patent and second being seven years from the date of the patent.
For example, a patent was granted on May 20, 2002. In such case, its term is calculated as 20 years from the date of filing of the application (assuming that the patent was maintained till the effective date) for the patent irrespective of the type of invention to which it relates. Emphasis needs to be added to the part of subsection 1 of section 53 which states that “the term of every patent which is not expired and is not ceased to have effect, on 20th May 2003”.
Those patents for which maintenance fees was not paid within the required time limit and could be restored under section 60, on May 20, 2003, were/are also be eligible for the benefit of the extended term of patent i.e. 20 years from the date of filing according to new rules.
However, it explicitly provides that the term of patent in case of National Phase Applications entering India through International applications filed under the Patent Cooperation Treaty, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty for the purposes of the calculation of the term of the patent according to the subsection 1 of section 53.
Subsection 2 of section 53 provides that a patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed (maximum six months).
According to Subsection 4 of section 53, a patent once expired due to non-payment of renewal fee or on expiry of term of patent, can’t protect its subject matter.
Patent expired due to non-payment of renewal fees can be restored under certain provisions of the Patents Act, 1970, the discussion on which needs separate accounting and does not fall within scope of this article.
Happy Reading and Happy Patenting!
About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: [email protected].