India has been a signatory to the TRIPS agreement since 1994. In order to be TRIPS-compliant, India has periodically amended its Patent Law. The latest amendment to the Patent Act was brought into effect from January 1, 2005.
Article 33 of the TRIPS Agreement provides for a term of protection for patents for at least 20 years from the date of filing of the application. Consequently, patent laws of most countries which are signatories to the TRIPS agreement provide for a term of patent which is 20 years from the filing date of the application. In the United States, 35 USC 154 allows for a grant for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States.
Indian Patents Act
In India, the term of the patent is addressed by section 53 of the Indian Patent Act. Section 53 provides for a term of 20 years from the date of filing for every patent granted and which has not expired and has not ceased to have effect, after the commencement of the Patents (Amendment) Act, 2002. The 2002 amendment was brought into effect from May 20, 2003. Prior to that date, the term of a process patent was five years from the date of sealing or seven years from the date of filing, whichever was earlier. The term of a product patent was 14 years from the date of the patent, provided the product was not a pharmaceutical or an agrochemical product.
Since India did not allow for the grant of a product patent for pharmaceuticals until 2005, a transitional facility (mailbox) was made available since 1995 for receiving and holding patent applications relating to pharmaceutical products as required by Article 70.8 of the TRIPS Agreement. These applications were to be examined only from January 1, 2005. It was observed that generally the Indian applicant would file two applications with the Indian patent office, one of which one would be a mailbox application. Both applications would usually claim the product as well as the process. During the examination, the applicant would be required to delete the product claims. The process claims, if found eligible for a grant, would be granted by the Patent Office. In specific cases, where the process patent application was filed before May 20, 1996, and granted before May 20, 2003, which is the effective date of the 2002 amendment, the process patent would be valid for seven years from the filing date.
Though the omitted section 5(2) of the Indian Patent Act expressly prohibited the grant of product claims for pharmaceuticals and agrochemicals before January 1, 2005, and directed such applications to be filed as mailbox applications, there was no specific direction that a mailbox application could not include process claims in addition to product claims. In cases where mailbox applications included the product claims as well as the process claims, process claims retained as a part of the mailbox application would be eligible for a term of 20 years from the filing date. Thus, such process claims would enjoy a longer patent term of 20 years rather than the prescribed seven years from the filing date for those process applications filed before May 20, 1996.
It is also to be considered that the term of patents filed in India is 20 years from the date of filing irrespective of whether the application for the patent is accompanied by a provisional specification or a complete specification. However, in the United States, the term of the patent is calculated from the date of the filing of the complete specification, since 35 USC 154 (2) states that priority under section 119, 365(a), or 365(b) shall not be taken into account in determining the term of a patent. Thus the provisional application is not considered for calculating the term of the patent in the United States. The term of a patent in the United States effectively is 21 years from the date of filing of the provisional specification, whereas the term of the patent in India is 20 years from the date of filing of the provisional specification.
It is also worth considering that many countries have provisions for extensions to the patent term similar to Supplementary Protection Certificates in Europe and 35 USC 156 in the United States. Such provisions are conspicuous by their absence in India.
Conclusion
The term of a patent might not be considered a controversial issue as of date. However, the term of a patent in India assumes great importance in case of pharmaceutical products in view of the tremendous market potential for pharmaceutical products and increased enforcement of patent protection for such products in India.
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