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28th August, 2017 - 2:33 pm
Categories:
Biological Inventions
India
Intellectual Property
News & Updates
Patents
2 Comments
The Biological Diversity Act (the BD Act) was enacted with the goal to provide for conservation of Biological Diversity, sustainable use of its components and fair and equitable sharing of the benefits arising out of the utilization of biological resources. One of the provisions under the BD Act (section 6) relates to seeking prior permission from National Biodiversity Authority (NBA) before applying for any intellectual property right, if the invention is based on any research or information on a biological resource obtained from India. In the event of an intellectual property right (patent application) being filed without prior NBA permission, NBA permission may be obtained after the acceptance of the patent but before patent grant by the patent authority concerned.
It has been witnessed in a few recent Indian Patent Office (IPO) decisions that patent applications involving use of biological materials, not procured from India and sourced from commercial sources in countries like Switzerland, Spain, Japan and China, were rejected. In light of such IPO decisions, stakeholders at Mumbai and Delhi held meetings to put forward certain issues regularly faced by patent applicants regarding unwarranted objections raised by the IPO concerning requirement of permission from NBA and further delay in obtaining NBA approval.
In view of the submissions made by stakeholders, this issue has been considered by Indian Patent office and instructions/guidelines for NBA permission have been streamlined by way of the following:
| S. No. | Issue | Modified procedure to be followed |
| 1 | Where the invention does not relate to a biological resource defined under the Biological Diversity Act 2002, such as:
(a) Value-added product (b) Bio- wastes (c) Synthetically prepared biological material |
(a) Value Added Product:
Section 2 of Biological Diversity Act 2002 explicitly excludes value added products from the purview of “Biological resources”. As per Biological Diversity Act, 2002: Section 2 (c): “biological resources” means 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; Section 2 (p): “value added products” means products which may contain portions or extracts of plants and animals in unrecognizable and physically inseparable form. Examiners/Controllers shall verify from the disclosure in patent specification if the claimed invention resides in the biological resource or value-added product. If the invention resides in a value-added product, then they shall avoid |
| 2 | Where the biological resource/material used in invention is not obtained /sourced from India. | Section 6 (1) of the Biological Diversity Act, 2002 states,
“No person shall apply for any intellectual property right, by whatever name called, in or outside India for any invention based on any research or information on a biological resource obtained from India without obtaining the previous approval of the National Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the sealing of the patent by the patent authority concerned; and, Provided further that the National Biodiversity Authority shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof.” Thus, no approval from NBA is necessary when the invention is based on any research or information on a biological resource not obtained from India.Therefore, when an applicant makes unequivocal Examiners/Controllers shall duly consider such |
| 3. | Marking of applications in the module regarding requirement of NBA approvals. |
While examining the applications involving use of biological resource, Examiners should mark these applications as “NBA approval application” in the examination module before sending the examination report to the Controller for approval.However, if the Controller is not satisfied with requirement regarding NBA approval, he shall unmark the application by giving reasons thereof. |
| 4 | Cases held up for grant of patents only due to non-submission of NBA permission. |
Where the applicant has complied with all the objections, except submission of NBA approval, the Controller shall mark the application in the examination module by remark that “NBA approval pending, but in order for grant” and, the System Administrator shall put a tag on such cases so that these applications can be treated as if disposed of the Controller. |
IPO has further clearly stated that any false declaration on behalf of the applicant makes him liable for revocation of patent under section 64 (1) (j)/ 64(1) (p) of the Patents Act
1970 (as amended). Further, as per provisions in section 55(1) of Biological Diversity Act 2002, if the applicant contravenes or attempts to contravene or abets the contravention of the provision of section 6 of the Biological Diversity Act 2002, he shall be liable for penal action under section 55(1) of the Act’.
With the streamlining of instructions/guidelines for NBA permission, the patent applicants can now effectively deal with the unwarranted objections raised by the IPO concerning the requirement of permission from NBA. Henceforth, the patent applicants can question the unjustifiable extension of applicability of Section 6 of the BD Act by IPO to reject patent applications even when the invention is not based on Indian biological resource and/or when the invention is one of a value-added product, bio-waste or a synthetically prepared biological material and hence, does not relate to a biological resource defined under the Biological Diversity Act 2002.
Author: Tanu Goyal, Patent Associate at IIPRD and can be reached at: tanu@khuranaandkhurana.com
2 thoughts on “Modification in Procedure Regarding Examination of Patent Applications Involving the Use of Biological Material”
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Does corona vaccine patentable? As per section 3 it creates confusion ? Do reply
Dear Rohit,
Vaccines per se is a patentable subject matter as per the Indian Patents Act. For example the subject matter that may be considered as patentable in view of various clauses of Section 3 can be : a vaccine formation comprising a genetically modified strain of any specific virus with other components for e.g. excipients; a vaccine composition comprising immunogenic polypeptides derived from microorganism, and other components that can be other active components, adjuvants or excipients.
Hence, a vaccine against the corona virus would be patentable, depending upon what is claimed. If any naturally occurring strain or antigen is claimed as such then that may be considered as mere discovery under Section 3(c). Whereas a vaccine formulation, a vaccine composition or genetically modified / recombinant strain or a polynucleotide may be a patentable subject matter.