Expert Talk

Section for replying to queries/questions in IP

Q. Can 'gene' be patented? What is the situation of gene patents under the Indian Patent Law?

To a layman, ‘gene’ might seem obviously ineligible on the grounds that they are discovered, not invented. It holds the so-called “products of nature” elements and naturally occurring chemical compounds such as water, that is not capable for patent protection.

While on one side, some argue that the chemical alterations are trivial, and in any case therefore are irrelevant, for what patients, researchers and doctors are interested in, is the information content of a gene (the instructions for making particular proteins), and not the precise chemical details of its composition. On the other side, it is asserted that gene patents hamper research and make genetic tests more expensive and less accessible. Some also feel that it is either absurd or immoral to claim patents on genetic make-up of the human race.

An added, less technical argument is that such patents are actually counter-productive. A patent on a gene itself, rather than on a specific method of examining one, is almost impossible to innovate around.

Indian Scenario.

According to Section 3(c) of Patents Act, 1970 'A mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non living substances occurring in nature' is not considered patentable. Similarly, Section 3(j) renders 'plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals' not patentable.

Thus, in the light of above mentioned section, simply separating a gene from a living thing amounts to 'discovery' and not 'invention' and therefore not patentable. That is to say, under the current Indian Patent regime naturally occurring DNA sequences cannot be patented as such. They can only be patented when after isolating the sequence they are purified and chemically modified resulting into a sequence that is new, inventive and has industrial application.

Further, Section 3(i) states that inventions related to 'any process for the medicinal, surgical, curative, prophylactic, diagnostic therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products' are not patentable. This means, the method of diagnosis practiced on the human or animal body are strictly excluded from patenting. However, the diagnostic methods carried out on tissues or fluids, which have been permanently removed from the body fall under the category of patentable inventions provided that they also fulfill the other patentability criteria.

Q. Can a person having an unregistered trade mark can file a suit for infringement? If he cannot file what are the ways by which he can protect his mark.

According to Section 29 of the Trade Marks Act, 1999, infringement occurs when a person not being the registered proprietor uses in the course of trade, a mark which is identical with or deceptively similar to the trade mark in relation of goods or services in respect of which a trademark is registered, thereby likely to cause confusion on the part of public or is likely to be taken to have an association with the registered trademark. Therefore, simply put, a registered trademark owner can file a suit for infringement against any person using an identical or deceptively similar trademark.

The Trade Marks Act further provides protection to unregistered trademark owners too. Section 27 (2) recognizes common law rights of a trademark owner to take action against any person for passing off goods or services as the goods or services of another person. An unregistered trademark owner can approach the Courts with an action of "passing off" against any person using a trademark which is identical and/ or deceptively similar to his trademark.

The Act intends to protect the rights of both registered and unregistered trademark owners and therefore a suit for passing off can be filed before the court of relevant jurisdiction by the unregistered trademark owner.

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