A recent circular by the Patent Office on issues relating to biological resources and patenting may come as a reprieve for patent applicants using biological materials from India in their inventions.
Section 6(1) of The Biological Diversity Act, 2002 prohibits any person from applying for any intellectual property right in or outside India based on any research conducted on biological material obtained from India without obtaining permission from the National Biodiversity Authority (NBA) before making said application. The proviso to section 6 permits a person to apply for permission from the NBA after filing an application for a patent but before grant.
In view of said provision of The Biological Diversity Act, Controllers at the Patent Office have been raising multiple, many-a-times unwarranted, objections relating to obtaining permission from the NBA w.r.t biological material from India. Delays on the part of the NBA in granting permission stall the grant of a patent. Permissions from the NBA and pending patent grants in view of the same have therefore, long been debated between the Patent Office and the stakeholders representing the patent applicants.
The Controller General of Patents, Designs & Trade Marks, Mr. O.P Gupta has actively taken up this issue and through an official notification, has provided instructions/guidelines to streamline the process relating to patent applications that deal with biological material from India. A synopsis of the notice is as follows:
- Controllers and Examiners have been directed to refrain from raising objections on obtaining approval from the NBA with respect to inventions which reside in:
- value added products and not the biological material
- bio-wastes which are generated after the economic use of the biological material is exhausted.
- biological material prepared synthetically
- The notice has clarified that approval from the NBA is not needed when the Applicant makes an unequivocal declaration that the biological material used in the invention is neither obtained nor sourced from India.
- The notice requires Examiners to mark applications involving the use of biological material as ‘NBA approval application’ in the examination module before sending the examination report to the Controller. If the Controller is not satisfied with the requirement regarding NBA permission he can unmark the application from said category by giving reasons thereto.
- Where all objections have been complied except submission of NBA approval, the Controller shall mark the application in the examination module as ‘NBA approval pending, but in order for grant’ and the system administrator will tag such cases so that the applications can be treated as disposed of by the Controller.