Sunday, June 3, 2012

Rights in a Process Patent under Section 48 (b)

The phraseology of Section 48(b), on the face of it, varies from the wording of Section 48(a). A reading of the sub-section tells us that the legislature has taken the view that a patented process cannot be offered for sale or sold. This is because the provision uses "offering for sale" and “selling” only with respect to a product obtained directly by the patented process, but not with respect to the process itself.

I'm not sure if it is correct to assume that a patented process cannot be offered for sale or sold. The question that comes to my mind is, considering the levels of awareness of Indian courts on the law of patents and the framework of the Act, will an Indian court restrict itself to strict interpretation of the provision?

The other question which I had the opportunity to discuss with a very dear friend of mine is the reference to "act of using" with respect to (i) the patented process and (ii) the “product obtained directly BY the patented process”. 

The points of research here are:
(i)                  difference between “using the process” and using the "product obtained directly by the patented process"; and
(ii)                construction of the words “product obtained directly by the patented process”.

As regards the first point of research, the reference is to the “patented process” itself. Since the provision clearly refers to “using the process”, it means that use of the process in any manner is an infringement of the patentee’s rights.

The second point of research relates to products which are “obtained directly by the patented process”.

When the Act uses the words “product obtained directly by the patented process”, the question is, what products constitute an infringement/infraction of the rights of the patentee under Section 48(b) of the Act?

The operative portion of Section 48(b) helps us address the issue. The words on which one must focus are “directly" and "by”.

The use of "directly" in relation to a product obtained from the patented process could mean that there can be no significant intermediary steps between the patented process and the product. Only transient intermediaries may not affect the interpretation of “direct”. However, what amounts to a “transient intermediary” requires a common putative trait that applies uniformly.

The use of “by", although apparently innocuous, must be paid close attention to. Why did the legislature choose to use "by", instead of "from"? For most of us, “by” and “from” are often interchangeable prepositions, at least in sentences such as sub-section (b) (“directly by” and “directly from”). However, strictly speaking, there is a difference between “by” and “from”.

“By” is used to indicate the instrument which brings about a particular result. Therefore, the use of “by” in sub-section(b) indicates that the patented process is instrumental in obtaining the product. What this means is that not only must the product be a direct product, the use of the process must also be instrumental, and not merely significant or important.

In other words, the process used must be invariably and inevitably associated with the creation of the product. Simply put, the combined use of “directly” and “by” is that the use of the process must be instrumental, and that only a direct product of the process may be treated as a product for the purposes of Section 48(b).  

Let’s assume:
1. There is a product A which is being offered for sale in India.
2. Product A is not a direct product of a patented process P.
3. However, “X” is THE direct product of P, and X has been used in the manufacture of A.  

What is the status of the product A? Since X, which is a direct product of P, has been used in the manufacture of A, the use of X in the manufacture of A is an infringement of P.

Let’s complicate the hypothetical. It is possible for a patented process to have more than one direct product. Would use of at least one of the direct products constitute infringement of the patented process? I would say yes.

Does this also apply to direct “by-products” of a patented process? I don’t see a preclusion in Section 48(b) which distinguishes between a product and a so-called by-product. Therefore, even use of the direct by-product could amount to infringement of the patented process.

Comments and corrections are welcome!


  1. Patented process for n-1 or upto any previous step if followed in India would definately amount to infringement under "act of using".
    Obtained directly by is important in the case where case is same as above but the patented process is carried outside India followed by additional step to get the product and that product if imported may not constitute infringement.
    For further understanding, see 35USC271g also called as "materially changed" or directly obtainable provision related to process patent law in EP.

  2. Dear Anon,
    I am not sure I entirely understand your comment. Could you please rephrase it for me and the readers to understand it better? Thanks.