Procedure for making application for patent to the NBA under Biological Diversity Act, 2002

If any foreign company wants to protect its invention based on biological material obtained from India and want to apply for a patent protection in or outside India, then the procedure is prescribed within Biodiversity Rules, 2003. First of all, application for patent cannot be made without approval of National Biodiversity Authority. In this regard Section 6 of Biodiversity Act, 2002 says that --- (1) 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 Biodiversity Authority before making such application. Providing 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 title patent authority concerned: 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. (2) The National Biodiversity Authority may, while granting the approval under this section, impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilization of such rights. (3) The provisions of this section shall not apply to any person making an application for any right under the law relating to protection of plant varieties enacted by Parliament. (4) Where any right is granted under the law referred to in sub-section (3), the concerned authority granting such right shall endorse a copy of such document granting the right to the National Biodiversity Authority. The corresponding procedures for the application of intellectual property rights are given under Rule 18 of the Biological Diversity Rules, 2004. Rule 18 states --- (1) Any person desirous of applying for a patent or any other intellectual property based on research on biological material and knowledge obtained from India shall make an application in Form III as given in schedule. Every application shall be accompanied by paying a fee of Rs. 500/-. (2) The Authority after due appraisal of the application and after collecting any additional information, on the basis of merit shall decide on the application, as far as possible within a period of three months of receipt of the same. (3) On being satisfied that the applicant has fulfilled all the necessary requirements, the Authority may grant approval for applying for a patent or any other IPR subject to such terms and conditions as it may deem fit to impose in each case. (4) The approval shall be granted in the form of a written agreement duly signed by an authorized officer of the Authority and the applicant. The form of the agreement may be decided by the Authority. (5) The Authority may reject the application if it considers that the request cannot be acceded to after recording the reasons. Before passing order of rejection, the applicant shall be given an opportunity of hearing. Author’s Recommendations Author recommends filing of patent application in respect of invention related to biological resources. Soon after making the patent application, the application for approval of NBA should be made. In the event the decision of the NBAs unfavourable, applicant may even withdraw their patent application without allowing it to be published. If applicant waits till the acceptance of the patent then they are closing their option of withdrawing the patent application and preventing publication. Today’s post comes from Seema Singh, Patent Attorney working with Mumbai-based Pharmaceutical Company. (seemasingh_27@yahoo.com)