What are the INVENTIONS NOT PATENTABLE
Section 3 What are not inventions
Frivolous/claiming anything obviously contrary to established natural laws.
Contrary to public order/morality or prejudicial to life/environment.
Discovery of scientific principle/formulation/discovery of living/non-living substance.
Discovery of new form/property/use of a known substance or of a new use of a known process/machine/apparatus not resulting in a new product.
Substance obtained from admixture of known components resulting in only aggregation of their properties.
Mere rearrangement or duplication of known devices.
A method of agriculture or horticulture.
Medical treatment or procedure of humans/animals.
Plants/animals/seeds and biological process of production/prorogation of these.
Mathematical/business method/computer programme/algorithm.
Artistic/aesthetic creation like literary/dramatic/musical/cinematographic/television production.
Scheme/rule/method of performing any mental act or of a game.
Presentation of information.
Topography of integrated circuits.
Aggregation or duplication of known properties of components.
Relating to atomic energy – Section 4.
Contents of an APPLICATION FOR PATENTS
Section 6 Persons entitled to apply
Assignee of true/first inventor.
Legal representative of an previously entitled deceased person.
The above persons may apply either alone or jointly.
Section 7 Form of application
Application must be for one invention only.
Every international application deemed to be INDIAN if also filed in India and gets international filing date.
Assignee has to file proof of right within 3 months.
Application should name the inventor.
Application should be accompanied by provisional/complete specification.
Section 8 Information and undertaking regarding foreign applications
The applicant has to inform the controller in case of a foreign application for same invention.
He has to give an undertaking that he will keep the controller informed of the proceedings.
Section 9 Provisional and Complete specifications
Complete specification is to be filed within 12 months of provisional specification.
One complete specification can be filed for a number of provisional specifications for one invention.
Complete specification can be converted to provisional within 12 months.
Provisional specification can be canceled and application post dated to the date of filing complete specification.
Section 10 Contents of specification
Title and description of invention.
The controller may ask to submit drawings.
The controller may ask to submit sample/model but it will not be a part of the specification.
Every specification shall
a. describe the invention and method of its performance
b. disclose the best method of performing the invention known to the applicant
c. contain claims defining the scope of the invention
d. be accompanied by an abstract providing technical information
provided that –
the controller may modify the abstract
deposit the biological material with the depository authority
disclose the source of geographical origin of biological material
International application deemed to be complete specification.
Claims should relate to a single invention and based on the mater disclosed in the specification.
Declaration of inventor ship shall be furnished.
Complete specification filed after the provisional may contain improvements.
Section 10 Priority date of claims
The priority date of the complete specification shall be the date of filing of the provisional specification in which the matter was first disclosed.
What is PUBLICATION AND EXAMINATION OF PATENT APPLICATIONS
Section 11 A Publication of applications
The applications shall be published after 18 months of the application unless
secrecy directions are imposed
has been abandoned
has been withdrawn.
The applicant may request immediate publication.
In case of secrecy directions the application is published after the expiry of the prescribed period or if the directions have ceased to be effective.
The publication shall include all particulars of the application.
On publication public get right to obtain copies.
The applicant gets rights of a patentee but not right to institute a suit.
In case application was made before 01/01/2005 the rights accrue on the date of grant and the applicant is entitled to royalty only for infringement.
Section 11 B Request for examination
No examination without request.
Request to be made within 36 months of priority date.
If no request then application treated as withdrawn.
Applicant may withdraw at any time before grant.
In case of secrecy directions 36 months to exclude the period of secrecy.
Section 12 Examination of applications
After filing of request the examiner shall report in respect of
a. The correct format of the application.
b. The presence of any lawful grounds for objecting the grant of patent.
c. The result of the investigation made under section 13.
d. any other matter prescribed.
The examiner shall ordinarily report within ONE month.
Section 13 Search for anticipation
The examiner shall investigate whether the invention
a. has been anticipated in any specification published before the date of filing of application
b. has already been claimed in a specification published after the date of filing of the application but having an earlier priority date.
The examiner shall also ascertain whether the invention has been anticipated by being published in any document anywhere in the world.
In case of amendments to the claims the amended claims shall be so investigated.
The examination shall not mean to warrant the validity of any claim and the Central Govt shall not be liable for any consequences.
Section 14 Consideration of report by the Controller
In case the application is not according to the provisions of the Act then the gist of the objections are communicated to the applicant and he is invited to amend the specification and is also heard on request.
Section 15 Power of the Controller to refuse or require amendments
The Controller may further require the application to be amended or refuse the application if he is still not satisfied.
Section 16 Power of the Controller to make orders respecting division of application
If the specification relates to more than one invention then the applicant may, or on objection of the Controller file a further application.
The further specification shall not include any matter not disclosed in the earlier specification.
The Controller shall ensure that none of the specifications include any claim for matter claimed in other.
The further application shall have the same priority date of the earlier application.
Section 17 Power of Controller to make orders respecting dating of application
On the request of the applicant the Controller may post date the application to such date as requested not being later than six months of the actual date.
If the Controller so directs then the application is to be dated as on the date on which the amended specification is re-flied.
Section 18 Power of Controller in case of anticipation
In case of anticipation the Controller may refuse the application unless the applicant
a. Satisfies the Controller that his claim is not later than the date of publication of the relevant document.
b. Amends his specification to the satisfaction of the Controller.
If the invention as claimed has already been claimed in an earlier claim then the Controller shall direct a reference to be inserted in the application unless the applicant
a. Satisfies the Controller that his claim is not later than the date of publication of the relevant document.
b. Amends his specification to the satisfaction of the Controller.
Section 19 Power of Controller in case of potential infringement
If the invention cannot be performed without infringing another claim the controller shall direct that reference to that claim be inserted in the specification unless the applicant
a. satisfies the controller that reasonable grounds exist for contesting the validity of earlier claim
b. Amends his specification to the satisfaction of the Controller.
If after inserting the reference
a. the earlier patent is revoked
b. the earlier claim is amended
c. it is proved that earlier claim is not infringed by working the invention
the Controller shall on request delete the reference.
Section 20 Power of Controller to order substitution of applicants
If the Controller is satisfied that the claimant is entitled to the patent then he shall direct that the application shall proceed in the name of claimant singly or jointly with the applicants as the case may be.
Such direction in case of an assignment or agreement shall be given only with the consent of other applicants.
No such direction shall be given unless
a. the invention is identified
b. the acknowledgment is produced from the assignee indicating the invention
c. the rights of the claimant have been established by the court.
d. the controller gives directions to proceed with the application.
If any joint applicant dies before the grant of patent, the controller may, with the consent of legal representative of the deceased,direct the application to proceed in the name of surviving applicants.
In case of a dispute amount the joint applicants the controller may on satisfaction direct the application to proceed in the name of any one or more of the applicants as the case may be.
Section 21 Time for putting the application in order of grant
The applicant shall put the application in order within six months of the date on which first statement of objections is made.
The applicant shall be not be deemed to have compiled with the requirements of this Act unless he has re-filed all the necessary documents.
If an appeal to the High Court is pending with respect to the application then the time period shall be extended until such time as High Court determines.
If the time period for filing any appeal has not expired the Controller may extend the period for putting the application in order by such a period as he thinks fit.
What are the OPPOSITION PROCEEDINGS TO GRANT OF PATENT
Section 25 Opposition to the grant of patent
After publication but before grant any person may represent for opposition to the Controller on the following grounds
a. that the invention was wrongfully obtained by the applicants
b. that the invention has already been published in any document
c. that the invention has already been claimed in an earlier application
d. that the invention was publicly known and used
e. that the invention is obvious and does not involve an inventive step
f. that the invention is not patentable
g. that the specification does not sufficiently and clearly describe the invention and the method by which it is to be performed
h. that the applicant has not/incorrectly disclosed the information required by Section 8
i. that the Indian application related to foreign application was filed after 12 months
j. that the geographic origin of biological material has been wrongfully mentioned
h. that the invention was anticipated with regard to local knowledge
Within one year of the grant of patent any person can give notice of opposition based on the above grounds.
The controller shall notify the patentee and constitute an opposition board .
The controller may either require to amend/maintain/revoke the patent on recommendation of the opposition board.
Personal document or secret trial shall not be considered.
Section 26 Treating patent as that of opponent
If the controller is satisfied that
a. the total invention was wrongfully obtained, he shall order the patent to stand in the name of the opponent
b. a part of invention was wrongfully obtained, he shall direct the exclusion of that part.
If the opponent has already filed an application for the invention then his application shall be pre-dated to the date of the applicant.
Section 28 Mention of inventor
If the controller is satisfied on request of any person
a. that he is the inventor of any invention
b. that the application /patent is due to his invention
he shall direct that this person be mentioned as inventor
The controller shall hear all the parties on request
Any person may challenge such assertion.
What is ANTICIPATION of a Patent
Section 29 Anticipation by previous publication
The invention shall not be deemed to be anticipated even if it has already been published if the applicant shows
a. that the matter published was obtained from him/inventor and was published without consent
b. that the application was made promptly on becoming aware of such publication
The invention shall not be deemed to be anticipated even if it was claimed in an earlier specification/publicly worked if it was wrongfully obtained from the applicant.
Section 30 Anticipation by communication to the government
The invention shall not be deemed to be anticipated by communication to the government or to any person authorized by it.
Section 31 Anticipation by public display
The invention shall not be deemed to be anticipated if
a. it is exhibited in any industrial or scientific exhibition
b. it is described in any publication due to the exhibition
c. it is used subsequent to the exhibition without the consent of the inventor
d. the description of the invention is published in a scientific paper
and the application is filed within 12 months of such display/publication.
Section 32 Anticipation by public working
The invention shall not be deemed to be anticipated if it is worked for a reasonable trial or experiment in the public domain.
Section 33 Anticipation by publication after provisional specification
The invention shall not be deemed to be anticipated if it was published/worked in public after the date of filing of provisional specification filed in any country.
What are the PROVISIONS OF SECRECY OF CERTAIN INVENTIONS
Section 35 Secrecy provisions relating to inventions relevant for defense purposes
The controller may direct the prohibition or restriction on publication of application for an invention relevant to defense.
The controller shall notify such direction to the government and the government may maintain/revoke such direction.
The government may direct the controller to prohibit/restrict publication of any specification if it is considered as being relevant to defense.
Section 36 Secrecy directions to be reviewed
The secrecy directions so issued are to be reviewed by the central government at the interval of every six months and in case of foreign application the directions shall be revoked on publication of the application.
The result of every review shall be communicated to the applicant.
Section 37 Consequences of secrecy directions
So long as the directions are in force
a. the controller shall not refuse to grant the patent
b. no appeal shall lie from any order of the controller
provided that the application shall proceed up to the stage of grant but shall not be published or patent granted.
So long as the directions are in force and application found to be in order of grant
a. the patent shall be assumed to be granted to the government
b. such payment may be made to the applicant as reasonable
No renewal fees may be payable for the period of secrecy.
Section 38 Revocation of secrecy directions and extension of time
On revocation of secrecy directions the controller may extent the time for doing anything required to be done by the applicants irrespective of the period prescribed.
Section 39 Residents not to apply outside India without permission
No person resident of India shall apply for patent outside India without permission unless
a. the application in India has been filed within last six months of applying for patent outside India, and
b. no secrecy directions have been given and if given then revoked.
The the application for permission shall be disposed of within three months.
Provided that for any invention related to defense or to atomic energy such permission shall be granted only after consent of the government.
These provisions shall not be applicable to persons resident outside India.
Section 40 Liability of contravention of Section 35/39
The application shall be deemed to be abandoned or the patent liable to be revoked if the provisions of section 35/39 are violated.
Section 41 Finality of orders of the controller and government
All orders of the controller and the government under this chapter shall be final and not be questioned in any Court.
Section 42 Disclosure to the government
The Controller shall have an freedom to disclose any information related to any application or specification to the government.
What is a GRANT OF PATENTS AND THE RIGHTS CONFERRED THEREBY
Section 43 Grant of Patents
Where the application for patent is found to be in order and
a. it has not been refused by the Controller, or
b. it is found to be in accordance with the provisions of this Act,
the patent is granted expeditiously with the seal of the patent office and the date entered into the register.
The controller shall publish this fact and all documents shall be open to public.
Section 44 Amendments of patent granted to deceased person
If the controller is satisfied that the person to whom the patent is granted is dead or the corporate ceased to exist then the name appearing on the patent and in the register is amended to show the correct patentee who ought to hold the patent.
Section 45 Date of the patent
Every patent shall be dated as of the date of filing of the application.
This date is entered into the register.
No suit of infringement committed before the date of publication of application shall be instituted.
Section 46 Form, extent and effect of patent
The patent shall be in prescribed form.
The patent shall be for one invention only.
Provided that the objection that it deals with more than one invention shall be available in any proceedings.
Section 47 Grant subject to certain conditions
The grant shall be subject to the conditions that
1. Every invention may be used by the government for it’s own use.
2. Every invention may be used for experiment, research or for imparting instructions to pupils.
3. Any patented medicine or drug may be imported by the government for public service.
Section 48 Rights of patentees
The patent granted shall confer on the patentee
1. in case of product patent the right to prevent third parties from making, using, selling or importing the product in India;
2. in case of process patent the right to prevent third parties from making, using, selling or importing the product made using the process in India;
Section 49 No infringement on foreign vessel temporarily in India
Use of invention on foreign vessel temporarily in India shall not be an infringement.
This provision shall apply only to vessels of those foreign countries which confer similar right on Indian vessels on their territory.
Section 50 Rights of co-owners of patents
Joint owners are entitled to equal share unless otherwise agreed upon
Joint owner has all the rights without accounting for the others.
No license or assignment can be effected without the consent of all owners.
The purchaser of the invention shall be entitled to deal with it as if he has purchased it from a sole owner.
Rules applicable to ownership or devolution of movable property shall be applicable to the patent.
Partial interest of the assignee shall be unaffected by this Act.
Section 51 Power of the Controller to give directions to co-owners
Section 52 Grant to inventor where obtained by fraud
Where it is proved that the patent has been granted on an invention/part of invention wrongfully obtained from the inventor the Appellate Board shall direct the specification to be amended to exclude the disputed part or in case of whole invention permit the grant to the petitioner.
The controller shall on request
a. grant a new patent bearing the same date and number as the patent revoked
b. in case of a part of invention grant a new patent for that part bearing the same date and numbered as prescribed
provided that the controller may require a new application to be filed for the part of invention wrongfully obtained.
No suit shall lie in case of any infringement before the date of the grant.
Section 53 Term of the patent
After the date of commencement of Patents Amendments Act, 2002 every new patent and all existing patents shall get a term of 20 years.
All patents granted in India based on international application shall get a term of 20 years from international filing date.
The patent shall cease to have effect on failure to pay the renewal fee.
On cessation the subject matter of the patent shall not be entitled to any protection.
What is a PATENTS OF ADDITION
Section 54 Patent of addition
When an applicant having filed the application for the original invention or being a patentee files an application for an improvement/modification of an invention then he may be granted the patent of addition.
Where the applicant is the patentee of a patent which is an improvement/modification of another patent also held by the same patentee then the Controller may revoke the patent granted for improvement/modification and grant a patent of addition bearing the same date as the patent so revoked.
Patent of addition shall only be granted if the application for it has been filed subsequent to filing of application for main invention.
Patent of addition shall only be granted after the grant of patent for main invention.
Section 55 Term of patent of addition
The patent of addition shall cease to have effect on the expiry of the term of the main invention.
Provided that if the main patent is revoked then the patent of addition shall be converted to an independent patent for the remainder of the term.
No renewal fees are to be paid for the patent of addition.
Section 56 Validity of patent of addition
The grant of patent of addition shall not be refused and it shall not be revoked on the ground that the main invention does not involve an inventive step and its validity shall not be questioned on the ground that it ought to be an independent patent.
For determining the novelty of the invention claimed in the patent of addition regard shall be had to the specification of the main invention.
What is an AMENDMENT OF A PATENT APPLICATION and SPECIFICATION
Section 57 Amendment of application and specification
The controller may allow the applicant to amend the specification subject to such conditions as he thinks fit.
Provided that he shall allow no amendments if any proceedings before the High Court for the revocation of patent are pending.
Every application for amendment shall state the reasons and the nature of the proposed amendments.
Every application for leave to amend the patent after grant and the proposed amendment shall be published.
Within three months of the publication any person may give notice of opposition to amendments and the controller may give both the parties an opportunity of being heard.
The amendment may include an amendment to the priority date.
These provisions are in addition to the right of the applicant to comply with the directions of the controller before the grant of patent.
Section 58 Amendments before Appellate Board or High Court
In any proceedings for revocation of patent the Appellate Board or High Court may instead of revoking the patent allow the patentee to amend his specification to it’s satisfaction.
The controller shall appear in case he is directed by the Appellate Board or High Court.
Copies of all orders of the Appellate Board or High Court shall be transmitted to the Controller and he shall make the reference to the register.
Section 59 Supplementary provisions as to amendments
The amendment shall only be allowed for the purpose of incorporating actual fact and shall be limited to the matters described in the original specification.
In case of amendments allowed by Appellate Board or High Court
a. it shall be deemed for all purposes to form part of the specification
b. the fact that the specification has been amended shall be published
c. the right of the patentee shall not be questioned except for fraud.
Reference shall be made to the specification as originally filed.
What is RESTORATION OF PATENTS
Section 60 Application for restoration of patents
Within 18 months of date on which the patent ceased to have effect, due to failure to pay renewal fees, the patentee may apply for restoration.
The application shall accompany a statement stating the circumstances leading to the failure to pay the renewal fees and such further evidence as necessary.
Section 61 Procedure for disposal of application
The controller on being satisfied that the failure to pay the renewal fees was not intentional and there has not been undue delay in making the application he shall publish the application.
Any person may give a notice of opposition within 3 months on the grounds that
a. failure to pay the renewal fee was intentional
b. there has been undue delay in making the application.
The Controller shall notify the applicant and give him an opportunity of being heard.
If no notice is given or in case of a notice the matter being decided in favor of the applicant the Controller may restore the patent on payment of unpaid renewal fee and any penalty.
The Controller shall make a reference into the register.
Section 62 Rights of the patentee in case of restored patent
The rights of the patentee shall be restricted considering the persons who may have availed themselves of the patented invention during the period of lapse.
No suit shall lie for any infringement committed during the period of lapse.
What is SURRENDER AND REVOKATION OF PATENTS
Section 63 Surrender of patents
A patentee may at any time give a notice to Controller offering to surrender the patent.
The Controller shall publish such offer and notify all persons whose name appear in the register.
Any interested person may give to the Controller a notice of opposition to surrender along with his statement and evidence if any, within 3 months from the publication. The Controller in such case notifies the patentee.
The Controller on being satisfied that the patent may properly be surrendered revoke the patent.
Section 64 Revocation of patent
A patent may be revoked on a petition of any person or of Central Government by the Appellate Board or by the High Court on a counter claim in a suit for infringement of patent on the following grounds
a. that the invention was claimed in a valid claim of earlier specification having an earlier priority date
b. that the patentee was not entitled to apply
c. that the invention was wrongfully obtained from the petitioner
d. that the subject matter was not invention
e. that the invention is not new or publicly known/worked before the priority date of the application
f. that the invention is obvious and does not involve an inventive step having regard to the state of the art
g. that the invention is not useful
h. that the complete specification does not sufficiently and clearly describe the invention or the method of performing it.
i. that the scope of any claim is not defined or that any claim is not fairly based on the matter disclosed in the specification
j. that the patent was obtained on false suggestion or misrepresentation
k. that the subject matter was not patentable
l. that the invention was secretly used in India and this causes anticipation
m. that provisions of Section 8 have not been complied with
n. that the applicant contravened provisions of section 35/39
o. that the leave to amend the specification under 57/58was obtained by fraud
p. that the geographic origin of biological material is wrongfully mentioned
q. that the invention was anticipated having regard to the local knowledge.
No account of any personal document or secret or experimental use or communication to the government or of the use without consent of the inventor shall be taken.
The patent may be revoked if the patentee fails to exercise the invention for use of the government.
The notice of revocation shall be served on all the persons whose name appear in the register.
Section 65 Revocation of patent related to atomic energy
If the Central Government is satisfied that any patent granted is for an invention relating to atomic energy then it directs the controller to revoke that patent and he shall do so after giving all the persons whose name appear in the register an opportunity of being heard.
If the Controller is satisfied that the patent may be amended he shall allow it to be so amended instead of it being revoked.
Section 66 Revocation in public interest
If the patent or the mode by which it is performed is mischievous to the state or prejudicial to the public the Central Government declares the revocation of that patent after giving all the persons whose name appear in the register an opportunity of being heard.
What is a REGISTER OF PATENTS
Section 67 Register of patents and the particulars to be entered therein
The register of patents is kept at the patent office and it contains
a. the names and addresses of patentees
b. notifications of assignments, transmissions, licenses, amendments, extensions, and revocations of patents.
c. all such particulars which affect the validity of the patent.
The Controller shall not be affected by any notice of trust and it shall not be entered.
The register shall be in the control and management of the Controller.
The Controller may keep the register in electronic form subject to safeguards and every reference to the register shall include a reference to the electronic form.
An authorized copy of any entry of the register shall be admissible as evidence.
Section 68 Assignment not valid unless in writing and duly executed
Any assignment, mortgage, share, license, or creation of any interest in a patent shall not be valid unless it is in a form of a document and duly executed.
Section 69 Registrations of assignment, transmissions etc.
Every person who becomes entitled to any interest in patent shall apply in writing to the controller for registration of his title or of notice of his interest in the register.
The application for registration of title of a person may also be made by the other party to the instrument.
The Controller shall upon proof of title to his satisfaction enter into the register the particulars of the instrument by which the said person derives the title.
Provided that in case of an ongoing dispute on the validity of the title based on the said instrument between the parties the Controller shall refuse to take action until the rights have been determined by a competent Court.
Authenticated copies of all instrument affecting the rights on a patent shall be supplied to the Controller to be entered into the register.
Provided that the terms of any license are not disclosed to public except under the order of Court.
Any document affecting the title in patent in respect of which no entry has been made into the register shall not be admissible as evidence unless the Controller or Court , for reasons to be recorded in writing, otherwise directs.
Section 70 Power of the proprietor to deal with the patent
The party registered as a proprietor of the patent has the right to assign, license, or otherwise deal with the patent, and give receipts thereof.
Any equities may be enforced in the like manner of any other movable property.
Section 71 Rectification of register by Appellate Board
The Appellate Board may on application of an aggrieved person alleging that any entry being absent or omitted or wrongful or without reason or by error or defective in the register rectify the register as it thinks fit.
The Appellate Board may decide any question as may be necessary.
Notice of the application shall be served to the Controller and he shall appear if directed.
The notice for rectification shall be served to Controller and he shall rectify the register accordingly.
Section 72 Register to be open for inspection
The register shall be open to public at all convenient times and certified copies of any entry appearing in it shall be given to any person paying the prescribed fee.
The register shall be prima facie evidence of matter entered therein.
The reference to register also includes reference to one in electronic form.
PATENT OFFICE AND ITS ESTABLISHMENT
Section 73 Controller and other officers
The Controller General Of Designs and Trademarks shall be Controller of patents.
Central Government may appoint any number of examiners and other officers as it thinks fit.
The officers so appointed shall discharge their functions under the superintendence and directions of the Controller as authorized.
The Controller may, for reasons to be recorded, withdraw any matter pending before any officer and deal with it either himself or transfer it to any other officer for its disposal either de novo or from the stage from which it was transferred.
Section 74 Patent office and its branches
There shall be a patent office.
The government shall specify the name of the patent office.
There shall be a head office and such number of branch offices as specified.
There shall be a seal of the patent office.
Section 75 Restrictions on the employees of the patent office
All employees of the patent office shall be incapable during their employment of acquiring any interest in any patent issued by the office except by inheritance or bequest.
Section 76 Not furnishing information
The employees of the patent office shall not, except on authorization from the Controller or Court
1. furnish information on any matter proceeding under this Act
2. prepare or assist in preparing any document to be lodged in the office
3. conduct a search of the records of the patent office.
What are the POWERS OF CONTROLLER GENERALLY
Section 77 Controller to have powers of a Civil Court
The controller shall have the powers of a Civil Court in respect of the following matters
a. summoning and enforcing attendance of any person and examining him on oath
b. requiring the discovery and production of any document
c. receiving evidence on affidavits
d. issuing commissions for the examinations of witnesses or documents
e. awarding costs
f. reviewing his own decision on application made within the prescribed period in the prescribed manner
g. setting aside an order passed ex parte on application made within the prescribed period in the prescribed manner
h. any other mater which may be prescribed.
Any order of costs awarded by the Controller shall be executable as a decree of a Civil Court.
Section 78 Power of Controller to correct clerical errors
The Controller may correct any clerical error in any patent or any specification or any document or in the register.
The correction may be made on request of any person accompanied by the prescribed fee or without such a request.
In case of a request for correction the Controller shall notify every person whose name appears in the register and accord him an opportunity of being heard.
If the Controller is of the opinion that the correction would alter any material or scope of the document then he shall publish such a proposed correction.
Within such a period as may be prescribed any person may oppose such correction by giving a notice to the Controller and the Controller shall dispose off the matter as he thinks fit.
Section 79 Evidence and the power of the Controller
Evidence shall be given in the form of an affidavit but if the Controller thinks fit he may allow oral evidence in lieu of or in addition to the affidavit and may allow any party to be cross examined on the contents of the affidavit.
Section 80 Discretionary powers of the Controller
The Controller shall give to an applicant for patent an opportunity of being heard before exercising adversely to the applicant any discretion vested in the Controller.
Provided that the applicant requests at least 10 days in advance of the expiry of time limit specified.
Section 81 Disposal of application for extensions of time
The Controller is not required to give a notice of allowing extension of time to the opponent and no appeal shall lie from any such order of the Controller.
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOKATIONS
Section 82 Definitions
In this chapter
a. patented article includes an article made by a patented process
b. patentee includes exclusive licensee.
Section 83 General principles applicable to working of patented inventions
Regard shall be had to the following considerations:
that patents are granted to encourage inventions and that the inventions are worked in India on commercial scale without delay;
that patents are not granted to enable any person to enjoy monopoly for the importation of the patented article;
that the protection of patent rights promotes technological innovation for the benefit of everybody;
that patents granted promote public interest;
that patents granted do not prohibit government from taking measures to protect public health;
that the patent right is not abused by the patentee and does not result in unreasonable restrain of trade;
that patented invention is available at reasonably affordable prices to the public.
Section 84 Compulsory licenses
After the expiry of three years any person may apply to the Controller for grant of compulsory license on the grounds:
a. that the reasonable requirements of the public with respect to the patented invention have not been satisfied; or
b. that the patented invention is not available to the public at reasonable prices; or
c. that the patented invention is not worked in the territory of India.
The application under this section may be made by any person even by one holding a license.
Every application shall state the nature of the applicants interest.
On being satisfied the Controller shall grant a compulsory license.
The Controller shall take into account
a. the nature of the invention, time which has elapsed after sealing, measures taken by the patentee to make full use of the invention;
b. the ability of the applicant to work the invention;
c. the capacity of the applicant to work the invention;
d. whether the applicant has made efforts to obtain license from the patentee.
Provided that this clause shall not apply in case of circumstances in which commercial use was not possible.
The reasonable requirements of public shall be deemed to be unsatisfied when:
a. any trade or manufacturing in India is prejudiced;
b. the demand for the patented invention has not been met;
c. the export market for the patented invention has not been properly supplied or developed;
d. development of commercial activities in India are prejudiced.
e. the patented invention is adequately worked in India.
Section 85 Revocation due to non-working
After the expiry of two years of the grant of compulsory license, any person may apply to the Controller to revoke the patent on the grounds specified in section 84.
Every application shall state the facts on which the application is based as well as the nature of applicants interest.
On being satisfied the Controller shall revoke the patent.
The application is to be decided within one year.
Section 86 Adjournment of applications of compulsory license in certain cases
Where the Controller is satisfies that the time elapsed since grant of patent has been insufficient for working of patent, he may adjourn the application under Section 85/86 for a period extending 12 months.
Provided that if the patentee proves that the patent has not been worked due to any Act/regulation of the government then the time elapsed shall be reckoned excluding the period of the said Act/regulation.
No adjournment shall be granted if the Controller is satisfied that the patentee has taken reasonable steps to work the patent adequately in India.
Section 87 Procedure for dealing with applications under Section 84/85
On being satisfied that a prima facie case has been made out for granting a compulsory license the Controller shall direct the applicant to serve copies on all the persons whose name appear in the register and shall also publish the application.
Any person so notified may oppose the grant within the prescribed period.
The notice of opposition shall be accompanied by a statement setting out the grounds on which the application is opposed.
The Controller shall give all parties an opportunity of being heard before deciding the application.
Section 88 Power of the Controller in granting compulsory license
On being satisfied the controller shall grant the compulsory license to the applicant.
Where the applicant already held a license from the patentee the Controller may direct the cancellation/amendment of the license.
Where more than one patents are held by the patentee and the working of the patent for which compulsory license has been given will infringe the other then the Controller shall direct the grant of compulsory license for the other patent so infringed.
The licensee may after 12 months apply to the Controller to revise the terms of the license on the grounds that the patent cannot be worked except on a loss.
Provided that such application shall not be entertained twice.
Section 89 General purpose for granting compulsory license
The grant of compulsory license shall secure
that the patented inventions are worked in India without undue delay
that the interest of any person working or developing an invention under protection of a patent are not prejudiced.
Section 90 Terms and conditions of compulsory license
The Controller shall endeavor to secure
a. that the royalty payable to the patentee is reasonable having regard to the nature of the invention, expenditure incurred in developing it and in obtaining/maintaining the patent
b. that the patented invention is worked to the fullest extent with reasonable profit to the licensee
c. that the patented article is made available to the public at a reasonable price
d. that the license is non-exclusive
e. that the license is non-assignable
f. that the license is for balance of term of the patent unless shorter term is in public interest
g. that the license is granted predominantly for Indian market and the licensee may be permitted to export the product
h. that in case of semiconductor technology the license is granted to work the invention for public non-commercial use.
The licensee shall not import the patented product which would, but for the license, be an infringement.
The Central Government may, for public interest, direct the Controller to allow the import of the patented article.
Section 91 Licensing of related products
Any patentee or licensee may apply to the Controller to grant to him a license to work a related patent without which he is hindered from working the invention to the fullest.
The controller shall not grant the license unless he is satisfied that
a. the applicant is willing to give a license on his own invention to the other patentee of his invention on reasonable terms
b. that the inventions have made significant contributions to the establishment of commercial or industrial activities in India.
On being satisfied the Controller shall grant the licenses on the patents.
Section 92 Compulsory licenses due to the Central Government
In case of national emergencies or extreme urgency or of public non- commercial use the Central Government may make declaration and thereupon the following provisions shall have effect:
a. the Controller shall grant a compulsory license on such terms as he thinks fit,
b. the Controller shall endeavor to secure that the patented articles are made available to the public at reasonable prices ensuring the patentees deriving reasonable advantages from their patent rights.
In case of an epidemic the Controller shall not apply the provisions of section 87 and deal with the matter expeditiously.
Section 92-A Compulsory license for export of pharmaceutical products
Compulsory licenses shall be granted for export of patented pharmaceutical products to countries having inadequate manufacturing capacity provided that country has allowed import of that product.
The Controller shall grant compulsory license for manufacturing such product on such terms as he thinks fit.
Section 93 Order for license to operate as a deed between the parties concerned
The order for compulsory license shall operate as if there were a deed as such between the parties concerned on the terms settled by the Controller.
Section 94 Termination of compulsory license
The Controller may terminate the compulsory license granted on the application of the patentee on the grounds that the circumstances that gave rise to the grant no longer exist and are unlikely to recur.
The licensee may object to such termination.
The Controller shall take into account that the interest of the person who had the grant is not prejudiced.
USE AND ACQISITION OF THE INVENTION BY THE GOVERNMENT
Section 99 Meaning of use for the purpose of Government
An invention is said to be used for the purpose of the government if it is made, used, exercised or vended by a government undertaking.
The provisions of this chapter shall not apply if the provisions of Section 47 apply.
Section 100 Power of Central Government
The Central Government or any person authorized by it may use the patented invention for the purposes of the government.
The use of the invention shall be free of any royalty or other renumeration to the patentee in case it has been recorded in a document, tried or tested by any government undertaking.
In case there has been no recording, testing or trial by the government, the patentee shall get such renumeration as decided or determined by the High Court.
The authorization may be given by the Central Government either before or after the grant of patent or even before or after the commission of the act for which such authorization is given.
The Government shall notify the patentee of the use of the patent for the government and shall furnish him from time to time the extent of its use.
The government has the right to sell the patented product and the purchaser shall have all the rights as if he has purchased the product from the patentee.
In case the rights in the patent have been assigned to a licensee the reference to the patentee shall include the assignee.
Section 101 Rights of third parties
When the patent is being used for the purpose of the government
a. no entity shall have a right to restrict or regulate the use of the invention
b. no payments in any form need to be made by the assignee to the patentee
and the use shall not be an infringement of any right.
In case the assignee has been directed by the government to make use of the patent for the purpose of the government the payment made if any shall be so divided among the patentee and the assignee in such proportion as may be agreed upon or in case of default be determined by the High Court.
Section 102 Acquisition of invention by Central Government
If the Central Government is satisfied, due to public purpose, that the patent should be acquired, a notification is published to that effect in the official gazette and thereupon all the rights stand transferred to the government.
Notice of acquisition is to be given to the applicant or in case patent is granted then to all those persons whose name appear in the register.
The Central Government shall pay to every such person adequate compensation as may be agreed upon or in case of default as determined by the High Court having regard to all relevant factors.
Section 103 Reference to the High Court
Any dispute in the matter of the use of the invention for the purpose of the government shall be referred to the High Court by any party to the dispute.
In any dispute the Central Government may
a. in case patentee is a party to dispute petition the revocation of patent
b. in case patentee is not a party question the validity of the patent.
If the disclosure of the contents of any document are deemed to be prejudicial to public interest then such disclosure shall be made confidentially to any expert mutually agreed upon.
The High Court shall have regard to any benefit which any person may be entitled to receive with respect to the use of the invention by the government.
At any time the High Court may refer the matter to an official referee, commissioner or arbitrator on such terms as it directs.
SUITS CONCERNING INFRINGEMENT OF PATENTS
Section 104 Jurisdiction
No suits concerning infringement shall be instituted in any Court inferior to the district Court.
In case of counter claim such suit shall be transferred to the High Court.
Section 104-A Burden of proof
In case of an infringement of a patented process the Court may direct the defendant to prove that the process used by him is different if
a. the subject matter of the patent is a process for obtaining a product, and
b. in case of identical product the patentee has been unable to determine the process actually used.
Provided that the patentee first proves that the product obtained is identical.
The Court shall not require the defendant to disclose any manufacturing or commercial secrets if it would be unreasonable to do so.
Section 105 Power of the High Court to declare non-infringement
Any person may institute a suit for declaration that the product obtained by him or the process used does not constitute an infringement if it is shown
a. that the plaintiff had applied in writing to the patentee for an acknowledgment to that effect providing full particulars of the process and product in question, and
b. that the patentee refused or neglected to give acknowledgment.
The cost of such a proceeding shall be paid by the plaintiff unless the Court directs.
The validity of any claim shall not be questioned in such a suit and nothing shall be deemed to affect the validity of any claim.
Such suit shall be instituted after the grant of patent.
Section 106 Power of Court to grant relief in case of groundless threats
When any person threatens anyone with proceedings for infringement of patent then may be brought praying for the following relief:
a. a declaration that the threats are unjustified
b. an injunction against the continence of threats
c. such damages if any sustained.
Unless the defendant shows that the plaintiff did or was in the process of infringing his patent the Court shall grant relief to the plaintiff.
A mere notification of the existence of a patent does not constitute a threat.
Section 107 Defenses in suit for infringement
Every ground on which a patent may be revoked under Section 64 shall be available as a ground for defense.
The ground that the patent has been used in accordance with the conditions of section 47 shall be available.
Section 107-A Acts not considered as infringement
The use of the patented invention to develop and gather information needed to be submitted to regulate the use of that invention.
The import of any patented product by any person who is authorized to produce, sell or distribute it.
Section 108 Reliefs in a suit for infringement
The relief that a Court may grant include an injunction on such terms as it deems fit and either damages and an account of profits.
The Court may also order the seizure of all the infringing goods, materials and implements to work the patent and also their destruction without compensation.
Section 109 Right of exclusive licensee to initiate proceedings
The licensee shall have a similar rights as a patentee.
In a suit if the patentee is not joined as a plaintiff then he shall be added as a defendant but shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Section 110 Rights of a licensee to initiate proceedings
A licensee shall be entitled to initiate proceedings for infringement after two months of calling on the patentee to do so and the patentee refuses. In a suit if the patentee is not joined as a plaintiff then he shall be added as a defendant but shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Section 111 Restriction on the power of Court to grant damages
The Court shall not grant damages or an account of profits if the defendant shows that he was not aware or had no reason to believe that a patent existed.
A person shall not be deemed to be aware only if the word ‘patent’ is printed on the patented product without a corresponding number.
The Court may refuse to grant relief after the failure to pay the renewal fee during the prescribed period and before the extension of that period.
In case of a leave to amend the specification is granted no relief shall be granted for any infringement before the decision allowing the leave unless the Court is satisfied that the original specification was in good faith.
Nothing in this section shall affect the power of the Court to grant injunction in any suit of infringement.
Section 113 Certificate of validity of specification and cost of subsequent infringement
In any proceeding for revocation of patent if the validity of any claim is contested and found valid by the Appellate Board or Court then it may certify that the validity of the claim was contested and the claim was upheld.
For any subsequent suit contesting the validity of that claim if that claim is similarly upheld the patentee shall be entitled to all the costs unless the Court directs otherwise.
Provided that the party disputing the claim was not aware of the certificate to that effect.
Section 114 Relief for infringement of partially valid specification
In a suit for infringement if a number of claims are found to be invalid the Court shall grant relief in respect of valid claim which is infringed.
Where the plaintiff proves that the invalid claim was framed in good faith with reasonable skill and knowledge the Court may take into consideration the conduct of the parties in inserting such invalid claim and permitting them to remain there before granting relief.
Section 115 Scientific advisers
In any suit for infringement the Court may appoint independent scientific advisers to assist and report on any question of fact or for an opinion on any matter that the Court may seek.
The renumeration of scientific advisers shall be fixed by the court and shall include the costs of making the report and a daily fee for any day on which such adviser is required to attend before the Court, all such payments are to be made out of moneys provided by the Parliament by law for that purpose.
What are the APPEALS TO THE APPELLATE BOARD
Section 116 Appellate Board
The Appellate Board shall be the one established under the Trade Marks Act, 1999 and it shall exercise jurisdiction, power and authority conferred by or under this Act.
Technical member of such Board shall have the qualifications as follows.
A. He has functioned as a Controller for at least five years.
B. He has functioned as a patent agent and also has a degree in engineering or technology or a masters degree in science.
Section 117 Staff of the Appellate Board
The government shall provide such officers in such categories and other employees to the Appellate Board as it thinks fit.
Their salaries shall be prescribed by the government.
The officers and employees of the Board shall discharge their duties under the superintendence of the Chairman.
Section 117-A Appeals to the Appellate Board
No appeal shall lie from an order of the Central Government or an order of the Controller to carry out the order of the government.
Very appeal shall be in prescribed form accompanied by a copy of the decision and prescribed fees.
Every appeal shall be made within three months of the decision or such extended period as the Board may allow.
Section 117-E Appearance of Controller
The Controller has a right to appear and be heard
a. in any legal proceedings in which the remedy sought is rectification of register or in which the question relating to the functioning of the patent office is raised
b. in an appeal from the order of the Controller.
The Controller may in lieu of appearing submit his written disposition on the matter in issue and such statement shall be evidence in the proceedings.
Section 118 Contravention of secrecy provisions
If any person fails to comply with the directions given under section 35 or contravenes the provisions of section 39, he shall be punishable with imprisonment for a term extending two years or with fine or both.
Section 119 Falsification of entries into the register
If any person falsifies any entry in to the register or knowingly produces for evidence any fabricated document, he shall be punishable with imprisonment for a term extending two years or with fine or both.
Section 120 Unauthorized claim of patent rights
If any person falsely represents that any product sold by him is patented or subject to an application for patent , he shall be punishable with a fine extending to one lakh rupees.
Section 121 Wrongful use of the term ‘Patent Office’
If any person uses on his place of business or on any document the term ‘Patent Office’ or anything which would lead to the belief that his place is connected to the patent office, he shall be punishable with imprisonment for a term extending two years or with fine or both.
Section 122 Refusal/failure to supply information
If any person refuses/fails to furnish
a. information to the government that he is required under section 100
b. information to the Controller that he is required under section 146
he may be punishable with a fine extending to ten lakh rupees.
If such an information is furnished knowing it to be false then, he shall be punishable with imprisonment for a term extending six months or with fine or both.
Section 123 Practice as an non-registered patent agent
If any person contravenes the provisions of section 129 he shall be punishable with a fine extending to one lakh rupees for the first offense and five lakh rupees for every subsequent offense.
Section 124 Offense by companies
If any offense is committed by a company then every person in charge of the affairs of the company shall be deemed to be guilty and punished accordingly.
Provided that he shall not be held liable if he shows that the offense was committed without his knowledge or he exercised all due diligence to prevent the commission of the offense.
Where it is shown that the offense was committed with the knowledge of any officer of the company then such officer shall be punished accordingly.
Section 125 Register of patent agents
There shall be a register of patent agents containing names, addresses and other particulars as prescribed.
The Controller may keep the register in electronic form.
Section 126 Qualification of patent agents
A person shall be qualified to be a patent agent if
a. he is a citizen of India
b. he has completed 21 years of age
c. has a degree in science, engineering or technology
d. has passed the qualifying exam for that purpose, or
d. has been the examiner or controller for not less than ten years
e. has paid the prescribed fees.
A person who has been registered as a patent agent shall continue to be so on payment of fees as prescribed.
Section 127 Rights of a patent agent
Every patent agent is entitled to
a. practice before the controller
b. to prepare documents and discharge such functions as prescribed.
Section 128 Subscription of documents
All applications and other communications may be signed by the patent agent on being so authorized by the applicant.
Section 129 Restrictions on practice as a patent agent
No person shall hold himself out as a patent agent unless he is one
No company shall describe itself as patent agents.
Only a patent agent can
a. apply for patents
b. prepare specifications or other documents
c. give advice except of scientific or technical nature.
Section 130 Removal of patent agent and restoration
The Controller may remove the name of the person from the register of patent agents if it is established
a. that his name was entered by error or due to misrepresentation or suppression of material facts,
b. that he is convicted of an offense and has been sentenced to imprisonment or has been guilty of professional misconduct.
The Controller may on shown sufficient cause restore the name of any person so removed.
Section 131 Power of Controller to refuse to deal with certain agents
The Controller may refuse to deal with
a. any person whose name has been removed from the register
b. any person convicted of an offense under section 123
c. any person not registered as a patent agent.
d. any company or firm the manager/director/partner of which is liable to be refused to be recognized as a patent agent.
Any person who does not reside or has a place of business in India.
Section 132 Saving in respect of other persons
Nothing shall prevent
a. an applicant from drafting his specification or from appearing before the Controller
b. an advocate from taking part in any hearing before the Controller on behalf of any party to the proceedings under this Act.
Section 133 Convention countries
Every country which is a signatory of an international arrangement of which India is a signatory and accords similar rights to Indians as accorded to its own citizens shall be a convention country.
Section 134 No reciprocity
No national of non-convention country
a. shall be granted a patent in India
b. be an assignee or a licensee of any patent in India.
Section 135 Convention applications
The priority date of the application made in India shall be the date of the application made in the convention country for the same invention.
Provided Indian application is filed within 12 months of the first application.
A single Indian application may be filed for an invention for which a number of applications have been filed in the convention country.
Provided that the fees payable shall be based on the number of priorities claimed.
For a PCT application filed in India the request for examination shall be filed for only one application.
Section 136 Provisions relating to convention applications
Every convention application shall
a. be accompanied by a complete specification
b. specify a priority date
c. state that no application was made before the priority date
It may include the claims for any improvements or developments in the invention after the priority date.
The convention application shall not be post dated to any date later than making the application in India.
Section 137 Multiple priorities
Where a number of applications in the convention countries have been filed for an invention, one application may be filed for that invention in India claiming the priority date of the earliest of those applications.
The priority date of the claim shall be the date of the application in which the subject matter was first disclosed.
No account of the disclosure shall be taken unless a copy of the said application is submitted in India.
Section 138 Supplementary provisions
The applicant shall furnish to the Controller the copies of the applications and specifications made in convention countries within the prescribed period.
For a document in a foreign language a translation in English is to be furnished.
The complete specification of a PCT application shall be deemed to be the one for India.
The filing date of the PCT application shall be the filing date accorded for an application designating India.
Amendments carried out before the ISA and IPEA shall be taken into account if the applicant desires.
Section 139 Other provisions to apply to an convention application
Convention application once filed in India shall be treated on par with an application for patent filed in India.
Section 140 Avoidance of restrictive conditions
It shall be unlawful to insert in any contract/license any condition
a. to require/prohibit the purchaser from acquiring from any person any article other than the patented article
b. to require/prohibit the purchaser from using or restricting the extent of using any article other than the patented article or the patented process.
c. any coercive packaging licensing.
These conditions shall be void even if agreed to separately.
For a plaintiff not party to the restrictive conditions these shall be a valid ground in a suit for infringement of a patent.
Section 141 Determination of certain contracts
Every contract related to the patented product/process shall be determined by the purchaser if the patent ceases to have effect.
Section 142 Fees
Fees as prescribed shall be payable for applications, grant and other matters.
The Controller shall not do any act for which no fee has been paid.
Any document shall not be deemed to have been filed until the fee, if any, with respect to it has not been paid.
For a patent granted after two years from the date of the application the fees that have become due shall be paid within 3 months of the date of grant of patent.
Section 143 Restriction on publication
The controller shall not publish any application or specification before the prescribed period without the consent of the applicant.
Section 144 Report of examiners to be confidential
The report of the examiner shall not be published or made public in any proceedings unless the Controller certifies otherwise in the interest of justice.
Section 145 Publication of Official Journal
The Controller shall periodically publish the official journal containing such information as prescribed.
Section 146 Power of Controller to call for information
The Controller by notice require the patentee/licensee to furnish him such information or periodical statements as to the extent to which the patented invention has been worked in India.
Every patentee shall furnish the Controller periodically every six months statements as to the extent to which the patented invention has been commercially worked in India.
The Controller may publish such information.
Section 147 Evidence of entries and documents
A certificate signed by the Controller as to any entry shall be prima facie evidence that such entry has been made of the contents thereof.
A copy of a patent/document/extract or entry of the register certified by the Controller and sealed with the seal of the patent office shall be admissible as evidence.
Any officer of the patent office shall not be compelled to produce an original document the contents of which can be proved by producing a certified copies unless the Court orders.
Section 148 Declaration by infant/lunatic
If any person due to reasons of minority/lunacy/disability is incapable of doing any act required/permitted by this Act then his lawful guardian/manager or any person appointed by the Court shall do the said act on his behalf.
Such appointment may be made by the Court on the petition of any interested person.
Section 149 Serving of notices etc by post
Any notice/application/document needed to be served/filed may be transmitted by post.
Section 150 Security of costs
If any person, who has given a notice of opposition or made an application for a grant of a license, does not reside or has a place in India, the Controller shall require him to furnish security of cost failing which the notice of opposition or application to be withdrawn.
Section 151 Transmission of the order of the Courts to the Controller
Every order relating to revocation or of ranting certificate of validity of any claim shall be transmitted to the Controller who shall cause an entry and reference of it to be made in to the register.
Where in a suit for infringement of patent or of contesting the validity of any claim the Court shall transmit a copy of its judgment to the Controller who shall cause an entry and reference of it to be made in to the register.
The above provisions shall not apply to the decisions of the Court where an appeal is preferred against the decision of the Appellate Board.
Section 153 Information relating to patents
On the payment of the prescribed fee any person may obtain information relating to any patent in question provided that information is prescribed to be given.
Section 154 Loss or destruction of patents
The Controller may, on application and om payment of prescribed fee, cause a duplicate patent to be issued and delivered to the applicant.
Section 155 Report of the Controller to be placed before Parliament
The Central Government shall place the annual report respecting the execution of this Act by or under the Controller.
Section 156 Patent to bind the government
The patent shall have a similar effect on the government as it has on every person.
Section 157 Right of the government to sell or use forfeited articles
Nothing shall affect the power of the government from disposing the forfeited articles.
Section 157-A Protection of security of India
The Central Government shall
a. not disclose any information which it considers to be prejudicial to the interest of the security of India
b. take any action including the revocation of a patent in the interest of the security of India.