Patent Act 1970

Presented By:
Vaibhav Raj Dixit
Meaning of Patent
 A 'Patent' generally speaking, is a grant from the Government which
confers on the grantee for a limited period of time the exclusive
privilege of making, selling and using the invention for which a patent
has been granted and also of authorizing others to do so.

 The grant of patents for inventions in India is governed by the Patents

Act, 1970 and the Patents Rules, 1972.

 A patent granted under the Act is subject to the conditions stipulated

in Section 47 of the Act
The Indian Patents Act

Background :
 The Patent System has been existence in India for almost a century
and a half.
 It was given protection to thousand of new inventions with a view
to encourage their commercial exploitation.
 When giant corporations clash in patent litigation it's headline
news
 When POLAROID challenged KODAK'S rights in Instant photography
inventions, their right to manufacture and market the product were at stake
or else face punitive damages of billions of dollars.
Patents

Patent documents contain full technical details of the

invention with drawings and descriptions.

The intention is that, any person with suitable skill should

be able to manufacture the product or carry out the process
on his own without seeking know how from the patentee
after the patent has ceased.

Such detail is unlikely to be published in conventional

journals or literature and the benefits of the Patent system
are affordable, simple to appreciate and exploited a family
of patents for plain paper copies
Invention
Patent is granted to inventions. An invention must have
novel and utility if it were to be patented. S. 2(i) defines an
invention as:

 (i) an, process, method or manner of manufacture;

 (ii) machine, apparatus, or other article; or
 (iii) substance produced by manufacture, and includes any new and
useful improvement of any of them.
PATENTS ACT, 1970
 object of patent Act is to encourage scientific research, new
technology and industrial progress, grant of exclusive privilege to
own, use or sell the method or the product patented for a limited
period stimulates new inventions of commercial utility

 The fundamental principle of Patents Act, 1970 is that a patent is granted

only for an inven­tion which is new useful and non-obvious. At must have
novelty and utility.

 It is essential for the validity of a patent that it must be the inventors own
discovery as opposed to mere verification of what was already known before
the data of the patent.
Assignee:
 The Act defines the term 'assignee' as to include an assignee of the
assignee and the legal representative of a deceased assignee, and
references to the assignee of any person include references to the
assignee of the legal representative or assignee of that person;

Controller:
 It means the Controller General of Patents, Design and Trade
Marks.

Convention application:
 It means an application for a patent made by a foreign national of a
convention country.

Convention country:
 It means that country or a country which is member of a group of
countries or a union of countries or an intergovernmental
organization notified as such under section 133.
Capable of industrial application:
 In relation to an invention, means that the invention is capable of
being made or used in an industry.

Exclusive license:

 It means a license from a patentee which confers on the licensee, or

on the licensee and persons authorized by him, to the exclusion of
all other persons (including the patentee), any right in respect of
the patented invention.
 And "exclusive licensee" shall be construed accordingly.

Food:
 It means any article of nourishment for human consumption and
also includes any substance intended for the use of infants, invalids
or convalescents as an article of food or drink.
Invention:
means a new product or process involving an inventive
step and capable of indus­trial application.

Inventive step:
means a feature that makes the invention not obvious to
a person skilled in the art.

International application:
means an application for patent made in accordance
with the Patent Cooperation Treaty
Patent cooperation treaty:
 means the patent cooperation treaty done at Washington on 19
June 1970 as amended and modified from time to time.
Convention Application
 means an application for a paten made by virtue o Section 135.

Exclusive license
 means a license from a patentee which confer on the licensee, or on
the licensee and persons authorized by him, to the exclusion of all
other persons (including the patentee), any right in respect of the
patented invention and exclusive licensee shall be construed
accordingly.
Food:
The term 'food' in this Act has been defined as to mean
any article of nourishment for human consumption and
also includes any substance intended for use of infants,
invalids or convales­cents as article of food or drink.

Invention :
Invention in this Act has been defined to mean a new
product or process involving an inventive step and
capable of industrial application.
Inventive step means a feature that makes the invention
not obvious to a person skilled in the art.
Medicine or Drug include

 all medicines for internal or external use of human beings or

animals;

 all substances intended to be used for or in the diagnosis,

treatment, mitigation or prevention of diseases in human beings or
animals;

 all substances intended to be used for or in the maintenance of

public health, or the prevention or control of any epidemic diseases
among human beings or animals;

 insecticides, germicides, fungicides, weedicides and all other

substances intended to be used for the protection or preservation of
plants;

 all chemical substances which are ordinarily used as intermediates

in the preparation or manufacture of any of the medicines or
substances referred to above.
Things which are Patentable
 Before we can think of protection under patents, we must know as
to what things are patentable in law in India.

A PATENTABLE INVENTION
Must be new
Must be non-obvious
Must be useful
non-patentable inventions
 Those inventions which are injurious to public health or
violate public morality or public interest.

 New method of agriculture or horticulture is non-

patentable invention in order to have a more widespread
benefit of such invention rather than concentrating the
commercial gain of such invention in the hands of the
inventor alone.

 A process of treatment of human beings, animals or

plants cannot be patented
What is an invention?
Briefly, an invention is :
 a new and useful process or method of manufacture of an
article or substance, whether or not the article or substance is
new or.
 a new and useful article or substance produced by

manufactured
Should "Inventions" be Patented ?
he may broadcast the invention for free use by public; or
he may work the invention in secrecy without patenting
it; or
he may work the invention openly without patenting it;
or
he may exploit the invention on the basis of a patent.
Advantages to Patent System

The Patent system stimulates technical progress in the

following ways;
It encourages Research.
It induces an inventor to disclose his inventions instead
of keeping them as secret.
It provides an instrument to invest capital in new lines
of production to encourage technological development.
contract between the inventor and the Government and the
Public gets three advantages :

further research can be based;

Reasonable assurance that the worthwhile inventions
will be commercialized;
Free us&-of the invention by the Public after the Patent
expires.
PATENT SYSTEM IN INDIA

Under the Patent Act 1970 the Patent Office has

branches at Delhi, Mumbai and Chennai having
jurisdiction over the North, West & South zones
respectively.
The head office is located at Calcutta and has
jurisdiction over rest of India.
Varities of Patents
An ordinary patent

A Patent of Addition for improvement in or modification

of an invention for which a patent has been applied for
on granted.

A patent of addition remains in force only as long as the
patent for the original invention remains in force and no
renewal fees is payable in respect thereof.
A patent granted in respect of a convention application
filed under the Sec. 135 of the act under reciprocity
arrangements.
What are not 'inventions?' (Section 3)
 an invention which is frivolous or which claims anything
obviously contrary to well - established natural laws:

 an invention the primary or intended use of which would be

contrary to law or morality or injurious to public health;

 the mere discovery of a scientific principle or the formulation of

an abstract theory.

 the mere discovery of any new property or new use for a known
substance or of the mere use of a known process, machine or
apparatus unless such process results in a new product or employs
at least one new reactant.

 a substance obtained by a mere admixture resulting only in the

aggregation of the properties of the components thereof or a
What are not 'inventions?' (Section 3)
 the mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known way;

 a method or process of testing applicable during the process of manufacture

for rendering the machine, apparatus or other equipment more efficient or for
the improvement or restoration of the existing machine, apparatus or other
equipment or for the improvement of control of manufacture.

 any process for the medicinal, surgical curative, prophylactic or other

treatment of human beings or any process for a similar treatment of animals
or plants to render them free of disease or to increase their economic value or
that of their products.

 plants and animals in whole or any part thereof other than micro-organisms
but including seeds, varieties and species and essentially biological processes
for production or propaga­tion of plants and animals;
What are not 'inventions?' (Section 3)

a mathematical or business method or a computer program

per se or algorithms;

a literary, dramatic, musical or artistic work or any other

aesthetic creation whatsoever including cinematographic
works and television productions;

a mere scheme or rule or method of performing mental act

or method of playing game;

a presentation of information;

topography of integrated circuits;

What are not 'inventions?' (Section 3)

an invention which, in effect, is traditional

knowledge or which is an aggregation or duplica­
tion of know properties of traditionally known
component or components.

According to Section 4 of the Act, no patent shall

be granted in respect of an invention relating to
atomic energy falling within sub-section (1) of
section 20 of the atomic energy act, 1962.
What are not 'inventions?' (Section 3)
 In respect of food, medicine or drug, patents are granted only for the
method of processes of manufacture of the substances but not the
substances themselves.

 However, in respect of substances themselves intended for use, or

capable of being used as medicine or drug except chemical substances
which are ordinarily used as intermediate, patent can be granted in the
manner provided in the. Act.

 In respect of substances prepared or produced by chemical processes

which includes bio­chemical, biotechnological and micro-biological
process or including alloys, optical glass, semi-conductors and inter-
metallic compounds, patents are granted only for the process of
manufacture but not for the substances themselves.
What are not 'inventions?' (Section 3)

Illustration
 A process of treating malignant tumour cells is not patentable.
 A system for aiding hearing was not considered a method of
treatment and was granted a patent.

 A method of reducing gastric secretion in mammals by

administration of certain compounds was considered unpatentable
being a method of treatment.

 A claim for a novel manner of use of old chemical compound for

treatment of human disease has been held not patentable.

 A claim for patent on a medicine cannot be entertained

Inventions where only Methods or Processes of
manufacture patentable

 1) provides that in the case of inventions claiming substances intended

for use, or capable of being used, as food or as medicine or drug or
relating to substances prepared or produced by chemical processes
(including alloys, optical glass, semi conductors and inter-metallic
compounds) no patent shall be granted in respect of claims for the
substances themselves, but claims for the methods or processes of
manufacture shall be patentable
Who can Apply for a Patent?

Section 6 provides that an application for a patent for an

invention may be made by any person claiming to be the
true and first inventor of the invention;
any person being the, assignee of the person claiming to
be the true and first inventor in respect of the right to
make such application;
 and the legal representative of any deceased person who
immediately before his death was entitled to make such an
application.
EXCLUSIVE MARKETING RIGHTS

The Government of India in order to meet the obligations

under Article 70(8) and (9) of TRIPs Agreement of WTO,
inserted new Chapter IVA in the Patents Act, 1970 on
Exclusive Market­ing Rights containing Sections 24A -24F
by the Patents' (Amendment) Act, 1999, with effect from
January 1, 1995.
Application for Grant of Exclusive Rights

 Section 24A of the Patents Act provides that in respect of a claim for a
patent of an invention for a substance itself intended for use, or capable
of being used, as medicine or

 drug except in respect of all chemical substances which are ordinarily

used as intermediates in the preparation or manufacture of any of the
medicines or substances referred to in sub-clauses (i) to (iv) of Section
2(1) (1) of the Act] the Controller shall not refer the application to an
examiner for making report till December 31,2004.

 If, on receipt of report from the examiner, the application for exclusive
right to sell or distrib­ute an article or a substance is not rejected by the
controller, he may proceed to grant exclusive right in the manner
provided in Section 24B of the Act
Grant of Exclusive Rights

 invention, made whether in India or in a country other than India and

before filing such a claim, filed an application for the same invention
claiming identical article or substance in a convention country on or
after the 1st day of January, 1995 and the patent and the approval to sell
or distribute the article or substance on the basis of appropriate tests
conducted on or after the 1st day of January, 1995, in that country has
been granted on or after the date of making a claim for patent covered
under Sub-section (2) of Section 5; or

 made a claim for patent on or after the lsl day of January, 1995 for
method or process of manufacture for that invention relating to
identical article or substance and has been granted in India the patent
there for on or after the date of making a claim for patent covered
under Sub-section (2) of Section 5 and, the applicant has received the
approval to sell or distribute the article or substance from the authority
specified in this behalf by the Central. Government
Compulsory Licenses in Relation to Exclusive Right to Sell or
Distribute

 i) the working of the invention shall be deemed to be selling or

distributing of the article or substance;

 (ii) references of patent shall be deemed to be references to "right to

sell or distribute“

 (iii) references to "patented article" shall be deemed to be

references to an article for which exclusive right to sell or distribute
has been granted.
Special Provision for Selling or Distribution

 Section 24D empowers the Central Government to sell or distribute in

the public interest, an article or substahce, by itself or through any
person (other than a person to whom an exclusive right has been
granted) authorised in writing by it in this behalf, to sell or distribute
the article or substance.
STEPS IN THE PROCEDURE FOR OBTAINING A PATENT

The following are the successive steps in the procedure for

obtaining a patent:

 Filing an application for a patent at the appropriate office with a

provisional or complete specification ;
 Filing complete specification, if a provisional specification
accompanies the application;
 Examination and acceptance of the application
 Advertisement of acceptance of complete speciation
 Opposition to grant of patent to the applicant
 Hearing of the parties.
 Overcoming opposition, if any, to the grant of a patent; and
 Grant and Sealing of the Patent.
APPLICATION FOR PATENTS

Who can apply for a Patent?

 An application for a patent for an invention may be made by any of the

following persons, that is to say :

 by any person claiming to be the true and first inventor of the invention;
 by any person being the assignee of the person claiming to be the true and
first inventor in respect of the right to make such an application.
 by the legal representative of any deceased person who immediately before his
death was entitled to make such an application
Who can apply for a Patent?
 The application may be made by one of the persons either along or
jointly with any other person.
 An application for an ordinary Patent for an invention may be made by any
person, whether a Citizen of India, or not, claiming to be the true or first inventor
of the invention or his assignee or by the legal representative of any deceased
person who immediately before his death was entitled to make an application for
Patent.

 An application f w a Patent of Addition may be made only by the

applicant for the original patent to which it is an addition, if the
application for the original patent is pending; or by the registered
proprietor of such original patent, if it has been granted.

 A convention application may be made by any person who has made an

application for a patent in respect of that invention in a convention
country or by his assignee or his legal representative.
Following are the documents needed to be along with the application for
patent:

 Application :
 An application in prescribed form in triplicate:
 Every application for a patent should contain an
address for service in India, to which all official
communications may be made and must be signed by
the Applicant.
 In case the applicant is absent from India, the
application may be signed on his behalf by his
authorized agent resident in India.
Following are the documents needed to be along with the
application for patent

 A provisional specification
 drawn or a complete specification drawn along with drawings, if
any, in triplicate. In case of convention application only a
complete specification can be filed.

 Proof of right to apply for the grant of a patent under

Sec. 7(2) of the Act.
 This is necessary in case the application is filed by virtue of an
assignment. It may be in the form of Deed of Assignment or
Endorsement and should either be filed along with the
application or within three months from the date of filing the
application for a patent.
 This period of three months may be extended by the Controller
under exceptional circumstances on a petition made under rule
124 with the prescribed fee by the applicants.
Following are the documents needed to be along with the
application for patent

 A Declaration as to inventorship on under Sec. 10(6) of

the Act of the Act.
 Both in the case of an application accompanied in the first instance by a
provisional specification and in the case of a convention application a
declaration as to Inventorship of the invention disclosed in the
complete specification must be filled (in triplicate) either with the
complete specification / convention application or within from date of
filing of the complete specification / convention application after
obtaining the necessary extension of time on an application with
prescribed fee.

 A statement and undertaking under Sec. 8 of the Act

 A person resident outside India need not file a statement and
undertaking.
SPECIFICATION

 Provisional Specification
should contain
(i) title indicating the subject matter to which the
invention relates;
(ii) the name, address and nationality of the applicant;
(iii) preamble;
(iv) description of the nature of the invention; and.
(v) date and signature of the applicant's)
Provisional Specification

 Since provisional specification is regarded as a mere document of

record, no amendment that would add any fresh matter to or extend
the scope of the invention described in the provisional specification is
allowable without 'post dating'.
Complete Specification

It should be filed in triplicate and should contain

(i) title indicating the subject matter of the invention,
 (ii) name, address and nationality of the applicant;
(iii) full description of the invention and its operation or
use and the best method by which it is performed,
 (iv) statement of claims preceded by preamble "I (we)
claim" and
 (v) the date and signature of the applicant.
 GRANT OF PATENT

 On the acceptance of the complete specification, the Controller shall advertise the
acceptance in the official gazette and thereupon the application and the specification
with the drawings, if any, filed in pursuance thereof shall be open to public
inspection.

 Opposition to Grant of Patent

 (i) that the applicant has wrongfully obtained the invention or any pan
thereof:
 (ii) that the invention claimed was publicly known or publicly used in India
before;
 (iii) that the invention does not clearly involve any inventive step;
 (iv) that the subject of any claim of the complete specification is not an
invention within the meaning of the Act or is not patentable under the Act;
 (v) The invention as claimed by the applicant in his complete specification
is obvious and does not involve any inventive step.
 (vi) The invention is not patentable or its patenting is prohibited under the
Act.
Opposition to Grant of Patent
 (vii) that the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;

 (viii) En case of foreign application, the failure to disclose information

relating to such application filed in a foreign country.

 (ix) that the applicant has failed to disclose to the Controller the information
required or has furnished false information; or

 (x) that in the case of a Convention application, the application was not made
within 12 months from the date of the first application for protection for the
invention made in a Convention country by the application or a person from
whom he derived title, but on no other ground.

 (xii) In case the complete specification does not disclose or wrongly mentions the
source or geographical origin or biological material used for the invention.

 (xii) In case the invention so far as claimed in any claim of the complete
specification is antici­pated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere.
Notice of Opposition

The opponent must give notice of objection to the

Controller.

The Controller in turn shall give a copy of opposition to the

applicant for patent.

After hearing the opponent or applicant whoever desires to

be heard the Controller shall decide the opposition and
notify his opposition to the parties giving reasons thereof.
Grant and Sealing of Patents
 Where a complete specification in pursuance of an application for a patent has
been accepted
and either- ,
 the application has not been opposed under Section 25 and the time for the
filing of the opposition has expired; or

 the application has been opposed and the opposition has been finally
decided in favour of the applicant; or

 the application has not been refused by the Controller by virtue of any
power vested inn him by the Patent Act, the patent shall be granted to
applicant.

 In the case of joint application the patent shall be granted to the applicants
jointly.

 A request for the sealing of a patent shall be made.

 Grant of Patents Subject to Conditions
 The grant of a patent shall be subject to the conditions that:

 any machine, apparatus or other article in respect of which the patent is granted or any
article made by using a process in respect of which the patent is granted, may be imported
or made by or on behalf of the Government for the purpose merely of its own use;

 any process in respect of which the patent is granted may be used by or on behalf of the
Government for the purpose merely of its own use;

 any machine, apparatus or other article in respect of which the patent is granted or any
article made by the use of the process in respect of which the patent is granted, may be
made or used, and any process in respect of which the patent is granted may be used by any
person, for the purpose merely of experiment or research including the imparting of
instructions to pupils; and

 in the case of a patent in respect of any medicine or drug, the medicine or drug may be
imported by the Government for the purpose merely of its own use or for distribution in
any dispensary, hospital or other medical institution maintained by or on behalf of the
government or any other dispensary, hospital or other medical institution which the
Central Government may, having regard to the public service that such dispensary, hospital
or medical institution renders, specify in this behalf by notification in the official gazette.
DRAWINGS

 If the invention can be illustrated with the help of the drawings, such drawings
should be prepared in accordance with rules 16 to 19 of the patents rules 1972
and should be filed.

 The drawings are deemed to form part of the specification, provisional or

complete which they accompany and may be regarded as a silent application
for the features they disclose.

 Care should be taken to file the drawings wherever necessary, failing which the
controller may post date the application to the specification.

 The drawings with provisional or complete specification should be filed

in triplicate;

 at least one copy (original copy) of the drawings should be prepared on

tracing cloth, or transparent or semi-transparent sheets may be of A4
size, with a margin of 1.5 cm all around.
DRAWINGS

Black ink and should be drawn in an upright position in

regard the top and bottom of the drawing sheet.

Drawings should bear

 (i) in lefty hand top corner the name of the applicant
 (ii) in the right hand to corner the number of sheets and sheet
number, and
 (iii) in the right hand bottom corner, the signature of the applicant
or his agent.
Date and Term of Patent

 The term of patent starts from the date of filing the complete
specification and this date is entered in the Register of patents as the
date of the patents.

 The term of patent in respect of Food, Drug and medicine cases will be
5 years from the date of sealing or 7 years from the date of patent
whichever is shorter. In respect of any other inventions the period will
be 14 years from the date of patent.

 Renewal Fees :

 To maintain a patent in force, renewal fees have to be paid from the

beginning of 3rd year, otherwise the patent ceases to have to have
effect. It is the sole responsibility of the patentee to pay renewal fees on
due date or pay in advance to avoid the patents from getting lapsed.
Restoration of Lapsed Patents (Section 60 - 62)
 The Act patent provides that where a patent ceased to have effect by
reason of failure to pay any renewal fee within the prescribed period or
within extended period the patentee or his legal
 representative (where the patent was held by two or more persons jointly,
then, with the leave of the Controller, one or more of them without joining
the others) may, within eighteen months from the date on which the patent
ceased to have effect, make an application for the restoration of the patent,

 containing a statement verified in the prescribed manner and fully setting out
the circumstances which led to the failure to pay the prescribed fee.

 Controller ray however require the applicant to furnish such further

evidence as he may think necessary. (Section 60)
Commercial Working of Patents

Every patentee should furnish periodical

statements as to the extent to which the patented
invention has been worked on a commercial basis
in India.

The non-worked patents are classified according

to Chemical Engineering, Electrical Engineering in
the Gazette of India for any persons who are
interested to approach the controller for license to
work the patent.
Register of Patents (Sections 67 - 72)
 The Patent Office and its branches maintain Register of Patents
wherein entries in respect of patents granted rn India are kept up
to date.

 Section 67 provides that a Register of Patents shall be kept at the

patent office. The following particulars are required to be entered:
 (i) the names, addresses of grantees of patents;
 (ii) notification of assignments and of transmission of patents, of licenses
under patents and of amendments, extensions, and revocations of patents;
and
 (iii) particulars of such other matters affecting the validity or proprietorship
of patents.
Register of Patents (Sections 67 - 72)
 Section 68
 provides that the assignment, transfer, mortgage, license etc. must
be in writing and the agreement between the parties concerned is to
be reduced to the form of a document.
 An application for registration of the assignment etc. is to be made in
a prescribed form within 6 months from the execution of the
document.

 Section 69
 provides for the registration of assignment, transmission etc. of a
patent.

 Section 70
 empowers a registered grantee or proprietor to assign, or grant
licenses under the patents.
Register of Patents (Sections 67 - 72)
Section 71
 empowers a Appellate Board to order for the rectification of
Register of patents if an application is made by any person
aggrieved due to the following reasons:
 (a) by absence or omission from the register of any entry;
 (b) by any entry made in the Register without sufficient cause;
or (c) by any entry wrongly remaining on the Register; or
 (d) by any error or defect in any entry in the Register.
Section 72
 provides that the Register of Patents shall at all convenient
times be open to inspection by the public.
 The certified copies, sealed with the seal of the patent office,
of any entry in the Register shall be given to any person
requiring them, on payment of the prescribed fee.
 Further the Register shall be prima facie evidence of any
matters required to be entered therein.
Register of Patents (Sections 67 - 72)
Surrender of Patents (Section 63)

 The Act entitles the patentee to surrender the patent, at any time by
giving notice in the prescribed manner to the Controller.
 The Controller on receipt of such an offer is under obligation to
advertise the offer in the prescribed manner, and also notify every
person other than the patentee whose name appears in the register as
having an interest in the patent.
 Any person interested may, with the prescribed period after such
advertisement give notice to the Controller of opposition to the
surrender, and where any such notice is given the Controller shall
notify the patentee.
 If the Controller satisfied after hearing the patentee and any opponent
desirous of being heard, that the patent may properly be surrendered,
he may accept the offer and by order, revoke the patent
REVOCATION OF PATENT (Section 64 - 66)
 A patent, may be revoked by the High Court Appellate on any of the following grounds (i) on the
petition by

 (a) any person interested or

 (b) of the Central Government or

 (ii) on a counterclaim in a suit for infringement of the patent:

 (i) the invention, so far as claimed in any claim of the complete specification
 was claimed in a valid claim of earlier priority date contained in the complete specifica­tion of
another patent granted in India;

 is not new, having regard to what was publicly known or publicly used in India before the
priority date of the claim or to what was published in India or elsewhere in any of the
documents referred to in Section 13;

 is obvious or does not involve any inventive step, having regard to what was publicly known or
publicly used in India or what was published in India or elsewhere before the priority date of
the claim;
 is not useful;

 was secretly used in India, otherwise than as mentioned in Sub-section (3), before the priority
date of the claim;

 was anticipated having regard to the knowledge oral or otherwise, available within any local or
indigenous community in India or elsewhere.
REVOCATION OF PATENT (Section 64 - 66)
 (ii) the patent was granted on the application of a person not entitled to apply therefor.
 (iii) the patent was obtained wrongfully in contravention of the rights of the petitioner
or any person under or through whom he claims;
 (iv) the subject of any claim of the complete specification is not an invention within the
meaning of the Act;
 (v) the complete specification does not sufficiently and fairly describe the invention and
the method by which it is to be performed;
 (vi) the scope of any claim of the complete specification is not sufficiently and clearly
defined or that any claim of the complete specification is not fairly based on the matter
disclosed in the specification;
 (vii)the patent was obtained on a false suggestion or representation;
 (viii) the subject of any claim of the complete specification is not patentable under the
Act;
 (ix) the applicant for the patent has failed to disclose to the Controller the information
required or has furnished information which in any material particular was false to his
knowledge;
 (x) the applicant contravened any direction for secrecy passed under Section 35;
 (xi) the leave to amend the complete specification, under Section 57 or Section 58, was
obtained by fraud.
 (xii)the complete specification does not disclose or wrongly mentions the source or
geographical origin or biological material used for the invention.
Revocation of patent in public interest (s.66)

Where the Central Government is of opinion that

patent or the mode in which it is exercised is
mischievous to the state or generally prejudicial to
the public, it may make a declaration to that effect
in the official gazette.
It shall give an opportunity to the patentee to be
heard before making such a declaration.
Then the patent shall be deemed to be revoked.
Assignment of Patents (Section 68)

Section 68
makes the assignment of a patent, share in a patent,
mortgage, licencje or the creation of any other interest
in a patent, invalid unless it is in writing containing
terms and conditions governing rights and obligations of
the parties and the application for registration of the
same is filed prescribed manner with the Controller
within six months from the execution of the document
or within such further period not exceeding six months,
However, when document is registered, it shall have
effect from the date of execution.
Appeals to the Appellate Board
The Patents (Amendment) Act, 2002
 has substituted new chapter XIX titled Appeals to the Appellate
Board in place of the original Chapter XIX dealing with Appeals.
 The New Chapter contain­ing Sections 116-117 H deals with the
establishment of Appellate Board;
 Staff of Appellate Board, Appeals to Appellate Board;
 Procedure and Powers of Appellate Board; Bar on Jurisdiction of
Courts;
 Procedure for Application for Rectification etc. before Appellate
Board;
 Appearance of Controller in Legal Proceedings;
 Costs of Controller in Proceedings before Appellate Board;
 Transfer of pending Proceedings to Appellate Board; and
 Power of Appellate Board to Make Rules.
Penalties
 Chapter XX containing Sections 118-124 deals with penalties for
the violation of various provisions of the Act. Their description is
as follows:

 (i) Contravention of secrecy provisions relating to certain inventions have

been made punishable with imprisonment upto two years or with fine or
both (Section 118).
 (ii) Falsification of entries in the register etc. have been made punishable
with imprisonment upto two years or fine or both (Section 119).
 (iii) Unauthorized claim of patent rights attracts a fine upto ten thousand
rupees (Section 120).
 (iv) Wrongful use of words Patent office is punishable with imprisonment
upto six months or with fine or both (Section 121).
 (v) Refusal or failure to supply information by any person shall be
punishable with fine upto twenty thousand rupees or imprisonment upto
six months or both (Section 122).
 (vi) Practicing as Patent agent without registration shall be punishable with
fine upto ten thousand rupees for first offence and forty thousand rupees
for second and subsequent offence. (Section 123).
Penalties

 (vii) In the case of offences by companies, the company as well as every person in
charge of and responsible to, the company for conduct of its business at the time
of the commission of the offence shall be deemed to be guilty of the offence and
shall be liable to be proceeded against accordingly,
 unless he proves that the offence was committed without his knowledge and that he had
exercised all due diligence to prevent the commission of such offence (Section 124).

 is obvious or does not involve any inventive step, having regard to what was
publicly known or publicly used in India or what was published in India or
elsewhere before the priority date of the claim;
 is not useful;

 was secretly used in India, otherwise than as mentioned in Sub-section (3), before
the priority date of the claim;

 was anticipated having regard to the knowledge oral or otherwise, available within
any local or indigenous community in India or elsewhere.

 (ii) the patent was granted on the application of a person not entitled to apply
therefore.
Penalties
the patent was obtained wrongfully in contravention of the
rights of the petitioner or any person under or through
whom he claims;
 (iv) the subject of any claim of the complete specification is not an
invention within the meaning
of the Act;

 (v) the complete specification does not sufficiently and fairly

describe the invention and the
method by which it is to be performed;

 (vi) the scope of any claim of the complete specification is not

sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the
specification
Penalties
 (vii) the patent was obtained on a false suggestion or representation;
 (viii) the subject of any claim of the complete specification is not
patentable under the Act;

 (ix) the applicant for the patent has failed to disclose to the Controller
the information required or has furnished information which in any
material particular was false to his knowledge;

 (x) the applicant contravened any direction for secrecy passed under
Section 35;

 (xi) the leave to amend the complete specification, under Section 57 or

Section 58, was obtained by fraud.

 (xii) the complete specification does not disclose or wrongly mentions

the source or geographical origin or biological material used for the
invention.
Penalties
Revocation of patent on directions from Central
Government in cases relating to atomic energy (s.65).
 Where the Central Government is satisfied that a patent is for an
invention relating to atomic energy for which no patent can be
granted, then it may direct the controller to revoke the patent.
 Then the controller may revoke the patent.

Revocation of patent in public interest (s.66).

 Where the Central Government is of opin­ion that patent or the
mode in which it is exercised is mischievous to the state or generally
prejudicial to the public, it may make a declaration to that effect in
the official gazette.
 It shall give an opportunity to the patentee to be heard before
making such a declaration.
 Then the patent shall be deemed to be revoked.
Assignment of Patents (Section 68)

Section 68 makes the assignment of a patent,

share in a patent, mortgage,
 license or the creation of any other interest in a patent,
invalid unless it is in writing containing terms and
conditions governing rights and obligations of the
parties and
 the application for registration of the same is filed prescribed
manner with the Controller within six months from the
execution of the document or within such further period not
exceeding six months,
However,
when document is registered, it shall have effect from
the date of execution.
Appeals to the Appellate Board
 The Patents (Amendment) Act, 2002 has substituted new chapter XIX
titled Appeals to the Appellate Board in place of the original Chapter
XIX dealing with Appeals.

 The New Chapter contain­ing Sections 116-117 H deals with the

establishment of Appellate Board;
 Staff of Appellate Board, Appeals to Appellate Board;
 Procedure and Powers of Appellate Board;
 Bar on Jurisdiction of Courts; Procedure for Application for Rectification
etc. before Appellate Board;
 Appearance of Controller in Legal Proceedings;
 Costs of Controller in Proceedings before Appellate Board;
 Transfer of pending Proceedings to Appellate Board; and
 Power of Appellate Board to Make Rules.
PATENTAGENT

 The work relating to drafting of specifications, making of application

for a patent, subsequent correspondence with the Patent office on the
objections raised, representing the applicants case at the hearings,
filing opposition and defending application against opposition is
entrusted to a qualified patent Agent.

 Sections 125-132 of the Patents Act, 1970 and Rules 93-105 of the Patents Rules,
1972 deal with the Patent Agent.

 To practice as a Patent Agent under the Act, a person has to get his
name registered as a Patent Agent by making an application in the
prescribed form at the Head office or the Patent Office.
 Register of Patent Agents
 New Section 125 substituted by the Patents (Amendment) Act, 2002
requires the controller to maintain the register of patent agents containing
names, addresses and other particulars of all persons qualified to have their
names so entered under Section 126.

 This Section makes it lawful for controller to keep the register of patent
agents in computer floppies, diskettes or any other electronic form.

 Qualifications for Registration as Patent Agent

 Section 126 as amended by the Patents (Amendment) Act, 2002 provides

that a person shall be qualified to have his name entered in the register of
patent agent,
 if he is a citizen of India, completed the age of 21 years,
 has obtained a degree in science, engineering or technology from any
university established under the law for the time being in force and an
Advocate within the meaning of the Advocates Act, 1961 or has passed
the qualifying examination prescribed for the purpose and paid
prescribed fees.
Right of patent agents

 Every Patent Agent shall be entitled to practice before the Controller

and prepare all docu­ments, transact all business and discharge such
other functions as may be prescribed by the Control­ler. Patent Agent is
authorized to sign all applications and communications to the
Controller on behalf of the person concerned, upon his being
authorized in writing to do so by that person.
Disqualification for Registration as a Patent Agent
No person is eligible to be registered as a patent agent, if he
 (i) has been adjudged to be of unsound mind by a competent court;
 (ii) is an undischarged insolvent;
 (iii) being a discharged insolvent, has not obtained from the court a
certificate to the effect that
his insolvency was caused by misfortune without any misconduct on
his part;
 (iv) has been convicted by a competent court whether within or
outside India of an offence to
undergo a term of imprisonment;
 (v) being a legal practitioner has been guilty of professional
misconduct; or
 (vi) being a chartered accountant, has been guilty of negligence or
misconduct.
INFRINGEMENT & REMEDIES

Jurisdiction of Court (where a suit is to instituted)

(Section 104)
A District Court shall have jurisdiction to try the suit for
a declaration as to non infringement or for any relief in
cases of groundless threats of infringement proceedings
or for infringement of a patent.
However, where a counter claim for revocation of the
patent is made by the defendant, the suit along with the
counter claim, shall be transferred to the High Court for
decision.
What is infringement?

The rights of the patentees are infringed by anyone who

makes or supplies that substance commercially for use by
others even though he does not know that it is that
substance that he is making or supplying.
Relief's in the Infringements (Section 108)
An action for infringement may be instituted by way of a
suit either in District Court or in the High Court.
District Court or High Court where cause of action
arises shall have jurisdiction.
When a Suit Can Be Instituted

A suit for infringement can be instituted only after the

patent has been sealed.
When a specification has been accepted and advertised and
infringement occurs before the sealing of the patent, i.e.,
during the period when opposition has been called and is
being decided,
the applicant cannot institute a suit for infringement, but
damages sustained due to the infringement committed
during the period between the date of advertisement of
acceptance of complete specification and the date of sealing
 may be claimed in another suit; a separate suit for damages but not a
suit for infringement.
 Suit is required to be filed within 3 years from the date of infringing act
and not from the date of grant.

 Whether a Notice the Suit to Be Served on the Defendant

 Who is Entitled to Sue
 Only the person who has a right in the patent can institute a suit for
infringement. The following persons are entitled to sue:
 The patentee.
 The exclusive licensee if the licence is registered.
 A compulsory licensee when the patentee refuses or neglects to institute
proceedings.
 A licensee other than the above two licensees can bring an action for
infringement depending upon the terms of the contract between the licensor
and licensee.
 Assignee
 He can sue only after the application for registration of the assignment in his favour
has been filed.
 If a patent is assigned after the commencement of action, the assignee is to be
joined as a co-plaintiff.
 An assignee cannot sue for infringement which occurred prior to the assignment.

 Co-owners of a patent-When a patent is jointly owned by two or more

co-owners, one of them can institute a suit for infringement, but the
other co-owner (s) have to be joined as co-plaintiff or co-defendant.
Persons who can be Sued

 Person who infringes the patent that violates the monopoly right of
patentee can be sued for infringement.

 When two or more persons have jointly infringed the patent, both of
them have to be sued as co-defendants.

 Agents and servants of a principal who is responsible for the

infringement can also be sued either individually or collectively along
with their employer/principal.

 The consignees of an infringing article can be made a party to the

proceedings in an infringement suit.
The reliefs which a Court may grant in any suit for
infringement of a patent include -

(i) an injunction (inter locating/ inter injunction/

permanent injunction subject to such terms, if any, as the
Court thinks fit); and
(ii) damages; or
(iii) an account of profits.
Defenses in Suit for Infringement: (Section 107)

 In any suit for infringement of a patent, every ground on which a patent may be
revoked, shall be available as a ground of defense.

 Any suit for infringement of a patent by the making, using or importation of

any machine, apparatus or other article or by the using of any process or by the
importation, use or distribution of any medicine or drug,
 it shall be a ground for defense that such making, using, importation or distribution
is in accordance with any one or more of the conditions imposed for the grant of a
patent.
Remedies against Infringement of Patent
 A suit against infringers of patent can be filed either before District
Court of High Court. Court may grant following reliefs :
 (i) An injunction
 (ii) Damages or an account of profit.
Advantages of Obtaining Patents

Right to exploit the Patent:

 The patentee would have the exclusive right to use his invention
and it would make no difference
 if the invention becomes well-known to others from the date of the
patent (which would be the date on which the complete specifications is
filed).
Right to sue for infringement:
 The patentee would be able to bring a suit for infringement of a
patent and pray for an injunction, damages or an account of profits
against a person who infringes his patent.
Right to assign / Right to license :
 The patentee, if he does not have the means or is not
 he would be able to sell his patent it, to assign the patent to
another and grant licenses to other persons to exploit the patent,
and thereby earn money.
Kinds of assignment

There can be three kinds of assignments:

(i)Legal assignment.
(ii) Equitable assignment.
(iii) Mortgage.

The difference between assignment and license

A license merely confers a personal privilege to do some
particular act (s) which the licensee can perform.
There is no transfer of interest in licence
Kinds of assignment

The holder of an exclusive license would have the rights of

a patentee and would also to enforce rights by taking
proceedings against the infringement of the patent.

Right to Patent of addition :

 A patentee could make improvements in or modification of an

invention described or disclosed in the complete specification of
the main invention and obtain the grant of a patent for the
improvement or modification as a "Patent of Addition".

Right to surrender the Patent

How the Rights of a patentee are Enforced?

 The question of enforcement arises after the rights have been given to a person
and there has been infringement of such rights.
 The rights of a patentee can be enforced by:

 a suit for infringement of a patent.

 an action for specific performance of a contract, e.g., a contract between a
patentee and a licensee.
 an action for recovery of royalties
Duties of a Patentee

 The patentee is duty-bound to ensure that the monopoly right created

by a patent is not used unfairly and does not act prejudicial to the
public interest.

 The responsibility of the patentee to work the patent in India in such a

manner is that the reasonable requirements of the public with respect
to patented invention are satisfied and the patented product is
available in the market in appropriate quantity and reasonable price.

 Section 122 of the Act provides that refusal or failure to furnish any
information to the Central Government or the Controller shall be
punishable with fine which may extend to twenty thousand rupees.
THE PATENT OFFICE AND ITS ESTABLISHMENT (SECTIONS 74 - 76)
Office Territorial Jursdication

CO The Patent Office Branch, Todi The States of Maharashtra, Gujarat and Madhya Pradesh
Estates, Bird Floor, Sun and the Union Territories of Goa, Daman and Diu and
Mill Compound, Lower Dadra and Nagar Haveli.
Parel (West), Mumbai-400
013.

00 The Patent Office Branch, The States of Andhara Pradesh, Kerala, Tamil Nadu,
Rajaji Bhavan, Besant Karnataka and the Union Territories of Podichery,
Nagar, Chennai-600 090. Laccadive, Minicoy and Aminidivi Islands.

(iii) The Patent Office Branch, Unit The State of Haryana, Himachal Pradash, Jammu and
No. 401 to 405,3rd Branch Kashmir, Punjab. Rajasthan and Uttar Pradesh and the
Power of Controller Generally

 Sections 77 to 81 confer certain powers on controller of patents. In any

proceedings before him under this Act, he shall have the powers of a
civil court while trying a suit under the code of civil procedure, 1908 in
respect of certain matters.

 Further, he may correct any clerical error in any patent or in any

specification or other document filed in pursuance of an application for
patent or any clerical error in any matter which is entered in the
Register of Patents.

 Further, in any proceeding under this Act before the controller, he may
take oral evidence in lieu of, or in addition to evidence by affidavit, or
may allow any party to be cross-examined on the contents of his
affidavit.
International Arrangements
With a view to fulfilling a treaty, convention or arrangement
with any country outside India which affords to applicants
for patents in India or to citizens of India similar privileges as
are granted to its own citizens in respect of the grant of
patents and the protection of patent rights, the Central
Government may, by notification in the Official Gazette
declare such country to be a convention country.

A declaration may be made for the purposes of either all or

some of the provisions of the Patents Act.
International Arrangements

 country shall be entitled either solely or jointly with any other

person-
 to apply for the grant of a patent or be registered as the proprietor of
a patent;
 to be registered as the assignee of the proprietor of a patent; or
 to apply for a license or hold any license under a patent granted
under the Patents Act.
 Case I- Cadila Pharmaceuticals Ltd. vs.
Instacare labs Ltd.,2001 PTC 472 (GUJ)
The High Court after going through the entire
material facts of the case held that the process of
making combination drugs of a chemical material
and a micro-organism is a well accepted process
and isolation of one of the ingredients by giving it
a coating is also a well accepted process.
So instacare was given right to sell the product as
they had made the product using the micro
organisms and not the process evolved by Cadila.
Imperial Chemical Industries Ltd. v. Controller General of
Patents, Designs & Trade Marks and Another, Cal HC.

The court held that the following propositions of law are

well settled:
The patent must be in respect of an invention and not a
discovery.
A patent may be in respect of a substance or in respect of a
processes.
But it is not possible to bifurcate a patent and state that one
relates to the substance and the other to the process.
In order to have a complete patent the specifications and
the claims must be clearly and distinctly mentioned.
It is the claims and claims alone which constitute the
patent.
Bayer artiengeseuschaft v. Controller of
Patents , Cal HC
Petitioner - Bayer artiengeseuschaft
Respondents - Controller of Patents.
The petitioner alleged that Chlorothio-H-Pthalamide was a novel
compound and an new intermediate compound used for producing
herbicides and other drugs. But this compound was not intended and was
not capable of being used a drug or medicine under section 2(1)(1) of
patents act. So the grant of patent for period should be rectified and
replaced with 14 years.
Respondent contended that it was a drug and so was classified correctly.
Also the patentee had not raised any objection when patent document was
issued to him.
The court ruled that the application was beyond the 3 years from date of
accrual to right to apply and was thus barred by limitation .
The court also found the classification of compound as a drug correct and
had filed correct term under section 53(1)(a) of the act.
Verdict – THE APPLICATION WAS DISMISSED
Zuko engineers vs. Ministry of Commerce and
industries , (2003) 26 199 PTC (Del)
The respondent required the petitioner to pay the fee for renewal
of the patent in category of individuals , which was applicable to
legal entities other than individuals either alone or jointly.
The respondent viewed that since name of the patentee was Zuko
engineers , the fee has to be paid for legal entity other than
individuals.
The court held the stand erroneous in as much as the name of
concern cannot be determined or decisive of whether the
concern is proprietor firm and is owned by and individual or is a
partnership firm.
Verdict – the court directed the respondent to charge the renewal
fee of patent that is applicable to individual.
K. K. Puri vs. MM Industries , 1997 PTC 185
Del HC

The appellant had obtained an order of temporary injunction

restraining the respondents from using or dealing with literary
slideable lock covered by Indian patent no. 161330 etc.
The said injunction was violated , so on these grounds the plaintiff
filed the application. The learned single judge by an elaborate order
dismissed the said application.
The appeal was against the order of the single judge.
The appellant contended that the respondent had sold a lock which
amounted to violation of injunction.
The learned single judge had dismissed the case by observing muneer
who had stated that one lock had been purchased in the presence of
notary public. The appeal was dismissed by high court finding no
reason to disagree with the single judge.
National Research Development Corporation v. Silicon
ceramics Ltd., AIR 1998 Del 52

Section 69(5) envisages that if an assignee or a licensee

fails to apply for registration of a document under which
an assignment of patent has been made to him , he will
be precluded from relying on document as proof of his
title to the use of the patent.
The respondent had been drawing benefit under the
agreement cannot be allowed to shrink his responsibility
of paying the royalty to the petitioner. In view of the
above position of law , the court upheld the award of the
arbitrator for payment of roylty for a period of 14 years
from the date of manufacture of the material .
Taylor and Scott v. Anand
The court observed that the way to ascertain whether a
novel and useful improvement in machinery is an
invention in the true sense is to consider how matters
stood just before improvement was discovered .
Corigall v. Armstrong Whitworth and Coy ,22
RPC 268

Corigall was the patentee of an invention of improvements in

mounting ordnance. The improvement was a recoiling shield
and the method mounting was described in specifications .
In an Action for infringement only the claim was alleged to be
infringed . This claim was for the ‘use for protecting a gun
mounting of a shield adapted to recoil when struck with a
projectile’.
Recoiling shields were admitted by the plaintiff to be common .
Held, that there was no novelty and that the generality of the
claim must be limited by the particularity of the description in
the specification , and the plaintiff’s case failed judgment was
given in favor of defendants.
Hindustan lever limited v. godrej soaps
limited., 1977 PTC 756

 The petitioner prayed for the interim injunction to restrain the

infringement of a patent related to soaps manufactured in
accordance with patent no. 170171 & marked under the trade
mark ‘VIGIL’ .
 The respondent pleaded that making detergent bars containing
varying amounts of percentage of soaps including non soap
detergents and water insoluble fillers , including starch and
varying range of moisture is not new and therefore , due to non-
novelty cannot be subject matter of patent.
 The attention of high court was also drawn to the fact that since
the patent had not yet been exploited by the petitioner damage
likely to be suffered by petitioner was incapable of being
quantified . Interim injunction against the respondent was
refused