PATENTS
ACT, 1970
CONTENTS
PRELIMINARY
1. Short
title, extent and commencement
2. Definitions
and interpretation
INVENTIONS NOT PATENTABLE
4. Inventions relating to atomic energy not
patentable
5. Inventions where only methods or processes of
manufacture
APPLICATIONS FOR PATENTS
6. Persons entitled to apply for patents
8. Information and undertaking regarding foreign
applications
9. Provisional and complete specifications
10. Contents of
specifications
11. Priority
dates of claims of a complete specification
EXAMINATION OF APPLICATIONS
12. Examination
of application
13. Search for
anticipation by previous publication and by prior claim
14. Consideration
of report of examiner by Controller
15. Power of
Controller to refuse or require amended applications in certain cases
16. Power of
Controller to make orders respecting division of application
17. Power of
Controller to make orders respecting dating of application
18. Powers of
Controller in cases of anticipation
19. Powers of
Controller in case of potential infringement
20. Powers of
Controller to make orders regarding substitution of applicants, etc.
21. Time for
putting application in order for acceptance
22. Acceptance
of complete specification
23. Advertisement
of acceptance of complete specification
24. Effect of
acceptance of complete specification
EXCLUSIVE MARKETING RIGHTS
24A. Application
for grant of exclusive rights
24B. Grant of
exclusive rights
24C. Compulsory
licences
24D. Special
provision for selling or distribution
24E. Suits
relating to infringements
24F. Central
Government and its officers not to be liable
OPPOSITION TO GRANT OF PATENT
25. Opposition to grant of patent
26. In cases of “obtaining” Controller may treat application as
application of opponent.
27. Refusal of
patent without opposition
28. Mentioned of inventor as such in patent
ANTICIPATION
29. Anticipation
by previous publication
30. Anticipation
by previous communication to Government
31. Anticipation
by public display, etc.
32. Anticipation
by public working.
33. Anticipation
by use and publication after provisional specification
34. No
anticipation if circumstances are only as described in sections 29, 30, 31 and
32
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS
35. Secrecy
directions relating to inventions relevant for defence purposes
36. Secrecy
directions to be periodically reviewed
37. Consequences
of secrecy directions
38. Revocation
of secrecy directions and extension of time
39. [Omitted]
40. Liability for contravention of section 35 of section.
41. Finality of
orders of Controller and Central Government
42. Savings
respecting disclosure to Government
GRANT AND SEALING OF PATENTS AND
RIGHTS CONFERRED THEREBY
43. Grant and sealing
of patent
44. Amendment
of patent granted to deceased applicant
45. Date of
patent
46. Form,
extent and effect of patent
47. Grant of
patents to be subject to certain conditions
49. Patent
rights not infringed when used on foreign vessels, etc. temporarily or
accidentally in India.
50. Rights of
co-owners of patents
51. Power of
Controller to give directions to co-owners
52. Grant of
patent to true and first inventor where it has been obtained by another in
fraud of him.
53. Term of
patent
PATENTS OF ADDITION
55. Term of
patents of addition
56. Validity of
patents of addition
AMENDMENT OF APPLICATIONS AND
SPECIFICATIONS
57. Amendment
of application and specification before Controller
58. Amendment
of specification before High Court
59. Supplementary
provisions as to amendment of application or specification
CHAPTER XI
RESTORATION OF LAPSED PATENTS
60. Application
for restoration of lapsed patents
61. Procedure
for disposal of applications for restoration of lapsed patents
62. Rights of
patentees of lapsed patents, which have been, restored
SURRENDER AND REVOCATION OF PATENTS
66. Revocation
of patent in public interest
REGISTER OF PATENTS
67. Register of
patents and particulars to be entered therein
68. Assignments,
etc. not to be valid unless in writing and registered
69. Registration
of assignments, transmissions, etc.
70. Power of
registered grantee for proprietor to deal with patent
71. Rectification
of register by High court
72. Register to
be open for inspection
PATENT OFFICE AND ITS ESTABLISHMENT
73. Controller and
other officers
74. Patent
office and its branches
75. Restriction
on employees of patent office as to right or interest in patents
76. Officers
and employees not to furnish information, etc.
POWERS OF CONTROLLER GENERALLY
77. Controller
to have certain powers of a civil court
78. Power of
controller to correct clerical errors, etc.
79. Evidence
how to be given and powers of Controller in respect thereof
80. Exercise of
discretionary powers by Controller
81. Disposal by
Controller of applications for extension of time
WORKING OF PATENTS, COMPULSORY LICENCES,
LICENCES OF RIGHT AND REVOCATION
82. Definitions
of “Patented articles” and “patentee”.
83. General principles
applicable to working of patented inventions
85. Matters to
be taken into account in granting compulsory licences
86. Endorsement
of patent with the words “licences of right”
87. Certain
patents deemed to be endorsed with the words “licences of right”
88. Effect of
endorsement of patent with the words “licences of right”
89. Revocation
of patents by the Controller for non-working
90. When
reasonable requirements of the public deemed not satisfied
91. Power of
Controller to adjourn applications for compulsory licences, etc. in certain
cases
92. Procedure
for dealing with applications under sections 84, 86 and 89
93. Powers of
Controller in granting compulsory licences
94. General
purposes for granting compulsory licences
95. Terms and
conditions of compulsory licences
96. Licensing
of related patents
97. Special
provision for compulsory licences on notification by Central Government
98. Order for
licence to operate as a deed between parties concerned
USE OF INVENTIONS FOR PURPOSES OF
GOVERNMENT AND ACQUISITION OF INVENTIONS
BY CENTRAL GOVERNMENT
99. Meaning of use of invention for purposes of
Government
100. Power of
Central Government to use inventions for purposes of Government.
101. Right of
third parties in respect of use of invention for purposes of Government
102. Acquisition
of inventions and patents by the Central Government
103. Reference
to High Court of disputes as to use for purposes of Government
SUITS
CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction
105. Power of
court to make declaration of to non-infringement
106. Power of
court to grant relief in cases of groundless threats of infringement
proceedings.
107. Defenses,
etc. in suits for infringement
108. Relief’s in
suits for infringement
109. Rights of
exclusive licensee to take proceedings against infringement
110. Right of
licensee under section 84 to take proceedings against infringement
111. Restriction
on power of court to grant damages or an account of profits for infringement
112. Restriction on power of court to grant injunction
in certain cases
113. Certificate
of validity of specification and costs of subsequent suits for infringement
thereof
114. Relief for-infringement of
partially valid specification
115. Scientific
advisers
APPEALS
116. Appeals
117. Procedure
for hearing of appeals
CHAPTER-XX
PENALTIES
118. Contravention
of secrecy provisions relating to certain inventions
119. Falsification
of entries in register, etc.
120. Unauthorized
claim of patent rights
121. Wrongful
use of words, “patent office”
122. Refusal or failure to supply information
123. Practice by non-registered patent agents
PATENT AGENTS
125. Register of patent agents
126. Qualifications for registration as patent agents
128. Subscription and verification of certain documents by patent
agents
129. Restrictions on practice as patent agents
130. Removal from register of patent agents and restoration
131. Power of Controller to refuse to deal with certain agents
132. Savings in respect of other persons authorised to act as agents
CHAPTER -XXII
INTERNATIONAL ARRANGEMENTS
133. Notification as to convention countries
134. Notification as to countries not providing for reciprocity
136. Special provisions relating to convention applications
137. Multiple
priorities
138. Supplementary
provisions as to convention applications
139. Other
provisions of Act to apply to convention applications
MISCELLANEOUS
140. Avoidance
of certain restrictive conditions
141. Determination
of certain contracts
142. Fees
143. Restrictions
upon publication of specifications
144. Reports of
examiners to be confidential
145. Publication
of patented inventions
146. Power of
Controller to call for information from patentees
147. Evidence
of entries, documents, etc.
148. Declaration
by infant lunatic, etc.
149. Service of
notices, etc. by post
150. Security
for costs
151. Transmission
of orders of courts to Controller
152. Transmission
of copies of specifications, etc. and inspection thereof
153. Information
relating to patents
154. Loss or
destruction of patents
155. Reports of Controller to be placed before
Parliament
156. Patent to
bind Government
157. Right of
Government to sell or use forfeited articles
157A. Protection
of security of India
158. Power of
High Courts to make rules
159. Power of
Central Government to make rules
160. Rules to
be placed before Parliament
162. Repeal of
Act 2 of 1911 in so far as it relates to patents and savings
163. Amendment
of Act 43 of 1958
THE SCHEDULE - Amendments
of the Indian Patents and Designs Act, 1911
Notifications under The Patents Act, 1970
THE PATENTS ACT, 1970
[39 of 1970]
[19th September 1970]
An Act to amend and consolidate the law relating to Patents.
Be it enacted by Parliament in the Twenty-first Year of the Republic
of India as follows
CHAPTER -I
PRELIMINARY
1. Short title, extent and commencement-
(1) This Act may be called the
Patents Act, 1970.
(2) It extends to the whole
of India.
(3) It
shall come into force on such date1 as the Central Government notification in
the Official Gazette, appoint.
Provided that different dates may be appointed for different provisions
of this Act, and Any reference in any such provision to the commencement of
this Act shall be construed as a reference to the coming -into force of that
provision.
1. The
provisions of this Act, other than sections 12 (2), 13 (2), 28, 68 and 125 to
132 came into force on 20.4.1972, vide not.
No. S.O. 33 (E), dt. 20.4.1972, see Gazette of India, Extra., Part II 3
(ii), page 735. The provisions of
sections 12 (2), 13 (2), 28, 68 and 125 to 132 came into force on 1.4.1978,
vide Not. No. S.O. 799, dt. 10.3.1978,
see Gazette of India, 1978 Part II 3 (ii), page 764.
2. Definitions and
interpretation-
(1) In this Act, unless the
context otherwise requires-
(a) “Assignee”
includes 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;
(b)
“Controller” means the Controller-General of Patents, Designs and Trade
Marks referred to in section 73;
(c) “Convention
application” means an application for a patent made by virtue of section 135;
(d)
“Convention country” means a country notified as such under sub-section
(1) of section 133;
(e) “District court” has the
meaning assigned to that expression by the
(f) “Exclusive
licence” means a licence from a patentee, which confers on the licensee, or on
the licensee and persons authorised 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;
(g) “Food’ means any article
of nourishment and includes any substance intended for the use of babies,
invalids or convalescents as an article of food or drink;
(h) “Government undertaking”
means any industrial undertaking carried on-
(i) By a department of the
Government, or
(ii) By a
corporation established by a Central, Provincial or State Act, which is owned
or controlled by the Government, or
(iii) By a
Government company as defined in section 617 of the Companies Act, 1956 (I of
1956),
And includes the Council of Scientific and Industrial Research and any
other institution which is financed wholly or for the major part by the said
council;
(i) “High Court” means-
(i) In relation to the Union
territory of Delhi, ***1 the High Court of Delhi;
2[(ii) in
relation to the State of Arunachal Pradesh and the State of Mizoram, the
Gauhati High Court (the High Court of Assam, Nagaland, Meghalaya, Manipur,
Tripura, Mizoram and Arunachal Pradesh);]
(iii) In
relation to the Union territory of the Andaman and Nicobar Islands, the High
Court at Calcutta;
(iv). In
relation to the Union territory of the 3[Lakshadweep], the High Court of Kerala;
(v) In
relation to the Union territory of Goa, Daman and Diu and the Union territory
of Dadra and Nagar Haveli, the High Court at Bombay;
(vi). In
relation to the Union territory of Pondicherry, the High Court at Madras;
(vii) in
relation to the Union territory of Chandigarh, the High Court of Punjab and
Haryana; and
(viii)
In relation to any other State, the High Court
for that State;
(j) “Invention” means any new and useful-
(i) Art, process, method or
manner of manufacture;
(ii) Machine, apparatus or
other article;
(iii) Substance produced by
manufacture,
And includes any new and useful improvement of any of them, and an
alleged invention;
(k) “Legal representative” means
a person who in law represents the estate of a deceased person;
(1) “Medicine or drug” includes-
(i) All
medicines for internal or external use of human beings or animals,
(ii) All
substances intended to be used for or in the diagnosis, treatment, mitigation
or prevention of diseases in human beings or animals,
(iii) All
substances intended to be used for or in the maintenance of public health, or
the prevention or control of any epidemic disease among human beings or
animals,
(iv). Insecticides,
germicides, fungicides, weedicides and all other substances intended to be used
for the protection or preservation of plants,
(v) All
chemical substances, which are ordinarily used as intermediates in the
preparation or manufacture of any of the medicines, or substances above
referred to;
(m) “Patent”
means a patent granted under this Act and includes for the purposes of sections
44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140,
153, 154 and 156 and Chapters XVI, XVII and XVIII, a patent granted under the
Indian Patents and Designs Act, 1911 (2 of 1911);
(n) “Patent
agent” means a person for the time being registered under this Act as a patent
agent;
(o) “Patented article” and
“patented process” means respectively an article or process in respect of which
a patent is in force;
(p) “Patentee”
means the person for the time being entered on the register as the grantee or
proprietor of the patent;
(q) “Patent of addition”
means a patent granted in accordance with section 54;
(r) “Patent office” means the
patent office referred to in section 74;
(s) “Person” includes the
Government;
(t) “Person
interested” includes a person engaged in, or in promoting, research in the same
field as that to which the invention relates;
(u) “Prescribed”
means, in relation to proceedings before a High Court, prescribed by rules made
by the High Court, and in other cases, prescribed by rules made
under this Act;
(v) “Prescribed
manner” includes the payment of the prescribed fee;
(w) “Priority
date” has the meaning assigned to it by section 11;
(x) “Register”
means the register of patents referred to in section 67;
(y) “True
and first inventor” does not include either the first importer of an invention
into India, or a person to whom an invention is first communicated from outside
India.
(2) In this Act, unless the context otherwise
requires, any reference-
(a) To the
Controller shall be construed as including a reference to any officer
discharging the functions of the Controller in pursuance of section 73;
(b) To the
patent office shall be construed as including a reference to any branch office
of the patent office.
1. The
words “and the Union Territory of Himachal Pradesh” omitted by the State of
Himachal Pradesh (Adaptation of Laws on Union Subjects) Order, 1973, w.e.f.
25.1.1971.
2. Subs.
by the North-Eastern Areas (Reorganisation) (Adaptation of Laws on Union
Subjects) Order, 1974, for sub-clause (ii), w.e.f. 21.1.1972.
3. Subs.
by the Laccadive, Minicoy and Amindivi Islands (Alteration of Name) Adaptation
of Laws Order, 1974, for “Laccadive, Minicoy and Amindivi Islands”, w.e.f.
1.11.1973.
CHAPTER-II
INVENTIONS NOT PATENTABLE
3. What are not inventions- The following are not
inventions within the meaning of this Act, -
(a) An
invention which is frivolous or which claims anything obvious contrary to well
established natural laws;
(b) An
invention the primary or intended use of which would be contrary to law or
morality or injurious to public health;
(c) The
mere discovery of a scientific principle or the formulation of an abstract theory;
(d) 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 known process
results in a new product or employs at least one new reactant;
(e) A substance
obtained by a mere admixture resulting only in. the aggregation of the
properties of the components thereof or a process for producing such substance;
(f) The
mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
(g) 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 or control of manufacture;
(h) A method of agriculture or horticulture;
(i) 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.
4. Inventions relating to atomic energy not
patentable- 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 (33 of 1962).
5. Inventions where only methods or
processes of manufacture patentable: -
1[(1)] In the case of inventions-
(a) Claiming
substances intended for use, or capable of being used, as food or as medicine
or drug, or
(b) 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.
2[(2) Notwithstanding anything contained in sub-section (1), a claim for
patent of an invention for a substance itself intended for use, or capable of
being used, as medicine or drug, except the medicine or drug specified under
sub-clause (v) of clause (1) of sub-section (1) of section 2, may be made and
shall be dealt, without prejudice to the other provisions of this Act, in the
manner provided in Chapter IVA.]
1. Original
Section 5 renumbered as sub-section (1) by Act 17 of 1999, s. 2, w.e.f.
1.1.1995.
2. Ins. by
Act 17 of 1999, s. 2, w.e.f. 1.1.1995.
CHAPTER III
APPLICATIONS FOR PATENTS
6. Persons entitled to apply
for patents -
(1) Subject to the provisions contained in section
134, an application for a patent for an invention may be made by any of the
following persons, that is to say-
(a) By
any person claiming to be the true and first inventor of the invention;
(b) 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;
(c) By
the legal representative of any deceased person who immediately before his
death was entitled to make such an application.
(2) An
application under sub-section (1) may be made by any of the persons referred to
therein either alone or jointly with any other person.
(1) Every
application for a patent shall be for one invention only and shall be made in
the prescribed form and filed in the patent office.
(2) Where
the application is made by virtue of an assignment of the right to apply for a
patent for the invention, there shall be furnished with the application, or
within such period as may be prescribed, after the filing of the application,
proof of the right to make the
application.
(3) Every
application under this section shall state that the applicant is in possession
of the invention and shall name the owner claiming to be the true and first
inventor; and where the person so claiming is not the applicant or one of the
applicants, the application shall contain a declaration that the applicant
believes the person so named to be the true and first inventor.
(4) Every
such application (not being a convention application) shall be accompanied by a
provisional or a complete specification..
8. Information and undertaking regarding
foreign applications-
(1) Where an applicant for a patent under this Act is prosecuting
either alone or jointly with any other person an
application for a patent in any country outside India in respect of the same or
substantially the same invention, or where to his knowledge such an application
is being prosecuted by some person through whom he claims or by some person
deriving title from him, he shall file along with his application-
(a) A
statement setting out the name of the country where the application is being
prosecuted, the serial number and date of filing of the application and such
other particulars as may be prescribed; and
(b) An
undertaking that, up to the date of the acceptance of his complete
specification filed in India, he would keep the Controller informed in writing,
from time to time, of details of the nature referred to in clause
(c) In
respect of every other application relating to the same or substantially the
same invention, if any, filed in any country outside India subsequently to the
filing of the statement referred to in the aforesaid clause, within the
prescribed time.
(2) The
Controller may also require the applicant to furnish, as far as may be
available to the applicant, details relating to the objections, if any, taken
to any such application as is referred to in sub-section (1) on the ground that
the invention is lacking in novelty or patent ability, the amendments effected
in the specifications, the claims allowed in respect thereof and such other
particulars as he may require.
9. Provisional and complete specifications-
(1) Where
an application for a patent (not being a convention application) is accompanied
by a provisional specification, a complete specification shall be filed within
twelve months from the date of filing of the application, and if the complete
specification is not so filed the application shall be deemed to be abandoned.
Provided that the complete specification may
be filed at any time after twelve’s months but within fifteen months from the date aforesaid, if a request to that effect is made to the
Controller and the prescribed fee is paid on or before the date on which the
complete specification is filed.
(2) Where
two or more applications in the name of the same applicant are accompanied by provisional
specifications in respect of inventions which are cognate or of which one is a
modification of another and the Controller is of opinion that the whole of such
inventions are such as to constitute a single invention and may properly be
included in one patent, he may allow one complete specification to be filed in
respect of all such provisional specifications.
(3) Where
an application for a patent (not being a convention application) is accompanied
by a specification purporting to be a complete specification, the Controller
may, if the applicant so requests at any time before the acceptance of the
specification, direct that such specification shall be treated for the purposes
of this Act as a provisional specification and proceed with the application
accordingly.
(4) Where a
complete specification has been filed in pursuance of an application for a
patent accompanied by a provisional specification or by a specification treated
by virtue of a direction under sub-section (3) as a provisional specification,
the Controller may, if the applicant so requests at any time before the
acceptance of the complete specification, cancel the provisional specification
and post-date the application to the date of filing of the complete
specification.
10. Contents
of specifications-
(1) Every
specification, whether provisional or complete, shall describe the invention
and shall begin with a title sufficiently indicating the subject matter to
which the invention relates.
(2) Subject
to any rules that may be made in this behalf under this Act, drawings may, and
shall, if the Controller so requires, be supplied for the purposes of any
specification, whether complete or provisional; and any drawings so supplied
shall, unless the Controller otherwise directs, be deemed to form part of the
specification, and references in this Act to a specification shall be construed
accordingly.
(3) If, in
any particular case, the Controller considers that an application should be
further supplemented by a model or sample of anything illustrating the
invention or alleged to constitute an invention, such model or sample as he may
require shall be furnished before the acceptance of the application, but such
model or sample shall not be deemed to form part of the specification.
(4) Every
complete specification shall-
(a) Fully
and particularly describe the invention and its operation or use and the method
by which it is to be performed;
(b) Disclose
the best method of performing the invention which is known to the applicant and
for which he is entitled to claim protection; and
(c) End
with a claim or claims defining the scope of the invention for which protection
is claimed.
(5) The
claim or claims of a complete specification shall relate to a single invention,
shall be clear and succinct and shall be fairly based on the matter disclosed
in the specification and shall, in the case of an invention such as is
referred to in section 5, relate to a single method or process of manufacture.
(6) A
declaration as to the inventorship of the invention shall, in such cases as may
be prescribed, be furnished in the prescribed form with the complete
specification or within such period as may be prescribed after the filing of
that specification.
(7) Subject
to the foregoing provisions of this section, a complete specification filed
after a provisional specification may include claims in respect of developments
of, or additions to, the invention which was described in the provisional
specification, being developments or additions in respect of which the
applicant would be entitled under the provisions of section 6 to make a
separate application for a patent.
11. Priority
dates of claims of a complete specification-
(1) There
shall be priority date for each claim of a complete specification.
(2) Where a
complete specification is filed in pursuance of a single application
accompanied by-
(a) A provisional specification;
or
(b) A
specification, which is treated by virtue of a direction under subsection (3)
of section 9 as a provisional specification,
And the claim is fairly based on the matter disclosed in the
specification referred to in clause (a) or clause (b), the priority date of
that claim shall be the date of the filing of the relevant specification.
(3) Where
the complete specification is filed or proceeded with in pursuance of two or
more applications accompanied by such specifications as are mentioned in
sub-section (2) and the claim is fairly based on the matter disclosed-
(a) In one of
those specifications, the priority date of that claim shall be the date of the
filing of the application accompanied by that specification;
(b) Partly
in one and partly in another, the priority date of that
claim shall be the date of the filing of the application accompanied by the
specification of the later date.
(4) Where
the complete specification has been filed in pursuance of a further application
made by virtue of sub-section (1) of section 16 and the claim is fairly based
on the matter disclosed in any of the earlier specifications, provisional or
complete, as the case may be, the
priority date of that claim shall be the date of the filing of that specification in which the matter was
first disclosed.
(5) Where,
under the foregoing provisions of this section, any claim of a complete
specification would, but for the provisions of that sub-section, have two or
more priority dates, the priority date of that claim shall be the earlier or
earliest of those dates.
(6) In any
case to which sub-sections (2), (3), (4) and (5) do not apply, the priority
date of a claim shall, subject to the provisions of section 137, be the date of
filing of the complete specification.
(7) The
reference to the date of the filing of the application or of the complete specification
in this section shall, in cases where there has been a post-dating
under section 9 or section 17 or, as the case may be, an ante-dating under
section 16, be a reference to the date as so post-dated or ante-dated.
(8) A claim
in complete specification of a patent shall not be invalid by reason only of-
(a) The publication or use of
the invention so far as claimed in that claim on or after the priority date of
such claim; or
(b) The
grant of another patent which claims the invention, so far as claimed in the
first mentioned claim, in a claim of the same or a later priority date.
CHAPTER-
IV
EXAMINATION
OF APPLICATIONS
12. Examination of application-
(1) When the complete specification
has been filed in respect of an application for a patent, the application and
the specification relating thereto shall be referred by the Controller to an
examiner for making a report to him in respect of the following matters,
namely-
(a) Whether
the application and the specification relating thereto are in accordance with
the requirements of this Act and of any rules made thereunder;
(b) Whether
there is any lawful ground of objection to the grant of the patent under this
Act in pursuance of the application;
(c) The result of
investigations made under section 13; and
(d) Any other matter, which
may be prescribed.
(2) The
examiner to whom the application and the specification relating thereto are
referred under sub-section (1) shall ordinarily make the report to the
Controller within a period of eighteen months from the date of such reference.
13. Search for anticipation by previous publication and by prior
claim. -
(1) The examiner to whom an application for a
patent is referred under section 12 shall make investigation for the purpose of
ascertaining whether the invention so far as claimed in any claim of the
complete specification-
(a) Has
been anticipated by publication before the date of filing of the applicant’s
complete specification in any specification filed
in pursuance of in application for a patent made in India and dated on or after
the Ist day of January, 1912;
(b) Is
claimed in any claim of any other complete specification published on or after the
date of filing of the applicant’s complete specification,, being a
specification filed in pursuance of an application for a patent made in India
and dated before or claiming the priority date earlier than that date.
(2) The
examiner shall, in addition, make such investigation as the Controller may
direct for the purpose of ascertaining, whether the invention, so far as
claimed in any claim of the complete specification, has been anticipated by
publication in India or elsewhere in any document other than those mentioned in
sub-section (1) before the date of filing of the applicant’s complete
specification.
(3) Where a
complete specification is amended under the provisions of this Act before it
has been accepted, the amended specification shall be examined and
investigated in like manner as the original specification.
(4) The
examination and investigations required under section 12 and this section shall
not be deemed in any way to warrant the validity of any patent, and no
liability shall be incurred by the Central Government or any officer thereof by
reason of, or in connection with, any such examination or investigation or any
report or other proceedings consequent thereon.
14. Consideration of report of examiner by Controller- Where, in respect of an application for a patent, the report of the
examiner received by the Controller is adverse to the applicant or requires any
amendment of the application or of the specification to ensure compliance with
the provisions of this Act or of the rules made thereunder, the Controller,
before proceeding to dispose of the application in accordance with the
provisions hereinafter appearing, shall communicate the gist of the objections
to the applicant and shall, if so required by the applicant within the
prescribed time, give him an opportunity of being heard.
15. Power of Controller to refuse or require
amended applications in certain cases- (1) Where the Controller is satisfied that the application or any
specification filed in pursuance thereof
does not comply with the requirements of this Act or of any rules made
thereunder, the Controller may either-
(a) Refuse
to proceed with the application; or.
(b) Require
the application, specification or drawings to be amended to his satisfaction
before he proceeds with the application.
(2) If it
appears to the Controller that the invention claimed in the specification is
not an invention within the meaning of, or is not patentable under, this Act,
he shall refuse the application.
(3) If it
appears to the Controller that any invention, in respect of which an
application for a patent is made, might be used in any manner contrary to law,
he may refuse the application, unless the specification is amended by the
insertion of such disclaimer in respect of that use of the invention, or such other reference to the illegality
thereof, as the Controller thinks fit.
16. Power of Controller to make orders
respecting division of application-
(1) A person who has made an application for
a patent under this Act may, at any time before the acceptance of the complete
specification, if he so desires, or with a view to remedy the objection raised
by the Controller on the ground that the claims of the complete specification
relate to more than one invention, file a further application in respect of an
invention disclosed in the provisional or complete specification a.1ready filed
in respect of the first-mentioned application.
(2) The
further application under sub-section (1) shall be accompanied by a complete
specification, but such complete specification shall not include any matter not
in substance disclosed in the complete specification filed in pursuance of the
first-mentioned application.
(3) The
Controller may require such amendment of the complete specification filed in
pursuance of either the original or the further application as may be necessary
to ensure that neither of the said complete specifications includes a claim for
any matter claimed in the other.
Explanation- For the purposes of this
Act, the further application and the complete specification accompanying it
shall be deemed to have been filed on the date on which the complete
specification in pursuance of the first mentioned application has been filed,
and the further application shall, subject to the determination of the priority
date under sub-section (4) of section 11, be proceeded with as a substantive
application.
17. Power of
Controller to make orders respecting dating of application-
(1) Subject to the provisions of section 9, at any
time after the filing of an application and before acceptance of the complete
specification under this Act, the Controller may, at the request of the
applicant made in the prescribed manner, direct that the application shall be
post-dated to such date as may be specified in the request, and proceed with
the application accordingly.
Provided that no application shall be post-dated under this sub-section
to a date later than six months from the date on which it was actually made or
would, but for the provisions of this sub-section, be deemed to have been made.
(2) Where
an application or specification (including drawings) is required to be amended
under clause (b) of sub-section (1) of section 15, the application or
specification shall, if the Controller so directs, be deemed to have been made
on the date on which the requirement is complied with or where the application
or specification is returned to the applicant, on the date on which it is
re-filed after complying with the requirement.
18. Powers
of Controller in cases of anticipation-
(1) Where it appears to the Controller that the
invention so far as claimed in any claim of the complete specification has been
anticipated in the manner referred to in clause (a)
of subsection (1) or sub-section (2) of section 13, he may refuse to accept the
complete specification unless the applicant-
(a) Shows
to the satisfaction of the Controller that the priority date of the claim of
his complete specification is not later thin the date on which the relevant
document was published; or
(b) Amends
his complete specification to the satisfaction of the Controller.
(2) If it
appears to the Controller that the invention is claimed in a claim of any other
complete specification referred to in clause (b) of sub-section (1) of section
13, he may, subject to the provisions hereinafter contained, direct that a
reference to that other specification shall be inserted by way of notice to the
public in the applicant’s complete specification unless within such time as may
be prescribed-
(a) The
applicant shows to the satisfaction of the Controller that the priority date of
his claim is not later than the priority date of the claim of the said other
specification; or
(b) The
complete specification is amended to the satisfaction of the Controller;
(3) If it
appears to the Controller, as a result of an investigation under section 13 or
otherwise-
(a) That
the invention so far as claimed in any claim of the
applicant’s complete specification has been claimed in any other complete
specification referred to in clause (a) of sub-section (1) of section 13; and
(b) That
such other complete specification was published on or after the priority date
of the applicant’s claim, then, unless it is shown to the satisfaction of the
Controller that the priority date of the applicant’s claim is not later than
the priority date of the claim of that specification, the provisions of
sub-section (2) shall apply thereto in the same manner as they apply to a
specification published on or after the date of filing of the applicant’s
complete specification.
(4) Any
order of the Controller under sub-section (2) or sub-section (3) directing the
insertion of a reference to another complete specification shall be of no
effect unless and until the other patent is granted.
19. Powers of Controller in case of potential
infringement-
(1) If, in consequence of the investigations
required by the foregoing provisions of this Act or of proceedings under section
25, it appears to the Controller that an invention in respect of which an
application for a patent has been made cannot be performed without substantial
risk of infringement of a claim of any other patent, he may direct that a
reference to that other patent shall be inserted in the applicant’s complete
specification by way of notice to the public, unless within such time as may be
prescribed-
(a) The
applicant shows to the satisfaction of the Controller that there are reasonable
grounds for contesting the validity of the said claim of the other patent; or
(b) The
complete specification is amended to the satisfaction of the Controller.
(2) Where,
after a reference to another patent has been inserted in a complete
specification in pursuance of a direction under sub-section (l)-
(a) That other patent is
revoked or otherwise ceases to be in force; or
(b) The specification of that
other patent is amended by the deletion of the relevant claim; or
(c) It is
found, in proceedings before the court or the Controller, that the relevant
claim of that other patent is invalid or is not infringed by any working of the applicant’s
invention,
The Controller may, on the application of the
applicant, delete the reference to that other patent.
20. Powers of Controller to make orders regarding substitution of
applicants, Etc.-
(1) If the Controller is satisfied, on a claim made in the
prescribed manner at any time before a patent has been granted, that by virtue of
any assignment or agreement in writing made by the applicant or one of the
applicants for the patent or by operation of law, the claimant would, if the
patent were then granted, be entitled thereto or to the interest of the
applicant therein, or to an undivided share of the patent or of that interest,
the Controller may, subject to the provisions of this section, direct that the
application shall proceed in the name of the claimant or in the names of the
claimants and the applicant or the other joint applicant or applicants,
accordingly as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any
assignment or agreement made by one of two or more joint applicants for a
patent except with the consent of the other joint applicant or applicants.
(3) No such direction as aforesaid shall be
given by virtue of any assignment or agreement for the assignment of the
benefit of an invention unless-
(a) The
invention is identified therein by reference to the number of the application
for the patent; or
(b) There
is produced to the Controller an acknowledgment by the person by whom
the assignment or agreement was made that the assignment or agreement relates
to the invention in respect of which that application is
made; or
(c) The rights
of the claimant in respect of the invention have been finally established by
the decision of a court; or
(d) The
Controller gives directions for enabling the application to proceed or for
regulating the manner in which it should be proceeded with under sub-section
(15).
(4) Where
one of two or more joint applicants for a patent dies at any time before the
patent has been granted, the Controller may, upon a request in that behalf made
by the survivor or survivors and with the consent of the legal representative
of the deceased, direct that the application shall proceed in the name of the
survivor or survivors alone.
(5) If any
dispute arises between joint applicants for a patent whether or in what manner
the application should be proceeded with, the Controller may, upon application
made to him in the prescribed manner by any of the parties, and after giving to
all parties concerned an opportunity to be heard, give such directions as he
thinks fit for enabling the application to proceed in the name of one or more
of the parties alone or for regulating the manner in which it should be
proceeded with, or for both those purposes, as the case may require.
21. Time for putting application in order for
acceptance-
(1) An application for a patent shall be deemed to
have been abandoned unless within fifteen months from the date on which the
first statement of objections to the application or complete specification is
forwarded by the Controller to the applicant or within such longer period as
may be allowed under the following provisions of this section the applicant has
complied with all the requirements imposed on him by or under this Act, whether
in connection with the complete specification or otherwise in relation to the
application.
Explanation: - Where the application or
any specification or, in the case of a convention application, any document
filed, as part of the application has been returned to the applicant by the
Controller in the course of the proceedings, the applicant shall not be deemed
to have complied with such requirements’ unless and until he has re-filed it.
(2) The
period of fifteen months specified in sub-section (1) shall, on request made
by the applicant in the prescribed manner and before the expiration of the
period so specified, be extended for a further period, so requested (hereafter
in this section referred to as the extended period), so, however, that the
total period for complying with the requirements of the Controller does not
exceed eighteen months from the date on which the objections
referred to in sub-section, (1) are
forwarded to the applicant.
(3) If at
the expiration of the period of fifteen months specified in sub-section (1) or
the extended period-
(a) An
appeal to the High Court is pending in respect of the application for the
patent for the main invention; or
(b) In the
case of an application for a patent of addition, in appeal to the High
Court is pending in respect of either that application or the application for
the main invention,
The time within which the requirements of the Controller shall be
complied with shall, on an application made by the applicant before the
expiration of the said period of fifteen months or the extended
period, as the case may be, be extended until such date as the High Court may
determine.
(4) If the
time within which the appeal mentioned in sub-section (3) may be instituted has
not expired, the Controller may extend the period of fifteen months, or as the
case may be, the extended period, until the expiration of such further period
as he may determine.
Provided that if an appeal has been filed during the said further
period, and the High Court has granted any extension of time for complying
with, the requirements of the Controller, then, the requirements may be
complied with within the time granted by the Court.
22. Acceptance of complete specification- Subject to the provisions of
section 21, the complete specification filed in pursuance of an application for
a patent may be accepted by the Controller at any time after the applicant has
complied with the requirements mentioned in sub-section (1) of that section,
and, if not so accepted within the period allowed under that section for
compliance with those requirement, shall be accepted as soon as may be
thereafter.
Provided that the applicant may make an application to the Controller in
the prescribed manner requesting him to postpone acceptance until such date not
being later than eighteen months from the date on which the objections referred
to in sub-section (1) of section 21 are forwarded to the applicant as may be
specified in the application, and, if such application is made, the Controller
may postpone acceptance accordingly.
23. Advertisement of acceptance of complete
specification- On the acceptance of a complete specification,
the Controller shall give notice thereof to the applicant and shall advertise
in the Official Gazette the fact that the specification has been accepted, and
thereupon the application and the specification with the drawings (if any)
filed in pursuance thereof shall be open to public inspection.
24. Effect of
acceptance of complete specification:-On and from the date of advertisement of the
acceptance of a complete specification and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges
and rights as if a patent for the invention had been sealed on the date of
advertisement of acceptance of the complete specification-.
Provided that the applicant shall not be entitled to institute any
proceedings for infringement until the patent has been sealed.
EXCLUSIVE
MARKETING RIGHTS
1. Chapter –IVA Section 24A
to 24F, ins. by Act 17 of 1999, s. 3, w.e.f. 1.1.1995.
24A. Application for grant of exclusive rights-
(1) Notwithstanding anything contained in
sub-section (1) of section 12, the Controller shall not, under that sub-section,
refer an application in respect of a claim for a patent covered under
sub-section (2) of section 5 to an examiner for making a report till the 31st
day of December, 2004 and shall, where an application for grant of exclusive
right to sell or distribute the article or substance in India has been made in
the prescribed form and manner and on payment of prescribed fee, refer the
application for patent, to an examiner for making a report to him as to whether
the invention is not an invention within the meaning of this Act in terms of
section 3 or the invention is an invention for which no patent can be granted
in terms of section 4.
(2) Where
the Controller, on receipt of a report under sub-section (1) and after such
other inventigation as he may deed necessary, is satisfied that the invention
is not an invention within the meaning of this Act in terms of section 3 or the
invention is an invention for which no patent can be granted in terms
of section 4, he shall reject the application for exclusive right to sell or
distribute the article or substance.
(3) In a
case where an application for exclusive right to sell or distribute an article
or a substance is not rejected by the Controller on receipt of a report under
sub-section (1) and after such other investigation, if any, made by him, he may
proceed to grant exclusive right to sell or distribute the article or substance
in the manner provided in section 24B.
Explanation: -It is hereby clarified
that for the purposes of this section, the exclusive right to sell or
distribute any article or substance under this section shall not include an
article or substance based on the system of Indian medicine as defined in
clause (e) of sub-section (1) of section 2 of the Indian Medicine Central Council
Act, 1970 (48 of 1970), and where such article or substance is already in the
public domain.
24B. Grant of exclusive rights-
(1) Where
a claim for patent covered under sub-section (2) of section 5 has been made and
the applicant has, -
(a) Where
an invention has been made whether in India or in a Country other than Indian
and before filling such a claim, filed an application for the same invention
claiming identical article or substance in a convention country on or after the
Ist 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
(b) Where
an invention has been made in India and before filing such a claim, made a
claim for patent on or after the Ist 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 therefor on or after the date of
making a claim for patent covered under Sub-section (2) of section 5,
And has been received the approval to sell or distribute the article or
substance from the authority specified in this behalf by the Central
Government, then, he shall have the exclusive right by himself, his agents or
licensees to sell or distribute in India the article or the substance on and
from the date of approval granted by the Controller in this behalf till a
period of five years or till the date of grant of patent or the date of
rejection of application for the grant of patent, whichever is earlier.
(2) Where, the
specifications of an invention relatable to an article or a substance covered
under sub-section (2), of section 5 have been recorded in a document or the
invention has been tried or used, or, the article or the substance has been
sold, by a person, before a claim for a patent of that invention is made in
India or in a convention country, then, the sale or distribution of the
article or substance by such person, after the claim referred to above is made,
shall not be deemed to be an infringement of exclusive right to sell or
distribute under sub-section (1).
Provided that nothing in this sub-section shall apply in a case where a
person makes or uses an article or a substance with a view to sell or
distribute the same, the details of invention relatable thereto were given by a
person who was holding an exclusive right to sell or distribute the article or
substance.
24C. Compulsory
licences: - The provisions in relation to compulsory
licences in Chapter XVI shall, subject to the necessary modifications, apply in
relation to an exclusive right to sell or distribute under section 24B as they
apply to, and in relation to, a right under a patent to sell or distribute and
for that purpose the following modifications shall be deemed to have been made
to the provisions of that Chapter and all their grammatical variations and
cognate expressions shall be construed accordingly, namely:-
(a) Throughout
Chapter XVI,-
(i) Working
of -the invention shall be deemed to be selling or distributing of the article
or substance;
(ii) References
to “patents” 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”;
(b) Three
years from the date of sealing of a patent in section 84 shall be deemed to be
two years from the date of approval by the Controller for exclusive right to
sell or distribute under section 24B;
(c) The
time, which has elapsed since the sealing of a patent under section 85 shall be
deemed to be the time, which has elapsed since the approval, by the Controller
for exclusive right to sell or distribute under section 24B;
(d) Clauses
(d) and (e) of section 90 shall be omitted.
24D. Special
provision for selling or distribution-
(1) Without prejudice to the provisions of any
other law for the time being in force, where, at any time after an exclusive
right to sell or distribute any article or substance has been granted under
sub-section (1) of section 24B, the general Government is satisfied that it is
necessary or expedient in public interest to sell or distribute the article or
substance by a person other than a person to whom exclusive right has been
granted under sub-section (1) of section 24B; it may, by itself or through any
person authorised in writing by it in this behalf, sell or distribute the
article or substance.
(2) The
Central Government may, by notification in the Official Gazette and at any time
after an exclusive right to sell or distribute an article or a substance has
been granted, direct, in the public interest and for reasons to be stated, that
the said article or substance shall be sold at a price determined by an
authority specified by it in this behalf.
24E. Suits
relating to infringements- All suits relating to infringement of a right
under section 24B shall be dealt with in the same manner as if they are suits
concerning infringement of patents under Chapter XVIII.
24F. Central
Government and its officers not to be liable- The examination and
investigations required under this Chapter shall not be deemed in any way to
warrant the validity of any grant of exclusive right to sell or distribute, and
no liability shall be incurred by the Central Government or any officer thereof
by reason of, or in connection with, any such examination or investigation or
any report or other proceedings consequent thereon.]
CHAPTER V
OPPOSITION
TO GRANT OF PATENT
25. Opposition to grant of patent-
(1) At any time within four months from the date of
advertisements of the acceptance of a complete specification under this Act (or
within such further period not exceeding one month in the aggregate as the
Controller may allow on application made to him in the prescribed manner before
the expiry of the four months aforesaid) any person interested may give notice
to the Controller of opposition to the grant of the patent on any of the
following grounds, namely:
(a) That
the applicant for the patent or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person
under or through whom he claims;
(b) That
the invention so far as claimed in any claim of the complete specification has
been published before the priority date of the claim-
(i) In any
specification filed in pursuance of an application for a patent made in India
on or after the Ist day of January, 1912; or
(ii) In
India or elsewhere, in any other document.
Provided that the ground specified in sub-clause (ii) shall not be
available where such publication does not constitute an anticipation of the
invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) That
the invention so far as claimed in any claim of the complete specification is
claimed in a claim of a complete specification published on or after the
priority date of the applicant’s claim and filed in pursuance of an application
for a patent in India, being a claim of which the priority date is earlier than
that of the applicant’s claim;
(d) That
the invention so far as claimed in any claim of the complete specification was
publicly known or publicly used in India before the priority date of that
claim.
Explanation: - For the purposes of this
clause, an invention relating to a process for which a patent is claimed shall
be deemed to have been publicly known or publicly used in India before the
priority date of the claim if a product made by that process had already been
imported into India before that date except where such importation has been for
the purpose of reasonable trial or experiment only;
(e) That
the invention so far as claimed in any claim of the complete specification is
obvious and clearly does not involve any inventive step, having regard to the
matter published as mentioned in clause (b) or having regard to what was used
in India before the priority date of the applicant’s claim;
(f) That
the subject of any claim of the complete specification is not an invention within
the meaning of this Act, or is not patentable under this Act;
(g) That
the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
(h) That
the applicant has failed to disclose to the Controller the information required
by section 8, or has furnished the information, which in any material
particular was false to his knowledge;
(i) That
in the case of a convention application, the application was not made within
twelve months from the date of the first application for protection for the
invention made in a convention country by the applicant or a person from whom
he derives title, but on no other ground.
(2) Where any
such notice of opposition is duly given, the Controller shall notify the
applicant and shall give to the applicant and the opponent an opportunity to be
heard before deciding the case.
(3) The
grant of a patent shall not be refused on the ground stated in clause (c) of
sub-section (1) if no patent has been granted in pursuance of the application
mentioned in that clause; and for the purpose of any inquiry under clause (d)
or clause (e) of that sub-section, no account shall be taken of any secret use.
26. In cases of “obtaining” Controller may
treat application as application of opponent-
(1) Where in any opposition proceeding under this
Act-
(a) The
Controller finds that the invention, so far as claimed in any claim of the
complete specification, was obtained from the opponent in the manner set out in
clause (a) of sub-section (1) of section 25 and refuses the application on that
ground, he may, on request by such opponent made in the prescribed manner
direct that the application shall proceed in the name of the opponent as if the
application and the specification had been filed by the opponent on the date on
which they were actually filed;
(b) The
Controller finds that a part of an invention described
in the complete specification was so obtained from the, opponent and
passes an order requiring that the specification be amended by the exclusion of
that part of the invention, the opponent may, subject to the provisions of
subsection (2), file an application in accordance with the provisions of this Act
accompanied by a complete specification for the grant of a patent for the
invention so excluded from the applicant’s specification, and the Controller
may treat such application and specification as having been filed, for the
purposes of this Act relating to the priority dates of claims of the complete
specification, on the date on which the corresponding document was or was
deemed to have been filed by the earlier applicant, but for all other purposes
the application of the opponent shall be proceeded with as an application for a
patent under this Act.
(2) Where
an opponent has, before the date of the order of the Controller requiring the
amendment of a complete specification referred to in clause (b) of sub-section
(1), filed an application for a patent for an invention which includes the
whole or a part of the invention held to have been obtained from him and such
application is pending, the Controller may treat such application and
specification in so far as they relate to the invention held to have been
obtained from him, as having been
filed, for the purposes of this Act relating to the priority dates of claims of
the complete specification, on the date on which the corresponding document was
or was deemed to have been filed by the earlier applicant, but for all other
purposes the application of the opponent shall be proceeded with as an
application for a patent under this Act.
27. Refusal
of patent without opposition- If at any time after the acceptance before the
grant of a patent thereon it comes to the notice of the Controller otherwise
than in consequence of proceedings in opposition to the grant under section 25,
that the invention, so far as claimed in any claim of the complete
specification, has been published before the priority date of the claim-
(a) In any
specification filed in pursuance of an application for a patent made in India
and dated on or after the 1st
day of January, 1912;
(b) In any
other document in India or elsewhere,
The Controller may refuse to grant the patent
unless, within such time as may be prescribed, the complete specification is
amended to his satisfaction.
Provided that the Controller shall not refuse to grant the patent on the
ground specified in clause (b) if such publication does not constitute an anticipation
of the invention by virtue of sub-section (2) or sub-section (3) of section 29.
28. Mention
of inventor as such in patent-
(1) If the
Controller is satisfied, upon a request or claim made in accordance with the
provisions of this section-
(a) That
the person in respect of or by whom the request or claim is made is the
inventor of an invention in respect of which application for a patent has been
made, or of a substantial part of that invention; and
(b) That
the application for the patent is a direct consequence of his being the
inventor,
The Controller shall, subject to the provisions of this section, cause
him to be mentioned as inventor in any patent granted in pursuance of the
application in the complete specification and in the register of patents.
Provided that the mention of any person as inventor under this section
shall not confer or derogate from any rights under the patent.
(2) A
request that any person shall be mentioned as aforesaid may be made in the
prescribed manner by the applicant for the patent or (where the person alleged
to be the inventor is not the applicant or one of the applicants) by the
applicant and that person.
(3) If any
person [other than a person in respect of whom a request in relation to the
application in question has been made under sub-section (2)] desires to be
mentioned as aforesaid, he may make a claim in the prescribed manner in that
behalf.
(4) A
request or claim under the foregoing provisions of this section shall be made
not later than two months after the date of advertisement of acceptance of the
complete specification or within such further period (not exceeding one month)
as the Controller may, on an application made to him in that behalf before the
expiration of the said period of two months and subject to the payment of the
prescribed fee, allow.
(5) No
request or claim under the foregoing provisions of this section shall be roller
that the request or claim is based upon facts which, if proved in the case of
an opposition under the provisions of clause (a) of sub-section (1) of section
25 by the person in respect of or by whom the request or claim is made, would
have en-titled him to relief under that section.
(6) Subject
to the provisions of sub-section (5), where a claim is made under sub-section
(3), the Controller shall give notice of the claim to every applicant for the
patent (not being the claimant) and to any other person whom the Controller may
consider to be interested; and before deciding upon any request or claim made
under subsection (2) or sub-section (3), the Controller shall, if required,
hear the person in respect of or by whom the request or
claim is made, and, in the case of a claim under sub-section (3), any person to
whom notice of the claim has been given as aforesaid.
(7) Where
any person has been mentioned as inventor in pursuance of this section, any
other person who alleges that he ought not to have been so mentioned may at any
time apply to the Controller for a certificate to that effect, and the
Controller may, after hearing, if required, any person whom he may consider to
be interested, issue such a certificate, and if he does so, he shall rectify
the specification and the register accordingly.
CHAPTER VI
ANTICIPATION
29. Anticipation by previous publication-
(1) An invention claimed in a complete specification shall not be
deemed to have been anticipated by reason only that the invention was published
in a specification filed in pursuance of an application for a patent made in
India and dated before the 1st day of January 1912.
(2) Subject as hereinafter provided, an invention claimed in a
complete specification shall not be deemed to have been anticipated by reason
only that the invention was published before the priority date of the relevant
claim of the specification, if the patentee or the applicant for the patent proves-
(a) That
the matter published was obtained from him, or (where he is not himself the
true and first inventor) from any person from whom he derives title, and was
published without his consent or the consent of any such person; and
(b) Where
the patentee or the applicant for the patent or any person from whom he derives
title learned of the publication before the date of the application for the
patent, or in the case of a convention application, before the date of the
application for protection in a convention country, that the application or the
application in the convention country, as the case may be, was made as soon as
reasonably practicable thereafter.
Provided that this sub-section shall not apply if the invention was
before the priority date of the claim commercially worked in India, otherwise
than for the purpose of reasonable trial, either by the patentee or the
applicant for the patent or any person from whom he derives title or by any
other person with the consent of the patentee or the applicant for the patent
or any person from whom he derives title.
(3) Where a
complete specification is filed in pursuance of an application for a patent
made by a person being the true and first inventor or deriving title from him,
an invention claimed in that specification shall not be deemed to have been
anticipated by reason only of any other application for a patent in respect of
the same invention made in contravention of the rights of that person, or by
reason only that after the date of filing of that other application the
invention was used or published, without the consent of that person, by the
applicant in respect of that other application, or by any other person in
consequence of any disclosure of any invention by that applicant.
30. Anticipation
by previous communication to Government- An invention claimed in a complete specification shall not be deemed to
have been anticipated by reason only of the communication of the invention to
the Government or to any person authorised by the Government to investigate the
invention or its merits, or of anything done, in consequence of such a
communication, for the purpose of the investigation.
31. Anticipation
by public display, etc.-An invention claimed in a complete specification shall not be deemed to
have been anticipated by reason only of-
(a) The
display of the invention with the consent of the true and first inventor or a
person deriving title from him at an industrial or other exhibition to which
the provisions of this section have been extended by the Central Government by
notification in the Official Gazette, or the use thereof with his consent for
the purpose of such an exhibition in the place where it is held; or
(b) The
publication of any description of the invention in consequence of the display
or use of the invention at any such exhibition as aforesaid; or
(c) The use
of the invention, after it has been displayed or used at any such exhibition as
aforesaid and during the period of the exhibition, by any person without the
consent of the true and first inventor or a person deriving title from him; or
(d) The
description of the invention in a paper read by the true and first invent or
before a learned society or published with his consent in the transactions of
such a society;
If the application for the patent is made by the true and first inventor
or a person deriving title from him not later than six months after the opening
of the exhibition or the reading or publication of the paper, as the case may
be.
32. Anticipation
by public working- An invention claimed in a complete
specification shall not be deemed to have been anticipated by reason only that
at any time within one year before the priority date of the relevant claim of
the specification, the invention was publicly worked in India-
(a) By the
patentee or applicant for the patent or any person from whom he derives title;
or
(b) By any
other person with the consent of the patentee or applicant for the patent or
any person from whom he derives title,
If the working was effected for the purpose of reasonable trial only and
if it was reasonably necessary, having regard to the nature of the invention,
that the working for that purpose should be effected in public.
33. Anticipation by use and publication after
provisional specification-
(1) Where a complete specification is filed or proceeded with in pursuance
of an application which was accompanied by a provisional specification or where
a complete specification filed along with an
application is treated by virtue of a direction under sub-section (3) of
section 9, as a provisional specification, then, notwithstanding anything
contained in this Act, the Controller shall not refuse to grant the patent, and
the patent shall not be revoked or invalidated, by reason only that any matter
described in the provisional specification or in the specification treated as
aforesaid as a provisional specification was used in India or published in
India or elsewhere at any time after the date of the filing of that
specification.
(2) Where a
complete specification is filed in pursuance of a convention application, then,
notwithstanding anything contained in this Act, the Controller
shall not refuse to grant the patent, and the patent shall not be revoked or
invalidated, by reason only that any matter disclosed in any application for
protection in a convention country upon which the convention application is
founded was used in India or published in India or elsewhere at any time after
the date of that application for protection.
34. No anticipation if circumstances are only
as described in sections 29, 30, 31 and 32- Notwithstanding anything contained in this Act, the Controller shall not
refuse to accept a complete specification for a patent or to grant a patent,
and a patent shall not be revoked or invalidated by reason only of any
circumstances which, by virtue of section 29 or section 30 or section 31 or
section 32, do not constitute an anticipation of the invention claimed in the
specification.
CHAPTER
VII
PROVISIONS FOR
SECRECY OF CERTAIN INVENTIONS
35. Secrecy
directions relating to inventions relevant for defence purposes-
(1) Where, in respect of an application made before
or after the commencement of this Act for a patent, it appears to the
Controller that the invention is one of a class notified to him by the Central
Government as relevant for defence purposes, or, where otherwise the
invention appears to him to be so relevant, he may give directions for
prohibiting or restricting the publication of information with respect to the
invention or the communication of such information to any person or class of
persons specified in the directions.
(2) Where
the Controller gives any such directions as are referred to in sub-section (1),
he shall give notice of the application and of the directions to the Central
Government, and the Central Government shall, upon receipt of such notice,
consider whether the publication of the invention would be prejudicial to the
defence of India, and if upon such consideration, it appears to it that the
publication of the invention would not so prejudice, give notice to the Controller
to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.
(3) Without
prejudice to the provisions contained in sub-section (1), where the Central
Government is of opinion that an invention in respect of which the Controller his not given any directions under sub-section (1), is relevant for
defence purposes, it may at any time before acceptance of the complete
specification notify the Controller to that effect, and thereupon the
provisions of that subsection shall apply as if the invention were one of the
class notified by the Central Government, and accordingly the Controller shall
give notice to the Central Government of the directions issued by him.
36. Secrecy directions to be periodically
reviewed-
(1) The question whether an invention in respect of
which directions have been given under section 35 continues to be relevant for
defence purposes shall be re-considered by the Central Government within nine
months from the date of issue of such directions and thereafter at intervals
not exceeding twelve months, and if, on such re-consideration it appears to the
Central Government that the publication of the invention would no longer be
prejudicial to the defence of India it shall forthwith give notice to the Controller
accordingly and the Controller shall thereupon revoke the directions previously
given by him.
(2) The
result of every re-consideration under sub-section (1), shall be communicated
to the applicant within such time and in such manner as may prescribed.
37. Consequences of secrecy directions-
(1) So long as any directions under section 35 are
in force in respect of an application-
(a) The
Controller shall not pass an order refusing to accept the same; and
(b) Notwithstanding
anything contained in this Act, no appeal shall lie from any order of the
Controller passed in respect thereof.
Provided that the application may, subject to the directions, proceed up
to the stage of the acceptance of the complete specification, but the
acceptance shall not be advertised nor the specification published, and n6
patent shall be granted in pursuance of the application.
(2) Where a
complete specification filed in pursuance of an application for a patent for an
invention in respect of which directions have been given under section 35 is
accepted during the continuance in force of the directions, then-
(a) If,
during the continuance in force of the directions; any use of the invention is
made by or on behalf of, or to the order of the Government, the provisions of
sections 100, 101 and 103 shall apply in relation to that use as if the patent
had been granted for the invention; and
(b) If it
appears to the Central Government that the applicant for the patent has suffered hardship by reason of the continuance in force of the
directions, the Central Government may make to him such payment (if any) by way
of solatium as appears to the Central Government to be reasonable having regard
to the novelty and utility of the invention and the
purpose for which it is designed, and to any other relevant circumstances.
(3) Where a
patent is granted in pursuance of an application is respect of which directions
have been given under section 35, no renewal fee shall be payable in respect of
any period during which those directions were in force.
38. Revocation of secrecy directions and
extension of time- When any direction given under section 35 is
revoked by the Controller, then, notwithstanding any provision of this Act
specifying the time within which any step should be taken or any act done in
connection with an application for the patent, the Controller may, subject to
such conditions, if any, as he thinks fit to impose, extend the time for doing
anything required or authorised to be done by or under this Act in connection
with the application, whether or not that time has previously expired.
1[39. Residents
not to apply for patents outside India without prior permission: -
1. Section
39 omitted by Act 17 of 1999,s. 4, w.e.f. 01.01.1995.
40. Liability for
contravention of section 35 or section 39- Without prejudice to the
provisions contained in Chapter XX, if in respect of an application of a patent any person contravenes any direction as to secrecy given by the Controller
under section 35 1[***] the application for patent under this Act shall be
deemed to have been abandoned and the patent granted, if any, shall be
liable to be revoked under section 64.
1. The
words “or makes or causes to be made an application for the grant of a patent
outside India in contravention of section 39,” omitted by Act 17 of 1999, s. 5,
w.e.f. 1.1.1995.
41. Finality of orders of Controller and Central Government- All orders of the Controller giving directions as to secrecy as well as
all orders of the Central Government under this Chapter shall be final and
shall not be called in question in any court on any ground whatsoever.
42. Savings respecting disclosure to Government- Nothing in this Act shall be held to prevent the disclosure by the
Controller of information concerning an application for a patent or a
specification filed in pursuance thereof to the Central Government for the
purpose of the application or specification being examined for considering
whether an order under this Chapter should be made or whether an order so made
should be revoked.
CHAPTER-VIII
GRANT AND
SEALING OF PATENTS AND RIGHTS CONFERRED
THEREBY
43. Grant and sealing of patent-
(1) Where a complete specification in pursuance of
an application for a patent has been accepted and either-
(a) The
application has not been opposed under section 25 and the time for the filing
of the opposition has expired; or
(b) The
application has been opposed and the opposition has been finally decided in
favour of the applicant; or
(c) The
application has not been refused by the Controller by virtue of
any power vested in him by this Act,
The patent shall, on request made by the applicant in the prescribed
form, be granted to the applicant or, in the case of a joint application, to
the applicants jointly, and the Controller shall cause the patent to be sealed
with the seal of the patent office and the date on which. the patent is sealed
shall be entered in the register.
(2) Subject
to the provisions of sub-section (1) and of the provisions of this Act with
respect to patents of addition, a request under this section for the sealing of
a patent shall be made not later than the expiration of a period of six months
from the date of advertisement of the acceptance of the complete specification.
Provided
that-
(a) Where
at the expiration of the said six months any proceeding in relation to the application for the patent is pending before the Controller or the
High Court, the request may be made within the prescribed period after the
final determination of that proceeding;
(b) Where
the applicant or one of the applicants has died before the expiration of the
time within which under the provisions of this subsection the request could
otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as
the Controller may allow.
(3) The
period within which under sub-section (2) a request for the sealing of a patent
may be made may, from time to time, be extended by the Controller to such longer period as may be specified in an application made to him in that
behalf, if the application is made and the prescribed fee paid within that
longer period.
Provided that the first-mentioned period shall not be extended under
this sub-section by more than three months in the aggregate.
Explanation: - For the purposes of this
section a proceeding shall be deemed to be pending so long as the time for any
appeal therein (apart from any future extension of that time) has not expired, and a proceeding shall be deemed to be finally determined
when the time for any appeal therein (apart from any such extension) has
expired without the appeal being brought.
44. Amendment of patent granted to deceased applicant- Where, at any time after a patent has been sealed in pursuance of an
application under this Act, the Controller is satisfied that the person to whom
the patent was granted had died, or, in the case of a
body corporate, had ceased to exist, before the patent was sealed, the
Controller may amend the patent by substituting for the name of that person the
name of the person to whom the patent ought to have been granted, and the
patent shall have effect, and shall be deemed always to have had effect,
accordingly.
(1) Subject to the other provisions contained in
this Act, every patent shall be dated as of the date on which the complete
specification was filed.
Provided that a patent which is granted in pursuance of an application
to which any directions issued under section 78C of the Indian Patents and
Designs Act, 1911 (2 of 1911), applied immediately before the commencement of
this Act, shall be dated as of the date of the filing of the complete
specification or the date of such commencement whichever is later.
(2) The date of every
patent shall be entered in the register.
(3) Notwithstanding
anything contained in this section, no suit or other proceeding shall be
commenced or prosecuted in respect of an infringement committed before the date
of advertisement of the acceptance of the complete specification.
46. Form, extent and effect of
patent-
(1) Every patent shall be in the prescribed form
and shall have effect throughout India.
(2) A
patent shall be granted for one invention only.
Provided that it shall not be competent for any person in a suit or
other proceeding to take any objection to a patent on the ground that it has
been granted for more than one invention.
47. Grant of patents to be subject to certain
conditions- The grant of a patent under this Act shall be
subject to the condition that-
(1) 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;
(2) 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;
(3) 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
(4) 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 medical
institution which the Central Government may, having regard to the public
service that such dispensary, hospital or medical institution renders, specify
in this belief by notification in the Official
Gazette.
(1) Subject to the other provisions contained in
this Act, a patent granted before the commencement of this Act, shall confer on
the patentee the exclusive right by himself, his agents for licensees to make,
use, exercise, sell or distribute the invention in India.
(2) Subject
to the other provisions contained in this Act and the conditions specified in
section 47, a patent granted after the commencement of this Act shall confer
upon the patentee-
(a) Where
the patent is for an article or substance, the exclusive right by himself, his
agents or licensees to make, use, exercise, sell or distribute such article or
substance in India;
(b) Where a
patent is for a method or process of manufacturing an article or substance, the
exclusive right by himself, his agents or licensees to use or exercise the
method or process in India.
49. Patent rights not infringed when used on
foreign vessels, etc., temporarily or
accidentally in India-
(1) Where a vessel or aircraft registered in a
foreign country or a land vehicle owned by a person ordinarily
resident in such country comes into India (including the territorial waters
thereof) temporarily or accidentally only, the rights conferred by a patent for
an invention shall not be deemed to be infringed by the use of the invention-
(a) In the
body of the vessel or in the machinery, tackle, apparatus or other accessories
thereof, so far as the invention is used on board the vessel and for its actual
needs only; or
(b) In the
construction or working of the aircraft or land vehicle or of the accessories
thereof, as the case may be.
(2) This
section shall not extend to vessels, aircraft or land vehicles owned by persons
ordinarily resident in a foreign country the laws of which do not confer
corresponding rights with respect to the use of inventions in vessels,
aircrafts or land vehicles owned by persons ordinarily resident in India while
in the ports or within the territorial waters of that foreign country or
otherwise within the jurisdiction of its courts.
50. Rights
of co-owners of patents-
(1) Where
a patent is granted to two or more persons, each of those persons shall, unless
an agreement to the contrary is in force, be entitled to an equal undivided
share in the patent.
(2) Subject
to the provisions contained in this section and in section 51, where
two or more persons are registered as grantee or proprietor of a patent, then,
unless an agreement to the contrary is in force, each of those persons shall be
entitled, by himself or his agents, to make, use, exercise and sell the
patented invention for his own benefit without accounting to the other person
or persons.
(3) Subject
to the provisions contained in this section and in section 51 and to any
agreement for the time being in force, where two or more persons are registered
as grantee or proprietor of a patent, then, a licence under the patent shall
not be granted and a share in the patent shall not be assigned by one of such
persons except with the consent of the other person or persons.
(4) Where a
patented article is sold by one of two or more persons registered as grantee or
proprietor of a patent, the purchaser and any person claiming through him shall
be entitled to deal with the article in the same manner as if the article had
been sold by a sole patentee.
(5) Subject
to the provisions contained in this section, the rules of law applicable to the
ownership and devolution of movable property generally shall apply in relation
to patents, and nothing contained in sub-section (1) or sub-section (2) shall
affect the mutual rights or obligations of trustees or of the legal
representatives of a deceased person or their rights or obligations is such.
(6) Nothing
in this section shall affect the rights of the assignees of a partial interest
in a patent created before the commencement of this Act.
51. Power of Controller to give directions to
co-owners-
(1) Where two or more persons are registered as grantee or proprietor of a
patent, the Controller may, upon application made to him in the
prescribed manner by any of those persons, give such directions in accordance
with the application as to the sale or lease of the patent or any interest
therein, the grant of licences under the patent, or the exercise of July right under section 50 in relation thereto, as he thinks fit.
(2) If any
person registered as grantee or proprietor of a patent fails to execute any
instrument or to do any other thing required for the carrying out of any
direction given under this section within fourteen days after being requested
in writing so to do by any of the other persons so registered, the Controller
may, upon application made to him in the prescribed manner by any such other
person, give directions empowering any person to execute that instrument or to
do that thing in the name and on behalf of the person in default.
(3) Before
giving any directions in pursuance of an application under this section, the
Controller shall give an opportunity to be heard-
(a) In the case of an application under sub-section
(1), to the other person or persons registered as grantee or proprietor of the
patent;
(b) In the
case of an application under sub-section (2), to the person in default.
(4) No
direction shall be given under this section so as to affect the mutual rights
or obligations of trustees or of the legal representatives of a deceased person
or of their rights or obligations as such, or which is inconsistent with the
terms of any agreement between persons registered as grantee or proprietor of
the patent.
52. Grant of patent to true and first inventor
where it has been obtained by another in fraud of him-
(1) Where a patent has been revoked on the ground
that the patent was obtained wrongfully and in
contravention of the rights of the petitioner or any person under or through
whom he claims, or, where in a petition for revocation, the court, instead of
revoking the patent, directs the complete specification to be amended by the
exclusion of a claim or claims in consequence of a finding that the invention
covered by such claim or claims had been obtained from the petitioner, the court may, by order passed in the same proceeding, permit the grant to
the petitioner of the whole or such part of the invention which the court finds
has been wrongfully obtained by the patentee, in lieu of the patent so revoked
or is excluded by amendment.
(2) Where
any such order is passed, the Controller shall, on request by the petitioner made in the prescribed manner grant to him-
(i) In
cases where the court permits the whole of the patent to be granted, a
new patent bearing the same date and number as the patent revoked;
(ii) In
cases where the court permits a part only of the patent to be
granted, a new patent for such part bearing the same date as the
patent revoked and numbered in such manner as may be prescribed.
Provided that the Controller may, as a condition of such grant, require the
petitioner to file a new and complete specification to the satisfaction of the
Controller describing and claiming that part of the invention for which the
patent is to be granted.
(3) No suit
shall be brought for any infringement of a patent granted under this section
committed before the actual date on which such patent was granted.
(1) Subject to the provisions of this Act, the term
of every patent granted under this Act shall-
(a) In
respect of an invention claiming the method or process of manufacture of a
substance, where the substance is intended for use, or is capable of being
used, as food or as a medicine or drug, be five years from the date of sealing
of the patent, or seven years from the date of the patent whichever period is
shorter; and
(b) In
respect of any other invention, be fourteen years from the date of the patent.
(2) A
patent shall cease to have effect notwithstanding anything therein or in this Act
on the expiration of the period prescribed for the payment of any renewal fee,
if that fee is not paid within the prescribed period or within that period as
extended under this section.
(3) The
period prescribed for the payment of any renewal fee shall be extended to such
period, not being more than six months longer than the prescribed period, as
may be specified in a request made to the Controller if the request is made and
the renewal fee and the prescribed additional fee paid before the expiration of
the period so specified.
CHAPTER
IX
PATENTS
OF ADDITION
(1) Subject to the provisions contained in this section, where an
application is made for a patent in respect of any
improvement in or modification of an invention described or disclosed in the
complete specification filed therefor (in this Act referred to as the “main
invention”) and the applicant also applies or has applied for a patent for that
invention or is the patentee in respect thereof, the Controller may, if the
applicant so requests, grant the patent for the improvement or modification as
a patent of addition.
(2) Subject
to the provisions contained in this section, where an invention, being an
improvement in or modification of another invention, is the subject of an
independent patent and the patentee in respect of that patent is also the
patentee in respect of the patent for the main invention, the Controller may,
if the patentee so requests, by order, revoke the patent for the improvement or
modification and grant to the patentee a patent of addition in respect thereof,
bearing the same date as the date of the patent so revoked.
(3) A
patent shall not be granted as a patent of addition unless the date of filing
of the complete specification was the same as or later than the date of filing
of the complete specification in respect of the main invention.
(4) A
patent of addition shall not be sealed before the sealing of the patent for the
main invention, and if the period within which, but for the provisions of this
sub-section, a request for the
sealing of a patent of addition could be made under section 43 expires before
the period within which a request for the sealing of the patent for the main
invention may be so made, the request for the sealing of the patent of addition
may be made at any time within the last mentioned period.
55. Term of
patents of addition-
(1) A
patent of addition shall be granted for a term equal to that of the patent for
the main invention, or so much thereof as has not expired, and shall remain in
force during that term or until the previous cesser of the patent for the main
invention and no longer.
Provided that if the patent for the main invention is revoked under this
Act, the court, or, as the case may be, the Controller, on request made to him
by the patentee in the prescribed manner, may order that the patent of addition
shall become an independent patent for the remainder of the term for the patent
for the main invention and thereupon the patent shall continue in force as an
independent patent accordingly.
(2) No
renewal fees shall be payable in respect of a patent of addition, but if any
such patent becomes an independent patent under sub-section (1), the same fees
shall thereafter be payable, upon the same dates, as if the patent had been
originally granted is an independent patent.
56. Validity
of patents of addition-
(1) The
grant of a patent of addition shall not be refused, and a patent granted as a
patent of addition shall not be revoked or invalidated, on the ground only that
the invention claimed in the complete specification does not involve any
inventive step having regard to any publication or use of-
(a) The
main invention described in the complete specification relating thereto; or
(b) Any
improvement in or modification of the main invention described in the complete
specification of a patent of addition to the patent for the main invention or
of an application for such a patent of addition,
And the validity of a patent of addition shall not be questioned on the
ground that the invention ought to have been the subject of an independent
patent.
(2) For the
removal of doubts it is hereby declared that in determining the novelty of the
invention claimed in the complete specification filed in pursuance of an
application for a patent of addition regard shall be had also to the complete
specification in which the main invention is described.
CHAPTER- X
AMENDMENT OF APPLICATIONS AND SPECIFICATIONS
57. Amendment
of application and specification before Controller-
(1) Subject
to the provisions of section 59, the Controller may, upon application made
under this section in the prescribed manner by an applicant for a patent or by
a patentee, allow the application for the patent or the complete specification
to be amended subject to such conditions, if any, as the Controller thinks fit.
Provided that the Controller shall not pass any order allowing or
refusing an application to amend an application for a patent or a specification
under this section while any suit before a Court for the infringement of the
patent or any proceeding before the High Court for the revocation of the patent
is pending, whether the suit or proceeding commenced before or after the filing
of the application to amend.
(2) Every
application for leave to amend an application
for a patent or a specification under this section made after the acceptance of
the proposed amendment, and shall give full particulars of the reasons for
which the application is made.
(3) Every
application for leave to amend an application for a patent or a specification
under this section made after the acceptance of the complete specification and
the nature of the proposed amendment shall be advertised in the prescribed
manner.
(4) Where
an application is advertised under sub-section (3), any person interested may,
within the prescribed period after the advertisement thereof, give notice to
the Controller of opposition thereto; and where such a notice is given within
the period aforesaid, the Controller shall notify the person by whom the
application under this section is made and shall give to that person and to the
opponent an opportunity to be heard before he decides the case.
(5) An
amendment under this section of a complete specification may be, or include, an
amendment of the priority date of a claim.
(6) The
provisions of this section shall be without prejudice to the right of an
applicant for a patent to amend his specification to comply with the directions
of the Controller issued before the acceptance of the complete specification or
in the Course of proceedings in opposition to the grant of a patent.
58. Amendment
of specification before High Court-
(1) In any
proceeding before the High Court for the revocation of a patent, the High Court
may, subject to the provisions contained in section 59, allow the patentee to
amend his complete specification in such manner and subject to such terms as to
costs, advertisement or otherwise, as the High Court may think fit, and if in
any proceedings for revocation the High Court decides that the patent is
invalid, it may allow the specification to be amended under this section
instead of revoking the patent.
(2) Where
in application for an order under this section is made to the High Court, the
applicant shall give notice of the application to the Controller, and the
Controller shall be entitled to appear and be heard, and shall appear if so
directed by the High Court.
(3) Copies
of all orders of the High Court allowing the patentee to amend the
specification shall be transmitted by the High Court to the Controller
who shall on receipt thereof cause an entry thereof and reference thereto to be
made in the register.
59. Supplementary provisions as to amendment of
application or specification-
(1) No amendment of an application for a patent or
a complete specification shall be made except by way of disclaimer, correction
or explanation, and no amendment thereof shall be allowed, except for the
purpose of correcting an obvious mistake, and no amendment of a complete
specification shall be allowed the effect of which would be that the
specification as amended would claim or describe matter not in substance
disclosed in the specification before the amendment, or that any claim of the specification as amended
would not fall wholly within the scope of a claim of the
specification before the amendment.
(2) Where
after the date of advertisement of acceptance of a complete specification, any amendment of the specification is allowed by the Controller or by the High Court, -
(a) The
amendment shall for all purposes be deemed to form part of the specification;
(b) The fact
that the specification has been amended shall be advertised in the Official
Gazette; and
(c) The
right of the applicant or patentee to make amendment shall not be called in
question except on the ground of fraud.
(3) In
construing the specification as amended, reference may be made to the
specification as originally accepted.
CHAPTER
XI
RESTORATION
OF LAPSED PATENTS
60. Applications for restoration of lapsed
patents-
(1) Where a patent has ceased to have effect by reason of failure
to pay any renewal fee within the prescribed
period or within that period as extended under sub-section (3) of section 53,
the patentee or his legal representative, and 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 one year from the date on which
the patent ceased to have effect, make an application for the restoration of
the patent.
(2) The
provisions of sub-section (1) shall also apply to patents granted before
the commencement of this Act, subject to the modification that for the
reference to the prescribed period or to sub-section (3) of section 53, there shall be substituted reference to the period prescribed
therefor under the Indian Patents and Designs Act, 1911 (2 of 1911) or to
sub-section (2) of section 14 of that Act.
(3) An
application under this section shall contain a statement, verified in the
prescribed manner fully setting Out the circumstances which led to the failure
to pay the prescribed fee, and the Controller may require from the applicant
such further evidence as he may think necessary.
61. Procedure for disposal of
applications for restoration of lapsed patents-
(1) If,
after hearing the applicant in cases where the applicant so desires or the
Controller thinks fit, the Controller is prima facie satisfied that the failure
to pay the renewal fee was unintentional and that there has been no undue delay
in the making of the application, lie shall advertise the application in the
prescribed manner and within th6 prescribed period any person interested may
give notice to the Controller of opposition thereto on either or both of the
following grounds, that is to say-
(a) That the failure to pay the
renewal fee was not unintentional; or
(b) That
there has been undue delay in the making of the application.
(2) If
notice of opposition is given within the period aforesaid, the Controller shall
notify the applicant, and shall give to him and to the opponent an opportunity
to be heard before he decides the case.
(3) If no
notice of opposition is given within the period aforesaid or if in the case of
opposition, the decision of the Controller is in favour of the applicant, the
Controller shall, upon payment of any unpaid renewal fee and such additional
fee as may be prescribed, restore the patent and any patent of addition
specified in the application which has ceased to have effect on the cesser of
that patent.
(4) The
Controller may, if he thinks fit, as a condition of restoring the patent, require
that an entry shall be made in the register of any document or matter which,
Under the provisions of this Act, has to be entered in the register but which
has not been so entered.
62. Rights
of patentees of lapsed patents which have been restored-
(1) Where a
patent is restored, the rights of the patentee shall be subject to such
provisions as may be prescribed and to such other provisions as the Controller
thinks fit to impose for the protection or compensation of persons who may have
begun to avail themselves of, or have taken definite steps by contract or
otherwise to avail themselves of, the patented invention between the date when
the patent ceased to hive effect and the date of the advertisement of the
application for restoration of the patent under this Chapter.
(2) No suit
or other proceeding shall be commenced or prosecuted in respect of an
infringement of a patent committed between the date on which the patent ceased
to have effect and the date of the advertisement of the application for restoration
of the patent.
CHAPTER-XII
SURRENDER AND REVOCATION OF PATENTS
(1) A
patentee may, at any time by giving notice in the prescribed manner to the
Controller, offer to surrender his patent.
(2) Where
such an offer is made, the Controller shall 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.
(3) Any
person interested may, within 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.
(4) If the
Controller is satisfied after hearing the patentee and any opponent, if
desirous of being heard, that the patent may properly be surrendered, he may
accept the offer and, by order, revoke the patent.
(1) Subject
to the provisions contained in this Act, a patent, whether granted before or after
the commencement of this Act, may, on the petition of any person interested or
of the Central Government or on a counter claim in a suit for infringement of
the patent, be revoked by the High Court on any of the following grounds, that
is to say-
(a) That
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;
(b) That
the patent was granted on the application of a person not entitled under the
provisions of this Act to apply therefor.
Provided that a patent granted under the Indian Patents and Designs Act,
1911 (2 of 1911) shall not be revoked on the ground that the applicant was the
communicates or the importer of the invention in India and therefore not
entitled to make an application for the grant of a patent under this Act;
(c) That
the patent was obtained wrongfully in contravention of the rights of the
petitioner or any person under or through whom he claims;
(d) That
the subject of any claim of the complete specification is not an invention
within the meaning of this Act;
(e) That
the invention so far as claimed in any claim of the complete specification 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;
Provided that in relation to patents granted under the Indian Patents
and Designs Act, 1911 (2 of 1911.), this clause shall have effect as if the
words “or elsewhere” had been omitted;
(f) That
the invention so far as claimed in any claim of the complete specification 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.
Provided that in relation to patents granted under the Indian Patents
and Designs Act, 1911 (2 of 1911), this clause shall have effect as if the
words “or elsewhere” had been omitted;
(g) That
the invention, so far as claimed in any claim of the complete specification, is
not useful;
(h) That
the complete specification does not sufficiently and fairly describe the
invention and the method by which it is to be performed, that is to say, that
the description of the method or the instructions for the working of the
invention, as contained in the complete specification are not by themselves
sufficient to enable a person in India possessing average skill in, and average
knowledge of, the art to which the invention relates, to work the invention, or
that it does not disclose the best method of performing it which was known to
the applicant for the patent and for which he was entitled to claim protection;
(i) That
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;
(j) That the patent was obtained on a false
suggestion or representation;
(k) That
the subject of any claim of the complete specification is not patentable under
this Act;
(l) That
the invention so far as claimed in any claim of the complete specification was
secretly used in India, otherwise thin as mentioned in sub-section (3), before
the priority date of the claim;
(m) That the
applicant for the patent has failed to disclose to the Controller the
information required by section 8 or has furnished information, which in any
material particular was false to his knowledge;
(n) That
the applicant contravened any direction for secrecy passed under section 35 1[***];
(o) That
leave to amend the complete specification under section 57 or section 58 was
obtained by fraud.
(2) For the purposes of
clauses (e) and (f) of subsection (I-),-
(a) No
account shall be taken of secret use; and
(b) Where
the patent is for a process or for a product as made by a process described or
claimed, the importation into India of the product made abroad by the process
shall constitute knowledge or use in India of the invention on the date of the
importation, except where such importation has been for the purpose of
reasonable trial or experiment only.
(3) For the purpose of clause
(1) of sub-section (1), no account shall be taken of any use of the invention-
(a) For the purpose of
reasonable trial or experiment only; or
(b) By the
Government or by any person authorised by the Government or by a Government
undertaking, in consequence of the applicant for the patent or any person from
whom be derives title having communicated or disclosed the invention directly
or indirectly to the Government or person authorised as aforesaid or to the
Government undertaking; or
(c) By any
other person, in consequence of the applicant for the patent or any person from
whom he derives title having communicated or disclosed the invention, and
without the consent or acquiescence of the applicant it or of any person from
whom he derives title.
(4) Without
prejudice to the provisions contained in sub-section (1), a patent may be
revoked by the High Court on the petition of the Central Government, if the
High Court is satisfied that the patentee has without reasonable cause failed
to comply with the request of the Central Government to make, use or exercise
the patented invention for the purposes of Government within the meaning of
section 99 upon reasonable terms.
(5) A
notice of any petition for revocation of a patent Under this section shall be
served on all persons appearing from the register to be proprietors of that
patent or to have shares or interests therein and it shall not be necessary to
serve a notice on inv other person.
1. The
words “or made or caused to be made an application for the grant of a Patent
Outside India in contravention of Section 39” omitted by Act 17 of 1999, s. 6,
w.e.f. 1. 1. 19995.
(1) Where
at any time after acceptance of a complete specification, the Central
Government is satisfied that an application for a patent or a patent is for ail
invention relating to atomic energy for which no patent can be granted under
sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962), it
may direct the Controller to refuse to proceed further with the application or
to revoke the patent, as the case may be, and thereupon the Controller, after
giving notice to the applicant or, as the case may be, to the patentee and
every other person whose name has been entered in the register as having an
interest in the patent, and after giving them an opportunity of being heard,
may refuse to proceed further with the application or may revoke the patent.
(2) In
any proceedings under sub-section (1), the Controller may allow the
applicant for the patent or the patentee to amend the complete specification in
such manner, as he considers necessary instead of refusing to proceed with the
application or revoking the patent.
66. Revocation of patent in public interest- Where the
Central Government is of opinion that a patent or the mode in which it is exercised
as mischievous to the State or generally prejudicial to the public, it may,
after giving the patentee an opportunity to be heard, make a declaration to
that effect in the Official Gazette and thereupon the patent shall be deemed
to be revoked.
CHAPTER-XIII
REGISTER
OF PATENTS
67. Register of patents and particulars to be entered therein-
(1) There shall be kept at the patent office a register of patents, wherein shall
be entered-
(a) The names
and addresses of grantees of patents;
(b) Notifications
of assignments and of transmissions of patents, of licences under patents and
of amendments, extensions, and revocations of patents; and
(c) Particulars
of such other matters affecting the validity or proprietorship of patents as
may be prescribed.
(2) No
notice of any trust, whether express, implied or constructive, shall be entered
in the register, and the Controller shall not be affected by any such notice.
(3) Subject
to the superintendence and direction of the Central Government, the register
shall be kept under the control and management of the Controller.
(4) For the
removal of doubts, it is hereby declared that the register of patents existing
at the commencement of this Act shall be incorporated in, and form part of, the
register under this Act.
68. Assignments, etc. not to be valid unless in
writing and registered- An assignment of a patent or of a share in a
patent, a mortgage, licence or the creation of any other interest in a patent
shall not be valid unless the same wee in writing and the agreement between the
parties concerned is reduced to the form of a document embodying all the terms
and conditions governing their rights and obligations and the application for
registration of such document is filed in the prescribed manner with the
Controller within six months from the commencement of this Act or the execution
of the document, whichever is later
or within such further period not exceeding six months in the aggregate as the
Controller on application made in the prescribed manner allows.
Provided that the document shall, when registered, have effect from the
date of its execution.
69. Registration of assignments, transmissions, etc.-
(1) Where any person becomes entitled by
assignment, transmission or operation of law to a patent or to a share in a
patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he
shall apply in writing in the prescribed manner to the Controller
for the registration of his title or, as the case may be, of notice
of his interest in the register.
(2) Without
prejudice to the provisions of sub-section (1), an application for the
registration of the title of any person becoming entitled by assignment to a
patent or a share in a patent or becoming entitled by virtue of a mortgage,
licence or other instrument to any other interest in a patent may be made in
the prescribed manner by the assignor, mortgagor, licensor or other party to
that instrument, as the case may be.
(3) Where
an application is made under this section for the registration of the title of
any person, the Controller shall, upon proof of title to his satisfaction-
(a) Where
that person is entitled to a patent or share in a patent, register
him in the register as proprietor or co-proprietor of the patent, and enter in
the register particulars of the instrument or event by which he derives title;
or
(b) Where that
person is entitled to any other interest in the patent, enter in the register
notice of his interest, with particulars of the instrument, if any, creating
it.
Provided that if there is any dispute between the parties whether the
assignment, mortgage, licence, transmission, operation of law or any other such
transaction has validly vested in such person a title to the patent or any
share or interest therein, the Controller may refuse to take any action under
clause (a) or, as the case may be under clause (b), until the rights of the
parties have been determined by competent court.
(4) There
shall be supplied to the Controller in the prescribed manner for being filed in
the patent office copies of all agreements, licences and other documents
affecting the title to any patent or any licence thereunder authenticated in
the prescribed manner and also such other documents as may be prescribed
relevant to the subject-matter.
Provided that in the case of a licence granted under a patent, the
Controller shall, if so requested by the patentee or licensee, take steps for
securing that the terms of the licence are not disclosed to any person except
under the order of a court.
(5) Except
for the purposes of an application under sub-section (1) or of an application
to rectify the register, a document in respect of which no entry has been made
in the register under sub-section (31) shall not be admitted by the Controller
or by any court as evidence of the title of any person to a patent or to a
share or interest therein unless the Controller or the Court, for reasons to be
recorded in writing, otherwise directs.
70. Power of
registered grantee or proprietor to deal with patent- Subject
to the provisions contained in this Act relating to co-ownership of
patents and subject also to any rights vested in any other person of which
notice is entered in the register, the person or persons registered as grantee
or proprietor of a patent shall have power to assign, grant licences under, or
otherwise deal with, the patent and to give effectual receipts for any
consideration for any such assignment, licence or dealing.
Provided that any equities in respect of the patent may be enforced in
like manner as in respect of any other movable property.
71. Rectification
of register by High Court-
(1) The
High Court may, on the application of any person aggrieved-
(a) By the absence or
omission from the register of any entry; or
(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,
Make such order for the making, variation or deletion, of any entry
therein as it may think fit.
(2) In any
proceeding under this section the High Court may decide any question this may
be necessary or expedient to decide in connection with the rectification of the register.
(3) Notice
of any application to the High Court under this section shall be given in the
prescribed manner to the Controller who shall be entitled to appear and be
heard on the application, and shall appear if so directed by the Court.
(4) Any
order of the High Court under this section rectifying the register shall direct
that notice of the rectification shall be served upon the Controller in the
prescribed manner who shall upon receipt Of Such notice rectify the register
accordingly.
72. Register
to be open for inspection-
(1)
Subject to the provisions contained in this Act and any rules made thereunder,
the register shall at all convenient times be open to inspection by the public;
and 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.
(2) The
register shall be Prima facie evidence of any matters required or
authorised by or under this Act to be entered therein.
CHAPTER-XIV
PATENT OFFICE AND ITS ESTABLISHMENT
73. Controller
and other officers-
(1) The
Controller General of Patents, Designs and Trade Marks appointed under
sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 (43
of 1958) shall be the Controller of Patents for the purposes of this Act.
(2) For the
purposes of this Act, the Central Government may appoint as many examiners and
other officers and with such designations as it thinks fit.
(3) Subject
to the provisions of this Act, the officers appointed under subsection (2)
shall discharge under the superintendence and directions of the Controller such
functions of the Controller under this Act as he may, from time to time, by
general or special order in writing, authorise them to discharge.
(4) Without
prejudice to the generality of the provisions of sub-section (3), the
Controller may, by order in writing and for reasons to be recorded therein
withdraw any matter pending before an officer appointed under sub-section (2)
and deal with such matter himself either de novo or from the stage it was so
withdrawn or transfer the same to another officer appointed under sub-section
(2) who may, subject to special directions in the order of transfer, proceed
with the matter either de novo or from the stage it was so transferred.
74. Patent office and its branches-
(1) For the purposes of this Act, there shall be an
office, which shall be known as the patent office.
(2) The
patent office provided by the Central Government under the Indian Patents and Designs Act, 1911 (2 of 1911), shall be the patent office under
this Act.
(3) The
head office of the patent office shall be at such place as the Central
Government may specify, and for the purpose of facilitating the registration of
patents there may be established, at such other places as the Central
Government may think fit, branch offices of the patent office.
(4) There shall
be a seal of the patent office.
75. Restriction on employees of patent office
as to right or interest in patents- All officers and employees of the patent office
shall be incapable, during the period for which they hold their appointments, to
acquire or take, directly or indirectly, except by inheritance or bequest, any
right or interest in any patent issued by that office.
76. Officers and employees not to furnish
information, etc.- An officer or employee in the patent office shall not, except
when required or authorised by this Act or under a direction in writing of the
Central Government or the Controller or by order of a court-
(a) Furnish
information on a matter which is being, or has been, dealt with under
this Act or under the Indian Patents and Designs Act, 1911 (2 of 191 1); or
(b) Prepare
or assist in the preparation of a document required or permitted by or under
this Act or under the Indian Patents and Designs Act, 1911
(2 of 1911) to be lodged in the patent office; or
(c) Conduct a search in the
records of the patent office.
CHAPTER
XV
POWERS OF CONTROLLER GENERALLY
77. Controller
to have certain powers of a civil court-
(1) Subject to any rules made in this behalf, the Controller in any
proceedings before him under this Act shall have the powers of a civil court
while trying a suit under the Code of Civil procedure,
1908 (5 of 1908) in respect of the following matters, namely, -
(a) Summoning and enforcing
the 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 examination of witnesses or documents;
(e) Awarding costs;
(f) Reviewing
his own decision on application made within the prescribed time and in the
prescribed manner;
(g) Setting
aside an order passed ex pate on application made within the prescribed
time and in the prescribed manner; and
(h) Any other matter, which
may be prescribed.
(2) Any
order for costs awarded by the Controller in exercise of the
powers conferred upon him under sub-section (1) shall be executable as a decree
of a civil court.
78. Power of Controller to correct clerical errors, etc.-
(1) Without prejudice to the provisions contained
in sections 57 and 59 as regards amendment of
applications for patents or complete specifications and subject to the
provisions of section 44, the Controller may, in accordance with
the provisions of this section, correct any clerical error in any patent or in
any specification or other document filed in pursuance of such
application or in any application for a patent or any clerical error in
any matter which is entered
in the register.
(2) A
correction may be made in pursuance of this section
either upon a request in writing made by inv person interested and accompanied
by the prescribed fee, or without such a request.
(3) Where
the Controller proposes to make any such correction as aforesaid otherwise than
in pursuance of request made under
this section, he shall give notice of the proposal to the patentee or the
applicant for the patent, as the case may be, and to any other person who
appears to him to be concerned, and shall give them an opportunity to
be heard before making the correction.
(4) Where a
request is made under this section for
the correction of any error in a Patent or application for a
patent or any document filed in pursuance of such, in application, and it appears to the Controller that the correction would materially
alter the meaning or scope of
the document to which the request relates and ought not to be made without
notice to persons affected thereby, he shall require notice of the nature of
the proposed correction to be advertised in the prescribed
manner.
(5) Within
the prescribed time after any such advertisement as aforesaid any person
interested may give notice to the Controller of
opposition to the request, and, where such notice of opposition is given, the Controller shall
give notice hereof to the person by whom the request was made, and shall give
to him and to the opponent an opportunity to be heard before lie decides the
case.
79. Evidence how to be given and powers of
Controller in respect thereof: -Subject to any rules made in
this behalf, in any proceeding under this Act before the Controller, evidence
shall be given by affidavit in the absence of directions by the Controller to
the contrary, but in any case in which the Controller thinks it right so to do,
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.
80. Exercise of discretionary powers by
Controller- Without prejudice to my provision contained
in this Act requiring the Controller to hear any party to the proceedings
thereunder or to give any such party an opportunity to be heard, the Controller
shall give to any applicant for a patent, or for amendment of a specification
(if within the prescribed time the applicant so requires) an opportunity to be
heard before exercising adversely to the applicant any discretion vested in the
Controller by or under this Act.
81. Disposal by Controller of applications for
extension of time- Where under the provisions of this
Act or the rules made thereunder the Controller may extend the time for doing any act, nothing in this Act shall be
deemed to require him to give notice to or hear, the party
interested in opposing the extension, nor shall any appeal lie from any
order of the Controller granting such extension.
CHAPTER
XVI
WORKING OF
PATENTS, COMPULSORY LICENCES, LICENCES OF RIGHT AND REVOCATION
82. Definitions of “patented articles” and “patentee”- In
this Chapter, unless
the context otherwise requires, -
(a) “Patented
article” includes any article made by a patented
process; and
(b) “Patentee” includes an
exclusive licensee.
83. General principles
applicable to working of patented inventions: -Without prejudice to the other provisions contained in this Act, in
exercising the powers conferred by this Chapter regard shall be had to the
following general considerations, namely,
(a) That patents and granted to encourage inventions and to secure
that the inventions ire worked in India on a commercial scale and to the
fullest extent that is reasonably practicable without undue delay; and
(b) That they are not granted
merely to enable patentees to enjoy a monopoly for the importation of the
patented article.
84. Compulsory licences-
(1) At any time after the expiration of three years
from the date of the sealing of a patent, any person
interested may make an application to the Controller alleging that the
reasonable requirements of the public with respect to the patented invention
have not been satisfied or that the patented invention is not available to the
public at a reasonable price and praying for the grant of a compulsory licence
to work the patented invention.
(2) An
application under this section may be made by any person notwithstanding
that he is already the holder of a licence under the patent and no person shall
be estopped from alleging that the reasonable requirements of the public with
respect to the patented invention are not satisfied or that the patented
invention is not available to the public at a reasonable price by reason of any
admission made by him, whether in such a licence or otherwise or by reason of
his having accepted such a licence.
(3) Every
application under sub-section (1) shall contain a statement setting out the
nature of the applicant’s interest together with such particulars as may be
prescribed and the facts upon which the application is based.
(4) In
considering the application filed under this section the Controller shall take
into account the matters set out in section 85.
(5) The
Controller, if satisfied that the reasonable requirements of the public with
respect to the patented invention have not been satisfied or that the patented
invention is not available to the public at a reasonable price, may order the
patentee to grant a licence upon such terms as he may deem fit.
(6) Where
the Controller directs the patentee to grant a licence he may as incidental
thereto exercise the powers set out in section 93.
85. Matters
to be taken into account in granting compulsory licences- In
determining whether or not to make an order in pursuance of in application
filed under section 84, the Controller shall take into account-
(i) The
nature of the invention, the time, which has, elapsed since the selling of the patent
and the measures already taken by the patentee or any licensee to make full use
of the invention;
(ii) The ability of the
applicant to work the invention to the public advantage;
(iii) The
capacity of the applicant to undertake the risk in providing capital and
working the invention, if the application were granted,
But shall not be required to take into account matters
subsequent to the making of the application.
86. Endorsement
of patent with the words “Licences of right”-
(1) At
any time after the expiration of three years from the date of the selling of
patent, the Central Government may make an application to the Controller for an
order that the patent may be endorsed with the words “Licences of right” on the
ground that the reasonable requirements of the public with respect to the
patented invention have not been satisfied or that the patented invention is
not available to the public at a reasonable price.
(2) The
Controller, if satisfied that the reasonable requirements of the public with
respect to the patented invention have not been satisfied or that the patented
invention is not available to the public at a reasonable price, may make an
order that the patent be endorsed with the words “Licences of right”.
(3) Where a
patent of addition is in force, any application made under this section for an
endorsement either of the original patent or of the patent of addition shall be
treated as an application for the endorsement of both patents, and where a
patent of addition is granted in respect of a patent which is already endorsed
under this section, the patent of addition shall also be so endorsed.
(4) All
endorsements of patents made under this section shall be entered in the
register and published in the Official Gazette and in such other manner as the
Controller thinks desirable for bringing the endorsement to the notice of
manufacturers.
87. Certain patents deemed to be
endorsed with the words “Licences of right”-
(1) Notwithstanding
anything contained in this Act-
(a) Every patent
in force at the commencement of this Act in respect of inventions relating to-
(i) Substances
used or capable of being used as food or as medicine or drug;
(ii) The
methods or processes for the manufacture or production of my, such substances
as is referred to in sub-clause (i);
(iii) The
methods or processes for the manufacture or production of chemical substances
(including alloys, optical glass, semiconductors and inter-metallic compounds),
Shall be deemed to be endorsed with the words “Licences of right” from
the commencement of this Act or from the expiration of three years from the
date of sealing of the patent under the Indian Patents and Designs Act, 1911,
(2 of 1911), whichever is later; and
(b) Every
patent granted after the commencement of this Act in respect of any such
invention is referred to in section-5 shall be deemed to be endorsed with the
words “Licences of right” from the date of expiration of three years from the
date of sealing of the patent.
(2) In
respect of every patent, which is deemed to be enforced with the words
“Licences of right” under this section, the provisions of section 88 shall
apply.
88. Effect
of endorsement of patent with the words “Licences of right”-
(1) Where a
patent has been endorsed with the words “licences of right”, any person who is
interested in working the patented invention in India may require the patentee
to grant him a licence for the purpose on such terms as may be mutually agreed
upon, notwithstanding that he is already the holder of a licence under the
patent.
(2) If the
parties are unable to agree on the terms of the licence, either of them may
apply in the prescribed manner to the Controller to settle the terms thereof.
(3) The
Controller shall, after giving notice to the parties and hearing them and after
making such enquiry as he may deem fit, decide the terms on which the licence
shall be granted by the patentee.
(4) The
Controller may at any time before the terms of the licence are mutually agreed
upon or decided by the Controller, on application made to him in this behalf by
any person who has made any Such requisition as is referred to in subsection
(1), permit him to work the patented invention on Such terms as the Controller
may, pending agreement between the parties or decision by the Controller, think
fit to impose.
(5) In the
case of every patent in respect of an invention referred to in sub-clause
(i), sub-clause (ii), of clause (a) of sub-section (1) of section 87 and deemed
to be endorsed with the words “Licences of right” under clause (a) or clause
(b) of that sub-section, the royalty and other remuneration reserved to the
patentee under a licence granted to any person after such commencement shall in
no case exceed four percent of the net ex-factory sale
price in bulk of the patented article (exclusive of Taxes levied under any law
for the time being in force and any commission payable) determined in such
manner as may be prescribed.
(6) Save as
otherwise provided in sub-section (5), the provisions of subsections (1), (2),
(4) and (5) of section 93 (regarding the powers of the Controller) and of
sections 94 and 95 shall apply to licences granted under this section as they
apply to licences granted under section 84.
89. Revocation of patents by the Controller for non-working-
(1) Where, in respect of a patent, a compulsory
licence has been granted or the endorsement “Licences of right” has been made
or is deemed to have been made, the Central Government or any person interested
may, after the expiration of two years from the date of the order granting the
first compulsory licence or, as the case may be, the date of the grant of the
first licence under section 88, apply to the Controller for an order revoking
the patent on the ground that the reasonable requirements of the public with
respect to the patented invention have not been satisfied or that the patented
invention is not available to the public it a reasonable price.
(2) Every
application under sub-section (1) shall contain such particulars as may be
prescribed and the facts upon which the application is based and, in the, case
of an application other than by the Central Government, shall also set out the
nature of the applicant’s interest.
(3) The
Controller, if satisfied that the reasonable requirements of the public with
respect to the patented invention have not been satisfied or that the patented
invention is not available to the public at a reasonable price, may make an
order revoking the patent.
(4) Every
application under sub-section (1) shall ordinarily be decided within one year of its being presented to the Controller.
90. When
reasonable requirements of the public deemed not satisfied- For the purposes of sections 84, 86 and 89, the
reasonable requirements of the public shall be deemed not to have been
satisfied-
(a) If, by reason of the default of the patentee to
manufacture in India to an adequate extent and supply on reasonable terms the
patented article or a part of the patented article which is necessary for its
efficient working or if, by reason of the refusal of the patentee to grant a
licence or licences on reasonable terms-
(i) An
existing trade or industry or the development thereof or the establishment
of any new trade or industry in India or the trade or industry of any person or
classes of persons trading or manufacturing in India is prejudiced; or
(ii) The
demand for the patented article is not being met to an adequate extent or on
reasonable terms from manufacture in India; or
(iii) A
market for the export of the patented article manufactured in India is not
being supplied or developed; or
(iv) The
establishment or development of commercial activities in India is prejudiced;
or
(b) If, by
reason of conditions imposed by the patentee (whether before or after the
commencement of this Act) upon the grant of licences under the patent, or upon
the purchase, hire or use of the patented article or process, the manufacture,
use or sale of materials not protected by the patent, or the establishment or
development of any trade or industry in India, is prejudiced; or
(c) If the
patented invention is not being worked in India on a commercial scale to an
adequate extent or is not being so worked to the fullest extent that is reasonably
practicable; or
(d) If the
demand for the patented article in India is being met to i substantial extent by importation from abroad by-
(i) The
patentee or persons claiming Under him; or
(ii) Persons
directly or indirectly purchasing from him; or
(iii) Other persons against
whom the patentee is not taking or has not taken proceedings for infringement;
or
(e) If the
working of the patented invention in India on a commercial scale is being prevented
or hindered by the importation from abroad of the patented article by the
patentee or the other persons referred to in the preceding
clause.
91. Power of
Controller to adjourn applications for compulsory licences, etc., in certain cases-
(1) Where an application under section 84,
section 86 or section 89, as the case may be, is made on the ground mentioned
in clause (c) of section 90 and the Controller is satisfied that the time which
has elapsed since the sealing of the patent has for any reason been
insufficient to enable the invention to be worked on a commercial scale to an
adequate extent or to enable the invention to be so worked to the fullest
extent that is reasonably practicable, he may, by order, adjourn the further
hearing of the application for such period not exceeding twelve months in the
aggregate as appears to him to be sufficient for the invention to be so worked.
Provided that in any case where the patentee establishes that the reason
why a patented invention could not be worked as aforesaid before the date of
the application was due to any State or Central Act or any rule or regulation
made thereunder or any order of the Government imposed otherwise than by way of
a condition for the working of the invention in India or for the disposal of
the patented articles or of the articles made by the process or by the use of
the patented plant, machinery, or apparatus, then, the period of adjournment
ordered under this sub-section shall be reckoned from the date on which the
period during which the working of the invention was prevented by such Act,
rule or regulation or order of Government as computed from the date of the
application, expires.
(2) No
adjournment under sub-section (1) shall be ordered unless the Controller is
satisfied that the patentee has taken with promptitude adequate or reasonable
steps to start the working of the invention in India on a commercial scale and
to an adequate extent.
92. Procedure for dealing with applications under sections 84, 86 and 89-
(1) Where the Controller is satisfied, upon
consideration of an application under section 84, section 86 or section 89,
that a prima facie case has been made out for the making of an order, he
shall direct the applicant to serve copies of the application upon the patentee
and any other person appearing from the register to be interested in the patent
in respect of which the application is made, and shall advertise the
application in the Official Gazette.
(2) The
patentee or any other person desiring to oppose the application may, within
such time as may by prescribed or within such further time as the Controller
may on application (made either before or after the expiration of the
prescribed time) allow, give to the Controller notice of opposition.
(3) Any
such notice of opposition shall contain a statement setting out the grounds on
which the application is opposed.
(4) Where
any such notice of opposition is duly given, the Controller shall notify the
applicant, and shall give to the applicant and the opponent an opportunity to
be heard before deciding the case
93. Powers of Controller in granting compulsory licences-
(1) Where the Controller is satisfied on
application made under section 84 that the manufacture, use or sale of materials
not protected by the patent is prejudiced by reason of conditions imposed by
the patentee upon the grant of licences under the patent, or upon the purchase,
hire or use of the patented article or process, he may, subject to the provisions of that section, order the grant of licences under the
patent to such customers of the applicant as he thinks fit as well as to the
applicant.
(2) Where
an application under section 84 is made by a person being the holder of a
licence under the patent, the Controller may, if he makes an order for the
grant of a licence to the applicant, order the existing licence to be
cancelled, or may, if he thinks fit, instead of making an order for the grant
of a licence to the applicant, order the existing licence to be amended.
(3) Where
on an application made under section 84, the Controller orders the grant of a
licence, he may, for reasons to be recorded in writing, direct that the licence
shall operate-
(a) To
deprive the patentee of any right which he may have as patentee to make, use,
exercise or vend the invention or to grant licences under the patent; and
(b) To
revoke all existing licences in respect of the invention.
(4) Where
two or more patents are held by the same patentee and an applicant for a
compulsory licence establishes that the reasonable requirements of the public
have not been satisfied with respect to some only of the said patents, then, if
the Controller is satisfied that the applicant cannot efficiently or
satisfactorily work the licence granted to him under those patents without
infringing the other patents held by the patentee, he may, by order, direct the
grant of a licence in respect of the other patents also to enable the licensee
to work the patent or patents in regard to which a licence is granted under
section 84.
(5) Where
the terms and conditions of a licence have been settled by the Controller, the
licensee may, at any time after he has worked the invention on a commercial
scale for a period of not less than twelve months, make an application to
the Controller for the revision of the terms and conditions on the ground that
the terms and conditions settled have proved to be
more onerous than originally expected and that in consequence thereof the
licensee is unable to work the invention except at a loss.
Provided that no such application shall be
entertained a second time.
94. General purposes for granting compulsory licences- The powers of the Controller upon an application made under section 84
shall be exercised with a s view to securing the following general
purposes, that is to say-
(a) The
patented inventions are worked on a commercial scale in India without undue
delay and to the fullest extent that is reasonably practicable,
(b) That the
interests of any person for the time being working or developing an invention
in India under the protection of a patent are not unfairly prejudiced.
95. Terms and conditions of compulsory licences-
(1) In settling the terms and conditions of a licence
under section 84, the Controller shall endeavour to secure-
(i) That
the royalty and other remuneration, if any, reserved to the patentee or other
person beneficially entitled to the patent, is reasonable, having regard to the
nature of the invention, the expenditure incurred by the patentee in making the
invention or in developing it and obtaining a patent and keeping it in force
and other relevant factors;
(ii) That
the patented invention is worked to the fullest extent by the person to whom
the licence is granted and with reasonable profit to him;
(iii) That
the patented articles are made available to the public at reasonable prices.
(2) No
licence granted by the Controller shall authorise the licensee to import the
patented article or an article or substance made by a patented process from
abroad where such importation would, but for such authorisation, constitute an
infringement of the rights of the patentee.
(3) Notwithstanding
anything contained in sub-section (2), the Central Government may, if in its
opinion it is necessary so to do in the public interest, direct the Controller
at any time to authorise any licensee in respect of a patent to import the
patented article or an article or substance made by a
patented process from abroad (subject to such conditions as it considers
necessary to impose relating among other matters to the royalty and other
remuneration, if any, payable to the patentee, the quantum of import, the sale
price of the imported article and the period of importation), and thereupon the
Controller shall give effect to the directions.
96. Licensing of related patents-
(1) Notwithstanding anything
contained in the other provisions of
this Chapter, at any time after the sealing of a patent, any person who has the
right to work any other patented invention either as patentee or as licensee
thereof, exclusive or otherwise, may apply to the Controller for the grant of a
licence of the first-mentioned patent on the ground that he is prevented or
hindered without such licence from working the other invention efficiently or
to the best advantage possible.
(2) No
order under sub-section (1) shall be made unless the Controller is satisfied-
(i) That
the applicant is able and willing to grant, or procure the grant to the patentee
and his licensees if they so desire, of a licence in respect of the other
invention on reasonable terms; and
(ii) That
the other invention has made a substantial contribution to the establishment or
development of commercial or industrial activities in India.
(3) When
the Controller is satisfied that the conditions mentioned in subsection (1)
have been established by the applicant, he may make an order on such terms as
he thinks fit granting a licence under the first-mentioned patent and a similar
order under the other patent if so requested by the proprietor of the first
mentioned patent or his licensee.
(4) The
provisions of sections 92 and 110 shall apply to licences granted under this
section as they apply to licences granted under section 84.
97. Special provision for compulsory licences
on notification by Central Government-
(1) If the Central Government is satisfied in
respect of any patent or class of patents in force that it is necessary or
expedient in the public interest that compulsory licences should be granted at
any time after the sealing thereof to work the invention or inventions, it may
make declaration to that effect in the Official Gazette, and thereupon the
following provisions shall have effect, that is to say-
(i) The Controller
shall on application made at any time after the notification by any person
interested grant to the applicant a licence under the patent on such terms as
he thinks fit;
(ii) In
settling the terms of a licence granted under this section, the Controller
shall endeavour to secure that the articles manufactured under the patent shall
be available to the public at the lowest prices consistent with the patentees
deriving a reasonable advantage from their patent rights.
(2) The
provisions of sections 92, 93, 94 and 95 shall apply in relation to the grant
of licences under this section as they apply in relation to the grant of
licences under section 84.
98. Order for licence to operate as a deed
between parties concerned- Any order for the grant of a licence under this Chapter shall operate as
if it were a deed granting a licence executed by the patentee and all other
necessary parties embodying the terms and conditions, if any, settled by the
Controller.
CHAPTER-
XVII
USE OF
INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL
GOVERNMENT
99. Meaning of use of invention for purposes of
Government-
(1) For the purposes of this Chapter, an invention
is said to be used for the purposes of Government if it is made, used,
exercised or vended for the purposes of the Central Government, a State
Government or a Government undertaking.
(2) Without prejudice to the
generality of the provisions of sub-section (l)-
(a) The
importation, by or on behalf of the Government, of any invention being a
machine, apparatus; or other article covered by a patent granted before the
commencement of this Act, for the purpose merely of its own use; and
(b) The
importation, by or on behalf of the government, of any invention being a
medicine or drug covered by a patent granted before the commencement of this
Act-
(i) For the purpose merely
of its own use; or
(ii) For
the purpose of distribution in any dispensary, hospital or other medical institution
maintained by or on behalf of the Government or in any other dispensary,
hospital or other medical institution which the Central Government may, having
regard to the public service which such other dispensary, hospital or medical
institution renders, specify in this behalf by notification in the Official
Gazette,
Shall also be deemed, for the purposes of this Chapter, to be use of
such invention for the purposes of Government.
(3) Nothing
contained in this Chapter shall apply in respect of any such importation making
or using of any machine, apparatus, or other article or of any such using of
any process or of any such importation, using or distribution of any medicine
or drug, as may be made by virtue of one or more of the conditions specified in
section 47.
100. Power of Central Government to use inventions for purposes of Government-
(1) Notwithstanding anything contained in this Act, at any time
after an application for a patent has been filed at the
patent office or a patent has been granted, the Central Government and any
person authorised in writing by it may use the invention for the purposes of
Government in accordance with the provisions of this Chapter.
(2) Where
an invention has, before the priority date of the-relevant claim of the
complete specification, been duly recorded in a document, or tested or tried,
by or on behalf of the Government or a Government undertaking, otherwise than
in consequence of the communication of the invention directly or indirectly, by
the patentee or by a person from whom he derives title, any use of the
invention by the Central Government or any person authorised in writing by it
for the purposes of Government may be made free of any royalty or other
remuneration to the patentee.
(3) If and
so far as the invention has not been so recorded or tried or tested as
aforesaid, any use of the invention made by the Central Government of any
person authorised by it under sub-section (1), at any time after the acceptance
of the complete specification in respect of the patent or m consequence of any
such communication as aforesaid, shall be made upon terms as may be agreed upon
either before or after the use, between the Central Government or any person
authorised under sub-section (1) and the patentee, or, as may in default of
agreement be determined by the High Court on a reference under section 103.
Provided that in the case of any such use of any patent in respect of
any medicine or drug or article of food the royalty and other remuneration
shall in no case exceed four per cent of the net ex-factory sale price in bulk
of the patented article (exclusive of taxes levied under any law for the time
being in force and any commissions payable) determined in such
manner as may be prescribed.
(4) The
authorization by the Central Government in respect of an invention may be given under this section, either before or after the patent is
granted and either before or after the acts in respect of which such
authorisation is given or done, and may be given to any person, whether or not
he is authorised directly or indirectly by the applicant or the patentee to
make, use, exercise or vend the invention or import the machine, apparatus or
other article or medicine or drug covered by such patent.
(5) Where
an invention has been used by or with the authority of the Central Government
for the purposes of Government under this section, then unless it appears to
the Government that it would be contrary to the public interest so to do, the
Government shall notify the patentee as soon as practicable of the fact and
furnish him with such information as to the extent of the use of the invention
as he may, from time to time, reasonably require; and where the invention
has been used for the purposes of a Government undertaking the Central
Government may call for such information as may be necessary for this purpose
from such undertaking.
(6) The
right to make, use, exercise and vend an invention
for the purposes of Government under sub-section (1) shall include the right
to sell the goods which have been made in exercise of that right, and a
purchaser of goods so sold, and a person claiming through him, shall have the
power to deal with the goods as if the Central Government or the person
authorised under sub-section (1) were the patentee of the invention.
(7) Where
in respect of a patent which has been the subject of an authorisation under
this section, there is an exclusive licensee as is referred to in sub-section
(3) of section 101, or where such patent has been assigned to the patentee in
consideration of royalties or other benefits determined by reference to the use
of the invention (including payments by way of minimum royalty), the notice
directed to be given under sub-section (5) shall also be given to such exclusive
licensee or assignor, as the case may be, and the reference to the patentee in
sub-section (3) shall be deemed to included a reference to such assignor or
exclusive licensee.
101. Rights of third parties in respect of use of invention for purposes of
Government-
(1) In relation to any use of a patented invention,
or an invention in respect of which an application for a patent is pending,
made for the purposes of Government-
(a) By the
Central Government or any person authorised by the Central Government under
section 100; or
(b) By the
patentee or applicant for the patent to the order made by the Central
Government,
The provisions of any licence, assignment or agreement granted or made,
whether before or after the commencement of this Act, between the patentee or
applicant for the patent (or any person who derives title from him or from whom
he derives title) and any person other than the Central Government shall be of
no effect so far as those provisions-
(i) Restrict
or regulate the use of the purposes of Government of the invention, or of any
model, document or information relating thereto, or
(ii) Provide
for the making of payments in respect of any use of the invention or of the
model, document or information relating thereto for the purposes of Government
(including payments by way of minimum royalty),
And the reproduction or publication of any model or document in connection
with the said use for the purposes of Government shall not be deemed to be an
infringement of any copyright subsisting in the model or document.
(2) Where
the patent, or the right to apply for or obtain the patent, has been assigned
to the patentee in consideration of royalties or other benefits determined by
reference to the use of the invention (including payments by way of minimum
royalty), then, in relation to any use of the invention made for the purposes
of Government by the patentee to the order of the Central Government,
sub-section (3) of section 100 shall have effect as if that use were made by
virtue of an authority given under that section, and any use of the invention for the purposes of Government by virtue of
sub-section (3) of that section shall have effect as if the reference to the
patentee included a reference to the assignor of the patent, and any sum
payable by virtue of that sub-section shall be divided between the patentee and
the assignor in such proportion as may be agreed upon between them or as may in
default of agreement be determined by the High Court on a reference under
section 103.
(3) Where
by virtue of sub-section (3) of section 100, payments are required to be made
by the Central Government or persons authorised under sub-section (1) of that
section in respect of the use of an invention for the purposes of Government,
and where in respect of such patent there is an exclusive licensee authorised,
under his licence to use the invention for the purposes of Government, such sum
shall be shared by the patentee and such licensee in such proportions, if any, as may be agreed upon between them or is
may in default of agreement be determined by the High Court on a reference
under section 103 to be just, having regard to any expenditure incurred by the
licensee-
(a) In
developing the said invention; or
(b) In
making payments to the patentees other than royalties or other benefits
determined by reference to the use of the invention including
payments by way of minimum royalty in consideration of the licence.
102. Acquisition of inventions and patents by
the Central Government: -
(1) The
Central Government may, if satisfied that it is necessary that an invention
which is the subject of an application for a patent or a patent, should be
acquire from the applicant or the patentee for a public purpose, publish a
notification to that effect in the Official Gazette, and thereupon the
invention or patent and all rights in respect of the invention or patent shall,
by force of this section, stand transferred to and be vested in the Central
Government.
(2) Notice
of the acquisition shall be given to the applicant, and, where a patent has
been granted, to the patentee and other persons, if any, appearing in the
register as having an interest in the patent.
(3) The
Central Government shall pay to the applicant, or as the case may be, the
patentee and other persons appearing on the register as having an interest in
the patent such compensation as may be agreed upon between the Central Government
and the applicant, or the patentee and other persons; or, as may, in default of
agreement, be determined by the High court on a reference under section 103 to
be just having regard to the expenditure incurred in connection with the
invention and, in the case of a patent, the term thereof, the period during
which and the manner in which it has already been worked (including the profits
made during such period by the patentee or by his licensee whether exclusive or
otherwise) and other relevant factors.
103.
Reference to High Court of disputes as
to use for purposes of Government-
(1) Any dispute as to the exercise by the Central
Government or a person authorised by it of the powers conferred by section 100,
or as to terms for the use of an invention for the purposes of Government
thereunder or as to the right of any person to receive any part of a payment
made in pursuance of subsection (3) of that section or as to the amount of
compensation payable for the acquisition of an invention or a patent under
section 102, may be referred to the High Court by either party to the dispute
in such manner as may be prescribed by the rules of the High Court.
(2) In any
proceedings under this section to which the Central Government is a party, the
Central Government may-
(a) If the
patentee is a party to the proceedings, petition by way of counter claim for
revocation of the patent on any ground upon which a patent may be revoked under
section 64; and
(b) Whether
a patentee is or is not a party to the proceedings put in issue the validity of
the patent without petitioning for its revocation.
(3) If in
such proceedings as aforesaid any question arises whether an invention has been
recorded, tested or tried as is mentioned in section 100, and the disclosure of
any document regarding the invention, or of any evidence of the test or trial
thereof, would, in the opinion of the Central Government, be prejudicial to the
public interest, the disclosure may be made confidentially to the advocate of
the other party or to an independent expert mutually agreed upon.
(4) In
determining under this section any dispute between the Central Government and
any person as to terms for the use of an invention for the purposes of
Government, the High Court shall have regard to any benefit or compensation
which that person or any person from whom he derives title, may have received,
or may be entitled to receive, directly or indirectly in respect of the use of
the invention in question for the purposes of Government.
(5) In any
proceedings under this section, the High Court may at any time order the whole
proceedings or any question or issue of fact arising therein to be referred to
an official referee, commissioner or an arbitrator on such terms as the High
Court may direct, and references to the High Court in the foregoing provisions
of this section shall be construed accordingly.
(6) Where
the invention claimed in a patent was made by a person who at time it was made
was in the service of the Central Government or of a State Government or was an
employee of a Government undertaking and the subject matter of the invention is
certified by the relevant Government or the principal officer of the Government
undertaking to be connected with the work done in the course of the normal duties
of the Government servant or employee of the Government undertaking, then,
notwithstanding anything contained in this section, any dispute of the nature
referred to in sub-section (1) relating to the invention shall be disposed of
by the Central Government conformably to the provisions of this section so far
as may be applicable, but before doing so the Central Government shall give an
opportunity to the patentee and such other parties as it considers have an
interest in the matter to be heard.
CHAPTER
–XVIII
SUITS
CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction- No suit for a declaration
under section 105 or for any relief under section 106 or for infringement of a
patent shall be instituted in any court inferior to a district court having
jurisdiction to try the suit.
Provided that where a counter claim for revocation of the patent is made
by the defendant, the suit, along with the counterclaim, shall be transferred
to the High Court for decision.
105.
Power of court to make declaration as to
non-infringement-
(1) Notwithstanding anything contained in section
34 of the Specific Relief Act, 1963, (47 of 1963), any person may institute a
suit for a declaration that the use by him of any process, or the making, use
or sale of any article by him does not, or would not, constitute an
infringement of a claim of a patent against the patentee or the holder of an
exclusive licence under the patent, notwithstanding that no assertion to the
contrary has been made by the patentee or the licensee, if it is shown-
(a) That
the plaintiff has applied in writing to the patentee or exclusive licensee for
a written acknowledgment to the effect of the declaration claimed and has
furnished him with full particulars in writing of the process or article in
question; and
(b) That
the patentee or licensee has refused or neglected to give such an
acknowledgment.
(2) The
costs of all parties in a suit for a declaration brought by virtue of this
section shall, unless for special reasons the court thinks fit to order
otherwise, be paid by the plaintiff.
(3) The
validity of a claim of the specification of a patent shall not be called in
question in a suit for declaration brought by virtue of this section, and
accordingly t shall not be the making or refusal of, such a declaration in the
case of a paten deemed to imply that the patent is valid or invalid.
(4) A suit
for a declaration may be brought by virtue of this section at any time after
the date of advertisement of acceptance of the complete specification of a patent, and references in this section to the patentee shall be
construed accordingly.
106.
Power of court to grant relief in
cases of groundless threats of infringement proceedings-
(1) Where any person (whether
entitled to or interested in a patent or an application for a patent or not)
threatens any other person by circulars or advertisements or by communications,
oral or in writing addressed to that or any other person, with
proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following relief’s,
that is to say-
(a) A
declaration to the effect that the threats are unjustifiable;
(b) An
injunction against the continuance of the threats; and
(c) Such damages,
if any, as he has sustained thereby.
(2) Unless
in such suit the defendant proves that the acts in respect of which the
proceedings were threatened constitute or, if done, would constitute, an
infringement of a patent or of rights arising from the publication of a
complete specification in respect of a claim for the specification not shown by
the plaintiff to be invalid, the court may grant to the plaintiff all or any of
the relief’s prayed for.
Explanation: A mere notification of the 1[existence] of a patent does not constitute a
threat a proceeding with in the meaning of this section.
1. Subs.
for “existing” by Act 56 of 1974, s. 3 find Sch. II, w.e.f. 20.12.1974.
107. Defenses, etc in suits for
infringement-
(1) In any suit for infringement of a patent,
every ground on which it may be revoked under section 64 shall be available as a ground for defence.
(2) In
any suit for infringement of a patent by 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 defence that such making, using, importation or distribution is in
accordance with any one or more of the conditions specified in section 47.
108. Relief’s in suits for infringement- The relief’s which a court may grant in any suit for infringement
include an injunction (subject to such terms, if any, as the court thinks fit)
and, at the option of the plaintiff either damages or an account of profits.
109. Rights
of exclusive licensee to take proceedings against infringement-
(1) The holder of an exclusive licence shall have
the like right as the patentee to institute a suit in respect of any
infringement of the patent committed after the date of the licence, and in
awarding damages or in account of profits or granting any other relief in any
such suit the court shall take into consideration any loss suffered or likely
to be suffered by the exclusive licensee as such or, as the case may be, the
profits earned by means of the infringement so far as it constitutes an
infringement of the rights of the exclusive licensee as such.
(2) In any
suit for infringement of a patent by the holder of an exclusive licence under
sub-section (1), the patentee shall, unless he has joined as a plain tiff in
the suit, be added as a defendant, but a patentee so added as defendant shall
not be liable for any costs unless he enters an appearance and takes part in
the proceedings.
110. Right of licensee under section 84 to take
proceedings against infringement- Any
person to whom a licence has been granted under section 84 shall be entitled to
call upon the patentee to take proceedings to prevent any infringement of the
patent, and, if the patentee refuses or neglects to do so within two months
after being so called upon, the licensee may institute proceedings for the
infringement in his own name as though he were the patentee, making the
patentee a defendant; but a patentee so added as defendant shall not be liable
for any costs unless he enters an appearance and takes part
in the proceedings.
111. Restriction on power of court to grant damages or an account of profits
for
infringement-
(1) In a suit for infringement of a patent, damages or an account
of profits shall not be granted against the defendant who proves that at the
date of the infringement he was not aware and had no reasonable grounds for
believing that the patent existed.
Explanation: - A person shall not be
deemed to have been aware or to have had reasonable grounds for believing that
a patent exists by reason only of the application to an article of the word
“patent”, “patented” or any word or words expressing or implying that a patent
has been obtained for the article, unless the number of the patent accompanies
the word or words in question.
(2) In any
suit for infringement of a patent the court may, if it thinks fit, refuse to
grant any damages or an account of profits in respect of any infringement
committed after a failure to pay any renewal fee within the prescribed period
and before any extension of that period.
(3) Where
an amendment of a specification by way of disclaimer, correction or explanation
has been allowed under this Act after the publication of the specification, no
damages or account of profits shall be granted in any proceeding in respect of
the use of the invention before the date of the decision allowing the amendment,
unless the court is satisfied that the specification as originally published
was framed in good faith and with reasonable skill and knowledge.
(4) Nothing
in this section shall affect the power of the court to grant an injunction in
any suit for infringement of a patent.
112.
Restriction on power of court to grant
injunction in certain cases- If in proceedings for the infringement of a
patent endorsed or deemed to be endorsed with the words “Licences of right”
(otherwise than by the importation of the patented article from other
countries) the infringing defendant is ready and willing to take a licence upon
terms to be settled by the Controller as provided in section 88, no injunction
shall be granted against him, and the amount if any recoverable against him by
way of damages shall not exceed double the amount which would have’ been
recoverable against him as licensee if such a licence had been granted before
the earliest infringement.
113.
Certificate of validity of
specification and costs of subsequent suits for infringement
thereof-
(1) If in any proceedings before a High Court for
the revocation of a patent under section 64 the validity of any claim of a
specification is contested and that claim is found by the Court to be valid,
the Court may certify that the validity of that claim was contested in those
proceedings and was upheld.
(2) Where
any such certificate has been granted, then, if in any subsequent suit before a
court for infringement of that claim of the patent or in any subsequent proceeding
for revocation of the patent in so far as it relates to that claim, the
patentee or other person relaying on the validity of the claim obtains a final
order or judgment in his favour, he shall be entitled to an order for the
payment of his full costs, charges and expenses of and incidental to any such
suit or proceeding properly incurred so far as they concern the claim in
respect of which the certificate was granted, unless the court trying the suit
or proceeding otherwise directs.
Provided that the costs as specified in this sub-section shall not be
ordered when the party disputing the validity of the claim satisfies the court
that he was not aware of the grant of the certificate when he raised the
dispute and withdrew forthwith such defence when he became aware of such a
certificate.
(3) Nothing
contained in this section shall be construed as authorizing courts hearing
appeals from decrees or orders in suits for infringement or petitions for
revocation to pass orders for costs on the scale referred to therein.
114. Relief for infringement of partially valid specification-
(1) If in proceedings for infringement of a patent
it is found that any claim of the specification, being a claim in respect of
which infringement is alleged, is valid but that any other claim is invalid,
the court may grant relief in respect of any valid claim which is infringed.
Provided that the court shall not grant relief except by way of
injunction save in the circumstances mentioned in sub-section (2).
(2) Where the
plaintiff proves that the invalid claim was framed in good faith and with
reasonable skill and knowledge, the court shall grant relief in respect of any
valid claim, which is, infringed subject to the discretion of the court as to
costs and as to the date from which damages or an account of profits should be
reckoned, and in exercising such discretion the court may take into
consideration the conduct of the parties in inserting such invalid claim in the
specification or permitting them to remain there.
(1) In any suit for infringement or in any
proceeding before a court under this Act, the court may at any time, and
whether or not an application has been made by any party for that purpose,
appoint an independent scientific adviser to assist the court or to inquire and
report upon any such question of fact or of opinion (not involving
a question of interpretation of law) as it may formulate for the purpose.
(2) The
remuneration of the scientific adviser shall be fixed by the court and shall
include the costs of making a report and a proper daily fee for any day on
which the scientific adviser may be required to attend before the court, and
such remuneration shall be defrayed out of moneys provided by Parliament by law
for the purpose.
CHAPTER-XIX
APPEALS
(1) No appeal shall lie from any decision, order or direction made
or issued under this Act by the Central
Government, or from any act or order of the Controller for the purpose of
giving effect to any such decision, order or direction.
(2) Save as
otherwise expressly provided in sub-section (1), an appeal shall lie to a High
Court from any decision, order or direction of the Controller under any of the
following provisions, that is to say, section 15, section 16, section 17,
section 18, section 19, section 20, section 25, section 27, section 28,
section 51, section 54, section 57, section 60, section 61, section 63,
sub-section (3) of section 69, section 78, section 84, section 86, section 88
(3), section 89, section 93, section 96 and section 97.
(3) Every
appeal under this section shall be in writing and shall be made within three
months from the date of the decision, order or direction, as the case may be,
of the Controller, or within such further time as the High Court may in
accordance with the rules made by it under section 158 allow.
117.
Procedure for hearing of appeals-
(1) Every appeal before a High Court under section
116 shall be by petition and shall be in such form and shall contain such
particulars as may be prescribed by rules made by the High Court under section
158.
(2) Every such appeal shall
be heard by a single judge of the High Court.
Provided that any such Judge may, if he so thinks fit, refer the appeal
at any stage of the proceeding to a Bench of the High Court.
(3) Every
such appeal shall be heard as expeditiously as possible and endeavour shall be
made to decide the appeal within a period of twelve months from the date on
which it is filed.
CHAPTER-XX
PENALTIES
118. Contravention
of secrecy provisions relating to certain inventions- If any person fails to comply with any
direction given under section 35 1[***],
he shall be punishable with imprisonment for a term which may extend to two
years, or with fine, or with both.
1. The words “or makes or causes to be made
an application for the grant of a patent in contravention of section 39”
omitted by Act 17 of 1999, s. 7, w.e.f. 1.1.1995.
119. Falsification of entries in
register, etc.- If any person makes,
or causes to be made, a false entry in any register kept under this Act, or a
writing falsely purporting to be a copy of an entry in such a register, or
produces or tenders, or causes to be produced or tendered, in evidence any such
writing knowing the entry or writing to be false, he shall be punishable with
imprisonment for a term which may extend to two years, or with fine, or with
both.
120. Unauthorized
claim of patent rights- If any person falsely represents that any article sold by him is
patented in India or is the subject of an application for a patent in India, he
shall be punishable with fine which may extend to five hundred rupees.
Explanation: - For the purposes of this
section, a person shall be deemed to represent-
(a) That an
article is patented in India if there is stamped, engraved or impressed on, or
otherwise applied to, the article the word “patent” or 11 patented” or some
other word expressing or implying that a patent for the article has been obtained
in India;
(b) That an
article is the subject of an application for a patent in India ii there are
stamped, engraved or impressed on, or otherwise applied to, the article the
words “patent applied for”, “patent pending”, or some other words implying that
an application for a patent for the article has been made in India.
Explanation 2- The use of words “patent”,
“patented”, “patent applied for”, “patent pending” or other words expressing or
implying that an article is patented or that a patent has been applied for
shall be deemed to refer to a patent in force in India, or to a pending
application for a patent in India, as the case may be, unless there is an
accompanying indication that the patent has been obtained or applied for in any
country outside India.
121. Wrongful
use of words, “patent office”- If any person uses on his place of business or
any document issued by him or otherwise the words “patent office” or any other
words which would reasonably lead to the belief that his place of business is
or is officially connected with, the patent office, he shall be punishable with
imprisonment for a term which may extend to six months, or with fine, or with
both.
122. Refusal or
failure to supply information-
(1) If any
person refuses or fails to furnish-
(a) To the
Central Government any information, which he is, required to furnish under
sub-section (5) of section 100,
(b) To the
Controller any information or statement, which he is, required to furnish by or
under section 146,
He shall be punishable with fine, which may extend to one thousand rupees.
(2) If any
person, being required to furnish any such information as is referred to in
sub-section (1), furnishes information or statement which he false and which he
either knows or has reason to believe to be false or does not believe to be
true, he shall be punishable with imprisonment which may extend to six months,
or with fine, or with both.
123.
Practice by non-registered patent
agents- If any person contravenes the provisions of section 129, he shall be
punishable with fine which may extend to five hundred rupees in the
case of a first offence and two thousand rupees in the case of a second or
subsequent offence.
(1) If the person committing an offence under this
Act is a company, the company as well as every person in charge of, and
responsible to, the company for the 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 and punished accordingly.
Provided that nothing contained in this subsection shall render any such
person liable to any punishment if he proves that the offence was committed
without his knowledge or that he exercised all due diligence to prevent the
commission of such offence.
(2) Notwithstanding
anything contained in sub-section (1), where an offence under this Act has been
committed by a company and it is proved that the offence has been committed
with the consent or connivance of, or that the commission of the offence is attributable to any neglect on
the part of any director, manager, secretary or other officer of the company,
such director, manager, secretary or other officer shall also be deemed to be
guilty of that offence and shall be liable to be proceeded against and punished
accordingly.
Explanation: - For the purposes of this
section-
(a) “Company”
means any body corporate and includes a firm or other association of
individuals; and
(b) “Director”,
in relation to a firm, means a partner in the firm.
CHAPTER
XXI
PATENT
AGENTS
125.
Register of patent agents- The Controller shall maintain a register to be called the register of
patent agents in which shall be entered the names and addresses of all persons
qualified to have their names so entered under section 126.
126.
Qualifications for registration as
patent agents-
(1) A person shall be qualified to have his name entered in the register
of patent agents if he fulfils the following
conditions, namely-
(a) He is a citizen of India;
(b) He has completed the age
of 21 years;
(c) He has
obtained a degree from any University in the territory of India or possesses
such other equivalent qualifications as the Central Government may specify in
this behalf, and, in addition-
(i) Is an
advocate within the meaning of the Advocates Act, 1961 (25 of 1961); or
(ii) Has
passed the qualifying examination prescribed for the purpose;
(d) He has paid such fee as
may be prescribed.
(2) Notwithstanding
anything contained in sub-section (1), a person who has been practicing as a
patent agent before the 1st day of November, 1966 and has filed not
less than five complete specifications before the said day, shall, on payment
of prescribed fee, be qualified to have his name entered in the register of
patent agents.
127.
Rights of patent agents- Subject to the provisions contained in this Act and in any rules made
thereunder, every patent agent whose name is entered in the register shall be
entitled-
(a) To
practice before the Controller; and
(b) To
prepare all documents, transact all business and discharge such other functions
as may be prescribed in connection with any proceeding before the Controller
under this Act.
128.
Subscription and verification of
certain documents by patent agents-
(1) Subject to the provisions contained in
sub-section (2) and to any rules made under this Act all applications and
communications to the Controller under his Act may be signed by a patent agent
authorised in writing in this behalf by the person concerned.
(2) The
following documents namely-
(i) Applications for
patents;
(ii) Applications for the
restoration of lapsed patents;
(iii) Applications for the
sealing of patents after the time allowed for that purpose by or under
sub-section (2), or sub-section (3) of section 43 has expired;
(iv) Applications for leave to
amend;
(v) Applications for
compulsory licences or for revocation; and
(vi) Notices of surrender of
patents,
Shall be signed and verified
in the manner prescribed by the person making such applications or giving such
notices.
Provided that if such person is absent from India, they may be signed
and verified on his behalf by a patent agent authorised by him in writing in
that behalf.
129.
Restrictions on practice as patent
agents-
(1) No person, either alone or in partnership with any other
person, shall practice, describe or hold himself out as, a patent agent or permit
himself to be so described or held out, unless he is registered as a patent
agent or, as the case may be, unless he and all his partners are so registered.
(2) No company or other body corporate shall practice, describe
itself or hold itself out as patent agents or permit itself to be so described
or held out.
Explanation- For the purposes of this section, practice as
a patent agent includes any of the following acts, namely-
(a) Applying
for or obtaining patents in India or elsewhere;
(b) Preparing
specifications or other documents for the purposes of this Act or of the patent
law of any other country; and
(c) Giving
advice other than of a scientific or technical nature as to the validity of
patents or their infringement.
130.
Removal from register of patent agents
and restoration-
(1) The Central Government may remove the name of
any person from the register when it is satisfied, after giving that person a
reasonable opportunity of being heard and after such further inquiry, if any, as
it thinks fit to make-
(i) That
his name has been entered in the register by error or on account of
misrepresentation or suppression of material fact; or
(ii) That
he has been convicted of any offence and sentenced to a term of imprisonment or
has been guilty of misconduct in his professional capacity which in the opinion
of the Central Government renders him unfit to be kept in the register.
(2) The
Central Government may, on application and on sufficient cause being shown,
restore to the register the name of any person removed therefrom.
131.
Power of Controller to refuse to deal
with certain agents-
(1) Subject to any rules made in this behalf, the
Controller may refuse to recognize as agent in respect of any business under
this Act-
(a) Any individual
whose name has been removed from, and not restored to, the register;
(b) Any
person who has been convicted of an offence under section 123;
(c) Any
person, not being registered as a patent agent, who in the opinion of the
Controller is engaged wholly or mainly in acting as agent in applying for
patents in India or elsewhere in the name or for the benefit of the person by
whom he is employed;
(d) Any
company or firm, if any person, whom the Controller could refuse to recognize
as agent in respect of any business under this Act, is acting as a director or
manager of the company or is a partner in the firm.
(2) The
Controller shall refuse to recognize as agent in respect of any business under
this Act any person who neither resides nor has a place of business in India.
132. Savings in respect of other persons authorised to act as agents- Nothing in this Chapter
shall be deemed to prohibit-
(a) The
applicant for a patent or any person, not being a patent agent, who is duly
authorised by the applicant from drafting any specification or appearing or
acting before the Controller; or
(b) An
advocate, not being a patent agent, from taking part in any proceedings under
this Act otherwise than by way of drafting any specification.
CHAPTER-XXII
INTERNATIONAL ARRANGEMENTS
133.
Notification as to convention
countries-
(1) With a view to the fulfillment of 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 for the purposes of
this Act.
(2) A declaration under sub-section (1) may be made for the
purposes either of all or of some only of the provisions of this Act, and a
country in the case of which a declaration made for the
purposes of some only of the provisions of this Act is in force shall be deemed
to be a convention country for the purposes of those provisions only.
134.
Notification as to countries not
providing for reciprocity- Where any country specified by the Central
Government in this behalf by notification in the Official Gazette does not
accord to citizens of India the same rights in respect of the grant of patents
and the protection of patent rights as it accords to its own nationals, no
national of such country shall be entitled, either solely or jointly with any
other person-
(a) To apply for the grant of
a patent or be registered as the proprietor of patent;
(b) To be registered as the
assignee of the proprietor of a patent; or
(c) To apply for a licence or
hold any licence under a patent granted under this Act.
(1) Without prejudice to the provisions contained in section 6,
where a person has made an application for a patent in respect of an invention
in a convention country (hereinafter referred to
as the “basic application”), and that person or the legal representative or
assignee of that person makes an application under this Act for a
patent within twelve months after the date on which the basic application was
made, the priority date of a claim of the complete specification, being a claim
based on matter disclosed in the basic application, is the date of making of
the basic application.
Explanation- Where applications have
been made for similar protection in respect of an invention in two or more
convention countries, the period of twelve months referred to in this
sub-section shall be reckoned from the date on which the earlier or earliest of
the said applications was made.
(2) Where
applications for protection have been made in one or more convention countries
in respect of two or more inventions which are cognate or of which one is a
modification of another, a single convention application may, subject to the
provisions contained in section 10, be made in respect of those inventions at
any time within twelve months from the date of the earliest of the said
applications for protection.
Provided that the fee payable on the making of any such application
shall be the same as if separate applications have been made in respect of each
of the said inventions, and the requirements of clause (b) of sub-section (1)
of section 136 shall, in the case of any such application, apply separately to
the applications for protection in respect of each of the said inventions.
136. Special provisions relating to convention applications-
(1) Every convention application
shall-
(a) Be accompanied by a
complete specification; and
(b) Specify
the date on which and the convention country in which the application for
protection; or as the case may be, the first of such applications was made; and
(c) State
that no application for protection in respect of the invention had been made in
a convention country, before that date by the applicant or by any person from
whom he derives title.
(2) Subject
to the provisions contained in section 10, a complete specification filed with
a convention application may include claims in respect of
developments of, or additions to, the invention in respect of which the
application for protection was made in a convention country, being developments
or additions in respect of which the applicant would be entitled under the
provisions of section 6 to make a separate application for patent.
(3) A
convention application shall not be post-dated under sub-section (1) of section
17 to a date later than the date on which under the provisions of this Act the
application could have been made.
(1) Where two or more applications for patents in
respect of inventions have been made in one or more convention countries and
those inventions are so related as to constitute one invention, one application
may be made by any or all of the persons referred to in sub-section (1) of
section 135 within twelve months from the date on which the earlier or earliest
of those applications was made, in respect of the inventions disclosed in the
specifications which accompanied the basic applications.
(2) The
priority date of a claim of the complete specification, being a claim based on
matters disclosed in one or more of the basic applications, is the date on
which that matter was first so disclosed.
(3) For the
purposes of this Act, a matter shall be deemed to have been disclosed in a
basic application for protection in a convention country if it was claimed or
disclosed (otherwise than by way of disclaimer or acknowledgment of a prior
art) in that application, or any documents submitted by the applicant for
protection in support of and at the same time as that application, but no
account shall be taken of any disclosure effected by any such document unless a
copy of the document is filed at the patent office with the convention
application or within such period as may be prescribed after the filing of that
application. -
138. Supplementary provisions as to convention
applications-
(1) Where a convention application is made in accordance with the
provisions of this Chapter, the applicant shall furnish, in addition to the
complete specification, copies of the specifications or corresponding documents
filed or deposited by the applicant in the patent office of the convention
country in which the basic application was made, certified by the official
chief or head of the patent office of the convention country, or otherwise
verified to the satisfaction of the Controller, along with the application or
within three months thereafter, or within such further period as the Controller
may on good cause allow.
(2) If any such specification or other document is in a foreign
language, a translation into English of the specification
or document verified by affidavit or otherwise to the satisfaction of the
Controller, shall be annexed to the specification or document.
(3) For the
purposes of this Act, the date on which an application was made in a convention
country is such date as the Controller is satisfied, by
certificate of the official chief or head of the patent office of the
convention country or otherwise, is the date on which the application was made
in that convention country.
139.
Other provisions of Act to apply to convention
applications- Save as otherwise provided in this Chapter, all
the provisions of this Act shall apply in relation to a convention application
and a patent granted in pursuance thereof as they apply in relation to an
ordinary application and a patent granted in pursuance thereof.
CHAPTER -XXIII
MISCELLANEOUS
140. Avoidance
of certain restrictive conditions-
(1) It
shall not be lawful to insert-
(i) In any
contract for or in relation to the sale or lease of a patented article or an
article made by a patented process; or
(ii) In a licence to
manufacture or use a patented article; or
(iii) In a
licence to work any process protected by a patent, a condition the effect of
which may be-
(a) To
require the purchaser, lessee, or licensee to acquire from the vendor, lessor,
or licensor, or his nominees, or to prohibit him from acquiring or to restrict
in any manner or to any extent his right to acquire from any person or to
prohibit him from acquiring except from the vendor, lessor, or licensor or his
nominees, any article other than the patented article or an article other than
that made by the patented process; or
(b) To
prohibit the purchaser, lessee or licensee from using, or to restrict in any
manner or to any extent the right of the purchaser, lessee or licensee, to use
an article other than the patented article or an article other than that made
by the patented process, which is not supplied by the vendor, lessor or
licensor or his nominee; or
(c) To
prohibit the purchaser, lessee or licensee from using or to restrict in any
manner or to any extent the right of the purchaser, lessee or licensee to use
any process other than the patented process, and any such condition shall be
void.
(2) A
condition of the nature referred to in clause (a) or clause (b) or clause (c)
of sub-section (1) shall not cease to be a condition falling within that
sub-section merely by reason of the fact that the agreement containing it has
been entered into separately, whether before or after the contract relating to
the sale, lease or licence of the patented article or process.
(3) In
proceedings against any person for the infringement of a patent, it shall be a
defence to prove that at the time of the infringement there was in force a
contract relating to the patent and containing a condition declared unlawful by
this section.
Provided that this sub-section shall not apply if the plaintiff is not a
party to the contract and proves to the satisfaction of the court that the
restrictive condition was inserted in the contract without his knowledge and
consent, express or implied.
(4) Nothing in this section
shall-
(a) Affect
a condition in a contract by which a person is prohibited
from selling goods other than those of a particular person;
(b) Validate
a contract, which, but for this section, would be invalid;
(c) Affect
a condition in a contract for the lease of, or licence to use, a patented
article, by which the lessor or licensor reserves to himself or his nominee the
right to supply such new parts of the patented article as may be required or to
put or keep it in repair.
(5) The
provisions of this section shall also apply to contracts made before the
commencement of this Act if, and in so far as, any restrictive conditions
declared unlawful by this section continue in force after the expiration of one
year from such commencement.
141. Determination of certain contracts-
(1) Any contract for the sale or lease of a
patented article or for licence to manufacture, use or work a patented article
or process, or relating to any such sale, lease or licence, whether made before
or after the commencement to this Act, may at any time after the patent or all
the patents by which the article or process was protected at the time of the
making of the contract has or have ceased to be in force, and notwithstanding
anything to the contrary in the contract or in any other contract, be
determined by the purchaser, lessee, or licensee, as the case may be, of the
patent on giving three months notice in writing to the other party.
(2) The
provisions of this section shall be without prejudice, to any right of
determining a contract exercisable apart from this section.
(1) There shall be paid in respect of the grant of
patents and applications therefor, and in respect of other matters in
relation to the grant of patents under this Act, such fees
as may be prescribed by the Central Government.
(2) Where a
fee is payable in respect of the doing of an Act by the Controller, the
Controller shall not do that act until the fee has been paid.
(3) Where a
fee is payable in respect of the filing of a document at
the patent office, the document shall be deemed not to have been filed at the
office until the fees has been paid.
(4) Where a
principal patent is granted later than two years from the date of filing of the
complete specification, the fees which, have become due in the meantime may be
paid within a term of three months from the date of the recording of the patent
in the register.
143.
Restrictions upon publication of
specifications- Subject to the provisions of Chapter VII, an
application for a patent, and any specification filed in pursuance
thereof, shall not, except with the consent of the applicant, be published by
the Controller or be open to public inspection at any time before the date of
advertisement of acceptance of the application in pursuance of section 23.
144. Reports of examiners to be confidential- The reports of examiners to the Controller under this Act shall not be
open to public inspection or be published by the Controller; and such reports
shall not be liable to production or inspection in any legal proceeding unless
the court certifies that the production or inspection is desirable in the
interests of justice, and ought to be allowed.
145. Publication of patented inventions- The Controller shall issue periodically a publication of patented
inventions containing such information as the Central Government, may direct.
146. Power of Controller to call for information from patentees-
(1) The Controller may, at any time during the
continuance of the patent, by notice in writing, require a patentee or a
licensee, exclusive or otherwise, to furnish to him within two months from the
date of such notice or within such further time as the Controller may allow,
such information or such periodical statements as to the extent to which the
patented invention has been commercially worked in India as may be specified in
the notice.
(2) Without
prejudice to the provisions of sub-section (1), every patentee and every
licensee (whether exclusive or otherwise) shall furnish in such manner and form
and at such intervals (not being less than six months) as may be prescribed
statements as to the extent to which the patented invention has been worked on
a commercial scale in India.
(3) The
Controller may publish the information received by him under subsection (1) or
sub-section (2) in such manner as may be prescribed.
147.
Evidence of entries, documents, etc.-
(1) A certificate purporting to be signed by the
Controller as to any entry, matter or thing which he is authorised by this Act
or any rules made thereunder to make or do, shall be prima, facie evidence
of the entry having been made and of the contents thereof and of the matter or
thing having been done or omitted to be done.
(2) A copy
of any entry in any register or of any document kept in the patent office or of
any patent, or an extract from any such register or document,
purporting to be certified by the Controller and sealed with the seal of the
patent office shall be admitted in evidence in all courts, and in all
proceedings, without further proof or production of the original.
(3) The
Controller or any other officer of the patent office shall not, in any legal
proceedings to which he is not a party, be compellable to produce the register
or any other document in his custody, the contents of which can be proved by
the production of a certified copy issued under this Act or to appear as a
witness to prove the matters therein recorded unless by order of the court made
for special causes.
148. Declaration
by infant, lunatic, etc: -
(1) If any person is, by reason of minority, lunacy
or other disability, incapable of making any statement or doing anything
required or permitted by or under this Act, the lawful guardian, committee or
manager (if any) of the person subject to the disability, or if there be none,
any person appointed by any court possessing jurisdiction in respect of his
property, may make such statement or a statement as nearly corresponding
thereto as circumstances permit, and do such thing in the name and on behalf of
the person subject to the disability.
(2) An
appointment may be made by the court for the purposes of this section upon the
petition of any person acting on behalf of the person subject to the disability
or of any other person interested in the making of the statement or the doing
of the thing.
149.
Service of notices, etc. by post- Any notice required or
authorised to be given by or under this Act, and any application or other
document so authorised or required to be made or filed, may be given, made or
filed by post.
150.
Security for costs- If any party by whom notice of any opposition is given under this Act or
by whom application is made to the Controller for the grant of a licence under
a patent neither resides nor carries on business in India, the Controller may
require him to give security for the costs of the proceedings, and in default
of such security being given may treat the opposition or application as
abandoned.
151. Transmission of orders of courts to Controller-
(1) Every order of the High Court on a petition for
revocation, including orders granting certificates of validity of any claim,
shall be transmitted by the High Court to the Controller who shall cause an
entry thereof and reference thereto to be made in the register.
(2) Where
in any suit for infringement of a patent or in any suit under section 106, the
validity of any claim or a specification is contested and that claim is found
by the court to be valid or not valid, as the case may be, the court shall
transmit a copy of its judgment and decree to the Controller who shall on
receipt thereof cause an entry in relation to such proceeding to be made in the
prescribed manner in a supplemental records.
(3) The
provisions of sub-sections (1) and (2) shall also apply to the court to which
appeals are preferred against decisions of the courts referred to in those
sub-sections.
152.
Transmissions of copies of
specifications etc. ‘and inspection thereof: -Copies of all such
specifications, drawings and amendments left at the patent office as become
open to public inspection under the provisions of this Act, shall be
transmitted, as soon as may be, after the printed copies thereof are available,
to such authorities as the Central Government may appoint in this behalf, and
shall be open to the inspection of any person at all reasonable times at places
to be specified by those authorities and with the approval of the Central
Government.
153.
Information relating to patents- A person making a request to the Controller in the prescribed manner for
information relating to any such matters as may be prescribed as respects any
patent specified in the request or as respects any application for a patent so
specified shall be entitled, subject to the payment of the prescribed fee, to
have information supplied to him accordingly.
154.
Loss or destruction of patents- If a patent is lost or destroyed, or its non-production is accounted for
to the satisfaction of the Controller, the Controller may at any time, on application
made in the prescribed manner and on payment of the prescribed fee, cause a
duplicate thereof to be sealed and delivered to the applicant.
155.
Reports of Controller to be placed
before Parliament- The Central Government shall cause to be placed
before both Houses of Parliament once a year a report respecting the execution
of this Act by or under the Controller.
156.
Patent to bind Government- Subject to the other provisions contained in this Act, a patent shall
have to all intents the like effect as against Government as it has against any
person.
157.
Right of Government to sell or use
forfeited articles- Nothing in this Act shall affect the power of the
Government or of any person deriving title directly or indirectly from the
Government to sell or use any articles forfeited under any law for the time
being in force.
1[157A. Protection of security of
India-Notwithstanding
anything contained in this Act, the Central Government shall-
(a) Not
disclose any information relating to any patentable invention or any
application relating to the grant of patent under this Act, which it considers
prejudicial to the interest of security of India;
(b) Take
action including the revocation of any patent, which it considers necessary in
the interest of security of India.
Provided that the Central Government shall, before taking any action
under this clause, issue a notification in the Official Gazette declaring its
intention to take such action.
Explanation- For the purpose of this section, the expression “security of India”
means any action necessary for the security of India which
(i) Relates
to fissionable materials or the materials from which they are derived; or
(ii) Relates
to the traffic in arms, ammunition and implements of war and to such traffic in
other goods and materials as is carried on directly or indirectly for the
purpose of supplying a military establishment; or
(iii) Is
taken in time of war or other emergency in matter of international relations.]
1. Ins.
by Act 17 of 1999,s. 8, w.e.f. 1.1.1995.
158.
Power of High Courts to make rules- The High Court may make rules consistent
with this Act as to the conduct and procedure in respect of all proceedings
before it under this Act.
159.
Power of Central Government to make
rules-
(1) The Central Government may, by notification on the Official
Gazette, make rules for carrying out the purposes of this Act.
(2) Without prejudice to the generality of the forgoing power, the
Central Government may make rules to provide for all or
any of the following matters, namely, -
(i) The
form and manner in which any application for a patent, any specifications or
drawings and any other application or document may be filed in the patent
office;
(ii) The
time within which any act or thing may be done under this Act, including the
manner in which and the time within which any matter may be advertised under
this Act:
(iii) The
fees which may be payable under this Act and the manner of payment of such
fees;
(iv) The
matters in respect of which the examiner may make a report to the Controller,
(v) The
form of request for the sealing of a patent;
(vi) The
form and manner in which and the time within which any notice may be given under
this Act;
(vii) The
provisions which may be inserted in an order for restoration of a patent for
the protection of persons who may have availed themselves of the subject-matter
of the patent after the patent had ceased;
(viii) The
establishment of branch offices of the patent office and the regulation
generally of the business of the patent office, including its branch offices;
(ix) The
maintenance of the register of patents and the matters to be entered therein;
(x) The
matters in respect of which the Controller shall have powers of a civil court;
(xi) The
time when and the manner in which the register and any other document open to
inspection may be inspected under this Act;
(xii) The
qualifications of, and the preparation of a roll of, scientific advisers for
the purpose of section 115;
(xiii) The
manner in which any compensation for acquisition by Government of an invention
may be paid;
(xiv) The
manner in which the register of patent agents may be maintained; the conduct of
qualifying examinations for patent agents; and matters connected with their
practice and conduct, including the taking of disciplinary proceedings against
patent agents for misconduct;
(xv) The
regulation of the making, printing, publishing and selling of indexes to, and
abridgments of, specifications and other documents in the patent office; and
the inspection of indexes and abridgments and other documents;
(xiv) Any
other matter which has to be or may be prescribed.
(3) The
power to make rules under this section shall be subject to condition of the
rules being made after previous publication.
160.
Rules to be placed before Parliament- Every rule made under this Act shall be laid, as soon as may be after it
is made, before each House of Parliament while it is in session for a total
period of thirty days which may be comprised in one session or 1[in two or more successive sessions, and if,
before the expiry of the session immediately following the session or the
successive sessions aforesaid] both Houses agree in making any
modification in the rule or both Houses agree that the rule should not be made,
the rule shall thereafter have effect only in such modified form or be of no
effect, as the case may be; so, however, that any such modification or
annulment shall be without prejudice to the validity of anything previously
done under that rule.
1. Subs.
for “in two successive sessions, and, if before the expiry of the session in
which it is so laid or the Session immediately following” by Act 4 of 1986, s.
2 and S. No. 81 of Sch., w.e.f. 15.5.1986 vide GSR 674 (E), dated 15.5.1986.
161. Special provisions with respect to certain applications deemed to have
been refused under Act 2 of 1911-
(1) Where, as a result of action taken by the Controller under
section 12 of the Atomic Energy Act, 1948 (29 of 1948), or under section 20 of
the Atomic Energy Act, 1962 (33 of 1962), an application for a patent made
before the commencement of this Act could not be accepted within the time
specified for the purpose in the Indian Patents and Designs Act, 1911 (2 of
1911) (hereafter in this section referred to as the repealed Act), and,
consequently, was deemed to have been refused by reason of sub-section (4) of
section 5 of the repealed Act, the application may, if the applicant or, if he
is dead his legal representative, makes a request in that behalf to the
Controller in the prescribed manner within three months from the commencement
of this Act, be revived and shall be disposed of as if it were an application
pending at the commencement of this Act to which the provision of this Act
apply by reason of sub-section (3) of section 62.
(2) The Controller may, before proceeding to
act upon any such request as is referred to in sub-section (1), refer the
matter to the Central Government for directions is to whether the invention is
one relating to atomic energy and shall act in conformity with the directions
issued by it.
(3) Where
in pursuance of any such application as is referred to in sub-section (1) a
patent is granted, the rights of the patentee shall be subject to such
conditions as the Controller thinks fit to impose for the protection or
compensation of persons who may have begun to avail themselves of, or have
taken definite steps by contract or otherwise to avail themselves of, the
patented invention before the date of advertisement of the acceptance of the
complete specification.
(4) A
patent granted in pursuance of any such application as is referred to in
sub-section (1) shall be dated as of the date on which the request for reviving
such application was made under sub-section (1).
162. Repeal of Act 2 of 1911 in so far as it relates to patents and
savings-
(1) The Indian Patents and Designs Act, 1911, in so far as it relates to
patents, is hereby repealed, that is to say, the said Act shall be amended in
the manner specified in the schedule.
(2) Notwithstanding
the repeal of the Indian Patents and Designs Act, 1911, in so far as it relates
to Patents-
(a) The
provisions of section 21A of that Act and of any rules made thereunder shall
continue to apply in relation to any patent granted before the commencement of
this Act in pursuance of that section, and
(b) The
renewal fee in respect of a patent granted under that Act shall be as fixed
thereunder.
(3) Save as
otherwise provided in sub-section (2), the provisions of this Act shall apply
to any application for a patent pending at the commencement of this Act and to
any proceedings consequent thereon and to any patent granted in pursuance
thereof.
(4) The
mention of particular matters in this section shall not prejudice the general
application of the General Clauses Act, 1897 (10 of 1897), with respect to
repeals.
(5) Notwithstanding
anything contained in this Act, any suit for infringement of a patent or any
proceeding for revocation of a patent, pending in any court at the commencement
of this Act, may be continued and disposed of, as if this Act had no been passed.
163.
Amendment of Act 43 of 1958- In sub-section (1) of section 4 of the Trade and Merchandise Marks Act,
1958, the words and figures “and the Controller of Patents and Designs for the
purposes of the Indian Patents and Designs Act, 1911” (2 of 1911), shall be
omitted.
(See section 162)
AMENDMENTS OF THE INDIAN PATENTS AND DESIGNS ACT, 1911
1. Long title- Omit “Inventions
and”.
2. Preamble- Omit “Inventions and”.
3. Section 1- In sub-section (1) omit
“Indian Patents and”.
4. Section 2-
(a) Omit clause (1);
(b) In clause (2) omit “(as
respects designs)”;
(c) For clause (3), substitute-
‘(3) “Controller” means the Controller General of Patents, Designs and
Trade Marks appointed under sub-section (1) of section 4 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958)’;
(d) In clause
(5) for “trade mark as defined in section 478”, substitute “trade mark as
defined in clause (v) of sub-section (1) of section 2 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958)”;
(e) Omit clause (6);
(f) In clause (7), after
sub-clause (ee), insert-
“(f) In relation to the Union territories of Dadra and
Nagar Haveli and Goa, Daman and Diu, and High Court at Bombay;
(g) In relation to the Union territory of Pondicherry, the High Court at
Madras”;
(g) Omit clauses (8), (10) and
(11);
(h) For clause (12), substitute-
‘(12) “Patent office”
means the patent office referred to in section 74 of the Patents Act, 1970’.
5. Omit
Part I.
6. For
section 51B, substitute-
“51B. Designs to bind
Government- A registered design shall have to all intents
the like effect as against Government as it has against any person and the
provisions of Chapter XVII of the Patents Act, 1970, shall apply to registered
designs as they apply to patents”.
7. In section 54, for “The provisions of this
Act”, substitute “The provisions of the Patents Act, 1970”.
8. Omit sections 55 and 56.
9. Section 57- For ‘sub-section (1),
substitute-
“(1) There shall be paid in respect of the registration of designs and
applications therefor and in respect of other matters relating to designs under
this Act such fees as may be prescribed by the Central Government”.
10. Omit section 59A.
11. Section 61- Omit sub-section (1).
12. For section 62, substitute-
“62. Power of Controller to
correct clerical errors- The Controller may, on
request in writing accompanied by the prescribed fee, correct any clerical
error in the representation of a design or in the name or address of the
proprietor of any design or in any other matter which is entered upon
the register of designs.”
13. Section 63-
(a) In sub-section (1), omit
“to a patent or” and “patent or”;
(b) In sub-section (2), omit
“patent or” and for “patents or designs, as the case may be,” substitute
“designs”;
(c) In sub-section (3), omit
“patent or” wherever that expression occurs;
(d) In sub-section (4), omit “to
a patent or”.
14. Section 64-
(a) In sub-section (1), omit “patents or” and
omit the word “either”, wherever it occurs;
(b) In sub-section (5), omit clause (a).
15. Omit section 66.
16. Section 67- Omit “for a patent, or for
amendment of an application or of specification, or”.
17. Section 69- In sub-section (1), omit “to
grant a patent for an invention or”.
18. Section 71A- Omit “or from patents,
specifications and other”.
19. Omit section 72.
20. Omit sections 74A and 75.
21. Section 76-
(a) In sub-section (1), omit
“other”;
(b) In sub-section (2), in
clause (c), omit “opponent”.
22. Section
77-
(a) In sub-section (l)-
(i) In clauses (c) and (d),
omit “specifications”;
(ii) For clause (e),
substitute-
“(e) Providing for the inspection of documents in the patent office and
for the manner in which they may be published;”
(iii) Omit clause (eee);
(b) Omit sub-section (2A).
23. Omit section 78.
24. For section 78A, substitute-
“78A. Reciprocal arrangement
with United Kingdom and other Common wealth countries: -
(1) Any person who has applied for protection for any design in the
United Kingdom or his legal representative or assignee shall, either alone or
jointly with any other person, be entitled to claim that the registration of
the said design under this Act shall be in priority to other applicants and
shall have the same date as the date of the application in the United Kingdom.
Provided that-
(a) The
application is made within six months from the application for protection in
the United Kingdom; and
(b) Nothing
in this section shall entitle the proprietor of the design to recover damages
for infringements happening prior to the actual date on which the design is
registered in India.
(2) The
registration of a design shall not be invalidated by reason only of the
exhibition or use of, or the publication of a description or representation of,
the design in India during the period specified in this section as that within
which the application may be made.
(3) The
application for the registration of a design under this section must be made in
the same manner as an ordinary application under this Act.
(4) Where
it is made to appear to the Central Government that the legislature of any such
Commonwealth country as may be notified by the Central Government in this behalf
has made satisfactory provision for the protection of designs registered in
India, the Central Government may, by notification in the Official Gazette,
direct that the provisions of this section, with such variations or additions,
if any, as may be set out in such notification, shall apply for the protection
of designs registered in the Commonwealth country’.
25. Omit sections 78B, 78C, 78D and 78E.
26. Omit the Schedule.
NOTIFICATIONS UNDER THE PATENTS
ACT, 1970
1[S.O. 300 (E)- In exercise of the powers conferred by sub-section (3) of section (1)
of the Patents Act, 1970 (39 of 1970), the Central Government hereby appoints
the 20th April, 1972 as the date on which the said Act, other than subsection
(2) of section 12, sub-section (2) of section 13, section 28, section 68 and
sections 125 to 132 thereof, shall come into force.
1[S.O. 302(E)- Whereas for the fulfillment of arrangements with the United Kingdom,
New Zealand, Eire, Ceylon and Canada, which afford to applicants for patents in
India or to citizens of India similar privileges as are granted to their own
citizens in respect of the grant of patents and the protection of patent
rights, it is necessary so to do.
Now, therefore, in exercise of the powers conferred by sub-section (1)
of section 133 of the Patents Act, 1970 (39 of 1970), the Central Government
hereby declares each of the said countries, namely, the United Kingdom, New
Zealand, Fire, Ceylon and Canada, to be a convention country for all the
provisions of the Act.
1[S.O. 303 (E)- In exercise of the powers conferred by sub-section (3) of section 74 of
the Patents Act, 1970 (39 of 1970), the Central Government hereby specifies
that the head office of the patent office shall be at Calcutta.
1[S.O. 301(E)- Whereas a draft of the Patents Rules were published as required by
sub-section (3) of section 159 of the Patents Act, 1970 (39 of 1970), by the
notification of the Government of India, in the Ministry of Industrial
Development No. S.O. 5246, dated the 25th November 1971, at pages
3167 to 3226/1 of the Gazette of India, Extraordinary, Part II, Section 3,
Sub-section (ii), dated the 25th November 1971.
And whereas objections and suggestions were invited till the 25th
January 1972, from all persons likely to be affected thereby
And whereas the draft of the Patents Rules was made available to the
public through the said Gazette dated the 25th November 1971.
And whereas the date specified above for the purpose of inviting
objections and suggestions on the said draft was extended to the 14th February
1972, by the notification of the Government of India, in the Ministry of
Industrial Development No. S.O. 89(E), dated the 2nd February 1972, published
at page 299, the Gazette of India, Extraordinary, Part 11, and Section 3, Sub-section
(ii), dated The 2nd February 1972.
And whereas the notification was made available to the public through
the said Gazette dated the 2nd February 1972.
And whereas the objections and suggestions received from the public on
the said draft Rules have been considered by the Central Government;
Now, therefore, in exercise of the powers conferred by section 159 of
the Patents Act, 1970 (39 of 1970), the Central Government hereby makes the
following rules, namely: -
1. Published
in GOI (E), Pt. II 3 (ii), dated 20.4.1972.