by
Kalyan Chakravarthy Kankanala
A patent application can be filed at only of the four patent
offices in
A. FILING
B.
PUBLICATION
C. EXAMINATION
D. OPPOSITION
E. GRANT
1.
Applicant : An application for a
patent can be filed by the true and first inventor. It can also be filed the by
the assignee or legal representative of the inventor. If an application is
filed by the assignee, proof of assignment has to be submitted along with the
application. The applicant can be national of any country.
2. Form
of Application: Every application
shall be accompanied by a provisional or complete specification. Provisional
applications are generally filed at a stage where some experimentation is
required to perfect the invention.
Filing of a
provisional specification allows the applicant to get an early application
date.
A
Provisional Specification shall contain:
a. Title,
b. Written
Description,
c.
Drawings, if necessary and
d. Sample
or model if required.
The
complete specification shall contain:
a. Title,
b.
Abstract,
c. Written
Description,
d. Drawings
(where necessary),
e. Sample
or Model (if required by the examiner),
f.
Enablement and BestMode,
g. Claims
and
h. Deposit
(Microorganisms)
a. Title
Title is
generally a word or a phrase indicating the content of the invention.
b.
Abstract
It is a
short paragraph describing the invention in a precise manner.
c.
Written Description
This is an important part of the specification. It contains
the complete and elaborate description of the invention.
Written Description generally starts with a background of
the invention. The written description explains the invention clearly and
comprehensively, with the help of examples, drawings and models, where and when
required.
d.
Drawings
The written
description might be supplemented with drawings, where and when required. The
drawings should be clearly labeled.
e.
Samples or Models
On initiative of the inventor or when required by the patent
examiner samples or models might be submitted to the patent office. Such samples
or models will provide a better understanding of the invention.
f.
Enablement and Best Mode
The applicant has to enable his invention in order to allow
a person with ordinary skill in the art to make and work the invention. He
should not only enable, the applicant should also describe the best mode of
carrying out the invention.
g.
Claims
Claims define the metes and bounds of the invention. They
are the most important elements in a specification.
h.
Deposit
If an invention involves microorganisms, which cannot be
described by writing. A sample of the microorganism has to be deposited at an
internationally recognized depository. There is an internationally recognized
depository at
A provisional specification cannot be filed if an
application has been filed in a foreign country (Convention country) before the
Indian filing and if the application is a PCT application. A complete
specification has to be filed within twelve months (extendable to fifteen months)
of filing the provisional specification. Each specification should contain only
one invention. If there is more than one invention in a specification, separate
applications have to be filed for each invention.
3.
Priority Date
Priority date is the date of first filing allotted by the
patent office to an application. If a provisional application is followed by a
complete application, the priority date shall be date of filing of the
provisional application. If an Indian application is filed after a foreign or
PCT application, the priority date shall be the date of filing of the foreign
or PCT application. If an application is divided into two applications, the
priority date shall be date of filing of the parent application.
Priority date is the date of reference used by the patent to
determine the newness of the invention. If the claimed invention is part of
public knowledge before the priority date, it will not be eligible for a
patent. Under US Law, priority date is pushed back to the date of conception
for determining novelty and Non-obviousness.
4. Place
of Filing
Patent
Application can be filed at any of the four patent offices in
5.
Documents to be submitted at the time of filing.
The
following documents have to be submitted at the time of filing a patent
application:
a. Form 1 - Application for the grant
of patent.
b. Form 2 - Provisional or Complete
Specification.
c. Form 3 - Statement and undertaking
by the applicant.
d. Form 5 - Declaration as to
inventorship.
e. Form 26 - Authorization of patent
agent or any other person.
Priority
document details have to be filed for a Convention application.
A patent application will be published on expiry of eighteen
months after the priority date. It can be published earlier, if such a request
is made by the applicant. The application will not be published if directions
are given for secrecy, until the term of those directions expires. It will also
not be published if the application is withdrawn three months before
publication date.
On publication, specification including drawings and
deposits shall be open for public inspection. The rights of the patentee start
from the date of publication but they cannot be enforced until after patent
grant.
1. Request for Examination
The process of examination starts with a request for
examination. The request has to be made within 36 months from the date of priority
or filing. However, if secrecy directions have been given for the application,
the request can be made six months after the directions are revoked or thirty
six months from the date of priority or filing, if that date is later.
2.
Examination
On receiving the request, the controller shall direct the
patent application to the Examiner for examination. To start with, the examiner
makes a formal examination by verifying the propriety and correctness of all
documents filed with the application. Later, he verifies the patentability of
the application. The patentability analysis includes all patentability
requirements.
After confirming that the application falls within the scope
of patentable subject matter, the examiner conducts a prior art search to check
if there is prior art, which anticipates the invention claimed. Prior art
search for anticipation includes search for anticipation by publication, filing
of complete specification, etc. He then verifies the existence of inventive
step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month
from the date of reference by controller and that term shall not exceed three
months. If the examination report is adverse, the controller sends a notice to
the applicant and gives him an opportunity to correct and if necessary an
opportunity of hearing. The Controller might ask the applicant to amend the
application in order to proceed further. If the applicant does not make such
changes, the application might be rejected.
The Controller has the power to divide the application, post
date the application, substitute applicants and reject the application. An
order of division will be given if the application contains more than one
invention and if it is required to file separate applications for each
invention. The application might be post dated to a period of six months if
requested by the applicant. Substitution of inventors is generally done if the
inventor has been wrongfully mentioned or if a joint inventor has not been
mentioned in the application.
The
controller has the power to reject the application, if the applicant does not
comply with his requirements.
1.
Pre-grant Opposition
Any person can file an opposition for grant of patent after
the application has been published. Opposition may be filed on any of the
following grounds:
a. Non compliance of patentability requirements.
b.
Nondisclosure or Wrongful disclosure of genetic resources or traditional
knowledge.
2.
Post-grant Opposition
Any person
can file an opposition within a period twelve months after the grant of a
patent. It can be filed based on the following grounds:
a. Wrongful
obtainment of the invention by the inventor.
b.
Publication of the claimed invention before the priority date.
c.
d. Public
use or display of the invention.
e. The
invention doesn’t satisfy the patentability requirements.
f.
Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve
months from the date of convention application.
h.
Nondisclosure or wrongful disclosure of the biological source.
i.
Invention is anticipated by traditional knowledge.
3.
Process of Opposition
On receiving a notice of opposition, the controller notifies
the patentee. He then constitutes an Opposition board to deal with the
opposition. The Opposition board decides the issues after giving reasonable
opportunity of hearing to both the parties. The Opposition board might
invalidate the patent, require amendments or maintain the status quo. If
amendments are required, they have to be made within the prescribed period in
order to maintain the patent.
If the application satisfies all the requirements of the
patent act, the application is said to be in order for grant. An application in
order for grant shall be granted expeditiously. A granted patent shall be
published in the official gazette and shall be open for public inspection. Every granted patent shall be given the
filing date. The patent will be valid throughout
Annexure - I
THE PATENTS ACT, 1970
(39 OF 1970)
[As Amended By the Patents (Amendment) Act, 2005.]
(As effective from the 1st January 2005)
THE PATENTS ACT, 1970
ARRANGEMENT OF SECTIONS
1.Short title extent and commencement
2. Definition and interpretation
4. Inventions relating to atomic energy not patentable
5. Omitted by Patent Amendment Act 2005.
6. Persons entitled to apply for patents
8. Information and undertaking regarding foreign applications
9. Provisional and complete specifications
11. Priority dates of claims of a complete specification
PUBLICATION AND EXAMINATION OF APPLICATIONS
11A. Publication of applications.-
11B. Request for examination.-
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, etc., in certain cases.
16. Power of Controller to make orders respecting division of application
17. Power of Controller to make order respecting dating of application
18. Power 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.Omitted by Patent Amendment Act 2005.
23. Omitted by Patent Amendment Act, 2005.
24. Omitted by Patent Amendment Act 2005.
EXCLUSIVE MARKETING RIGHTS---- Omitted by Patent Amendment Act 2005.
25. Opposition to grant of patent
26. In cases of "obtaining" Controller may treat applications as application of opponent
27. Omitted by Patent Amendment Act 2005.
28. Mention of inventor has such in Patent.
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 direction relating to inventions relevant for defuses purposes.
36. Secrecy directions to be periodically reviewed.
37. Consequences of secrecy directions.
38. Revocation of secrecy directions and extension of time.
39. Residents not to apply for patents outside India without prior permission.
40. Liability for contravention of section 35 or section 39.
41. Finality of orders of Controller and Central Government
42. Savings respecting disclosure of Government
GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY
44. Amendment of patent granted to deceased applicant
46. Form, extent and effect of patent.
47. Grant of patents of be subject to certain conditions
50. Rights of co-owners of patents
51. Power of Controller to give directors to co-owners
52. Grant of patent to true and first inventor where it has been obtained by another in fraud of him
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 Appellate Board or High Court
59. Supplementary provisions as to amendment of application or specification
60. Applications for restorations 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
67. Register of patents and particulars to be entered therein.
68. Assignments, etc., not to be valid unless in writing and duly executed.
69. Registration of assignments, transmissions etc..
70. Power of registered grantee or proprietor to deal with patent
71. Rectification of register by Appellate Board
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 civil court
78. Power of Controller to correct clerical errors etc
79. Evidence how to be given and power 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 AND REVOCATION
83. General principles applicable to working of patented inventions.
85. Revocation of patents by the Controller for non-working.
86. Power of Controller to adjourn applications for compulsory licences, etc., in certain cases.
87. Procedure for dealing with applications under sections 84 and 85.
88. Powers of Controller in granting compulsory licences.
89. General purposes for granting compulsory licences.
90. Terms and conditions of compulsory licences.
91. Licensing of related patents.
92. Special provision for compulsory licences on notifications by Central Government.
93. Order for licence to operate as a deed between parties concerned.
94. Termination of compulsory licence.
USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT
99. Meaning of use of inventions for purposes of Government
100. Power of Central Government to use inventions for purposes of Government
101. Rights 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 use for purposes of Government
SUITS CONCERNING INFRINGEMENT OF PATENTS
104A. Burden of proof in case of suits concerning infringement.
105. Power of Court to make declaration as to non-infringement
106. Power of Court to grant relief in cases of groundless threat of infringement proceedings
107. Defences etc., in suits for infringement
107A. Certain acts not to be considered as infringement.
108. Reliefs in suits for infringement
109. Rights of exclusive licencee to take proceedings against infringement
110. Right of licencee under section 84 to take proceedings against infringement
111. Restoration on power of Courts to grant damages or account of profits for infringement
112. omitted by Amendment Act 2002.
113. Certificate of validity of specification and costs of subsequent suits for infringement thereof
114. Relief for infringement of partially valid specification
APPEALS TO THE APPELLATE BOARD
117. Staff of Appellate Board.
117A. Appeals to Appellate Board.
117B. Procedure and powers of Appellate Board.
117C. Bar of jurisdiction of courts, etc.
117D. Procedure for application for rectification, etc., before Appellate Board
117E. Appearance of Controller in legal proceedings.
117F. Costs of Controller in proceedings before Appellate Board.
117G. Transfer of pending proceedings to Appellate Board.
117H. Power of Appellate Board to make rules.
118. Contravention of secrecy provisions relating to certain inventions
119. Falsification of entries in register etc.
120. Unauthorized claim of patents rights
121. Wrongful use of words "patent office"
122. Refusal of failure to supply information
123. Practice by non-registered 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 patent agents and restoration
131. Power of Controller to refuse to deal with certain agents
132. Savings in respect of other persons authorized to act as agent
134. Notification as to countries not providing for reciprocity
136. Special provisions relating to convention applications
138. Supplementary provisions as to convention applications
139. Other provisions of Act to apply to convention applications
140. Avoidance of certain restrictive conditions
141. Determination of certain contracts
143. Restrictions upon publication of specification
144. Reports of Examiners to be confidential
145. Publication of patented Journal
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 notions, etc., by post
151. Transmission of orders of courts to Controller
152. Omitted by Patent Amendment Act, 2005
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
158. Power of High Court to make rules
159. Power of Central Government to make rules
160. Rules to be placed before Parliament
161. Omitted [by amendment act 2002]
162. Repeal of Art 2 of 1911 in so far as it relates to patents and savings
163. Omitted by the Patent Amendment Act 2005.
THE PATENTS ACT 1970
[As Amended By the Patents (Amendment) ordinance, 2004.]
(As effective from the 1st January, 2005)
An Act
to amend and consolidate the law relating to patents.
Be it enacted by Parliament in the twenty first year of
the
1. (1)
This Act may be called the Patents Act, 1970.
(2) It
extends to the whole of
(3) It
shall come into force on such date as the Central Government may, by
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.
2. (1)
In this Act, unless the context otherwise requires, -
a.
"Appellate Board” means the Appellate Board referred to in section 116;
ab."Assignee”
includes an assignee of the assignee and the legal representative of a deceased
assignee and references to the assignee of any person include references to the
assignee of the legal representative or assignee of that person;
aba. “Budapest Treaty” means the Budapest Treaty on the International Recognition
of the Deposit of Micro-organisms for the Purposes of Patent Procedure done at
ac."Capable
of industrial application", in relation to an invention, means that the
invention is capable of being made or
used in an industry;
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 or a country which is member of a group of
countries or a union of countries or an Inter-governmental organization referred to as
a convention country in section 133;
e.
"District court" has the meaning
assigned to that expression by the Code of Civil Procedure, 1908’
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. Omitted by Patent Amendment
Act 2005;
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;
or,
(iv) by an institution wholly or substantially
financed by the Government;
‘(i)
“High Court”, in relation to a State or Union territory, means the High Court
having territorial jurisdiction in that State or
|
(ia) "International application"
means an application for patent made in accordance with the Patent
Cooperation Treaty; |
(ja) "inventive step" means a feature of an invention
that involves technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention
not obvious to a person skilled in the art;';
la. “Opposition
Board” means an Opposition Board constituted under sub-section (3) of section
25;
oa. "Patent Cooperation Treaty" means
the Patent Cooperation Treaty done at
ta.
“pharmaceutical substance” means any new entity involving one or more inventive
steps’
(A) in
relation to proceedings before a
High Court, prescribed by rules made by the High Court;
(B) in relation to proceedings before the
Appellate Board, prescribed by rules made by the Appellate Board; and
(C) in
other cases, prescribed by rules made under this Act.';
The
following are not inventions within the meaning of this Act, -
Explanation.—For
the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations
and other derivatives of known substance shall be considered to be the same
substance, unless they differ significantly in properties with regard to
efficacy;".
ka. a mathematical method or a business method
or algorithms;
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.
(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, -
(2) An
application under sub-section (1) may be made by any of the persons preferred
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.
(1A) Every
international application under the
Patent Cooperation Treaty for
a patent, as may be filed
designating India, shall
be deemed to be
an application under this Act,
if a corresponding application has also been filed
before the Controller India.
(1B) The filing date of an application referred to
in sub-section (1A) and its complete specification processed by the
patent office as designated office or elected office shall be the international
filing date accorded under the Patent Cooperation Treaty.
(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 person 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 or an application filed under the Patent Cooperation Treaty
designating
(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 or subsequently within the prescribed period as the
Controller may allow -
(2) At any time after an application for patent is
filed in India and till the grant of a patent or refusal to grant of patent
made thereon, the Controller may also require the applicant to furnish details,
as may be prescribed, relating to the processing of the application in a
country outside India, and in that event the applicant shall furnish to the
Controller information available to him within such period as may be prescribed
(1) Where an application for a patent (not being a
convention application or an application filed under the Patent Cooperation
Treaty designating India) 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 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.
Provided that the period of time specified under sub-section
(1) shall be reckoned from the date of filing of the earliest
provisional specification.
(3) Where an application for a patent (not being a
convention application or an application filed under the Patent Cooperation
Treaty designating India) is accompanied by a specification purporting to be a
complete specification, the Controller may, if the applicant so requests at any
time within twelve months from the date of filing of the application, 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 grant of patent,
cancel the provisional specification and post-date the application to the date
of filing of the complete specification.
(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 application is found in order for grant of a
patent, but such model
or sample shall not be deemed to form part of the specification.
(4)
Every complete specification shall-
Provided that-
(i) the Controller may
amend the abstract for
providing better information to
third parties; and
(ii) if the
applicant mentions a
biological material in
the specification which may not
be described in such a way as to satisfy
clauses (a) and (b), and if such material is not
available to the public,
the application shall be completed by depositing the material to
an international depository authority under the Budapest Treaty and by fulfilling
the following conditions, namely:-
(A) the deposit of the material shall be
made not later than the date of filing the patent application in India and a
reference thereof shall be made in the specification within the prescribed
period;
(B) all the available characteristics of the
material required for it to be correctly
identified or indicated
are included in the
specification including the
name, address of the
depository institution and the
date and number of the deposit of the material at the institution;
(C) access to the material is available in the
depository institution only after the date of the application for patent in
(D) disclose
the source and geographical
origin of the biological material in the specification,
when used in an invention.";
(4A) In case of an international application
designating India, the title, description, drawings, abstract and claims filed
with the application shall be taken as the complete specification for the
purposes of this Act
(5)
The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked
so as to form a single inventive
concept, shall be clear and succinct and
shall be fairly based on the
matter disclosed in the specification.
(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.
(1) There
shall be a priority date for each claim of a complete specification.
(2)
Where a complete specification is filed in pursuance of a single application
accompanied by -
(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 -
(3A) Where a complete specification based
on a previously filed application in India has been filed within twelve months
from the date of that application and the claim is fairly based on the matter
disclosed in the previously filed application, the priority date of that claim
shall be the date of the previously filed application in which the matter was
first disclosed.
(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 this 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), (3A),(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 a complete specification of a patent shall not be invalid by reason
only of -
(1)
Save as otherwise provided, no application for patent shall ordinarily be open
to the public for such period as may be prescribed.
(2)
The applicant may, in the prescribed manner, request the Controller to publish
his application at any time before the expiry of the period prescribed under
sub-section (1) and subject to the provisions of sub-section(3), the Controller
shall publish such application as soon as possible.
(3)
Every application for a patent shall, on the expiry of the period specified
under sub-section (1), be published, except in cases where the application–
(a)
in which secrecy direction is imposed under section 35; or
(b)
has been abandoned under sub-section (1) of section 9; or
(c)
has been withdrawn three months prior to the period specified under sub-section
(1)
(4) In
case a secrecy direction has been given in respect
of an application under section
35, then, it shall be published after
the expiry of the period of prescribed under
sub-section (1) or when
the secrecy direction has ceased to operate, whichever is later.
(5) The
publication of every application
under this section shall include
the particulars of
the date of
application, number of application, name
and address of
the applicant identifying
the application and an abstract.
(6) Upon
publication of an application for a
patent under this section-
(a) the
depository institution shall make
the biological material mentioned in the specification
available to the public;
(b) the
patent office may,
on payment of such
fee as may be
prescribed, make the
specification and drawings, if
any, of such application available to the public.
(7)
On and from the date of publication of the application for patent and until the
date of grant of a patent in respect of such application, the applicant shall
have the like privileges and rights as if a patent for the invention had been
granted on the date of publication of the application:
Provided
that the applicant shall not be entitled to institute any proceedings for
infringement until the patent has been granted:
Provided
further that the rights of a patentee in respect of applications made under
sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue
from the date of grant of the patent.
Provided
also that after a patent is granted in respect of applications made under
sub-section (2) of section 5, the patent-holder shall only be entitled to
receive reasonable royalty from such enterprises which have made significant
investment and were producing and marketing the concerned product prior to the
1st day of January, 2005 and which continue to manufacture the
product covered by patent on the date of grant of the patent and no
infringement proceedings shall be instituted against such enterprises.
(1)
No application for a patent shall be examined unless the applicant or any other
interested person makes a request in the prescribed manner for such examination
within the prescribed period.
(2)
Omitted by Patent Act 2005.
(3)
In case of an application in respect of a claim for a patent filed under
sub-section (2) of section 5 before the 1st day of January, 2005 a request for
its examination shall be made in the prescribed manner and within the
prescribed period by the applicant or any other interested person.
(4) In case the applicant or any
other interested person does not make a request for examination of the
application for a patent within the period as specified under sub-section (1) or
sub-section (2) (omitted by Patent Amendment Act 2005) or
sub-section (3), the application shall
be treated as withdrawn by the
applicant:
Provided
that–
(i)
the applicant may, at any time after filing the application but before the
grant of a patent, withdraw the application by making a request in the
prescribed manner; and
(ii)
in a case where secrecy direction has been issued under section 35, the request
for examination may be made within the prescribed period from the date of
revocation of the secrecy direction.
(1)
When a request for examination has been made in respect of an application for a
patent in the prescribed manner under sub-section (1) or sub-section (3)
of section 11B, the application and specification and other documents related
thereto shall be referred at the earliest by the Controller to an Examiner for making a report
to him in respect of the following matters, namely:-
(2)
The Examiner to whom the application and the specification and other documents
relating thereto are referred under sub-section (1) shall ordinarily make the
report to the Controller within such period as may be prescribed.
(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 -
(2)
The Examiner shall, in addition, make such investigation (as the Controller
may direct) [omitted by the Amendment Act 2002] 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 the
grant of a patent, 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.
|
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, the specification
or other documents to ensure compliance with the provisions of this Act or of
the rules made there under, the Controller, before proceeding to dispose of
the application in accordance with the provisions hereinafter appearing,
shall communicate as expeditiously as possible the gist of the objections to
the applicant and shall, if so required by the applicant within the
prescribed period, give him an opportunity of being heard. |
Where the Controller is
satisfied that the application or any specification or any other document filed
in pursuance thereof does not comply with the requirements of this Act or of
any rules made there under, the Controller may refuse the application or may
require the application, specification or the other documents, as the case may
be, to be amended to his satisfaction before he proceeds with the application and
refuse the application on failure to do so
(1) A person who has made an application for a patent
under this Act may, at any time before the grant of the patent, 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 already 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 first mentioned
application had been filed, and the further application shall be proceeded with
as a substantive application and be examined when the request for examination
is filed within the prescribed period
(1) Subject to the provisions of section 9, at any
time after the filing of an application and before the grant of the patent 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) or any other
document is required to be amended under section 15, the application or
specification or other document 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 or other document is returned to the
applicant, on the date on which it is refiled after complying with the
requirement.
(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 sub-section (1) or
sub-section (2) of section 13, he may refuse the application
unless the applicant -
(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, -
(3) If
it appears to the Controller, as a result of an investigation under section 13
or otherwise, -
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)Omitted
by Patent Amendment Act, 2005.
(1) If, in consequence of the investigations required
under
this Act, 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 -
(2)
Where, after a reference to another patent has been inserted in a complete
specification in pursuance of a direction under sub-section (1) -
(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 -
(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.
(1) An application for
a patent shall be deemed to have been abandoned unless, within such period as
may be prescribed, 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 from the date on
which the first statement of objections to the application or complete
specification or other documents related thereto is forwarded to the applicant
by the Controller.
Explanation.–Where the application for
a patent or any specification or, in the case of a convention application or an
application filed under the Patent Cooperation Treaty designating India 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 or the applicant proves to the satisfaction of the Controller that for the
reasons beyond his control such document could not be re-filed.
(2) If at the
expiration of the period as prescribed under sub-section (1),–
(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, an 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 period as prescribed under sub-section (1), be
extended until such date as the High Court may determine.
(3) If the time
within which the appeal mentioned in sub-section (2) may be instituted
has not expired, the Controller may extend the period as prescribed under
sub-section (1), to 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.
REPRESENTATION
AND OPPOSITION PROCEEDINGS
(1) Where an application for a patent has
been published but a patent has not been granted, any person may, in writing,
represent by way of opposition to the Controller against the grant of patent on
the ground –
(a)
that the applicant for the patent or the
person under 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
(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 if 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 is any material particular was false to his knowledge;
(i)
that in the case of 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;
(j)
that the complete specification does not
disclose or wrongly mentions the souce or geographical origin of biological
material used for the invention;
(k)
that the invention so far as claimed in any
claim of the complete specification is anticipated having regard to the
knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere,
but on no other ground and the Controller shall,
if requested by such person for being heard, hear him and dispose of such
representation in such manner and within such period as may be prescribed
(2) At any time after the grant of patent
but before the expiry of a period of a period of one year from the date of
publication of grant of patent, any person interested may give notice of
opposition to the controller in the prescribed manner on any of the following
grounds, namely;-
(a)
that the patentee 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 if 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
(ii)
in
Provided that the ground specified in sub-clause
(ii) shall not 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 claim of the
patentee 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 claim of the
patentee;
(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 granted 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 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 patentee 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 patent granted on
convention application, the application for patent was not made within twelve
months from the date of the first application for protection for the invention
made in a convention country or in India by the patentee or a person from whom
he derives title;
(j)
that the complete specification does not
disclose or wrongly mentions the source and geographical origin of biological
material used for the invention;
(k)
that the invention so far as claimed in any
claim of the complete specification was anticipated having regard to the
knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere, but on no other ground.
(3) (a)
Where any such notice of opposition is duly given under sub-section (2), the
Controller shall notify the patentee.
(b) On receipt of such notice of opposition, the
Controller shall, by order in writing, constitute a Board to be known as the
Opposition Board consisting of such officers as he may determine and refer such
notice of opposition along with the documents to that Board for examination and
submission of its recommendations to the Controller.
(c) Every Opposition Board constituted under
clause (b) shall conduct the examination in accordance with such procedure as
may be prescribed.
(4) On receipt of the recommendation of
the Opposition Board and after giving the patentee and the opponent an
opportunity of being heard, the Controller shall order either to maintain or to
amend or to revoke the patent.
(5) While passing an order under
sub-section (4) in respect of the ground mentioned in clause (d) or clause (e)
of sub-section (2), the Controller shall not take into account any personal
document or secret trial or secret use.
(6) In case the Controller issues an
order under sub-section (4) that the patent shall be maintained subject to
amendment of the specification or any other document, the patent shall stand
amended accordingly.
(1) Where in any opposition proceeding under this Act the Controller finds that—
(a) 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 (2) of section 25 and revokes the patent on that ground, he may, on request by such opponent made in the prescribed manner, direct that the patent shall stand amended in the name of the opponent;
(b) a part of an invention described in the complete specification was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part of the invention.
(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 included 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 patentee in the earlier application but for all other purposes the application of the opponent shall be proceeded with as an application for a patent under this Act."
(1) If
the Controller is satisfied, upon a request or claim made in accordance with
the provisions of this section, -
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 before the
grant of patent.
(5)
Omitted by Patent Amendment Act 2005
(6)
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 sub-section (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.
(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
(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 -
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.
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.
An
invention claimed in a complete specification shall not be deemed to have been
anticipated by reason only of -
if the application for the patent is made by the true
and first inventor or a person deriving title from him not later than
twelve months after the opening of the exhibition or the reading or
publication of the paper, as the case may be.
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 -
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.
(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.
Notwithstanding
anything contained in this Act, the Controller shall not refuse to accept a
complete specification for a patent or (omitted by Patent Amendment Act 2005) 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.
(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).[omitted
by Amendment Act 2002]
(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 has not given any directions under
sub-section (1), is relevant for defence purposes, it may at any time before grant of
patent notify the Controller to that
effect, and thereupon the provisions of that sub-section 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.
(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
reconsidered by the Central Government at intervals of six months or on a request made by the applicant which is found to be reasonable by the Controller and if, on
such reconsideration it appears to the
Central Government that
the publication of the
invention would no longer be prejudicial to the defence of India or in
case of an application filed by a
foreign applicant it is found that
the invention is
published outside India, it shall
forthwith give notice to the
Controller to revoke the direction 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 be
prescribed.
(1) So
long as any directions under section 35 are in force in respect of an
application -
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Provided that the application may,
subject to the directions, proceed up to the stage of grant of the patent,
but the application and the specification found to be in order for grant of
the patent shall not be published, and no patent shall be granted in
pursuance of that 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 found to be
in order for grant of the patent during the
continuance in force of the directions, when -
(3)
Where a patent is granted in pursuance of an application in 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.
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.
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(1) No person
resident in India shall, except under the authority of a written permit
sought in the manner prescribed and granted by or on behalf of the
Controller, make or cause to be made any application outside India for the
grant of a patent for an invention unless– (a) an
application for a patent for the same invention has been made in India, not
less than six weeks before the application outside India; and (b)
either no direction has been given under sub-section (1) of section 35
in relation to the application in (2) The Controller shall dispose
of every such application within such period as may be prescribed: Provided that if the invention is relevant for defence purpose
or atomic energy, the Controller shall not grant permit without the prior
consent of the Central Government. (3) This section shall not apply
in relation to an invention for which an application for protection has first
been filed in a country outside |
Or
makes or causes to be made an application for grant of a patent outside
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.
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.
(1) Where an
application for a patent has been found to be in order for grant of the patent
and either–
(a) the application
has not been refused by the Controller by virtue of any power vested in him by
this Act; or
(b) the application has
not been found to be in contravention of any of the provisions of this Act, the
patent shall be granted as expeditiously as possible to the applicant or, in
the case of a joint application, to the applicants jointly, with the seal of
the patent office and the date on which the patent is granted shall be entered
in the register.
(2) On the grant of
patent, the Controller shall publish the fact that the patent has been granted
and thereupon the application, specification and other documents related thereto
shall be open for public inspection.
Where
at any time after a patent has been granted
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 granted, 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 application for patent 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
applied immediately before the commencement of this Act, shall be dated as of
the date of the filling 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 publication of
the application.
(1)
Every patent shall be in the prescribed form and shall have effect throughout
(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.
The
grant of a patent under this Act shall be subject to the condition that -
Subject
to the other provisions contained
in this
Act and the conditions specified
in section 47, a
patent granted under this Act shall confer upon the patentee-
(a)
where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his
consent, from the act of making,
using, offering for sale, selling or
importing for those purposes that
product in India;
(b)
where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his
consent, from the act of using that process, and from the act of
using, offering for sale,
selling or importing for those purposes he product
obtained directly by that process 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 -
(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,
air crafts 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.
(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, the rights conferred by section 48 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 representatives of a deceased person or their rights or obligations as
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.
(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 any 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 given an opportunity to be heard -
(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.
(1) Where the patent has been revoked under section
64 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 Appellate
Board or 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 Appellate Board or 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 Appellate
Board or 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 Appellate Board or 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 Appellate
Board or 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, after the commencement of the Patents
(Amendment) Act, 2002, and the term of
every patent which has not expired and has not ceased to have
effect, on the date of such
commencement, under this Act, shall
be twenty years from the date of filing of the application for the patent.
Explanation.–For the purposes of this
sub-section, the term of patent in case of International applications filed
under the Patent Cooperation Treaty designating
(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 such extended period as may be prescribed.
(3)Omitted
by Patent Amendment Act 2005.
(4) Notwithstanding anything contained in any other
law for the time being in force, on cessation of the patent right due to
non-payment of renewal fee or on the expiry of the term of patent, the subject
matter covered by the said patent shall not be entitled to any protection.
(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 application was the same as or later than the
date of filing of the application in respect of the main invention.
(4) A patent of addition shall not be granted before grant of
the patent for the main invention.
(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 fee 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 fee
shall thereafter be payable, upon the same dates, as if the patent had been
originally granted as an independent patent.
(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 -
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.
(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 or any document relating thereto 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 or any
document relating thereto 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
complete specification or any document relating thereto under this section shall state the
nature of the proposed amendment, and shall give full particulars of the
reasons for which the application is made.
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(3)
Any
application for leave to amend an application for a patent or a complete specification
or a document related thereto under this section made after the grant of
patent and the nature of the proposed amendment may be published.”; |
(4)
Where an application is Published under sub-section (3), any person
interested may, within the prescribed period after the publication 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 or any other
document related thereto to comply with the directions of the Controller issued
before the grant of a patent.
(1) In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, 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 Appellate Board or the High Court may think fit, and if in any proceedings for revocation the Appellate Board or 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 an application for an order under this section is made to the Appellate Board or 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 Appellate Board or the High Court.
(3) Copies of all orders of the Appellate Board or the High Court allowing the patentee to amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register.
(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 grant of patent any amendment of the specification or any
other documents related thereto is allowed by the Controller or by the
Appellate Board or the High Court, as the case may be,—
(a) the
amendment shall for all purposes be deemed to form part of the specification
along with other documents related thereto;
(b) the fact
that the specification or any other documents related thereto has been amended
shall be published as expeditiously as possible; 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.
(1)
Where a patent has ceased to have effect by reason of failure to pay any
renewal fee within the period prescribed under section 53 or within such
period as may be allowed under sub-section (4) of section 142, 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
eighteen months from the date on which the patent ceased to have effect, make
an application for the restoration of the patent.
(2)
omitted [by Amendment Act 2002]
(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.
(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, he shall publish the application in the prescribed manner; and
within the 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, -
(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.
(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 have effect and the date of the publication 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 publication of the application for restoration
of the patent.
(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 publish the offer in the prescribed manner, and also notify
every person other than the patentee whose names appears in the register as
having an interest in the patent.
(3)
Any person interested may, within the prescribed period after such publication, 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, be revoked on a petition of any person
interested or of the Central Government by the Appellate Board or on a counter-claim
in a suit for infringement of the patent by the High Court on any of the following grounds,
that is to say -
(2)
For the purposes of clauses (e) and (f) of sub-section (1), -
(3)
For the purpose of clause (l) of sub-section (1), no account shall be taken of
any use of the invention -
(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 any other person.
(1) Where at
any time after grant of a patent, the Central Government is satisfied that a
patent is for an 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, it may direct the Controller to revoke the patent, and thereupon the
Controller, after giving notice, 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 revoke the patent.
(2) In any proceedings under sub-section
(1), the Controller may allow the patentee to amend the complete
specification in such manner as he considers necessary instead of revoking the
patent.”.
Where
the Central Government is of opinion that a patent or the mode in which it is
exercised is 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.
(1)
There shall be kept at the patent office a register of patents, wherein shall
be entered
(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 directions of the Central Government, the
register shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in
sub-section (1), it shall be lawful
for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any
other electronic form subject to such
safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence
Act, 1872 (1 of
1872), a copy of, or
extracts from, the
register of patents, certified to be a true copy under the hand of
the Controller or any officer duly authorised by the Controller in this behalf
shall, in all legal proceedings, be admissible in evidence.
(6) In the
event the register is kept wholly or partly
in computer floppies, diskettes
or any other electronic form,-
(a) reference in this Act to an entry in the
register shall be deemed to include reference
to a record of particulars
kept in computer floppies, diskettes
or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being
registered or entered in the register
shall be deemed to include references to the
keeping of record of those
particulars comprising the register or part of the register in computer
floppies, diskettes or a y other electronic form; and
(c)
references in this Act to the rectification of the register are to be read as including references to the
rectification of the record of particulars
kept in computer
floppies, diskettes or
any other electronic form and
comprising the register or part of the register."
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 were 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 duly executed.
(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, -
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 a 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 (3) 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.
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.
(1)
The Appellate Board may, on the application of any person aggrieved -
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 Appellate Board may decide any question
that may be necessary or expedient to decide in connection with the
rectification of the register.
(3)
Notice of any application to the Appellate Board 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.
(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.
(3) If
the record of particulars is kept
in computer floppies or diskettes
or in any other electronic form,
sub-sections (1) and (2) shall be
deemed to have been complied with
if the public is given access
to such computer floppies,
diskettes or any other electronic form
or printouts of such record of particulars for inspection.
(1)
The Controller General of Patents, Designs and Trade Marks appointed under
sub-section (1) of section 3 of the
Trade Marks Act, 1999 (47 of 1999), 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 sub-section
(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.
(1)
For the purposes of this Act, there shall be an office which shall be known as
the patent office.
(2) The
Central Government may, by notification in the Official Gazette, specify the
name of the Patent Office.
(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.
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.
An
officer or employee in the patent office shall not, except when required or
authorized by this Act or under a direction in writing of the Central
Government or Appellate Board or the
Controller or by order of a 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
to suit under the Code of Civil Procedure, 1908, in respect of the following
matters, namely:-
(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.
(1)
Without prejudice to the provisions contained in sections 57 and 59 as regards
amendment of applications for patents or complete specifications or other
documents relating thereto 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 any 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 a 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
an 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 published in the prescribed manner.
(5)
Within the prescribed time after any such publication
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 thereof to the person by whom the request was
made, and shall give to him and to the opponent an opportunity to be heard
before he decides the case.
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 direction 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.
Without
prejudice to any 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.
Provided
that the party desiring a hearing makes the request for such hearing to the Controller at least ten days in
advance of the expiry of the time-limit
specified in respect of the proceeding.
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.
(a) "patented article"
includes any article made
by a patented process; and
(b)
"patentee" includes an exclusive licensee.
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 are granted to encourage inventions and to
secure that the inventions are
worked in
(b) that
they are not granted merely to enable patentees to enjoy a monopoly for the importation of the
patented article;
(c)
that the protection and enforcement of patent rights contribute to the promotion
of technological innovation and to
the transfer and dissemination of technology, to the mutual advantage of
producers and users of technological knowledge and in a manner
conducive to social and economic
welfare, and to a balance of rights and obligations;
(d)
that patents granted do not impede protection of public health and
nutrition and should
act as instrument to promote public interest specially in
sectors of vital importance for
socio-economic and technological
development of India;
(e)
that patents granted do not in any way prohibit Central Government in taking
measures to protect public health;
(f) that
the patent right is not abused by
the patentee or person deriving title
or interest on patent from the patentee,
and the patentee or a
person deriving title or interest on patent
from the patentee does not resort
to practices which unreasonably restrain trade or adversely affect the
international transfer of technology;
and
(g)
that patents are granted to make the
benefit of the
patented invention available at reasonably affordable prices to the
public.
(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 for grant of compulsory
licence on patent on any of the following grounds, namely:-
(a)
that the reasonable requirements of the public with respect to the patented
invention have not been satisfied, or
(b) that the
patented invention is not available to the public at a reasonably affordable price, or
(c) that
the patented invention is not
worked in the
(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 worked in the territory of
India or that the patented invention is not available to the public at a reasonably affordable
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) 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 worked
in the territory of India or that the patented invention is
not available to the public at a
reasonably affordable price, may grant a licence upon such terms as he may deem
fit.
(5)
Where the Controller directs the patentee to grant a licence he may, as incidental thereto, exercise the
powers set out in section 88.
(6) In
considering the application filed
under this section,
the Controller shall take into account,-
(i) the nature of the invention, the time which
has elapsed since the sealing 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;
(iv) as to whether the applicant has made efforts
to obtain a licence from the patentee on
reasonable terms and conditions and such efforts have not been successful within a reasonable
period as the Controller may deem fit:
Provided that this clause shall not be applicable in case
of national emergency or other circumstances of extreme urgency or
in case of public non-commercial use or on establishment
of a ground of anti-competitive
practices adopted by the patentee, but
shall not be required to take into account matters subsequent to the making of the application.
Explanation.—For
the purposes of clause (iv), "reasonable period" shall be construed
as a period not ordinarily exceeding a period of six months.'
(7) For the purposes of this Chapter, the
reasonable requirements of the public
shall be deemed not to have been satisfied-
(a)
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 class of persons trading or manufacturing
in India is prejudiced; or
(ii) the
demand for the patented article has not been met
to an adequate extent or on
reasonable terms; or
(iii) a
market for export of the patented
article manufactured in
(iv) the
establishment or development of
commercial activities in
(b)
if, 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, 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
patentee imposes a condition upon the grant
of licences under the
patent to provide exclusive grant back,
prevention to challenges to the validity
of patent or coercive package licensing, or
(d) if the patented invention is not being worked
in the territory of India on a
commercial scale to an adequate extent or is not being so worked to the fullest extent that is
reasonably practicable, or
(e) if
the working of the patented invention in the territory of India on a
commercial scale is
being prevented or
hindered by the importation from abroad of the patented
article 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.
(1)Where, in respect of a patent, a compulsory licence
has been granted, 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,
apply to the Controller for an order revoking the patent on the ground that the patented invention has
not been worked in the territory of India or that reasonable requirements
of the public with respect to the patented invention has
not been satisfied or that
the patented invention is not available to the public at a
reasonably affordable price.
(2) Every
application under sub-section
(1) shall contain
such particulars as may be prescribed, 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 patented invention has not been worked
in the territory of India or that the patented invention is
not available to the public
at a reasonably affordable 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.
(1)
Where an
application under section 84 or section 85, as the case may be, is made
on the grounds that the
patented invention has not been worked in the territory of India
or on the ground mentioned in clause (d) of sub-section (7) of section
84 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 month 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 the territory of 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 hall 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 the territory of
India on a commercial scale a
d to
an adequate extent.
(1) Where
the Controller is satisfied, upon consideration of an application under section 84, or section 85, that a prima
facie case has been
made out for the making of an
order, he s all 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 publish
the application in the official journal.
(2) The
patentee or any
other person desiring
to oppose the application may, within such time as may be 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.
(1)
Where the Controller is satisfied on an 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
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 and if those
patents involve important technical advancement of considerable
economic significance in relation to the
other patents, 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.
(4) 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 or 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.
The
powers of the Controller upon
an application made under section 84
shall be exercised with a view to
securing the following general purposes, that is to say,-
(a) that patented inventions are worked on a
commercial scale in the
(b) that
the interests of any person for the time being working
or developing an invention in the
(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 reasonably affordable
prices;
(iv)
that the licence granted is a non-exclusive licence;
(v) that
the right of the licensee is non-assignable;
(vi) that the licence is for the balance term of
the patent unless a shorter term is
consistent with public interest;
"(vii) that the licence is granted with a
predominant purpose of supply in the Indian market and that the licensee may
also export the patented product, if need be in accordance with the provisions
of sub-clause (iii) of clause (a) of sub-section (7) of section 84;
(viii) that in the case of
semi-conductor technology, the licence granted is to work the invention for
public non-commercial use;
(ix) that in case the
licence is granted to remedy a practice determined after judicial or
administrative process to be anti-competitive, the licensee shall be permitted
to export the patented product, if need be.;
(2) No
licence granted by the Controller shall authorise the licensee to import
the patented article or an article or susbtance 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.
(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 license 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 the
(3) When the Controller is satisfied that the
conditions mentioned in sub-section (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:
Provided that
the licence granted
by the Controller
shall be non-assignable except
with the assignment of the respective patents.
(4) The
provisions of sections 87, 88, 89 and 90 shall
apply to licences granted under this section as they apply to
licences granted under section 84.
(1) If
the Central Government is satisfied, in respect
of any patent in force in circumstances of national emergency or in
circumstances of extreme
urgency or in
case of public non-commercial use,
that it is necessary that compulsory
licences should be granted at any time after the sealing thereof
to work the invention, it may make a declaration to that effect,
by notification 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 and conditions as he
thinks fit;
(ii) in settling the terms and conditions 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 patentee deriving a reasonable advantage from their patent
rights.
(2) The
provisions of sections 83, 87, 88, 89 and 90 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.
(3) Notwithstanding anything contained in
sub-section (2), where the
Controller is satisfied on consideration
of the application referred to in clause
(i) of sub-section (1) that it is necessary in-
(i) a
circumstance of national emergency; or
(ii) a
circumstance of extreme urgency; or
(iii) a
case of public non-commercial
use, which may arise or is
required, as the case may be, including public health crises, relating to
Acquired Immune Deficiency Syndrome, human immunodeficiency virus,
tuberculosis, malaria or
other epidemics, he shall not apply
any procedure specified in sec
ion 87 in relation to that application for grant of licence under this section:
Provided that
the Controller shall, as soon as may
be practicable, inform the
patentee of the patent relating to the application for such non-application of
section 87.
92A. Compulsory licence for export
of patented pharmaceutical products in certain exceptional circumstances.
(1) Compulsory licence
shall be available for manufacture and export of patented pharmaceutical
products to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector for the concerned product to address public health
problems, provided compulsory licence has been granted by such country or such
country has, by notification or otherwise, allowed importation of the patented
pharmaceutical products from India.
(2) The Controller
shall, on receipt of an application in the prescribed manner, grant a
compulsory licence solely for manufacture and export of the concerned
pharmaceutical product to such country under such terms and conditions as may
be specified and published by him.
(3) The provisions of
sub-sections (1) and (2) shall be without prejudice to the extent to which
pharmaceutical products produced under a compulsory licence can be exported
under any other provision of this Act.
Explanation.—For the
purposes of this section, "pharmaceutical products" means any
patented product, or product manufactured through a patented process, of the
pharmaceutical sector needed to address public health problems and shall be
inclusive of ingredients necessary for their manufacture and diagnostic kits
required for their use.
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.
(1) On an application made by
the patentee or any other person deriving title or
interest in the patent,
a compulsory licence
granted under section
84 may be terminated
by the Controller, if and when the circumstances that gave rise to the grant thereof no longer exist and such
circumstances are unlikely to recur:
Provided that
the holder of the compulsory
licence shall have the right to object to such termination.
(2) While
considering an application under sub-section
(1), the Controller shall take
into account that the interest of the person who had previously been granted
the licence is not unduly prejudiced.".
(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)
Omitted [By Amendment Act 2002]
(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.
(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 or any person authorised by it under sub-section (1), at any
time after grant of the patent or in 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 case of any such use of any patent,
the patentee shall be paid not
more than adequate remuneration in the circumstances of each case, taking into
account the economic value of the use of the patent.
(4)
The authorisation 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, except in
case of national emergency or other circumstances of extreme urgency or for
non-commercial use, 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, on non-commercial basis, 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 matter 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 include a
reference to such assignor or exclusive licensee.
(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 -
the
provisions of any licence, assignment or agreement granted or made, (whether
before or after the commencement of this Act),[omitted by Amendment Act
2002] 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 for 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), [omitted by
Amendment Act 2002]
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) [omitted by Amendment Act 2002], 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 as 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 -
(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
acquired 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.
(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 sub-section (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, -
(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 the 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.
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 to suit:
Provided
that where a counter-claim for revocation of the patent is made by the
defendant, the suit, along with the counter-claim, shall be transferred to the
High Court for decision.
(1)
In any suit for infringement of a
patent, where the subject matter of patent
is a process for obtaining a product, the court may direct the defendant
to prove that the process used by him to obtain the product, identical to the
product of the patented process, is different
from the patented process if,-
(a) the subject matter of the patent is a process
for obtaining a new product; or
(b) there
is a substantial likelihood that the identical product is made
by the process, and the patentee
or a person deriving title or
interest in the patent from him, has been unable
through reasonable efforts to determine
the process actually used:
Provided that the patentee or a person deriving title
or interest in the patent from him,
first proves that the product is identical to the product directly obtained by
the patented process.
(2) In considering whether a party has discharged
the burden imposed upon him by sub-section
(1), the court shall not
require him to disclose any manufacturing or commercial
secrets, if it appears to the court that it would be unreasonable to do so.
(1)
Notwithstanding anything contained in section 34 of the Specific Relief Act,
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 -
(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 a declaration brought by virtue of this section, and
accordingly the making or refusal of such a declaration in the case of a patent
shall not be 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 publication of grant of a patent, and references in this section to the patentee
shall be construed accordingly.
(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 reliefs, that is to say -
(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 of the specification not shown by
the plaintiff to be invalid, the court may grant to the plaintiff all or any of
the reliefs prayed for.
Explanation – A mere notification of the [existence]
of a patent does not constitute a threat of proceeding within the meaning of
this section.
(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 the making, using or importation of
any machine, apparatus or other article or by the using of any process or by
the importation, use or distribution of any medicine or drug, it shall be a
ground for defence that such making, using importation or distribution is in
accordance with any or more of the conditions specified in section 47.
For the purposes of this Act,-
(a) any act of
making, constructing, using, selling or importing a patented invention solely for uses reasonably relating to the
development and submission of
information required under any law for the time being in force, in India, or in a country other than India
that regulates the manufacture,
construction, use, sale or import of any
product;
(b)
importation of patented products by any person from a person who is duly authorised under the law to produce
and sell or distribute the product,
shall not be considered as an infringement of patent rights.
(1)The
reliefs 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.
(2) The
court may also order that the goods which are found to be
infringing and materials and implement,
the predominant use of which is in the creation of infringing goods shall be
seized, forfeited or destroyed, as the court deems fit under the circu
stances of the case without payment of any compensation.
(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 an 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 carried 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 plaintiff
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.
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.
(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.
(1) If
in any proceedings before the Appellate Board or a High Court for the
revocation of a patent under section 64 and section 104, as the case may be,
the validity of any claim of a specification is contested and that claim is
found by the Appellate Board or the High Court to be valid, the Appellate Board
or the High 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 relying on the validity of the claim
obtains a final order or judgement 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 authorising the courts
or the Appellate Board hearing appeals from decrees or orders in suits for
infringement or petitions for revocation, as the case may be, to pass orders
for costs on the scale referred to therein.
(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 claims 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 and 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.
(1)
Subject to the provisions of this Act, the Appellate Board established under section 83 of the
Trade Marks Act,1999 (47 of
1999) shall be the Appellate Board for the
purposes of this Act and the said
Appellate Board shall exerc se the jurisdiction, power and authority conferred
on it by or under this Act:
Provided that
the Technical Member of the
Appellate Board for the purposes
of this Act
shall have the qualifications specified
in sub-section (2).
(2) A
person shall not be qualified for appointment as a
Technical Member for the purposes of this Act unless he-
(a) has, at least five years, held the post of
Controller under this Act or has
exercised the functions of the Controller under this Act for at least five years; or
(b) has,
for at least ten years, functioned as a
Registered Patent Agent and
possesses a degree in engineering or technology or a masters degree in
science from any University established under law for the time being in force or equivalent; or
(c) Omitted by Patent Amendment Act 2005.
(1)
The Central Government
shall determine the nature
and categories of
the officers and
other employees required to
assist the Appellate Board in the discharge
of its functions under this Act
and provide the Appellate Boar with such officers and other employees as it may
think fit.
(2) The
salaries and allowances and
conditions of service of the
officers and other employees of the
Appellate Board shall be such as may be
prescribed.
(3) The
officers and other employees of
the Appellate Board shall discharge their
functions under the general superintendence of the
Chairman of the Appellate Board in the manner as may be prescribed.
(1) Save as otherwise
expressly provided in sub-section (2), 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 f r the purpose of giving effect to any such
decision, order or direction.
(2) An appeal
shall lie to the Appellate Board from
any decision, order or
direction of the Controller
or Central Government
under section 15, section 16, section 17, section 18, section
19, section 20, sub-sections (4) of section
25, section 28,
section 51, sec
ion 54, section 57,
section 60, section
61, section 63,
section 66, sub-section (3) of section 69, section 78, sub-sections
(1) to (5) of section 84, section 85, section 88, section 91, section 92 and
section 94.
(3) Every
appeal under this section shall be in the prescribed form and shall be verified in such manner as
may be prescribed and shall be accompanied
by a copy of the decision, order
or direction appealed against and by such fees as may be
prescribed.
(4) Every appeal shall be made within three months from
the date of the decision,
order or direction,
as the case may
be, of the Controller or the
Central Government or within such further time
as the Appellate Board
may, in accordance with the rules
mad by it, allow.
The provisions
of sub-sections (2) to (6) of section 84, section 87, section 92,
section 95 and section
96 of the Trade Marks Act, 1999 (47 of
1999) shall apply to the Appellate Board in the discharge of
its functions under this Act as they apply to it in the discharge of
its functions under the Trade Marks Act,
1999.
No
court or other authority shall have or, be entitled to, exercise any
jurisdiction, powers or authority in
relation to the matters referred to in sub-section (2) of section 117A or
section 117D.
(1) An application for
revocation of a patent before the Appellate Board under section 64 and an
application for rectification of the register made to the Appellate Board under Section 71 shall be in such form as may be
prescribed.
(2) A
certified copy of every order or judgment of the Appellate Board relating to
a patent under this Act shall
be communicated to the
Controller by the Board and the Controller shall give
effect to the order of the Board and shall, when so directed,
amend the entries in, or rectify, the register in accordance with such order.
(1)
The Controller shall have the right to appear and be heard-
(a) in any legal proceedings before the Appellate
Board in which the relief sought includes alteration or rectification
of the register or in which any question relating to the practice of the patent
office is raised;
(b) in
any appeal to the
Appellate Board from an order
of the Controller on an
application for grant of a patent-
(i)
which is not opposed, and the application is either refused by the
Controller or is
accepted by him
subject to any
amendments, modifications, conditions or limitations, or
(ii) which
has been opposed and the Controller
considers that his appearance is
necessary in the public interest, and
the Controller shall appear in
any case if so directed by the Appellate Board.
(2) Unless the Appellate Board otherwise directs,
the Controller may, in lieu of appearing, submit a statement in writing
signed by him, giving
such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the
grounds of any decision given by him or of the practice of the patent office in
like cases, or of other matters relevant to the issues and within his
knowledge as the Controller
may deem it necessary, and such
statement shall be evidence in the proceeding.
In all
proceedings under this Act before the Appellate Board, the costs of
the Controller shall be in the
discretion of the Board, but the Controller shall not be ordered to pay
the costs o any of the parties.
All cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred
The
Appellate Board may make rules consistent with this Act as to the conduct and
procedure in respect of all proceedings before it under this Act.".
If any
person fails to comply with any direction given under section 35 (***) or makes
or causes to be made an application for the grant of a patent in contravention
of section 39, he shall be punishable with imprisonment for a term which may
extended to two years, or with fine or with both.
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.
If any person falsely represents that any article
sold by him is patented in
Explanation
1.- For the purposes of this section, a person shall be deemed to represent -
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.
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.
(1) If
any person refuses or fails to furnish -
he shall be punishable with fine which may extend to ten lakh
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 is 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.
If any person contravenes the provisions of section
129, he shall be punishable with fine which may extend to one lakh
rupees in the case of a first offence and five lakh 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 sub-section 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,
-
(1)
The Controller shall maintain a register
to be called the register of patent agents in which shall be entered the
names, addresses and other relevant particulars, as may be prescribed, of all
persons qualified to have their names so
entered under section 126.
(2)
Notwithstanding anything contained in sub-section (1), it shall be lawful for
the Controller to keep the register of patent agents
in computer floppies, diskettes
or any other electronic form subject to
such safeguards as may be prescribed.
(1) A
person shall be qualified to have his name entered in the register of patent
agents if he fulfils the following conditions, namely: -
(i)
Omitted by patent Amendment Act 2005; or
(ii)
has passed the qualifying examination prescribed for the purpose; or
(iii) has, for a total period of not less than ten
years, functioned either as an examiner or discharged the functions of
the Controller under section 73 or both, but ceased to hold any
such capacity at the time of making the application for registration ;
(d) he
has paid such fee as may be prescribed.
(2)
Notwithstanding anything contained in sub-section (1), a person who has been registered as a patent agent before the
commencement of the “the
Patents (Amendment) Act, 2005
shall be entitled to continue to be, or when required to be re-registered, as a
patent agent, on payment of the fees as may be prescribed.
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 -
(1) (Subject
to the provisions contained in sub-section (2) and to any rules made under this
Act) [omitted by Amendment Act 2002] all applications and communications to
the Controller under this Act may be signed by a patent agent authorised in
writing in this behalf by the person concerned.
(2)
[omitted by Amendment Act 2002]
Provided
that if such person is absent from
(1) No
person, either alone or in partnership with any other person, shall practise,
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: -
(1)
The Controller may remove the name of any person from the register when he is
satisfied, after giving that person a reasonable opportunity of being heard and
after such further inquiry, if any, as he 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;
(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 Controller renders him unfit to be kept in the
register.
(2)
The Controller may, on application and on sufficient cause being shown, restore
to the register the name of any person removed therefrom.
(1)
Subject to any rules made in this behalf, the Controller may refuse to
recognise as agent in respect of any business under this Act -
(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
Nothing
in this Chapter shall be deemed to prohibit -
Any
country, which is a signatory or party or a group of countries, union of
countries or inter-governmental organisations which are signatories or parties
to an international, regional or bi-lateral treaty, convention or arrangement
to which India is also a signatory or party and which affords to the applicants
for patents in India or to citizens of India similar privileges as are granted
to their own citizens or citizens to their member countries in respect of the
grant of patents and protection of patent rights shall be a convention country
or convention countries for the purposes of this Act.
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, -
(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.
(3) In case of an
application filed under the Patent Cooperation Treaty designating
Provided that a request for
examination under section 11B shall be made only for one of the applications filed
in
(1)
Every convention application shall -
(2)
Subject to the provisions contained in section 10, a complete specification
filed with a convention application may include claims in respect of
developments or, 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 a 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 application.
(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 acknowledgement 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.
(1) Where a
convention application is made in accordance with the provisions of this
Chapter, the applicant shall furnish, when required by the Controller, 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 as referred to in section 133 verified to the satisfaction
of the Controller, within the prescribed period from the date of communication
by the Controller.
(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
furnished when required by the Controller.
(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, in the date on which the application was made in that convention
country.
(4) An international application filed under the
Patent Cooperation Treaty
designating India shall have
effect of filing an application for patent
under section 7, section 54 and section 135, as the case may
be, and the title, description, claim and ab tract and drawings, if
any, filed in the international application shall be
taken as complete specification
for the purposes of this Act.
(5) The
filing date of an application for
patent and its complete specification processed
by the patent office as designated
office shall be the
international filing date accorded
under the Patent Cooperation Treaty.
(6) Amendment, if any, proposed by the applicant
for an international application designating India or designating and electing
India before international searching authority or preliminary examination
authority shall, if the
applicant so desires, be tak n as an
amendment made before the patent
office.
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.
(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 -
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 -
(5)
[Omitted by Amendment Act 2002]
(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 of
this Act),[omitted by Amendment Act 2002]
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 fee shall be paid along with the document or within
the prescribed time and the
document shall be deemed not to have been filed at the office if the fee
has not been paid within such time.
(4) Where a
principal patent is granted later than two years from the date of filing of the application, 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 or within the extended period not later than nine months
from the date of recording.
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 before the expiration of the period prescribed
under sub-section (1) of section 11A or before the same is open to public
inspection in pursuance of sub-section (3) of section 11A or section 43.
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.
The Controller
shall publish periodically an official journal which shall contain such
information as may be required to be published by or under the provisions of
this Act or any rule made thereunder.
(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
(3)
The Controller may publish the information received by him under sub-section
(1) or sub-section (2) in such manner as may be prescribed.
(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.
(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.
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.
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.
(1)
Every order of the High
Court or the Appellate Board
on a petition for revocation, including orders granting certificates of
validity of any claim, shall be transmitted by the High Court or the Appellate
Board 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 judgement 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 record.
(3)
The provisions of sub-sections (1) and (2) shall also apply to the court to
which appeals are preferred against decisions of the Appellate Board or courts as the case may be referred to in those sub-sections.
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.
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.
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.
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.
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.
(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 the security
of India;
(b) take
any action including the revocation of any patent which it considers
necessary in the interest of the security of
Explanation.-For the
purposes of this
section, the expression "security of
(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 international relations.
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.
(1)
The Central Government may, by notification in the Official Gazette, make rules
for carrying out the purposes of this Act.
(2)
Without prejudice to the generality of the foregoing 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;
(ia) the period which the
Controller may allow for filing of statement and undertaking for in respect of
applications under sub-section (1), the period within which the details
relating to processing of applications may be filed before the Controller and
the details to be furnished by the applicant to the Controller under
sub-section (2) of section 8;
(ib) the period within
which a reference to the deposit of materials shall be made in the
specification under sub-clause (A) of clause (ii) of the proviso to sub-section
(4) of section 10;
(ic) the period for which
application for patent shall not be open to the public under sub-section (1)
and the manner in which the applicant may make a request to the Controller to
publish his application under sub-section (2) of section 11 A;
(id) the manner of making
the request for examination for an application for patent and the period within
which such examination shall be made under sub-sections (1) and (3) of section
11B;
(ie) the manner in which an
application for withdrawal of an application for grant of a patent shall be
made and the period within which a request for examination from the date of
revocation of secrecy directions shall be made under the proviso to sub-section
(4) of section 11B.
(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 published
under this Act;
(iii)
the fees which may be payable under this Act and the manner and time of payments of such fees;
(iv)
the matters in respect of which the Examiner may make a report to the
Controller;
((v) the manner in which
and the period within which the Controller shall consider and dispose off a
representation under sub-section (1) of section 25;
(va) the period within
which the Controller is required to dispose off an application under section
39;
(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 safeguards to be
observed in the maintenance of
such register in computer
floppies, diskettes or any other
electronic form 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;
(xiia)
the salaries and allowances and other conditions of service of the officers
and other employees
of the Appellate
Board under sub-section (2),
and the manner in which the officers
and other employees of the
Appellate Board shall discharge their functions under sub-section (3), of
section 117;
(xiib) the
form of making an appeal, the manner of verification and the fees payable under sub-section (3) of
section 117A;
(xiic) the form in which, and the particulars to be
included in, the application to the
Appellate Board under sub-section (1) of
section 117D;
(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 under
sub-section (1) of section 125 and the
safeguards to be observed in the maintenance of such register of patent
agents on computer floppies, diskettes
or any other electronic form
under sub-section (2) of that section; and 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;
(xvi)
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.
Provided that the
Central Government may, if it is satisfied that circumstances exist which
render it practically not possible to comply with such condition of previous
publication, dispense with such compliance.
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 in two successive sessions, and,
if before the expiry of the session in which it is so laid or in the session
immediately following, 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)
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)
Omitted [by amendment act 2002]
(3) Omitted [by amendment act 2002]
(4)
The mention of particular matters in this section shall not prejudice the
general application of the General Clause Act, 1897, with respect of 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 not been passed.
(1) Notwithstanding
the omission of Chapter IVA of the principal Act by section 21 of this Act,
every application for the grant of exclusive marketing rights filed under that
Chapter before the 1st day of January, 2005, in respect of a claim for a patent
covered under sub-section (2) of section 5 of the principal Act, such
application shall be deemed to be treated as a request for examination for
grant of patent under sub-section (3) of section 11B of the principal Act, as
amended by this Act.
(2) Every
exclusive right to sell or distribute any article or substance in
(3) Without
prejudice to any of the provisions of the principal Act, the applications in
respect of which exclusive rights have been granted before the 1 st day of
January, 2005 shall be examined for the grant of patent immediately on the
commencement of this Act.
(4) All suits
relating to infringement of the exclusive right granted before 1st day of
January, 2005 shall be dealt with in the same manner as if they were suits
concerning infringement of patents under Chapter XVIII of the principal Act.
(5) The
examination and investigation required as carried out for the grant of
exclusive right 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.
The Patents
(Amendment) Ordinance, 2004 is hereby repealed.
Notwithstanding
such repeal, anything done or any action taken under the principal Act, as
amended by the said Ordinance shall be deemed to have been done or taken under
the corresponding provisions of the principal Act, as amended by this Act.