INTELLECTUAL PROPERTY LAW

PROJECT WORK
ON
PATENT

SUBMITTED TO :- SUBMITTED
BY:-
SUPREET MAM SHUBHAM RANA
ROLL NO.
181/15
SECTION
D
BCOM.LLB
(10 SEM)
TH

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ACKNOWLEDGEMENT
Success is a blend of multiple efforts. The final import of this project is also a
result of the sheer hard work and constant support of many people. I would like to
take this opportunity to thank all of them.

To begin with, I would like to express my humble gratitude to my teacher, Mrs.

Supreet Mamfor her able guidance and mentoring. The meticulous manner in
which she teaches has paid significantly in the completion of this project.

Secondly, I would like to thank my department, University Institute of Legal

Studies, Panjab University, Chandigarh, for providing such an expansive library
which provided me all the relevant material required for this project.

Last but not the least, I would like to express my profound gratitude to my
parents and my friends who have constantly supported and motivated me
throughout this project

SHUBHAM RANA

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Contents
ACKNOWLEDGEMENT...............................................................................................................2

TABLE OF CASES.........................................................................................................................4

INTRODUCTION...........................................................................................................................5

MEANING..................................................................................................................................5

ORIGIN.......................................................................................................................................5

HISTORY........................................................................................................................................6

OBJECT AND SCOPE....................................................................................................................7

OBJECT......................................................................................................................................7

SCOPE........................................................................................................................................7

FEATURES.....................................................................................................................................8

WHAT CAN BE PATENTED?..................................................................................................8

WHAT PATENTS ARE NOT PATENTABLE?.......................................................................9

PROCESS OF OBTAINING A PATENT....................................................................................11

I. SUBMISSION OF APPLICATION FOR PATENT..........................................................11

Who can Apply (Sec-6)........................................................................................................11

Form of Application(Sec-7).................................................................................................11

Information and undertaking regarding application filed in other country.(Sec-8).............12

Specification of invention (Sec 9 and 10)............................................................................12

II. PUBLICATION AND EXAMINATION OF APPLICATION.........................................14

Publication (Sec 11A)..........................................................................................................14

Examination (Sec-12 and 13)...............................................................................................15

Consideration of report by the Controller of Patents (Sec-14).............................................15

III. ACCEPTANCE OF APPLICATION FOR GRANT OF PATENT...............................15

IV. OPPOSITION TO GRANT OF PATENT......................................................................16

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 Grounds of Opposition (Sec-25)..........................................................................................16

Patents obtained “wrongfully” (Sec 26)...............................................................................17

V. GRANT AND SEALING OF PATENTS..........................................................................17

Date of Patent (Sec-45)........................................................................................................18

Terms of Patents........................................................................................................................18

RIGHTS AND OBLIGATIONS OF PATENTEE........................................................................19

RIGHTS OF PATENTEE.........................................................................................................19

OBLIGATIONS OF PATENTEE............................................................................................20

REVOCATION OF PATENT.......................................................................................................22

I. REVOCATION BY CONTROLLER..................................................................................22

II. REVOCATION BY THE HIGH COURT (SEC-64).........................................................23

III. REVOCATION BY THE CENTRAL GOVERNMENT (SEC-66)...............................24

COMPULSARY LICENSING......................................................................................................25

TERMS AND CONDITIONS FOR GRANTING OF COMPULSARY LICENSING (SEC-

90).............................................................................................................................................26

COMPULSARY LICENSING ON NOTIFICATION BY CENTRAL GOVERNMENT

(SEC-92)...................................................................................................................................28

COMPULSARY LICENSING FOR EXPORT OF PATENTED PHARMACEUTICAL

PRODUCTS (SEC-92A)...........................................................................................................29

INFRINGEMENT OF PATENTS.................................................................................................30

DEFENCES IN SUITS FOR INFRINGEMENT(SEC-107)....................................................30

CERTAIN ACTS NOT TO BE CONSIDERED AS INFRINGEMENT (SEC107A).............31

RELIEFS IN SUIT FOR INFRINGEMENT (SEC108)...........................................................32

CONCLUSION..............................................................................................................................34

BIBLIOGRAPHY..........................................................................................................................35

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 TABLE OF CASES

SRNO. CASE NAME CITATION

1. Bayer Corporation v. Union of India 162 DLT 371
2. Bajaj Auto Ltd. v. TVS Motor Company (2008) ILLJ 726 Mad
3. Bishwanath Prasad Radhey Shayam v. A.I.R 1982 SC 1444
Hindustan metal Industries
4. Lallubai Chappubai Jariwala v. Chemical and Co 1935 Bomb R665
5. Lee Pharma v. Astrozenca Sexagliptin CLA no 1 of 2015
6. Monsanco co. v. Indog Products Ltd A.I.R 1986 SC 712
7. National Research and Development A.I.R 1981 SC 1368
Corporation Delhi Cloth and General mills
Ltd
8. Raj Parkash v. Mangat Ram 1977 RLR 440

INTRODUCTION

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MEANING
A patent is an exclusive right granted by the Government to the inventor to
exclude others to use, make and sell an invention is a specific period of time. A
patent is also available for improvement in their previous Invention. The main
motto to enact patent law is to encourage inventors to contribute more in their field
by awarding them exclusive rights for their inventions. In modern terms, the patent
is usually referred to as the right granted to an inventor for his Invention of any
new, useful, non-obvious process, machine, article of manufacture, or composition
of matter.

As per section 2(1)(m)1-“patent” means a patent for any invention granted under
this act.

ORIGIN
The word “patent” is referred from a Latin term “patere” which means “to lay
open,” i.e. to make available for public inspection or to publish anything. In 600
BC, patents were granted for culinary dishes in the Greek colony of Sybaris, in the
south of Italy. These certainly must have been delicious dishes. Some time passed
before we heard about patents again in the course of history. An organised grant
procedure did not take place until 1474. At that time, the city of Venice had a bye-
law that promised a ten-year privilege to 'All inventors of new arts and machines'.

HISTORY

The first step of the patent in India was Act VI of 1856. The main objective of the
legislation was to encourage the respective inventions of new and useful

1
The Patents Act 1970
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manufactures and to induce inventors to reveal their inventions and make available
for public. The Act was repealed by Act IX of 1857 as it had been enacted without
the approval of the British Crown. Fresh legislation was enacted for granting
‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This legislation
undergoes specific modifications of the previous legislation, namely, grant of
exclusive privileges to useful inventions only, an extension of priority period from
6 months to 12 months. The Act excluded importers from the definition of an
inventor. The Act was then amended in 1872, 1883 and 1888.

The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents
Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972,
replacing the Indian Patent and Design Act 1911. The Patent Act is basically based
on the recommendations of the report Justice Ann. The Ayyangar Committee
headed by Rajagopala Iyengar. One of the recommendations was the allowance of
process patents in relation to inventions related to drugs, drugs, food and
chemicals. Again The Patents Act, 1970 was amended by the Patents
(Amendment) Act, 2005 regarding extending product patents in all areas of
technology including food, medicine, chemicals and microorganisms. Following
the amendment, provisions relating to EMR have been repealed, and a provision
has been introduced to enable the grant of compulsory licenses. Provisions related
to pre-grant and anti-post protests have also been introduced.2

OBJECT AND SCOPE

2
https://blog.ipleaders.in/what-is-a-patent-law-in-india/
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OBJECT
The object of grant of Patent is to encourage research and development and
innovation. The Supreme Court in the case of

Case law- Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries 3

enumerated the object of Patent Law as under:

The subject of Patent Law is to encourage scientific research, new technology and
industrial progress. Grant of exclusive privilege to own, use or sell the method or
the product patented for limited period, stimulates new inventions of commercial
utility. The price of the grant of monopoly is the disclosure of the invention at the
Patent Office, which after the expiry of the fixed period of the monopoly passes
into the public domain.

Case law-Raj Parkash Vs. Mangat Ram Chowdhry4 Delhi HC held that-

"It is the pith and marrow of the invention claimed that has to be looked into and
not get bogged down or involved in the detailed specifications and claims made by
the parties who claim to be patentee or alleged violators."

SCOPE
At individual level it encourages the inventor by giving him/her reward for
invention in the form of incentive and financial gain. However at the public level it
gives the full disclosure of the invention and motivates other people for inventing
new ideas and government can also do compulsory licensing for benefit of public.

3
AIR 1982 SC 1444
4
1977 RLR 440
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 FEATURES

WHAT CAN BE PATENTED?

There are certain criteria which have to be fulfilled to obtain a patent in India.
They are:

 Patent subject:
The most important consideration is to determine whether the Invention
relates to a patent subject matter. Sections 3 and 4 of the Patents Act list
non-patentable subject matter. Unless the Invention comes under any
provision of Section 3 or 4, it means that it consists of a subject for a patent.
 Novelty:
Innovation is an important criterion in determining the patent potential of an
invention. Under Section 2(l) of the Patent Act, a novelty or new Invention
is defined as “no invention or technology published in any document before
the date of filing of a patent application, anywhere in the country or the
world”. The complete specification, that is, the subject matter has not fallen
into the public domain or is not part of state of the art”.Simply, the novelty
requirement basically states that an invention that should never have been
published in the public domain. It must be the newest which have no same
or similar prior arts.
 Inventive steps or non-clarity:
Under Section 2(ja) of the Patent Act, an inventive step is defined as “the
characteristic of an invention that involves technological advancement or is
of economic importance or both, as compared to existing knowledge, and

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 invention not obvious to a person skilled in the art.” This means that the
invention should not be obvious to a person skilled in the same field where
the invention is concerned. It should not be inventive and obvious for a
person skilled in the same field.
 Capable of industrial application:
Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the
invention is capable of being made or used in an industry”. This basically
means that the Invention cannot exist in the abstract. It must be capable of
being applied in any industry, which means that it must have practical utility
in respect of patent. These are statutory criteria for the patent of an
invention. In addition, other important criteria for obtaining a patent is the
disclosure of a competent patent. A competent patent disclosure means a
patent draft specification must adequately disclose the Invention, so as to
enable a person skilled in the same field related to carrying out the Invention
with undue efforts.

Case law- Monsanto Company v. Indog Products (P) Ltd 5SC held that-

“an invention is said to be publically known before it is patented if it is known to

the persons engaged to the pursuit of the knowledge of the product or process
either as a men of science or men of commerce”.

WHAT PATENTS ARE NOT PATENTABLE?

Non-patentable inventions are enumerated under Section 3 and 4 of the Patent
Act. Such inventions are delineated below:

 Any Invention which is frivolous or which claims anything obviously

contrary to well established natural laws is not patentable.
5
A.I.R 1986 SC 712
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 Inventions which are contrary to public order or morality is not patentable.
 An idea or discovery cannot be a subject matter of a patent application.
 Inventions pertaining to known substances and known processes are not
patentable i.e. mere discovery of a new form of a known substance which
does not enhance the known efficacy of that substance is not patentable.
 An invention obtained through a mere admixture or arrangement is not
patentable.
 A method of agriculture or horticulture cannot be subject matter of patent.
 A process involving medical treatment of human and animals or to increase
their economic value cannot be subject matter of a patent.
 Plants and animals in whole or in part are not patentable.
 A mathematical or business method or a computer program per se or
algorithms is excluded from patent protection.
 Matters that are subject matter of copyright protection like literary,
dramatic, musical or artistic work is not patentable.
 Any scheme or rule.
 Presentation of information
 Topography of integrated circuits.
 Traditional knowledge.
 Inventions relating to atomic energy.

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 PROCESS OF OBTAINING A PATENT

Patents to inventions are granted by the controller of patents. It includes the

following steps-

I. SUBMISSION OF APPPLICATION FOR PATENT

II. EXAMINATION OF APPLICATION
III. ACCEPTANCE OF APPLICATION FOR PATENT
IV. OPPOSITION TO GRANT PATENTS
V. GRANT AND SEALING OF PATENTS

I. SUBMISSION OF APPLICATION FOR PATENT

Who can Apply (Sec-6)6

An application for a patent for an invention can be made by any of the following
persons either alone or jointly with another:

i. true and first inventor

ii. his /her legal assignee
iii. legal representative of deceased inventor or assignee.

Form of Application(Sec-7)7
Application should contain the following particulars

i. an application for patent is for one invention only.

6
The Patents Act 1970
7
The Patents Act 1970
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 ii. Where application is being made by assignee then proof of assignment to
apply is to be furnished with the application
iii. Application should state that the applicant is in possession of the invention.
iv. The applicant has to give name of the true and first inventor.
v. Application to be accompanied by the specification of invention.

Information and undertaking regarding application filed in other country.

(Sec-8)8
An applicant who has filed an application for patent under the patents act in India
may have applied for patent in any other country in respect of same invention. In
such case such applicant has to give

i. Information
ii. Undertaking

Specification of invention (Sec 9 and 10)9

Provisional Specification

This is filed when the applicant feels that his discovery/idea has reached the
stage that it can be disclosed in the form of a written report. In this case
provisional application is submitted to the patent office and it helps to preserve the
priority date of the application. After receiving the provisional specification, the
patent office gives an application number to the patent application.

Complete Specification

It is very important document in a patent application for the grant of patent, the
applicant must submit it within 12 months from the date of filing of provisional
application. In this application, applicant gives a complete description of his
8
The Patents Act 1970
9
The Patents Act 1970
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invention. The submission of complete specification period can be extended by 3
months.

Content of specification (Sec 10)

Title: The title of the patent should describe the subject matter in the patent
application.

1. Field of Invention: The field of invention is a general wide statement

telling about the technology of the invention.
2. Background: The background is used to describe the statement of the
technology, the known prior art, the disadvantage/needs that are being
overcome before the invention described in the patent. The background
identifies the key feature of the invention that were lacking in the prior art.
3. Summary: The inventions are represented in a summarized form in this
section. The information in this section is related to the step taken to solve
the problem which was discussed in the background of invention. This
section also describes the advantage of the invention.
4. Description: It starts with the background of previous invention and
also includes information about the present invention like process and
products or its parts. It must be written in detail as per the rules of the
act.
5. Claims: Claims must be clear and brief.
 It must describe the technical features of the invention.
 Important features of the invention must be stated in the
independent claims.
 Use Arabic numerals for numbering the claims.

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  Only one independent claim should be present in the same
category of the application
6. Abstract: It is short summary of invention and its uses. It should
preferably be written in 150 words and should consist of following. 
Invention description  Description of the important component and their
work
7. Drawing: The drawing of a patent specification describes the invention
by using chemical or mechanical structures, charts and detailed
relationship of features. The drawing contains references as (numeric and
alphabetic) that relate the features described in the specification to the
features or portion shows in the drawing.

II. PUBLICATION AND EXAMINATION OF APPLICATION

Publication (Sec 11A)10

After filing the application form, the applicant is required to publish a journal
which contains name, address, abstract, abstract and procedure of invention
to the patent office. This should be done as may be prescribed 11after filing the
application form or from the date of priority, to the patent office. After this
procedure the patent application is open for public inspection. Before publication
it is not open for public inspection12

10
The Patents (Amendment) Act 2005
11
After the Patent (Amendment) Act 2005 for the words eighteen months the words “as may be prescribed has been
substituted.
12
Patent Publication. Retrieved from: http: //www.ipindia.nic.in /ipr/patent/eversion-
ActRules/section/PS11A.html./ April 6, 2018
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Examination (Sec-12 and 13)13
The applicant who has filed for the patent undergoes the procedure of examination
in which all the documents, application forms, claims forwarded by the applicant
are tested. After testing of the reports, a First Examination Report is published and
sent by the patent office to the applicant or his agent stating the objection to
which the applicant or his agent has to reply within 6 months. In case the
applicant fails to reply to the report and an extension of 6 more month is
given to the applicant14

The patent is granted to an invention which is useful. Therefore the examiner to

whom application for patent has been submitted instigates that whether the
invention for which patent has been applied for has been anticipated or not before
filing application for patent such investigation is made under section 13 of the act.

Consideration of report by the Controller of Patents (Sec-14)15

The report is submitted by the examiner after investigation u/s 13 of the act which
is considered by the controller of patents u/s 14. The report of the examiner may
be adverse to the applicant and requires amendment of the application for the
patent. According to sec 14 the controller may give the applicant an opportunity of
being heard before disposing the application of the patent.

III. ACCEPTANCE OF APPLICATION FOR GRANT OF PATENT

Most patent applicants will receive some type of objections based on the
examination report. The best thing is to analyze the examination report with the
patent professional (patent agent) and react to the objections in the examination
13
The Patents Act 1970.
14
Examination of application. Retrieved from: http: //www.ipindia.nic.in/ipr/patent/eversion-
ActRules/section/PS12.html./ April 8, 2018
15
The Patents Act 1970
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report.This is an opportunity for an investor to communicate his novelty over the
prior art in examination reports. Inventors and patent agents create and send a test
response that tries to prove that their Invention is indeed patentable and meets all
patent criteria.The Controller and the patent applicant is connected for ensuring
that all objections raised regarding the invention or application is resolved and the
inventor has a fair chance to prove his point and establish novelty and inventive
steps on other existing arts. Upon receiving a patent application in order for grant,
it is the first grant for a patent applicant.16

IV. OPPOSITION TO GRANT OF PATENT.

Grounds of Opposition (Sec-25)

An “Interested Person” may give notice of opposition to the grant of patent to the
controller on any of the grounds specified in sec 25 which are as follows-

 Patent wrongfully obtained;

 Prior publication;
 The invention was publicly known or publicly used in India before the
priority date of that claim;
 The invention is obvious and does not involve any inventive step;
 That the subject of any claim is not an invention within the meaning of this
Act, or is not patentable under this Act;
 Insufficient disclosure of the invention or the method by which it is to be
performed;
 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

16
Section 21 of The Patents Act 1970.
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 the first application for protection for the invention made in a convention
country or in India;
 That the complete specification does not disclose or wrongly mentions the
source and geographical origin of biological material used for the invention;
and
 That the invention was anticipated having regard to the knowledge, oral or
otherwise, available within any local or indigenous community in India or
elsewhere.

Patents obtained “wrongfully” (Sec 26)

In this case the controller refuses the application of the applicant. However, the
controller may proceed with such application in the name of the opponent on the
request of the opponent u/s 26 of this act. The application for patent is treated as
the application by the opponent for the grant of patent.

V. GRANT AND SEALING OF PATENTS

Sec 43- Grant of patents.—(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,

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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

Date of Patent (Sec-45)17

As per sec 45 of the act the date of patent shall be dated as the date on which
application of patent was filed.

Terms of Patents
Sec 53 of the Act- 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

India, shall be twenty years from the international filing date accorded under the
Patent Cooperation Treaty

17
The Patents Act 1970
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 RIGHTS AND OBLIGATIONS OF PATENTEE

RIGHTS OF PATENTEE
 Right to exploit patent: A patentee has the exclusive right to make use,
exercise, sell or distribute the patented article or substance in India, or to use
or exercise the method or process if the patent is for a person. This right can
be exercised either by the patentee himself or by his agent or licensees. The
patentee’s rights are exercisable only during the term of the patent.
 Right to grant license: The patentee has the discretion to transfer rights or
grant licenses or enter into some other arrangement for a consideration. A
license or an assignment must be in writing and registered with the
Controller of Patents, for it to be legitimate and valid. The document
assigning a patent is not admitted as evidence of title of any person to a
patent unless registered and this is applicable to assignee not to the assignor.
 Right to Surrender: A patentee has the right to surrender his patent, but
before accepting the offer of surrender, a notice of surrender is given to
persons whose name is entered in the register as having an interest in the
patent and their objections, if any, considered. The application for surrender
is also published in the Official Gazette to enable interested persons to
oppose.
 Right to sue for infringement: The patentee has a right to institute
proceedings for infringement of the patent in a District Court having
jurisdiction to try the suit.

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OBLIGATIONS OF PATENTEE
 Government use of patents: A patented invention may be used or even
acquired by the Government, for its use only; it is to be understood that the
Government may also restrict or prohibit the usage of the patent under
specific circumstances. In case of a patent in respect of any medicine or
drug, it may be imported by the Government for its own use or for
distribution in any dispensary, hospital or other medical institution run by or
on behalf of the Government. The aforesaid use can be made without the
consent of the patentee or payment of any royalties. Apart from this, the
Government may also sell the article manufactured by patented process on
royalties or may also require a patent on paying suitable compensation.
 Compulsory licenses: If the patent is not worked satisfactorily to meet the
reasonable requirements of the public, at a reasonable price, the Controller
may grant compulsory licenses to any applicant to work the patent. A
compulsory license is a provision under the Indian Patent Act which grants
power to the Government to mandate a generic drug maker to manufacture
inexpensive medicine in public interest even as a patent in the product is
valid. Compulsory licenses may also be obtained in respect of related
patents where one patent cannot be worked without using the related patent.
 Revocation of patent: A patent may be revoked in cases where there has
been no work or unsatisfactory result to the demand of the public in respect
of the patented invention.
 Invention for defence purposes: Such patents may be subject to certain
secrecy provisions, i.e. publication of the Invention may be restricted or
prohibited by directions of Controller. Upon continuance of such order or
prohibition of publication or communication of patented Invention, the

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 application is debarred for using it, and the Central Government might use it
on payment of royalties to the applicant.
 Restored Patents: Once lapsed, a patent may be restored, provided that few
limitations are imposed on the right of the patentee. When the infringement
was made between the period of the date of infringement and the date of the
advertisement of the application for reinstatement, the patent has no
authority to take action for infringement.

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 REVOCATION OF PATENT

Patent granted to an invention under the patents act 1970 may be revoked:

I. BY THE CONTROLLER
II. BY THE HIGH COURT
III. BY THE CENTRAL GOVERNMENT

I. REVOCATION BY CONTROLLER

When Patentee offers to surrender (sec-63)

The patentee may make an offer to the controller to surrender the patent that has
been granted to his invention. The Controller advertises this offer in the prescribed
manner. Any “person interested” may give the notice to the opposition to the
surrender of patent by the patentee himself is to filed by the opponent within the
prescribed period after such advertisement of the offer of surrender. After hearing
both the parties the controller may accept the offer of the patentee to surrender the
patent and may by order revoke the patent.

When the Central Government or any “interested person” apply for

revocation (sec-85)18
An application under section 85 is made at any time after the expiration of two
years from the date of order granting the first compulsory license in the patent by
Central Government or any interested person to controller on following grounds-

i. The reasonable requirements of public with respect to the patented invention

have not been satisfied or

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The Patent(Amendement) Act, 2002
23 | P a g e
 ii. The patented invention has not been worked in the territory of India;or
iii. The patented invention is not available to the public at a reasonably
affordable price

When central Government gives direction to the controller in cases relating to

the Atomic energy (sec 65)19
The Central Government at any time after the grant of the patent direct the
controller to Revoke the Patent if it is satisfied that the patent that has been granted
is for the invention relating to atomic energy for which no patent can be granted
under subsection (1) of the section 20 of the Atomic Energy Act, 1962. However
the controller may allow the patentee to amend the complete specification of the
invention instead of revoking the patent.

II. REVOCATION BY THE HIGH COURT (SEC-64)

The High Court may revoke the patent u/s 64 on :-

i. On petition of “any person interested” or

ii. On petition of the Central Government; or
iii. On a counter claim in a suit for infringement of patent

Grounds of Revocation (Sec-64)

1. Invention is obvious, lacks an inventive step or utility
2. Invention isn’t new and, has been publicly used or published in India before
the priority date or it is foreseen in the light of the knowledge available
within any local or native community in India or elsewhere.
3. Either the party wasn’t entitled to the patent, or the subject is not patentable
or doesn’t amount to invention
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The Patent (Amendment) Act , 2005
24 | P a g e
 4. The scope of patent specifications is incomplete or the specifications have
either been already claimed in a patent that is granted
5. The patent was wrongfully obtained in violation of another party’s rights,
such as through incorrect or false representation, or leave to modify
specifications was obtained through fraudulent means
6. The information that has been disclosed under Section 8 is known to be false
by the Applicant or he has been unable to furnish the required details
7. Complete specification omits or erroneously attributes geographical origin
or biological matter used in the invention
8. The invention was either secretly used before the date or claim or the
Applicant contravened secrecy instructions under Section 35
9. The complete specification neither describes the invention and method
sufficiently nor does it disclose the best method of performing it which was
known and entitled protection.

III. REVOCATION BY THE CENTRAL GOVERNMENT (SEC-66)

According to Sec 66 of the act The Central government may be of the opinion that
the patent or the mode in which patent is exercised is:

i. Mischievous to the state

ii. Generally prejudicial to the public

Opportunity of being heard is given to Patentee. After hearing the applicant the
central govt. may make declaration after which the patent is deem to be revoked.

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 COMPULSARY LICENSING

Compulsory licenses are generally defined as "authorizations permitting a third

party to make, use, or sell a patented invention without the patent owner's
consent." Under Indian Patent Act, 1970, the provision with regard to compulsory
licensing is specifically given under Chapter XVI. The conditions which need to
be fulfilled in order for a compulsory licence to be granted are laid down under
Sections 84 and 92 of the Act. As per Section 84, any person who is interested or
already the holder of the licence under the patent can make a request to the
Controller for grant of Compulsory Licence on patent after three years from the
date of grant of that patent on the existence of conditions mentioned in the Section
84 of the Patents Act, 1970. While granting the compulsory licence, the Patent
office will take into account few measures such as the nature of the invention, any
measures already taken by the patentees or any licencee to make full use of the
invention, ability of the applicant to work the invention to the public advantage
and time elapsed since the grant of the patent i.e. worked or not worked.

Section 8420(1) At any time after the expiration of three years from the date of the
grant 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

20
The Patents Act 1970
26 | P a g e
(c) that the patented invention is not worked in the territory of India.

Case Law- Lee Pharma vs. AstraZeneca’s ‘Saxagliptin’21

After the successful grant of CL to Natco, many Pharma companies are now trying
to grab the benefit of Compulsory licenses in order to make highly expensive
drugs at a very low price and easily accessible to public.

Recently, Lee Pharma, a Hyderabad based Indian Pharma Company, filed a

Compulsory Licensing (CL) Application for selling and manufacturing the
compound on June 29, 2015 at the Patent office, Mumbai. The CL was filed
against one of the patented drug 'Saxagliptin' protected under the Patent number
206543 in the name of AstraZeneca with tile as "A CYCLOPROPYL-FUSED
PYRROLIDINE-BASED COMPOUND". As informed the 'Saxagliptin' was used
for treating Type II Diabetes Mellitus

According to Controller, the patentee is only obligated to furnish reasons that

make it prohibitive to manufacture the product locally, and that even this
requirement holds particularly in those situations where the patentee possesses
manufacturing capabilities in India. The Controller also held that in the absence of
any data concerning AstraZeneca's local manufacturing capability provided by Lee
pharma, they cannot accept that a prima facie case under this provision has been
made out.

21
C. L. A No. 1 of 2015
27 | P a g e
TERMS AND CONDITIONS FOR GRANTING OF COMPULSARY
LICENSING (SEC-90)
Terms and conditions of compulsory licences.—(1) In settling the terms and
conditions of a licence under section 84, the Controller shall endeavour to secure
—

(i) that the royalty and other remuneration, if any, reserved to the patentee or
other

person beneficially entitled to the patent, is reasonable, having regard to the

nature

of the invention, the expenditure incurred by the patentee in making the invention

or in developing it and obtaining a patent and keeping it in force and other

relevant

factors;

(ii) that the patented invention is worked to the fullest extent by the person to
whom the licence is granted and with reasonable profit to him;

(iii) that the patented articles are made available to the public at 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;

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(vii) that the licence is granted with a predominant purpose of supply in the Indian
marketand 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 etermined 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 substance made by a patented process from
abroad where such importation would, but for such authorisation, constitute an
infringement of the rights of the patentee.

(3) Notwithstanding anything contained in sub-section (2), the Central

Government may, if in its opinion it is necessary so to do, in the public
interest,direct the Controller at any time to authorise any licensee in respect of a
patent to import the patented article or an article or substance made by a patented
process from abroad (subject to such conditions as it

COMPULSARY LICENSING ON NOTIFICATION BY CENTRAL

GOVERNMENT (SEC-92)22
Sec 92 of the act provides that the controller may, by notification in the Official
gazette grant license in a patent in a patent which is in force:

22
The Patents (Amendment) Act,2002
29 | P a g e
 i. In circumstances of national emergency; or
ii. In circumstances of extreme emergency; or
iii. In case of public non-commercial use,

According to sub section (3) of sec 92 the circumstances of National emergency,

or extreme emergency or of public non- commercial use include-

i. Public health crises relating to Acquired Immune Deficiency

syndrome(AIDS)
ii. Human immunodeficency virus
iii. Malaria

COMPULSARY LICENSING FOR EXPORT OF PATENTED

PHARMACEUTICAL PRODUCTS (SEC-92A)23
A country may have no or insufficient manufacturing capacity in the
pharmaceutical sector for a product which is necessary for public health problems.
If such a product is patented, then a compulsory license may be obtained for its
manufacture and export to the country in need of such patented product in the
interest of public health problems under sec 92A of the act. Such compulsory
license is granted by the controller on such terms and conditions as may be
specified and published by him. It is granted without prejudice to the extent to
which pharmaceutical products produced under a compulsory license can be
exported under any other provisions of this Act.

23
The Patents (Amendment) Act, 2005
30 | P a g e
 INFRINGEMENT OF PATENTS

The Indian Patents Act 1970 does not specifically define activities that constitute
infringement of patents. Section 48 of the Indian Patents Act 1970, however,
confers exclusive rights upon the patentee to exclude third parties from making,
importing, using, offering for sale or selling the patented invention, patented
product or patented process. It can therefore be concluded that violation of
aforementioned monopoly rights would constitute infringement of a patent. Where
the infringer has taken all the essential features claimed in the patent , while
manufacturing an article, it will be a direct infringement. Where the infringer uses
all features claimed in the patent but alters one or more unessential features then
also it will be an infringement but since it is indirect it is called colourable
imitation.Copying the essential features of the invention is sometimes referred to
as taking the pith and marrow of the invention.

Case law-Lallubhai Chakubhai Jariwala v Chemical &Co,24

The Bombay HC held that the essential part of the substance of the plaintiff’s
invention was the use of the pressure and therefore there could be no infringement
unless the use of the pressure by the defendants in their process was proved.

DEFENCES IN SUITS FOR INFRINGEMENT(SEC-107)

According to sec 107 every ground on which a patent may be revoked, will be
available as a ground for defence. A defendant in a suit for infringement may take
one or more of the defences mentioned below that:-

a. plaintiff is not entitled to sue for infringement;

24
(1935) 37 BomLR 665
31 | P a g e
 b. the allegation of infringement is false;
c. there was permission or licence to use the invention;
d. the principle of estoppels or res-judicata is attracted;
e. the claims alleged to be infringed are invalid;
f. the existence of a restrictive contract is declared unlawful;
g. the act complained is covered within the scope of innocent
infringement or done after lapse of patent;
h. the alleged infringement of the patent which is not novel or it is
obvious.

Case law- Cadila Pharmaceuticals Ltd v. Instance Laboratories Pvt Ltd,25

The Gujarat High Court observed that s 107 expressly empowered a defendant to
defend any suit for infringement of a patent. Every ground on which a patent could
be revoked under s 64 was available as a ground of defence.

CERTAIN ACTS NOT TO BE CONSIDERED AS INFRINGEMENT

(SEC107A)
i. Government Use
ii. Research Exemption
iii. Supply of Patented Drugs to Health Institutions.
iv. Use of Patented Invention on Foreign Vessels.
v. Bolar-Like Provision.
vi. Parallel Import

25
2001 PTC 541 (SC)
32 | P a g e
RELIEFS IN SUIT FOR INFRINGEMENT (SEC108)26
The reliefs available to a successful plaintiff in a suit for infringement include

i. an injuction;
ii. damages;
iii. an account of Profits;
iv. an order for deliver-up or destruction

Case law- National Research and Development Corporation of Delhi Cloth &
General Mills Co Ltd27

The following principles emerge for the grant of temporary injunction from the
judgment:

(I) the plaintiff has made out a prima facie case;

(II) the patent is valid and infringed
(III) the patent is sufficiently old and has been worked;
(IV) the balance of convenience is in favour of the injunction is not granted;
(V) the plaintiff will suffer an irreparable loss if injunction is not granted

Case Law- Bajaj Auto Limited V. TVS Motor Company Limited28

Dispute over Patent for the Use of Twin-Spark Plug Engine Technology was
decided by the Apex Court. The Supreme Court of India by this landmark
judgment has directed all the courts in India for speedy trial and disposal of
intellectual property related cases in the courts in India

26
The Patents Act 1970
27
A.I.R. 1981 S.C. 1368
28
(2008) ILLJ 726 Mad
33 | P a g e
Case law- Bayer Corporation V. Union of India29

The Hon’ble High Court of Delhi held that there is no Drug- Patent Linkage
mechanism in India as both the Acts have different objectives and the authority to
determine patent standards, is within the exclusive domain of the Controller of
Patents. It further held that the market approval of a drug does not amount to
infringement of patent. Therefore, the patent infringement cannot be presumed, it
has to be established in a court of law. Such adjudication is beyond the jurisdiction
of Drug Authorities.

Case law-Franz Xaver Huemer v. New Yash Engineers30

Temporary injunction was also denied by Delhi High Court on the ground of non-
use of patent. In this case an Australian citizen got a patent in India for certain
mechanical devices used in textile industry. The patent was not used in India. The
plaintiff applied for temporary injunction against the defendant, alleging that it
was using his invention and infringing his patent.

29
162 (2009) DLT 371
30
AIR 1997 Delhi 79
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 CONCLUSION

India has always acknowledged the importance of a strong patent system for the
development of industry and commerce, which is evident for the amendments
done to bring India at par with the modern world. With the promulgation of the
product patent regime in India, most of the countries are now looking for business
opportunities. There has been a considerable rise in the patent filing. Innovators
and inventors from all fields of technology are keen on protecting their intellectual
property. The patent filing procedure is first step in which the applicant drafts
the specification which provides complete information about the invention. This
includes title, drawing, description, abstract and claim. The patent application
acceptance and rejection depends upon the drafting. The patent protection term in
India is 20 years from the priority date. In India there are two type of patent
which are product and process patent. Patent grant procedure is the next step
after the filing of application, in which includes search, publication, examination
and opposition.

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 BIBLIOGRAPHY

 Meenu Paul; Intellectual Property Law Allahabad Law Agency; Faridabad;

5th Edition
 Narayanana, P; Intellectual Property Law; Eastern Law House; 9th Edition
 www.mondaq.com
 www.ipindia.nic.in
 www.blog.ipleaders.in
 www.english.rvo.nl
 www.shodhganga.inflibnet.ac.in
 www.researchgate.net
 www.legalservicesindia.com
 www.worldwidejournals.com
 www.intepat.com
 www.khuranaandkhurana.com

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