1.

39
Subject matter of Patent

Part C
Patent Law

Subject matter of Patent:

The Law of patent in India is governed by thepatientAct

1970. It has got amended in 1999, 2002, and Finally 2005 as
frame work
per TRIPS agreement. TRIPS is an evolving legal
which is critical in the country's economy. IfTRIPS is not fol-

lowed,onemay lose outin International Trade.

Patent:
Patent means a patent for any invention granted under

this Act. The statutory definition does not disclose the con-
term 'patent'
cept clearly. Here question arises as to what the
signify. The 'nomenclature' must have some functional mean-
ing./The Term Patents originates from the Latin term 'Patere
and Litters patents. Paters' means 'lay open', where as'letters
patents' signify open letter issued by the Monarch or govern-
ment granting right to the inverntor for the exploitation of such
invention for publicgood. Thus, patentis an open letter thereby
granting exclusive rights to the inventor for a fixed period of
time in exchange of public discdosure of certain process or prod-
uct known as invention) The patentisanexclusiverights.There
by mean that the patentee excludes others from making us-
ing, selling, offering for sale or importing the patented inven-
tion. It providesrights to exclude othersfrom anyusewith-

Qutthe permission of the patentee. Such rights are for limited

period, now itistwenty years, afterthe expiry of such period,
the rightsenters in topublicdomain. Then any body can make
use of the invention. The patent is anindustrial prOpertywhich
 140 Lectures on Intellectual Property Law

property because ideas are crea-

is now called asintellectual
tionof mind.Theobjectof granting patent is to encourage
a

the innovator for new scientific, technological and industrial

advancement beneficial to society at large. Unless monopolv
no one would like to invent
rights are granted to the inventor,
new things and the industrial-civilizational growth will stand

stillPatents encourage research, includes the inventor to dis-

closehis research, offers a reward to the inventor, helps in in-
dustrial development. It helps in the establishmernt of new in-
dustry and improvement in the existing industry. Since the
concept of patent lies in its elements-novelty, inventivesteps,
lack of obviousness and sufficiency of description. It is a soul
of industry and basis of social developmentt is a territorial in
naturehA patentee hasto register hisinveition in different
countries, then he gets protection in all those country. But it
has international character. This is why Parisconvention, GATT
and TRIPSagreement are examples ofattempts to harmonise
the law of patents\

Subject matter óf Patent:

27 TRIEThe patent is granted for new and industrially usefulin-
vention. It is granted for novelty, inventiveness and industrial
applicability2. The term invention means a new product or
process involving an inventive steps and capable of industria
application. Thus, the TRIPS provisions under Art. 27.1 and
Indian provision u/s 2 (1)(j) are in consonance to each other.
Thus, the subject matter of patent is novelty, inventive step>
and industrial applicability.
Novelty:
Novelty is an essenceof paternt. It signifies that it Was not
existing or known. It is opposed to what was already know
before the date of patent. Novelty is determined through eX-
 Subject matter of Patent 141

tensive patent search. It is essential to confirm that such infor-

mation/innovation/ invention has no where been published. It
also ensures that the invention is own discovery of the claim-
ant.Patent is granted for the invention which is new and use-
ful.Itsignifies that invention is something that was unknowm
and the thing has been brought into light before the common
people for their use. The essential thing is that it is the inventor
who has found out of there sincere research, the subject mat-
ter before the society. Thus, invention' which mustbe new is
the subject matter ofpatent.S.3&S.4 of the patent Act 1970
discusses the inventions which arenot patentable.The follow-
ing inventions are not patentable as per thestatute
) Invention which i_ frivolous and is contrary to the
well established naturallaws.
fii) An invention which is contrary to law,morality
and publicpolicy.
20 (ii) Mere discovery of scientific principles, or formula-
A tion of abstract theory, or discovery ofliving or
non-living substances occurring in nature,
iv) The mere discovery of new form of known sub-
stance which does not result in the enhancement
of the known efficacy of that substance, or mere
discovery of any new property or new use of a
known substance or of the mere use of a known
process, machine or apparatusunless such known
at least
process results inanew product or employs
one new reactant
(v A substance obtained by a mere admixture result-
in the aggregation of the properties of the
ing only
components there of or a process for producing
Such substance.
(vi) The mere arrangement or re-arrangement or du-
142 Lectures on Intellectual Property Law

plication of known deviceseach functioning inde-

pendently ofone another in a known way,
(uii A method of agriculture and horticulture,
(vil) Any process for the medicinal, surgical, curative.
prophylactic, diagnostic, therapeutical or other
treatment of human beings or any process for a
similar treatment of animals to render them free of
disease or to increase their economic value or that
of their products,
(ix) Plants and animals in whole or any part there of
other than micro-organismbut including seeds, va-
rieties and species and essentially biological proc-
ess for production or propagation of plants and
animals.
A mathematical or business method or computer
programme or algorithms,
(xi) A literary, dramatic, musical or artistic works or
any other aesthetic creations what soever includ-
ing cinematographical works and television pro-
ductions.
xi) A mere scheme or role or method of performing
mental act or method of playing game.
(xii) A presentationof information.
(xaiv) Topography ofintegrated circuits
xv) Aninvention which in effect, is traditional knowl
edge, or duplication of known properties oftradi
tionally known component
xvi) An invention relation toatomic energy
What is observed here that in the list of S.3 & 4 of the Act,
the patent amendment Act 2002
has added new items wni
are of great
importance. They are not treated as invenuoy
 143
Subject matter of Patent
the
hence not a subject matter of patent. In this new addition,
commercial exploitation of any invention against public policy,
mere discov-
public morality, discovery of any living things,
known substance, production and propa-
ery of new things of a
the list un-
gation of plants and animals, are included. Hence
der chapter II, S.3 & 4 are not exhaustive, rather inclusive
and use-
Obviously, at common sense, invention which is new
the disclosure
ful tothe society, not known or available before
of the idea is invention. If any invention interferesinto the natu-
However/an invention in
ral process, it is not an invention.
Atomic
respect of atomic energy which falls u/s 20 (1) of the
But other than
Enerty Act 1962 is not recognized as invention.
S. 20(1), the invention shall be recognized because they are

human being and society in large.S.3(1) of the

Act.
useful for
musical
Specifically excludes patenting ofliterary, dramatic,excluded
or any copyrightable works.
It has been specifically
does not
from the perview of patent law becausecopyright
Like wise, computer pro-
subsistsin 'idea'it liesin'expression'. invention. Ithas
been included as patentabl
gramme has not
protection u/s 14 of the copyright 1957.
Act
between the invention and
Novelty involves acomparison
that is revealed by the prior publication or use. It
the thing thing
denies anticipation. At the same time, new use of old
Mere combination of twwo
lack& novelty. Because it is obvious. inventive faculty and
ormore elements without exercising any
matter of patent. The
an inventive step cannot be a subject
musthave element
invention of a marnner ofnewmanufacture
for grant
ofnovelty utility and non-obviousness to qualityit
when
Thusthe invention may claim for patent only
of patent. is capa-
involves an inventive steps;
itis novel, not anticipated, not fall within any
of
ble of industrial application and must
matter specifically excluded or made
the categories ofsubject
subjectto exception.
 Lectures on Intellectual Property Law
144

InventiveStep:
of an invention that involves
Inventive step m e a n s feature

technical advance as compared to the existing knowledge hay-

that make the inven-
ing Economic significance or both and
in the art". Thus, the defi-
tion not obvious to a persorn skilled
nifion provided under S.2(1) (ja) is quite obvious, patient can
technical advance-
be granted only invention which involves
ment having economic significance. An inventive
step is con-
obvious to a person
sidered to be present if the invention is not
broad conception
skilled in the art. The state ofart is the
same

that operates in assessing novelty.

Oliver
surfing International V. Tabur Marine,
In Wind
LJhad identified a four point test for inventivesteps
.i) The court must identify the inventive conceptem-
bodied in the patent;
skilled
(i) It must a s s u m e the mantle of the normally
but unimaginative addressee in the art at the pri-
at that date,
ority date and impute to him what
was

common general knowledge in the art in question.

between
ii) In must be identified what differences exist
and the
the matter cited as being "known or used"
alleged invention;
without any
(iv) It must ask itself whether viewed
invention, those differ-
knowledge of the alleged
ences constituted steps which
would have been
re-
obvious to the skilled m a n or whether they

quired any degree of invention.

formulae
Thus, the four point test for inventive steps is a
to determine whether inventive steps, i.e. technically new ana
in the
advanced matter along with industrially useful, subsists
invention or not, whether inventive steps or non-obviousness
 Subject matter of Patent 145

are the same. As per the definition u/s 2(1) (ja), it is

quitesame
As, the term obviousness suggests recognition, understood,
apparent etc. thus, the invention which is known is prohibited
from patent. This is why non-obviousness is one element of
inventive step. This is why the term is used as technical ad-
vancement and economically useful for inventive steps. The
inventive steps suggests that the invention should 'technical
progress' over the prior art, that it should in some practical
sense be a better way of doing things". Such technical ad-
vancementalong with commercial value becomes point of ref
erence in the search for an inventive
steps.
Usefulness/ Industrial application:
(The third characteristics for patentable inventionis that
the invention is capable of being made or used in an indus-
try2.It must have utility.
Thus, the subject matter of patent is invention. The char-
acterrstics of invention mustbenovelty, which was not known
by the people nor anticipated. It was neither obvious nor al-
ready available. The second characteristics of inventive steps
makes it more clear that there should be technical advance-
ment with commercial utility, and industrially applicability
which suggests usefulness as well as large scale production.
The invention must not be prohibited by law or fall under ex-
ception. Having such characteristics, the invention can claim
for patent protection' in return technical and commercial
progress for industrial and social benefit.
 How to obtain Patent 147
2
How to obtain Patent

Patent is different from that of

copyright under copy-
right law, no work of literary, dramatic, musical, artistic or
cinematographic film, sound recording, computer program-
ming requires registration or for copyright for them has to be
obtained. Such work gains copyright as soon as the work is
complete. But it is different in terms of inventionf The inventor
has to obtain patent rights from the patient office. Thus, the
first step to obtain patent is to file an application inthe patent
office
The application for obtaining patent may be filed by any
person who claims to be the trueand first inventor of the in-
vention, or assignee, or any legal representative of any deceased
person who immediately before his death was entitled to make
such an application. Such applicatjon may be made either
alone or jointly with any other person Now the question arises
as to who is 'true and first inverntor'. Thepatent Act 1970 de-
fines this term negatively, as: 'true and first inventor' does not
include either the first importer of an invention into India, or a
person to whom an invention is first communicated from out-
uside India. At a common parlance, the true and first inventor
is a person who converts ldeaand scientificprinciples into
working inventionwhichisalsotermedas 'inventive step. A
person who merely communicates an idea cannot claim as
true and first inventor, so carnnot claim patentjIt is the same
as in copyright. As a person who communicates idea has no
copyright in. The person who dothes the ideá with expression
is the owner ofthe copyright. The same analogy is applicable
in patent for 'true and first inventor.Actually true and first
148 Lectures on Intellectual Property Law

inventorhas moral and economic rights in the invention. So

the application for patent right can be filed by him only or in
that capacity only. Thus, the right to aply for patent is con-
nected with 'true and first inventor Whether an employee may
apply for patent? It depends on thecontractual relationship.
In the absence of any specific contract, the invention of a serv-
ant even though made in the employer's time, and with the
employer's materials, and at the expense of employer, the in-
vention does not becomethe property ofthe employers.Butit
is not so in the case of employmernt for research and develop-
mentIn such cases the invention belongs to the employer,
thus, he is entitled to file application. When there is invention
in Govt. dept.by a scientistemployed by the Govt. the secre-
tary of the Department is entitled to file an application for
patent.)
Section 7 (1) of the patent Act 1970, prescribes that only
the application for one invention shall be filed by the true and
first inventor in a prescribed form and in the patent office. The
application form shall consist specification- provisional or com-
plete. HprOvisienalspeeificationis-filedwith theapplieation
ferma complete. If provisional specification is filed with the
application form, a çompletespecification has to be submitted
withintwelvemonths from the date offilling of the applica
tion, and if the complete specification is not so filed, theappli
cation shall be deemed to beabandoned The question arises
as to what is
specification. A patentspecificationis atechnical
document which describes about invention.A provisional de-
scription is given in initial description. Where as complete speci-
fication gives full and final details of the invention so that it
can be used. The purpose behind filing of specification is to
make the invention available on the expiry of the terms of the
patent. The disclosure in the specification must be 'enabling
 How to obtain Patent 149

disclosure.The specification should be titled, full and particu-

lar description of the invention and its operation/use and the
method to be performed, disclosure of best method of perform-
ing the invention, and the claims defining thescope of the in-
vention for which the protection is sought, The specification
should include an abstract of the invention to provide techni-
cal information related to invention. The claim should relate
to a single invention or group of invention. In case of an inter-
national specification designating India the title, description
drawings, abstract and claims filed with the application shall
be taken as a complete specification. A declaration related to
inventorship has also to be furFished after the filing ofspeifi
cation, with prescribed period.)
(No applicationfor the patent shall be opened to public
for a period of eighteen months from thedate offilling ordate
of priority, which ever is earlier Prioríty dateis thedateon
which claim is fairly based on the matter disclosed in thespeci-
fication Therefore the application is published for opposition.
A request for examination has to be made within prescribed
period for examination of the same otherwise, the application
shall be treated as withdrawn. The patent office examines pub-
lication available in the patent office to see whether the same
has been claimed earlier or published earlier. Then, a commu-
nication is made to the applicant about no objectionto the
grant of patent. If there is any objection related to drafting of
the specification, it may be suitably amended. If the objec-
tions are not satisfactorily clarified, after proper hearing the
controller of the patent may cancel the application. If the ob-
jection is rectified, the controller of patent shall accept the speci-
fication and advertise in the official Gazette. After the publica-
tion of grant of patent, any person may give notice of opposi-
tion within three months.from the date of publication) The

6- S.uAJ)
 Lectures on Intellectual Property Law
150

(controller will forward a copy of the notice of the applicant

who will submit reply within onemonth. Thereafter, the cases
are heard and decided. After the decision or if there is no op-
sealed if a
request is made
position, patent shall be granted and
by the applicant. The patentee becomes the owner of inven-
tion and çontinues for twenty years as per patent Amendment
3
Act 20025. In respect of any improvement or modification in
a patent of addition may be obtained. It's term
existing patent,
runs concurrent and ends with the main patent.

Thus, patent right is obtained by the inventor after the

invention is complete. It is not obtained automatically in the
invention. The specification is the most significant document
which has to be filed along with the application. Any applica-
tion for joint invention must be carried with consent of other
The controller of the patent
person by singing the application.
in the patent office grant patent it may be for product or proc-
ess or patent in addition.
Notes & References:-
1. S. 6 of the Act.
2. S.2 (1) (4) of the Act.
3. P. Narayanan, Intellectual Property Law, 3rd Edition, P. 22.

4. S. 9(1) of the Act.

5. S. 10 of the Act.
6. S. 11 (A1) of the Act.
7. S.11 (1) (b)of the Act.
8. S.53 of patent Anmendment Act.2002.

-
 and Duties Patentee 151
Rights of
3.

Rights and Duties of Patentee.

Patent is a grant of rights in the invention to use it in the

manufacture of the product and market it since patent is a
property right in a creation, therefore it includes duties also.
Because rights and duties are correlated( Patient is an exclu-
sive right,1e. right to exclude others for exploitation of inven-
tion without the payment of royalty orwithout obtaining
licenceefrom the patentee. The inventor acquires the rights in
order to provide facilities to the public. If the patenteefails top
do so, the patent rights may be revoked,compulsorylicence
may beissued to others. Although, the inventor may not ap-

ply for patent. Still he has right to manufacture and market

his product. But he cannot exclude others from producing the
same products and marketing itBut the employee of such
invention which is not patented cannot use such invention.
Doing so would amount to breach of confidence. Thus, the
patent Act, grant various rights, i.e. right to exploit the patent,
righttogrant licence to another person, right to assign patent

rights,rightto suethe infringer and rightto surrender the

patent. The rights granted to the patentee are conditional, not
absolute. Once the patent is granted, the patentee has exclu-
sive rights to prevent third parties, if the patent is a product,
from making, using, offering for sale, selling or importing the
product for commercial purposes. Where the subject matter is
process patent, the patentee has right to exclude others and
prevent them from using such process, or selling or importing
for the purposes for the product obtained directly by that proc-
ess in India". These right can be exercised not only by the pat-
enteebut the licensee, assignee as well as Agent also.

3-48 )
 Property Law
Lectures on Intellectual
152
to use the invention him-
When the patentee is not willing
licence or assign thers. If there are more
self, he has right to
then any of the co-owner may
than one owner of the patent,
license the patent, but the consent of other co-owner
assign or
the patentee has right to surrender the
is also essential further,
of immovable
Patent Rights.Tt is just like relinquishment
notice of surrender of patent is given
property. When proper
to the controller of the patent,
the controller notifies the same
to sue if any one is interested in such patent. If there is none,
the controller may accept such surrender. The controller may
allot such patent if necessary to any other person who is will
or who undertakes provide
to the product to the public at
ing
reasonable pricg Since the patentee has monopoly right or
exclusive right to exploit the patent. If any one without the
consent of owner of the patent, uses it, it amounts to infringe-
ment. Hence, the patentee has right to sue the infringer. The
patenteehas rightto claim injunction along with damages and
accounts of profit. The Patentee may apply for grants of pat-
ent for addition' if the patentee makes any improvement or
modification in existing patent rights. The term of 'patent of
addition' runs along with the main invention/
Limitation on Patentee's Rights.
Since patent rights is not an absolute rights and the term
ofpatent is for twenty years. Therefore, certain limitationshave
Lbeen imposed on patentee in order to provide social benefits.
The invention may be used for experiment, research and teach

ing purposes'. Similarly, any patented product orprocess may

be used by the Government for its exclusiye use8.The Govern
ment may also import such product'.Tf the patentee has not
worked reasonably so as to
satisfy the requirement of the public
at a reasonable
price, the controller may grant compulsory
licences to any applicant to work with the paternt 9.Che com-
S-G3 Jo-8y
 ILLee

pulsory licences, granted u/s84 of the Act serves the public

the Government has right issue compulsory licence after the
expiry of three years from the date of grant of patent. Such
provision is applicable in case of national emergency, or cir-
cumstances or extreme urgency, or in case of
publicnon-comn-
mercial use or on the establishment of the ground of anti-com-
petitive practices. More so, certain inventions which are of de-
fence import may not be published. In such cases, the patent
right may not be granted for the invention. The central gov
ernment may use such invention by debarring the applicant
but royalty shall be paid to him the applicant may be paid
solatium also.Tn addition to all these rights the patent may
be revoked for non-workingor where the working has not
resulted in the satisfaction of the reasonable requirements of
the public.)
Obligation and Duties of Patentee.
Patent is an exclusiverights granted by the controller to
thetrue and first inventor,i.e. the patentee. The patentee can
exploit the right. But it is for the promotion of the technologi-
cal innovation. It is for the mutual advantages of producers
and the users. The patentee has to make use of the rights in a
manner conducive to the socio-economic welfare. The paten-
tee has to ensure that the practices must not unreasonably re-
strain and affect the public. It must not restrain international
Transfer of technology. The patentee has to ensure that the
reasonable requirement of the public must be met at reason-
able price. If he fails for three years continuously, his rights
are minimized and compulsory licences may be granted to
others capableto providenecessary requirement ofthe pub-
lic.Thus, the patent grants rights and duties as well for bal-
anced growth of society.)
-
 Transfer of Patent 155
4.
Transfer of Patent.

Transferability is an essence of property. It creates value

in the property. Either the property is movable or immovable,
without transferability, it has no importance{As in the im-
movable property, there is transfer of ownershipand posses-
sion may be temporarily or permanent. Likewise, movable
property is transferred. Here the property moves along with
rights in it. But in corporeal property in which rights of the
creator is vested, transfer from the owner to some one else.
Thus, rights in the property is transferred. Patent is incorpo-
real property transferable by Assignment,licenceand by op-
eration of law/Since property in a patent is creation of statute.
Therefore, there is no such thing as common law property in a
patent as in the case of a trade mark. Thereforethe rules of
transfer of patent is governed by the statute where patent is
granted to two or more persons jointly, each of them are enti-
tled for equal share in absence of any agreement to the con-
trary. But they cannotseparately transfer their share in pat-
ent. The patent as a rights in the invention istransferred asa
whole with the consent of other co-owners. As the transfer of
immovable propertyrequirestheinterest to be reducedtowrit
ing.The same is with patent. The patentee has to prepare a
document describing all terms and conditions, governing the
rights and obligation between the parties. The document is
effective after registration from the date of execution.)
Assignment
Assignmentmeanstransfer ofallinterest in the property
by one person to another. The person in whose favour rights
are transferred is called assignee. When assignment is made
in favour of two or more
persons, they become assignee jointly.
The legal assignee has to register his name in the Registrar of
 Inteliectual Property Law
Lectures on
156
maintained in the contro!ler's oftice as proprietor of
patents
there atter, the assignee exerci_es all the
the patent because
on him alsoThe pat
rightsand the patent office keeps vigil
ent rights can be by equitable assignment also.
transferred
not by document, to the
When a transfer is made by letter,
certain defined rights, it is known as equitable
of
office patent,
transfer can be converted into legal
transfer. The equitable
entering into legal agreement and getting it reg-
agreement by
istered with the patent offiçejOne term u/s 68 of
the Act has
i.e. mortgage. Mortgage is the transfer of limited
beenused, secure the of
payment
interest in the mortgagee with a
view to
movable property is not
a specified sum of money. Although, section
pledged'.
rather it is More so, this says
mortgaged, But
the of patent during mortgage period.
nothing about use

the mortgagee is not entitled to enter

his name in the register
mort
of the controller as proprietor. He can getit registered as
mode of transfer of patent isftransmissidn. It is
gageeAnother be called as
interna> transfer of rights in the property. It may
when the
transfer of patent by operation of law. Particularly
or becomes bankrupt, or
in the case of company
patentee dies
is dissolved.)
made with copyright
(Here, comparative analysis may be essential.
where in, the registration of transferred rights is not
It is because, for copyright there is no need to grant ot copy
of
right or obtaining of copyright from the Registrar copy-
as such. Where as
right is a right granted by the patent
patent
or the
office. Copyright is obtained itself the moment pen stop
Work is complete. In patent registration is essential because,
func
the patent, office keeps vigil on the patentee and their
tion. If the patent is not working property, compulsory Cer
may be issued.
Licences:
(Licence is an authority to do particular act. It is not a
transfer of irnterest. Licence merely confers personalpriviledge
 Transfer of Patent 157

to do particular act which the licencecan perform. It is a right

transferred through written document and registered with the
controller of the patent. However, in a proceeding before the
High Court or the controller of the patent, unregistered docu-
ment may be registered as evidence of the title of any person
to a patent. But failure to register the document may disentitle.
The assignee or licensee to sue for infringement. Because, the
right to sue develops from the registration which signifies own-
ership in the property. Although validity of the ownership as
assignee does not depend upon registration of title in the pat-
ent offices
Kinds of Licences:
the
Since licence is a grant of authority by the patentee to
licensee to do particular work, it has different mode
and dif-
ferent authority. Therefore, it is of different types. Thelicence
may be express or implied, statutory, voluntary ornon-volun-
exclusive licence excludes
tary,excdlusiveor non-exclusive. The
that particular
all other person including the patentee also for
licensee up to that par-
authority granted. In this regards, the Where as
ticular point is deemed owner of the patent rights.
the patentee. In express
sole licensee can prevent all but not
the grants licence in writing specifying all
licence, patentee
document is registered
terms and conditions expressly and the
for the pur-
in the patent office also. When there is permission
there is implied
chase of patented articles without restrictions,
icence to use the article in any way
and to resell it. Thus, un-
der implied licences, the permission is not given inexpress terms
from the circumstances. In volun-
in
writing but it implied
is
has no role to
the controller or the government
tary licence, owner of the patent
settle the terms and condition. Here, the
sell the patented arti-
himself empowers another to make use,
the owner him-
cles. The terms and conditions are settled by of
the controller
self whereas under non-voluntary licence,
in the issue. In this
re-
patent or the government is involved
 Lectures on ntellectual Property aw
158
are granted, one is 'licence of righte!
gards two types of licences
A licence of right' may he en-
another is compulsory licence.
dorsed with the patent after three yearsfrom the date of seal.
person who is interested in the working of patant
ing. Any
and request for the grant of i
may
there
approach patentee
cence. If the terms of the licence is not agreed upon mutuall.
it is settled by the controller of the patent. Thus,
'licence of
right' as the term signify
means any person may obtain a li.
cence as a of right without establishinga condition
matter

stipulated for compulsory licence, patents inventions re-

for
lated to food and medicine are generally endorsed with 1licence
of rights'after three years from the date of sealing of the pat-
ent.

Compulsory licencing: (-to)

Compulsory licencing is non-voluntary grant of licence
from the controller of the patent. Any person, after the expiry
of three years may make an application to the controller of
patent to grant compulsory licence on any of the grounds,
namely -that the reasonablerequirementef the publicwith
respecttothepatentedinvention has.notbeensatisfied,or that
thepatented invention is notavailable tothe publicat area
sonableaffordableprice, or that the patented invention is not
worked in the territory of India.
The controller of patent, after inquiry may order for the
8rant of compulsory licence to the the
applicant. Here,
buru/
den of proof lies upon the applicant. Every application filed
S84 (1) shall ordinarily be decided within one year from the
aate of presentation to the controller of patent5. Where tne
applicant
the
proves any one of the condition specifieu u/so (1)
controller may
ment claimed grant compulsory licence for the requi
by the applicant. Before granting
sory licence the controller will make tnens to
te provisions
safeguard the interest of those who appropriate provisiot
ent
apart from the patent havé an interest
holder. The order made by Con
u
 Transfer of Patent 159

troller operates itself as if it were added of licence executed by

the patent holder. Since such licence is granted without the
consent of the patent holder but only for public purposes men-
tioned under S.89 (1), therefore, it is known as compulsory
licence. The controller has been empowered to grant compul-
sory licences with a view to securing general purpose

i) That the patented inventions are worked on a com-

mercial scale in the territory of India without fur-
ther delay,
(i) That the interest of any person under the protec-
tion of a patent are not unfairly prejudiced.
Further, the controller of patent also secures
the interest of the patentee while setting the terms
and conditions of compulsory licence. The control-
ler of the patent ensures° that
) The royalty and other remuneration reserved to the
patentee or other beneficiary to the patent is rea-
sonable,
(i) That the patent invention is worked to the fullest
extent by the person to whom the patent is granted
and with reasonable profit to him,
ii) That the patented articles are made available to the
public at reasonably affordable prices,
(iv) That the licence granted is non exclusive licence.
(v) That the rights of the licensee is non-assignable,
(vi) That the licence is for the balance term of the pat-
ent unlessa shorter term is consistent with public.
interest.
Vii) That the licence has been granted with a predomi-
nant purpose of supply in the Indian market and
that the licencee may also export the patented prod-
uct.
 Lectures on Intellectual Property Law
160
(vii) That in the case of semi-conductor technology, the
licence granted is to work for publicnon-commer
cial use,
(ix) That in case oflicence granted for the remedy aof
anti-competitive particles the licencee shall be per
mitted the patented product,
The licence granted as such shall not authorise to import
the patented article from abroad.Itwould amount an infringe
ment of the rights of the pantee".The compulsory licence may
be granted in respect of patent without the use of which an
other patent cannot be worked. Further, the central govt.
licences
may notify in the official Gazette that compulsory
should be granted in respect of certain patents or classes of
patents. Insuch situation the controller may grant a licence to
for.
any person interested in the patent and applies
Use of the Patent without Licence by the Govt.
(All the patents are granted with the condition that the
government shall have the rights to use the invention.Thus,
the government need not to obtain any licence or assignment
from the patentee before it can use the patented invention.lt
will not be treated as infringement of the patent. Here, the
government may pay royalty or may not pay also. The drugs
or medicine may be imported by the central Govt. for
Govt.
hospitals, dispensaries, and medical institutions. Such use of
the patent does not require any payment of royalty to the pat-
entee. However, such patented articles, which the central govt.
imported, cannot be manufactured in India. Where the inven
tion has been recorded, tested or tried on behalf of the govern
ment or government undertaking before the priority date of
the relevant claim of the complete specification, it may be used
for the purpose of the
government without payment ot roy-
alty. In all other cases, the government has to pay royalty or
other remuneration to the patentee. Where the
government
uses the patent for its purposes, it should be notified to the
 Transfer of Patent 161
atantee. Where the gOvernmentuses the patent for Govt. pur-
s . it should be notüied to the patentee of such fact furnish-
s im iniormation as to the extent of use from time to time.
The government can acquire an invention for a public
ses either before the grant of patent or after the
grant of
atentNo patent shall be granted in respect of an invention
whidh is relevant to defence
purposes. In the first case, for the
acquisition of patented invention, compensation is paid by the
Govt. Here the'doctrine of
Eminent domain' is applied. 'No
person can take away property save by authority oflaw13,.In
tihe case of defence purposes, when the
complete specification
is
accepted, government has to pay
the
royalty.)
Thus, licence and assignment are essence to the intellec-
tual property. It adds value,
importance and utility of the prop-
erty. Licence and assignment help the patentee to earn roy-
alty from the assignee or the licence holder. In this way, the
assignee or the licence holder as well as patentee gains eco-
nomically. The patentee can prohibit the whole saler or retailer
from selling his competitors goods. He may also insist that the
spare parts required for repairing the patented article leased
or licensed should be
purchased from him only. It is permissi-
ble to preserve the reputation and quality of the patented arti-
cle. Further, under, a few circumstances, the govt. can use the
invention without' obtaining licence from the patentee. The
government can acquire the invention for public purposes as
well as defence purposes with adequate payment of royaliy)

-
162 Lectures on ntellectual Property La

5.
Surrender and Revocation of Patents.

The basic principle of patent law lies u/s 47 of the Act

where it says that grant of patent is not absolute rather subject
to certain conditions. Thus, patent is a kind oflimited monopoly
It is granted to the true and first inventor as a reward for the
invention which is new and useful. Thus grant of patent pro-
vides various rights to the patentee to exploit the invention.
The invention may be used by himself, may be assigned or
may be licensed also. Along with such rights, the patentee has
right to surrender the patent to the patent office The paten
tee may surrender the patent by giving notice to the control-
ler. The controller shall publish the offerand also notify every
person other than the patentee whose name appears in the
register of the patent. Any person may notice to the controller
of opposition to the surrender which is notified to the paten-
tee. When the controller of the patent is satisfied after hearing
both the parties, then the surrender of the patent may be ac
cepted and later on the controller may revoke the patent.
Revocation of Patent:
Since patent is a limited monopoly rights. It is a rights
granted to the patentee for public purposes. If the public pur-
pose is not satisfied, the patent may be revoked. There are var-
ous modes of revoking paternt:
) Revocation by the Central Government in the pub-
licinterest,
(i) Revocation by the controller relating to the inven-
tion of Atomic energy,
(ii) Revocation for non-working of patent.
(iv) On failure to comply with the requirement of the
govermment, the High Court may revoke the pat-
ent.
 Surrender and Revocation of Patents 163
Grounds for revocation of Patent:
When the applicant was not entitled to apply for
patent,
or the patent was wrongfully obtained, or patent was obtained
by false suggestion or representatiorn, or paterntee could not
make compliance of direction ofsecrecy,
specification was
obtained byfraud, the patent may be revoked. The patent is
also revoked when any false suggestionis made in the
specifi-
cation. When the specification on which patent is founded is
totally wrong, the patent may be revoked.
Another ground of revocation may be that the subject
-

matter is not an invention, or the

subject matter is not a pat-
entable invention, or it was used secretly beforepriority date,
or the invention claimed lacked the quality of novelty, or it is
obvious and does not involve inventive steps, or invention is
not useful, or invention claimed was anticipated.
Prior secret use is a ground of revocation of patent but
not for opposing the grant. Secret use on commercial scale is
sufficient to invalidate a patent. But prior use for experiment
so as to genuinely confirm and satisfy himself that the inven-
tion is useful, there is no violation of law hence, there can be
no revocation. Patent may be revoked in ihe public interest
also. when the patent cannot work, in another work, when it
will not do what the specification promises, the patentmay be
revoked. It is the duty of the patentee to describe the invention
completely and the method of performing it. Failure to per-
form this duty is a ground for revocation. Along with non-
disclosure, ambiguity in specification, covetous claims or un-
justified claim are the grounds of revocation of patent.