CHAPTER I

INTRODUCTION

1.1 A patent is granted as an exclusive right by the Government for an invention for
a limited period of time in consideration of disclosure of the invention by an
applicant. A patentee enjoys exclusive right to prevent a third party from an
unauthorized act of making, using, offering for sale, selling or importing the
patented product or process within the country during the term of the patent. A
patented invention becomes free for public use after expiry of the term of the
patent or when the patent ceases to have effect on account of non-payment of
renewal fee.

1.2 History of Indian Patent System

1.2.1 The first legislation in India relating to patents was the Act VI of 1856. The
objective of this legislation was to encourage inventions of new and useful
manufactures and to induce inventors to disclose secret of their inventions.
The Act was subsequently repealed by Act IX of 1857 since it had been
enacted without the approval of the sovereign. Fresh legislation for granting
‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This
legislation contained certain modifications of the earlier legislation, namely,
grant of exclusive privileges to useful inventions only and extension of
priority period from 6 to 12 months. The Act excluded importers from the
definition of inventor. The 1856 Act was based on the United Kingdom Act
of 1852 with certain departures including allowing assignees to make
application in India and also taking prior public use or publication in India or
United Kingdom for the purpose of ascertaining novelty.

1.2.2 The Act of 1859 provided protection for invention only and not for designs
whereas United Kingdom had been protecting designs from 1842 onwards.
To remove this lacuna, the ‘Patterns and Designs Protection Act’ (Act XIII)
was passed in 1872. This Act amended the 1859 Act to include any new and
original pattern or design or the application of such pattern to any substance
or article of manufacture within the meaning of ‘new manufacture’. The Act
XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a
provision to protect novelty of the invention, which prior to making application
for their protection were disclosed in the Exhibitions of India. A grace period of
6 months was provided for filing such applications after the date of the opening
of such Exhibition.

1.2.3 In 1888, new legislation was introduced to consolidate and amend the law

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 relating to invention and designs in conformity with the amendments made in the UK
law. The modifications introduced in the Indian law, by Act V of 1888, over the UK
legislation, inter alia, includes :

• Shifting of authority to administer the Act from the Home department to

Secretary to Government of India;
• Extension of the jurisdiction of the Act to other courts apart from High
Courts of Madras, Calcutta and Bombay;
• Reduction in the fee from Rs. 100 to Rs. 10 only at filing stags;
• Graduation of fee as to amend approximately with the increasing value
with the invention acquires as it becomes more commonly known and
used.
• Provision for detailed disclosure of the invention, including best mode of
working the invention in full clear, concise and exact terms so as to
enable any person skilled in the art or science to make use of the
invention;
• Provision of powers to call for a model of the invention;
• Change of time for filing petition in respect of patent granted in United
Kingdom from 12 months from the ‘letters patent’ to 12 months from the
‘date of sealing’;
• Powers to extend the term of exclusive privileges by 7 years ordinarily
and 14 years in exceptional cases.
• Provision for granting compulsory licence where invention is not made
accessible to public, on reasonable terms;
• Appointment of Agents to encourage filing by foreign inventor;
• Introduction of provision for protection of new or original design;
• Provision for counting the grace period for filing application for
invention displayed in the Exhibition from the date of admission of the
invention into the Exhibition instead of the date of the opening of the
Exhibition.

1.2.4 In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought
in replacing all the previous legislations on patents and designs. This Act
brought patent administration under the management of Controller of
Patents for the first time. This Act was amended in 1920 to provide for
entering into reciprocal arrangements with UK and other countries for
securing priority. In 1930, further amendments were made to
incorporate, inter-alia, provisions relating to grant of secret patents,
patent of addition, use of invention by Government, powers of the
Controller to rectify register of patent and increase of term of the patent
from 14 years to 16 years. In 1945, another amendment was made to
provide for filing of provisional specification and submission of
complete specification within nine months.

1.2.5 After Independence, it was felt that the Indian Patents & Designs Act, 1911
was not fulfilling its objective. It was found desirable to enact comprehensive
patent law owing to substantial changes in political and economic conditions
in the country. Accordingly, the Government of India constituted a
committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a

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 retired Judge of Lahore High Court, in 1949, to review the patent law in India
in order to ensure that the patent system is conducive to the national interest.
The terms of reference included —

a) to survey and report on the working of the patent system in India;

b) to examine the existing patent legislation in India and to make
recommendations for improving it, particularly with reference to the
provisions concerned with the prevention of abuse of patent rights;
c) to consider whether any special restrictions should be imposed on
patent regarding food and medicine;
d) to suggest steps for ensuring effective publicity to the patent system and
to patent literature, particularly regarding patents obtained by Indian
inventors;
e) to consider the necessity and feasibility of setting up a National Patents
Trust;
f) to consider the desirability or otherwise of regulating the profession of
patent agents
g) to examine the working of the Patent Office and the services rendered
by it to the public and make suitable recommendations for
improvement; and
h) to report generally on any improvement that the Committee thinks fit to
recommend for enabling the Indian Patent System to be more conducive
to national interest by encouraging invention and the commercial
development and use of inventions.

1.2.6 The Committee submitted its interim report on 4th August, 1949 with
recommendations for prevention of misuse or abuse of patent right in India and
for amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911
on the lines of the United Kingdom Acts of 1919 and 1949. The main
recommendations of the Committee were as follows:-

(a) Any interested person may apply for a compulsory licence or revocation
of the patent on any of the following grounds, namely —

(i) patented invention, being capable of being commercially worked

in India, is not being commercially worked therein to the fullest
possible extent;
(ii) demand for the patented article in India is not being met to an
adequate extent or on reasonable terms;
(iii) commercial working of the invention in India is being prevented
or hindered by the importation of the patented articles; and
(iv) the refusal of the patentee to grant a licence or licences on
reasonable terms, whereby the commercial or industrial activities
in India are prevented or hindered;

(b) for obtaining relief against abuse of patent rights, an application can be
made to the Controller of Patents and Designs any time after the sealing
of the patent and the order of the Controller to be appealable before the

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 appellate authority which should be an ad-hoc Special Tribunal
nominated by the Central Government consisting of –

(i) a sitting or retired judge of a High Court ( as the President),

(ii) a barrister or advocate of not less than ten years standing,
preferably conversant with patent law and procedure, and

(iii) a technical expert in the particular subject with which the patent
in question is concerned

The functions of the Special Tribunal should be judicatory and not

advisory, and its decisions should be final and it should have the power
to award costs.

1.2.7 The committee also observed that the Patents Act should contain clear
indication to ensure that food and medicine and surgical and curative devices
are made available to the public at the cheapest price commensurate with giving
reasonable compensation to the patentee.

1.2.8 Based on the above recommendation of the Committee, the 1911 Act was
amended in 1950 (Act XXXII of 1950) in relation to working of inventions and
compulsory licence/revocation. Following grounds were provided for making
applications for compulsory licence:

(a) patented invention, being capable of being commercially worked in

India, is not being commercially worked therein to the fullest possible
extent;
(b) demand for the patented article in India is not being met to an adequate
extent or on reasonable terms;
(c) commercial working of the invention in India is being prevented or
hindered by the importation of the patented articles;
(d) the refusal of the patentee to grant a licence or licences on reasonable
terms, the commercial or industrial activities in India are prevented or
hindered;
(e) a market for the export of the patented article manufactured in India is
not being supplied;
(f) the working or efficient working in India of any other patented invention
which makes a substantial contribution to the establishment or
development of commercial or industrial activities in India is unfairly
prejudiced; and
(g) conditions of licence unfairly prejudiced the establishment or
development of commercial or industrial activities in India.

The time period prescribed for making the applications was “at any time after
expiration of three years from the date of sealing.” The application could also be
made by the licencee. The term, ‘patented article’ included any article made by
a patented process. Other provisions were related to endorsement of the patent
with the words ‘licence of right’ on an application by the Government so that the
Controller could grant licences. In 1952, an amendment was made to provide

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 compulsory licence in relation to patents in respect of food and medicines,
insecticide, germicide or fungicide and a process for producing substance or
any invention relating to surgical or curative devices, through Act LXX of
1952 . The compulsory licence was also available on notification by the Central
Government. Based on the recommendations of the Committee, a bill was
introduced in the Parliament in 1953 (Bill No.59 of 1953). However, the bill
lapsed on dissolution of the Lok Sabha.

1.2.9 In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar

Committee to examine the question of revision of the Patent Law and advise
government accordingly. The report of the Committee, which comprised of two
parts, was submitted in September, 1959. The first part dealt with general
aspects of the patent law and the second part gave detailed note on the several
clauses of the lapsed bill of 1953. The first part also dealt with evils of the
patent system and solution with recommendations in regard to the law. The
committee recommended retention of the patent system, despite its
shortcomings. This report recommended major changes in the law which
formed the basis of the introduction of the Patents Bill, 1965. This bill was
introduced in the Lok Sabha on 21st September, 1965, which, however, lapsed.
In 1967, an amended bill was introduced which was referred to a Joint
Parliamentary Committee and on the final recommendation of the Committee,
the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act
so far as the patents law was concerned. However, the 1911 Act continued to be
applicable to designs. Most of the provisions of the 1970 Act were brought into
force on 20th April, 1972 with the publication of the Patents Rules, 1972.

1.2.10 The salient features of the Patents Act, 1970 are:

• Elaborate definition of invention

• No product patents for substances intended for use as food, drugs and
medicines including the product of chemical processes
• Codification of certain inventions as non-patentable
• Mandatory furnishing of information regarding foreign application
• Adoption of absolute novelty criteria in case of publication
• Expansion of the grounds for opposition to the grant of a patent
• Exemption of certain categories of prior publication, prior
communication and prior use from anticipation
• Provisions for secrecy of inventions relevant for defence purposes
• Provision for use of inventions for the purpose of Government or for
research or instruction to pupils
• Reduction in the term of patents relating to process in respect of
substances capable of being used as food or as medicine or drugs
• Enlargement of the grounds for revocation of a patent
• Provision for non-working as ground for compulsory licences,
licences of right, and revocation of patents
• Additional powers to Central Government to use an invention for
purposes of government including Government undertakings
• Prevention of abuse of patent rights by making restrictive conditions
in licence agreements/contract as void

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 • Provision for appeal to High Court on certain decisions of the
Controller
• Provision for opening of branches of the Patent Office.

1.2.11 This Act remained in force for about 24 years till December 1994 without any
change. An ordinance effecting certain changes in the Act was issued on 31st
December 1994, which ceased to operate after six months. Subsequently,
another ordinance was issued in 1999. This ordinance was later replaced by
th
he Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1st January, 1995. The amended Act provided for filing
of applications for product patents in the areas of drugs, pharmaceuticals and
agro chemicals though such patents were not allowed. However, such
applications were to be examined only after 31st December, 2004.
Meanwhile, the applicants could be allowed Exclusive Marketing Rights
(EMRs) to sell or distribute these products in India, subject to fulfilment of
certain conditions.

1.2.11 The second amendment to the 1970 Act was made through the Patents
(Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th
May, 2003 with the introduction of the new Patents Rules, 2003 by replacing
the earlier Patents Rules, 1972. Salient features of the Patents (Amendment)
Act, 2002 were:

• Further codification of non patentable inventions

• 20 years term of patent for all technology
• Provision for reversal of burden of proof in case of process patents
• Provisions of compulsory licences to meet public health concerns
• Deletion of provision of licence of right
• Introduction of system of deferred examination
• Mandatory publication of applications after 18 months from the
date of filing
• Provision for process patent for micro organisms
• Establishment of Appellate Board
• Provision for parallel imports
• Provision for exemption from infringement proceedings for use
of a patented invention for obtaining regulatory approval for a
product based on that patented invention
• Provision to protect biodiversity and traditional knowledge.

1.2.13 The third amendment to the Patents Act, 1970 was introduced through the
Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This
Ordinance was later replaced by the Patents (Amendment) Act, 2005 (Act 15
Of 2005 ) on 4th April, 2005 which was brought into force from 1st January,
2005. The salient features of this amendment are-

• Extension of product patents to all fields of technology including food,

drugs, chemicals and micro organisms

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 • Deletion of the provisions relating to Exclusive Marketing Rights
(EMRs)
• Introduction of a provision for enabling grant of compulsory licence
for export of medicines to countries which have insufficient
or no manufacturing capacity to meet emergent public health
situations
• Modification in the provisions relating to opposition procedures with a
view to streamlining the system by having both pre-grant and post-
grant opposition in the Patent Office
• Strengthening the provisions relating to national security to guard
against patenting abroad of dual use technologies
• Rationalisation of provisions relating to time-lines with a view to
introducing flexibility and reducing the processing time for patent
application.

1.3 Patents Rules

1.3.1 Section 159 of the Patents Act, 1970 empowers the Central Government to
make rules for implementing the Act and regulating patent administration.
Accordingly, the Patents Rules, 1972 were notified and brought into force
w.e.f. 20th April, 1972. These Rules were amended from time to time till 20th
May, 2003 when new Patents Rules, 2003 were brought into force by
replacing the 1972 rules. These Rules were further amended by the Patents
(Amendment) Rules, 2005 and the Patents (Amendment) Rules, 2006. The
last amendments were made effective from 5th May, 2006.

1.3.2 There are four Schedules to the Patents Rules which provide details of fees
and forms pertaining to various types of actions required under Patents Act
and Rules:

• The First Schedule prescribes fees to be paid.

• The Second Schedule specifies the list of forms and the texts of
various forms which are to be used wherever required in
connection with various activities under the Patents Act.
• The Third Schedule prescribes the Form of the patent to be issued
on the grant of patent.
• The Fourth Schedule prescribes costs to be awarded in various
proceedings before the Controller under the Act.

1.4 Administrative Structure of the Patent Office

1.4.1 Patent system in India is administered under the superintendence of the

Controller General of Patents, Designs and Trademarks (CGPDTM), appointed
under sub-section (1) of Section 3 of the Trade Marks Act, 1999. The Office of
the Controller General of Patents, Designs and Trade Marks is a subordinate
office of the Department of Industrial Policy and Promotion, Ministry of
Commerce and Industry and comprises the statutory offices of Patent Office,

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Trade Marks Registry and Geographical Indication Registry. The Controller
General’s Headquarters is located at Mumbai. There are four Patent Offices in
India. The Head Office is at Kolkata and other Patent Offices are located at
Chennai, Delhi and Mumbai. The Controller General of Patents, Designs and
Trade Marks delegates his powers regarding various procedures for patent
grant to Senior Joint Controller of Patents & Designs, Joint Controllers of
Patents & Designs, Deputy Controllers of Patents & Designs and Assistant
Controllers of Patents & Designs. Examination of patent applications is done by
Examiners of Patents & Designs.

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