Introduction

The term patent originated from Latin word ‘patene’ means ‘to open’. It is an
important species of intellectual property. Patent is a monopoly right. It is granted for fixed
period of term. It is granted to the creator of new and useful inventions in return of his
disclosing the invention. Modern era is an era of science and technology. A legal system
should protect and reward innovations. This can be done by conferring monopoly rights for
commercial exploitation of an invention.

History of patent law in India

The patent system in India emerged when India was a colony of British. The first Act
for protection of inventions in India was based on the British Patent Law, 1852. Actually,
ancient India had acquired a high standard of efficiency in science and technology.
However, the knowledge was kept secret. It was handed on to the chosen pupils or
disciples. Only the results were available to the public. Since statutory protection was not
available to the inventions there was always fear of theft. Therefore, there was secrecy of
knowledge. This knowledge either passed in the next generation through favourite
disciples or lost with the demise of the inventor.

However, now the invention has acquired legal protection. The patent system in India
emerged when India was colony of British and therefore there was impact of British patent
law in India also. The first Act for protection of inventions in India was based on the British
Patent Law of 1852. The inventors were granted certain privileges for new manufactures
but this grant was for 14 years. The Act was modified in 1859 and exclusive privileges were
granted to the inventor about making, selling and using inventions in India. The inventor
also authorized the invention for 14 years. Thereafter the Patents and Designs Act, 1880
was a detailed legislation. It continued till 1970.

Patent Act, 1970

There was industrial revolution and there were changes in economic and political
scenario throughout the world. Similarly, India became free from British Raj. This all
necessitated a comprehensive law on patent & the object was to make the patent law more
effective. The Government of India appointed Justice Rajagopal Iyengar Committee to
examine and review the Patent Law in India in 1957. Justice Iyengar Committee submitted
a comprehensive report in 1959. The Patents Bill, 1965 was introduced in the Lok Sabha on
21st September 1965. The Bill was based mainly on the recommendations of Iyengar
Report. It incorporated a few changes with reference to patents for food, drug and
medicines. The Patents Bill was passed by the House of Parliament on 19th September
1970 and the Patents Act, 1970 came into existence.

Patents Amendment Act, 1999

By the Amendment of 1999, exclusive marketing rights to sell or distribute certain articles
or substances in India were introduced. New sections 24A to 24F of Chapter IV-A deal with
these provisions.
Patent Amendment Act, 2002

New definition of invention was introduced by this Amendment Act. Invention means a
new product or process involving an inventive step, capable of industrial application. It
came into force and is in consonance with TRIPS. Other important provisions of the Act are
summarized as below,

 Term of patent-Now term of patent is 20 years to all categories of inventions;

 Discovery of living thing and nonliving substances is made non patentable;

 Provision for examination by other interested persons is introduced;

 Provision of ‘licenses of right’ was abolished;

 Amendment of working of patent compulsory licence and revocation of patents

introduced;

 Appellate Board is established;

 Bolar provisions are added under section 107A

Patent Amendment Act 2005;

 Product patent to drugs, foods and chemicals etc. also introduced;

 Definition of inventive step is revised. Now inventive step includes into it, non-
obviousness, technical advance and or economic significance;

 Definition of new invention and pharmaceutical substance have been introduced;

 Mere discovery of new form of known substance has been made non patentable
inventions. Object is to prevent continuation of patent privilege even after expiry of
term. If it is not so the patentee would get further patent in invention which is a new
form of unknown substance.

 Bolar provision-Use of patent for development and submission of information for

regulatory approval will not be considered as an infringement of copyright.

 Provision for grant of compulsory licence for export of patented medicines to

underdeveloped countries;

 Acquisition of patent for public health purposes;

 Provision for pre grant and post grant opposition to the granting of a patent
introduced;

 Provisions of exclusive marketing rights deleted;

  Patent protection would also be available for software in combination with or
embedded in hardware like mobile phones and computers. Initially software
enjoyed only copyright protection.

CHAPTER II

Characteristics of patent

Introduction

Patent is legal grant of monopoly right for some fixed term to the creator of new and useful
inventions in return of his disclosing the invention. Being monopoly right, it prohibits use
or sale of invention by others without permission of patentee. However, monopoly right is
for limited period and cannot be renewed. It is an important species of intellectual
property. The grant and use of patent are regulated by law.

Object of Patent Law

Patent is a legal reward as it stimulates technology and industrial growth. The object of
patent law is to provide protection to inventions which consequently encourage scientific
research, new technology and industrial progress. When exclusive privilege to own, use or
sell the method or the product patent is granted to its inventor, it stimulates new
inventions of commercial utility.

The two reasons for grant of patent monopoly are,

1. Inventions result in establishment of new industries in country. Inventions also improve

an existing industry. This increases employment of labour and capital of country. Thus, it
increases national wealth.

2. After expiry of term of patent, the patent falls into public domain and the general public
can use it.

Significance or importance of patent

Grant of monopoly rights to inventor stimulates him to work more and more in the field of
research and technology development. Research and development in industrial sector are
the key factors for economic prosperity of nation. Most of the discoveries and inventions
are published in patent specification filed at Patent Office. A worldwide exchange of
technical information has been made possible only through the specifications. The
inventors disclose their invention and therefore there is a fear of the benefits of their
labour would be lost to competitors. But if this provision had not been there, much of the
technological inventions would have remained secret.

Aims and Objects of Grant of Patent

Section 83 of the Patents Act narrates the aims and objects of grant of patent-

1. Patents are granted to encourage inventions so that the inventions work in India on
commercial scale without undue delay and to the fullest extent.

2. Patents are not granted merely to enable patentee to enjoy a monopoly for the
importation of patented articles.

3. The protection and enforcement of patent rights promote technological innovations. It

also increases transfer and dissemination of technology. It is advantageous for both the
producer and user of technological knowledge. It is also conducive to social and economic
welfare. It endeavours to balance rights and obligations.

4. Patent granted should act as instrument to promote public interest; for protection of
public health and nutrition. It is necessary for social economic and technological
development of India.

5. Grant of patent does not prohibit Central Government in taking measures to protect
public health.
6. To see that patentee or any person interested in patent does not abuse patent rights.
Patentee or any such person does not resort to practices which unreasonably restraint
trade or adversely affect the international transfer of technology.

7. Patents are granted to make the benefit of the patented inventions available at
reasonable and affordable prices to the public.

CHAPTER III

Patentable and Non-Patentable Inventions

Introduction

Patent is a monopoly right conferred by the patent office. It is granted to an inventor to

exploit his invention for a limited period of time. All others are excluded from using or
selling or exploiting the invention. Patent is granted for new invention but all inventions
are not patentable and even though new, some inventions are not conferred with status of
patent. This may be due to public interest or social interest.

Essentials of Patentability

All inventions are not capable of grant of patent. Section 3 & 4 of the Patents Act, 1970 deal
with patentability of inventions. According to section 3, for grant of patent, there must be
an invention; and such invention must be new or novel. Such invention shall not be obvious
and shall be useful industrially.

Invention
 An invention is creation of intellect applied to capital and labour to produce
something new and useful. Section 2(1) (j) defines invention and it means a new product or
process involving inventive step and capable of industrial application. Thus, invention may
be a product or process. Invention means something new which was not in existence or
known before it was made. An invention is said to be publicized if it is known prior to
patenting. A patent can be granted if it is an invention.

According to section 2(1) (l) new invention means any invention or technology
which has not been anticipated by publication in any document or used anywhere in the
world before the date of filing of complete specification of patent application. An invention
must be new or novel and result in new product or process. It shall also involve an
inventive step and would be capable of industrial application.

Inventive Step

Inventive step means a feature of an invention that involves technological advances as

compared to the existing knowledge. An invention having economic significance also is
considered as invention capable of patent. Thus, an inventive step involves either
technological advancement or economic significance. Generally, an invention must be new
for patentability but to this rule, the Patent Amendment Act, 2005 has created an exception.
Even if there is technical advancement as compared to the existing knowledge or economic
significance or both, an inventive step involving simply technological advancement is
patentable e.g. a person can have patent of mobile and some other person may obtain
patent of mobile with internet. A car run on electricity is another example.

Similarly, a person can also get a patent if inventive step is economically significant e.g.
Tata Nano is a car available at a cheaper rate. However, such invention or inventive step
should not be obvious i.e. it should be non-obvious.

Novelty

Invention must be new or novel. It means on the date of filing of patent application, it
should not form part of state of prior art. ‘State of prior art’ means that the matter was
made available to the public before the priority date of invention i.e. the matter was known
to the public by written or oral description or by used or by any other way. Thus, an
invention should not be found in any matter whether as a product or process or
information.

The fundamental principle of patent law is that a patent is granted only for an invention
which must be new and useful i.e. it must be novel and useful. It is essential for the validity
of patent that it must be the inventor’s own discovery. Prior public knowledge of the
alleged invention would disqualify the grant of patent.

Non obvious

In addition to novelty, patentability also requires non-obvious nature of the subject matter
sought to be patented. Sometimes some inventive is done for the first time which is result
of addition of a new idea to the existing stock of knowledge. Patent is not to be granted for
every trivial advancement. Minor improvements are considered as work of a skillful
mechanic for which protection ought not be granted. But simplicity of invention is not the
criteria of non obviousness.

In Graham vs. John Deere Company, Supreme Court of India laid down certain factors to be
considered to find out whether invention was obvious or non-obvious:

1. The scope and content of prior art-Prior art means the knowledge existing in public
domain e.g. existing technologies.

2. The difference between the prior art and the claims at issue i.e. to see what is the
difference between the existing technology and the claimed invention.

3. The level of ordinary skill in the pertinent act-

Besides this, the court can also consider

i. commercial success of claimed invention;

ii. long felt but unsolved needs;

iii. the failure of others to solve the problem.

Obvious is judged by viewing the invention as a whole.

Industrial applicability

It means the invention must be capable of being manufactured or used in an industry. The
invention must also be useful. However, in some countries such ‘not so useful’ inventions
are protected as ‘utility models.’
 Chapter IV
Exceptions to patentability or non-patentable inventions
Introduction:

Some inventions in spite of being new, non-obvious and useful are not patentable i.e. patent
cannot be granted to such inventions. Section 3 and 4 of the Patents Act 1970 deal with
such non patentable inventions-

1. Those inventions which are injurious to public health or violate public morality or public
interest

2. New method of agriculture or horticulture is non patentable inventions. The object is to

have more widespread benefit of such invention. The object is also to prevent
concentration of commercial gain of such invention in the hands of the inventor alone.

3. A process of treatment of human beings, animals or plants cannot be patented. The

principal object behind prohibiting such patents is to balance social interest with individual
interest.

Section 3 again gives list of certain products or processes which are not patentable
inventions and these are-

1. Inventions that are frivolous that means inventions which are foolish or not so
important. Similarly, inventions that are contrary to well established natural laws
are not patentable.

2. Following inventions are not patentable-

a. Inventions contrary to public order
b. Inventions contrary to public morality
 c. Inventions causing prejudice (detriment) to human, animal or plant life or health or
to the environment.
3. Mere discovery of a scientific principle or any living thing or non-living substances
occurring in nature. Patent is not available for anything present in nature or Earth.

4. Discovery of new form of known substance or new use of a known substance or use
of unknown process or product. However, if such invention results in a new product
it may be patentable.

5. A substance obtained by admixture and it is only aggregation of properties or

characteristics of components.

6. Arrangement for rearrangement or duplication of known devices which were

functioning independently.

7. Plants and animals in whole or part are not patentable. Similarly seeds, varieties and
spaces and essentially biological processes for production or propagation of plants
and animals.

8. A mathematical or business method computer program.

9. Any literary, dramatic, musical or artistic work or any other artist’s creation,
cinematographic works and TV production. These are protected by copyright law.

10. Topography of integrated circuits.

11. An invention which in effect is traditional knowledge or duplication of known

properties of traditional known components.

References and cases

1. Stanipack Private Limited vs. Oswal Trading Company limited

Plaintiff was granted patent for manufacture of pouch for storage and dispensing of liquid
such as lubricating oil. Delhi High Court revoked the patent on the ground that their
invention was not new and not an invention within the meaning of section 3.

2. Eli Lilly and Companies application

Application was made for novel manner of use of old compounds for treatment of human
diseases. It was held that invention is not patentable.

3. Calmic English Company limited application

Patent was refused for a method of purifying blood by removing toxic substances from
blood by dialysis.
 PROCEDURE FOR OBTAINING PATENT

Introduction

Copyright vests in the author the moment he creates the work. However, it is not so with
patent. A person is not entitled to a patent immediately after filing or finding of invention.
Such person has to follow procedure. His invention must be approved for grant of patent.
The Patents Act has prescribed a detailed procedure beginning with e filing of application.

Application-section 6 to 11

The first step is to make an application in the prescribed format. Application must be
accompanied by provisional or complete specification.

Who can file application?

Following persons are entitled to file an application for grant of patent,

1. The true and first inventor

2. Assignee of true and first inventor

3. Legal representatives of a deceased person entitled to file application for grant of patent.

An application shall be filed in the patent office and the same may be filed online or offline.

True and first inventor

True and first inventor means a person who has first made an invention. When two
persons claim to have made the same invention independently and not disclosed it, then
the inventor who applied first for the patent is taken as true and first inventor even though
he has made or created the invention latter.

In case of employment, generally if invention is made by an employee in the course of his

employment the invention belongs to the employer. It is an implied term in the contract of
service that what an employee produces by his work or skill or intellect shall become the
property of employer. However, if there is a contract between employer and employee,
employee becomes the owner. Similarly, if there is no express contract, the employee may
have initial rights in his own invention.

Assignee
Any person who is assignee of true and first inventor can also make application for patent.
However, such assignee must have right to make such application.

Legal representatives

Legal representatives of a deceased person who was entitled to make such an application
can also file application for patent. Such legal representative maybe of true or first inventor
or of an assignee.

Form of application

For one invention one application shall be filed i.e. single application for single invention.
Two inventions cannot be clubbed together. Separate application for each invention is
required to be made in the prescribed form. Application shall be made to Controller of
Patent. If application is made by assignee, application shall be accompanied with proof of
the right to make the application. It means some document showing the fact of assignment
shall also be submitted e.g. assignment deed.

It shall be stated in the application that the applicant is in possession of invention.

Application shall also name the owner i.e. who is true and first owner. If applicant is not the
true and first owner for example employer, assignee such application shall give a
declaration that he believes the person named to be the true and first inventor.

Specification section 9

A patent specification is a technical document describing the invention. Specifications are

of two types, provisional specification and complete specification.

a. Provisional specification

Provisional specification gives the initial description of an invention. The object of filing a
provisional specification is to fix the priority date. It does not require full or complete
description of invention.

b. Complete specification

It gives full and sufficient details of invention in such a manner that a person skilled in the
art can use the invention when he reads the description. Section 10 of the Act lists the
contents of complete specification,

1. Title of invention indicating its subject matter;

2. The full and particular description of the invention, its operation or use or method to
perform

3. The disclosure of the best method of performing the invention known to the applicant;

4. The scope of the invention;

5. In case of international application a complete specification shall contain title,
description, drawings, abstract and claims.

Every complete specification shall be accompanied by an abstract to provide

technical information of the invention. Abstract shall contain following information,

1. The technical field to which invention belongs,

2. Technical problem relating to invention and solution to the problem through the
invention;

3. Principal (main) use or uses of the invention.

The object of filing specification is to make the invention available to the public after expiry
of patent. If provisional specification is filed with application, then complete specification
must be filed within 12 months of filing application. If applicant fails to submit/file
complete specification within prescribed period it will result in abandonment of
application.

Publication and Examination of application

An application for patent shall be published. Object of publication is to make it open to

public for specified period. The Controller shall publish the patent application and it
includes,

a. Particulars of the date of application;

b. Number of the application,

c. Name and address of applicant;

d. An abstract.

Patent office may publish the specifications and drawings of such application.

Every application shall be published after 18 months of filing it. An application need
not be published in following cases,

i. Application in which secrecy direction is imposed under section 35;

ii. Application which is abandoned for not filing a complete specification;

iii. Application which is withdrawn three months before publication.

Object of publication is to make the invention known to the public so that if any person has
objection, he or she can place it.

Examination of application:

After publication of application the applicant may request the Controller of Patent to
examine the application. Such request shall be made within 36 months i.e. 3 years from
date of filing of application. If such request is not made, the application is to be treated as
withdrawn. After receiving request for examination, Controller shall refer the application,
specification and other related documents for examination. A set of examiners is appointed
for the purpose. Examination is by two ways,

A. Formal examination-In this, following aspects are examined,

i. whether or not the application, specification and other documents are in

accordance with the Act and rules;

ii. fee is paid or not;

iii. conditions regarding compliance of other rules of the Act are examined.

B. Substantive examination- In this, following aspects are examined,

i. If there is any lawful objection to grant of patent;

ii. Whether invention is patentable or not;

iii. If invention is anticipated by publication or not;

iv. If it is claimed in any claim by any other person

After examination examiners make a report and submit it to the Controller

within one month. This period can be extended to 3 months. This
examination report shall be sent to the applicant.

Representation and Opposition (Objections to Application)

Any person may oppose grant of patent to the Controller on any of the grounds enumerated
in section 25 (1).

Grounds for opposition:

1. Complete invention or it's part is wrongfully obtained;

2. Invention claimed in a complete specification is filed by another on an earlier

date than the applicant;

3. Invention claimed was publicly known or used in India before priority date;

4. Invention is obvious and does not involve any inventive step.

5. Invention claimed is not patentable under section 3 and 4

6. Complete specification does not sufficiently and clearly describe the

invention or method of its performance.

7. Applicant failed to disclose information or gives false information;

 8. Complete specification does not disclose or wrongly mentions the source for
geographical origin of biological material;

9. The invention is anticipated.

Aforesaid grounds of opposition are available for pre grant as well as post grant opposition.

On receiving notice of opposition, the Controller constitute Opposition Board. Controller

shall refer notice and other relevant documents to the Board for examination. The Board
shall conduct examination and give recommendations to the Controller. After receiving
recommendations Controller shall give notice of it to applicant for patentee and opponent.
Controller then can pass following orders,

a. Grant patent or

b. Maintain patent or

c. Revoke patent or

d. Amend the patent.

Grant of patent:

If the Controller is satisfied then he shall grant patent to the applicant and mention about it
in the Register of Patents.

Patent Register

On grant of patent that is the sealing of a patent, the Controller shall publish that patent is
granted and also publish the application, specification and other relevant documents. All
these shall be open for public inspection. The Controller also maintain register of patents.
The contents of the register are,

1. Name, address and nationality of patentee;

2. Title of invention; date of patent; particulars of proceedings.

Term of patent section 53

Term of patent is 20 years from the date of filing of application.

Joint inventors

If an idea arises as a result of discussion among several people, all those who contributed to
the resulting invention are joint inventors.
 RIGHTS AND OBLIGATIONS OF PATENTEE

Introduction

With grant of patent, patentee is entitled to certain rights. Prior to the Amendment Act of
2002 patentee enjoyed EMRs that is Exclusive Marketing Rights. Patentee could use, sale
and manufacture his invention.

Patent is important right. It excludes others from using rights of patentee. Patent prevent
others from making, using, selling or importation of patented product without his consent.
Besides this a patentee enjoys following rights,
1. Right to exploit the patent

Section 48 confers the right to exploit the patent on following persons,

a. Patentee

b. Licensee

c. Assignee

d. Agents of all above persons.

Right to exploit means enjoyment of economic rights by patentee. He can claim royalty for
use of his invention. He can also manufacture his invention excluding others.

2. Right to grant licence

Section 70 of the Act confers the right on a patentee to grant license. The patentee can
grant licence for consideration and get some economic benefits. Licence is transfer of rights
of patentee with some restrictions.

3. Right to assign

Section 70 also confers on patentee right to fully or partially assign his patent to another.
When the patentee is not able to enjoy or exploit a patent alone, he can grant licence or
assign his rights for royalty to others. Such licence or assignment must be in writing. It
must be in express terms and through registered documents to avoid litigations.

4. Right to surrender patent

Section 63 provides that a patentee may surrender is patent at any time. But he shall give
notice to the Controller first. After receiving notice, the Controller shall publish such
surrender. He shall give opportunity to the interested parties to oppose the offer of
surrender.

5. Right to sue for infringement

The patentee has the right to take action for protection of invention. He can institute civil
suit in a court. After succeeding the suit, the patentee is entitled to compensation, damages
or accounts of profit.

6. Right to issue duplicate patent

A patentee can apply to the Controller for issue of duplicate patent. After giving sufficient
explanation for loss or destruction of original patent, he can receive duplicate patent.

Obligations or duties of patentee

i. Duty to work out patent and make it available to public

Primary object of grant of patent is to encourage inventions. But it also has another object
to secure that the inventions are worked in India on a commercial scale and to the fullest
extent. It means the patent should be used practically without undue delay. It is also
essential that monopoly of patent should not unfairly prejudice the interest of public.

If patent is not used or monopoly is abused then compulsory licence will be granted. Any
person willing to work the patent may apply for compulsory license. If such person to
whom compulsory license is granted does not work out, the license may be revoked. It is an
implied responsibility of the patentee to work the patent in India. The object is to satisfy
the reasonable requirements of the public and the products of invention are made available
to public at a reasonable price. To discharge this duty amounts to abuse of monopoly rights.

ii. Duty to furnish information

It is the duty of the patentee to furnish information demanded by Controller of patents.

Limitations on rights of patentee

The rights of patentee are not absolute. They are subject to certain limitations. Certain
conditions can be imposed upon patentee and these are,

1. Use of patent by Government-section 99 to 103

Patentee can claim his right against every person including Government. However, the
Government may use and even acquire the patent under certain conditions,

a. Any patented invention can be used by Government for its own use

b. Any process patent can be used by Government for its own use,

c. Any patented medicine for drug may be used by Government for its own use.
Government can also use it in any dispensary or hospital or medical institution maintained
by Government.

d. Government may import or use any patented invention for its own purpose. It can also
use such invention for underdeveloped countries.

The Government can use such patents without consent of the patentee and even without
royalty.

2. Acquisition of invention and patent by Government

Section 102 lays down that Central Government can acquire a patent for public purpose
also. If Government is satisfied that such patent is necessary to acquire then it will publish
so in the official gazette. On publication the invention/patent and all its rights transfer and
vest in the Central Government. Notice of such acquisition shall be given to the applicant or
the patentee. The Central Government shall give compensation to the applicant or patentee
according to agreement between them. But if there is no agreement compensation would
be decided by High Court under section 103.
 TRANSFER OF PATENT
Introduction

Property is transferable by nature. Patent is a form of intellectual property therefore

patentee is authorized to transfer his rights by ways or modes given by the law. The
transfer maybe with consideration i. e. royalty. When there are two or more owners, one or
single owner cannot transfer the patent without consent of other co-owners. In transfer of
patent only rights are transferred. Following are the modes of transfer of patent rights,

1. Assignment

2. Licence

3. Transmission by operation of law

1. Assignment

Assignment means transfer by a party of all its rights or interest in the property. The
person who assigns the rights (the patentee or his agent) is the assignor and the person in
whose favour a right has been assigned is assignee. Assignment is of three kinds,

A. Legal assignment

B. Equitable assignment
 C. Mortgage

A. Legal assignment

An assignment of an existing patent through a duly registered agreement is legal

assignment. A legal assignee has the right to have his name entered in the register of
patents maintained in the Controller office as the proprietor of the patent. Thereafter he
can exercise all the rights conferred on him according to conditions of valid assignment
section 68

National Research Development Corporation of India, New Delhi vs. Delhi Cloth and General
Mills Company Limited

‘An assignment of patent shall be valid only if the assignment is reduced into writing in the
form of a document which embodies all the terms and conditions governing rights and
obligations of parties and application for registration of such a deed of assignment is filed
with the Controller within 6 months of execution of such document.’

B. Equitable assignment

Any document for example a letter but not agreement which is duly registered with
Controller in which patentee agrees to give another person certain defined right in the
patents with immediate effect is an equitable assignment. An assignee cannot have his
name entered in the register but he can enter his interest in the register. He can convert
this equitable assignment into legal one.

C. Mortgage

A mortgage is a document transferring the patent rights either wholly or partly to the
mortgagee with a view to secure the payment of a specified sum of money. The mortgagor
that is patentee is entitled to have the patent retransferred to him on refund of the money
to the mortgagee. The mortgagee is not entitled to have his name entered in the register as
the proprietor but he can get his name entered as mortgagee.

3. Licence

A patentee can transfer a right by licence agreement. The licensee can make, use, or
exercise the invention. Licence agreement contains all the terms and conditions of licensing
between the licensor and licensee.

Kinds of licence

1. Voluntary licence

It is written authority granted by the owner of the patent to another person empowering
the licensee to make, sell, use the patented article in the same manner and on the same
terms and conditions provided in the license. The Controller or Government has no role in
the matter of grant of licence therefore it is termed as voluntary licence.

Statutory licence
In statuary licensing the Controller and the Central Government play an important role.
The terms and conditions of such licence do not depend upon the will of the parties.

Exclusive or limited licence

An exclusive licence confers all exclusive rights to make, use or sale, on the licensee
excluding all other persons. Limited license imposes certain limitations on the rights of the
licensee. The limitations may relate two persons, time, place of manufacture, used for sale.

Express or implied licence

In express license permission to use the patent is given in express terms. It is valid only if it
is in written form, registered with the patent office. In implied licence permission is not
express but can be implied from circumstances.

A valid license confers certain rights on licensee for example right to make, use or sell
patented inventions; right to initiate proceedings against infringement etc.

Transfer of licence by operation of law

Transfer of licence by operation of law occurs in two ways,

a. By survivorship

b. By Government

By survivorship

When a patentee dies his interest in patent passes to his legal representatives.

Transfer by Government

By granting compulsory license the Government can transfer the patent in the
circumstances mentioned accordingly.

Conditions of Transfer-Section 140

A patentee can impose conditions on licensee while granting license and certain conditions
or restrictions are there which the patentee cannot impose.

Conditions which can be imposed

1. To prohibit a wholesaler or retailer from selling his competitors goods

2. To insist purchase of spare parts required for patented articles list for licence from
patentee only

Conditions which cannot be imposed

1. To compel the licensee to acquire from licensor or patentee any article other than
patented product
2. To prohibit licensee from acquiring any article other than patented product.

3. To prohibit licensee from using an article other than patented article or patented process
which is not supplied by licensor.

4. To prohibit the licensee from using process other than patented process

INFRINGEMENT OF PATENT

Introduction

Patent confers the exclusive right on the patentee. These rights are with respect to make,
distribute, use or sale the invention. A patentee alone is entitled to enjoy these rights.
Patent is the monopoly right. It prohibits others from using rights of patentee. When such
rights are used by a person without permission of patentee it amounts to infringement.

Acts amounting to infringement

Following acts amount to infringement either mutually or exclusively,

1. Colorable imitation of an invention

In this, the infringer makes slight modification in the patented process or product. In fact
he takes essential features of patentee’s invention.

Hayward vs. Pavement Light Company

The plaintiffs were the owner of a patent for improvement in pavement lights. They used
molded glasses having angle or series of angles. Defendant also used lights of glass molded
so as to consist of a curve. It was held that defendant had infringed plaintiff's patent.

2. Use of patent in contravention to licence

Licensee can validly use patent during license period. He should use patent according to the
terms of license. Use of patent after expiry of license or in contravention to terms of licence
amount to infringement.

Young and Beilby vs. Hermond Oil Co.

Y and B, the patentee granted licence of their patent to Hermond and oil company. Patent
was to be used in certain retorts of the company. The company also paid royalties to the
patentees. Subsequently the company erected other retorts but refused to pay royalty for
those returns. It was held that this act of company amounts to infringement.

3. Immaterial variation in patent

Infringement also occurs if infringer takes all the essential features claimed in the patent.
But if he omits one or more unnecessary features or adds some additional feature which
may or may not be inventive. This amounts to a material variation in patent.

Mariappan vs. A.R. Safiullah

A patent was granted for product or device used in agriculture. The device consisted of a
container of synthetic polymer. It was a hollow conical body open at the top and close at
the base. Patent was granted to the plaintiff. But the defendant sold the device to the
department of horticulture to Government of Himachal Pradesh and others. Plaintiff filed a
suit against the defendant. Defendant claimed that the patent was wrongly granted. In fact,
the device is a century old known as 'KILTA' made of bamboo. The High Court compared
the three devices that is traditional kilta, device of plaintiff and device of defendant. It was
held by the Court that the only difference is that kilta is of bamboo while the other two are
of different plastics. His patent was revoked and held that there is no infringement.

4. Mechanical equivalent

Infringement occurs when the infringer uses nearest substitute for some features. It gives
same result or serves the same purpose as obtained by patentee.

McDonald vs. Fraser

M patented and apparatus for testing house drain. He used bellow for that purpose.
Subsequently patented an apparatus. The main features of the apparatus were the same
except that he used air pump instead of bellow. It was held to be an infringement.

5. Use of chemical equivalent

Use of chemical equivalence in place of chemicals used in a patented process will amount to
infringement if chemical equivalents were known at the time of specification. For example
if a patented process uses chemical ‘A’ for achieving certain results use of chemical ‘B’ or ‘C’
for same results would be infringement if ‘B’ or ‘C’ were known at the time of ‘A’.

6. Taking essential features of invention

If essential features of an invention are used by an infringer, it amounts to infringement.

Thus, if the gist or crux of invention are copied as such it amounts to infringement.

7. Chemical claims

If an invention consists of steps or a combination of number of parts, in a particular way

and a person simply changes the sequence of steps or parts then that amounts to
infringement.

Doctrine of Pith and Marrow

Pith and marrow means the essential parts. While deciding infringement the Court is not
required to examine absolute similarity between patented invention and its counterfeit or
duplicate. Even if the essential parts are copied, it amounts to infringement. The court is to
see whether pith and marrow that is essential parts of the invention have been taken or
not. This is known as doctrine of pith and marrow.

Defenses against action of infringement

Following defenses available to a defendant in an action for infringement,

1. Plaintiff is not entitled to sue

Right to sue for infringement is available to registered proprietor of an invention. The right
to sue can be used by a person whose name appears in the register of patent. Therefore, if
name of the plaintiff is not there in the register, he cannot sue. Similarly, if assignment is
equitable, assignee also cannot sue for infringement. A licensee also cannot sue if licence
does not authorize him to sue.

2. Similarly when there is no actual or tangible evidence of infringement for example a valid
licence or implied permission is there, in such situation the defendant can claim defence.

3. Grounds for revocation of patent can also be pleaded as defenses against infringement.
Section 64 enumerates these grounds and these are,

1. Invention was claimed as a valid claim on earlier date and patent was granted.

2. Person who applied for patent was not entitled to seek patent.

3. Patent was obtained wrongfully.

4. Subject of claim of the complete specification is not an invention.

5. Invention is not new it was either publicly known or publicly used in India.

6. Invention claimed in complete specification is obvious and does not involve

inventive step.

7. Invention is unlawful

8. Complete specification does not sufficiently and fairly described the invention.

9. Scope of claim of complete specification is not clearly and sufficiently described.

10. Patent was obtained on a false suggestion for representation.

11. Subject of claim of complete specification is not patentable.

12. Invention was secretly used in India.

13. Invention was anticipated either by knowledge or availability.

REMEDIES AGAINST INFRINGEMENT OF PATENT

Introduction
Whenever the monopoly rights of the patentee are violated his rights are secured by
judicial intervention. Following remedies for red leaves are available in a suit for
infringement,

A. Interlocutory or interim injunction,

B. Damages for accounts of profit,

C. Permanent injunction

Who can sue?

Following persons can sue in a suit for infringement,

a. Registered patent holder

b. A licensee if licence permits

c. Assignee during period of assignment

d. In case of joint patentees, one of them can also sue.

Reliefs against infringement of patent

A successful plaintiff is entitled to certain reliefs. According to Section 108 Court may grant
following reliefs,

1. Injunction

2. Damages

3. Accounts of profit

An order for delivery up or destruction of infringed article may also be passed.

But in case of innocent infringement injunction may be granted but damages or accounts of
profit are not granted.

1. Injunction

An injunction is an order of a Court. It prohibits someone from doing some specified act or
commanding someone to undo some wrong or injury. It is a preventive and protective
remedy aimed at preventing future wrongs.

Kinds of injunction

a. Temporary injunction

These are in force for a specified time for limited period. It may be granted at any time
during the proceeding of the suit. The plaintiff may request the court to grant interim
injunction at any time during pendency of suit. While granting injunction the Court shall
consider the following factors-
i. Whether patent is new or old?

ii. Whether the term of patent is to expire before the proceedings can be heard

iii. Whether validity of patent has been challenged in the suit

iv. Whether it is possible to compensate the plaintiff by way of damages

b. Final injunction

It is granted at the termination of trial. It will remain in force till the expiration of patent.
For example patent is sealed in the year 1980. Final injunction was granted in 1992. The
injunction will remain in force until 2000. Thereafter general public has right to exploit
patent without fear of injection.

2. Damages/ accounts of profit

A successful plaintiff can claim other damages for accounts of profit. He cannot claim both.
The damages are awarded to compensate for the loss or injury suffered by the preventive
due to infringement by defendant.

Assessment of damages

The amount of damages awarded is proportional to the injuries suffered by the party.
While accessing damages following factors shall be taken into account-

1. When the patentee himself is the sole manufacturer of patented product and has not
granted licence, the amount of damages will be the profit earned by defendant.

2. Where patentee has granted license for royalty, amount of damages will be sum payable
as royalty.

3. The assessment of damages would include loss because of natural consequences of acts
of the defendant.

Accounts of profit

The plaintiff may be awarded either with damages or accounts of profits. Accounts of
profits is determined on the basis of actual use of patent is invention by infringer during
infringement.
 PATENT AND BIOTECHNOLOGY
Introduction

Microorganisms are organisms which are not visible to naked eyes. Microorganisms
include viruses, bacteria and fungi. Microorganisms have very short life and therefore it is
very easy to make changes in their DNA. The DNA of any living person is unique. The DNA
determines various characteristics of a person e.g. colour of a person, height etc. If changes
occur in DNA, ultimately changes occur in the person. The change of DNA can be reason for
evolution of man from apes. DNA is present in every living thing on the earth. It is the basic
unit of every living thing. DNA is present in microorganisms too. This DNA determines the
characteristics of microorganism.

Biotechnology in ordinary parlance means use of microorganisms in industry, food and

medicine. Biotechnology plays an important role in medicines, food, fertilizer, enzymes and
protection of environment. It is concerned with living organisms such as plants, animals
and microorganisms. It is also concerned with non-living biological materials such as seeds,
cells, enzymes, plasmids like.

The role played by microorganisms in food sector is well known. In homestead,

microorganisms are involved in daily life and are those involved in the making of curd from
milk, Idli etc. that is fermentation process. Commercially the microorganisms are used for
making bakery products like bread or beverages like alcohol etc.

The use of microorganisms in pharmaceutical is well recognized in the form of antibiotics,

vaccines and other forms for human beings as well as animals. Traditionally biotechnology
was confined to

a. Plant breeding

b. Animal breeding

c. Industrial microbiology

By the technique of plant breeding various hybrid seeds were produced. Seeds Giving
more production, seeds germinating even in scarcity of water etc. Now the plant breeding
also involves use of microorganisms for example BT cotton. It is use of microorganisms
because of which the cotton plants are able to combat with insects without insecticides and
also long thread of cotton.

In animal breeding, recombinant DNA technology is very much useful in milching animal.
Successful cloning of mammal is example of it. The recreation of Dolly is famous.

Industrial microbiology

Use of microorganisms in industry comes under three heads

1. Operation of chemical substances utilizing organisms for example alcohol, cheese, curd,
confectionery products

Patenting of life form or Biotechnological inventions

In USA it is said that everything on earth made by man is patentable. TRIPS has laid down
certain rules for patenting of biotechnological inventions.

a. Member States shall protect biotechnological inventions by making suitable patent

laws in their country. But plants and animals are excluded from patentability. It is
obligatory to protect microorganisms and biological processes for the production of
plants and animals.

Ref. Diamond vs. Aanand Chakraborty

Dr. Anand Chakraborty created a genetically engineered bacterium. The bacterium was
capable of breaking down multiple components of crude oil. He applied for patent of the
bacteria on the ground that his bacteria possessed a trait or characteristic which is not
found in naturally occurring bacteria. The Patent and Trademark Office rejected his
application on the ground that the microorganisms are products of nature and hence non
patentable. The Supreme Court of USA reversed the finding of Office and granted patent to
Dr. Chakravarti. Now the US patent law allows patent for artificial living organisms
including animals. This is popularly known as ‘Oncomouse patent’.

Since microorganisms have very short life by use of recombinant DNA technology
microorganisms with desired traits can be created in the laboratory. These recreated
microorganisms can be subject matter of patent. In India the Calcutta High Court in 2002 in
the case of Dimminaco AG vs. Controller of Patent directed the Controller of patent to grant
patent to genetically engineered microorganisms are called infectious bursitis vaccine.