Rights and obligations of Patentee

A patent holder, also known as a patentee, is an individual or entity that has created a novel
procedure or product, entitling them to exclusive rights and obligations as designated by the
patent. However, these exclusive rights and obligations of patentees in India are not without
limitations and exceptions.

Patentee’s Rights According to the Patent Act, 1970

The Patent Act of 1970 in India grants rights and obligations of patentees in India, allowing them
to use their patented inventions or processes. The rights bestowed upon a patentee include the
following:

1. Right to Exploit the Patent:

Under the rights and obligations of patentees in India, the first right ensues when the invention is
a product. In this case, the patentee has the exclusive rights to use, make, import, or sell the
invention within India. In the case of a process, the right to exploit refers to the exclusive
authority to use or exercise the process within India.
USE OF PATENT TEMPORARILY OR ACCIDENTALLY ON FOREIGN VESSELS
According to section 49, where a foreign vessel or aircraft or a land vehicle owned by a person
ordinarily resident in foreign country comes into India including its territorial waters temporarily
or accidentally only, the patent rights shall not be deemed to be infringed by the use of the
invention -
(i) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so
far as the invention is used on board the vessel and for its actual needs only; or
(ii) in the construction or working of the aircraft or land vehicle or of the accessories thereof, as
the case may be.
The provisions of section 49 are subject to the condition of reciprocity.
RIGHTS OF CO-OWNERS OF PATENTS
According to section 50, where a patent is granted to two or more persons, each one of them
shall be entitled to an equal undivided share in the patent, unless an agreement to the contrary is
in force.
Where two or more persons are registered as grantee or proprietor of a patent, then, in absence of
an agreement to the contrary, each one of such persons shall be entitled to the right of patentee
for his own benefit without accounting to the other person or persons. Where two or more
persons are registered as grantee or proprietor of a patent, then a licence under the patent shall
not be granted and a share in the patent is not to be assigned by one of such persons except with
the consent of the other person(s).
Where a patented article is sold by one of two or more persons registered as grantee or proprietor
of a patent, the purchaser and any person claiming through him shall be entitled to deal with the
article in the same manner as if the article had been sold by a sole patentee.
2. Right to Grant license:
The patentee holds the authority to grant licenses, transfer rights, or establish agreements for
consideration. For validity, any license or assignment must be documented in writing and
registered with the Controller of Patents. Unregistered assignments are not recognised as
evidence of patent title.

3. Right to Surrender:
A patentee can choose to surrender their patent at any time by providing notice in the prescribed
manner. This is usually done through publication in the Journal, allowing opposition if necessary.
Surrender is exercised when the patentee anticipates non-performance of the patent in the future.

4. Right to Sue for Infringement:

Patentees have the right to initiate legal action against patent infringement in District Courts,
which hold jurisdiction to adjudicate such cases.

5. Right to Use and Enjoy Patent:

The patentee exclusively enjoys the right to exercise, utilize, convey, offer, or practice the
patented product or process within India.

Obligations of a Patentee Under the Patent Act, 1970

Upon being granted a patent, rights and obligations of patentees in India come into operation as
per the Patent Act of 1970. These obligations ensure that the patent system operates effectively,
encourages transparency, and maintains the balance between innovation and public interest. The
patentee’s obligations include the following aspects:

1.PUBLICATION OF APPLICATION
According to section 11A(1), no application for patent shall ordinarily be open to the public for
18 months from the date of filing of application or the date of priority of the application,
whichever is earlier.' The applicant may request the Controller to publish his application at any
time before the aforesaid period. The Controller shall publish such applications as soon as
possible.
Every application for a patent shall be published on the expiry of the aforesaid period of 18
months, except in the following cases where the application - (i) in which secrecy direction is
imposed under section 35; or
ii.has been abandoned under section 9(1); or
iii) has been withdrawn 3 months prior to the prescribed period as aforesaid ( before the end of
the 15th month, from the date of filing or priority, whichever is earlier. This will apply for
National Phase entry of PCT applications as well if such application has been filed in India
before the expiry of 15 months from the date of priority.
In case a secrecy direction has been given in respect of an application under section 35. then it is
to be published after the expiry of 18 months as stated in section 11A(1) or when the secrecy
direction has ceased to operate, whichever is later.
The publication of every application is to include the particulars of the date of application,
number of application, name and address of the applicant identifying the application and an
abstract.
Upon publication of an application for a patent, the depository institution is to make the
biological material mentioned in the specification available to the public. On payment of
prescribed fee, the Patent Office may make the specification and drawings, if any, of such
application available to the public.
On and from the date of publication of the application for patent and until the date of grant of a
patent in respect of such application, the applicant shall have the like privileges and rights as if a
patent for the invention had been granted on the date of publication of the application. However,
the applicant shall not be entitled to institute any proceedings for infringement until the patent
has been granted
2. Duty to Disclose (Section 8):
The petitioner must reveal the innovation to society, according to Section 8 of the Patent Act of
1970. At the time of applying for a patent or within 6 months of submitting applications, the
patentee is unequivocally required to disclose all necessary information regarding the faraway
application of an identical or nearly identical innovation that has been documented, according to
Section 8(1) of the Patent Act of 1970. The patent holder must also include all of the mentioned
parameters in the applications. Additionally, the patentee should make an effort to disclose any
relevant points in any upcoming application that may be recorded. According to Section 8(2) of
the Patent Act, the patentee must provide all the information required by the Controllers on the
innovation within six months after making the request.

3. Duty to Request Examination (Section 11B):

Unlike some other intellectual property rights, the patent application process doesn’t inherently
include an automatic examination step. Under Section 11B of the Patent Act, 1970, the patentee
has the responsibility to actively request the Controller of Patents to examine the application for
patentability.
In case the applicant or any other interested person does not make a request for examination of
the application for a patent within 48 months as stated hereinbefore, the application is to be
treated as withdrawn by the applicant. However, the applicant may any time after filing the
application but before the grant of a patent withdraw the application by making a request.

In case where secrecy direction has been issued under section 35, the request for examination
may be made after the publication of the application, but within 48 month from the date of
priority or from the date of filing of the application, or within six month from the date of
revocation of the secrecy direction, whichever is later."
Once an application is deemed to have been withdrawn by an applicant in terms of sections
11B(4), the controller of patents cannot entertain an application for amending any portion of such
application (Nippon Steel Corporation v UOI 2011.)
4.EXAMINATION OF APPLICATION.
When a request for examination has been made in respect of an application for a patent. the
application and specification and other documents relating thereto are to be referred at the
earliest by the Controller to an examiner for making a report to him in respect of the following
matters.
whether the application and the specification and other documents relating thereto are in
accordance with the requirements of this Act and of any rules;
(ii) whether there is any lawful ground of objection to the grant of the patent in pursuance of the
application;
(iii) the result of investigations made under section 13; and
(iv) any other matter which may be prescribed.
The examiner to whom such application and the specification and other documents are referred
shall ordinarily make the report to the Controller within one month. However, this period shall
not exceed 3 months from the date of reference of the application.
A first examination report along with the application and specification is to be sent to the
applicant or his authorized agent. In case other interested person files the request for
examination, an intimation of such examination may be sent to such interested person."
Section 12 of the Act provides for examination of the patent claim. It contemplates the procedure
to be followed in examining the patent claim, which includes the result of investigation to be
made under section 13.

Where a request for examination is made by an applicant or person interested, the examiner is to
make a report in respect of whether the application, specification and other documents meet the
requirements of the said Act and rules, whether there is a lawful ground of objection to the grant
of patent under the Act, the result of the investigations on the ground of anticipation and other
matters that may be prescribed."

3.5.Duty to Respond to Objections:

After the examination request is submitted, the application undergoes scrutiny by a patent
examiner. If objections arise during this evaluation, they are presented in the form of a First
Examination Report. The patentee has the obligation to respond to these objections within a year
from the issuance of the FER. Failure to comply could result in the application being deemed
abandoned by the Controller of Patents.

6.Duty to Clear All Objections:

It’s the patentee’s responsibility not only to respond to raised objections but also to address and
resolve them adequately. If necessary, the patentee may need to attend meetings with the
Controller of Patents to discuss and resolve outstanding issues.

7.. Duty to Pay Statutory Fees (Section 142):

The patentee is obligated to pay the stipulated statutory fees during the patent application
process. Non-payment of these fees could lead to the non-processing or rejection of the
application. Section 142 of the Patent Act, 1970, outlines the fee payment requirements and the
potential consequences of non-compliance.

Limitations and Exceptions to Rights and Obligations of Patentees in India

Several limitations and exceptions are also present in the rights and obligations of patentees in
India:
1. Research and Experimental Utilisation: Patents do not impede the exploration and
experimentation of the patented invention for research purposes.

2. Usage on Outdoor Vessels: The utilization of a patented invention on vehicles moving across
open waters is not restricted by patent rights.

3. Administrative Authorisation: Authorisation from appropriate regulatory bodies may be

necessary for utilizing a patented invention in specific scenarios.

4. Patent Rights Reduction and Similar Imports: Instances exist where patent rights can be
limited, and similar imported products might be exempt from patent enforcement.

5. Governmental Compulsory Measures: Governments hold the authority to acquire or employ

patented inventions under certain circumstances for the public good.
Patent infringement
Violation of a patentee's right with respect to some invention is known as patent infringement.
When the rights of the patent holder or the claims in the patent are violated by a third party,
without the consent or license of the patent holder, such third party is said to have infringed the
patent rights of patent holder. While doing a patent infringement risk analysis, it is necessary to
understand the types of patent infringements to ensure that the invention is not likely to infringe
any of the existing patent rights.
Types of Patent Infringement
A. Direct infringement: Direct infringement is the most apparent and common type of
infringement. This infringement includes marketing, sale or commercial use of a similar patented
item or invention that performs substantially identical functions. Direct infringement is of two
types - literal and nonliteral. Literal infringement occurs when every component in the patent
specification has been used in the alleged infringing product/ device or process. Non-literal
infringement occurs when the infringing device or process may be similar or equivalent to the
claimed invention (performs substantially the same function, in substantially the same way and
to achieve substantially the same result.
Literal: When the accused product/process falls in the scope of patent claims then the
infringement is known as literal infringement. One of such case is Polaroid Corp v. Eastman
Kodak Co., where patent infringement by Eastman Kodak of Polaroid's "Instant camera
technology" was considered a case of literal infringement.
Doctrine of equivalence: It is also known as nonliteral infringement. The infringement is known
as doctrine of equivalence when the component or device has same function to obtain similar or
same results. This infringement provides a patentee with added and fair protection for their
patents.
The doctrine was adopted into the Indian legal system during a recent Indian case of Ravi
Kamal Bali v. Kala Tech 8. In said case, it was alleged that the defendants infringed a patent on
a tamper proof lock/seal for containers. The defence was that the product differed in material
particulars from the patented product, but the court found the changes to be inconsequential
and thereby, applied the doctrine.
B. Indirect infringement is when the infringement has happened, however the infringement is
facilitated by someone else. Indirect infringements are of two types:
Inducted infringement – where one actively induces the other person to infringe a patent by
encouraging, assisting, aiding, inducing him/her to do so. Patent infringement by inducement
typically means that the inducer willingly and knowingly aided in the infringement but may or
may not have specifically intended to violate a patent infringement.;
Contributory infringement – where there is an intentional participation/assistance by one party
in an act of infringement to the other party making them vicariously liable for the acts of the
infringer.
It is a type of indirect infringement, where a person or corporation is held liable for infringement
even if they have not actively participated in infringing activities. Therefore, it happens when a
party sells a product which they know is used in the infringing product. In usual cases, this
product will have no commercial standing out of its use in the infringing product.
Contributory infringement is triggered when a seller provides a part or component that, while not
itself infringing any patent, has a particular use as part of some other machine or composition
that is covered by a patent.
Wilful Infringement – Another type of infringement
This infringement involves someone showing a serious disregard for the existence of a patent.
For example, if you sued Acme for infringing on your anvil patent and found during discovery
that they had it in their possession and used it to make their anvils, you will likely prevail in
showing that their violation was wilful. Those found guilty of wilful infringement pay higher
penalties, attorney fees, and court costs.
Case Law – Symed Labs vs. Glenmark Pharmaceuticals
In this case Symed Labs Ltd. had sued Glenmark Pharmaceuticals Laboratories before the
Delhi High Court for allegedly infringing two of its patents - IN213062 & 213063. First patent was
granted for "Novel intermediates for Linezolid and related compounds" while the 213063 patent
was granted for "A novel process for the preparation of Linezolid and related compounds".
In the case judgement declared on Jan 09, 2015, the judge was convinced that the plaintiff had
good prima facie case in favour of Symed. He further decided that protection to the patent
processes ought to be granted to the plaintiff as damages will not be an efficacious remedy.
There was an irreparable loss and injury because of the long uninterrupted use of patents, and
the balance of convenience also lay in favor of the plaintiff. Thus, the judge granted an ad
interim injunction restraining Glenmark from manufacturing, selling, offering for sale, advertising
or directly or indirectly dealing in the production of Linezolid manufactured in a manner so as to
result in infringement of the plaintiff's registered patents.