UNIT 2

PATENTS

 Subject matter of patents

 Criteria for protection
 Procedure for getting patent protection
 Concept of territoriality
 Overview of the procedure for getting protection at the national level
 Overview of the procedure for getting protection abroad
 Ownership and assignment
 Infringement
 Remedies
 Limitation and exceptions to patent rights
 Compulsory licensing and protection of national interests.

Definitions

S.2(ac) ‘capable of industrial application’ in relation to an invention, means that the invention is capable of
being made or used in an industry;

In Indian Vacuum Brake Co Ltd vs E.S. Luard the Court held that mere usefulness was not sufficient to support
a patent. In the case of Young and Neilson v Rosenthal, Grove J. described “utility” as meaning an invention
better than the preceding knowledge of the trade as to a particular article.

S.2(f) ‘Exclusive licence’ means a licence from a patentee which confers on the licensee, on the licensee and
persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of
the patented invention, and exclusive licensee shall be construed accordingly.

S.(2j) invention means a new product or process involving an inventive step and capable of industrial
application.

A bare perusal of the definition of invention clearly shows that even a process involving an inventive step
is an invention within the meaning of the Act. It is therefore, not necessary that the product is
substantially improved by an inventive step, it would be termed to be an invention.

S.2(ja) Inventive step means a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the invention not obvious to a
person skilled in the art.

To meet the inventive step criterion, the patentee will either have to show that the invention includes
technical advancement or has economic significance or both. The requirement of technical advancement
is, therefore, compromised and diluted by the fact that a patent could simply be granted on economic
significance alone. If the invention was obvious, there could be no inventive step whatsoever. (Press
Metal Corporation vs Noshir Sorabji)

S.2(i) ‘New Invention’ means any invention or technology which has not been anticipated by publication in any
document or used in the country or elsewhere in the world before the date of filing of patent application with
complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the
state of the art.

S.2 (m) Patent means a patent for any invention granted under this Act.
There are two kinds of patents:

 Product Patent : The patent is granted not to the method or process of manufacture of a substance but
to the substance itself. Therefore, it is the product that is covered and protected and confers greater
monopoly rights on the patentee
 Process Patent : When a substance is invented or produced a patent is not granted to the substance itself
but only the method or the process of manufacture of a substance that is granted a patent.

S2(o) ‘Patented article’ and ‘patented process’ means respectively an article or process in respect of which a
patent is in force.

S.2(y) ‘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 outside India.

CRITERIA FOR PATENTABILITY or PATENTABILITY REQUIREMENTS

Under Section 2(1)(j) of the Patents Act, inventions are defined as those that are either products or processes,
are novel, have an inventive step, and are industrially applicable. When seen through the lens of patent law,
inventions are only those products and processes that satisfy patentability requirements. The definition of
invention however includes only three of the patentability requirements, and inventions must satisfy two
additional requirements to be eligible for patent grant (Subject matter and workability of invention)

The N-U-N’s test provides for the criteria that needs to be fulfilled by an invention for it to be eligible for a
patent under the Patents Act.

 Subject Matter of Patent (Must not fall within ambit of S.3 and S.4)
 Novelty
 Utility (Industrial Applicability)
 Non – obviousness (Inventive step)
 Specification

1. SUBJECT MATTER OF PATENT

Patentable subjects are provided in broad terms in the definition of invention, which states that an
invention under the Act must either be a product or process. Patent eligible subjects are therefore
products and processes without any limitation of field, technology, or any other. At a general level,
every invention is either a product and/or process, and patentability objections at this level are not very
common.

S.3 and S.4 of the Act specifically contains exclusions to what can be patented in India. Any product or
process may be patented as long as it odes not fall within the ambit of S.3 or S.4 of the Act.

Non-Patentable Inventions (S.3 and S.4)

(a) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine giving 100%
efficiency, or any machine giving output without an input cannot be considered as obvious and
cannot be patented.
b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of which could be contrary to public
order or morality (that is against the accepted norms of the society and is punishable as a crime) or which causes
serious prejudice to human, animal or plant life or health or to the environment.

Example– As in Biotechnology, termination of the germination of a seed by inserting a gene sequence that
could lead to the disappearance of butterflies, any invention leading to theft or burglary, counterfeiting of
currency notes, or bioterrorism.

(c) Inventions that are a mere discovery of something that already exists in nature.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living or
non-living substances occurring in nature.

Explanation– Mere discovery of something that is already existing freely in nature is a discovery and not an
invention and hence cannot be patented unless it is used in the process of manufacturing an article or
substance. For instance, the mere discovery of a micro-organism is not patentable.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.
(VVIMP)

The mere discovery of a new form of a known substance which does not result in the enhancement of the known
efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the
mere use of a known process, machine or apparatus unless such known process results in a new product or
employs at least one new reactant.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be
considered to be the same substance, unless they are significantly different in terms of efficacy.

The clause excludes new forms, new uses and new properties from the scope of patentability. With respect to
new forms, the explanation provides an illustrative list of forms that are considered as the same substance as the
known substance. An exception is provided in the clause based on efficacy, satisfying which a new form will be
patentable. If the new form has enhanced efficacy when compared with the known efficacy of the known
substance, the new form will be patentable.
 Analysis of whether a new form is patentable involves the following steps:

1. Identifying the known substance;

2. Identifying the known substance’s purpose and efficacy;

3. Checking if the invention being claimed is a new form of the known substance;

4. Identifying the efficacy of the new form; and

5. Comparing the efficacy of the new form with the efficacy of the known substance with respect to the purpose.
If the efficacy of the new form for the purpose for which the patent is claimed is higher than the efficacy of the
known substance for the same purpose, than the new form is considered to have enhanced efficacy, which
makes it patentable subject matter.

Advantages provided by the new form, which are unrelated to the purpose of the substance in question will have
no value in proving enhancement of efficacy. In the Novartis case, the Supreme Court held that attributes of a
new form such as enhanced bio-availability and stability, and reduced hygroscopicity are not sufficient to prove
enhanced efficacy because the said advantages are not related to the purpose of the invention. The mere
discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than
the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

Novartis AG v. Union of India (vvimp)

The Supreme Court of India said that “mere discovery of an existing substance would not amount to the
invention”. The Supreme Court of India further, in this case, held that for pharmaceutical patents apart from
tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims
that cover incremental changes to existing drugs which also Novartis’s drug did not qualify’.

In April 2013, the two judge bench of Supreme Court of India rejected the appeal filed by Novartis and upheld
that the beta crystalline form of Imatinib Mesylate is a new form of the known substance i.e., Imatinib Mesylate,
wherein the efficacy was well known. Supreme Court made it crystal clear that in the case of medicine
"Efficacy" in section-3(d) only means "Therapeutic Efficacy" and states that all properties of drug are not
relevant, the properties which directly relate to efficacy in case of medicine is its therapeutic efficacy.

Supreme Court in third issue ruled that about 30% increase in bioavailability qualifies as increase in therapeutic
efficacy under section- 3(d) of Patent Act, 1970 if evidence is provided for the same. Supreme Court compared
the efficacy of "Beta Crystalline form of Imatinib Mesylate" with "Imatinib Mesylate" with reference to its flow
properties, better thermodynamic stability and lower hygroscopicity, and held that none of these properties
contribute to increase in therapeutic efficacy according to section-3(d) of Patent Act, 1970 and Novartis not
provided any document that shows that the efficacy of "Beta Crystalline form of Imatinib Mesylate" is more as
compared to the efficacy of "Imatinib Mesylate

Glochem Industries Ltd vs Cadila Healthcare Ltd

The Bombay High Court held that “Section 3 (d) consists of all fields including the field of pharmacology.
Further, in this case, the court held that “the test to decide whether the discovery is an invention or not ? It is on
the patent applicant to show that the discovery has resulted in enhancement of known therapeutic efficacy of the
original substance and if the discovery is nothing other than the derivative of a known substance, then, it must
be shown that the properties in derivatives are significantly different in terms of efficacy . So under this sub-
section, the very discovery of a new form of a known substance which does not result in the enhancement of the
known efficacy of that substance will not be treated as an invention.

Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies

The Delhi High Court held that “a method of replacing conventional antennae with split-sector antennae; a split-
sector asymmetric antenna for replacing conventional antennae – are all mere uses for the asymmetric antenna
already known. Under Section 3(d) the subject matter claimed is therefore not an invention.

(e) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.

A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance is not considered the invention.

Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of synergistic
effect i.e., interaction of two or more substances or agents to produce a combined effect greater than the separate
effect.

(f) Mere aggregation or duplication of devices working in a known way is not an invention.

The mere aggregation or re-arrangement or duplication of known devices each functioning independently of one
another in a known way.

Explanation- mere improvement on something or combinations of different matters known before cannot be
patentable unless this produces a new result or article.
(h) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and mushrooms or improving the soil is not
an invention and cannot be patentable.

(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human and animals are
non-patentable.

Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic 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.

Explanation– those medicinal methods administering medicines orally or injecting it, surgical methods like
stitch free surgeries, curative methods as curing plaques etc does not fall under the ambit of the invention and
are non- patentable.

Mayo Collaborative Services V. Prometheus Laboratories, Inc

In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes the treatment
or cure of diseases) is not patentable as it claims a law of nature”.

(j) Essential biological processes for the production or propagation of animals and plants is not an invention.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and
species and essentially biological processes for production or propagation of plants and animals.

At the genetic level, complementary DNA is considered patentable, and so are biotechnological inventions that
are cellular or sub-cellular. However, in the Monsanto case, the Delhi High Court came to the conclusion that
gene constructs are parts of plants, and are therefore, not patentable.

Masanto v. Nuziveedu

Mahyco Monsanto Biotech Pvt Ltd (India), the Indian joint venture of Monsanto has been licensing its BT
products to various seed companies in India. Monsanto entered into a licensing agreement with Nuziveedu
Seeds and its subsidiaries Prabhat Agri Biotech and Pravardhan Seeds on 21/2/2004. Monsanto licensed its
patent IN214436 relating to BT cotton for an initial period of 10 years. A recurring trait-value compensation
along with lifetime fee of Rs. 50 Lacs was charged by the Company. These patented seeds were resistant to boll-
worm attacks and thus produced higher yield. The defendants claimed for revocation of patent under section
64of Indian Patents Act, 1970 as it was allegedly in violation of section 3(j) of the said Act in
respect of plants and seeds that contained DNA sequences and argued that the patent is invalid.

(k) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms;

Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities related to
business methods or algorithms (which are like the law of nature) cannot be patented.

(l) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing all these
which are related to creativity cannot be patented and fall under the gamut of Copyright Act, 1957.

(m) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather these are mere
brain exercises and hence are not patented.

(n) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an invention and hence are not
patentable, for example, railway timetables, calendars etc.

(o) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

(p) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known

properties of the traditionally known component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from generations to generations of a
community and is already known cannot be patented for example the antiseptic properties of turmeric.

Atomic-Energy inventions are non -patentable. (S.4)

Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall within sub-
section (1) of section 20 of the Atomic Energy Act, 1962.

2. NOVELTY

A subject matter is considered novel if it has not been published, claimed or publicly used before the
application of such Patent. Novelty is determined through extensive literary and patent searches. Once
an invention is made public through publications anywhere in the world, it ceases to be novel.

Novelty is an important parameter to assess the patentability of any invention. Novelty is assessed on the basis
that the subject of the invention is not anticipated. Here Novelty actually means "new compared to prior art";

For an invention to be patentable, it must be different from all published articles, known techniques, and
marketed products. The invention must not already have been made available to the public, when the filing of
the application for a patent takes place.

Here an invention literally means "finding out something which has not been found by others". A patent
represents a quid pro quo (a favour or advantage granted in return for something). As a result the patentee gets
monopoly over his invention.

Talking about the patent law, here anticipation talks about the prior invention or disclosure of the claimed
invention by another, or the inventor's own disclosure of the claimed invention sale, publication, or offer to sell
prior to the inventor's application for a patent. In simple words, if someone else knows about or used the
invention before the patent applicant applies for a patent, then that patent applicant will not be eligible
for patent.

The subject matter of a patent application can fall in the public domain and make it anticipated via either prior
publication in patent or any kind of non-patent literature, or by display in public, use, or commercial sale. Grace
period may be available in certain countries within which if a patent application is filed then it is not considered
as anticipation.

Anticipation is considered as a parameter for rejecting or invalidating a patent since it signifies that the
invention that is claimed lacks novelty.
Novelty has not been defined under the Patents Act, and is provided under different sections pertaining to
examination, anticipation, opposition and revocation. For purposes of novelty as well as inventive step analysis,
prior art includes the following:

 Prior patents relating to the invention, which include patent applications and granted patents in
India, whose priority date precedes that of the patent application;
 Prior Publications relating to the invention, which include any document published before the
priority date of the patent application;
 Prior commercial working of the product or process in India before the priority date of the
patent application;
 Prior communication of the product or process to the Government before the priority date of
the patent application;
 Prior display of the product in an exhibition before the priority date of the patent application;
 Prior public working of the invention in India, before the priority date of the patent application;
and
 Prior use of the invention in India before the priority date of the patent application.
The Indian Patents Act mentions what are not anticipations in Sections 29 to 34, rather than defining
anticipation. Exceptions are mentioned in the Indian Patent Act under which the patent application can be filed
despite public disclosure, and such public disclosure will not be considered to have been anticipated. These are:

1. Anticipation by previous publication (Sec 29): If the invention has been published prior to filing of
the patent application, if the applicant or the patentee proves that the matter published was obtained
from him or any person from whom he derives title without his consent or the consent of any such
person, then a complete specification filed shall not be deemed to have been anticipated
2. Anticipation by previous communication to the government (Sec 30): If the invention has been
communicated to the government or any person authorised by the government for the purpose of
investigation of the invention, then a complete specification filed shall not be deemed to have been
anticipated.
3. Anticipation by public display (Sec 31):If the invention has been displayed in an exhibition to which
the provisions of the instant section has been extended by the Central Government; or the invention is
described in a publication in consequence of display of the invention in such an exhibition; or the
invention has been used by any person without the consent of the true and first inventor or a person
deriving title from him after it has been displayed in such an exhibition; or disclosing the invention
before a learned society or publishing the invention in the transaction of such society; provided the
application is filed within 12 months from aforementioned public display, then a complete specification
filed shall not be deemed to have been anticipated.
4. Anticipation by public working (sec 32): If the invention has been filed within 12 months after the
invention has been publicly worked for the purpose of reasonable trial considering the nature of the
invention, then a complete specification filed shall not be deemed to have been anticipated.
5. Anticipation by use and publication after provisional specification (sec 33): If the invention has
been used and published after filing a provisional application, then a complete specification filed shall
not be deemed to have been anticipated.

Windsurfing International Inc v Tabur Marine

The plaintiff was the manufacturers of windsurfer and patented an arc-shape sailboard in the UK. The patented
equipment was a sophisticated arc-shaped model, which made the sailboard to attain higher speed and stability.
In this case the plaintiff sued another company for patent infringement as a result of producing and selling the
similar windsurfing equipment in UK. In the same time, the defendant (Tabur Marine) alleged that the validity
of the patent can be challenged. Because at least 20 years ago, a boy has already used the similar method to
hold the sail taut and provided a handhold for the rider.
The Court upheld the claim of defendant and held that the boy’s invention predated the plaintiff’s application
and the sailboard designed by the plaintiff was an obvious improvement on the boy’s invention. Thus the
patent for windsurfing equipment had been anticipated. Although the windsurfing equipment was judged non-
patentable, it must be noted that in this case the court held “the improvement carried out by the patentee was
not sufficient to gain the protection of a patent”, in other words, the sporting apparatus could be patentable if
the requirements of patentability are satisfied.

3. UTILITY (INDUSTRIAL APPLICATION)

Industrial applicability requirement checks if an invention is capable of being made or used in an industry
(Section 2(1) (ac)). If a product can be manufactured repeatedly and has at least one use in an industry, it will be
considered as industrially applicable. A process must be capable of being used in an industry to satisfy this
requirement. Uncertain, vague, futuristic or non-specific use is not considered as valid use. The same is the case
with insubstantial or non-credible use of a product or process.

In a case between Cipla and Roche, the Delhi High Court reviewed some Indian and foreign cases relating to the
utility or industrial applicability requirement and observed that,
 an invention must be commercially viable. It must have a commercial use, and commercial success
need not be proved.
 the invention must have a practical use and has to be useful for the purpose claimed in the patent
specification. Nothing more will be required to prove utility of an invention for patentability.

In another case between MSD and Glenmark, the Delhi High Court applied principles for industrial applicability
laid down by the UK Court of Appeals to arrive at the conclusion that Sitagliptin, a pharmaceutical compound,
is industrially applicable. The principles cited by the Court are as follows:

 ” The patent must disclose “a practical application” and “some profitable use” for the claimed
substance, so that the ensuing monopoly “can be expected [to lead to] some … commercial benefit”;
 A “concrete benefit”, namely the invention’s “use … in industrial practice” must be “derivable directly
from the description”, coupled with common general knowledge;
 A merely “speculative” use will not suffice, so “a vague and speculative indication of possible
objectives that might or might not be achievable” will not do;
 The patent and common general knowledge must enable the skilled person “to reproduce” or “exploit”
the claimed invention without “undue burden”, or having to carry out “a research programme”; …”
By applying the aforestated principles, the Court concluded that Sitagliptin is industrially applicable even if it
cannot be put to practical use due to an ineffective carrier.

4. NON-OBVIOUSNESS or INVENTIVE STEP

The inventive step requirement is the most subjective and complex of all patentability requirements.
Under the Indian Patents Act, the assessment of inventive step includes two aspects, technical advance or
 economic significance; and non-obviousness. A Patent application involves Inventive if the proposed
invention is not obvious to any person skilled in the subject matter of the patent application.The
Complexity or Simplicity of an inventive step does not have any bearing on the grant of the Patent.

Example: The Invention of Coffee Collar or the Coffee Sleeve can be classified as a simple inventive step
and should not be confused with a frivolous invention

Section 2(ja) of the Patents Act defines inventive step as follows:

“(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the invention not obvious to
a person skilled in the art;”

To satisfy this requirement, an invention has to:

 have technical advance over existing knowledge; or
 have economic significance; and
 must not be obvious to a person skilled in the art.

Obviousness is seen through the eyes of a person with ordinary skill in the art to which the invention belongs.
Once the person with ordinary skill with respect to an invention is determined, the prior art references available
to the said person on the priority date of the invention are identified and combined. Based on the prior art
references on hand, if the person with ordinary skill would have found the invention obvious on the priority
date, the invention is considered as obvious and will not meet the inventive step requirement.
Tests for Obviousness

The ‘obviousness’ has to be strictly and objectively judged. For this determination several forms of the question
have been suggested. The one suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite.
It is:
“Whether the alleged discovery lies so much out of the Track of what was known before as not naturally to
suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was
previously known.”
Another test of whether a document is a publication which would negative existence of novelty or an “inventive
step” is suggested, as under:
“Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge
existing at the date of the patent to be found in the literature then available to him, that he would or should
make the invention the subject of the claim concerned?

Roche v. Cipla
In a case involving Roche and Cipla, the Delhi High Court reviewed if selecting one compound from several
compounds disclosed in the prior art and modifying the selected compound by substituting ethynyl with methyl
at a specific position is obvious. The case involved Erlotinib Hydrochloride, which demonstrated capabilities as
an Epidermal Growth Factor Receptor (EGFR) inhibitor which spiked survival benefit in cancer including non-
small cell lung cancer (NSLC) patients. After reviewing relevant prior art references.
Held :
 The Court came to the conclusion that a person with ordinary skill would not have found the selection of
the compound from a number of compounds and its modification obvious, and that structural
similarities between compounds would not prima facie make the claimed compound obvious.
 While arriving at its conclusion, the Court expounded some important principles with respect to
inventive step analysis. To determine obviousness/lack of inventive steps the following enquiries are
required to be conducted:
 Step No.1 – To identify an ordinary person skilled in the art,
 Step No.2 – To identify the inventive concept embodied in the patent,
 Step No.3 – To impute to a normal skilled but unimaginative ordinary person skilled in the
art what was common general knowledge in the art at the priority date,
 Step No.4 – To identify the differences, if any, between the matter cited and the alleged
invention and ascertain whether the differences are ordinary application of law or involve
various different steps requiring multiple, theoretical and practical applications.
 Step No.5 – To decide whether those differences, viewed in the knowledge of alleged
invention, constituted steps which would have been obvious to the ordinary person skilled
in the art and rule out a hind side approach.

Graham v John Deere Co. (non obvious to a person skilled in the relevant art)
While the ultimate question of patent validity is one of law, the condition set forth in the Patent Act of 1952, 35
U.S.C.S. § 103, which is but one of three conditions, each of which must be satisfied, lends itself to several
basic factual inquiries: (1) the scope and content of the prior art are to be determined; (2) differences between
the prior art and the claims at issue are to be ascertained, and (3) the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined.
Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be
patented. As indicia of obviousness or non-obviousness, these inquiries may have relevancy.
Two appeals were consolidated to review the validity of patents in light of the Patent Act of 1952. § 103,
which provided that in determining the patentability of a device it was necessary to consider not only its
novelty and utility, but also its obviousness to one of ordinary skill in the art. The court affirmed a circuit court
judgment in favor of respondents in petitioners' plow clamp patent infringement suit, and reversed a decision
affirming judgment for respondent, who brought cross actions for infringement of its sprayer patent in
petitioners' consolidated declaratory judgment suits.

5. SPECIFICATION (Read more under S.9 and S.10)

To obtain a patent, the inventor has to file a patent application containing a specification (Section 10). The
object of the specification is to provide complete information to the public about the invention and the mode of
carrying it out and to define the boundaries of the invention. The specification has to contain a written
description of the invention and of the manner and process of making and using it. The written description may
contain drawings where and when required to clearly describe the invention. A model or sample may have to be
submitted if the patent office requires such a model or sample as an illustration of the invention. However, such
a model or sample will not form part of the specification. If the invention involves biological materials, the
biological materials may be deposited at a recognized depository in order to describe the invention and such
materials would form part of the specification.
The specification has to enable the invention, which means it must fully and particularly describe the invention
and its operation or use and the method by which it is to be performed. It must describe the embodiment of the
invention claimed in each of the claims. The description of the invention must be so clear that any person in the
field can carry it out and no further experimentation must be required to practice the invention. The specification
must also disclose the best method of performing the invention which is known to the applicant at the time of
filing the patent application.

Furthermore, the specification has to end with a claim or claims defining the scope of the invention for which
protection is claimed. The function of the claims is to define the metes and bounds of the invention claimed in
the patent application.

Claims in a specification have to relate to a single inventive concept, and be clear and succinct. The claims must
mark out with adequate distinctiveness, the boundary of the territory of the invention sought to be protected. The
principle idea in the invention has to be presented in the claims and must not be left for general review of the
specification. All claims in the patent have to be supported by the matter provided in the written description of
the specification.

Though the specification requirement is normally not listed as one of the patentability requirements, it is as
important as other requirements. If the invention is not fully described, claimed, supported or enabled in the
specification, the patent application will be rejected. Through the specification, the inventor has to show that he
is not only in possession of the invention, but also that the invention is workable without undue experimentation.

Tubes Ltd. v. Perfecta Seamless Steel Tube Company, Ltd.

“. . . if one has to look at first principles and see what the meaning of a Specification is . . . why is a
Specification necessary? It is a bargain between the State and the inventor.
The State says, “If you will tell what your invention is and if you will publish that invention in such a form and
in such a way as to enable the public to get the benefit of it, you shall have a monopoly of that invention for a
period of fourteen years.” That is the bargain. The meaning which I think, in my view of the Patent Law, has
always been placed on the object and purpose of a Specification is that it is to enable, not anybody, but a
reasonably well informed artisan dealing with a subject- matter with which he is familiar, to make the thing, so
as to make it available for the public at the end of the protected period.

Eli Lilly Canada Inc v. Apotex Inc

Therefore, adequate disclosure in the specification is a precondition for the granting of a patent. As Hughes J.
stated,

Thus, one must both advance the state of the art and disclose that advance in order to gain the patent monopoly.
Failing to do so, thus invalidating the monopoly, can be in the form of one or more of several matters such as,
the “invention” was not new, or the so-called invention was “obvious” or the disclosure was “insufficient” or
“what you disclosed doesn’t support the monopoly that you claim’

In return for such disclosure, patent is granted to the inventor for a specified period provided so that the patented
invention is also worked in the country without undue delay and if there is any infringement by anybody, the
patent holder invokes the rights under the Act to protect the claims in the patent.
country, a monopoly is given by the Government so that the patented invention is available to consumers at a
cheaper cost and is available for being used at the end of the term of the patent.”

3. PROCEDURE FOR GRANT OF PATENT

Overview
Afte the filing of the application for the grant of the patent, a request for examination is required to be made for
the examination of the application in the Indian Patent Office within 48 months from the priority date of the
application or from the date of filing of the application.
After the first examination report is issued, the applicant is given an opportunity to meet the objections raised in
the report. The applicant has to comply with the requirements within 6 months from the issuance of the first
examination report which may be extended for further 3 months on the request of the applicant.
If the requirements of the first examination report are not complied with within the prescribed period of 9
months, then the application is treated to have been abandoned by the applicant. After the removal of the
objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal.
Detailed-
STEP 1 : APPLICATION
S. 6 Persons entitled to apply for patents

The eligibility to file a patent application in India is that the person should be the true and first inventor of
the invention or a legal representative or assignee of the true and first inventor. Section 6 of the Patents
Act, 1970 provides the eligibility criteria for filing Patent Application in India.

An application for a patent for an invention may be by any of the following persons,
 By any person claiming to be the true and first inventor of the invention
 By any person being the assignee of the person claiming to be the true and first inventor in respect of the
right to make such an application
 By the legal representative of any deceased person who immediately before his death was entitled to
make such an application
An application maybe made either alone or jointly
This list is however subject to the provision under S.134 which enshrines the principle of reciprocity
 Where any country specified by the Central Government in this behalf by notification in the Official Gazette
does not accord to citizens of India the same rights in respect of the grant of patents and the protection of
patent rights as it accords to its own nationals, no national of such country shall be entitled, either solely or
jointly with any other person,—
 to apply for the grant of a patent or be registered as the proprietor of a patent;
 to be registered as the assignee of the proprietor of a patent; or
 to apply for a licence or hold any licence under a patent granted under this Act.

S.7 Form of application

 Every application for patent must be for one invention only and must be made in the prescribed form
and filed in the patent office.
 Every application must be accompanied by a complete or a provisional specification.
 The application shall state that the applicant is in possession of the invention and name the person
claiming to be the true and first inventor.
 Where the person so claiming is not the applicant or one of the applicants, the application shall contain a
declaration that the applicant believes the person so named to be the true and first inventor.

S.9 Provisional and Complete Specification

 Where an application is accompanied by a provisional specification, a complete specification must be
filed within 12 months from the date of filing of application. If the complete application is not filed, the
application is deemed to be abandoned.

 Where an application for a patent is accompanied by a specification purporting to be a complete

specification, the Controller may, if the applicant requests at nay time within the 12 months from the
date of filing, direct that such a specification shall be treated as a provisional specification and
proceed with the application accordingly.

 Where a complete specification has been filed in pursuance of an application for a patent accompanied
by a provisional specification or a provisional specification treated as a complete specification, the
controller may, before the grant of the patent, on the request of the applicant cancel the provisional
specification and post-date the application to the date of filing the complete specification.

 Where two or more applications in the name of the same applicant are accompanied by provisional
specifications in respect of inventions which are cognate or of which one is a modification of another,
and, the Controller is of the opinion that the whole of such inventions are such that they constitute a
single invention which can be included in one patent, he may allow one complete specification to be
filed in respect of all provisional specifications.

S.10 Contents of patent specification

Every specification, whether provisional or complete, shall describe the invention and shall begin with a title
sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the
Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and
any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the
specification, and references in this Act to a specification shall be construed accordingly.
 (3) If, in any particular case, the Controller considers that an application should be further supplemented by a
model or sample of anything illustrating the invention or alleged to constitute an invention, such model or
sample as he may require shall be furnished before the application is found in order for grant of a patent , but
such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be
performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is
entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a
way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be
completed by depositing the material to an international depository authority under the Budapest Treaty and by
fulfilling the following conditions, namely:—
(A) the deposit of the material shall be made not later than the date of filing the patent application in India and
a reference thereof shall be made in the specification within the prescribed period;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are
included in the specification including the name, address of the depository institution and the date and number
of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of
patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an
invention.
(4A) In case of an international application designating' India, the title, description, drawings, abstract and
claims filed with the application shall be taken as the complete specification for the purposes of this Act.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of
inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based
on the matter disclosed in the specification.
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished
in the prescribed form with the complete specification or within such period as may be prescribed after the
filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional
specification may include claims in respect of developments of, or additions to, the invention which was
described in the provisional specification, being developments or additions in respect of which the applicant
would be entitled under the provisions of section 6 to make a separate application for a patent.

Specification
A patent specification is a techno-legal document that contains the specific scientific details of the invention and
the claims to the patent rights. In a patent specification, the applicant is required to disclose the invention
completely. This disclosure must include the best possible way of performing the invention. The specification
must be so comprehensive that it must enable an ordinary person skilled in the same field as the invention
relates to, to perform the invention without undue effort. It is, therefore, clear that a specification is an
indispensable part of the patent application.

Contents of Specifications

1. Title of the patent invention

2. Background of the invention
3. Summary of the invention/ Object of the Invention
4. Explanation if any of the patent drawings
5. Description of the invention
6. Patent Claims
7. Patent Abstract of the disclosure
8. Sequence listing, if any

Types of Patent Specification:

A Patent specification may be Provisional or Complete. The major difference between the two is that complete
specification is more comprehensive in comparison and complete specification contains patent claims which is
not present in provisional specification.

Provisional Patent Specification:

When an invention has reached a stage where it can be disclosed on paper but it is not complete, a provisional
patent application may be filed to claim a priority date. A provisional specification reveals the invention for
which the patent is sought sans the claims. This means that while the invention is disclosed, the formal claims
need not be submitted just yet. A provisional patent application must be followed by a complete specification
within 12 months from the date of filing the provisional specification.

Merits of a provisional patent application:

Priority Date: A provisional application reserves a date for the patent. Essentially, when the complete
specification is filed within 12 months of filing the provisional specification, the date of application of the patent
will be the date on which the provisional application was filed. This secures the priority date for the invention
against any other invention being developed in the same field.

12 months: The applicant has 12 months to completely develop and define his invention. During this time, the
applicant can meticulously draft the complete specification with the claims. This period of 12 months can also
be used to determine the economic feasibility of the patent.

Cost: A provisional patent costs less as compared to a complete specification (in the initial stage). If the patent is
commercially viable then the higher cost can be spent in obtaining the patent.

Patent Pending: After filing a provisional patent application the applicant can use the term Patent Pending
insofar as the invention for which the patent is applied is concerned. This could act as a bulwark against
potential infringers.
Complete Patent Specification (S.10 cl.4)
A complete patent consists of two parts: Description and Claims
Every complete specification shall,
 Fully and particularly describe the invention and its operation or use and the method by which it is to be
performed.
 Disclose the best method of performing the invention which is known to the applicant and for which he
is entitled to claim protection
 Be accompanied by an abstract to provide technical information on the invention.
 Drawings may form a part of the complete specification
 Ends with claim or claims defining the scope of the invention for which protection is claimed

Claims - The subject matter of the invention which distinguishes the invention from what is old is
written in the claims. Patentability of an invention is judged by the patent claims as it defines the scope
of the invention. The major function of the patent claim or independent patent claims is to clearly define
the scope of the protection granted. It protects the legal rights of the patentee. It defines the legal
boundaries of the granted exclusive rights ie, determines exactly what the inventor is entitled to exploit
commercially and exclude others from practicing (making, using importing, selling, or offering for sale)
the inventor’s invention.

A complete specification filed after a provisional specification may include claims in respect of
developments of or additions to the invention which was described in the provisional specification.

Under S.11 (8A) A claim in a complete specification of a patent shall not be invalid by reason only of—

(a) the publication or use of the invention so far as claimed in that claim on or after the priority date of
such claim; or

(b) the grant of another patent which claims the invention, so far as claimed in the first mentioned claim,
in a claim of the same or a later priority date.

S.11 Priority dates (refer to bare act)

Priority date is imperative to claims of a patent application because knowledge or information available in the
public domain before the priority date is taken into consideration while determining whether the claim(s) are
entitled to be granted or rejected. Delay in securing the priority date may lead to addition of more information
or knowledge to the public domain, which may adversely affect possibility of a patent grant. The approach
applied by the patent office in India to assign priority date to claims.

Determination of Priority date

complete patent application may include one or more claims, and each and every claim of the patent application
is assigned a priority date. In other words, different claims in a patent application can have different priority
date.

In case a complete patent application is claiming priority from a previously filed provisional patent application,
and if a claim of the complete patent application based on the subject matter disclosed in the provisional patent
application, then the priority date of the claim will be the filing date of the provisional patent application.
The law in India allows an application filed as a complete patent application to be considered as a provisional
patent application, if a request is made within 12 months of filing the above referred complete patent
application. A subsequent complete patent application that is filed by claiming priority from such a provisional
patent application can have a claim based on the subject matter disclosed in above referred provisional patent
application. In such as scenario the claim's priority date will be the filing date of the provisional patent
application (which was filed as a complete patent application earlier).

A complete patent application may be filed by claiming priority from two or more provisional applications. In
case a claim in such a complete patent application is based on the subject matter disclosed in one of those
provisional patent applications, then the priority date of the claim will be the filing date of the provisional patent
application in which the subject matter is disclosed.

On the other hand, if a claim in such a complete patent application is based on the subject matter disclosed in
parts in multiple provisional patent applications, then the priority date of the claim will be the filing date of the
provisional patent application that was last filed.

A complete patent application may be filed within 12 months of a previously filed application in India, and
claim priority from the same. In case a claim in such a complete patent application is based on the subject matter
of the previously filed application, then the priority date of the claim will be the filing date of the previously
filed application.

A claim in a divisional patent application will have its priority date as the filing date of an earlier application
(provisional(s) or complete from which the divisional application originated) in which the subject matter on
which the claim is based on is first disclosed.

A complete patent application filed in India may claim priority from one or more applications filed in a
convention country. A claim in such a complete patent application will have the priority date as the filing date of
the application in the convention country in which the subject matter on which the claim is based on was first
disclosed.

STEP 2 : PUBLICATION

Once a patent application gets filed at Indian Patent office (IPO), the patent application is automatically
published in the Official Gazette after 18 months of completion from the date of filing or priority date ( Section
11A(1), Rule 24). Thereafter, it becomes available for public inspection. The publication is done on every
Friday in the Official Gazette.

An applicant may file request for early publication using Form 9 and submit it to IPO for publication (Section
11A(2)). Such patent applications would be published within 1 month from the date of making such request for
early publication (Rule 24A).
Following particulars of a patent application are provided while publication in Official Gazette (Section
11A(5)) :

 Application number, Applicant Name and Address, Title of the invention, Priority details, Abstract

The date of publication is very important as it provides privileges and patent rights as if the patent has been
granted on the date of publication of patent application, however infringement proceedings may be only run in
court after date of grant (Section 11A(7))

STEP 3 : EXAMINATION

a. Examination Request (S.11 B)

No application may be examined unless such a request is made. In India a request for patent examination
 (RFE) may be filed by:
● the patent applicant of the patent application or
● by any other interested person
Request of Examination is filed by filling Form 18. The interested person (third party) has to submit
appropriate evidence of his interest in the particular patent application.
Form-18 has to be filed, specifying the details of the patent applicant or other interested person,
application number, title, date of filing and publication date along with the prescribed fees.
Where request for examination is not made within the prescribed time, the application is treated as
withdrawn by the applicant.
Provided-

 Where secrecy direction has been issued under S.35, then the request for examination may be
made within the prescribed time, from the date of revocation of the direction.

b. Examination of application (S.12)

The Process of examination starts with filing a request for examination. Unlike publication, this is not an
automatic process. Only after receiving the Request for Examination (RFE) the controller transfers the
patent application to the patent examiner. The request for examination has to be made within 48 months
from the date of priority or filing whichever is earlier.
The patent examiner examines the patent application, and prepares the examination report on-

 whether the application and the specification and other documents relating thereto are in
accordance with the requirements of this Act and of any rules made thereunder;

 whether there is any lawful ground of objection to the grant of the patent under this Act in
pursuance of the application;

 the result of investigations made under section 13; and

 any other matter which may be prescribed.

S.13 Search for anticipation by previous publication and by prior claim
The examiner to whom an application for patent is referred to by the Controller, before making the report has
to conduct an investigation for the purpose of ascertaining whether the invention claimed in any claim of the
complete specification,

 has been anticipated by publication before the date of filing of the applicant's complete specification in
any specification filed in pursuance of an application for a patent made in India and dated on or after
the 1st day of January, 1912;

 is claimed in any claim of any other complete specification published on or after the date of filing of
the applicant's complete specification, being a specification filed in pursuance of an application for a
patent made in India and dated before or claiming the priority date earlier than that date.
The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the
invention, so far as claimed in any claim of the complete specification, has been anticipated by publication
in India or elsewhere in any document before the date of filing of the applicant's complete specification.
Powers of the Controller after obtaining examiner’s report

 S.14 Amendment - After consideration of the report if the Controller is of the opinion that the
 application, specification or other documents require amendment to ensure compliance with the
Act, the Controller shall communicate the objections to the applicant and give him an opportunity
of being heard.

 S.15 Refusal – If he is satisfied that the application, specification or any other document does not
comply with the requirements of the Act, he may refuse the application of require it to be amended
to his satisfaction before continuing with the patent grant process.

 S.16 Division – The Controller may require amendment of the complete specification filed in
pursuance of the original or the further application made by the applicant to remedy an objection
or where application is made for multiple inventions to ensure that neither of the said complete
specification includes a claim claimed in the other.

 S.17 Post-dating – The Controller may post-date the application to the date where the
requirements which he directs needs to be complied with are complied with, deeming the
application to have been made on the date in which all the requirements of a patent application
under the Act are complied with.

 S.18 Anticipation – In cases of anticipation, he may refuse the application unless it is shown that
the priority date of the claim of his complete specification pre-dates the publication of the
document which created the anticipation.

 S.19 Potential Infringement – where upon investigation it is found that an invention in respect of
which an application for a patent has been made cannot be performed without substantial risk of
infringement of a claim of another patent, he may direct that a reference to that other patent be
inserted in the applicant’s complete specification.

STEP 4 : PRE-GRANT OPPOSITION

Pre-Grant Opposition: According to Section 25(1) of the Patents Act, 1970, any person may, in writing,
oppose the grant of a patent following publication of the patent application but before the grant of the patent
based on the grounds stated in Sections 25(1)(a) to (k).
The representation for opposition is filed in Form-7(A) along with a statement and evidence in support of the
opposition . The opponent may also request a hearing if desired.
The legislature has intentionally retained a six-month window before the grant of a patent from the date of
publication of the application, providing third parties an opportunity to oppose the grant of a patent.
However, the representation can be filed only if a request for examination of the patent application has already
been filed. After consideration of the representation, if the controller decides that there is merit in the
representation, he or she will give notice of the opposition to the applicant.
After receiving notice, the applicant files a reply to the representation along with evidence, if any is available,
within three months of receipt of the notice.
After considering the opponent’s representation and the applicant’s reply, along with evidence from both sides
and hearing both parties, if requested, the controller may either reject the pre-grant representation and grant a
patent or ask the applicant to amend the complete specification to his or her satisfaction before proceeding to
grant.
Grounds for pre-grant opposition

A pre-grant opposition can be filed only on the following grounds:

● wrongful obtainment of the invention (Section 25(1)(a) of the Patents Act);
● anticipation by prior publication (anywhere in the world) (Section 25(1)(b));
 ● anticipation by prior claiming in India (Section 25(1)(c));
● public knowledge or public use in India before the priority date (Section 25(1)(d));
● obviousness and lack of inventive step in the invention (Section 25(1)(e));
● being an excluded subject matter (such as those inter alia provided in Section 3) (Section 25(1)
(f));
● insufficiency of disclosure of the complete specification (Section 25(1)(g));
● non-compliance of the requirement of Section 8 or furnishing materially false information
(Section 25(1)(h));
● non-filing of the application within 12 months of filing the first application in a convention
country (Section 25(1)(i));
● non-disclosure or wrongful mention of the source or geographical origin of biological
material (Section 25(1)(j)); and
● anticipation with regard to traditional knowledge of any community anywhere in the world
(Section 25(1)(k)).
Post-grant opposition proceedings – grounds and procedure
According to Section 25(2) of the Patents Act, any person interested can file a post-grant
opposition within 12 months of the date of publication of the grant of a patent on any of the grounds
prescribed, by giving a notice of opposition to the controller. The grounds of post-grant opposition are
identical to those for pre-grant opposition. After receipt of the notice, the controller informs the patentee
of the opposition and orders an opposition board to examine the opposition and give the controller its
recommendation.

The process of post grant opposition initiates with a notice of opposition filed by the opponent (who is an
‘interested person’) within 1 year from the date of publication of grant along with full written statement
and evidence to the Controller. The patentee is required to file a reply statement and evidence within

Two months failing which, the application will be abandoned. This time period is extendible by one
month provided the request for extension is filed within the two-month period. Reply evidence filed by
opponents is to be strictly confined to patentee’s evidence. Further evidence may however be filed with
the leave of the Controller.

All the documents are handed over to the Opposition Board constituted by the Controller for
recommendation. Controller takes decision after a hearing along with the members of the Opposition
Board. An appeal may be made against the decision before the Appellate Board within three month from
date of the order.

STEP 5: GRANT OF PATENT

S.43 Grant of Patent

Where an application for a patent has been found to be in order for grant of the patent and either— (
a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act,
the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application,
to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be
entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon
the application, specification and other documents related thereto shall be open for public inspection.

S.45 Date of Patent

Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the
application for patent was filed.
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or
prosecuted in respect of an infringement committed before the date of publication of the application.

Term of Patent (S.53)

The term of every patent granted under the Act is twenty years from the date of filing.

The patents in force on 20th May 2003 stood extended for the term of 20 years.

The term of patent in case of International applications filed under the PCT, designating India, is twenty years
from the international filing date accorded under the PCT.

Renewal fee is required to be paid annually to keep the patent in force. Restoration of patents is possible if
applied within 18 months from the date of lapse.

S.47 Grant of Patents to be subject to certain conditions

The grant of a patent under this Act shall be subject to the condition that—

(1) Machine for use of Govt.- any machine, apparatus or other article in respect of which the patent is granted
or any article made by using a process in respect of which the patent is granted, may be imported or made by or
on behalf of the Government for the purpose merely of its own use;

(2) Process for use by Govt - any process in respect of which the patent is granted may be used by or on behalf
of the Government for the purpose merely of its own use;

(3) Research and Experimentation - any machine, apparatus or other article in respect of which the patent is
granted or any article made by the use of the process in respect of which the patent is granted, may be made or
used, and any process in respect of which the patent is granted may be used, by any person, for the purpose
merely of experiment or research including the imparting of instructions to pupils; and

(4)Public use / public service: in the case of a patent in respect of any medicine or drug, the medicine or drug
may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary,
hospital or other medical institution maintained by or on behalf of the Government or any other dispensary,
hospital or other medical institution which the Central Government may, having regard to the public service that
such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official
Gazette.

REGISTRATION OF PATENTS (s.67)

There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;

b) notifications of assignments, extension, and revocations of patents; and

(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed

OWNERSHIP AND TRANSFER OF PATENTS

Ownership

Rights of Patentees (S.48)

A patent granted under the Act confers upon the patentee-

 where the subject matter of patent is a product, the exclusive right to prevent third parties , who do not
have his consent, from the act of making, using, offering for sale, selling or importing for those
purposes that product in India
 where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do
not have his consent, from the act of using that process, and from the act of using, offering for sale,
selling or importing for those purposes the product obtained directly by that process in India.

Rights of Co-owners of patents (S.50)

 Where patent is granted to two or more persons, each of those persons shall have equal undivided share
in the patent, unless an agreement to the contrary exists

 Where two or more persons are registered as grantee or proprietor of a patentee then, each of those
persons shall be entitled by himself or his agents to exercise the rights conferred on patentees under
S.48, for his own benefit unless an agreement to the contrary exists.

 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 share in the patent shall not be assigned by one of such persons except
with the consent of the other person or persons.

 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.

 Subject to the provisions contained in this section, the rules of law applicable to the ownership and
devolution of movable property generally shall apply in relation to patents; and nothing contained in
sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal
representatives of a deceased person or their rights or obligations as such.

 Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created
before the commencement of this Act

Transfer of Patents

Once a patent for an invention is granted, it is important to consider,

(1) if the patentee/proprietor of the patent is going to manufacture, market, sell and/or distribute the invention,
 (2) whether the patentee/proprietor of the patent is going to sell all rights in his/her invention to someone else
for a sum of money, or

(3) if the patentee/proprietor of the patent will license someone else to produce and bring the patented product to
market under specified terms by the Patentee that must be met for the licensee.

A patent is considered as a transferrable property that can be transferred from the original patentee to any
other person by assignment or by operation of law. A patent can be licensed or assigned only by the owner of
the patent. In case of co-owners or joint-owners, a co-owner can assign or license the patent only upon consent
of the other owner(s).

Requirements for creation of interest in any patent

Section 68 of the Indian Patents Act 1970 provides for the mortgage of, license or creation of any interest in the
patent.

"Assignments, etc., not to be valid unless in writing and duly executed. 1 —An assignment of a patent or of a
share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless
the same were in writing and the agreement between the parties concerned is reduced to the form of a document
embodying all the terms and conditions governing their rights and obligations and duly executed"

Requirements2:

1. The assignment, mortgage or license should be reduced to writing in a document embodying all the
terms and conditions governing the rights and obligations between the parties;
2. An application for registration of such document should be filed in the prescribed manner in Form-16
within the time prescribed under section 68. The document when registered will have effect from the
date of execution.

Forms/Nature of Transfer of Patent Rights:

Grant of a Patent confers to a patentee the right to prevent others from making, using, exercising or selling the
invention without his permission. The following are the ways in which a patentee can deal with the patent:

1. Assignment
2. Licenses
3. Transmission of patent by operation of law

1. Assignment
The term 'assignment' is not defined in the Indian Patents Act. Assignment is an act by which the patentee
assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making,
using, exercising or vending the invention. There are three kinds of assignments

 Legal Assignment
 Equitable Assignment
 Mortgage

Legal Assignment: An assignment (or an agreement to assign) of an existing patent is a legal assignment, where
the assignee may enter his name as the patent owner. A patent which is created by deed can only be assigned by
a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

Equitable Assignments: Any agreement including a letter in which the patentee agrees to give a certain defined
share of the patent to another person is an equitable assignment of the patent. However an assignee in such a
case cannot have his name entered in the register as the proprietor of patent. But the assignee may have notice of
his interest in the patent entered in the register.
Mortgages: A mortgage is an agreement in which the patent rights are wholly or partly transferred to assignee
in return for a sum of money. Once the assignor repays the sum to the assignee, the patent rights are restored to
assignor/patentee. The person in whose favor a mortgage is made is not entitled to have his name entered in the
register as the proprietor, but he can get his name entered in the register as mortgagee.

2. Licenses

 Voluntary licenses:
It is the license given to any other person to make, use and sell the patented article as agreed upon the terms of
license in writing. Since it is a voluntary license, the Controller and the Central government do not have any role
to play. The terms and conditions of such agreement are mutually agreed upon by the licensor and licensee. In
case of any disagreement, the licensor can cancel the licensing agreement.

 Statutory licenses:
Statutory licenses are granted by central government by empowering a third party to make/use the patented
article without the consent of the patent holder in view of public interest. Classic example of such statutory
licenses is compulsory licenses. Compulsory licenses are generally defined as "authorizations permitting a third
party to make, use, or sell a patented invention without the patent owner's consent 3.

Compulsory Licenses(CLs) (Scroll down for in depth explanation)*

Though CLs works against the interest of the patent holder, it is granted under certain provided conditions under
the Patents Act. Under section 84 of the Indian Patents Act 1970, any person can make an application for grant
of a compulsory license for a patent after three years, from the date of grant of that patent, on any of the
following grounds:

(a) The reasonable requirements of the public with respect to the patented invention have not been satisfied; (b)
The patented invention is not available to the public at a reasonably affordable price. (c) The patented invention
has not worked in the territory of India.

 Exclusive Licenses and Limited Licenses:

Depending upon the degree and extent of rights conferred on the licensee, a license may be Exclusive or Limited
License. An exclusive license excludes all other persons including the patentee from the right to use the
invention. Any one or more rights of the patented invention can be conferred from the bundle of rights owned by
the patentee. The rights may be divided and assigned, restrained entirely or in part. In a limited license, the
limitation may arise as to persons, time, place, manufacture, use or sale.

 Express and Implied Licenses:

An express license is one in which the permission to use the patent is given in express terms. Such a license is
not valid unless it is in writing in a document embodying the terms and conditions. In case of implied license
though the permission is not given in express terms, it is implied from the circumstances. For example: where a
person buys a patented article, either within jurisdiction or abroad either directly from the patentee or his
licensees, there is an implied license in any way and to resell it.

3. Transmission of Patent by Operation of law

When a patentee dies, his interest in the patent passes to his legal representative; in case of dissolution or
winding up of a company or bankruptcy transmission of patent by operation of law occurs.

EXCEPTIONS AND LIMITATIONS TO PATENTS

After signing of the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), which allows Member Countries to provide more extensive protection of intellectual property,
the exceptions and limitations to patent rights in India underwent something of an evolution. The 'Exceptions to
Rights Conferred' has been incorporated as Article 30 of TRIPS.

It provides that 'Member Countries may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not
unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of
third parties.'1

Types of Exceptions & Limitations:

Article 30 of TRIPS allows for limited exceptions to the exclusive rights conferred by a patent. The exceptions
must not unfairly prejudice the legitimate interests of the patent owner.

Private and Non-commercial Use Exception (S.84)

The exclusive rights conferred by a patent do not allow private use or monopoly over commercial activity. If a
patentee is neither using nor vending the invention for profit, the Government has the power to grant a license,
known as Compulsory License (CL), to a third party to use the patented invention so as to restrict the rights of
the patentee for the purpose of preventing the abuse/ misuse of the rights by the property holder and to prevent
the negative effect of such action on the public.

The concept of CL comes into play when the patented invention is not commercialized in India or the invention
is not available to the public at reasonable prices or the invention is not manufactured in requisite amount.

The provisions of private and non-commercial use exception have been provided under

 Section 84 (Compulsory licenses),

 Section 85 (Revocation of patents by the Controller for non-working)

 Section 92 (Special provision for compulsory licences on notifications by Central Government) of

Patents Act, 1970 (herein after "the Act").

Currently, the provision of CL is seen as the only optimum solution of improving access to costly patented
drugs in India while creating an atmosphere that harnesses R&D.

Experimental / Scientific Use Exception (S.47)

The experimental use exemption is incorporated under Section 47 of the Act. Under s.47(3)of the said section,
the grant of a patent is subject to the condition that any product or process, in respect of which the patent is
granted, may be made or used by any person for the purpose merely of experiment or research including the
imparting of instructions to pupils.

This is one of the most widely known exceptions to patent rights and it grew up out of the concern that patent
rights should not hamper the "bona fide" experiments and scientific processes. This form of experimental use
exception permits third parties to carry out experimental or scientific activities relating to the subject matter of
the patent without infringing the patent holder's rights.

Regulatory-use/ Prior-use Exemption (s.107A)

The patent rights, on the one hand, provide economic incentives to innovate, but on the other hand, the exclusive
rights they confer result into monopoly and unaffordable pharmaceutical products.

Consequently, the Indian Patents (Amendment) Act, 2005 incorporated the regulatory-use or prior-use
exemption under section 107A to offer a trade-off between incentives to the innovators, and limited access
and costs to consumers.
This exemption is also referred as Bolar Provision and is a statutorily created exemption to patent rights that
allows the manufacturers of generic drugs to undertake steps reasonably related to the development and
submission of information required for obtaining marketing approval anywhere in the world in respect of a
patented product without the consent of the patentee.

This provision allows the generic producers to market and manufacture their goods as soon as the patent term
expires. Bolar Provision has been upheld as conforming to the TRIPS agreement and is used in several countries
to advance science and technology. However, exemption under Section 107A of the Act does not allow for the
use of patented drug to obtain the license to manufacture and distribute the generic drug before the expiry of the
term of patent.

Foreign Vessels, Aircraft or Land Vehicles Exception (s.49)

As per Article 5 of the Paris Convention, rights conferred by a patent shall not extend to the use of the patented
invention on board of vessels when such vessels temporarily or accidentally enter the waters, provided that the
invention is used exclusively for the needs of the vessel.

As this exception is not optional for countries party to the Paris Convention, Indian Patents Act, in order to
comply, incorporated the said exception under Section 49.

According to the said section, the patent rights are not infringed when the patented invention is used exclusively
for the needs of foreign vessels, aircraft, or land vehicles and other accessories thereof, when such foreign
vessels, aircraft, or land vehicles temporarily or accidentally comes into India.

The term "Temporarily" not only includes the accidental and unintentional entry but also the intentional and
regular going into a port, provided that the vessels, aircraft, or land vehicles does not remain permanently in the
territorial waters or the territory of the country. This exception is beneficial in facilitating uninterrupted
international travel and reducing tensions between countries over the treatment of vessels flying their flag.

Exhaustion of Patent Rights

The Doctrine of Exhaustion or First Sale Doctrine refers to the exhaustion of the exclusive rights of the patent
holder once the patented invention is sold without any restriction. As per this Doctrine, the first unrestricted sale
of a patented item exhausts the patentee's further control over that particular item.

The rationale behind the patent holder exhausting their rights once they have sold the patented product is that,
by first sale of the patent invention the Patent holder has already used the exclusive rights to prevent others from
making, using, selling, offering for sale in the territory of patent grant or importing an invention into the
territory of patent grant and therefore has already reaped the benefits conferred by a patent.

INFRINGEMENT

A patent granted under the Indian Patents Act 1970, confers exclusive rights to the patentee to prevent third
parties from making, using, offering for sale, selling or importing the patented invention for the purpose of
using, selling and offering for sale in India without the consent of the patentee until the expiry of the said
patent1. This prevents third parties from commercially exploiting the patented invention till the time the said
patent is in force.

Any use of the patented invention without the appropriate consent of patentee shall be considered as an act of
infringement. The act of infringement can lead the infringer to trouble as the infringer can be sued by the
patentee for infringement with demands for monetary compensation.
Activities considered infringing activities
The Patents Act, 1970, does not exactly list down activities which would be considered infringing the patent
rights assigned to the patentee. However,

Section 48 of the Act confers exclusive rights to the patentee to prevent third parties from making, using,
offering for sale, selling or importing the patented invention for the purpose of using, selling and offering for
sale in India without the consent of the patentee. Therefore, one can presume that any act of a third party which
violates the rights conferred upon the patentee, shall be considered an act of infringement.

However, third parties can use patented inventions for commercial gains either by getting a license from the
patentee or getting his/her appropriate consent for a specific use. Any commercial use of the patented invention
without the consent of the patentee shall amount to an act of infringement.

Activities considered non-infringing activities

The Patents Act 1970, in Sections 47, 49 and 107A defines certain activities related to the patented invention
which are not considered as infringing activities. They can be called the statutory exemptions to infringement.

The statutory exemptions to infringement are defined as follows:

 Government Use**
The provisions of Section 47 of the Patents Act, 1970, lays down certain conditions to the grant of patents. The
use of inventions by the government is one of the defined statutory exemptions to infringement.

Under the ambit of Section 47, government can use an invention any time after filing of the patent application or
after the grant of the patent rights to the patentee2. Government can also authorize any person in writing, for
using an invention, for the purpose of government's own use of the invention. Government can also make or
import a patented invention for its own use.

Moreover, Section 99 to Section 103 of the Indian Patents Act, 1970, defines the meaning of use of invention by
the government3 and the conditions4 for such use.

 Exemptions for Research and Development

The Section 47(3) of the Patents Act, 1970, lays down provisions for the use of the patented invention, by any
person, for the purpose of only experiment or research including the imparting of instructions to pupils 5. This
provision sets the ground for the research and development of the field of art in which the patent is granted. The
scientific researchers can use the patented invention for carrying out researches for the development of science
and greater good of the society.

The provision also enables educational use of the patented invention for enlightening the students about the
particular state of the art.

However, selling of the patented products for experimental purpose shall not fall under the ambit of this
statutory exemption and shall be considered an act of infringement and the person selling the product for the
monetary gain shall be considered an infringer. Moreover, use of the pirated article for the purpose of
experiment or imparting instructions to pupil shall be considered an act of infringement.

 Supply of Medicinal Drug to Medical institutions by Government

Section 47(4) of the Patents Act, 1970, permits the government to import the patented medicine or drug for the
purpose merely of its own use or distribute the patented medicine or drug in dispensaries, hospitals or other
medical institutions notified in the official gazette of the government 6. This provision enables the government to
establish the balance between the public interest of access to healthcare and the exclusive rights granted to the
patentee. However, use of patented medicines for monetary gains without the consent of the patentee shall
amount to an act of infringement.

 Patented Invention used on Foreign Vessels

Section 49 of the Patents Act, 1970, lays down provisions that it shall not be considered as an act of
infringement if a foreign vessel which is using a patented invention comes to India, temporarily or accidentally 7.
This prevents the condition of accidental infringement of patent rights by the foreign vessel having a patented
invention on-board. However, there shall be no commercial intentions for the use of patented invention in India.

 Bolar Exemptions and Parallel Imports

Section 107A of the Patents Act, 1970, lays down the statutory exemptions similar to Bolar Exemptions. The
provisions of the section allow the use of patented invention for the purpose of development and submission of
information required under any law in India8. Moreover, the provisions of this section also allow importation of
patented products by any person from a person who is duly authorised under the law to produce and sell the
product9.

These provisions enable the generic pharmaceutical companies to research the bioequivalence of the patented
active pharmaceutical compounds and helps them in development of the generic drugs which can be marketed
after the expiry of the patent of the drug. Further, the provision of parallel import helps in regulating the pricing
of the patented product and avoid misuse of the patent rights by the patentee.

SUITS CONCERNING INFRINGEMENT OF PATENTS (S.104A -S.107)

The remedies available to a party under the Act are directly dependant on the issue at hand. The parties
who may avail of remedies under the Patent Act are any persons who are aggrieved by the patent law
provisions. These persons may be broadly classified into three categories namely, the patent owner,
the patent applicant and the third party aggrieved by the effect of patent or likely to be
aggrieved by the possible effect of patent application when granted.

It is therefore necessary to understand the situations in which remedy may be sought by a person
aggrieved under the provisions of the Act. These situations may be as follows:

1. INFRINGEMENT OF PATENT RIGHT OF PATENT HOLDER

S.104 A Burden of Proof in case of suits concerning infringement

(1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining
a product, the court may direct the defendant to prove that the process used by him to obtain the
product, identical to the product of the patented process, is different from the patented process if,
—

(a) the subject matter of the patent is a process for obtaining a new product; or

(b) there is a substantial likelihood that the identical product is made by the process, and the patentee
or a person deriving title or interest in the patent from him, has been unable through reasonable efforts
to determine the process actually used:

Provided that the patentee or a person deriving title or interest in the patent from him first
proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by subsection (1), the
court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the
court that it would be unreasonable to do so.

S.108 Reliefs in a suit for Infringement

(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to
such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an
account of profits.

(2) The court may also order that the goods which are found to be infringing and materials and
implements, the predominant use of which is in the creation of infringing goods shall be seized,
forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of
any compensation.

Injunction is not a statutory right but an equitable remedy and granted by the Courts in situations where
the plaintiff / patent owner can establish a prima facie case of success on the merits of the case, that
there would be irreparable injury to the patent owner and that the balance of convenience is in favour
of the plaintiff / patent owner i.e. the threatened harm to the plaintiff if the injunction is not granted far
outweighs the harm the injunction may inflict on the defendant.

The court may grant preliminary / temporary injunction during the hearing of the infringement suit to
restrain the alleged infringer / defendant from infringing the patent during the pendency of the suit. The
defendant may file an application for the vacation of the injunction. However, if infringement is
established after the trial the court may order a permanent injunction.

2. DECLARATION AS TO NON – INFRINGEMENT (S.105) AND GROUNDLESS THREATS

OF INFRINGEMENT

This remedy is available to persons who are not patent owners, and may either be sued for
infringement or threatened to be sued for infringement. The Patents Act cleverly provides reliefs to
such people vide Section 105 for declaration as to non-infringement and Section 106 for groundless
threats of infringement.

The Act provides remedy to the aggrieved party i.e. the party who fears that a suit of infringement
may be needlessly filed against him by the patent owner. He may approach the court for relief under
Section 105 of the Act which states that the court has the power to declare that the process used is not
an infringement of the patent rights. The pre-condition is that the plaintiff must have had
approached the patent owner to obtain voluntary licence and that the said plaintiff had not
received any response.

Section 105 enshrines the “Power of court to make declaration as to non-infringement” and states that
any person may institute a suit for a declaration that the use by him of any process, or the making, use
or sale of any article by him does not, or would not, constitute an infringement of a claim of a patent
against the patentee or the holder of an exclusive licence under the patent, notwithstanding that no
assertion to the contrary has been made by the patentee or the licensee.

The person must however show the court that he has written to the patentee and/or exclusive licencee
for a ‘written acknowledgements to the effect of the declaration claimed and has furnished him with
full particulars in writing of the process or article in question; and that the patentee or licensee has
refused or neglected to give such an acknowledgement”
The Section 105 goes on to state in the remaining sub-sections :

(2) The costs of all parties in a suit for a declaration brought by virtue of this section shall, unless for
special reasons the court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a claim of the specification of a patent shall not be called in question in a suit for a
declaration brought by virtue of this section, and accordingly the making or refusal of such a
declaration in the case of a patent shall not be deemed to imply that the patent is valid or invalid.

(4) A suit for a declaration may be brought by virtue of this section at any time after the publication of
grant of a patent, and references in this section to the patentee shall be construed accordingly.

S.106 Power of Court to grant Relief in cases of Groundless Threats

In instances where a patent holder threatens a third party with proceedings of infringement, especially
by way of oral or written communication including pamphlets, advertisements or circulars, the
aggrieved person may approach the court for relief and declaration to the effect that the threats are
unjustifiable (S. 106(1)(a)), an injunction against the continuance of threats (S. 106(1)(b)) and damages
if any that the aggrieved party may have sustained. This action can be brought on the offender even if
he is a bona-fide patent holder.

3. DEFENCES IN A SUIT FOR INFRINGEMENT (S.107)

A party in a suit for infringement can invoke the defences enshrined in Section 107 which
states that every ground on which a patent may be revoked under Section 64 shall be available
as a ground for defence.

Section 107 states:

(1) In any suit for infringement of a patent every ground on which it may be revoked under
section 64 shall be available as a ground for defence.

(2) In any suit for infringement of a patent by the making, using or importation of any machine,
apparatus of other article or by the using of any process or by the importation, use or
distribution or any medicine or drug, it shall be a ground for defence that such making, using,
importation or distribution is in accordance with any one or more of the conditions specified in
section 47

There are altogether 17 grounds for the revocation of a patent. Some of these grounds are
merely formal while the others strike at the root of technical criteria of patentability.

In his defence the defendant may invoke any one of these grounds such as the invention is not
useful (S.64(1)(g)), the claim(s) are not patentable subject matter (S.64(1)(k)), the geographical
origin of the biological material is wrongfully mentioned (S.64(1)(p)), or that the claims are
anticipated by traditional knowledge (S.64(1)(q)). Further the defendant may invoke the
exceptions under Section 47 such as use for research or for government’s own use, as a ground
for defence.

S.107A Certain acts not to be considered as infringement

For the purposes of this Act,—

(a) any act of making, constructing, using, selling or importing a patented invention solely for uses
reasonably related to the development and submission of information required under any law for the
time being in force, in India, or in a country other than India, that regulates the manufacture,
construction, use, sale or import of any product;

(b) importation of patented products by any person from a person who is duly authorised under the law
to produce and sell or distribute the product, shall not be considered as a infringement of patent rights

REVOCATION (S.64)

The term ‘Revocation’ means Cancellation of the patent rights acquired to patentee. The revocation of
patent can be applied by making a petition by any person interested or it can be also applied by the Central
Government. In most of the cases revocation are filed on a counter claim against patent infringement suits in
High Court or in IPAB (the Intellectual Property Appellate Board).
Grounds

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation of
patents. These grounds are following:

1. Invention is obvious, lacks an inventive step or utility

2. Invention isn’t new and, has been publicly used or published in India before the priority date or it
is foreseen in light of the knowledge available within any local or native community in India or
elsewhere.

3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to
invention

4. The scope of patent specifications is incomplete or the specifications have either been already
claimed in a patent that is granted

5. The patent was wrongfully obtained in violation of another party’s rights, such as through
incorrect or false representation, or leave to modify specifications was obtained through
fraudulent means

6. The information that has been disclosed under Section 8 is known to be false by the Applicant or
he has been unable to furnish the required details

7. Complete specification omits or erroneously attributes geographical origin or biological matter

used in the invention

8. The invention was either secretly used before the date or claim or the Applicant contravened
secrecy instructions under Section 35

9. The complete specification neither describes the invention and method sufficiently nor does it
disclose the best method of performing it which was known and entitled protection.
The authority to revoke the patent

There are two provisions in the Patent Act, 1970 which empowers the Central Government to revoke granted
patents.

One is Section 65 of the Act which gives power to the Government to give directions to the Controller to
revoke a patent if the Government is satisfied that the invention is one relating to atomic energy for which no
patent shall be granted.\

Section 66 of the Act empowers the Central Government to revoke patent if the Govt. is of the opinion that a
patent or the mode in which it is exercised is mischievous to State or prejudicial to the public. The central
Govt. after giving the patentee an opportunity to be heard makes a declaration of revocation in the Official
Gazette upon which the patent is deemed to be revoked.

Who can apply for revocation- S. 64(1)

Section 6413 of the Patents Act provides that a person interested 14 can file a petition before the IPAB, or in a
counter-claim in a suit for infringement of the Patent before the High Court, on any of the grounds mentioned
in this Section. The person under the Act refers to an interested person. It means that the person filing for
revocation of the patent shall have some interest or share in the patent or its revocation, whatever the case may
be.-*

*COMPULSORY LICENSING (S.84 – s.94)

a. S. 84(1)- 3 grounds
(1) At any time after the expiration of three years from the date of the grant of a patent, any person
interested may make an application to the Controller for grant of compulsory licence on patent on any
of the following grounds, namely:—

(a) that the reasonable requirements of the public with respect to the patented invention have not been
satisfied, or

(b) that the patented invention is not available to the public at a reasonably affordable price, or

(c) that the patented invention is not worked in the territory of India.

b. Considerations taken by the Controller- s. 84(6)

Section 84 states that an interested party can apply for a compulsory licence at any time after three years
from the date of grant of the patent based on:
● (i) the nature of the invention, the time which has elapsed since the sealing of the patent and the
measures already taken by the patentee or any licensee to make full use of the invention;
● (ii) the ability of the applicant to work the invention to the public advantage;
● (iii) the capacity of the applicant to undertake the risk in providing capital and working the
invention, if the application were granted;
● (iv) as to whether the applicant has made efforts to obtain a licence from the patentee on
reasonable terms and conditions and such efforts have not been successful within a reasonable
period as the Controller may deem fit:
Provided that this clause shall not be applicable in case of national emergency or other circumstances of
extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-
competitive practices adopted by the patentee, but shall not be required to take into account matters
subsequent to the making of the application. 171 [ Explanation .-For the purposes of clause (iv),
"reasonable period" shall be construed as a period not ordinarily exceeding a period of six months.]

c. 84(7)- when there is a satisfaction of reasonable requirement of the public

 For the purposes of this Chapter, the reasonable requirements of the public shall be deemed not to have
been satisfied-
(a) if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms,-
(i) an existing trade or industry or the development thereof or the establishment of any new trade
or industry in India or the trade or industry in India or the trade or industry of any person or class
of persons trading or manufacturing in India is prejudiced; or
(ii) the demand for the patented article has not been met to an adequate extent or on reasonable
terms; or
(iii) a market for export of the patented article manufactured in India is not being supplied or
developed; or
(iv) the establishment or development of commercial activities in India is prejudiced; or
(b) if, by reason of conditions imposed by the patentee upon the grant of licences under the patent or
upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of
materials not protected by the patent, or the establishment or development of any trade or industry in
India, is prejudiced; or
(c) if the patentee imposes a condition upon the grant of licences under the patent to provide exclusive
grant back, prevention to challenges to the validity of patent or coercive package licensing; or
(d) if the patented invention is not being worked in the territory of India on a commercial scale to an
adequate extent or is not being so worked to the fullest extent that is reasonably practicable; or
(e) if the working of the patented invention in the territory of India on a commercial scale is being
prevented or hindered by the importation from abroad of the patented article by-
(i) the patentee or persons claiming under him; or
(ii) persons directly or indirectly purchasing from him; or
(iii) other persons against whom the patentee is not taking or has not taken proceedings for
infringement. ]

S.85 Revocation of patents by Controller for non-working

 Where, in respect of a patent, a compulsory licence has been granted, the Central Government or any
person interested may, after the expiration of two years from the date of the order granting the first
compulsory licence, apply to the Controller for an order revoking the patent on the ground that,
 the patented invention has not been worked in the territory of India or
 that reasonable requirements of the public with respect to the patented invention has not
been satisfied or
 that the patented invention is not available to the public at a reasonably affordable price.
 Where the controller is satisfied with either of the above three contentions, he may make an order
revoking the patent.
 Every such application shall be decided within 1 year.

S.86 Power of the Controller to adjourn applications for compulsory licenses

 Where an application under section 84 or section 85, as the case may be, is made on the grounds
that
 the patented invention has not been worked in the territory of India or
 On the ground that the patented invention is not being worked in India on a commercial scale
to an adequate extent or is not being worked to its fullest extent that is reasonably practicable,

AND the Controller is satisfied that the time which has elapsed since the sealing of the patent has for any
reason been insufficient to enable the invention to be worked on a commercial scale to an adequate extent or
to enable the invention to be so worked to the fullest extent that is reasonably practicable, he may, by order,
adjourn the further hearing of the application for such period not exceeding twelve months in the aggregate
as appears to him to be sufficient for the invention to be so worked.

 If it is shown that the reason that the patented invention has not worked to the full extent is due
to a State or Central Act then the period pf adjournment shall be calculated from the date on
which the date on which the period during which the working of the invention was prevented by such
Act, rule or regulation or order of Government as computed from the date of the application, expires.

 No adjournment under sub-section (1) shall be ordered unless the Controller is satisfied that the
patentee has taken with promptitude adequate or reasonable steps to start the working of the invention
in the territory of India on a commercial scale and to an adequate extent.
S.87 Procedure for dealing with application under S.84 and S.85
 Where the controller is satisfied that a prima facie case has been made out for the making of an order,
he shall direct the applicant to serve copies of the application upon the patentee and any other person
interested in the patent and shall publish the application in the journal.
 The patentee or any other person desiring to oppose the application , give to the Controller a notice of
opposition before expiration of the prescribed time
 The notice shall contain the grounds on which the application is opposed.
 Where any such notice of opposition is duly given, the Controller shall notify the applicant, and shall
give to the applicant and the opponent an opportunity to be heard before deciding the case

S.88 Powers of Controller in granting Compulsory Licenses

 The Controller may approve an application under S.84 and grant licenses under the patent to such
customers of the applicant as he thinks fit as well as to the applicant if the Controller is satisfied that,
 use or sale of materials not protected by the patent is prejudiced by reason of conditions
imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire
or use of the patented article or process
 Where an application under section 84 is made by a person being the holder of a licence under the
patent, the Controller may, if he makes an order for the grant of a licence to the applicant, order the
existing licence to be cancelled, or may, if he thinks fit, instead of making an order for the grant of a
licence to the applicant, order the existing licence to be amended.
 Where two or more patents are held by the same patentee and an applicant for a compulsory licence
establishes that the reasonable requirements of the public have not been satisfied with respect to some
only of the said patents, then,
 if the Controller is satisfied that the applicant cannot efficiently or satisfactorily work the
licence granted to him under those patents without infringing the other patents held by the
patentee and
 if those patents involve important technical advancement of considerable economic
significance in relation to the other patents,
 he may, by order, direct the grant of a licence in respect of the other patents also to enable the licensee
to work the patent or patents in regard to which a licence is granted under section 84.
 Where the terms and conditions of a licence have been settled by the Controller, the licensee may, at
any time after he has worked the invention on a commercial scale for a period of not less than twelve
months, make an application to the Controller for the revision of the terms and conditions on the
ground that the terms and conditions settled have proved to be more onerous than originally expected
and that in consequence thereof the licensee is unable to work the invention except at a loss.

S.89 Purpose of Granting Compulsory Licenses

General purposes for granting compulsory licences. -The powers of the Controller upon an application made
under section 84 shall be exercised with a view to securing the following general purposes, that is to say,-
 (a) that patented inventions are worked on a commercial scale in the territory of India without undue
delay and to the fullest extent that is reasonably practicable;

(b) that the interests of any person for the time being working or developing an invention in the
territory of India under the protection of a patent are not unfairly prejudiced.

S.90 Terms and Conditions of Compulsory Licenses

(1) In settling the terms and conditions of alicence under section 84, the Controller shall endeavour to secure—
(i) that the royalty and other remuneration, if any, reserved to the patentee or other person beneficially entitled
to the patent, is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee
in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant
factors;
(ii) that the patented invention is worked to the fullest extent by the person to whom the licence is granted and
with reasonable profit to him;
(iii) that the patented articles are made available to the public at reasonably affordable prices;
(iv) that the licence granted is a non-exclusive licence;
(v) that the right of the licensee is non-assignable;
(vi) that the licence is for the balance term of the patent unless a shorter term is consistent with public interest;
(vii) that the licence is granted with a predominant purpose of supply in the Indian market and that the licensee
may also export the patented product if need be in accordance with the provisions of sub-clause (iii) of clause
(a) of sub-section (7) of section 84;
(viii) that in the case of semi-conductor technology, the licence granted is to work the invention for public non-
commercial use;
(ix) that in case the licence is granted to remedy a practice determined after judicial or administrative process to
be anti-competitive, the licensee shall be permitted to export the patented product, if need be.
(2) No licence granted by the Controller shall authorise the licensee to import the patented article or an article or
substance made by a patented process from abroad where such importation would, but for such authorisation,
constitute an infringement of the rights of the patentee.
(3) Notwithstanding anything contained in sub-section (2), the Central Government may, if in its opinion it is
necessary so to do, in the public interest, direct the Controller at any time to authorise any licensee in respect of
a patent to import the patented article or an article or substance made by a patented process from abroad (subject
to such conditions as it considers necessary to impose relating among other matters to the royalty and other
remuneration, if any, payable to the patentee, the quantum of import, the sale price of the imported article and
the period of importation), and thereupon the Controller shall give effect to the direction.

Section 92 and S.92A

 ● Section 92 authorises the central government through a gazette notification to issue a
compulsory licence at any time after the grant of the patent in the case of:
o a national emergency;
o circumstances of extreme urgency; or
o public non-commercial use.
● The compulsory licensing provisions under Section 92A(1) are unique as they authorise the
central government to issue a compulsory licence for the manufacture and export of patented
pharmaceutical products to any country with an inadequate or non-existent manufacturing
capacity to meet public demand.
S.92 :Compulsory licence shall be available for manufacture and export of patented
pharmaceutical products to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector for the concerned product to address public health problems, provided
compulsory licence has been granted by such country or such country has, by notification or
otherwise, allowed importation of the patented pharmaceutical products from India.
S.93 Order for license to operate as deed between parties concerned
Any order for the grant of a licence under this Chapter shall operate as if it were a deed granting a licence
executed by the patentee and all other necessary parties embodying the terms and conditions, if any, settled
by the Controller.
S.94 Termination of Compulsory Licence
(1) On an application made by the patentee or any other person deriving title or interest in the patent, a
compulsory licence granted under section 84 may be terminated by the controller, if and when the
circumstances that gave rise to the grant thereof no longer exist and such circumstances are unlikely to recur:
Provided that the holder of the compulsory licence shall have the right to object to such termination.
(2) While considering an application under section (1), the Controller shall take into account that the interest
of the person who had previously been granted the licence is not unduly prejudiced

Natco v. Bayer
BAYER is a chemical and pharmaceutical company founded in Barmen (today a part of Wuppertal),
Germany in 1863. It patented on the active pharmaceutical ingredient called Nexavar in 2008 to treat
liver and kidney cancer in India. NATCO PHARMA LIMITED was incorporated in Hyderabad in the year
1981. It manufactures and markets affordable medicines that comply with global standards.

Bayer, a German Pharma patented on the active pharmaceutical ingredient called Nexavar in 2008 to treat liver
and kidney cancer in India. But the company failed to reach the requirements of the public. The reasons for the
failure were

· The drug is exorbitantly priced and out of reach of most of the people.

· The drug which is a “life saving drug” was frequently in short supply even in cities.

· Failed to manufacture the drug in India even after four years from the patent grant date and further
failed to grant voluntary licence for manufacturing in India.
As these figures clearly demonstrate the neglectful conduct of the Patentee as far as India is concerned, it
forced the Indian Government to pass an order of compulsory license (CL) to NATCO Pharma, based in
Hyderabad against Bayer’s patent on drug Nexavar on March 09, 2012, which is India’s first compulsory
license.
**GOVERNMENT AQUISTION AND USE OF PATENTS (S.99 – S.102)

99. MEANING OF USE OF INVENTION FOR PURPOSES OF GOVERNMENT.—

(1) For the purposes of this Chapter, an invention is said to be used for the purposes of Government if it is
made, used, exercised or vended for the purposes of the Central Government, a State Government or a
Government undertaking.

(2) [Omitted by the Patents (Amendment) Act, 2002]

(3) Nothing contained in this Chapter shall apply in respect of any such importation, making or using of any
machine, apparatus or other article or of any such using of any process or of any such importation, using or
distribution of any medicine or drug, as may be made by virtue of one or more of the conditions specified in
section 47.

100. POWER OF CENTRAL GOVERNMENT TO USE INVENTIONS FOR PURPOSES

OF GOVERNMENT.—

(1) Notwithstanding anything contained in this Act, at any time after an application for a patent has been filed at
the patent office or a patent has been granted, the Central Government and any person authorised in writing by
it, may use the invention for the purposes of Government in accordance with the provisions of this Chapter.

(2) Where an invention has, before the priority date of the relevant claim of the complete specification, been
duly recorded in a document, or tested or tried, by or on behalf of the Government or a Government
undertaking, otherwise than in consequence of the communication of the invention directly or indirectly by the
patentee or by a person from whom he derives title, any use of the invention by the Central Government or any
person authorised in writing by it for the purposes of Government may be made free of any royalty or other
remuneration to the patentee.

(3) If and so far as the invention has not been so recorded or tried or tested as aforesaid, any use of the
invention made by the Central Government or any person authorised by it under sub-section (1), at any time
after grant of the patent or in consequence of any such communication as aforesaid, shall be made upon terms as
may be agreed upon either before or after the use, between the Central Government or any person authorised
under sub-section (1) and the patentee, or, as may in default of agreement be determined by the High Court on a
reference under section 103:
Provided that in case of any such use of any patent, the patentee shall be paid not more than adequate
remuneration in the circumstances of each case, taking into account the economic value of the use of the patent.
(4) The authorisation by the Central Government in respect of an invention may be given under this section,
either before or after the patent is granted and either before or after the acts in respect of which such
authorisation is given or done, and may be given to any person whether or not he is authorised directly or
indirectly by the applicant or the patentee to make, use, exercise or vend the invention or import the machine,
apparatus or other article or medicine or drug covered by such patent.

(5) Where an invention has been used by or with the authority of the Central Government for the purposes of
Government under this section, then, except in case of national emergency or other circumstances of extreme
urgency or for noncommercial use, the Government shall notify the patentee as soon as practicable of the fact
and furnish him with such information as to the extent of the use of the invention as he may, from time to time,
reasonably require; and where the invention has been used for the purposes of a Government undertaking, the
Central Government may call for such information as may be necessary for this purpose from such undertaking.

(6) The right to make, use, exercise and vend an invention for the purposes of Government under sub-
section (1) shall include the right to sell on noncommercial basis, the goods have been made in exercise of that
right, and a purchaser of goods so sold, and a person claiming through him, shall have the power to deal with the
goods as if the Central Government or the person authorised under sub-section (1) were the patentee of the
invention.

(7) Where in respect of a patent which has been the subject of an authorisation under this section, there is an
exclusive licensee as is referred to in sub-section (3) of section 101, or where such patent has been assigned to
the patentee in consideration of royalties or other benefits determined by reference to the use of the invention
(including payments by way of minimum royalty), the notice directed to be given under sub-section (5) shall
also be given to such exclusive licensee or assignor, as the case may be, and the reference to the patentee in sub-
section (3) shall be deemed to include a reference to such assignor or exclusive licensee.

101. RIGHTS OF THIRD PARTIES IN RESPECT OF USE OF INVENTION FOR PURPOSES

OF GOVERNMENT.—

(1) In relation to any use of a patented invention, or an invention in respect of which an application for a patent
is pending, made for the purposes of Government—

(a) by the Central Government or any person authorised by the Central Government under section 100; or

(b) by the patentee or applicant for the patent to the order made by the Central Government, the provisions of
any licence, assignment or agreement granted or made, between the patentee or applicant for the patent (or any
person who derives title for him or from whom he derives title) and any person other than the Central
Government shall be of no effect so far as those provisions—
 (i) restrict or regulate the use for the purposes of Government of the invention, or of any model document or
information relating thereto, or

(ii) provide for the making of payments in respect of any use of the invention or of the model, document or
information relating thereto for the purposes of Government , and the reproduction or publication of any model
or document in connection with the said use for the purposes of Government shall not be deemed to be an
infringement of any copyright subsisting in the model or document.

(2) Where the patent, or the right to apply for or obtain the patent, has been assigned to the patentee in
consideration of royalties or other benefits determined by reference to the use of the invention then, in relation
to any use of the invention made for the purposes of Government by the patentee to the order of the Central
Government, sub-section (3) of section 100 shall have effect as if that use were made by virtue of an authority
given under that section; and use of the invention for the purposes of Government by virtue of sub-section (3) of
that section shall have effect as if the reference to the patentee included a reference to the assignor of the patent,
and any sum payable by virtue of that sub-section shall be divided between the patentee and the assignor in such
proportion as may be agreed upon between them or as may in default of agreement be determined by the High
Court on a reference under section 103.

(3) Where by virtue of sub-section (3) of section 100, payments are required to be made by the Central
Government or persons authorised under sub-section (1) of that section in respect of the use of an invention for
the purposes of Government and where in respect of such patent there is an exclusive licensee authorised under
his licence to use the invention for the purposes of Government, such sum shall be shared by the patentee and
such licensee in such proportions, if any, as may be agreed upon between them or as may in default of
agreement be determined by the High Court on a reference under section 103 to be just, having regard to any
expenditure incurred by the licensee—

(a) in developing the said invention; or

(b) in making payments to the patentees other than royalties or other benefits determined by reference to the
use of the invention in consideration of the licence.

102. ACQUISITION OF INVENTIONS AND PATENTS BY THE CENTRAL GOVERNMENT.—

(1) The Central Government may, if satisfied that it is necessary that an invention which is the subject of an
application for a patent or a patent should be acquired from the applicant or the patentee for a public purpose,
publish a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in
respect of the invention or patent shall, by force of this section, stand transferred to and be vested in the Central
Government.
(2) Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the
patentee and other persons, if any, appearing in the register as having an interest in the patent.

(3) The Central Government shall pay to the applicant, or, as the case may be, the patentee and other persons
appearing on the register as having an interest in the patent such compensation as may be agreed upon between
the Central Government and the applicant, or the patentee and other persons; or, as may, in default of agreement,
be determined by the High Court on a reference under section 103 to be just having regard to the expenditure
incurred in connection with the invention and, in the case of a patent, the term thereof, the period during which
and the manner in which it has already been worked (including the profits made during such period by the
patentee or by his licensee whether exclusive or otherwise) and other relevant factors.

103. REFERENCE TO HIGH COURT OF DISPUTES AS TO USE FOR PURPOSES

OF GOVERNMENT.—

(1) Any dispute as to the exercise by the Central Government or a person authorised by it of the powers
conferred by section 100, or as to terms for the use of an invention for the purposes of Government thereunder
or as to the right of any person to receive any part of a payment made in pursuance of sub-section (3) of that
section or as to the amount of compensation payable for the acquisition of an invention or a patent under section
102, may be referred to the High Court by either party to the dispute in such manner as may be prescribed by the
rules of the High Court.

(2) In any proceedings under this section to which the Central Government is a party, the Central Government
may,—

(a) if the patentee is a party to the proceedings, petition by way of counter-claim for revocation of the patent
on any ground upon which a patent may be revoked under section 64; and

(b) whether a patentee is or is not a party to the proceedings, put in issue the validity of the patent without
petitioning for its revocation.

(3) If in such proceedings as aforesaid any question arises whether an invention has been recorded, tested or
tried as is mentioned in section 100, and the disclosure of any document regarding the invention, or of any
evidence of the test or trial thereof, would, in the opinion of the Central Government, be prejudicial to the public
interest, the disclosure may be made confidentially to the advocate of the other party or to an independent expert
mutually agreed upon.

(4) In determining under this section any dispute between the Central Government and any person as to terms
for the use of an invention for the purposes of Government, the High Court shall have regard to any benefit or
compensation which that person or any person from whom he derives title, may have received, or may be
entitled to receive, directly or indirectly in respect of the use of the invention in question for the purposes of
Government.

(5) In any proceedings under this section, the High Court may at any time order the whole proceedings or any
question or issue of fact arising therein to be referred to an official referee, commissioner or an arbitrator on
such terms as the High Court may direct, and references to the High Court in the foregoing provisions of this
section shall be construed accordingly.

(6) Where the invention claimed in a patent was made by a person who at the time it was made was in the
service of the Central Government or of a State Government or was an employee of a Government undertaking
and the subject-matter of the invention is certified by the relevant Government or the principal officer of the
Government undertaking to be connected with the work done in the course of the normal duties of the
Government servant or employee of the Government undertaking, then, notwithstanding anything contained in
this section, any dispute of the nature referred to in sub-section (1) relating to the invention shall be disposed of
by the Central Government conformably to the provisions of this section so far as may be applicable, but before
doing so the Central Government shall give an opportunity to the patentee and such other parries as it considers
have an interest in the matter to be heard.
IMPORTANT CASE LAWS

ajaj Auto Limited V. TVS Motor Company Limited JT 2009 (12) SC 103

This case was instituted in the year 2007 by Bajaj Auto Limited against T.V.S. Motor
Company Ltd. in the Madras High Court. In this case, the court held that the cases
related to copyright infringement including the cases of patent infringement took
many years to get disposed of. The court ordered the other courts for speedy
disposal of the cases related to copyright infringement. The parties often get caught
in getting an order for a temporary injunction. The court suggested that the
proceedings related to such cases be carried on a day to day basis and decision be
announced within 4 months of the initiation of the proceedings.

Novartis v. Union of India (2013) 6 SCC 1

In this case, a company Novartis filed an application before the court to grant the
patent to one of its drugs ‘Gleevec’ which they claimed was invented by them. In this
case, the court drew a distinction between invention and the discovery of an already
existing drug. Also, the court also formulated a new test for granting patents to
pharmaceutical products known as enhanced therapeutic efficacy. The court
introduced this test besides the other traditional tests mentioned under Article 3 of
the patents act to ensure that these patented products are made available to the
general public on nominal prices in times of need.

Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central

This case was one of the first cases of patent infringement in India after
independence. In this case, the plaintiff pleaded that an interim injunction order is
passed against the defendant’s selling of a generic form of the drug. The court
rejected the case saying that the sale of the patented product was for public interest
and also a case of a counterclaim for the revocation of the patent was ongoing in
another court.
Dr Snehlata C. Gupte v. Union of India & Ors (W.P. (C) No 3516 and 3517 of 2007)
Delhi HC)

The court, in this case, cleared the ambiguities related to the date as to when the
patent could be considered to be granted. Some contended that the patent is
granted as soon as the decision for its non-rejection comes. The due process of law
is the bedrock of legal provisions in the country. But the court held that the issue of
a certificate in case of granting patents is a mere formality and the application for
the grant of a patent would be considered to be accepted once the controller passes
the order.
Rights of Patentee (S.48)