Patents

What is a patent?
A patent is an exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or offers a
new technical solution to a problem. To get a patent, technical information
about the invention must be disclosed to the public in a patent application.

Object of Patent
The basic object of patent is to encourage new inventions. If a person is not
rewarded or protected he will not be interested to make new inventions. Thus,
patent protects the inventor and encourages him to make new inventions.

The objective of a patent is to provide a right to an inventor(s) to exclude

others from exploiting the patented invention. Therefore, other than the
inventor, no one can use, make or sell the patented invention without
permission from the inventor. This is often referred to as the exclusive right of
the invention.

Requirements for an invention to be Patentable

1. Novelty – A thing to be patented must be novel or new. Novelty cannot be

claimed if there has been prior use of such invention

2. Usefulness – An invention cannot be patented if it is of no use to the

mankind.

3. Inventive Step – The invention should not be obvious to a person skilled in

art to which the invention relates.

4. Industrial Applicability – The invention should be capable of application by

technical means on a larger basis.
There are three basic tests for any invention to be patentable:

Firstly, the invention must be novel, meaning thereby that the Invention must
not be in existence.

Secondly, the Invention must be non- obvious, i.e. the Invention must be a
significant improvement to the previous one; mere change in technology will
not give the right of the patent to the inventor.

Thirdly, the invention must be useful in a bonafide manner, meaning thereby

that the Invention must not be solely used in any illegal work and is useful to
the world in a bonafide manner.

An invention considered as new if, on the date of filing the application, any
such invention is not known to the public in any form, i.e. oral, writing, or any
other form.

A patent is a territorial right. Thus it can only be applied in the country where
it has been granted. A patent is a territorial right. Thus it can only be applied in
the country where it has been granted. Therefore, any legal action against
infringement or infringement of patent rights can only be taken in that
country. To obtain patent protection in different countries, each country must
apply for a patent. The Patent Cooperation Treaty (PCT) provides a way to file
an international patent application in which a patent can be filed through a
single patent application in a large number of countries. However, the PCT of
a patent remains discretionary of the individual patent office only after the
application is filed.

Rights and obligations of the patentee

-Rights of Patentee

Right to exploit patent: A patentee has the exclusive right to make use,
exercise, sell or distribute the patented article or substance in India, or to use
or exercise the method or process if the patent is for a person. This right can
be exercised either by the patentee himself or by his agent or licensees. The
patentee’s rights are exercisable only during the term of the patent.

Right to grant license: The patentee has the discretion to transfer rights or
grant licenses or enter into some other arrangement for a consideration. A
license or an assignment must be in writing and registered with the Controller
of Patents for it to be legitimate and valid. The document assigning a patent is
not admitted as evidence of title of any person to a patent unless registered
and this is applicable to assignee not to the assignor.

Right to Surrender: A patentee has the right to surrender his patent, but
before accepting the offer of surrender, a notice of surrender is given to
persons whose name is entered in the register as having an interest in the
patent and their objections, if any, considered. The application for surrender is
also published in the Official Gazette to enable interested persons to oppose.

Right to sue for infringement: The patentee has a right to institute

proceedings for infringement of the patent in a District Court having
jurisdiction to try the suit.

-Obligations of patentee

Government use of patents: A patented invention may be used or even

acquired by the Government, for its use only; it is to be understood that the
Government may also restrict or prohibit the usage of the patent under
specific circumstances. In case of a patent in respect of any medicine or drug,
it may be imported by the Government for its own use or for distribution in
any dispensary, hospital or other medical institution run by or on behalf of the
Government. The aforesaid use can be made without the consent of the
patentee or payment of any royalties.

Compulsory licenses: If the patent is not worked satisfactorily to meet the

reasonable requirements of the public, at a reasonable price, the Controller
may grant compulsory licenses to any applicant to work the patent.
A compulsory license is a provision under the Indian Patent Act which grants
power to the Government to mandate a generic drug maker to manufacture
inexpensive medicine in public interest even as a patent in the product is valid.
Compulsory licenses may also be obtained in respect of related patents where
one patent cannot be worked without using the related patent.

Revocation of patent: A patent may be revoked in cases where there has

been no work or unsatisfactory result to the demand of the public in respect
of the patented invention.

Invention for defense purposes: Such patents may be subject to certain

secrecy provisions, i.e. publication of the Invention may be restricted or
prohibited by directions of Controller. Upon continuance of such order or
prohibition of publication or communication of patented Invention, the
applicant is debarred for using it, and the Central Government might use it on
payment of royalties to the applicant.

Restored Patents: Once lapsed, a patent may be restored, provided that few
limitations are imposed on the right of the patentee. When the infringement
was made between the date of infringement and the date of the
advertisement of the application for reinstatement, the patentee has no
authority to take action for infringement.

How to obtain a Patent?

A patent is an intellectual property right which provides protection to an

inventor for an invention made by him. A patent is a right granted to a person
who has invented a new and useful article or an improvement of an existing
article or a new process of making an article.

A patent is territorial in extent which means patent granted in one state

cannot be enforced in another state unless the invention is patented in the
other state also. It is to be noted that patent does not exist in ideas. An idea
must be implemented and an invention must be made in order to make it
patentable.

Procedure of obtaining a Patent:

The following is the procedure to get a patent in India. Section 6 of the

Patents Act, 1970 provides who may apply for patents. The following persons
can make an application for patents:

(i) Any person claiming to be the true and first inventor of the invention.
(ii) 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.
(iii) Legal representative of any deceased person who immediately before his
death was entitled to make such an application. The application may be made
individually or jointly.

Section 7 of the Act deals with the form of application required. According to
it an application should be made for an invention in the prescribed form and
filed in the patent office .

-The application should state that the applicant has possession of the
invention and the name of the person claiming to be the true inventor must
be mentioned. If the application has not been made by the true inventor,
there must be a declaration that the applicant believes that such person is the
true and the first inventor of the invention.

-The application should be accompanied by a provisional or complete

specification about the invention.

-The complete specification must be submitted 12 months after the filing of

the application for patent. The complete specification should describe the
invention in a detailed manner. It should mention the best method to use such
invention. Such specification should end with a claim defining the scope of
such invention.
-Abstract containing technical information of the invention must be submitted
along with the complete specification. Claims must relate to a single invention
and should contain drawings wherever required.

-The application of patent shall be published in a public platform after a

period of 18 months from the date of filing. (or date of priority whichever is
earlier.)

-Then the applicant should make a request for examination of the application.
Such examination is made by the examiners of patents.

-He checks whether the application is consistent with the requirements of the
Act and whether there is any lawful ground of objection for the granting of
patent.

-Another ground that has to be considered is that whether such invention has
been published or claimed by any other person. To facilitate this the examiner
makes a search in the publications available in the Patent Office and
specifications of prior applications.

-After such examination, the Patent Office shall communicate to the applicant
relating to the objections for granting of patent. It is the duty of the applicant
to deal with and remove such objections. After removal of the objections, the
Controller will accept the complete specification and it shall be advertised in
the Official Gazette.

-After acceptance of the complete specification, the applicant shall receive

benefits of the grant, except being entitled to institute infringement
proceeding until the patent is granted.

-A notice of opposition by any person who is interested is allowed within 3

months from the date of publication in the Official Gazette. A copy of the
notice of opposition shall be forwarded by the Controller to the applicant. The
applicant may file a reply statement within a month from the date of receipt of
the copy. Then the process of providing evidences and hearing goes on. The
matter is heard and decided. When the application is accepted without
opposition the patent will be granted.

-If the inventor is interested, he may make a request for mentioning his name
in the patent. The final decision regarding mentioning of name depends on
the Controller. Mentioning of name does not in any way confer or take away
any rights of the Patentee.

Term of Patent:

According to the Patents Amendment Act, 2002 the term of every patent shall
be 20 years. The procedure of keeping a patent alive is by paying the renewal
fee from time to time.

*Revocation and surrender of patents

When a patent is found to have been improperly granted, it can be revoked or

invalidated. whereas surrender allows patent holders to voluntarily give up
their rights.

Revocation of patents:

As per section 64 of Indian patents act, following reasons could lead to a

patent being revoked:

1 If the innovation is illegal, immoral or against the rules of the society.

2. If the patented invention is not used or made available commercially within

a reasonable period of time, which is 4 years from filing.

3. If the patent was improperly obtained, or the rights of another person were
violated.

4. If the innovation was made public before the patent filing date. In such case,
it is no longer patentable.
5. If the innovation has no industrial applicability, it cannot be regarded as
patented invention.

Surrender:

Allowing the surrender of a patent is not always an easy option- A certification

confirming no ongoing legal proceedings for patent infringement or
revocation is ongoing needs to be added in order to guarantee that the offer
for surrender is legitimate, plus it is required to submit details of any such
pending actions, including their specifics and status. The patentee can
voluntarily revoke the patent through surrender to avoid invalidation.

This option is faster than allowing the patent to lapse, as it would take 19
months for it to lapse and no chance of its restoration.

Any interested person has the chance to object to the surrender within three
months of the notice's publication by delivering a notice of objection to the
Controller in duplicate using Form 14.

The opposition proceedings under Section 63 shall be conducted in

accordance with the rules governing the hearing of other opposition cases,
including the filing of written statements, reply statements, evidence
presentation, conducting hearings, and dealing with costs.

The Controller may provide the patentee instructions to return the patent if
they agree with the patentee's decision to surrender the patent. The Controller
will issue an order canceling the surrendered patent after receiving it, and it
will then be made public.

The Controller of Intellectual Property can solicit opposition from anybody

who might be interested in disputing the application, even if a patentee
submits an application for surrender to the patent office.
The decision to give up a patent should be carefully thought out, taking into
account any possible arguments against its validity or lack of enforceability.
Market factors, the potential for patent infringement, strategic business
decisions, simplification of the patent portfolio, invalidity or non-
enforceability, and patent flaws should all be taken into account.
Infringement of patents:

The Patents Act, 1970 does not provide specifications as to what would be considered
an infringement of a patented product. But it lays down two kinds of activities which,
when committed without the consent of the patent holder, would constitute
infringement:

1. Making, using, offering for sale, selling, importing the patented product,

2. Using the patented process, or using, offering for sale, selling, or importing the
product directly contained by that process.

Product patent

The 2005 amendment provided for product patent protection in contrast to the earlier
provision of the Act that provided for only process patent protection. Process patent
protection meant that only the process used for the manufacture of the product could
be patented and not the final product. So, even if the person used a different process
than the one used by the original inventor in order to make the same product, it would
not be considered a violation of the patent.

Types of patent infringement

There are different kinds of patent infringement that are possible. They are listed and
discussed as follows:

 Direct Infringement
 Indirect Infringement
 Contributory Infringement
 Literal Infringement
 Willful Infringement
Direct infringement

This is the most common type of patent infringement. As the name suggests, when a
patented product or method (or substantially similar, i.e. equivalent to them) is used,
marketed, sold, offered for sale, or imported without permission of the patentee during
the term of such a patent, it constitutes direct patent infringement. It is considered to be
of two types, viz- literal and non-literal patent infringement. They are discussed as
follows:

Literal infringement

As the word “literal” signifies, literal infringement is the type of direct patent
infringement where all the claims in the patent specification, match the features of the
infringing product or process.

To make things more precise, if a claimed invention is missing from the infringing
product or process, then such infringement will not be a literal infringement.

Non- literal infringement

Non-literal infringement is the type of patent infringement where the infringer has
made an equivalent product or process to the patented product or process and has
been using, selling, marketing, offering for sale, or importing the same without
permission of the patentee during the term of such a patent. It is best to understand

Indirect or induced infringement

Indirect infringement is a type of patent infringement where the patentee’s rights are
involuntarily or unwillingly infringed by an infringer.

Illustration: Suppose X has a patent on a particular type of sound system. Y makes a

substantially similar sound system (that infringes X’s patent) with the help of Z’s supply
of a particularly essential component. Here, Y has committed direct infringement, and Z
has committed indirect infringement of X’s patent rights.
Contributory infringement

Contributory patent infringement is a type of secondary patent infringement. This type

of infringement happens when an indirect infringer supplies a direct infringer with a part
that has no substantial non-infringing use. In other words, the indirect infringer,
knowing that such essential parts (components) will make the manufacturer cause direct
infringement, still supplies such parts.

Illustration: Suppose X has a patent on a particular type of sound system. Y makes a

substantially similar sound system (that infringes X’s patent) with the help of Z’s supply
of a particularly essential component. Here, Y has committed direct infringement, and Z
has committed indirect infringement of X’s patent rights. Now, if Z had supplied or sold
such an essential component knowingly, Z would have committed contributory
infringement.

Willful infringement

As the name suggests, willful infringement is the type of patent infringement in which
the infringer intentionally or willfully disregards and violates the patent rights of the
patentee. In other words, if the infringer had knowledge of the patent and still violated
the same, then such an infringement shall be a willful infringement.

So, what becomes important to establish here is that the infringer had knowledge of the
patent, and the patentee has the burden to prove this to establish willful infringement.

Usually, the patentee tries to discharge such onus by establishing that the infringer was
duly served notice but continued infringement nonetheless. In such a case, the infringer
has the defense to show that he had taken a legal opinion on the same and continued
infringement because he believed in a bona fide manner that such a patent was either
invalid or his actions did not constitute infringement.

If a patentee can successfully show willful infringement, then the infringer may have to
face substantial pecuniary penalties that usually cover the legal fees of the patentee and
even three to four times the actual damages faced by the plaintiff.
Doctrines related to patent infringement

Doctrine of Equivalents

In the event a patent infringement has not been done literally, it may have happened
under the judicially created doctrine of equivalents if the patented invention and the
allegedly infringing invention have the same function, way, or result. In other words, if
the allegedly infringing device performs substantially the same function in substantially
the same way to achieve the same result, then it shall constitute patent infringement
under the doctrine of equivalents. This doctrine has been accepted by most courts in the
world and permits the courts to hold a party liable for patent infringement even though
the infringing invention does not fall within the literal scope of the patent claims but
nevertheless is equivalent to the patented invention.

Doctrine of Colourable Variation

A colourable variation is an immaterial or insignificant variation. According to the

doctrine of colourable variation, if the infringer makes a slight modification to the
patented product or process but, in fact, takes in substance the essential features of the
patented invention, then it shall constitute patent infringement under the doctrine of
colourable variation.

Ways to prevent patent infringement:

1. Use of original products

2. Obtaining appropriate license from patent holder

3. Patents infringement suit

4. Temporary injunction

5. Permanent injunction
6. Damages