SYMBIOSIS LAW SCHOOL

SYMBIOSIS INTERNATIONAL (DEEMED UNIVERSITY)

INTERNAL ASSESSMENT I
INTELLECTUAL PROPERTY RIGHTS
SEMESTER V
COURSE: BBA LL.B
DIVISION: E
NAME: AMAN TENGURIA
PRN: 17010126406
DATE: 6TH SEPT 2019

Rights of Patentee and Infringement of Patent

Word Count: 2516

(excluding ancillary pages and footnotes)

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 TABLE OF CONTENT

TABLE OF CONTENT...........................................................................................................2

I. INTRODUCTION: PATENT..............................................................................................3

II. RIGHTS OF PATENTEE..................................................................................................3

 PATENT DOES NOT CONFER ABSOLUTE MONOPOLY:....................................5

III. INFRINGMENT OF PATENT........................................................................................5

IV. ROLE OF TRIPS...............................................................................................................8

V. NOTABLE JUDGEMENTS...............................................................................................8

VI. CRITICAL ANALYSIS....................................................................................................9

VI. A. GRAPHICAL DATA REPRESENTATION...........................................................10

VII. CONCLUSION...............................................................................................................11

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 I. INTRODUCTION: PATENT

Patent protection is afforded to novel creations which have industrial and

technical application. The patent system, as generally believed, is founded on

the theory that inventions and innovations can be encouraged by granting

exclusive, time-limited proprietary rights, as a reward to the creators of these

inventions.1 It is

believed that without this incentive, fewer people would engage in such

activities, as their inventions would be easily appropriated by others who have

not shared in the time and costs of the invention. This would in turn lead to

fewer inventions and hence a lower rate of technological progress and social

well-being. From this perspective, the patent system seeks to reward the creator

of the invention, to avoid free-riding and to ensure technological progress of the

society. Intellectual Property provides exclusive rights to the holders to perform

a productive or commercial activity, but this does not include the right to exert

restrictive or monopoly power in a market or society. Undoubtedly, it is

desirable that in the interest of human creativity, which needs to be encouraged

and rewarded, intellectual property rights need to be provided. This right

enables the holder (creator) to prevent others from using his/her inventions,

designs or other creations.2

II. RIGHTS OF PATENTEE

1. Right to exploit the patent – The patentee has exclusive right after patent is granted to
him, to make use exercise, sell or distribute the patented article or subject in India. In case
of process patent, he has the right to use or exercise the method or process. This right can
be exercised by the agent or license of the patentee.

1
Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511.
2
Department-Related Parliamentary Standing Committee on Home Affairs, Ninety-Third Report on the
Competition Bill, 2001 available
at http://www.prsindia.org/uploads/media/1167471748/bill73_2007050873_Standing_Committee_Report_on_C
ompetition_Bill__2001.pdf (Last visited on Sep. 3, 2019)

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2. Right to assign and licence – Patentee is vested with power to assign, to grant licence, or
to deal with patent for consideration. If there are more than one owner of the patent, the
co-owner can assign his share of the patent to grant licence in respect thereof with the
consent of other co-owner and permitted by the controller.
3. Right to surrender the patent – Under section 63 of the patent act3.
a. A Patentee may, at any time by giving notice in the prescribed manner to the
controller, offer to surrender his patent.
b. Where such an offer is made, the controller shall advertise the offer in the
prescribed manner, and also notify every person other than the patentee whose
name appears in the register as having an interest in the patent.
c. Any person interested may, within the prescribed period after such advertisement,
give notice to the controller of opposition to the surrender, and where any such
notice is given the controller shall notify the patentee.
d. If the controller is satisfied after hearing the patentee and any opponent, if
desirous of being heard, that may properly be surrendered, he may accept the offer
and by order, revoke the patent.
4. Right before sealing – Section 244 provides that on and from the date of notification of
acceptance of a complete specification to until the date of sealing of patent, the applicant
will be entitled to the same privilege and right, as if a patent for invention had been sealed
on date of application of acceptance of complete specification.
5. Right to apply for patent of addition – Section (55 – 56)5 deal with ‘patent in addition’.
A patent of addition is the improvement or modification of an invention disclosed in the
complete specification of the ‘main invention’. U/s 546 of the act, a patentee has a tight to
apply for a ‘patent of addition’ relating to his ‘main invention’.
6. Right to make convention application – Every patentee in India has a right to make a
convention application or basic application for protection of his patent in other contention
countries, in case of international instrument being signed by the India and those other
convention countries. Generally, this right is dependent on the principle of ‘reciprocity’
and ‘national treatment’ in international law.
7. Right in case of infringement – Infringement is violation of any of the rights conferred
by the grant of patent. It is a violation of a patentee’s exclusive right to make, use,
3
The Patent Act, 1970 (39 of 1970), s.63.
4
The Patent Act, 1970 (39 of 1970), s.24.
5
The Patent Act, 1970 (39 of 1970), s.55 & 56.
6
The Patent Act, 1970 (39 of 1970), s.54.

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 exercise, sell or distribute the invention in India. In such a case patentee has right to sue
in district court having jurisdiction to try and entertain the declaration, injunction,
damages and account of profit.
8. Right to be issued duplicate patent – The patentee has right to apply u/s. 1547 of the
act, to the controller to issue duplicate patent if patent lost or destroyed his patent.
9. Right to be supplied copies and certificate – The patentee under rule 119 of the act may
obtain on payment of prescribed fee, certified copies of any entry in the register or
certificate of an extract from patent, specification and other public documents in the
patent office or from the registrar and other record.

 PATENT DOES NOT CONFER ABSOLUTE MONOPOLY: The patent right is not
an absolute right. It is a fettered right and is subjected to certain specific prescribed
constraints. The Patents Act balances well between individual rights of patentee and the
interest of general public. Section 47 provides certain conditions where exclusive rights
of patentee are limited by certain specific acts:
1. Any process may be used by or on behalf of the Government for the purpose
merely of its own use
2. Any machine, apparatus or other article may be made or used by any person, for
the purpose merely of experiment or research including the imparting of
instructions to pupils.

III. INFRINGMENT OF PATENT

The term ‘invention’ has not been defined by the Agreement on Trade Related

Aspects of Intellectual Property Rights (‘TRIPS’) nor does it admit of a precise

definition. Infringement therefore is nothing but violation of the monopoly right

of patentee to make, use, exercise, sell or distribute the invention in India. There

are two types of infringements of patent.

i. Direct Patent Infringement – This is the most common form of

infringement. This occurs when a product that is in close

resemblance in all consideration to the patented product is sold,

7
The Patent Act, 1970 (39 of 1970), s.154.

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 produced, used and distributed without the permission of the

inventor.

ii. Indirect Patent Infringement – This is further divided into two

parts which are 1. infringement by inducement is when a third

party causes another to indirectly infringe on the rights of the

patentee. This involves selling parts of a product that can only be

used by the patented invention, selling an instruction for usage of a

product in such a way that infringes the right of another existing

product. and 2. contributory infringement the marketing of parts

of patented invention which had been created to be used only in the

invention. Contributory infringement take place when the seller

intends for the product to be infringed.

a. ACTS AMOUNTS TO INFRINGEMENT OF PATENT –

1. One who actually manufactures the patented article without authority

of patentee.

2. One who uses a patented process without consent and authority of

patentee.

3. One who uses, exercise, sells or distributes a patented article or

process without any lawful authority.

b. ACTS NOT AMOUNTING INFRINGEMENT OF PATENT –

1. Innocent use of patent.

2. Use for experiment and instruction

3. Use of invention in foreign vessels

c. CLAIM AGAINST THE INFRINGER –

1. Declaration – Under specific relief act, a patentee may claim

declaration that the act of the infringer be declared unlawful and it be

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 declared that patentee is entitled to get compensation for the

infringement.

2. Injunction – This relief of injunction can be claimed under specific

relief act u/s 388 thereby perpetual preventive injunction is granted

against infringer by the civil court.

3. Damages – The patentee is entitled to claim liquidated or unliquidated

damages for infringement found the defendant infringer.

4. Account for profit – Whatever the profit an infringer has received for

the violation of patent; a patentee may claim the said profit to be

transferred to his account.

5. Certificate of validity – the patentee may seek remedy from the court

that the certificate in his favour be issued declaration the validity and

the duration of the certificate in favour of the patentee to safeguard

the interest of the patentee.

6. Cost – The patentee has right to claim cost of the expenses incurred

for filling of the suit as per the provision of C.P.C and Civil Manual,

Court may allow appropriate cost to the patentee if claimed for. While

deciding the suit, the court takes into consideration the terms of

patent, specification, extent of violation and balance of convenience,

etc.

Sr. No. Nature of Offence Punishment

1. Contravention of secrecy directions Imprisonment up to two

given u/s 35 by controller prohibiting years or fine or both.

the publication or communication of

information relating to defence

purpose. Sec. 118

8
The Specific Relief Act, 1963 s.38.

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 2. Falsification of entry in the register and Imprisonment up to two

tendering such entries in evidence. years or fine or both.

Sec.119
3. Unauthorized claim of patent rights. Fine up to rupees one lakh.

Sec. 120
4. Wrongful use of words “Patent Office” Imprisonment up to six

on place or document. Sec. 121 months or fine or both.

5. Refusal or failure to supply information Fine up to rupees ten lakh.

required under sec. 100(5) and sec.

146 regarding working of patent. Sec.

122
6. Practice by unregistered patent agent. In case of first offence fine

Sec. 123 up to rupees one lakh, in

case of second or

subsequent offence upto

rupees five lakh.

IV. ROLE OF TRIPS

7. TRIPS became effective on January 1, 1995 by agreement of WTO member states, who
then became obligated to implement domestic laws to comply with the TRIPS minimum
requirements.
8. Developing countries were initially given up to five years (i.e. until January 1, 2000) to
implement domestic laws in accordance with TRIPS.
9. Member states obligated to provide patent protection for an area of technology for
which no domestic protection existed as of the effective date of TRIPS received an
additional five years (for a total of ten years, or until January 1, 2005) to bring their
domestic laws into complete compliance with respect to product patents in the new area
of technology.

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 10. Both of these five-year provisions applied to India in the area of pharmaceuticals, as it
was a developing country and also a country whose laws had no provisions for
protection of patents of drug and pharmaceutical products.
11. The TRIPS Agreement forced developing countries to adopt product patents on
medicines. Prior to the negotiation of TRIPS, many countries excluded pharmaceuticals
from patentability to keep prices down. India allowed only process patents, which could
be used to reverse engineer the products.

V. NOTABLE JUDGEMENTS

 Chemical and Biotechnology Patents: Patent jurisprudence with respect to chemical

and biotechnological inventions is quite at its nascent stage. The jurisprudence
of patentability is constantly in a flux with the thresholds of novelty, utility and
obviousness changing to fit into the contours of new technological advances. In the
case KSR Internation Co. v. Teleflex Inc.9 Teleflex (Plaintiff) sued KSR
(Defendant) for patent infringement based on an electronic sensor that was added to
an existing pedal design by Defendant. A Defendant argued the Plaintiff’s patent
claim was invalid because the addition was obvious. US Supreme Court decision,
which is observed to be one of the landmark cases in patent law and has shaken the
foundation of our understanding of the test of obviousness. SC makes obviousness
easier to prove by replacing the TSM test with more flexible standards.

VI. CRITICAL ANALYSIS

Indian Patent Law allows for a mechanism termed pre-grant opposition, which allows a
third party to challenge the validity of a patent applications before it is granted. Such a
procedure is not recognized in most countries. However, it gives a much-required opportunity
to NGOs and other such public-spirited to bodies to present their case, and hence, plays a
uniquely important role in India. Pre-grant opposition has led to the rejection of patents of
many American companies, and hence, USA has expressed disapproval of this mechanism.
Globally too, USA has taken measures to limit the employment of this mechanism by
countries by including provisions in its trade agreements pre-emptively prohibiting countries
from introducing pre-grant opposition.
9
KSR Internation Co. v. Teleflex Inc 2007 SCC Online USSC 33

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Another controversial decision has been the granting of India’s first compulsory license to
Bayer’s patented drug Nexavar.10 Critics fear that this will open the floodgates, leading to a
plethora of compulsory licenses being issued. However, compulsory licensing is allowed by
TRIPS itself and the Patents Act too. And in all these years, India has invoked this provision
only once. Further, the move has forced the pharmaceutical companies to evolve new pricing
strategies. After the compulsory license was granted, there was a deluge of price cuts across
drugs. This brought some much needed relief to the people, and goes to prove effectiveness
of the mechanism.
A major criticism of the patent regime in India is that it doesn’t adequately protect
intellectual property. However, India is in full compliance with the clauses of TRIPS. Also,
all the recent controversial decisions, be it regarding compulsory licensing or rejecting of
patents has been done in accordance with the law, and the legality of these decisions has been
established by the Courts of the country.

VI. A. GRAPHICAL DATA REPRESENTATION

Fig 1. Patent Filing and grants

Source: World Bank, Controller General of Patents, Designs and Trademarks

10
Bayer Corporation Vs. Union of India 162(2009) DLT 371

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 Fig 2: Number of patent applications by foreigner in India is much higher
Source: World Bank, Controller General of Patents, Designs and Trademarks

Fig 3: Patent processed per examiner have come down. While that may be an indication that
examination is stringent clearly resources are not enough
Source: World Bank, Controller General of Patents, Designs and Trademarks

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 VII. CONCLUSION

The purpose of applying for a patent is to seek an exclusive right to use the invention, the
right to manufacture the invented product and market it. The patents secure the exclusive
right over the invention. The rights of the patentee are note obsolete but restrictive have been
imposed but this act itself. The patentee is duty bound to insure that the monopoly right
created by a patent is not used unfairly and does not act prejudicial to the public interest. The
failure of the patentee to discharge his duties would result in denial of patent rights by
government granting compulsory license or licenses of rights on the patent. Section 12211
provides that refusal or failure to furnish any information to the central government tor the
controller shall be punishable with fine which ma extent to ten lakh rupees.

11
The Patent Act, 1970 (39 of 1970), s.122.

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