PATENT

Raniyal Niyada
 ➢ Patents: introduction and overview
of patent protection
➢ History of patent protections
➢ Meaning and definition of patent
➢ Object of patent
➢ Scope and salient features of patent
act
➢ How to obtain a patent
➢ Product patent and process patent
➢ Specification - provisional and

Syllabus
complete specification
➢ Opposition proceedings to grant of
patents
➢ Register of patents and patent office
➢ Rights and obligations of patentee
➢ Transfer of patent rights
➢ compulsory licenses
➢ Government use of inventions
➢ Revocation and surrender of patents
➢ Infringement of patents offences
and penalties.
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.

• Monopoly right- conferred on the inventor- by the patent officer

Brief History of Patents in India
● First Act VI of 1856 on protection of invention- enacted based on British
Patent Laws of 1852.
○ Exclusive privileges granted to inventors of new manufacturers for a
period of 14 yrs.
● Act modified as Act XV in1859- Patent monopolies –granted for 14
years from the date of filing of specification.
● Patent and Designs Act adopted in 1872
● Protection of Inventions Act -1883
● Consolidated in 1888 as Inventions and Designs Act.
● Indian Patent and Designs Act- 1911
● Amended in 1920 and then 1930 (to grant of secret patents, patent of
addition, use of invention by Government, powers of the Controller to
rectify register of patent and increase of term of the patent from 14 years
to 16 years)
● 1945, an amendment was made to provide for filing of provisional
specification and submission of complete specification within nine months.
● Justice (Dr.) Bakshi Tek Chand- Patent enquiry committee
● 1949- to review the patent law in India in order to ensure that the patent
system is conducive to the national interest.- Recommendation on working
of patents and compulsory license/ revocation.
● Based on these recommendation- A bill was introduced in Parliament- but it
failed.
Ayyangar Committee Report
● 1957- Justice N. Rajagopala Ayyangar Committee to examine the
question of revision of the Patent Law
● Report submitted in 2 parts
● The first part also dealt with evils of the patent system and solution with
recommendations in regards to the law.
● Recommended retaining patent system.
● Pointed out that patent law operates differently in industrial countries and
under developed countries. – because of their different technological and
economical development.
● Incorporated major recommendations – forming basis of Patents Bill
1965- lapsed
● 1967 re-introduced- referred to Joint Parliamentary committee.
● With the recommendation of committee- Patent Act of 1970- passed.
● repealed and replaced the 1911 Act
● Patents (Amendment) Act, 1999- To make the Act TRIPS Complainant
● Patents (Amendment) Act, 2002
● Patents (Amendment) Act 2005
Inventions
● Only Inventions are protected
● Invention- sec 2 (j)- “invention" means a new product or
process involving an inventive step and capable of industrial
application;

8
INVENTIONS NOT PATENTABLE - Chap 2
● Sec 3 and 4
● Sec 5- Omitted by 2005 Amendment
● Sec 4- Inventions relating to atomic energy not patentable-
● Sec 20(1) of Atomic Energy Act 1962- details.
● Acc to it ‘useful for or relate to the production, control, use or disposal of
atomic energy or the prospecting, mining, extraction, production,
physical and chemical treatment, fabrication, enrichment, canning or use
of any prescribed substance or radioactive substance or the ensuring of
safety in atomic energy operations.’
Sec 3 - What is not Invention
● Subsection a- p
1. frivolous or which claims anything obviously contrary to well
established natural laws- eg A machine alleged to give output without
input, 100% efficient machines
2. an invention the primary or intended use or commercial exploitation of
which could be contrary to public order or morality or which causes
serious prejudice to human, animal or plant life or health or to the
environment
○ Manual of Patent Office Practices and Procedure- device for theft,machine for
counterfieting coins
○ Primary objective
● the mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living thing or non-living substance
occurring in nature
○ Discovering new plants, animal species
○ Scientific theory means- statement about Natural world. – theories themselves
not inventions
○ Theories lead to practical application- then the application can be patented.
○ Discover new elements- use the element in some product- then patentable.
4.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
differ significantly in properties with regard to efficacy;
• F. Hoffimann-La Roche Ltd v. Cipla Ltd (2012)- stressed on explanation.
➢Erlotinib- patented.
➢Cipla is planning to launch a generic version of ‘Erlotinib.’- all forms are
protected under single registration.
• Can be patentable if they differ significantly in efficacy.
• Novartis AG v. UOI (2013)- Glivec- enhancement of known efficacy-
necessary.
• Discussed the term efficacy- different depending on substance- in
medicine- Therapeutic efficacy.
• Sec 3(d)- Discourages Evergreening of patents.
5. a substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a process for
producing such substance
○ M/S Stanipack Pvt Ltd v. M/s Oswal Trading Co Ltd- Pouch for
storage-not patentable- thickness of plastic/ tolerence etc known
6. the mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known way;
7. G omitted by 2002 act- Process patent
8. a method of agriculture or horticulture;
9. 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.-
10. 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;
11. a mathematical or business method or a computer programme per se
or algorithms;
12. a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions;
13. a mere scheme or rule or method of performing mental act or
method of playing game;
14. a presentation of information;
15. topography of integrated circuits;
16. an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components.
Conditions
● Only Inventions are protected
● Invention- sec 2 (j)- “invention" means a new product or process
involving an inventive step and capable of industrial application;
➢ Novelty
➢ Inventive Step/non obviousness
➢ Capable of industrial application
Novelty
● Sec 2(1)(l)- defines New Invention
● 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;
● Not part of state of the Art.
● Includes all matters made available in the public before the priority date
● Not anticipated- by publication or use in any country or elsewhere- before the
date of filing with complete specification.
● Subject matter not fallen in into public domain.
Inventive Step
● Defined under sec 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

● Ctr Manufacturing Industries Ltd vs Sergi Transformer Explosion

Prevention Technologies Pvt. Ltd.
○ Degree of inventiveness is not relevant.
● Test non-obviousness
● No inventive step- implies its obvious
● Strictly and objectively judged- Biswanath Prasad Radhey Shyam vs
Hindustan Metal Industries:
● Determined by qualified experts
● Graham v. John Deere Co. of Kansas City- US SC set out some criteria
➢ Scope and content of prior art
➢ Level of ordinary skill in prior Art
➢ Diff btw claimed invention and prior Art
● KSR International Co. v. Teleflex- US SC
➢ Laid down TSM Test- Teaching, Suggestion and Motivation
● Balaji Auto Ltd v. TVS Motor Company Ltd- India
➢ technical advance or having economic significance or both along with a
necessary factor that such invention should make it “not obvious to a person
skilled in the art.
➢ where a person of skill in the field, on-going through the specification would
complete the product.
Capable of Industrial Application
● Invention must be capable of being made use in industry
● Indian Vacuum Brake Co. Ltd v. E.S. Luard- Mere usefulness not
enough
● Some commercial viability required.

22
Product v. Process Patent
● Prior to 2005 Amendment Act
● Only process patent were granted in respect of food, drugs and
pharmaceuticals in India

23
How to Obtain Patents
● Patent granted for 20 years
● Who can apply??- Sec 6

1. by any person claiming to be the true and first inventor of the invention;

2. 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;

3. by the legal representative of any deceased person who immediately before his
death was entitled to make such an application.
True & First Inventor
• Who has first made an invention
• Two people – makes same invention independently – not disclosed it-
who applied first .
• Even if the first applied person has invented it later
• Sec 2 (1)(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.
• Norris’ Patent in re (1988)- Person who contributed one of the two
main ideas- co- inventor

25
 • V.B. Mohammed Ibrahim v. Alfred Schafranek –
• Investors that contributes only monetarily cannot be considered as
inventor
• Need to contribute some ingenuity or skill or technical knowledge
towards in invention.
• Generally- invention made in the course of employment – belongs to
employer.
• Patchett v. Sterling- Need a positive contract

20XX presentation title 26

 Assignee
• Sec 2 (1)(ab) "assignee" includes an assignee of the assignee and the
legal representative of a deceased assignee and references to the assignee
of any person include references to the assignee of the legal
representative or assignee of that person;
• Assignee- include natural or legal person- including company, research
organization, educational institution or government.
• Includes Assignee of Assignee and the legal representatives of deceased
assignee.
• Shinning Industries v. Shri Krishna Industries – assignment to firm is
a valid assignment.

2022 Raniyal Niyada 27

 Form of Application
• Application to be filed at Patent office
• In prescribed form- sec 7
• Territoriality
✓Place of residence, domicile or business of the applicant ( first
mentioned applicant in the case of joint application
✓Place from which invention originated
✓Foreign application- address for service in India given by the
applicant- when applicant has no place of business/ domicile in
India.

20XX presentation title 28

 • The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the
Union Territories of Daman & Diu and Dadra & Nagar Haveli
Mumbai

• The States of Haryana, Himachal Pradesh, , Punjab, Rajasthan, Uttar

Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union
Delhi Territories of Chandigarh, Jammu and Kashmir, and Ladakh.

• The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and
the Union Territories of Pondicherry and Lakshadweep.
Chennai

• Rest of India (States of Bihar, Jharkhand, Orissa, West Bengal, Sikkim, Assam,
Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union
Kolkata Territory of Andaman and Nicobar Islands)

20XX presentation title 29

 Specification
• Every application must be accompanied by a provisional or a complete
specification- Sec 7 (4)
• Specification- Written description of the invention
• Invention can be disclosed on paper- but not attained final stage-
Provisional Specification.
• Imperial Chemical Industries Ltd Applications- Provisional
specification – description of general nature of invention, field of
application and anticipated result.

20XX presentation title 30

 • Provisional specification- grants priority dates for the application.
✓Useful for prior art search.
• Can improve the invention and file complete specification
• Complete specification to include full and particular description of
invention.
• Disclosure such that -A person skilled in the art- must be able to
perform the invention.
• Including best method of Performing the invention- F. Hoffimann-La
Roche Ltd v. Cipla Ltd

20XX presentation title 31

 • Techno-legal document.
• Describe the various features
• Specification two parts-
1. The description- including drawings- Disclose the invention
sufficiently
2. Claims- Mark out the scope of the monopoly rights that are
likely to be conferred by the patent office
• PS- Ascertain and describe the nature of invention; CS-also explain
the manner in which the invention is to be carried out in execution

20XX presentation title 32

 Essentials of Complete Specification
1. Fully and particular description of invention, its operation or use,
and method by which it is to be performed.
2. Best method of performing the invention as known to the
applicant and for which he is entitled to claim protection.
3. Claims defining the scope of intervention for which protection is
claimed.
4. Abstract – technical information on the invention

20XX presentation title 33

 Elements as described in Patent Manual
1. Title
2. Field of Invention and use of invention
3. Prior Art and Problem to be solved
4. Object of invention
5. Summary of invention
6. Detailed description of invention
7. Drawings, Model or sample
8. Abstract
9. Claims

20XX presentation title 34

 PATENT
SEARCH
PRACTICALS

20XX presentation title 35

OPPOSITION OF PATENTS

PRE- GRANT
OPPOSITION

POST-GRANT
OPPOSITION
 Opposition Proceedings
• Chapter V, Sec 25- 28 deals with opposition Proceedings
• Once the patent application is made- it gets published.
• 18 months from the date of filing or the date of priority of the
application.
• Earlier- if the applicant make a request to the controller to publish
• Before the grand of patent- once published- any person can oppose the
grant.- Pre- grant opposition
• Before 2005 amendment- only person interested.- i.e., a person
engaged in or in promoting research in the same field as the invention.

20XX presentation title 37

 Grounds Sec 25(1)(a) to (k)
• Wrongfully obtaining the invention
• anticipation by prior publication
• anticipation by prior date, Prior claiming in India
• Prior public knowledge or public use in India
• Obviousness and lack of inventive step
• non patentable subject matter
• insufficiency of description of the invention

20XX presentation title 38

 • non-disclosure of information as per the requirement or providing
materially false information by an applicant
• Patent application not filed within 12 months of filing the first
application in a convention country
• nondisclosure/ wrong mention of source of biological material
• Invention anticipated with regard to traditional knowledge of any
community, anywhere in the world.

20XX presentation title 39

 Procedure
• A representation to the Controller based on any of the grounds
• Representation to include a statement, a request for hearing and evidence (if any)
• Controller notifies the applicant with a copy of the representation.
• Applicant to file reply within three months from the date of the notice
• Controller- either refuses the grant of the patent or asks the applicant for
amendment of the complete specification to his satisfaction
• Final decision to be made within one month

20XX presentation title 40

 Procedure for Grant
• Publication
• Request for Examination- Only upon application for examination is
made by the applicant or any other interested persons – Sec 11B
• If no application is made within 48 months- considered as
withdrawn.
• Including- compliance with rules, other lawful ground for rejection,
Sec 13 anticipation search report etc
• Report within one moth- extendable upto 3 months – to controller
• Controller to take final decision- After hearing the applicant.

20XX presentation title 41

 Post Grant Opposition- Sec 25(2)
• By Interested Party
• Defined in 2(1)(t); person interested" includes a person engaged in, or in
promoting research in the same field as that to which the invention
relates;
• Within 12 months from the date of publication of grant in Journal
• Same grounds as post grant
• File a notice of opposition

20XX presentation title 42

 Procedure- sec 25(2)-(6)
➢The Controller - constitute an Opposition Board consisting of three members and nominate one
of the members as the Chairman of the Board. An examiner who was involved in the
prosecution of the application cannot be a member of the Board.

➢The patentee - reply - within two months of receiving the notice. – else Patent deemed to be
revoked.

➢Opponent may also file evidence in reply to the response from the patentee within one month
from the date of receipt of reply by the Patentee.

➢The Board conducts an examination of the opposition notice along with replies submitted by the
patentee and the opponent.

➢The Board submits a report within three months from the receipt of all the documents and
evidences

20XX presentation title 43

 • Hearing by controller – patentee and opponents
• Discussion+ Recommendation of opposition board- Controller
decides
• Either- revokes a patent, amends etc.

20XX presentation title 44

 Appeal
• Old provision- The Controller’s decision - appealed to the IPAB
(Intellectual Property Appellate Board) with a period of 3 months
from the date of order.
• Controller grants a patent after refusing a pre-grant opposition, an
appeal can only be made to the High Court and not to IPAB
• Now all Appeal lies to High Court - Tribunals Reforms
(Rationalisation and Conditions of Service) Ordinance, 2021

20XX presentation title 45

 Register of Patents – chap XIII
• Sec 67- Contents- including name, address of patentee etc.
• Contains all the updated information regarding a patent that is
granted- including notifications of assignments, extension, and
revocations of patents.
• Maintained at patent office - Serves as database
• Prima Facia evidence for every proceeding instigated under the act
• Any change in title, interest or information- to be reflected in
register
• Certified true copy- of Extract from register- admissible evidence
under all court proceedings

20XX presentation title 46

 • Sec 72- Register to be open for inspection

20XX presentation title 47

 Patent office
• The Office of the Controller General of Patents, Designs and Trade
Marks (CGPDTM) generally known as the Indian Patent Office, -
agency under the Department for Promotion of Industry and Internal
Trade which administers the Indian law of Patents, Designs and Trade
Marks
• Head office Mumbai
• Supported by Joint and Deputy Controllers
• Patent Examiners- examine the patents and assist the controller

20XX presentation title 48

 • Sec 73- Controller and other officers - The Controller General of Patents,
Designs and Trade Marks appointed under sub-section (1) of section 3 of
the Trade Marks Act, 1999 (47 of 1999), shall be the Controller of
Patents
• Central govt to appoint as many examiner and other officers
• Sec 73- Patent office and its branches- Authority central government
• Sec 75- All officers and employess of patent office- incapable of acquire
or take any right or interest in any patent- except bai inheritance- during
the employment

20XX presentation title 49

 Patent Office Structure

20XX presentation title 50

 TERM OF PATENT

• Sec 53- Twenty years from

the date of filing of patent

20XX presentation title 51

 Rights of patentee- Sec 48
1. where the subject matter of the 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
2. 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

20XX presentation title 52

 Elaborate Rights
1. Right to exploit the patent: Product- right to use, produce, market
import or export the product ; process- to use the process.
• By himself, agent or licensee
2. Right to Grant or assign Licenses-
• Sec 69(5)- for the purpose of producing and distributing the
patented products ;
• Joint patent- all must agree;
• written and filed with the patent office

20XX presentation title 53

 3. Right to Surrender Patent :
• Chap XII, SEC 63
• Giving notice to the controller- offer to surrender
• Controller to publish the offer
• Notify- every person of interest as appeared in register
• Any person interested- can oppose
• Hearing the patentee and opponent
• Afterwards- Controller- may accept the offer and by order revoke
the patent.

20XX presentation title 54

 4. Right to sue for infringement:
• Chap XVIII, SEC 104
• At district Court- for infringement
• used, manufactured or sold for commercial purposes by any person
• 104 A- initial burden of proof- on the patentee- later shifts to
defendant.
• Relief- injunction, damages or account of profit.,

20XX presentation title 55

 Obligations
1. Work the patents- Sec 83
• Invention worked within India on a commercial scale – without undue
delay
• Not mere importation is enough
• promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and
users of technological knowledge and in a manner conducive to social
and economic welfare, and to a balance of rights and obligations
• Patent- must not act against public health and must promote public
interest in socio-economic and technological development

20XX presentation title 56

 • patents granted do not in any way prohibit Central Government
in taking measures to protect public health
• patent right is not abused by the patentee or person deriving title or
interest on patent from the patentee, and the patentee or a person
deriving title or interest on patent from the patentee does not resort
to practices which unreasonably restrain trade or adversely affect
the international transfer of technology
• that patents are granted to make the benefit of the patented invention
available at reasonably affordable prices to the public.

20XX presentation title 57

 Compulsory Licensing
• Chapter XVI, Sec 84
• 3 years after the date of grant of patent – application to any person to the
controller – for grant to CL
• Grounds
1. that the reasonable requirements of the public with respect to the
patented invention have not been satisfied, or
2. that the patented invention is not available to the public at a
reasonably affordable price, or
3. that the patented invention is not worked in the territory of India.

20XX presentation title 58

 • Controller- upon satisfication that the above gorund are met- grant a
liense- upon terms deem fit
• Consideration- nature of invention, time elapsed, ability of applicant to
work the invention, capacity to applicant in providing capital and
working the patents, whether made efforts to obtain VL on reasonable
terms and conditions and whether it was not successful within
reasonable period( 6 months)
• In 4 cases- VL need not be sought.

20XX presentation title 59

 • Circumstances:
1. national emergency
2. other circumstances of extreme urgency
3. in case of public non-commercial use
4. on establishment of a ground of anti-competitive practices adopted
by the patentee,

20XX presentation title 60

 Reasonable requirement of Public not Met
• Sec 84 (7)
1. Because- patentee refuse to grant a license or licenses on reasonable terms,
a. 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 of any person or class
of persons trading or manufacturing in India is prejudiced
b. the demand for the patented article has not been met to an adequate extent or on
reasonable term
c. a market for export of the patented article manufactured in India is not being
supplied or developed
d. The establishment or development of commercial activities in India is
prejudiced

20XX presentation title 61

 2. Due to reason imposed by the patentee at the grant of licence- 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
3. if the patentee imposes a condition upon the grant of licenses under the
patent to provide exclusive grant back, prevention to challenges to the
validity of patent or coercive package licensing
4. 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,

20XX presentation title 62

 5. 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
ii. persons directly or indirectly purchasing from him
iii.other persons against whom the patentee is not taking or has not
taken proceedings for infringement.

20XX presentation title 63

 CL granted by Controller- sec 86
• If satisfied – further hearing – within 12 months
• Sec 87- Procedure
• Prima facia case established by the applicant to the satisfacation og
Controller
• Serve copies of the application to patentee, and other person on
interest
• Opposition notice and heard
• Sec 88- Power of Controller in granting CL- if the controller is
satisfied of the grounds- grant CL

20XX presentation title 64

 • Sec 88(3)- Two patents held by same person- CL established based on
reasonable requirement of public not satisfied - Controller is satisfied that
the applicant cannot efficiently or satisfactorily work the license
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 license is granted under section 84.

20XX presentation title 65

 Nature of CL
• Non-exclusive
• Non assignable
• For the rest of the term- unless a shorter period is consistent with
public interest
• Predominantly to supply in Indian market-
• Can also grant for export
• Cannot import

20XX presentation title 66

 Termination of CL – Sec 90
• Based on an application by Patentee or person deriving title or
interest
• To controller
• On the ground that the situation that to CL is no more in
existence and such circumstances are unlikely to recur
• CL holder- can oppose
• His rights must not be prejudice

20XX presentation title 67

 Bayer Corporation v. Union of India
• Sorafenib Tosylate- with market name Nexavar, in the year 2008 in
India.
• Selling it for 10,000/- Month
• Natco Pharma Ltd- Approached Bayer for VL- provide the patented
drug to public at a reasonable and affordable price- 428/ month
• VL denied- 3 yrs Later CL applied- granted- 6% royalty, general license
and for the rest of term of patent, non assignable and non transferable
• Court- Upheld the validity of CL

20XX presentation title 68

 Government Use
• Chap XVII
• Sec100- Anytime after application filed or patent granted- C. Govt –
can use for govt purpose
• With or without remuneration
• Must notify Patentee- as practicable as possible and the extent of use
• Exception- National Emergency, other circumstance of extreme
urgency, non-commercial use.
• 102- Acquiring of patents- in public interest- with compensation

20XX presentation title 69

 Revocation
• Sec 64- 3 ways- by High Court
1. Petition by any person interested
2. The central government
3. Counter claim in a suit for infringement of patents
• On grounds a-q- including lack of novelty; patentee not entitled to claim
the invention; wrongfully obtained patent; not an invention; copy of earlier
invention; non-obiousness and lack of inventive step; not useful;
incomplete complete specification; claim not clearly defined; false
suggestion; non-patentability of subject matter; prior secret use; false
disclosure; wrongful mention of source of geographical origin of
biological material; traditional knowledge.

20XX presentation title 70

 • Can be revoked by High Court- on petition by C. Govt- for non-failure
to comply with government use of invention on reasonable term-
without reasonable cause
• Notice of revocation – to be share with parties of interest
• Sec 65- Revocation of patents – in case of atomic energy- after grant-
If C.govt satisfied that the patented invention relates to atomic energy-
direct controller to revoke – after due notice and hearing
• Sec 64- Revocation of patent by C.G for public interest – after hearing

20XX presentation title 71

 Transfer of Patent Rights
• Patent is a transferable right
• 3 ways of Transfer
1. Assignment
2. Licenses
3. Operation of Law

20XX presentation title 72

 Assignment
• 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.
• reduced to writing in a document embodying all the terms and
conditions governing the rights and obligations between the parties –
Sec 68
• application for registration of such document should be filed in the
prescribed manner in Form-16- in Patent Registry- Sec 69

20XX presentation title 73

 Modes of Assignment
1. 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 legal assignee entitled as the proprietor of the patent acquires all
rights thereof.
2. Equitable Assignment
• patentee agrees to give a certain defined share of the patent to another
person
• Person of Interest, name not entered in the register

20XX presentation title 74

 3. Mortgages
• patent rights are wholly or partly transferred to assignee in
return for a sum of money.
• the assignor repays the sum to the assignee, the patent
rights are restored to assignor/patentee.
• Mortgagee

20XX presentation title 75

 Licenses
• Sec 70- Power to grant license
• Must be written and signed by both the parties
• Types of Licenses:
1. Voluntary License
2. Statutory License(such as compulsory License)
• Exclusive or non-exclusive

20XX presentation title 76

 Operation of Law
• By way of death – passing on to his legal heirs
• Dissolution or winding up of a company etc

20XX presentation title 77

 Infringement of patents offences and
penalties.
• 104- District Court- Jurisdiction
• 108. Reliefs in suits for infringement- injunction, damages or an
account of profits, including order the seized, forfeited or destroyed or
counterfeit goods
• 105- Power of court to make declaration as to non-infringement-
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 Act.

20XX presentation title 78

 • 110. Right of licensee under section 84 to take proceedings
against infringement.- If patentee refuses or neglects to do it
within two months
• 120. Unauthorised claim of patent rights- If any person
falsely represents that any article sold by him is patented in
India or is the subject of an application for a patent in India, he
shall be punishable with fine which may extend to one lakh
rupees.

20XX presentation title 79

THANK YOU
Raniyal Niyada