The Patents Act

THE PATENTS ACT, 1970

[As amended by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

 

CHAPTER 1 – PRELIMINARY

1. SHORT TITLE, EXTENT AND COMMENCEMENT.
2. DEFINITIONS AND INTERPRETATION.

CHAPTER 2 – INVENTIONS NOT PATENTABLE

3. WHAT ARE NOT INVENTIONS.
4. INVENTIONS RELATING TO ATOMIC ENERGY NOT PATENTABLE.
5. INVENTIONS WHERE ONLY METHODS OR PROCESSES OF MANUFACTURE PATENTABLE.

CHAPTER 3 – APPLICATIONS FOR PATENTS

6. PERSONS ENTITLED TO APPLY FOR PATENTS.
7. FORM OF APPLICATION.
8. INFORMATION AND UNDERTAKING REGARDING FOREIGN APPLICATIONS.
9. PROVISIONAL AND COMPLETE SPECIFICATIONS.
10. CONTENTS OF SPECIFICATIONS.
11. PRIORITY DATES OF CLAIMS OF A COMPLETE SPECIFICATION.

CHAPTER 4 – PUBLICATION AND EXAMINATION OF APPLICATIONS

11A. PUBLICATION OF APPLICATIONS.
11B. REQUEST FOR EXAMINATION.
12. EXAMINATION OF APPLICATION.
13. SEARCH FOR ANTICIPATION BY PREVIOUS PUBLICATION AND BY PRIOR CLAIM.
14. CONSIDERATION OF THE REPORT OF EXAMINER BY CONTROLLER.
15. POWER OF CONTROLLER TO REFUSE OR REQUIRE AMENDED APPLICATIONS, ETC., IN CERTAIN CASE.
16. POWER OF CONTROLLER TO MAKE ORDERS RESPECTING DIVISION OF APPLICATION.
17. POWER OF CONTROLLER TO MAKE ORDERS RESPECTING DATING OF APPLICATION.
18. POWERS OF CONTROLLER IN CASES OF ANTICIPATION.
19. POWERS OF CONTROLLER IN CASE OF POTENTIAL INFRINGEMENT.
20. POWERS OF CONTROLLER TO MAKE ORDERS REGARDING SUBSTITUTION OF APPLICANTS, ETC.
21. TIME FOR PUTTING APPLICATION IN ORDER FOR GRANT.
22. ACCEPTANCE OF COMPLETE SPECIFICATION.
23. ADVERTISEMENT OF ACCEPTANCE OF COMPLETE SPECIFICATION.
24. EFFECT OF ACCEPTANCE OF COMPLETE SPECIFICATION.

CHAPTER 4A (Omitted) – EXCLUSIVE MARKETING RIGHTS

24A. APPLICATION FOR GRANT OF EXCLUSIVE RIGHTS.
24B. GRANT OF EXCLUSIVE RIGHTS.
24C. COMPULSORY LICENCES.
24D. SPECIAL PROVISION FOR SELLING OR DISTRIBUTION.
24E. SUITS RELATING TO INFRINGEMENTS.
24F. CENTRAL GOVERNMENT AND ITS OFFICERS NOT TO BE LIABLE.

CHAPTER 5 – OPPOSITION PROCEEDINGS TO GRANT OF PATENTS

25. OPPOSITION TO THE PATENT.
26. IN CASES OF “OBTAINING” CONTROLLER MAY TREAT THE PATENT AS THE PATENT OF OPPONENT.
27. REFUSAL TO PATENT WITHOUT OPPOSITION.
28. MENTION OF INVENTOR AS SUCH IN PATENT.

CHAPTER 6 – ANTICIPATION

29. ANTICIPATION BY PREVIOUS PUBLICATION.
30. ANTICIPATION BY PREVIOUS COMMUNICATION TO GOVERNMENT.
31. ANTICIPATION BY PUBLIC DISPLAY, ETC.
32. ANTICIPATION BY PUBLIC WORKING.
33. ANTICIPATION BY USE AND PUBLICATION AFTER PROVISIONAL SPECIFICATION.
34. NO ANTICIPATION IF CIRCUMSTANCES ARE ONLY AS DESCRIBED IN SECTIONS 29, 30, 31 AND 32.

CHAPTER 7 – PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

35. SECRECY DIRECTIONS RELATING TO INVENTIONS RELEVANT FOR DEFENCE PURPOSES.
36. SECRECY DIRECTIONS TO BE PERIODICALLY REVIEWED.
37. CONSEQUENCES OF SECRECY DIRECTIONS.
38. REVOCATION OF SECRECY DIRECTIONS AND EXTENSION OF TIME.
39. RESIDENTS NOT TO APPLY FOR PATENTS OUTSIDE INDIA WITHOUT PRIOR PERMISSION.
40. LIABILITY FOR CONTRAVENTION OF SECTION 35 OR SECTION 39.
41. FINALITY OF ORDERS OF CONTROLLER AND CENTRAL GOVERNMENT.
42. SAVINGS RESPECTING DISCLOSURE TO GOVERNMENT.

CHAPTER 8 – GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY

43. GRANT OF PATENTS.
44. AMENDMENT OF PATENT GRANTED TO DECEASED APPLICANT.
45. DATE OF PATENT.
46. FORM, EXTENT AND EFFECT OF PATENT.
47. GRANT OF PATENTS TO BE SUBJECT TO CERTAIN CONDITIONS.
48. RIGHTS OF PATENTEES.
49. PATENT RIGHTS NOT INFRINGED WHEN USED ON FOREIGN VESSELS ETC., TEMPORARILY OR ACCIDENTALLY IN INDIA.
50. RIGHTS OF CO-OWNERS OF PATENTS.
51. POWER OF CONTROLLER TO GIVE DIRECTIONS TO CO-OWNERS.
52. GRANT OF PATENT TO TRUE AND FIRST INVENTOR WHERE IT HAS BEEN OBTAINED BY ANOTHER IN FRAUD OF HIM.
53. TERM OF PATENT.

CHAPTER 9 – PATENTS OF ADDITION

54. PATENTS OF ADDITION.
55. TERM OF PATENTS OF ADDITION.
56. VALIDITY OF PATENTS OF ADDITION.

CHAPTER 10 – AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

57. AMENDMENT OF APPLICATION AND SPECIFICATION OR ANY DOCUMENT RELATING THERETO BEFORE CONTROLLER.
58. AMENDMENT OF SPECIFICATION BEFORE HIGH COURT.
59. SUPPLEMENTARY PROVISIONS AS TO AMENDMENT OF APPLICATION OR SPECIFICATION.

CHAPTER 11 – RESTORATION OF LAPSED PATENTS

60. APPLICATIONS FOR RESTORATIONS OF LAPSED PATENTS.
61. PROCEDURE FOR DISPOSAL OF APPLICATIONS FOR RESTORATION OF LAPSED PATENTS.
62. RIGHTS OF PATENTEES OF LAPSED PATENTS WHICH HAVE BEEN RESTORED.

CHAPTER 12 – SURRENDER AND REVOCATION OF PATENTS

63. SURRENDER OF PATENTS.
64. REVOCATION OF PATENTS.
65. REVOCATION OF PATENT OR AMENDMENT OF COMPLETE SPECIFICATION ON DIRECTIONS FROM GOVERNMENT IN CASES RELATING TO ATOMIC ENERGY.
66. REVOCATION OF PATENT IN PUBLIC INTEREST.

CHAPTER 13 – REGISTER OF PATENTS

67. REGISTER OF PATENTS AND PARTICULARS TO BE ENTERED THEREIN.
68. ASSIGNMENTS, ETC., NOT TO BE VALID UNLESS IN WRITING AND DULY EXECUTED.
69. REGISTRATION OF ASSIGNMENTS, TRANSMISSIONS, ETC.
70. POWER OF REGISTERED GRANTEE OR PROPRIETOR TO DEAL WITH PATENT.
71. RECTIFICATION OF REGISTER BY HIGH COURT.
72. REGISTER TO OPEN FOR INSPECTION.

CHAPTER 14 – PATENT OFFICE AND ITS ESTABLISHMENT

73. CONTROLLER AND OTHER OFFICERS.
74. PATENT OFFICE AND ITS BRANCHES.
75. RESTRICTION ON EMPLOYEES OF PATENT OFFICE AS TO RIGHT OR INTEREST IN PATENTS.
76. OFFICERS AND EMPLOYEES NOT TO FURNISH INFORMATION, ETC.

CHAPTER 15 – POWERS OF CONTROLLER GENERALLY

77. CONTROLLER TO HAVE CERTAIN POWERS OF A CIVIL COURT.
78. POWER OF CONTROLLER TO CORRECT CLERICAL ERRORS ETC.
79. EVIDENCE HOW TO BE GIVEN AND POWERS OF CONTROLLER IN RESPECT THEREOF.
80. EXERCISE OF DISCRETIONARY POWERS BY CONTROLLER.
81. DISPOSAL BY CONTROLLER OF APPLICATIONS FOR EXTENSION OF TIME.

CHAPTER 16 – WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION

82. DEFINITION OF “PATENTED ARTICLES” AND “PATENTEE”.
83. GENERAL PRINCIPLES APPLICABLE TO WORKING OF PATENTED INVENTIONS.
84. COMPULSORY LICENCES.
85. REVOCATION OF PATENTS BY THE CONTROLLER FOR NON-WORKING.
86. POWER OF CONTROLLER TO ADJOURN APPLICATIONS FOR COMPULSORY LICENCES, ETC., IN CERTAIN CASES.
87. PROCEDURE FOR DEALING WITH APPLICATIONS UNDER SECTIONS 84 AND 85.
88. POWERS OF CONTROLLER IN GRANTING COMPULSORY LICENCES.
89. GENERAL PURPOSES FOR GRANTING COMPULSORY LICENCES.
90. TERMS AND CONDITIONS OF COMPULSORY LICENCES.
91. LICENSING OF RELATED PATENTS.
92. SPECIAL PROVISION FOR COMPULSORY LICENCES ON NOTIFICATIONS BY CENTRAL GOVERNMENT.
92A. COMPULSORY LICENCE FOR EXPORT OF PATENTED PHARMACEUTICAL PRODUCTS IN CERTAIN EXCEPTIONAL.
93. ORDER FOR LICENCE TO OPERATE AS A DEED BETWEEN PARTIES CONCERNED.
94. TERMINATION OF COMPULSORY LICENCE.
95-98.

CHAPTER 17 – USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

99. MEANING OF USE OF INVENTION FOR PURPOSES OF GOVERNMENT.
100. POWER OF CENTRAL GOVERNMENT TO USE INVENTIONS FOR PURPOSES OF GOVERNMENT.
101. RIGHTS OF THIRD PARTIES IN RESPECT OF USE OF INVENTION FOR PURPOSES OF GOVERNMENT.
102. ACQUISITION OF INVENTIONS AND PATENTS BY THE CENTRAL GOVERNMENT.
103. REFERENCE TO HIGH COURT OF DISPUTES AS TO USE FOR PURPOSES OF GOVERNMENT.

CHAPTER 18 – SUITS CONCERNING INFRINGEMENT OF PATENTS

104. JURISDICTION.
104A. BURDEN OF PROOF IN CASE OF SUITS CONCERNING INFRINGEMENT.
105. POWER OF COURT TO MAKE DECLARATION AS TO NON-INFRINGEMENT.
106. POWER OF COURT TO GRANT RELIEF IN CASES OF GROUNDLESS THREATS OF INFRINGEMENT PROCEEDINGS.
107. DEFENCES, ETC., IN SUITS FOR INFRINGEMENT.
107A. CERTAIN ACTS NOT TO BE CONSIDERED AS INFRINGEMENT.
108. RELIEFS IN SUIT FOR INFRINGEMENT.
109. RIGHT OF EXCLUSIVE LICENSEE TO TAKE PROCEEDINGS AGAINST INFRINGEMENT.
110. RIGHT OF LICENSEE UNDER SECTION 84 TO TAKE PROCEEDINGS AGAINST INFRINGEMENT.
111. RESTRICTION ON POWER OF COURT TO GRANT DAMAGES OR ACCOUNT OF PROFITS FOR INFRINGEMENT.
112. RESTRICTION ON POWER OF COURT TO GRANT INJUNCTION IN CERTAIN CASES.
113. CERTIFICATE OF VALIDITY OF SPECIFICATION AND COSTS OF SUBSEQUENT SUITS FOR INFRINGEMENT THEREOF.
114. RELIEF FOR INFRINGEMENT OF PARTIALLY VALID SPECIFICATION.
115. SCIENTIFIC ADVISERS.

CHAPTER 19 – APPEALS

116. APPELLATE BOARD.
117. STAFF OF APPELLATE BOARD
117A. APPEALS TO HIGH COURT.
117B. PROCEDURE AND POWERS OF APPELLATE BOARD.
117C. BAR OF JURISDICTION OF COURTS, ETC.
117D. PROCEDURE FOR APPLICATION FOR RECTIFICATION, ETC., BEFORE APPELLATE BOARD.
117E. APPEARANCE OF CONTROLLER IN LEGAL PROCEEDINGS.
117F. COSTS OF CONTROLLER IN PROCEEDINGS BEFORE APPELLATE BOARD.
117G. TRANSFER OF PENDING PROCEEDINGS TO APPELLATE BOARD.
117H. POWER OF APPELLATE BOARD TO MAKE RULES.

CHAPTER 20 – PENALTIES

118. CONTRAVENTION OF SECRECY PROVISIONS RELATING TO CERTAIN INVENTIONS.
119. FALSIFICATION OF ENTRIES IN REGISTER, ETC.
120. UNAUTHORISED CLAIM OF PATENT RIGHTS.
121. WRONGFUL USE OF WORDS “PATENT OFFICE”.
122. REFUSAL OR FAILURE TO SUPPLY INFORMATION.
123. PRACTICE BY NON-REGISTERED PATENT AGENTS.
124. OFFENCES BY COMPANIES.

CHAPTER 21 – PATENT AGENTS

125. REGISTER OF PATENT AGENTS.
126. QUALIFICATIONS FOR REGISTRATION AS PATENT AGENTS.
127. RIGHTS OF PATENT AGENTS.
128. SUBSCRIPTION AND VERIFICATION OF CERTAIN DOCUMENTS BY PATENT AGENTS.
129. RESTRICTIONS ON PRACTICE AS PATENT AGENTS.
130. REMOVAL FROM REGISTER OF PATENT AGENTS AND RESTORATION.
131. POWER OF CONTROLLER TO REFUSE TO DEAL WITH CERTAIN AGENTS.
132. SAVINGS IN RESPECT OF OTHER PERSONS AUTHORISED TO ACT AS AGENTS.

CHAPTER 22 – INTERNATIONAL ARRANGEMENTS

133. CONVENTION COUNTRIES.
134. NOTIFICATION AS TO COUNTRIES NOT PROVIDING FOR RECIPROCITY.
135. CONVENTION APPLICATIONS.
136. SPECIAL PROVISIONS RELATING TO CONVENTION APPLICATION.
137. MULTIPLE PRIORITIES.
138. SUPPLEMENTARY PROVISIONS AS TO CONVENTION APPLICATIONS.
139. OTHER PROVISIONS OF ACT TO APPLY TO CONVENTION APPLICATIONS.

CHAPTER 23 – MISCELLANEOUS

140. AVOIDANCE OF CERTAIN RESTRICTIVE CONDITIONS.
141. DETERMINATION OF CERTAIN CONTRACTS.
142. FEES.
143. RESTRICTIONS UPON PUBLICATION OF SPECIFICATION.
144. REPORTS OF EXAMINERS TO BE CONFIDENTIAL.
145. PUBLICATION OF OFFICIAL JOURNAL.
146. POWER OF CONTROLLER TO CALL FOR INFORMATION FROM PATENTEES.
147. EVIDENCE OF ENTRIES, DOCUMENTS, ETC.
148. DECLARATION BY INFANT, LUNATIC ETC.
149. SERVICE OF NOTICES, ETC., BY POST.
150. SECURITY FOR COSTS.
151. TRANSMISSION OF ORDERS OF COURTS TO CONTROLLER.
152. TRANSMISSION OF COPIES OF SPECIFICATIONS, ETC., AND INSPECTION THEREOF.
153. INFORMATION RELATING TO PATENTS.
154. LOSS OR DESTRUCTION OF PATENTS.
155. REPORTS OF CONTROLLER TO BE PLACED BEFORE PARLIAMENT.
156. PATENT TO BIND GOVERNMENT.
157. RIGHT OF GOVERNMENT TO SELL OR USE FORFEITED ARTICLES.
157A. PROTECTION OF SECURITY OF INDIA.
158. POWER OF HIGH COURTS TO MAKE RULES.
159. POWER OF CENTRAL GOVERNMENT TO MAKE RULES.
160. RULES TO BE PLACED BEFORE PARLIAMENT.
161. SPECIAL PROVISIONS WITH RESPECT TO CERTAIN APPLICATIONS DEEMED TO HAVE BEEN REFUSED UNDER ACT 2 OF 1911.
162. REPEAL OF ACT 2 OF 1911 IN SO FAR AS IT RELATES TO PATENTS AND SAVINGS.
163. AMENDMENT OF ACT 43 OF 1958

CHAPTER 17 – USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

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.

CHAPTER 18 – SUITS CONCERNING INFRINGEMENT OF PATENTS

104. JURISDICTION.

No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit:

Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

104A. 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 sub­ section (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.

105. POWER OF COURT TO MAKE DECLARATION AS TO NON-INFRINGEMENT.

(1) Notwithstanding anything contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), 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, if it is shown—

(a) that the plaintiff has applied in writing to the patentee or exclusive licensee 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

(b) that the patentee or licensee has refused or neglected to give such an acknowledgement.

(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.

106. POWER OF COURT TO GRANT RELIEF IN CASES OF GROUNDLESS THREATS OF INFRINGEMENT PROCEEDINGS.

(1) Where any person (whether entitled to or interested in a patent or an application for patent or not) threatens any other person by circulars or advertisements or by communications, oral or in writing addressed to that or any other person, with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs, that is to say—

(a) a declaration to the effect that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as he has sustained thereby.

(2) Unless in such suit the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid the court may grant to the plaintiff all or any of the reliefs prayed for.

Explanation.—A mere notification of the existence of a patent does not constitute a threat of proceeding within the meaning of this section.

107. DEFENCES, ETC., IN SUITS FOR INFRINGEMENT.

(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.

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.

108. RELIEFS IN 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.

109. RIGHT OF EXCLUSIVE LICENSEE TO TAKE PROCEEDINGS AGAINST INFRINGEMENT.

(1) The holder of an exclusive licence shall have the like right as the patentee to institute a suit in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or an account of profits or granting any other relief in any such suit the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.

(2) In any suit for infringement of a patent by the holder of an exclusive licence under sub­ section (1), the patentee shall, unless he has joined as a plaintiff in the suit, be added as a defendant, but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

110. RIGHT OF LICENSEE UNDER SECTION 84 TO TAKE PROCEEDINGS AGAINST INFRINGEMENT.

Any person to whom a licence has been granted under section 84 shall be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent, and, if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were the patentee, making the patentee a defendant; but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

111. RESTRICTION ON POWER OF COURT TO GRANT DAMAGES OR ACCOUNT OF PROFITS FOR INFRINGEMENT.

(1) In a suit for infringement of patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

Explanation.—A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.

(2) In any suit for infringement of a patent the court may, if it trunks fit, refuse to grant any damages or an account of profits in respect of any infringement committed after a failure to pay any renewal fee with the prescribed period and before any extension of that period.

(3) Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed under this Act after the publication of the specification, no damages or account of profits shall be granted in any proceeding in respect of the use of the invention before the date of the decision allowing the amendment, unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge.

(4) Nothing in this section shall affect the power of the court to grant an injunction in any suit for infringement of a patent.

112. RESTRICTION ON POWER OF COURT TO GRANT INJUNCTION IN CERTAIN CASES. 

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

113. CERTIFICATE OF VALIDITY OF SPECIFICATION AND COSTS OF SUBSEQUENT SUITS FOR INFRINGEMENT THEREOF.

(1) If in any proceedings before a High Court for the revocation of a patent under section 64 and section 104, the validity of any claim of a specification is contested and that claim is found by the High Court to be valid, the High Court may certify that the validity of that claim was contested in those proceedings and was upheld.

(2) Where any such certificate has been granted, then, if in any subsequent suit before a court for infringement of that claim of the patent or in any subsequent proceeding for revocation of the patent in so far as it relates to that claim, the patentee or other person relying on the validity of the claim obtains a final order or judgment in his favour, he shall be entitled to an order for the payment of his full costs, charges and expenses of and incidental to any such suit or proceeding properly incurred so far as they concern the claim in respect of which the certificate was granted, unless the court trying the suit or proceeding otherwise directs:

Provided that the costs as specific in this sub-section shall not be ordered when the party disputing the validity of the claim satisfies the court that he was not aware of the grant of the certificate when he raised the dispute and withdrew forthwith such defence when he became aware of such a certificate.

(3) Nothing contained in this section shall be construed as authorising the courts hearing appeals from decrees or orders in suits for infringement or petitions for revocation, as the case may be, to pass orders for costs on the scale referred to therein.

114. RELIEF FOR INFRINGEMENT OF PARTIALLY VALID SPECIFICATION.

(1) If in proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of which infringement is alleged, is valid, but that any other claim is invalid, the court may grant relief in respect of any valid claim which is infringed:

Provided that the court shall not grant relief except by way of injunction save in the circumstances mentioned in sub-section (2).

(2) Where the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the court as to costs and as to the date from which damages or an account of profits should be reckoned, and in exercising such discretion the court may take into consideration the conduct of the parties in inserting such invalid claims in the specification or permitting them to remain there.

115. SCIENTIFIC ADVISERS.

(1) In any suit for infringement or in any proceeding before a court under this Act, the court may at any time, and whether or not an application has been made by any party for that purpose, appoint an independent scientific adviser, to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.

(2) The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by Parliament by law for the purpose.

CHAPTER 19 – APPEALS

116. APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117. STAFF OF APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117A. APPEALS TO HIGH COURT.

(1) Save as otherwise expressly provided in sub-section(2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.

(2) An appeal shall lie to the High Court from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19,section 20, sub-section (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.

(3) Every appeal under this section shall be in the prescribed form and shall be verified in such manner as may be prescribed and shall be accompanied by a copy of the decision, order or direction appealed against and by such fees as may be prescribed.

(4) Every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government or within such further time as the High Court may, in accordance with the rules made by it allow.

117B. PROCEDURE AND POWERS OF APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117C. BAR OF JURISDICTION OF COURTS, ETC.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117D. PROCEDURE FOR APPLICATION FOR RECTIFICATION, ETC., BEFORE APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117E. APPEARANCE OF CONTROLLER IN LEGAL PROCEEDINGS.

(1) The Controller shall have the right to appear and be heard—

(a) in any legal proceedings before the High Court in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the patent office is raised;

(b) in any appeal to the High Court from an order of the Controller on an application for grant of a patent—

(i) which is not opposed, and the application is either refused by the Controller or is accepted by him subject to any amendments, modifications, conditions or limitations, or

(ii) which has been opposed and the Controller considers that his appearance is necessary in the public interest, and the Controller shall appear in any case if so directed by the High Court.

(2) Unless the High Court otherwise directs, the Controller may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision given by him or of the practice of the patent office in like cases, or of other matters relevant to the issues and within his knowledge as the Controller may deem it necessary, and such statement shall be evidence in the proceeding.

117F. COSTS OF CONTROLLER IN PROCEEDINGS BEFORE APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117G. TRANSFER OF PENDING PROCEEDINGS TO APPELLATE BOARD.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

117H. POWER OF APPELLATE BOARD TO MAKE RULES.

[Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021]

CHAPTER 20 – PENALTIES

 

118. CONTRAVENTION OF SECRECY PROVISIONS RELATING TO CERTAIN INVENTIONS.

If any person fails to comply with any direction given under section 35 or makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a’ term which may extend to two years, or with fine, or with both.

119. FALSIFICATION OF ENTRIES IN REGISTER, ETC.

If any person makes, or causes to be made, a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in such a register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

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.

Explanation 1.—

For the purposes of this section, a person shall be deemed to represent—

(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise applied to, the article the word “patent” or “patented” or some other word expressing or implying that a patent for the article has been obtained in India;

(b) that an article is the subject of an application for a patent in India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent pending”, or some other words implying that an application for a patent for the article has been made in India.

Explanation 2.—

The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India.

121. WRONGFUL USE OF WORDS “PATENT OFFICE”.

If any person uses on his place of business or any document issued by him or otherwise the words “patent office” or any other words which would reasonably lead to the belief that his place of business is, or is officially connected with, the patent office, he shall be punishable with imprisonment for a term which may extend to six months, or with fine, or with both.

122. REFUSAL OR FAILURE TO SUPPLY INFORMATION.

(1) If any person refuses or fails to furnish—

(a) to the Central Government any information which he is required to furnish under sub-section (5) of section 100;

(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.

(2) If any person, being required to furnish any such information as is referred to in sub­ section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.

123. PRACTICE BY NON-REGISTERED PATENT AGENTS.

If any person contravenes the provisions of section 129, he shall be punishable with fine which may extend to one lakh rupees in the case of a first offence and five lakh rupees in the case of a second or subsequent offence.

124. OFFENCES BY COMPANIES.

(1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

Explanation.

For the purposes of this section,—

(a) “company” means anybody corporate and includes a firm or other association of individuals; and

(b) “director”, in relation to a firm, means a partner in the firm.

CHAPTER 21 – PATENT AGENTS

 

125. REGISTER OF PATENT AGENTS.

(1) The Controller shall maintain a register to be called the register of patent agents in which shall be entered the names, addresses and other relevant particulars, as may be prescribed, of all persons qualified to have their names so entered under section 126.

(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patent agents in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed.

126. QUALIFICATIONS FOR REGISTRATION AS PATENT AGENTS.

(1) A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely:—

(a) he is a citizen of India;

(b) he has completed the age of 21 years;

(c) he has obtained a degree in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,—

(i) [Omitted by the Patents (Amendment) Act, 2005]

(ii) has passed the qualifying examination prescribed for the purpose; or

(iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;

(d) he has paid such fee as may be prescribed.

(2) Notwithstanding anything contained in sub-section (1), a person who has been registered as a patent agent before the commencement of the Patents (Amendment) Act, 2005 shall be entitled to continue to be, or when required to be re-registered, as a patent agent, on payment of the fees as may be prescribed.

127. RIGHTS OF PATENT AGENTS.

Subject to the provisions contained in this Act and in any rules made thereunder, every patent agent whose name is entered in the register shall be entitled—

(a) to practice before the Controller; and

(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.  

128. SUBSCRIPTION AND VERIFICATION OF CERTAIN DOCUMENTS BY PATENT AGENTS.

(1) all applications and communications to the Controller under this Act may be signed by a patent agent authorised in writing in this behalf by the person concerned.

Provided that if such person is absent from India, they may be signed and verified on his behalf by a patent agent authorised by him in writing in that behalf.

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

129. RESTRICTIONS ON PRACTICE AS PATENT AGENTS.

(1) No person, either alone or in partnership with any other person, shall practise, describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered.

(2) No company or other body corporate shall practise, describe itself or hold itself out as patent agents or permit itself to be so described or held out.

Explanation.— For the purposes of this section, practise as a patent agent includes any of the following acts, namely:—

(a) applying for or obtaining patents in India or elsewhere;

(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;

(c) giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.

130. REMOVAL FROM REGISTER OF PATENT AGENTS AND RESTORATION.

(1) The Controller may remove the name of any person from the register when he is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as he thinks fit to make—

(i) that his name has been entered in the register by error or on account of misrepresentation or suppression of material fact; 

(ii) that he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Controller renders him unfit to be kept in the register.

(2) The Controller may, on application and on sufficient cause being shown, restore to the register the name of any person removed therefrom.

131. POWER OF CONTROLLER TO REFUSE TO DEAL WITH CERTAIN AGENTS.

(1) Subject to any rules made in this behalf, the Controller may refuse to recognise as agent in respect of any business under this Act—

(a) any individual whose name has been removed from, and not restored to, the register;

(b) any person who has been convicted of an offence under section 123;

(c) any person, not being registered as a patent agent, who in the opinion of the Controller is engaged wholly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed;

(d) any company or firm, if any person whom the Controller could refuse to recognise as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm.

(2) The Controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in India.

132. SAVINGS IN RESPECT OF OTHER PERSONS AUTHORISED TO ACT AS AGENTS.

Nothing in the Chapter shall be deemed to prohibit—

(a) the applicant for a patent from drafting any specification or appearing or acting before the Controller, or

(b) an advocate, not being a patent agent, from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act.

CHAPTER 22 – INTERNATIONAL ARRANGEMENTS

 

133. CONVENTION COUNTRIES.

Any country, which is a signatory or party or a group of countries, union of countries or intergovernmental organisations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicants for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries for the purposes of this Act.

134. NOTIFICATION AS TO COUNTRIES NOT PROVIDING FOR 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,—

(a) to apply for the grant of a patent or be registered as the proprietor of a patent;

(b) to be registered as the assignee of the proprietor of a patent; or

(c) to apply for a licence or hold any licence under a patent granted under this Act.

135. CONVENTION APPLICATIONS.

(1) Without prejudice to the provisions contained in section 6, where a person has made an application for a patent in respect of an invention in a convention country (hereinafter referred to as the “basic application”), and that person or the legal representative or assignee of that person makes an application under this Act for a patent within twelve months after the date on which the basic application was made, the priority date of a claim of the complete specification, being a claim based on matter disclosed in the basic application, is the date of making of the basic application.

Explanation.—Where applications have been made for similar protection in respect of an invention in two or more convention countries, the period of twelve months referred to in this sub-section shall be reckoned from the date on which the earlier or earliest of the said applications was made.

(2) Where applications for protection have been made in one or more convention countries in respect of two or more inventions which are cognate or of which one is a modification of another, a single convention application may, subject to the provisions contained in section 10, be made in respect of those inventions at any time within twelve months from the date of the earliest of the said applications for protection:

Provided that the fee payable on the making of any such application shall be the same as if separate applications have been made in respect of each of the said inventions, and the requirements of clause (b) of sub-section (1) of section 136 shall, in the case of any such application, apply separately to the applications for protection in respect of each of the said inventions.

(3) In case of an application filed under the Patent Cooperation Treaty designating India and claiming priority from a previously filed application in India, the provisions of sub-sections (1)and (2) shall apply as if the previously filed application were the basic application: Provided that a request for examination under section 11B shall be made only for one of the applications filed in India.

136. SPECIAL PROVISIONS RELATING TO CONVENTION APPLICATION.

(1) Every convention application shall—

(a) be accompanied by a complete specification; and

(b) specify the date on which and the convention country in which the application for protection, or as the case may be, the first of such applications was made; and

(c) state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.

(2) Subject to the provisions contained in section 10, a complete specification filed with a convention application may include claims in respect of developments of, or additions to, the invention in respect of which the application for protection was made in a convention country, 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.

(3) A convention application shall not be post-dated under sub-section (1) of section 17 to a date later than the date on which under the provisions of this Act the application could have been made.

137. MULTIPLE PRIORITIES.

(1) Where two or more applications for patents in respect of inventions have been made in one or more convention countries and those inventions are so related as to constitute one invention, one application may be made by any or all of the persons referred to in sub-section (1) of section 135 within twelve months from the date on which the earlier or earliest of those applications was made, in respect of the inventions disclosed in the specifications which accompanied the basic applications.

(2) The priority date of a claim of the complete specification, being a claim based on matters disclosed in one or more of the basic applications, is the date on which that matter was first so disclosed.

(3) For the purposes of this Act, a matter shall be deemed to have been disclosed in a basic application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgement of a prior art) in that application, or any documents submitted by the applicant for protection in support of and at the same time as that application but no account shall be taken of any disclosure effected by any such document unless a copy of the documents is filed at the patent office with the convention application or within such period as may be prescribed after the filing of that application.

138. SUPPLEMENTARY PROVISIONS AS TO CONVENTION APPLICATIONS.

(1) Where a convention application is made in accordance with the provisions of this Chapter, the applicant shall furnish, when required by the Controller, in addition to the complete specification, copies of the specifications or corresponding documents filed or deposited by the applicant in the patent office of the convention country as referred to in section 133 verified to the satisfaction of the Controller, within the prescribed period from the date of communication by the Controller.

(2) If any such specification or other document is in a foreign language, a translation into English of the specification or document, verified by affidavit or otherwise to the satisfaction of the Controller, shall be furnished when required by the Controller.

(3) For the purposes of this Act, the date on which an application was made in a convention country is such date as the Controller is satisfied, by certificate of the official chief or head of the patent office of the convention country or otherwise, is the date on which the application was made in that convention country.

(4) An international application filed under the Patent Co-operation Treaty designating India shall have effect of filing an application for patent under section 7, section 54 and section 135, as the case may be, and the title, description, claim and abstract and drawings, if any, filed in the international application shall be taken as complete specification for the purposes of this Act.

(5) The filing date of application for patent and its complete specification processed by the patent office as designated office shall be the international filing date accorded under the Patent Cooperation Treaty.

(6) Amendment, if any, proposed by the applicant for an international application designating India or designating and electing India before international searching authority or preliminary examination authority shall, if the applicant so desires, be taken as an amendment made before the patent office.

139. OTHER PROVISIONS OF ACT TO APPLY TO CONVENTION APPLICATIONS.

Save as otherwise provided in this Chapter, all the provisions of this Act shall apply in relation to a convention application and a patent granted in pursuance thereof as they apply in relation to an ordinary application and a patent granted in pursuance thereof.

CHAPTER 23 – MISCELLANEOUS

 

140. AVOIDANCE OF CERTAIN RESTRICTIVE CONDITIONS.

(1) It shall not be lawful to insert—

(i) in any contract for or in relation to the sale or lease of a patented article or an article made by a patented process; or

(ii) in licence to manufacture or use a patented article; or

(iii) in a licence to work any process protected by a patent, a condition the effect of which may be—

(a) to require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor or his nominees, or to prohibit from acquiring or to restrict in any manner or to any extent his right to acquire from any person or to prohibit him from acquiring except from the vendor, lessor, or licensor or his nominees any article other than the patented article or an article other than that made by the patented process; or

(b) to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee, to use an article other than the patented article or an article other than that made by the patented process, which is not supplied by the vendor, lessor or licensor or his nominee; or

(c) to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee to use any process other than the patented process,

(d) to provide exclusive grant back, prevention to challenges to validity of Patent & Coercive package licensing, and any such condition shall be void.

(2) A condition of the nature referred to in clause (a) or clause (b) or clause (c) of sub-section (1) shall not cease to be a condition falling within that sub-section merely by reason of the fact that the agreement containing it has been entered into separately, whether before or after the contract relating to the sale, lease or licence of the patented article or process.

(3) In proceedings against any person for the infringement of a patent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent and containing a condition declared unlawful by this section:

Provided that this sub-section shall not apply if the plaintiff is not a party to the contract and proves to the satisfaction of the court that the restrictive condition was inserted in the contract without his knowledge and consent, express or implied.

(4) Nothing in this section shall—

(a) affect a condition in a contract by which a person is prohibited from selling goods other than those of a particular person;

(b) validate a contract which, but for this section, would be invalid;

(c) affect a condition in a contract for the lease of, or licence to use a patented article, by which the lessor or licensor reserves to himself or his nominee the right to supply such new parts of the patented article as may be required or to put or keep it in repair.

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

141. DETERMINATION OF CERTAIN CONTRACTS.

(1) Any contract for the sale or lease of a patented article or for licence to manufacture, use or work a patented article or process, or relating to any such sale, lease or licence, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by the purchaser, lessee, or licensee, as the case may be, of the patent on giving three months notice in writing to the other party.

(2) The provisions of this section shall be without prejudice to any right of determining a contract exercisable apart from this section.

142. FEES.

(1) There shall be paid in respect of the grant of patents and applications therefor, and in respect of other matters in relation to the grant of patents under this Act, such fees as may be prescribed by the Central Government.

(2) Where a fee is payable in respect of the doing of an act by the Controller, the Controller shall not do that act until the fee has been paid.

(3) Where a fee is payable in respect of the filing of a document at the patent office, the fee shall be paid along with the document or within the prescribed time and the document shall be deemed not to have been filed at the office if the fee has not been paid within such time.

(4) Where a principal patent is granted later than two years from the date of the filing of the application, the fees which have become due in the meantime may be paid within a term of three months from the date of the recording of the patent in the register or within the extended period not later than nine months from the date of recording.

143. RESTRICTIONS UPON PUBLICATION OF SPECIFICATION.

Subject to the provisions of Chapter VII, an application for a patent, and any specification filed in pursuance thereof, shall not, except with the consent of the applicant, be published by the Controller before the expiration of the period prescribed under sub-section (1) of section 11A or before the same is open to public inspection in pursuance of sub-section (3) of section 11A or section 43.

144. REPORTS OF EXAMINERS TO BE CONFIDENTIAL.

The reports of examiners to the Controller under this Act shall not be open to public inspection or be published by the Controller; and such reports shall not be liable to production or inspection in any legal proceeding unless the court certifies that the production or inspection is desirable in the interests of justice, and ought to be allowed.

145. PUBLICATION OF OFFICIAL JOURNAL.

The Controller shall publish periodically an official journal which shall contain such information as may be required to be published by or under the provisions of this Act or any rule made thereunder.

146. POWER OF CONTROLLER TO CALL FOR INFORMATION FROM PATENTEES.

(1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.

(3) The Controller may publish the information received by him under subsection (1) or sub-section (2) in such manner as may be prescribed.

147. EVIDENCE OF ENTRIES, DOCUMENTS, ETC.

(1) A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorized by this Act or any rules made thereunder to make or do, shall be prima facie evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or omitted to be done.

(2) A copy of any entry in any register or of any document kept in the patent office or of any patent, or an extract from any such register or document, purporting to be certified by the Controller and sealed with the seal of the patent office shall be admitted in evidence in all courts, and in all proceedings, without further proof or production of the original.

(3) The Controller or any other officer of the patent office shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special causes.

148.  DECLARATION BY INFANT, LUNATIC ETC.

(1) If any person is, by reason of minority, lunacy or other disability, incapable of making any statement or doing anything required or permitted by or under this Act, the lawful guardian, committee or manager (if any) of the person subject to the disability, or if there be none, any person appointed by any court possessing jurisdiction in respect of his property, may make such statement or a statement as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

(2) An appointment may be made by the court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any other person interested in the making of the statement or the doing of the thing.

149. SERVICE OF NOTICES, ETC., BY POST.

Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

150. SECURITY FOR COSTS.

If any party by whom notice of any opposition is given under this Act or by whom application is made to the Controller for the grant of a licence under a patent neither resides nor carries on business in India, the Controller may require him to give security for the costs of the proceedings, and in default of such security being given may treat the opposition or application as abandoned.

151. TRANSMISSION OF ORDERS OF COURTS TO CONTROLLER.

(1) Every order of the High Court on a petition for revocation, including orders granting certificates of validity of any claim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and reference thereto to be made in the register.

(2) Where in any suit for infringement of a patent or in any suit under section 106 the validity of any claim or a specification is contested and that claim is found by the court to be valid or not valid, as the case may be, the court shall transmit a copy of its judgment and decree to the Controller who shall on receipt thereof cause an entry in relation to such proceeding to be made in the prescribed manner in a supplemental record.

(3) The provisions of sub-sections (1) and (2) shall also apply to the court to which appeals are preferred against decisions of the courts, referred to in those sub-sections.

152. TRANSMISSION OF COPIES OF SPECIFICATIONS, ETC., AND INSPECTION THEREOF.

[Omitted by the Patents (Amendment) Act, 2005]

153. INFORMATION RELATING TO PATENTS.

A person making a request to the Controller in the prescribed manner for information relating to any such matters as may be prescribed as respects any patent specified in the request or as respects any application for a patent so specified shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.

154. LOSS OR DESTRUCTION OF PATENTS.

If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may at any time, on application made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.

155. REPORTS OF CONTROLLER TO BE PLACED BEFORE PARLIAMENT.

The Central Government shall cause to be placed before both Houses of Parliament once a year a report respecting the execution of this Act by or under the Controller.

156. PATENT TO BIND GOVERNMENT.

Subject to the other provisions contained in this Act, a patent shall have to all intents the like effect as against Government as it has against any person.

157. RIGHT OF GOVERNMENT TO SELL OR USE FORFEITED ARTICLES.

Nothing in this Act shall affect the power of the Government or of any person deriving title directly or indirectly from the Government to sell or use any articles forfeited under any law for the time being in force.

157A. PROTECTION OF SECURITY OF INDIA.

Notwithstanding anything contained in this Act, the Central Government shall—

(a) not disclose any information relating to any patentable invention or any application relating to the grant of patent under this Act, which it considers prejudicial to the interest of security of India;

(b) take any action including the revocation of any patent which it considers necessary in the interest of the security of India by issue of a notification in the Official Gazette to that effect.

Explanation.—For the purposes of this section, the expression “security of India” includes any action necessary for the security of India which—

(i) relates to fissionable materials or the materials from which they are derived; or

(ii) relates to the traffic in arms, ammunition and implements of war and to such traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment; or

(iii) is taken in time of war or other emergency in international relations.

158. POWER OF HIGH COURTS TO MAKE RULES.

The High Court may make rules consistent with this Act as to the conduct and procedure in respect of all proceedings before it under this Act.

159. POWER OF CENTRAL GOVERNMENT TO MAKE RULES.

(1) The Central Government may, by notification in the Official Gazette, make rules for carrying out the purposes of this Act.

(2) Without prejudice to the generality of the foregoing power, the Central Government may make rules to provide for all or any of the following matters, namely:—

(i) the form and manner in which any application for a patent, any specifications or drawings and any other application or document may be filed in the patent office;

(ia) the period which the Controller may allow for filing of statement and undertaking for in respect of applications under sub-section (1), the period within which the details relating to processing of applications may be filed before the Controller and the details to be furnished by the applicant to the Controller under sub-section (2) of section 8;

(ib) the period within which a reference to the deposit of materials shall be made in the specification under sub-clause (A) of clause (ii) of the proviso to sub-section (4) of section 10;

(ic) the period for which application for patent shall not be open to the public under sub-section (1) and the manner in which the applicant may make a request to the Controller to publish his application under sub-section (2) of section 11 A;

(id) the manner of making the request for examination for an application for patent and the period within which such examination shall be made under sub-sections (1) and (3) of section 11B;

(ie) the manner in which an application for withdrawal of an application for grant of a patent shall be made and the period within which a request for examination from the date of revocation of secrecy directions shall be made under the proviso to sub-section (4) of section 11B.

(ii) the time within which any act or thing may be done under this Act, including the manner in which and the time within which any matter may be published under this Act;

(iii) the fees which may be payable under this Act and the manner and time of payment of such fees;

(iv) the matters in respect of which the examiner may make a report to the Controller;

(v) the manner in which and the period within which the Controller shall consider and dispose off a representation under sub-section (1) of section 25;

(va) the period within which the Controller is required to dispose of an application under section 39;

(vi) the form and manner in which and the time within which any notice may be given under this Act;

(vii) the provisions which may be inserted in an order for restoration of a patent for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had ceased;

(viii) the establishment of branch offices of the patent office and the regulation generally of the business of the patent office, including its branch offices;

(ix) the maintenance of the register of patents and the safeguards to be observed in the maintenance of such register in computer floppies, diskettes or any other electronic form and the matters to be entered therein;

(x) the matters in respect of which the Controller shall have powers of a civil court;

(xi) the time when and the manner in which the register and any other document open to inspection may be inspected under this Act;

(xii) the qualifications of, and the preparation of a roll of, scientific advisers for the purpose of section 115;

(xiia) [Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021.]

(xiib) [Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021.]

(xiic) [Omitted by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021.]

(xiii) the manner in which any compensation for acquisition by Government of an invention may be paid;

(xiv) the manner in which the register of patent agents may be maintained under sub­ section (1) of section 125 and the safeguards to be observed in the maintenance of such register of patent agents on computer floppies, diskettes or any other electronic form under subsection (2) of that section; the conduct of qualifying examinations for patent agents; and matters connected with their practice and conduct, including the taking of disciplinary proceedings against patent agents for misconduct;

(xv) the regulation of the making, printing, publishing and selling of indexes to, and abridgements of, specifications and other documents in the patent office; and the inspection of indexes and abridgements and other documents;

(xvi) any other matter which has to be or may be prescribed.

(3) The power to make rules under this section shall be subject to condition of the rules being made after previous publication:

Provided that the Central Government may, if it is satisfied that the circumstances exist which render it practically not possible to comply with such condition of previous publication, dispense with such compliance.

160. RULES TO BE PLACED BEFORE PARLIAMENT.

Every rule made under this Act shall be laid, as soon as may be after it is made, before each House of Parliament while it is in session for a total period of thirty days which may be comprised in one session or in two or more successive sessions, and if, before the expiry of the session immediately following the session or the successive sessions aforesaid, both Houses agree in making any modification in the rule or both Houses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no effect, as the case may be; so, however, that any such modification or annulment shall be without prejudice to the validity of anything previously done under that rule.

161. SPECIAL PROVISIONS WITH RESPECT TO CERTAIN APPLICATIONS DEEMED TO HAVE BEEN REFUSED UNDER ACT 2 OF 1911.

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

162.REPEAL OF ACT 2 OF 1911 IN SO FAR AS IT RELATES TO PATENTS AND SAVINGS.

(1) The Indian Patents and Designs Act, 1911, in so far as it relates to patents, is hereby repealed, that is to say, the said Act shall be amended in the manner specified in the Schedule.

(2) and (3) [Omitted by the Patents (Amendment) Act, 2002]

(4) The mention of particular matters in this section shall not prejudice the general application of the General Clauses Act, 1897 (10 of 1897), with respect to repeals.

(5) Notwithstanding anything contained in this Act, any suit for infringement of a patent or any proceeding for revocation of a patent, pending in any court at the commencement of this Act, may be continued and disposed of, as if this Act had not been passed.

163. AMENDMENT OF ACT 43 OF 1958.

[Omitted by the Patents (Amendment) Act, 2005]

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