Tribunals Reforms Ordinance 2021 and amendments to the Patents Act, 1970

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The President of India on the 4th of April 2021 promulgated the “THE TRIBUNALS REFORMS (RATIONALISATION AND CONDITIONS OF SERVICE) ORDINANCE, 2021”.  With the passing of this ordinance, Tribunals set up under the Cinematograph Act, 1952, the Customs Act, 1962, the Airports Authority of India Act, 1994, the Trade Marks Act, 1999 and the Protection of Plant Varieties and Farmers’ Rights Act, 2001 and certain other Acts have now effectively been rendered defunct with immediate effect.

Provided below is a table summarizing the changes introduced to the Patents Act, 1970 by virtue of passing of this Ordinance.

SECTION CHANGES INTRODUCED BY ORDINANCE OLD SECTION NEW SECTION
Section 2(1) (i) clause (a) shall be omitted;

(ii) in clause (u), sub-clause (B) shall be omitted;

Definitions and Interpretations:

Section 2(1)(a): “Appellate Board” means the Appellate Board referred to in section 116.

Section 2(u)(B): in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board; and

The mentioned clauses have been omitted from the Definitions and Interpretations provided under Section 2 of the Act
Section 52 The words “Appellate Board or”, wherever they occur, shall be omitted 52. Grant of patent to true and first inventor where it has been obtained by another in fraud of him –

(1) Where the patent has been revoked under section 64 on the ground that the patent was obtained wrongfully and in contravention of the rights of the petitioner or any person under or through whom he claims, or, where in a petition for revocation, the Appellate Board or court, instead of revoking the patent, directs the complete specification to be amended by the exclusion of a claim or claims in consequence of a finding that the invention covered by such claim or claims had been obtained from the petitioner, the Appellate Board or court may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the invention which the Appellate Board or court finds has been wrongfully obtained by the patentee, in lieu of the patent so revoked or is excluded by amendment.

(2) Where any  such order is passed, the Controller shall on request by the petitioner made in the prescribed manner grant to him—

(i) in cases where the Appellate Board or court permits the whole of the patent to be granted, a new patent bearing the same date and number as the patent revoked;

(ii) in cases where the Appellate Board or court permits a part only of the patent to be granted, a new patent for such part bearing the same date as the patent revoked and numbered in such manner as may be prescribed:

Provided that the Controller may, as a condition of such grant, require the petitioner to file a new and complete specification to the satisfaction of the Controller describing and claiming that part of the invention for which the patent is to be granted.

(4) No suit shall be brought for any infringement of a patent granted under this section committed before the actual date on which such patent was granted.

52. Grant of patent to true and first inventor where it has been obtained by another in fraud of him –

(1) Where the patent has been revoked under section 64 on the ground that the patent was obtained wrongfully and in contravention of the rights of the petitioner or any person under or through whom he claims, or, where in a petition for revocation, the court, instead of revoking the patent, directs the complete specification to be amended by the exclusion of a claim or claims in consequence of a finding that the invention covered by such claim or claims had been obtained from the petitioner, the court may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the invention which the court finds has been wrongfully obtained by the patentee, in lieu of the patent so revoked or is excluded by amendment.

(2) Where any  such order is passed, the Controller shall on request by the petitioner made in the prescribed manner grant to him—

(i) in cases where the court permits the whole of the patent to be granted, a new patent bearing the same date and number as the patent revoked;

(ii) in cases where the court permits a part only of the patent to be granted, a new patent for such part bearing the same date as the patent revoked and numbered in such manner as may be prescribed:

Provided that the Controller may, as a condition of such grant, require the petitioner to file a new and complete specification to the satisfaction of the Controller describing and claiming that part of the invention for which the patent is to be granted.

(4) No suit shall be brought for any infringement of a patent granted under this section committed before the actual date on which such patent was granted.

Section 58 (i) the words “the Appellate Board or”, wherever they occur, shall be omitted;

 

(ii) the words “as the case may be” shall be omitted;

 

58. Amendment of specification before Appellate Board or High Court.—

(1) In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the Appellate Board or the High Court may think fit, and if, in any proceedings for revocation the Appellate Board or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent.

(2) Where an application for an order under this section is made to the Appellate Board or the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Appellate Board or the High Court.

(3) Copies of all orders of the Appellate Board or the High Court allowing the patentee to amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register.

58. Amendment of specification before High Court.—

(1) In any proceeding before the or the High Court for the revocation of a patent, the High Court, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the High Court may think fit, and if, in any proceedings for revocation the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent.

(2) Where an application for an order under this section is made to the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

(3) Copies of all orders of the High Court allowing the patentee to amend the specification shall be transmitted by the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register

Section 59 The words “the Appellate Board or” shall be omitted

 

59. Supplementary provisions as to amendment of application or specification.—

(1)No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

(2) Where after the date of grant of patent any amendment of the specification or any other documents related thereto is allowed by the Controller or by the Appellate Board or the High Court, as the case may be,—

(a) the amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;

(b) the fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and

(c) the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.

(3) in construing the specification as amended, reference may be made to the specification as originally accepted.

59. Supplementary provisions as to amendment of application or specification.—

(1)No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

(2) Where after the date of grant of patent any amendment of the specification or any other documents related thereto is allowed by the Controller or by the High Court, as the case may be,—

(a) the amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;

(b) the fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and

(c) the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.

(3) in construing the specification as amended, reference may be made to the specification as originally accepted.

Section 64 In sub-section (1), the words “by the Appellate Board” shall be omitted 64. Revocation of patents.—

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

sub-clauses (a) to (q).

64. Revocation of patents.—

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

sub-clauses (a) to (q).

Section 71 For the words “Appellate Board” and “Board”, wherever they occur, the words “High Court” shall be substituted

 

71. Rectification of register by Appellate Board

(1) The Appellate Board may, on the application of any person aggrieved—

(a) by the absence or omission from the register of any entry; or

(b) by any entry made in the register without sufficient cause; or

(c) by any entry wrongly remaining on the register; or

(d) by any error or defect in any entry in the register, make such order for the making, variation or deletion, of any entry therein as it may think fit.

(2) In any proceeding under this section the Appellate Board may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(3) Notice of any application to the Appellate Board under this section shall be given in the prescribed manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear if so directed by the Board.

(4) Any order of the Appellate Board under this section rectifying the register shall direct that notice of rectification shall be served on the Controller in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

71. Rectification of register by High Court.—

(1) The High Court may, on the application of any person aggrieved—

(a) by the absence or omission from the register of any entry; or

(b) by any entry made in the register without sufficient cause; or

(c) by any entry wrongly remaining on the register; or

(d) by any error or defect in any entry in the register, make such order for the making, variation or deletion, of any entry therein as it may think fit.

(2) In any proceeding under this section the High Court may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(3) Notice of any application to the High Court under this section shall be given in the prescribed manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear if so directed by the High Court.

(4) Any order of the High Court under this section rectifying the register shall direct that notice of rectification shall be served on the Controller in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

Section 76 The words “or Appellate Board” shall be omitted. 76. Officers and employees not to furnish information, etc.—

An officer or employee in the patent office shall not, except when required or authorised by this Act or under a direction in writing of the Central Government or Appellate Board or the Controller or by order of a court,—

 (a) furnish information on a matter which is being, or has been, dealt with under this Act ; or

(b) prepare or assist in the preparation of a document required or permitted by or under this Act , to be lodged in the patent office; or

 (c) conduct a search in the records of the patent office.

76. Officers and employees not to furnish information, etc.—

An officer or employee in the patent office shall not, except when required or authorised by this Act or under a direction in writing of the Central Government or the Controller or by order of a court,—

 (a) furnish information on a matter which is being, or has been, dealt with under this Act ; or

(b) prepare or assist in the preparation of a document required or permitted by or under this Act , to be lodged in the patent office; or

 (c) conduct a search in the records of the patent office.

Section 113 (i) in sub-section (1),––

(A) the words “the Appellate Board or”, wherever they occur, shall be omitted;

(B) the words “as the case may be” shall be omitted;

(ii) in sub-section (3), the words “or the Appellate Board” shall be omitted.

113. Certificate of validity of specification and costs of subsequent suits for infringement thereof.—

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

 

(3) Nothing contained in this section shall be construed as authorising the courts or the Appellate Board 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.

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.

 

(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.

Chapter XIX For the Chapter heading, the Chapter heading “APPEALS” shall be substituted  

Chapter XIX : APPEALS TO THE APPELLATE BOARD

 

Chapter XIX : APPEALS

Sections 116 and 117

 

The provisions shall be omitted 116. Appellate Board.—

(1) Subject to the provisions of this Act, the Appellate Board established under section 83 of the Trade Marks Act, 1999 shall be the Appellate Board for the purposes of this Act and the said Appellate Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act:

Provided that the Technical Member of the Appellate Board for the purposes of this Act shall have the qualifications specified in sub-section (2).

(2) A person shall not be qualified for appointment as a Technical Member for the purposes of this Act unless he—

(a) has, at least five years held the post of Controller under this Act or has exercised the functions of the Controller under this Act for at least five years; or

(b) has, for at least ten years functioned as a Registered Patent Agent and possesses a degree in engineering or technology or a masters degree in science from any University established under law for the time being in force or equivalent; or

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

 

117. Staff of Appellate Board.—(1) The Central Government shall determine the nature and categories of the officers and other employees required to assist the Appellate Board in the discharge of its functions under this Act and provide the Appellate Board with such officers and other employees as it may think fit.

(2) The salaries and allowances and conditions of service of the officers and other employees of the Appellate Board shall be such as may be prescribed.

 (3) The officers and other employees of the Appellate Board shall discharge their functions under the general superintendence of the Chairman of the Appellate Board in the manner as may be prescribed.

The Sections have been omitted
Section 117-A For the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted 117A. Appeals to Appellate Board.

(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 Appellate Board 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 Appellate Board may, in accordance with the rules made by it allow.

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.

Sections 117-B, 117-C, 117-D The provisions shall be omitted 117B. Procedure and powers of Appellate Board.—The provisions of subsections (2) to (6) of section 84, section 87, section 92, section 95 and section 96 of the Trade Marks Act, 1999 (47 of 1999) shall apply to the Appellate Board in the discharge of its functions under this Act as they apply to it in the discharge of its functions under the Trade Marks Act, 1999.

117C. Bar of jurisdiction of courts, etc.—No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (2) of section 117A or section 117D.

117D. Procedure for application for rectification, etc., before Appellate Board.—(1) An application for revocation of a patent before the Appellate Board under section 64 and an application for rectification of the register made to the Appellate Board under section 71 shall be in such form as may be prescribed.

(2) A certified copy of every order or judgment of the Appellate Board relating to a patent under this Act shall be communicated to the Controller by the Board and the Controller

 

The Sections have been omitted
Section 117-E For the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted; 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 Appellate Board 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 Appellate Board 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 Appellate Board.

(2) Unless the Appellate Board 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.

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.

Sections 117F, 117G and 117H The provisions shall be omitted 117F. Costs of Controller in proceedings before Appellate Board.—In all proceedings under this Act before the Appellate Board, the costs of the Controller shall be in the discretion of the Board, but the Controller shall not be ordered to pay the costs of any of the parties.

 117G. Transfer of pending proceedings to Appellate Board.—All cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.

 117H. Power of Appellate Board to make rules.—The Appellate Board may make rules consistent with this Act as to the conduct and procedure in respect of all proceedings before it under this Act.

The Sections have been omitted
Section 151 (A) in sub-section (1), the words “or the Appellate Board”, at both the places where they occur, shall be omitted;

(B) in sub-section (3), for the words “the Appellate Board or the courts, as the case may be”, the words “the courts” shall be substituted

151. Transmission of orders of courts to Controller.—

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

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

 

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.

(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.

 

Section 159 In sub-section (2), clauses (xiia), (xiib) and (xiic) shall be omitted. 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:—

(xiia) the salaries and allowances and other conditions of service of the officers and other employees of the Appellate Board under subsection (2) and the manner in which the officers and other employees of the Appellate Board shall discharge their functions under subsection (3) of section 117;

(xiib) the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of section 117A;

(xiic) the form in which, and the particulars to be included in the application to the Appellate Board under sub-section (1) of section 117D.

The mentioned sub-sections have been omitted.

Authored and compiled by Manvee Kumar Saidha

Summer Intern and 4th year student at Christ University

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