PATENTS ACT 1970

by Usha Rai · April 26, 2015

THEPATENTS ACT, 1970

[ACTNo. 39 OF 1970]

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

19th September, 1970

An Act to amendand consolidate the law relating to patents

BE it enacted byParliament in the Twenty–first Year of the Republic of India as follows:-

CHAPTERI

PRELIMINARY

1. Short titles,extent and commencement.

(1) ThisAct may be called the Patents Act, 1970.

(2) Itextends to the whole of India.

(3)It shall come into force on such date as the Central Government may, bynotification in the Official Gazette, appoint:

Providedthat different dates may be appointed for different provisions of this Act, andany reference in any such provision to the commencement of this Act shall beconstructed as a reference to the coming into force of that provision.

2. Definitions andinterpretation:

(1) In this Act,unless the context otherwise requires, –

[1][1][(a) "Appellate Board"means the Appellate Board referredto in section 116;

(ab) "assignee" includes an assignee of the assignee and thelegal representative of adeceased assignee and references to theassignee of any personinclude references to theassignee of thelegal representative or assignee of that person;

(ac) "capableof industrial application", in relation to an invention, means thatthe invention is capable of being made or usedin an industry;]

(b) "controller"means the Controller General of Patents, Designs and Trade Marks referred to insection 73;

[2][2][(d) "convention country" means a country or a country whichis member of a groupof countries ora union ofcountries or an Inter-governmental organisation notifiedas such under sub-section (1) of section 133;]

(e) "districtcourt" has the meaning assigned to that expression by the Code of CivilProcedure, 1908(5 of 1908);

(f) "exclusivelicence" means a licence from a patentee which confers on the licensee, oron the licensee and persons authorised by him, to the exclusion of all otherpersons (including the patentee), any right in respect of the patentedinvention, and "exclusive licensee" shall be construed accordingly;

[3][3][(g) "food" means any article of nourishment for humanconsumption and also includes anysubstance intended for the use of infants, invalids or convalescents as anarticle of food or drink;]

(h) "Governmentundertaking" means any industrial undertaking carried on –

(i) bya department of the Government, or

(ii) bya corporation established by a Central, Provincial or State Act, which is ownedor controlled by the Government, or

(iii) bya Government company as defined in section 617 of the Companies Act, 1956 (1 of1956),

and includes the Council of Scientific and IndustrialResearch and any other institution which is financed wholly or for the majorpart by the said Council;

(i) "High Court" means, –

(i) inrelation to the [4][4][National Capital territory of Delhi] andthe Union territory of Himachal Pradesh, the High Court of Delhi;

[5][5][(ii) in relation to the State of Arunachal Pradeshand the State of Mizoram, the Gauhati High Court (the High Court of Assam,Nagaland, Meghalaya, Manipur, Tripura, Mizoram and Arunachal Pradesh); ]

(iii) inrelation to the Union territory of the Andaman and Nicobar Islands, the HighCourt at Calcutta;

(iv) inrelation to the Union territory of the Laccadive, Minicoy and Amindivi Islands,the High Court of Kerala;

(v) inrelation to the [6][6][State of Goa, the Union Territory ofDaman and Diu] and the Unionterritory of Dadra and Nagar Haveli, the High Courtat Bombay;

(vi) inrelation to the Union territory of Pondicherry, the High Court at Madras;

(vii) inrelation to the Union territory of Chandigarh, the High Court of Punjab andHaryana; and

(viii) inrelation to any other State, the High Court for that State;

[7][7][(ia) "international application" means an application forpatent made in accordance with thePatent Cooperation Treaty;]

[8][8][(j)"invention" means a new product or process involving an inventivestep and capable of industrial application;

(ja) "inventive step" means a feature that makesthe invention not obvious to a person skilled in the art;]

(k) "legalrepresentative" means a person who in law represents the estate of adeceased person;

(l) "medicineor drug" includes –

(i) allmedicines for internal or external use of human beings or animals,

(ii) allsubstances intended to be used for or in the diagnosis, treatment, mitigationor prevention of diseases in human beings or animals,

(iii) allsubstances intended to be used for or in the maintenance of public health, orthe prevention or control of any epidemic disease among human beings oranimals,

(iv) insecticides,germicides, fungicides, weedicides and all other substances intended to be usedfor the protection or preservation or plants;

(v) allchemical substances which are ordinarily used as intermediates in thepreparation or manufacture of any of the medicines or substances above referredto;

[9][9][(m) "patent" means a patentgranted under this Act;]

(n) "patentagent" means a person for the time being registered under this Act as apatent agent;

(o) "patentedarticle" and "patented process" means

patent is in force;

[10][10][(oa)"Patent Cooperation Treaty" means the Patent CooperationTreaty done at Washingtonon the 19th day of June,1970 asamended and modified from time totime ;]

(p) "patentee"means the person for the time being entered o the register as the grantee orproprietor of the patent:

(q) "patentof addition" means a patent granted in accordance with section 54;

(r) "patentoffice" means the patent office referred to in section 74;

(s) "person"includes the Government;

(t) "personinterested" includes a person engaged in, or in promoting, research in thesame field as that to which the invention relates;

[11][11][(u) "prescribed" means,-

(A) (A) in relation to proceedings before a High Court, prescribed by rules made by the High Court; (B) (B) in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board; and

Act.]

(v) "prescribedmanner" includes the payment of the prescribed fee;

(w) "prioritydate" has the meaning assigned to it by section 11;

(x) "register"means the register of patents referred to in section 67;

(y) "trueand first inventor" does not include either the first importer of aninvention into India, or a person to whom an invention is first communicatedfrom outside India.

(2) In this Act, unless the contextotherwise requires, any reference –

(a) tothe Controller shall be construed as including a reference to any officerdischarging the functions of the Controller in pursuance of section 73;

(b) tothe patent office shall be construed as including a reference to any branchoffice of the patent office.

CHAPTER II

INVENTIONS NOT PATENTABLE

3. What are not inventions.

Thefollowing are not inventions within the meaning of this Act, –

(a) aninvention which is frivolous or which claims anything obviously contrary towell established natural laws;

[12][12][(b) an invention theprimary or intendeduse or commercial exploitation of which would becontrary to public order or morality or whichcauses serious prejudice to human, animal or plantlife or health or to the environment;]

(c) themere discovery of a scientific principle or the formulation of an abstracttheory [13][13][or discovery of anyliving thing or non-living substanceoccurring in nature];

(d) themere discovery of any new property or new use for a known substance or of themere use of a known process, machine or apparatus unless such known processresults in a new product or employs at least one new reactant;

(e) asubstance obtained by a mere admixture resulting only in the aggregation of theproperties of the components thereof or a process for producing such substance;

(f) themere arrangement or re–arrangement or duplication of known devices eachfunctioning independently of one another in a known way;

(g)[14][14][——-]

(h) amethod of agriculture or horticulture;

(i) anyprocess of the medicinal, surgical, curative, prophylactic [15][15][diagnostic, therapeutic] or othertreatment of human beings or any process for a similar treatment of animals [16][16][—–] to reader them free of disease orto increase their economic value or that of their products.

[17][17][(j) plants andanimals in whole or any part thereofother than micro-organisms butincluding seeds, varietiesand species and essentially biologicalprocesses for production or propagationof plants and animals;

(k) a mathematical or business method or acomputer programme per se or algorithms;

(l) aliterary, dramatic, musical or artistic work or any other aesthetic creationwhatsoever includingcinematographic works and television productions;

(m) amere scheme or rule or method of performing mental act or method of playinggame;

(n) apresentation of information;

(o) topographyof integrated circuits;

(p) an invention which, in effect, istraditional knowledge or which is an aggregation or duplication of knownproperties of traditionally known component or components.]

4. Inventions relating to atomic energy notpatentable.

No patent shall be granted in respect of aninvention relating to atomic energy falling within sub–section (1) ofsection 20 of the Atomic Energy Act, 1962 (33 of 1962).

5. Inventions where only methods orprocesses of manufacture patentable.

[18][18][(1)] In the case of inventions –

(a) claimingsubstances intended for use, or capable of being used, as food or as medicineor drug, or

(b) relatingto substances prepared or produced by chemical processes (including alloys,optical glass, semi conductors and inter–metallic compounds),

no patent shall be grantedin respect of claims for the substances themselves, but claims for the methodsor processes of manufacture shall be patentable.

[19][19][(2) Notwithstanding anything contained in sub-section (1), a claim forpatent of an invention for a substance itself intended for use, or capable ofbeing used, as medicine or drug, except the medicine or drug specified undersub-clause (v) of clause (I) of sub-section (1) of section 2, may be made andshall be dealt, without prejudice to the other provisions of this Act, in themanner provided in Chapter IV A.]

[20][20][Explanation: For the purposes of this section,"chemical processes"includes biochemical, biotechnological andmicrobiological processes.]

CHAPTER III

APPLICATIONS FOR PATENTS

6. Persons entitled to apply for patents.

(1) Subject to theprovisions contained in section 134, an application for a patent for aninvention may be made by any of the following persons, that is to say, –

(a) byany person claiming to be the true and first inventor of the invention;

(b) byany person being the assignee of the person claiming to be the true and firstinventor in respect of the right to make such an application;

(c) bythe legal representative of any deceased person who immediately before hisdeath was entitled to make such an application.

(2) An application under sub–section(1) may be made by any of the persons referred to therein either alone orjointly with any other person.

7. Form of application.

(1) Every application for a patent shall befor one invention only and shall be made in the prescribed form and filed inthe patent office.

[21][21][(1A) Everyinternational application under thePatent Cooperation Treaty fora patent, as may be fileddesignating India, shallbe deemed to be an application under this Act,if a corresponding application has also been filedbefore the Controller in India.]

(2)Where the application is made by virtue of an assignment of the right to applyfor a patent for the invention, there shall be furnished with the application,or within such period as may be prescribed after the filing of the application,proof of the right to make the application.

(3) Every application under this sectionshall state that the applicant is in possession of the invention and shall namethe owner claiming to be the true and first inventor; and where the person soclaiming is not the applicant or one of the applicants, the application shallcontain a declaration that the applicant believes the person so named to be thetrue and first inventor.

(4) Every such application (not being aconvention application) shall be accompanied by a provisional or a completespecification.

8. Information and undertaking regardingforeign applications.

(1) Where an applicant for a patent underthis Act is prosecuting either alone or jointly with any other person anapplication for a patent in any country outside India in respect of the same orsubstantially the same invention, or where to his knowledge such an applicationis being prosecuted by some person through whom he claims or by some personderiving title from him , he shall file along with his application [22][22][or subsequently within such period asthe Controller may, forgood and sufficient reasons,allow] –

[23][23][(a) a statement setting out detailed particulars ofsuch application; and]

(b) anundertaking that, up to the date of the acceptance of his completespecification filed in India, he would keep the controller informed in writing,from time to time, of [24][24][detailed particulars as required under] clause (a) in respect of every otherapplication relating to the same or substantially the same invention, if any,filed in any country outside India subsequently to the filing of the statementreferred to in the aforesaid clause, within the prescribed time.

[25][25][(2) At any time after anapplication for patent is filed in India and till thegrant of patent or refusal to grant ofpatent is made thereon,the Controller may also require the applicant tofurnish details, as may beprescribed, relating to the processingof the application ina country outsideIndia, and in thatevent the applicant shall furnishinformation available to him to the Controller within thirtydays from the date ofreceipt of thecommunication requiring such furnishing of information or within suchfurther period as the Controller may, for good and sufficient reasons, allow.]

9. Provisional and complete specifications.

(1) Where an application for a patent (notbeing a convention application) is accompanied by a provisional specification,a complete specification shall be filed within twelve months from the date offiling of the application, and if the complete specification is not so filedthe application shall be deemed to be abandoned:

Provided that the complete specificationmay be filed at any time after twelve months but within fifteen months from thedate aforesaid, if a request to that effect is made to the Controller and theprescribed fee is paid on or before the date on which the completespecification is filed.

(2) Where two or more applications in thename of the same applicant are accompanied by provisional specifications inrespect of inventions which are cognate or of which one is a modification ofanother and the controller is of opinion that the whole of such inventions aresuch as to constitute a single invention and may properly be included in onepatent, he may allow one complete specification to be filed in respect of allsuch provisional specifications.

(3) Where an applicationfor a patent (not being a convention application) is accompanied by aspecification purporting to be a complete specification, the controller may, ifthe applicant so requests at any time before the acceptance of thespecification, direct that such specification shall be treated for the purposesof this Act as a provisional specification and proceed with the applicationaccordingly.

(4) Where a complete specification has beenfiled in pursuance of an application for a patent accompanied by a provisionalspecification or by a specification treated by virtue of a direction under sub–section(3) as a provisional specification, the Controller may, if the applicant sorequests at any time before the acceptance of the complete specification,cancel the provisional specification and post–date the application tothe date of filling of the complete specification.

10. Contents of specifications.

(1) Every specification, whether provisionalor complete, shall describe the invention and shall begin with a titlesufficiently indicating the subject–matter to which the inventionrelates.

(2) Subject to any rules that may be madeis this behalf under this Act, drawings may, and shall, if the controller sorequires, be supplied for the purposes of any specification, whether completeor provisional; and any drawings so supplied shall, unless the Controllerotherwise directs, be deemed to form part of the specification, and referencesin this Act to a specification shall be construed accordingly.

(3) If, in any particular case, theController considers that an application should be further supplemented by amodel or sample of anything illustrating the invention or alleged to constitutean invention, such model or sample as he may require shall be furnished beforethe acceptance of the application, but such model or sample shall not be deemedto form part of the specification.

(4) Every complete specification shall –

(a) fullyand particularly describe the invention and its operation or use and the methodby which it is to be performed;

(b) disclosethe best methods of performing the invention which is known to the applicantand for which he is entitled to claim protection; and

[26][26][(d) be accompanied by an abstract to provide technical information onthe invention:

Provided that-

(i) theController may amend theabstract for providingbetter information to third parties;and

(ii) if theapplicant mentions abiological material inthe specification which may notbe described in such a way as to satisfyclauses (a) and(b), and if such material is not available to thepublic, the application shall becompleted by depositing the material toan authorised depository institution as may benotified by the CentralGovernment in the Official Gazette and byfulfilling the followingconditions, namely:-

(A) the deposit of the material shall be madenot later than the date of the patent application in India;

(B) all the available characteristics of thematerial required for it to be correctlyidentified or indicatedare included in thespecification including thename, address ofthe depository institution and the date and number of the deposit of thematerial at the institution;

(C) access to the material is available in thedepository institution only after the date of the application for patent inIndia or if a priority is claimed after the date of thepriority;

(D) disclose thesource and geographical origin ofthe biological material in thespecification, when used in an invention.]

[27][27][(4A) In case of an internationalapplication designating India,-

(i) the title, description, drawings,abstract and claims filed with the application shall be taken as the completespecification for the purposes of thisAct; and

(ii) the filingdate of theapplication and itscomplete specification, processedby the patent office as designated office or elected office, shall be the international filingdate accorded under the Patent Cooperation Treaty.]

[28][28][(5) The claim or claims of a completespecification shall relate to a singleinvention, or to a group of inventions linked so as to form a singleinventive concept, shall be clearand succinct and shall be fairly based on the matter disclosed inthe specification.]

(6) A declaration as to the inventorship ofthe invention shall, in such cases as may be prescribed, be furnished in theprescribed form with the complete specification or within such period as may beprescribed after the filing of that specification.

(7) Subject to the foregoing provisions ofthis section, a complete specification filed after a provisional specificationmay include claim in respect of developments of, or additions to, the inventionwhich was described in the provisional specification, being developments oradditions in respect of which the applicant would be entitled under theprovisions of section 6 to make a separate application for a patent.

11. Priority dates of claims of a completespecification.

(1)There shall be a priority date for each claim of a complete specification.

(2) Where a complete specification is filedin pursuance of a single application accompanied by –

(a) aprovisional specification; or

(b) aspecification which is treated by virtue of a direction under sub–section(3) of section 9 as a provisional specification,

and the claim is fairly based on the matterdisclosed in the specification referred to in clause (a) or clause (b) , thepriority date of that claim shall be the date of the filing of the relevantspecification.

(3) Where the complete specification isfiled or proceeded with in pursuance of two or more applications accompanied bysuch specifications as are mentioned in sub–section (2) and the claim isfairly based on the matter disclosed –

(a) inone of those specifications, the priority date of that claim shall be the dateof the filing of the application accompanied by that specification;

(b) partlyin one and partly in another, the priority date of that claim shall be the dateof the filing of the application accompanied by the specification of the laterdate.

(4) Where the complete specification hasbeen filed in pursuance of a further application made by virtue of sub–section(1) of section 16 and the claim is fairly based on the matter disclosed in anyof the earlier specifications, provisional or complete, as the case may be, thepriority date of that claim shall be the date of the filing of thatspecification in which the matter was first disclosed.

(5) Where, under the foregoing provisionsof this section, any claim of a complete specification would, but for theprovisions of this sub–section, have two or more priority dates, thepriority date of that claim shall be the earlier or earliest of those dates.

(6) In any case to which sub–sections(2) , (3) , (4) and (5) do not apply, the priority date of a claim shall,subject to the provisions of section 137, be the date of filing of the completespecification.

(7) The reference to the date of the filingof the application or of the complete specification in this section shall, incases where there has been a post–dating under section 9 or section 17or, as the case may be, an ante–dating under section 16, be a referenceto the date as so post–dated or ante–dated.

(8) A claim in a complete specification ofa patent shall not be invalid by reason only of –

(a) thepublication or use of the invention so far as claimed in that claim on or afterthe priority date of such claim; or

(b) thegrant of another patent which claims the invention, so far as claimed in thefirst-mentioned claim, in a claim of the same or a later priority date.

CHAPTER IV

[29][29][PUBLICATION AND EXAMINATION OFAPPLICATIONS]

[30][30][11A. Publication of applications-

(1)Applications for patents shall notbe open to the public for aperiod of eighteen months from the date of filing or date of priority,whichever is earlier.

(2)Except when a secrecy direction is given under section 35, every application for a patentshall, on the expiry of theperiod as specified insub-section (1), be published.

(3)The publication ofevery application for a patentshall be notified in the OfficialGazette.

(4)In case asecrecy direction has been given inrespect of an application undersection 35, then, it shall be published after the expiryof the period of eighteen months or when the secrecy direction hasceased to operate, whichever is later.

(5)The publication of every application under this sectionshall include the particularsof the dateof application, numberof application, name andaddress of theapplicant identifying the application and an abstract.

(6) Upon publication of an application fora patent under this section-

(a) thedepository institution shall makethe biological material mentioned in the specificationavailable to the public;

(b) the patentoffice may, onpayment of such feeas may be prescribed, makethe specification and drawings,if any,of such application available tothe public.

11B. Request for examination.

(1) No application for a patent shall berequired to be examined unlessthe applicant or any other interested personmakes a request in the prescribed manner for such examination within forty-eight months from the date offiling of the application for patent.

(2)In case of an application filedbefore the commencement of the Patents(Amendment) Act, 2002, a request in the prescribed manner forexamination shall be made by the applicant or any otherinterested person within a period oftwelve months from the date ofsuch commencement or withinforty-eight months from thedate of the application, whichever is later.

(3)In case of an application in respect of a claim fora patent covered undersub-section (2) ofsection 5, arequest in the prescribed mannerfor examination shall be made by the applicant or anyother interested person within a period of twelve months from the31st day of December, 2004 or withinforty-eight months from the date of the application, whichever is later.

(4) In case the applicantor any other interested person does not make arequest for examination of the application for a patent within the periodas specified undersub-section (1) orsub-section (2) or sub-section (3), the application shall be treated aswithdrawn by the applicant: Provided that-

(i) the applicant may, at any timeafter the filing of the application butbefore the grant of the patent, withdraw the application made by him;and

(ii) in a case where a secrecydirection has been issued under section 35,the request for examination may be made within forty-eight months fromthe date of revocation of the secrecy direction.]

CHAPTER IV

EXAMINATION OFAPPLICATIONS

12. Examination of application:

(1) [31][31][When a request for examination has beenmade in respect of an application for a patent in the prescribed mannerunder sub-section (1) orsub-section (2) or sub-section(3) ofsection 11B, the application andspecification and other documents relating thereto] shall be referred by the controllerto an examiner for making a report to him in respect of the following matters,namely:-

(a) whether the application and the [32][32][specification and other documentsrelating thereto] are in accordance with the requirements of this Act and ofany rules made thereunder;

(b) whetherthere is any lawful ground of objection to the grant of the patent under thisAct in pursuance of the application;

(d) anyother matter which may be prescribed.

(2) The examiner to whom the applicationand the [33][33][specificationand other documents relating thereto] are referred under sub–section(1) shall ordinarily make the report to the Controller within a period ofeighteen months from the date of such reference.

13. Search for anticipation by previouspublication and by prior claim.

(1) The examiner to whom an application fora patent is referred under section 12 shall make investigation for the purposeof ascertaining whether the invention so far as claimed in any claim of thecomplete specification –

(a) has been anticipated by publicationbefore the date of filing of the applicant’s complete specification in anyspecification filed in pursuance of a application for a patent made in Indiaand dated on or after the 1st day of January, 1912;

(b) isclaimed in any claim of any other complete specification published on or afterthe date of filing of the applicant’s complete specification, being aspecification filed in pursuance of an application for a patent made in Indiaand dated before or claiming the priority date earlier than that date.

(2) The examiner shall, in addition, makesuch investigation [34][34][—–] for the purpose of ascertainingwhether the invention, so far as claimed in any claim of the completespecification, has been anticipated by publication in India or elsewhere in anydocument other than those mentioned in sub–section (1) before the dateof filing of the applicant’s complete specification.

(3) Where a complete specification isamended under the provisions of this Act before it has been accepted, theamended specification shall be examined and investigated in like manner as theoriginal specification.

(4) The examination andinvestigations required under section 12 and this section shall not be deemedin any way to warrant the validity of any patent, and no liability shall beincurred by the Central Government or any officer thereof by reason of, or inconnection with, any such examination or investigation or any report or otherproceedings consequent thereon.

14. Consideration of report of examiner byController.

Where, in respect of anapplication for a patent, the report of the examiner received by the Controlleris adverse to the applicant or requires any amendment of the application or ofthe specification to ensure compliance with the provisions of this Act or of therules made thereunder, the controller, before proceeding to dispose of theapplication in accordance with the provisions hereinafter appearing, shallcommunicate the gist of the objections to the applicant and shall, if sorequired by the applicant within the prescribed time, give him an opportunityof being heard.

[35][35][15. Power ofController to refuse or require amendedapplications, etc., in certain cases.-

Where the Controller issatisfied that the application orany specification or any otherdocument filed in pursuance thereof does not comply with therequirements of this Act or of any rulesmade thereunder, the Controllermay require the application, specification or other document, as the casemay be, to be amended to hissatisfaction before he proceeds with the application or refuse the applicationon failure to do so.]

16. Power of Controller to make ordersrespecting division of application.

(1) A persons who has made an applicationfor a patent under this Act may, at any time before the acceptance of thecomplete specification, if he so desires, or with a view to remedy theobjection raised by the Controller on the ground that the claims of thecomplete specification relate to more than one invention, file a furtherapplication in respect of an invention disclosed in the provisional or completespecification already filed in respect of the first mentioned application.

(2) The further application under sub–section(1) shall be accompanied by a complete specification, but such completespecification shall not include any matter not in substance disclosed in thecomplete specification filed in pursuance of the first-mentioned application.

(3) The Controller may require suchamendment of the complete specification filed in pursuance of either theoriginal or the further application as a may be necessary to ensure thatneither of the said complete specifications includes a claim for any matterclaimed in the other.

Explanation: For thepurposes of this Act, the further application and the complete specificationaccompanying it shall be deemed to have been filed on the date on which thecomplete specification in pursuance of the first-mentioned application had beenfiled, and the further application shall, subject to the determination of thepriority date under sub–section (4) of section 11, be proceeded with asa substantive application.

17. Power of Controller to make ordersrespecting dating of application.

(1) Subject to the provisions of section 9,at any time after the filing of an application and before acceptance of thecomplete specification under this Act, the controller may, at the request ofthe applicant made in the prescribed manner, direct that the application shallbe post–dated to such date as may be specified in the request, andproceed with the application accordingly:

Provided that no application shall be post–datedunder this sub–section to a date later than six month from the date onwhich it was actually made or would, but for the provisions of this sub–section,be deemed to have been made.

[36][36][(2) Where an application orspecification (including drawings) or any otherdocument is requiredto be amended under section15, the application orspecification or otherdocument shall, ifthe Controller so directs,be deemed to have been made on the dateon which the requirement is complied with or wherethe application or specification or other document is returned to theapplicant, on the date on which it isre-filed after complying with the requirement.]

18. Powers of Controller in cases ofanticipation.

(1) Where it appears to the Controller thatthe invention so far a claimed in any claim of the complete specification hasbeen anticipated in the manner referred to in clause (a) of sub–section(1) or sub–section (2) of section 13, he may refuse to accept thecomplete specification unless the applicant –

(a) shows to the satisfaction of theController that the priority date of the claim of his complete specification isnot later than the date on which the relevant document was published; or

(b) amendshis complete specification to the satisfaction of the controller.

(2) If it appears to the controller thatthe invention is claimed in a claim of any other complete specificationreferred to in clause (b) of sub–section (1) of section 13, he may,subject to the provisions hereinafter contained, direct that a reference tothat other specification shall be inserted by way of notice to the public inthe applicant’s complete specification unless within such time as may beprescribed, –

(a) theapplicant shows to the satisfaction of the Controller that the priority date ofhis claim is not later than the priority date of the claim of the said otherspecification; or

(b) thecomplete specification is amended to the satisfaction of the Controller.

(3) If it appears to the Controller, as aresult of an investigation under section 13 or otherwise, –

(a) thatthe invention so far as claimed in any claim of the applicant’s completespecification has been claimed in any other complete specification referred toin clause (a) of sub–section (1) of section 13; and

(b) thatsuch other complete specification was published on or after the priority dateof the applicant’s claim.

then, unless it is shown to thesatisfaction of the controller that the priority date of the applicant’s claimis not later than the priority date of the claim of that specification, theprovisions of sub–section(2) shall apply thereto in the same manner asthey apply to a specification published on or after the date of filing of theapplicant’s complete specification.

(4) Any order of the Controller under sub–section(2) or sub–section (3) directing the insertion of a reference to anothercomplete specification shall be of no effect unless and until the other patentis granted.

19. Powers of Controller in case ofpotential infringement.

(1) If, in consequence of theinvestigations required by the fore–going provisions of this Act or ofproceedings under section 25, it appears to the controller that an invention inrespect of which an application for a patent has been made cannot be performedwithout substantial risk or infringement of a claim of any other patent, he maydirect that a reference to that other patent shall be inserted in theapplicant’s complete specification by way of notice to the public, unlesswithin such time as may be prescribed –

(a) theapplicant shows to the satisfaction of the controller that there are reasonablegrounds for contesting the validity of the said claim of the other patent; or

(b) thecomplete specification is amended to the satisfaction of the Controller.

(2) Where, after a reference to anotherpatent has been inserted in a complete specification in pursuance of adirection under sub–section (1) –

(a) thatother patent is revoked or otherwise ceases to be in force; or

(b) thespecification of that other patent is amended by the deletion of the relevantclaim; or

(c) itis found, in proceedings before the court or the controller, that the relevantclaim of that other patent is invalid or is not infringed by any working of theapplicant’s invention,

the Controller may, on the application ofthe applicant, delete the reference to that other patent.

20. Powers of Controller to make ordersregarding substitution of applicants, etc.

(1) If the Controller is satisfied, on aclaim made in the prescribed manner at any time before a patent has beengranted, that by virtue of any assignment or agreement in writing made by theapplicant or one of the applicants for the patent or by operation of law, theclaimant would, if the patent were then granted, be entitled thereto or to theinterest of the applicant therein, or to an undivided share of the patent or ofthat interest, the Controller may, subject to the provisions of this section,direct that the application shall proceed in the name of the claimant or in thenames of the claimants and the applicant or the other joint applicant or applicants,accordingly as the case may require.

(2) No such direction as aforesaid shall begiven by virtue of any assignment or agreement made by one of two or more jointapplicants for a patent except with the consent of the other joint applicant orapplicants.

(3) No such direction as aforesaid shall begiven by virtue of any assignment or agreement for the assignment of thebenefit of an invention unless –

(a) theinvention is identified therein by reference to the number of the applicationfor the patent; or

(b) thereis produced to the Controller an acknowledgment by the person by whom theassignment or agreement was made that the assignment or agreement relates tothe invention in respect of which that application is made; or

(d) theController gives directions for enabling the application to proceed or forregulating the manner in which it should be proceeded with under sub–section(5).

(4) Where one of two or more jointapplicants for a patent dies at any time before the patent has been granted,the Controller may, upon a request in that behalf made by the survivor orsurvivors, and with the consent of the legal representative of the deceased,direct that the application shall proceed in the name of the survivor orsurvivors alone.

(5) Ifany dispute arises between joint applicants for a patent whether or in whatmanner the application should be proceeded with, the Controller may, uponapplication made to him in the prescribed manner by any of the parties, andafter giving to all parties concerned an opportunity to be heard, give suchdirections as he thinks fit for enabling the application to proceed in the nameof one or more of the parties alone or for regulating the manner in which itshould be proceeded with, or for both those purposes, as the case may require.

21. Time for putting application in orderfor acceptance.

(1) An application for a patent shall bedeemed to have been abandoned unless within [37][37][twelvemonths from the date on which the firststatement of objections tothe application or completespecification or other documents relatingthereto is forwarded to the applicantby the Controller,] the applicanthas complied with all the requirements imposed on him by or under this Act,whether in connection with the complete specification or otherwise in relationto the application.

Explanation: Wherethe application or any specification or, in the case of a conventionapplication, any document filed as part of the application has been returned tothe applicant by the Controller in the course of the proceedings, the applicantshall not be deemed to have complied with such requirements unless an until hehas re–filed it.

(2) [38][38][——]

(3) If at the expiration of the period of [39][39][twelve months] –

(a) anappeal to the [Appellate Board] is pending in respect of the application forthe patent for the main invention, or

(b) inthe case of an application for a patent of addition, an appeal to the [Appellate Board ] is pending in respectof either that application or the application for the main invention,

the time within which the requirements ofthe Controller shall be complied with shall, on an application made by theapplicant before the expiration of the said period of [40][40][twelve months] be extended until suchdate as the [Appellate Board] may determine.

(4) If the time within which the appealmentioned in sub–section (3) may be instituted has not expired, theController may extend the period of [41][41][twelve months to] such further period ashe may determine;

Provided that if an appeal has been filedduring the said further period, and the [Appellate Board] has granted anyextension of time for complying with, the requirements of the Controller, them,the requirements may be complied with within the time granted by the [Board].

22. Acceptance of complete specification:

Subject to the previsions of section 21,the complete specification filed in pursuance of an application for a patentmay be accepted by the Controller at any time after the applicant has compliedwith the requirements mentioned in sub–section (1) of that section, and,if not so accepted within the period allowed under that section for compliancewith those requirements, shall be accepted as soon as may be thereafter;

Provided that the applicantmay make an application to the controller in the prescribed manner requestinghim to postpone acceptance until such date [not being later than [42][42][twelve months] from the date on whichthe objections referred to in sub–section (1) of section 21 areforwarded to the applicant] as may be specified in the application, and, ifsuch application is made, the Controller may postpone acceptance accordingly.

23. Advertisement of acceptance of completespecification.

On the acceptance of acomplete specification, the Controller shall give notice thereof to theapplicant and shall advertise in the Official Gazette the fact that thespecification has been accepted, and thereupon the application and thespecification with the drawings (if any) [43][43][as accepted by the Controller along withother documents filed by theapplicant in pursuance thereof] shallbe open to public inspection.

24. Effect of acceptance of completespecification.

On and from the date of advertisement ofthe acceptance of a complete specification and until the date of sealing of apatent in respect thereof, the applicant shall have the like privileges andrights as if a patent for the invention had been sealed on the date ofadvertisement of acceptance of the complete specification:

Provided that the applicantshall not be entitled to institute any proceedings for infringement until thepatent has been sealed.

[44][44][CHAPTER IV A

Exclusive MarketingRights

24A. Applicationfor grant of exclusive rights:

(1) Notwithstandinganything contained in sub-section (1) of section 12, the Controller shall not,under that sub-section refer an application in respect of a claim for a patentcovered under sub-section (2) of section 5 to an examiner for making a reporttill the 31st day of December, 2004 and shall, where an application for grantof exclusive right to sell or distribute the article or substance in India hasbeen made in the prescribed from the manner and on payment of prescribed fee,refer the application for the patent, to an examiner for making a report to himas to whether the invention is not an invention within the meaning of this Act,in terms of section 3 or the invention is an invention for which no patent canbe granted in terms of section 4.

(2) Where thecontroller, on receipt of report under sub-section (1) and after such otherinvestigation as he may deem necessary, is satisfied that the invention is notan invention within the meaning of this Act, in terms of section 3 or theinvention is an invention for which no patent can be granted in terms ofsection 4, he shall reject the application for exclusive right to sell ordistribute the article or substance.

(3) In case wherean application for exclusive right to sell or distribute an article or asubstance is not rejected by the Controller on receipt of a report undersub-section (1) and after such other investigation, if any, made by him, he mayproceed to grant exclusive right to sell or distribute the article or substancein the manner provided in section 24-B.

Explanation:It is hereby clarified that for the purposes of this section, the exclusiveright to sell or distribute any article or substance under this section shallnot include an article or substance based on the system of Indian medicine asdefined in clause (e) of sub-section (1) of section 2 of the Indian MedicineCentral Council Act, 1970 (48 of 1970) and were such article or substance isalready in the public domain.

24B. Grant ofexclusive rights:

(1)Where a claim for patent covered under sub-section (2) of section 5 has beenmade and the applicant has, –

(a) where aninvention has been made whether in India or in a country other than India andbefore filing such a claim, filed an application for the same inventionclaiming identical article or substance in a convention country on or after the1st day of January, 1995 and the patentand the approval to sell or distribute the article or substance on the basis ofappropriate tests conducted on or after the 1stday of January, 1995, in that country has been granted on or after thedate of making a claim for patent covered under sub-section (2) of section 5;or

(b) where an invention has been made in Indiaand before filing such a claim, made a claim for patent on or after the 1st dayof January, 1995 for method or process of manufacture for that inventionrelating to identical article or substanceand has been granted in India the patent therefor on or after the dateof a making a claim for patent covered under sub-section (2) of section 5,

and has receivedthe approval to sell or distribute the article or substance from the authorityspecified in this behalf by the Central Government, then, he shall have theexclusive right by himself, his agents or licensees to sell or distribute inIndia the article or substance on and from the date of approval granted by theController in this behalf till a period of five years or till the date of thegrant of patent or the date of rejection of application for the grant of thepatent, whichever is earlier.

(2) Where, thespecifications of an invention relatable to an article or a substance coveredunder sub-section (2) of section 5 have been recorded in a document or theinvention has been tried or used, or, the article or the substance has beensold, by a person, before a claim for a patent of that invention is made inIndia or in a convention country, then, the sale or distribution of the articleor substance by such person, after the claim referred to above is made, shallnot be deemed to be an infringement of exclusive right to sell or distributeunder sub-section (1)

Provided thatnothing in this sub-section shall apply in a case where a person makes or usesan article or a substance with a view to sell or distribute the same, thedetails of invention relatable thereto were given by a person who was holdingan exclusive right to sell or distribute the article or substance.

24C. CompulsoryLicences:

Theprovisions in relation to compulsory licences in Chapter XVI shall, subject tothe necessary modifications, apply in relation to an exclusive right to sell ordistribute under section 24B as they apply to, and in relation to, a rightunder a patent to sell or distribute and for that purpose the followingmodifications shall be deemed to have been made to the provisions of thatChapter and all their grammatical variations and cognate expressions shall beconstrued accordingly, namely: –

(a) throughout Chapter XVI, –

(i) working of the invention shall be deemedto be selling or distributing of the article or substance;

(ii) references to "patents" shall bedeemed to be references to "right to sell or distribute";

(iii) references to "patented article"shall be deemed to be references to "an article for which exclusive rightto sell or distribute has been granted";

(b) three years from the date ofsealing of a patent in section 84 shall be deemed to be two years from the dateof approval by the Controller for exclusive rights to sell or distribute undersection 24-B;

(c) the time which has elapsed since thesealing of a patent under [45][45][section 84] shall be deemed to be the time which has elapsedsince the approval by the Controller for exclusive rights to sell or distributeunder section 24-B;

[46][46][(d) clause(e) of sub-section (7) of section 84 shall be omitted.]

24D. Specialprovision for selling or distribution:

(1) Withoutprejudice to the provisions of any other law for the time being in force,where, at any time after an exclusive right to sell or distribute any articleor substance has been granted under sub-section (1) of section 24-B, theCentral Government is satisfied that it is necessary or expedient in publicinterest to sell or distribute the article or substance by a person other thana person to whom exclusive right has been granted under sub-section (1) ofsection 24-B, it may, by itself or through any person authorised in writing byit in this behalf, sell or distribute the article or a substance.

(2) The CentralGovernment may, by notification in the Official Gazette and at any time afteran exclusive right to sell or distribute an article or a substance has beengranted, direct, in the public interest and for reasons to be stated, that thesaid article or a substance shall be sold at a price determined by an authorityspecified by it in this behalf.

24E. Suits relatingto infringements:

All suits relatingto infringement of a right under section 24-B shall be dealt with, in the samemanner as if they were suits concerning infringements of patents under ChapterXVIII.

24F. CentralGovernment and its officers not to be liable:

The examination andinvestigations required under this Chapter shall not be deemed in any way towarrant the validity of any grant of exclusive right to sell or distribute andno liability shall be incurred by the Central Government or any officer thereofby reason of, or in connection with, any such examination or investigation orany report or other proceedings consequent thereon.]

CHAPTER V

OPPOSITIONTO GRANT OF PATENT

25. Opposition to grant of patent:

(1) At any time withinfour months from the date of advertisement of the acceptance of a completespecification under this Act (or within such further period not exceeding onemonth in the aggregate as the controller may allow on application made to himin the prescribed manner before the expiry of the four months aforesaid) anyperson interested may give notice to the controller of opposition to the grantof the patent on any of the following grounds, namely: –

(a) thatthe applicant for the patent or the person under or through whom he claim,wrongfully obtained the invention or any part thereof from him or from a personunder or through whom he claims;

(b) thatthe invention so far as claimed ion any claim of the complete specification hasbeen published before the priority date of the claim –

(i) inany specification filed in pursuance of an application for a patent made inIndia on or after the 1st day of January, 1912; or

(ii) inIndia or elsewhere, in any other document:

Provided that the ground specified in sub–clause(ii) shall not be available where such publication does not constitute ananticipation of the invention by virtue of sub–section (2) or sub–section(3) of section 29;

(c) thatthe invention so far as claimed in any claim of the complete specification isclaimed in a claim of a complete specification published on or after thepriority date of the applicant’s claim and filed ion pursuance of anapplication for a patent in India, being a claim of which the priority date isearlier than that of the applicant’s claim:

(d) thatthe invention so far as claimed in any claim of the complete specification waspublicly known or publicly used in India before the priority date of thatclaim.

Explanation: –For the purposes ofthis clause, an invention relating to a process for which a patent is claimedshall be deemed to have been publicly known or publicly used in India beforethe priority date of the claim if a product made by that process had alreadybeen imported into India before that date except where such importation hasbeen for the purpose of reasonable trial or experiment only;

(e) thatthe invention so far a claimed in any claim of the complete specification isobvious and clearly does not involve any inventive step, having regard to thematter published as mentioned in clause (b) or having regard to what was usedin India before the priority date of the applicant’s claim;

(f) thatthe subject of any claim of the complete specification is not an inventionwithin the meaning of this Act, or is not patentable under this Act;

(g) thatthe complete specification does not sufficiently and clearly describe theinvention or the method by which it is to be performed;

(h) thatthe applicant has failed to disclose to the Controller the information requiredby section 8 or has furnished the information which in any material particularwas false to his knowledge;

(i) thatin the case of a convention application, the application was not made withintwelve months from the date of the first application for protection for theinvention made in a convention country by the applicant or a person from whomhe derives title;

[47][47][(j)that the complete specification does not disclose or wronglymentions the source or geographical origin of biological material used for theinvention;

(k) that the invention so far as claimed in anyclaim of the complete specification isanticipated having regard to the knowledge, oral or otherwise, available within any local or indigenouscommunity in India or elsewhere,]

but on no other ground.

(2) Where any such notice of opposition isduly given, the controller shall notify the applicant and [48][48][may, if so desired, give] to theapplicant and the opponent an opportunity to be heard before deciding the case.

(3) The grant of a patent shall not berefused on the ground stated in clause (c) of sub–section (1) if nopatent has been granted in pursuance of the application mentioned in thatclause; and for the purpose of any inquiry under cause (d) or clause (e) ofthat sub–section, no account shall be taken of any [49][49][personal document or secret trialor] secret use.

26. In cases of obtaining Controller maytreat application as application of opponent.

(1) Where in any opposition proceedingunder this Act –

(a) theController finds that the invention, so far as claimed in any claim of thecomplete specification, was obtained from the opponent in the manner set out inclause (a) or sub section (1)of section 25 and refuses the application on thatground, he may, on request by such opponent made in the prescribed manner,direct that the application small proceed in the name or the opponent as if theapplication and the specification had been filed by the opponent on the date onwhich they were actually filed;

(b) theController finds that a part of an invention described in the completespecification was so obtained from the opponent and passes an order requiringthat the specification be amended by the exclusion of that part of theinvention, the opponent may, subject to the provisions of sub–section(2) , file an application in accordance with the provisions of this Actaccompanied by a complete specification for the grant or a patent for theinvention so excluded from the applicant’s specification, and the Controllermay treat such application and specification as having been filed, for thepurposes of this Act relating to the priority dates of claims of the completespecification, on the date on which the corresponding document was or wasdeemed to have been filed by the earlier applicant, but for all other purposesthe application of the opponent shall be proceeded with as an application for apatent under this Act.

(2) Where an opponent has, before the dateof the order of the Controller requiring the amendment of a completespecification referred to in clause (b) of sub–section (1) , filed anapplication for a patent for an invention which includes the whole or a part ofthe invention held to have been obtained from him and such application is pending,the Controller may treat such application and specification in so far as theyrelate to the invention held to have been obtained from him, as having beenfiled, for the purposes of this Act relating to the priority dates of claims ofthe complete specification, on the date on which the corresponding document wasor was deemed to have been filed by the earlier applicant, but for all otherpurposes the application of the opponent shall be proceeded with as anapplication for a patent under this Act.

27. Refusal of patent without opposition.

If at any time after the acceptance of thecomplete specification filed in pursuance of an application for a patent andbefore the grant of a patent thereon it comes to the notice of the Controllerotherwise than in consequence of proceedings in opposition to the grant undersection 25, that the invention, so far as claimed in any claim of the completespecification, has been published before the priority date of the claim –

(a) inany specification filed in pursuance of an application for a patent made inIndia and dated on or after the 1st day of January, 1912;

(b) inany other document in India or elsewhere,

the Controller may refuse to grant thepatent unless, within such time as may be prescribed, the completespecification is amended to his satisfaction:

Provided that theController shall not refuse to grant the patent on the ground specified inclause (b) if such publication does not constitute an anticipation of theinvention by virtue of sub–section (2) or sub–section (3) ofsection 29.

28. Mention of inventor as such in patent.

(1) If the Controller issatisfied, upon a request or claim made in accordance with the provisions ofthis section, –

(a) thatthe person in respect of or by whom the request or claim is made is theinventor of an invention in respect of which application for a patent has beenmade, or of a substantial part of that invention; and

(b) thatthe application for the patent is a direct consequence of his being theinventor,

the Controller shall, subject to theprovisions of this section, cause him to be mentioned as inventor in any patentgranted in pursuance of the application in the complete specification and inthe register of patents:

Provided that the mention ofany person as inventor under this section shall not confer or derogate from anyrights under the patent.

(2) A request that any person shall bementioned as aforesaid may be made in the prescribed manner by the applicantfor the patent or (where the person alleged to be the inventor is not theapplicant or one of the applicants) by the applicant and that person.

(3) If any person [other than a person inrespect of whom a request in relation to the application in question has beenmade under sub–section (2)] desires to be mentioned as aforesaid, he maymake a claim in the prescribed manner in that behalf.

(4) A request or claim under the foregoingprovisions of this section shall be made not later than two months after thedate of advertisement of acceptance of the complete specification or withinsuch further period (not exceeding one month) as the Controller may, on anapplication made to him in that behalf before the expiration of the said periodof two months and subject to the payment of the prescribed fee, allow.

(5) No request or claim under the foregoingprovisions of this section shall be entertained if it appears to the controllerthat the request or claim is based upon facts which, if proved in the case ofan opposition under the provisions of clause (a) of sub–section (1) ofsection 25 by the person in respect of or by whom the request or claim is made,would have entitled him to relief under that section.

(6) Subject to the provisions of sub–section(5), where a claim is made under sub–section (3), the Controller shallgive notice of the claim to every applicant for the patent (not being theclaimant) and to any other person whom the controller may consider to beinterested; and before deciding upon any request or claim made under sub–section(2) or sub–section (3) , the Controller shall if required, hear theperson in respect of or by whom the request or claim is made, and, in the caseof a claim under sub–section (3) , any person to whom notice of theclaim has been given as aforesaid.

(7) Where any person has been mentioned asinventor in pursuance of this section, any other person who alleges that heought not to have been so mentioned may at any time apply to the Controller fora certificate to that effect, and the controller may, after hearing, ifrequired, any person whom he may consider to be interested, issued such acertificate, and if he does so, he shall rectify the specification and theregister accordingly.

CHAPTER VI

ANTICIPATION

29. Anticipation by previous publication.

(1) An invention claimed in a completespecification shall not be deemed to have been anticipated by reason only thatthe invention was published in a specification filed in pursuance of anapplication for a patent made in India and dated before the 1st day of January,1912.

(2) Subject as hereinafter provided, aninvention claimed in a complete specification shall not be deemed to have beenanticipated by reason only that the invention was published before the prioritydate of the relevant claim of the specification, if the patentee or theapplicant for the patent proves –

(a) thatthe matter published was obtained from him, or (where he is not himself thetrue and first inventor) from any person from whom he derives title, and waspublished without his consent or the consent of any such person; and

(b) wherethe patentee or the applicant for the patent or any person from whom he derivestitle learned of the publication before the date of the application for thepatent, or, in the case of convention application, before the date of theapplication for protection in a convention country, that the application or theapplication in the convention country, as the case may be, was made as soon asreasonably practicable thereafter:

Provided that this sub–sectionshall not apply if the invention was before the priority date of the claimcommercially worked in India, otherwise than for the purpose of reasonabletrial, either by the patentee or the applicant for the patent or any personfrom whom he derives title or by any other person with the consent of thepatentee or the applicant for the patent or any person from whom he derivestitle.

(3) Where a complete specification is filedin pursuance of an application for a patent made by a person the true and firstinventor or deriving title from him, an invention claimed in that specificationshall not be deemed to have been anticipated by reason only of any otherapplication for a patent in respect of the same invention made in contraventionof the rights of that person or by reason only that after the date of filing ofthat other application the invention was used or published, without the consentof that person, by the applicant in respect of that other application, or byany other person in consequence of any disclosure of any invention by thatapplicant.

30. Anticipation by previous communicationto Government.

An invention claimed in acomplete specification shall not be deemed to have been anticipated by reasononly of the communication of the invention to the Government or to any personauthorised by the government to investigate the invention or its merits, or ofanything done, in consequence of such a communication, for the purpose of theinvestigation.

31. Anticipation by public display, etc.

An invention claimed in acomplete specification shall not be deemed to have been anticipated by reasononly of –

(a) thedisplay of the invention with the consent of the true and first inventor or aperson deriving title from him at an industrial or other exhibition to whichthe provisions of this section have been extended by the Central Government bynotification in the Official Gazette, or the use thereof with his consent forthe purpose of such an exhibition, in the place where it is held; or

(b) thepublication of any description of the invention in consequence of the displayor use of the invention at any such exhibition as aforesaid; or

(c) theuse of the invention, after it has been displayed or used at any suchexhibition as aforesaid and during the period of the exhibition, by any personwithout the consent of the true and first inventor or a person deriving titlefrom him; or

(d) thedescription of the invention in a paper read by the true and first inventorbefore a learned society or published with his consent in the transactions ofsuch a society,

if the application for thepatent is made by the true and first inventor or a person deriving title fromhim not late than six months after the opening of the exhibition or the readingor publication of the paper, as the case may be.

32. Anticipation by public working.

An invention claimed in acomplete specification shall not be deemed to have been anticipated by reasononly that at any time within one year before the priority date of the relevantclaim of the specification, the invention was publicly worked in India –

(a) bythe patentee or applicant for the patent or any person from whom he derivestitle; or

(b) byany other person with the consent of the patentee or applicant for the paten orany person from whom he derives title,

if the working waseffected for the purpose of reasonable trial only and if it was reasonablynecessary, having regard to the nature of the invention , that the working forthat purpose should be effected in public.

33. Anticipation by use and publicationafter provisional specification.

(1) Where a complete specification is filedor proceeded with in pursuance of an application which was accompanied by aprovisional specification or where a complete specification filed along with anapplication is treated by virtue of a direction under sub–section (3) ofsection 9 as a provisional specification, then, notwithstanding anythingcontained in this Act the Controller shall not refuse to grant the patent, andthe patent shall not be revoked or invalidated by reason only that any matterdescribed in the provisional specification or in the specification treated asaforesaid as a provisional specification was used in India or published in Indiaor elsewhere at any time after the date of the filing of that specification.

(2) Where a complete specification is filedin pursuance of a convention application, then, notwithstanding anythingcontained in this Act, the Controller shall not refuse to grant the patent andthe patent shall not be revoked or invalidated, by reason only that any matterdisclosed in any application for protection in a convention country upon whichthe convention application is founded was used in India or published in Indiaor elsewhere at any time after the date of that application for production.

34. No anticipation if circumstances areonly as described in sections 29, 30, 31 and 32.

Notwithstanding anythingcontained in this Act, the Controller shall not refuse to accept a completespecification for a patent or to grant a patent, and a patent shall not berevoked or invalidated by reason only of any circumstances which, by virtue ofsection 29 or section 30 or section 31 or section 32, do not constitute ananticipation of the invention claimed in the specification.

CHAPTER VII

PROVISIONS FOR SECRECY OF CERTAININVENTIONS

35. Secrecy directions relating toinventions relevant for defence purposes.

(1) Where, in respect of an applicationmade before or after the commencement of this Act for a patent, it appears tothe Controller that the invention is one of a class notified to him by theCentral Government as relevant for defence purposes, or, where otherwise theinvention appears to him to be so relevant, he may give directions forprohibiting or restricting the publication of information with respect to theinvention or the communication of such information [50][50][—–].

(2) Where the Controller gives any suchdirections as are referred to in sub–section (1), he shall give noticeof the application and of the direction to the Central Government, and theCentral Government shall, upon receipt of such notice, consider whether thepublication of the invention would be prejudicial to the defence of India, and ifupon such consideration, it appears to it that the publication of the inventionwould not so prejudice, give notice to the Controller to that effect, who shallthereupon revoke the directions and notify the applicant accordingly.

(3) Without prejudice to the provisionscontained in sub–section (1), where the Central Government is of opinionthat an invention in respect of which the Controller has not given anydirections under sub–section (1), is relevant for defence purposes, itmay at any time before acceptance of the complete specification notify thecontroller to that effect, and thereupon the provisions of that sub–sectionshall apply as if the invention were one of the class notified by the Centralgovernment, and accordingly the Controller shall give notice to the CentralGovernment of the directions issued by him.

36. Secrecy directions to be periodicallyrev-viewed.

[51][51][(1) Thequestion whether an invention in respect of which directions have been given under section 35 continues to berelevant for defence purposes shall bereconsidered by the Central Government at intervals of twelve months or on a request made by theapplicant which is found to bereasonable by the Controller and if, on such reconsideration it appears tothe Central Governmentthat the publicationof the invention would no longerbe prejudicial to the defence of India or in case of an application filed by a foreignapplicant it is found that the inventionis published outside India, itshall forthwith give noticeto the Controller to revoke thedirection and the Controller shallthereupon revoke the directions previously given by him.]

(2) The result of every re–considerationunder sub–section (1), shall be communicated to the applicant withinsuch time and in such manner as may be prescribed.

37. Consequences of secrecy directions.

(1) So long as any directions under section35 are in force in respect of an application –

(a) theController shall not pass an order refusing to accept the same; and

(b) notwithstanding anything contained in thisAct, no appeal shall lie from any order of the Controller passed in respectthereof:

Provided that theapplication may, subject to the directions, proceed up to the stage of theacceptance of the complete specification, but the acceptance shall not beadvertised nor the specification published, and no patent shall be granted inpursuance of the application.

(2) Where a complete specification filed inpursuance of an application for a patent for an invention in respect of whichdirections have been given under section 35 is accepted during the continuancein force of the directions, then–

(a) if, during the continuance in force ofthe directions, any use of the inventions is made by or on behalf of, or to theorder of the Government, the provisions of sections 100, 101 and 103 shallapply in relation to that use as if the patent had been granted for theinvention; and

(b) if it appears to the Central Governmentthat the applicant for the patent has suffered hardship by reasons of thecontinuance in force of the directions, the Central Government may make to himsuch payment (if any) by way of solatium as appears to the Central Governmentto be reasonable having regard to the novelty and utility of the invention andthe purpose for which it is designed and to any other relevant circumstances.

(3) Where a patent isgranted in pursuance of an application in respect of which directions have beengiven under section 35, no renewal fee shall be payable in respect of anyperiod during which those directions were in force.

38. Revocation of secrecy directions andextension of time.

When any direction givenunder section 35 is revoked by the Controller, then, notwithstanding anyprovision of this Act specifying the time within which any step should be takenor any act done in connection with an application for the patent, theController may, subject to such conditions, if any, as he thinks fit to impose,extend the time for doing anything required or authorised to be done by orunder this Act in connection with the application, whether or not that time haspreviously expired.

[52][52][39. Prohibition toapply, under certain circumstances, forpatents relevant for defencepurposes, etc.-

(1) No person shall,except under the authority of awritten permit granted by or on behalf of theController, make or cause to be made anyapplication outside India for the grantof a patent for an invention relevant for defence purposes or related to atomic energy unless-

(a) an application for a patent for the sameinvention has been made in India,not less than six weeksbefore the applicationoutside India; and

(b) eitherno direction has been given under sub-section(1) of section 35in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall not grant writtenpermission to any person to make any application outside India without theprior consent of the

Central Government.

(3) This section shall notapply in relation to an invention for which anapplication for protectionhas first been filed in acountry outside India by a person resident outside India.]

40. Liability for contravention of section35 or section 39.

Without prejudice to the provisionscontained in Chapter XX, if in respect of an application for a patent anyperson contravenes any direction as to secrecy given by the Controller undersection 35, [53][53][ ormakes or causes to be made anapplication for grant of a patentoutside India in contravention of section 39] [54][54][—–] the application for patent underthis Act shall be deemed to have been abandoned and the patent granted, if any,shall be liable to be revoked undersection 64.

41. Finality of orders of Controller andCentral Government:

All orders of theController giving directions as to secrecy as well as all orders of the CentralGovernment under this Chapter shall be final and shall not be called inquestion in any court on any ground whatsoever.

42. Savings respecting disclosure toGovernment.

Nothing in this Act shallbe held to prevent the disclosure by the Controller of information concerningan application for a patent or a specification filed in pursuance thereof tothe Central Government for the purpose of the application or specificationbeing examined for considering whether an order under this Chapter should bemade or whether an order so made should be revoked.

CHAPTER VIII

GRANTAND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY

43. Grant and sealing of patent.

(1) Where a complete specification inpursuance of an application for a patent has been accepted and either–

(a) theapplication has not been opposed under section 25 and the time for the filing ofthe opposition has expired; or

(b) theapplication has been opposed and the opposition has been finally decided infavour of the applicant; or

[56][56][(d) the application has not beenfound to be in contravention of any of the provisions of the Act,]

the patent shall, on request made by theapplicant in the prescribed form, be granted to the applicant or, in the caseof a joint application, to the applicants jointly, and the Controller shallcause the patent to be sealed with the seal of the patent office and the dateon which the patent is sealed shall be entered in the register.

(2) Subject to the provisions of sub–section(1) and of the provisions of this Act with respect to patents of addition, arequest under this section for the sealing of a patent shall be made not laterthan the expiration of a period of six months from the date of advertisement ofthe acceptance of the complete specification:

Provided that –

(a) whereat the expiration of the said six months any proceeding in relation to theapplication for the patent is pending before the Controller or the [AppellateBoard], the request may be made within the prescribed period after the finaldetermination of that proceeding;

(b) wherethe applicant or one of the applicants has died before the expiration of thetime within which under the provisions of this sub–section the requestcould otherwise be made, the said request may be made at any time within twelvemonths after the date of the death or at such later time as the Controller mayallow.

(3) The period within which under sub–section(2) a request for the sealing of a patent may be made, may, from time to time,be extended by the Controller to such longer period as may be specified in anapplication made to him in that behalf, if the application is made and theprescribed fee paid within that longer period:

Provided that thefirst-mentioned period shall not be extended under this sub–section bymore than three months in the aggregate.

Explanation: For thepurposes of this section a proceeding shall be deemed to be pending so long asthe time for any appeal therein (apart from any future extension of that time)has not expired, and a proceeding shall be deemed to be finally determined whenthe time for any appeal therein (apart from any such extension) has expiredwithout the appeal being brought.

44. Amendment of patent granted to deceasedapplicant:

Where, at any time after apatent has been sealed in pursuance of an application under this Act, theController is satisfied that the person to whom the patent was granted haddied, or, in the case of a body corporate, had ceased to exist, before thepatent was sealed, the Controller may amend the patent by substituting for thename of that person the name of the person to whom the patent ought to havebeen granted, and the patent shall have effect, and shall be deemed always tohave had effect, accordingly.

45. Date of patent:

[57][57][(1) Subject to the other provisions contained inthis Act, every

patentshall be dated as of the date on which the applicationfor patent was filed.]

(2) The date of every patent shall beentered in the register.

(3) Notwithstanding anything contained inthis section, no suit or other proceeding shall be commenced or prosecuted inrespect of an infringement committed before the date of advertisement of theacceptance of the complete specification.

46. Form, extent and effect of patent:

(1) Every patent shall be in the prescribedform and shall have effect throughout India.

(2) A patent shall be granted for oneinvention only:

Provided that it shall not be competent forany person in a suit or other proceeding to take any objection to a patent onthe ground that it has been granted for more than one invention.

47. Grant of patents to be subject tocertain conditions.

The grant of a patent under this Act shallbe subject to the condition that–

(1) any machine, apparatus or other articlein respect of which the patent is granted or any article made by using aprocess in respect of which the patent is granted, may be imported or made byor on behalf of the Government for the purpose merely of its own use;

(2) any process in respect of which thepatent is granted may be used by or on behalf of the Government for the purposemerely of its own use;

(3) any machine, apparatus or other articlein respect of which the patent is granted or any article made by the use of theprocess in respect of which the patent is granted, may be made or used, and anyprocess in respect of which the patent is granted or may be used, by anyperson, for the purpose merely of experiment or research including theimparting of instructions to pupils; and

(4) in the case of a patent in respect ofany medicine or drug, the medicine or drug may be imported by the Governmentfor the purpose merely of its own use or for distribution in any dispensary,hospital or other medical institution maintained by or on behalf of theGovernment or any other dispensary, hospital or other medical institution whichthe Central Government may, having regard to the public service that suchdispensary, hospital or medical institution renders, specify in this behalf bynotification in the Official Gazette.

[58][58][48. Rights ofpatentees.-

Subject to the otherprovisions contained in this Act and the conditions specified in section 47, apatent granted under this Act shall confer upon the patentee-

(a) wherethe subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have hisconsent, from the act of making,using, offering for sale, selling orimporting for those purposes thatproduct in India;

(b) wherethe subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have hisconsent, from the act of using that process, and from the act ofusing, offering for sale,selling or importing for those purposes he productobtained directly by that process in India: Provided that the product obtained is not a product in respect of which no patentshall be granted under this Act.]

49. Patent rights not infringed when usedon foreign vessels, etc., temporarily or accidentally in India.

(1) Where a vessel or aircraft registeredin a foreign country or a land vehicle owned by a person ordinarily resident insuch country comes into India (including the territorial waters thereof)temporarily or accidentally only, the rights conferred by a patent for aninvention shall not be deemed to be infringed by the use of the invention–

(a) inthe body of the vessel or in the machinery, tackle, apparatus or otheraccessories thereof, so far as the invention is used on board the vessel andfor its actual needs only; or

(b) inthe construction or working of the aircraft or land vehicle or of theaccessories thereof,

as the case may be.

(2) This section shall notextend to vessels, aircraft or land vehicles owned by persons ordinarilyresident in a foreign country the laws of which do not confer correspondingrights with respect to the use of inventions in vessels, aircraft or landvehicle owned by persons ordinarily resident in India while in the ports or withinthe territorial waters of that foreign country or otherwise within thejurisdiction of its courts.

50. Rights of co-owners of patents.

(1) Where a patent is granted to two ormore persons, each of those persons shall, unless an agreement to the contraryis in force, be entitled to an equal undivided share in the patent.

(2) Subject to the provisions contained inthis section and in section 51, where two or more persons are registered asgrantee or proprietor of a patent, then, unless an agreement to the contrary isin force, each of those persons shall be entitled, by himself or his agents, to[59][59][the rights conferred by section 48] forhis own benefit without accounting to the other person or persons.

(3) Subject to the provisions contained inthis section and in section 51 and to any agreement for the time being inforce, where two or more persons are registered as grantee or proprietor of apatent, then, a licence under the patent shall not be granted and a share inthe patent shall not be assigned by one of such persons except with the consentof the other person or persons.

(4) Where a patented article is sold by oneof two or more persons registered as grantee or proprietor of a patent, thepurchaser and any person claiming through him shall be entitled to deal withthe article in the same manner as if the article had been sold by a solepatentee.

(5) Subject to the provisions contained inthis section, the rules of law applicable to the ownership and devolution ofmovable property generally shall apply in relation to patents; and nothingcontained in sub–section (1) or sub–section (2) shall affect themutual rights or obligations of trustees or of the legal representatives of adeceased person or their rights or obligations as such.

(6) Nothing in this section shall affectthe rights of the assignees of a partial interest in a patent created beforethe commencement of this Act.

51. Power of Controller to give directionsto co-owners.

(1) Where two or more persons areregistered as grantee or proprietor of a patent, the Controller may, uponapplication made to him in the prescribed manner by any of those persons, givesuch directions in accordance with the application as to the sale or lease ofthe patent or any interest therein, the grant of licences under the patent, orthe exercise of any right under section 50 in relation thereto, as he thinksfit.

(2) If any person registered as grantee orproprietor of a patent fails to execute any instrument or to do any other thingrequired for the carrying out of any direction given under this section withinfourteen days after being requested in writing so to do by any of the otherpersons so registered, the Controller may, upon application made to him in theprescribed manner by any such other person, give directions empowering anyperson to execute that instrument or to do that thing in the name and on behalfof the person in default.

(3) Before giving any directions inpursuance of an application under this section, the Controller shall give anopportunity to be heard–

(a) inthe case of an application under sub–section (1), to the other person orpersons registered as grantee or proprietor of the patent;

(b) inthe case of an application under sub–section (2), to the person in default.

(4) No direction shall begiven under this section so as to affect the mutual rights or obligation oftrustees or of the legal representatives of a deceased person or of theirrights or obligations as such, or which is inconsistent with the terms of anyagreement between persons registered as grantee or proprietor of the patent.

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

(1) Where a patent has been revoked on theground that the patent was obtained wrongfully and in contravention of therights 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 orclaims in consequence of a finding that the invention covered by such claim orclaims had been obtained from the petitioner, the court may, by order passed inthe same proceeding, permit the grant to the petitioner of the whole or suchpart of the invention which the court finds has been wrongfully obtained by thepatentee, in lieu of the patent so revoked or is excluded by amendment.

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

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

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

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

(3) No suit shall be brought for anyinfringement of a patent granted under this section committed before the actualdate on which such patent was granted.

53. Term of patent.

[60][60][(1) Subject to theprovisions of this Act, the term of every patent granted, after the commencement of the Patents(Amendment) Act, 2002, and the term ofevery patent which has not expired and has not ceased to haveeffect, on the date of suchcommencement, under this Act, shallbe twenty years from the date of filing of the application for the patent.]

(2) A patent shall ceaseto have effect notwithstanding anything herein or in this Act on the expirationof the period prescribed for the payment of any renewal fee, if that fee is notpaid within the prescribed period or within that period as extended under thissection.

(3) The period prescribed for the paymentof any renewal fee shall be extended to such period, not being more than sixmonths longer than the prescribed period, as may be specified in a request madeto the Controller if the request is made and the renewal fee and the prescribedadditional fee paid before the expiration of the period so specified.

[61][61][(4)Notwithstanding anything contained in any other law for the time beingin force, on cessation of the patent right due to non-payment of renewal fee oron the expiry of the term of patent, the subject matter covered by the saidpatent shall not be entitled to any protection.]

CHAPTER IX

PATENTS OF ADDITION

54. Patents of addition:

(1) Subject to the provisions contained inthis section, where an application is made for a patent in respect of anyimprovement in or modification of an invention described or disclosed in thecomplete specification filed therefore (in this Act referred to as the"main invention") and the applicant also applies or has applied for apatent for that invention or is the patentee in respect thereof, the Controllermay, if the applicant so requests, grant the patent for the improvement ormodification as a patent of addition.

(2) Subject to the provisions contained inthis section, where an invention, being an improvement in or modification ofanother invention, is the subject of an independent patent and the patentee inrespect of that patent is also the patentee in respect of the patent for themain invention, the Controller may, if the patentee requests, by order, revokethe patent for the improvement or modification and grant to the patentee apatent of addition in respect thereof, bearing the same date as the date of thepatent so revoked.

(3) A patent shall not be granted as apatent of addition unless the date of filing of the complete specification wasthe same as or later than the date of filing of the complete specification inrespect of the main invention.

(4) A patent of addition shall not besealed before the sealing of the patent for the main invention; and if theperiod within which, but for the provisions of this sub–section, arequest for the sealing of a patent of addition could be made under section 43expires before the period within which a request for the sealing of the patentfor the main invention may be so made, the request for the sealing of thepatent of addition may be made at any time within the last mentioned period.

55. Term of patents of addition.

(1) A patent of addition shall be grantedfor a term equal to that of the patent for the main invention, or so muchthereof as has not expired, and shall remain in force during that term or untilthe previous cesser of the patent for the main invention and no longer:

Provided that if the patentfor the main invention is revoked under this Act, the court, or, as the casemay be, the Controller, on request made to him by the patentee in theprescribed manner, may order that the patent of addition shall become anindependent patent for the remainder of the term for the patent for the maininvention and thereupon the patent shall continue in force as an independentpatent accordingly.

(2) No renewal fees shall be payable inrespect of a patent of addition, but, if any such patent becomes an independentpatent under sub–section (1), the same fees shall thereafter be payable,upon the same dates, as if the patent had been originally granted as anindependent patent.

56. Validity of patents of addition.

(1) The grant of a patent of addition shallnot be refused, and a patent granted as a patent of addition shall not berevoked or invalidated, on the ground only that the invention claimed in thecomplete specification does not involve any inventive step having regard to anypublication or use of–

(a) themain invention described in the complete specification relating thereto; or

(b) anyimprovement in or modification of the main invention description in thecomplete specification of a patent of addition to the patent for the maininvention or of an application for such a patent of addition,

and the validity of a patent of additionshall not be questioned on the ground that the invention ought to have been thesubject of an independent patent.

(2) For the removal of doubts it is herebydeclared that in determining the novelty of the invention claimed in thecomplete specification filed in pursuance of an application for a patent ofaddition regard shall be had also to the complete specification in which themain invention is described.

CHAPTER X

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

57. Amendment of application andspecification before Controller.

(1) Subject to the provisions of section59, the Controller may, upon application made under this section in theprescribed manner by an applicant for a patent or by a patentee, allow theapplication for the patent or the compete specification [or any documentrelating thereto] to be amended subject to such conditions, if any, as theController thinks fit:

Provided thatthe Controller shall not pass any order allowing or refusing an application toamend an application for a patent or a specification [62][62][or any document relating thereto] underthis section while any suit before a court for the infringement of the patentor any proceeding before the High Court for the revocation of the patent ispending, whether the suit or proceeding commenced before or after the filing ofthe application to amend.

(2) Every application for leave to amend anapplication for a patent [63][63][ora complete specification or anydocument relating thereto] under thissection shall state the nature of the proposed amendment, and shall give fullparticulars of the reasons for which the application is made.

[64][64][(3) Any application forleave to amend an application for a patent or acomplete specification or adocument relating thereto under this sectionmade after the acceptance of thecomplete specification and the nature ofthe proposed amendment may be advertised in theOfficial Gazette if theamendment, in the opinion ofthe Controller, is substantive.]

(4) Where an application is advertisedunder sub–section (3), any person interested may, within the prescribedperiod after the advertisement thereof, give notice to the Controller ofopposition thereto; and where such a notice is given within the periodaforesaid, the Controller shall notify the person by whom the application underthis section is made and shall give to that person and to the opponent anopportunity to be heard before he decides the case.

(5) An amendment under this section of acomplete specification may be, or include, an amendment of the priority date ofa claim.

(6) The provisions of this section shall bewithout prejudice to the right of an applicant for a patent to amend hisspecification [65][65][or any document relating thereto] tocomply with the directions of the Controller issued before the acceptance ofthe complete specification [66][66][along with other documents filed by theapplicant] or in the course of proceedings in opposition to the grant of apatent.

58. Amendment of specification before HighCourt.

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

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

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

59. Supplementary provisions as toamendment of application or specification.

[67][67][(1) Noamendment of an application for a patent or a complete specification or anydocument relating thereto shall be made except by way of disclaimer, correctionor explanation, and no amendment thereofshall beallowed, except for the purpose of incorporation of actual fact,and no amendment of a complete specification shall be allowed, theeffect of which would be that the specification as amended would claimor describe matter not insubstance disclosed or shown in thespecification before theamendment, or thatany claim of thespecification as amended would not fallwholly within the scope of a claim ofthe specification before the amendment.]

(2) Where after the date of advertisementof acceptance of a [68][68][complete specification along with otherdocuments relating thereto, any amendment of the specification or any otherdocument relating thereto] is allowed by the Controller or by the High Court, –

(a) theamendment shall for all purposes be deemed to form part of the [69][69][specification along with other documents relating thereto];

(b) thefact that the [70][70][specification along with other documents relating thereto ]has been amended shall be advertised in the Official Gazette; and

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

(3) In construing thespecification as amended reference may be made to the specification asoriginally accepted.

CHAPTER XI

RESTORATION OF LAPSED PATENTS

60. Applications for restoration of lapsedpatents.

(1) Where a patent has ceased to haveeffect by reason of failure to pay any renewal fee within the prescribed periodor within that period as extended under sub–section (3) of section 53,the patentee or his legal representative, and where the patent was held by twoor more persons jointly, then, with the leave of the Controller one or more ofthem without joining the others, may, within [71][71][eighteen months] from the date on whichthe patent ceased to have effect, make an application for the restoration ofthe patent.

(2) [72][72][——]

(3) An application underthis section shall contain a statement, verified in the prescribed manner,fully setting out the circumstances which led to the failure to pay theprescribed fee, and the Controller may require from the applicant such furtherevidence as he may think necessary.

61. Procedure for disposal of applicationsfor restoration of lapsed patents.

(1) If, after hearing theapplicant in cases where the applicant so desires or the Controller thinks fit,the Controller is prima facie satisfied that the failure to pay the renewal feewas unintentional and that there has been no undue delay in the making of theapplication, he shall advertise the application in the prescribed manner; andwithin the prescribed period any person interested may give notice to theController of opposition thereto on either or both of the following grounds,that is to say, –

(a) thatthe failure to pay the renewal fee was not unintentional; or

(b) thatthere has been undue delay in the making of the application.

(2) If notice of opposition is given withinthe period aforesaid, the Controller shall notify the applicant, and shall giveto him and to the opponent an opportunity to be heard before he decides thecase.

(3) If no notice of opposition is givenwithin the period aforesaid or if in the case of opposition, the decision ofthe Controller is in favour of the applicant, the Controller shall, uponpayment of any unpaid renewal fee and such additional fee as may be prescribed,restore the patent and any patent of addition specified in the applicationwhich has ceased to have effect on the cesser of that patent.

(4) TheController may, if he thinks fit as a condition of restoring the patent,require that an entry shall be made in the register of any document or matter which,under the provisions of this Act, has to be entered in the register but whichhas not been so entered.

62. Rights of patentees of lapsed patentswhich have been restored.

(1) Where a patent is restored, the rightsof the patentee shall be subject to such provisions as may be prescribed and tosuch other provisions as the Controller thinks fit to impose for the protectionor compensation of persons who may have begun to avail themselves of, or havetaken definite steps by contract or otherwise to avail themselves of, thepatented invention between the date when the patent ceased to have effect andthe date of the advertisement of the application for restoration of the patentunder this Chapter.

(2) No suit or other proceedings shall becommenced or prosecuted in respect of an infringement of a patent committedbetween the date on which the patent ceased to have effect and the date of theadvertisement of the application for restoration of the patent.

CHAPTER XII

SURRENDER AND REVOCATION OF PATENTS

63. Surrender of patents.

(1) A patentee may, at any time by givingnotice in the prescribed manner to the Controller, offer to surrender hispatent.

(2) Where such an offer is made, theController shall advertise the offer in the prescribed manner, and also notifyevery person other than the patentee whose name appears in the register ashaving an interest in the patent.

(3) Any person interested may, within theprescribed period after such advertisement, give notice to the Controller ofopposition to the surrender, and where any such notice is given the Controllershall notify the patentee.

(4) If the Controller is satisfied afterhearing the patentee and any opponent, if desirous of being heard, that thepatent may properly be surrendered, he may accept the offer and, by order,revoke the patent.

64. Revocation of patents.

(1) Subject to the provisions contained inthis Act, a patent, whether granted before or after the commencement of thisAct, may, on the petition of any person interested or of the Central Governmentor on a counter–claim in a suit for infringement of the patent, berevoked by the High Court on any of the following grounds, that is to say–

(a) thatthe invention, so far as claimed in any claim of the complete specification,was claimed in a valid claim of earlier priority date contained in the completespecification of another patent granted in India;

(b) thatthe patent was granted on the application of a person not entitled under theprovisions of this Act to apply therefor:

[73][73][—–]

(c) thatthe patent was obtained wrongfully in contravention of the rights of thepetitioner or any person under or through whom he claims;

(d) thatthe subject of any claim of the complete specification is not an inventionwithin the meaning of this Act;

(e) that the invention so far as claimed in anyclaim of the complete specification is not new, having regard to what waspublicly known or publicly used in India before the priority date of the claimor to what was published in India or elsewhere in any of the documents referredto in section 13:

[74][74][—–]

(f) thatthe invention so far as claimed in any claim of the complete specification isobvious or does not involve any inventive step, having regard to what waspublicly known or publicly used in India or what was published in India orelsewhere before the priority date of the claim:

[75][75][—–]

(g) thatthe invention, so far as claimed in any claim of the complete specification, isnot useful;

(h) thatthe complete specification does not sufficiently and fairly describe theinvention and the method by which it is to be performed, that is to say, thatthe description of the method or the instructions for the working of theinvention as contained in the complete specification are not by themselvessufficient to enable a person in India possessing average skill in, and averageknowledge of, the art to which the invention relates, to work the invention, orthat it does not disclose the best method of performing it which was known tothe applicant for the patent and for which he was entitled to claim protection;

(i) thatthe scope of any claim of the complete specification is not sufficiently andclearly defined or that any claim of the complete specification is not fairlybased on the matter disclosed in the specification;

(j) thatthe patent was obtained on a false suggestion or representation;

(k) thatthe subject of any claim of the complete specification is not patentable underthis Act;

(l) thatthe invention so far as claimed in any claim of the complete specification wassecretly used in India, otherwise than as mentioned in sub–section (3),before the priority date of the claim;

(m) thatthe applicant for the patent has failed to disclose to the Controller theinformation required by section 8 or has furnished information which in anymaterial particular was false to his knowledge;

(n) thatthe applicant contravened any direction for secrecy passed under section35 [76][76][or made or caused to be made anapplication for the grant of a patent outside India in contravention ofsection 39];

(o) that leave to amend the completespecification under section 57 orsection 58 was obtained by fraud.

[77][77][(p) that thecomplete specification does not discloseor wrongly mentions the source orgeographical origin of biological material used for the invention;

(q) thatthe invention so far as claimed in any claim of the complete specification was anticipated having regard to theknowledge, oral or otherwise, available within any local or indigenouscommunity in India or elsewhere.]

(2) For the purposes of clauses (e) and (f)of sub–section (1),

(a) noaccount shall be taken of [78][78][personaldocument or secret trial or secret use]; and

(b) wherethe patent is for a process or for a product as made by a process described orclaimed, the importation into India of the product made abroad by that processshall constitute knowledge or use in India of the invention on the date of theimportation, except where such importation has been for the purpose ofreasonable trial or experiment only.

(3) For the purpose of clause (l) of sub–section(1), no account shall be taken of any use of the invention–

(a) forthe purpose of reasonable trial or experiment only; or

(b) bythe Government or by any person authorised by the Government or by a Governmentundertaking, in consequence of the applicant for the patent or any person fromwhom he derives title having communicated or disclosed the invention directlyor indirectly to the Government or person authorised as aforesaid or to theGovernment undertaking; or

(c) byany other person, in consequence of the applicant for the patent or any personfrom whom he derives title having communicated or disclosed the invention, andwithout the consent or acquiescence of the applicant or of any person from whomhe derives title.

(4) Without prejudice to the provisionscontained in sub–section (1), a patent may be revoked by the High Courton the petition of the Central–Government, if the High Court issatisfied that the patentee has without reasonable cause failed to comply withthe request of the Central Government to make, use or exercise the patentedinvention for the purposes of Government within the meaning of section 99 uponreasonable terms.

(5) Anotice of any petition for revocation of a patent under this section shall beserved on all persons appearing from the register to be proprietors of thatpatent or to have shares or interests therein and it shall not be necessary toserve a notice on any other person.

65. Revocation of patent or amendment ofcomplete specification on directions from Central Government in cases relatingto atomic energy.

(1) Where at any time after acceptance of acomplete specification, the Central Government is satisfied that an applicationfor a patent or a patent is for an invention relating to atomic energy forwhich no patent can be granted under sub–section (1) of section 20 ofthe Atomic Energy Act, 1962, (33 of 1962) it may direct the Controller torefuse to proceed further with the application or to revoke the patent, as thecase may be, and thereupon the Controller, after giving notice to the applicantor, as the case may be, to the patentee and every other person whose name hasbeen entered in the register as having an interest in the patent, and aftergiving them an opportunity of being heard, may refuse to proceed further withthe application or may revoke the patent.

(2) In any proceedings under sub–section(1), the Controller may allow the applicant for the patent or the patentee toamend the complete specification in such manner as he considers necessaryinstead of refusing to proceed with the application or revoking the patent.

66. Revocation of patent in publicinterest.

Where the CentralGovernment is of opinion that a patent or the mode in which it is exercised ismischievous to the State or generally prejudicial to the public, it may, aftergiving the patentee an opportunity to be heard, make a declaration to thateffect in the Official Gazette and thereupon the patent shall be deemed to berevoked.

CHAPTER XIII

REGISTER OF PATENTS

67. Register of patents and particulars tobe entered therein.

(1) There shall be kept at the patentoffice a register of patents, wherein shall be entered–

(a) thenames and addresses of grantees of patents;

(b) notificationsof assignments and of transmissions of patents, of licences under patents, andof amendments, extensions, and revocations of patents; and

(2) No notice of any trust, whetherexpress, implied or constructive, shall be entered in the register, and theController shall not be affected by any such notice.

(3) Subject to the superintendence anddirection of the Central Government, the register shall be kept under thecontrol and management of the Controller.

[79][79][(4) Notwithstanding anything containedin sub-section (1), it shall be lawfulfor the Controller to keep the register of patents or any partthereof in computer floppies, diskettes or any other electronic form subject to such safeguards asmay be prescribed.

(5) Notwithstanding anything contained inthe Indian Evidence Act, 1872 (1 of1872), a copy of, or extracts from,the register of patents,certified to be a true copy under the hand of the Controller or anyofficer duly authorised by the Controller in this behalf shall, in all legalproceedings, be admissible in evidence.

(6)In the event the register is keptwholly or partly in computer floppies, diskettes or any otherelectronic form,-

(a) reference in this Act to an entry in theregister shall be deemed to include referenceto a record of particularskept in computer floppies, diskettesor any other electronic form and comprising the register or part of the register;

(b) references in this Act to particulars beingregistered or entered in the registershall be deemed to include references to thekeeping of record of thoseparticulars comprising the register or part of the register in computerfloppies, diskettes or any other electronic form; and

(c) referencesin this Act to the rectification of the register are to be read as including references to therectification of the record of particularskept in computerfloppies, diskettes or any other electronic form and comprising theregister or part of the register.]

68. Assignments, etc. not to be validunless in writing and registered.

An assignment of a patent or of a share ina patent, a mortgage, licence or the creation of any other interest in a patentshall not be valid unless the same were in writing and the agreement betweenthe parties concerned is reduced to the form of a document embodying all theterms and conditions governing their rights and obligations and the applicationfor registration of such document is filed in the prescribed manner with [80][80][the Controller within six months fromthe execution of the document orwithin such further period] not exceeding six months inthe aggregate as the Controller on application made in the prescribed mannerallows:

Provided that the documentshall, when registered, have effect from the date of its execution.

69. Registration of assignments,transmissions, etc:

(1) Where any person becomes entitled byassignment, transmission or operation of law to a patent or to a share in apatent or becomes entitled as a mortgagee, licensee or otherwise to any otherinterest in a patent, he shall apply in writing in the prescribed manner to theController for the registration of his title or, as the case may be, of noticeof his interest in the register.

(2) Without prejudice to the provisions ofsub–section (1), an application for the registration of the title of anyperson becoming entitled by assignment to a patent or a share in a patent orbecoming entitled by virtue of a mortgage, licence or other instrument to anyother interest in a patent may be made in the prescribed manner by theassignor, mortgagor, licensor or other party to that instrument, as the casemay be.

(3) Where an application is made under thissection for the registration of the title of any person the Controller shall,upon proof of title to his satisfaction,-

(a) wherethat person is entitled to a patent or a share in a patent, register him in theregister as proprietor or co–operator of the patent, and enter in theregister particulars of the instrument or event by which he derives title; or

(b) Wherethat person is entitled to any other interest in the patent, enter in theregister notice of his interest, with particulars of the instrument, if any,creating it:

Provided that if there isany dispute between the parties whether the assignment mortgage, licence,transmission, operation of law or any other such transaction has validly vestedin such person a title to the patent or any share or interest therein, theController may refuse to take any action under clause(a) or, as the case maybe, under clause (b), until the rights of the parties have been determined by acompetent court.

(4) There shall be supplied to theController in the prescribed manner for being filed in the patent, officecopies of all agreements, licences and other documents affecting the title toany patent or any licence thereunder authenticated in the prescribed manner andalso such other documents as may be prescribed relevant to the subject matter:

Provided that in the case ofa licence granted under a patent, the Controller, shall, if so requested by thepatentee or licensee, take steps for securing that the terms of the licence arenot disclosed to any person except under the order of a court.

(5) Except for the purposes of an applicationunder sub–section (1) or of an application to rectify the register, adocument in respect of which no entry has been made in the register under sub–section(3) shall not be admitted by the Controller or by any court as evidence of thetitle of any person to a patent or to a share or interest therein unless theController or the court, for reasons to be recorded in writing, otherwisedirects.

70. Power of registered grantee orproprietor to deal with patent.

Subject to the provisions contained in thisAct relating to co–ownership of patents and subject also to any rightsvested in any other person of which notice is entered in the register, theperson or persons registered as grantee or proprietor of a patent shall havepower to assign, grant licences under, or otherwise deal with, the patents andto give effectual receipt for any consideration for any such assignment,licence or dealing:

Provided that any equitiesin respect of the patent may be enforced in like manner as in respect of any othermovable property.

71. Rectification of register by HighCourt.

(1) The [Appellate Board] may, on theapplication of any person aggrieved–

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

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

(d) byany error or defect in any entry in the register,

make such order for the making, variationor deletion, of any entry there in as it may think fit.

(2) In any proceeding under this sectionthe [Appellate Board] may decide any question that may be necessary orexpedient 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 tothe 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 therectification shall be served upon the Controller in the prescribed manner whoshall upon receipt of such notice rectify the register accordingly.

72. Register to be open for inspection.

(1) Subject to the provisions contained inthis Act and any rules made thereunder, the register shall at all convenienttimes be open to inspection by the public; and certified copies, sealed withthe seal of the patent office, of any entry in the register shall be given toany person requiring them on payment of the prescribed fee.

(2) The register shall be prima facieevidence of any matters required or authorised by or under this Act to beentered therein.

[81][81]["(3)If the record of particulars is kept in computer floppiesor diskettes or in any other electronic form, sub-sections(1) and (2) shall bedeemed to have been complied withif the public is given accessto such computer floppies,diskettes or any other electronic formor printouts of such record of particulars for inspection.]

CHAPTER XIV

PATENT OFFICE AND ITS ESTABLISHMENT

73. Controller and other officers.

(1) The Controller General of Patents,Designs and Trade Marks appointed under sub–section (1) of [82][82][section3 of theTrade Marks Act, 1999 (47 of 1999)] shall be the Controller of Patentsfor the purposes of this Act.

(2) For the purposes of this Act, theCentral Government may appoint as many examiners and other officers and withsuch designations as it thinks fit.

(3) Subject to the provisions of this Act,the officers appointed under sub–section (2) shall discharge under thesuperintendence and directions of Controller such functions of the Controllerunder this Act as he may, from time to time by general or special order inwriting, authorise them to discharge.

(4) Without prejudice to the generality ofthe provisions of sub–section (3), the Controller may, by order inwriting and for reasons to be recorded therein withdraw any matter pendingbefore an officer appointed under sub–section (2) and deal with suchmatter himself either de novo or from the stage it was so withdrawn or transferthe same to another officer appointed under sub–section (2) who may,subject to special directions in the order of transfer, proceed with the mattereither de novo or from the stage it was so transferred.

74. Patent office and its branches.

(1) For the purposes of this Act, thereshall be an office which shall be known as the patent office.

(2) The patent office provided by theCentral Government under the Indian Patents and Designs Act, 1911 (2 of 1911),shall be the patent office under this Act.

(3) Thehead office of the patent office shall be at such place as the CentralGovernment may specify; an for the purpose of facilitating the registration ofpatents there may be established, at such other places as the CentralGovernment may think fit, branch offices of the patent office.

(4) There shall be a seal of the patentoffice.

75. Restriction on employees of patentoffice as to right or interest in patents.

All officers and employeesof the patent office shall be incapable, during the period for which they holdtheir appointments, to acquire or take, directly or indirectly, except byinheritance or bequest, any right or interest in any patent issued by thatoffice.

76. Officers and employees not to furnishinformation, etc.

An officer or employee inthe patent office shall not, except when required or authorised by this Act orunder a direction in writing of the [83][83][Central Government or AppellateBoard] or the Controller or by order ofa court, –

(a) furnishinformation on a matter which is being, or has been, death with under this Act [84][84][—–] ; or

(b) prepareor assist in the preparation of a document required or permitted by or underthis Act [85][85][—–] to be lodged in the patentoffice; or

CHAPTER XV

POWERS OR CONTROLLER GENERALLY

77. Controller to have certain powers of acivil court.

(1) Subject to any rulesmade in this behalf, the controller in any proceedings before him under thisAct shall have the powers of a civil court while trying a suit under the Codeof Civil Procedure, 1908, (5 of 1908) in respect of the following matters,namely: –

(a) summoningand enforcing the attendance of any person and examining him on oath;

(b) requiringthe discovery and production of any document;

(d) issuingcommissions for the examination of witnesses or documents;

(e) awardingcosts;

(f) reviewinghis own decision on application made within the prescribed time and in theprescribed manner:

(g) settingaside an order passed ex parte on application made within the prescribed timeand in the prescribed manner;

(h) anyother matter which may be prescribed.

(2) Any order for costs awarded by theController in exercise of the powers conferred upon him under sub–section(1) shall be executable as a decree of a civil court.

78. Power of Controller to correct clericalerrors, etc.

(1) Without prejudice to the previsionscontained in sections 57 and 59 as regards amendment of applications forpatents or complete specifications [86][86][or other documents relating thereto] andsubject to the provisions of section 44, the controller may, in accordance withthe provisions of this section, correct any clerical error in any patent or inany specification or other document filed in pursuance of such application orin any application for a patent or any clerical error in any matter which isentered in the register.

(2) A correction may be made in pursuanceof this section either upon a request in writing made by any person interestedand accompanied by the prescribed fee, or without such a request.

(3) Where the controller proposes to makeany such correction as aforesaid otherwise than in pursuance of a request madeunder this section, he shall give notice of the proposal to the patentee or theapplicant for the patent, as the case may be, and to any other person whoappears to him to be concerned, and shall give then an opportunity to be heardbefore making the correction.

(4) Where a request is made under thissection for the correction of any error in a patent or application for a patentor any document filed in pursuance of such an application, and it appears tothe Controller that the correction would materially alter the meaning or scopeof the document to which the request relates and ought not to be made withoutnotice to persons affected thereby, he shall require notice of the nature ofthe proposed correction to be advertised in the prescribed manner.

(5) Within the prescribed time after anysuch advertisement as aforesaid any person interested may give notice to theController of opposition to the request, and, where such notice of oppositionis given, the controller shall give notice thereof to the person by whom therequest was made and shall give to him and to the opponent an opportunity to beheard before he decides the case.

79. Evidence how to be given and powers ofController in respect thereof.

Subject to any rules madein this behalf, in any proceeding under this Act before the controller,evidence shall be given by affidavit in the absence of directions by theController to the contrary, but in any case in which the controller thinks itright so to do, he may take oral evidence in lieu of, or in addition to,evidence by affidavit, or may allow any party to be cross examined on thecontents of his affidavit.

80. Exercise of discretionary powers byController.

Without prejudice to any provisioncontained in this Act requiring the controller to hear any party to theproceedings thereunder or to give any such party an opportunity to be heard,the controller shall give to any applicant for a patent, or for amendment of aspecification (if within the prescribed time the applicant so requires) anopportunity to be heard before exercising adversely to the applicant anydiscretion vested in the controller by or under this Act.

[87][87][Provided that the partydesiring a hearing makes the request for such hearing to the Controller at least ten days inadvance of the expiry of the time-limitspecified in respect of the proceeding.]

81. Disposal by Controller of applicationsfor extension of time.

Where under the provisionsof this Act or the rules made there under the controller may extend the timefor doing any act, nothing in this Act shall be deemed to require him to givenotice to or hear the party interested in opposing the extension, nor shall anyappeal lie from any order of the Controller granting such extension.

[88][88][CHAPTER XVI

WORKINGOF PATENTS, COMPULSORY LICENCES AND REVOCATION

82. Definitionsof "patented articles" and"patentee".-

In this Chapter, unless the contextotherwise requires,-

(a) "patented article"includes any article madeby a patented process; and

(b) "patentee"includes an exclusive licensee.

83. General principlesapplicable to working of patentedinventions.-

Without prejudice to theother provisions contained in thisAct, in exercising the powers conferred by this Chapter, regard shall be had to the following generalconsiderations, namely:

(a) that patents are granted to encourage inventionsand tosecure that the inventions areworked in India on a commercial scale andto the fullest extent that is reasonably practicable without unduedelay;

(b) that they are not granted merely to enablepatentees to enjoy a monopoly for theimportation of the patented article;

(c) thatthe protection and enforcement of patent rights contribute to the promotionof technological innovation andto the transfer and dissemination of technology, to the mutual advantage ofproducers and users of technological knowledge and in a mannerconducive to social and economicwelfare, and to a balance of rights and obligations;

(d) thatpatents granted do not impede protection of public health and nutrition andshould act as instrument topromote public interest specially insectors of vital importance forsocio-economic and technologicaldevelopment of India;

(e) thatpatents granted do not in any way prohibit Central Government in takingmeasures to protect public health;

(f) thatthe patent right is not abused bythe patentee or person deriving titleor interest on patent from the patentee,and the patentee or aperson deriving title or interest on patentfrom the patentee does not resortto practices which unreasonably restrain trade or adversely affect theinternational transfer of technology;and

(g) that patentsare granted to make the benefitof the patented invention available at reasonablyaffordable prices to the public.

84. Compulsory licences.-

(1) At any time after theexpiration of three years from the date of the sealing of a patent, any personinterested may make an application to the Controller for grant of compulsorylicence on patent on any of the following grounds, namely:-

(a) thatthe reasonable requirements of the public with respect to the patentedinvention have not been satisfied, or

(b) thatthe patented invention is not available to the public at a reasonably affordable price, or

(2) An application under this section maybe made by any person notwithstanding that he is already the holder of alicence under the patent andno person shallbe estopped from allegingthat the reasonable requirements of the public with respect to the patented invention arenot satisfied or that thepatented invention is not worked in the territory of India or thatthe patented invention is not available tothe public at a reasonably affordable price by reason of any admission made by him, whether in such alicence or otherwise or by reason of hishaving accepted such a licence.

(3) Every application under sub-section (1)shall contain a statement setting out the nature of the applicant’s interesttogether with such particulars as may be prescribed and the factsupon which the application is based.

(4) The Controller, if satisfied that thereasonable requirements of thepublic with respectto the patented inventionhave not been satisfied or that thepatented invention is notworked in the territoryof India or that the patented invention is not available to the public at a reasonably affordable price, maygrant a licence upon such terms as he may deem fit.

(5) Where the Controller directs thepatentee to grant a licence he may, as incidental thereto, exercise the powersset out in section 88.

(6) In considering the application filedunder this section, the Controller shalltake into account,-

(i) the nature of the invention, the time whichhas elapsed since the sealing of thepatent and the measures already taken by thepatentee or any licensee to make full use of the invention;

(ii) the ability of the applicant towork the invention to the public advantage;

(iii) thecapacity of the applicant to undertake the risk in providing capital andworking the invention, if the application were granted;

(iv) as to whether the applicant hasmade efforts to obtain a licence fromthe patentee on reasonable terms and conditions and such effortshave not been successful within areasonable period as the Controller maydeem fit: Provided that this clause shall not beapplicable in case of national emergency or other circumstancesof extreme urgency or incase of public non-commercial useor on establishment of aground of anti-competitive practices adopted by the patentee, but shall not be required to take into accountmatters subsequent to the making of theapplication.

(7) For the purposes of this Chapter, thereasonable requirements of the public shall be deemed not to have beensatisfied-

(a) if,by reason of the refusal of the patentee to grant a licence or licences onreasonable terms,-

(i) anexisting trade or industry or the development thereof or the establishment of anynew trade or industry in India or the tradeor industry of any person or class of persons trading or manufacturing inIndia is prejudiced; or

(ii) the demandfor the patented article has notbeen metto an adequate extent or onreasonable terms; or

(iii) a market for export of thepatented article manufactured in India is not being supplied ordeveloped; or

(iv) the establishmentor development of commercialactivities in India isprejudiced; or

(b) if,by reason of conditions imposed by the patentee upon the grant of licences under the patent or upon thepurchase, hire or use of the patented article or process, the manufacture, useor sale of materials not protected by the patent, or the establishment ordevelopment of any trade or industry inIndia, is prejudiced; or

(c) ifthe patentee imposes a condition upon the grant oflicences under the patentto provide exclusive grant back,prevention to challenges to thevalidity of patent or coercive package licensing, or

(d) if the patented invention is not beingworked in the territory of India on acommercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonablypracticable, or

(e) ifthe working of the patented invention in the territory of India on acommercial scale isbeing prevented orhindered by the importation from abroad of the patentedarticle by-

(i) thepatentee or persons claiming under him;or

(ii) personsdirectly or indirectly purchasing from him;or

(iii) otherpersons against whom the patentee is not taking or has not taken proceedingsfor infringement.

85. Revocation of patents by theController for non-working.-

(1) Where, in respect of a patent, acompulsory licence has been granted, the Central Government or any person interestedmay, after the expiration of two years from the date of the ordergranting the first compulsory licence,apply to the Controller for an order revoking the patent on the ground that the patented invention hasnot been worked in theterritory of India or thatreasonable requirements of thepublic with respect to the patentedinvention has not been satisfied or thatthe patented invention is not available to the public at areasonably affordable price.

(2) Every application undersub-section (1) shall contain suchparticulars as may be prescribed, the facts upon which the application isbased, and, in the case of an application other than by the Central Government,shall also set out the nature of the applicant’s interest.

(3) TheController, if satisfied that the reasonable requirements of the public withrespect to the patented invention have not been satisfied or that patentedinvention has not been worked in the territory of India or that the patentedinvention is not available to the public at a reasonably affordable price, maymake an order revoking the patent.

(4) Every application under sub-section (1)shall ordinarily be decided within one year of its being presented to theController.

86.Power of Controller to adjournapplications for compulsory licences, etc.,in certain cases. –

(1) Where an application under section 84or section 85, as the case may be, is made on the grounds thatthe patented invention has notbeen worked in the territory ofIndia or on the ground mentioned inclause (d) of sub-section (7) ofsection 84 and the Controller is satisfied that thetime which has elapsedsince the sealingof the patent has for any reasonbeen insufficient to enable the invention to be worked on a commercialscale to an adequate extent or to enable the invention tobe so worked to the fullest extent that is reasonablypracticable, he may, by order,adjourn the further hearing of the application forsuch period not exceedingtwelve month in theaggregate as appears to him to besufficient for the invention to be so worked:

Provided that in any casewhere the patentee establishes that the reasonwhy a patented invention could not be workedas aforesaid before the date ofthe application was due to any State or Central Act or anyrule or regulationmade thereunder or any orderof the Government imposed otherwise than by way of a conditionfor the working of the invention in the territory of India orfor the disposal of the patentedarticles or of the articles made by the process or by the use of the patented plant, machinery, orapparatus, then, the period of adjournmentordered under this sub-section shall be reckoned from the date on which the period duringwhich the working of the invention wasprevented by such Act, rule or regulation or order of Government as computed from the date of theapplication, expires.

(2) No adjournment under sub-section (1)shall be ordered unless theController is satisfied that thepatentee has taken with promptitudeadequate or reasonable steps to startthe working of the invention in theterritory of Indiaon a commercial scale and to anadequate extent.

87.Procedure for dealing withapplications under sections 84 and 85. –

(1) Where the Controlleris satisfied, upon consideration of anapplication under section 84, or section85, that a prima facie case has beenmade out for the making of anorder, he shall direct the applicant to serve copies of theapplication upon the patentee and any otherperson appearing from the register to be interestedin the patent inrespect of whichthe application is made,and shall advertise theapplication in the Official Gazette.

(2) The patentee or anyother person desiring to oppose the application may, within such time as may beprescribed or within such further timeas the Controller may on application (made either before or afterthe expiration of the prescribed time) allow, give to theController notice of opposition.

(3) Any such notice of opposition shallcontain a statement setting out the grounds on which the application isopposed.

(4) Where any such notice of opposition isduly given, the Controller shall notify the applicant, and shall give to theapplicant and the opponent an opportunity to be heard before deciding the case.

88. Powers of Controller in grantingcompulsory licences. –

(1) Where the Controller is satisfiedon an application made under section 84 that the manufacture, use or sale ofmaterials not protected by thepatent is prejudiced by reason of conditionsimposed by the patentee upon thegrant of licences under the patent, or upon thepurchase, hire or use of the patented article or process, he may,subject to the provisions of thatsection, order the grant of licencesunder the patent to such customers of the applicant as hethinks fit as well as to the applicant.

(2) Where an application under section 84is made by a person being the holderof a licence under the patent, the Controller may, if he makesan order for the grant of a licence to the applicant, order theexisting licence to be cancelled, or may,if he thinks fit, instead of making an order for the grant of a licence to theapplicant, order the existing licence to be amended.

(3) Where two or more patents are held bythe same patentee and an applicantfor a compulsory licenceestablishes that the reasonable requirements of thepublic have not been satisfied withrespect to some onlyof the said patents, then, if the Controller issatisfied that the applicantcannot efficiently orsatisfactorily work the licencegranted to him under those patents without infringingthe other patents heldby the patentee and if thosepatents involve important technical advancement of considerableeconomic significance in relation to theother patents, he may, by order, direct thegrant of a licencein respect of the other patentsalso toenable the licensee to work thepatent or patents in regard to which a licence is granted under section 84.

(4) Where the terms andconditions of a licence have been settledby the Controller, the licenseemay, at any time after he has worked the invention on a commercial scale for a period of notless than twelve months, make an application to the Controller or therevision of the terms andconditions on the ground thatthe terms andconditions settled have proved to be more onerous than originallyexpected and that inconsequence thereof the licensee is unableto work the inventionexcept at a loss:

Provided that no suchapplication shall be entertained a secondtime.

89. General purposes for granting compulsorylicences.-

The powers of the Controller upon anapplication made under section 84 shall be exercised with a view to securingthe following general purposes, that is to say,-

(a) that patented inventions are worked on acommercial scale in the territory of India without undue delay and to thefullest extent that is reasonably practicable;

(b) that the interests of any person for the timebeing working or developing an invention in the territoryof India under the protection of a patent are not unfairly prejudiced.

90.Terms and conditions of compulsory licences.-

(1) In settling the termsand conditions of a licence under section 84,the Controller shall endeavour tosecure-

(i) thatthe royalty and other remuneration, if any, reserved to the patenteeor other person beneficially entitled to thepatent, is reasonable, havingregard to thenature of theinvention, the expenditure incurredby the patentee in making the inventionor in developing it and obtaininga patent and keeping it in force and other relevant factors;

(ii) that the patented invention is worked to thefullest extent by the person to whom the licence is granted andwith reasonable profit to him;

(iii) that the patented articles aremade available to the public atreasonably affordable prices;

(iv) thatthe licence granted is a non-exclusive licence;

(v) thatthe right of the licensee is non-assignable;

(vi) that the licence is for thebalance term of the patent unless ashorter term is consistent with public interest;

(vii) that thelicence is granted with a predominantpurpose of supplying inIndian market andin the caseof semi-conductor technology, thelicence granted is to work the invention for public non-commercial useand in the case, the licence granted to remedy a practice determinedafter judicial or administrative processto be anti-competitive, licensee shall be permitted to export the patented product.

(2) No licence granted by the Controllershall authorise the licensee toimport the patented article or anarticle or susbtance made by apatented process from abroad where such importationwould, but for suchauthorisation, constitute aninfringement of the rights of thepatentee.

(3) Notwithstanding anything contained insub-section (2), the Central Government may,if in its opinion it is necessary so to do, in thepublic interest, direct the Controller at any time toauthorise any licensee in respect of a patent to import the patentedarticle or an article or substance made by a patented process fromabroad (subject to such conditions as it considers necessary toimpose relating among other matters tothe royalty and other remuneration, if any,payable to the patentee, the quantum of import, the sale price of theimported article and the period ofimportation), and thereupon theController shall give effect to the directions.

91. Licensing of related patents.-

(1) Notwithstandinganything contained in the other provisions of this Chapter, at any time afterthe sealing of a patent, any person who has the right to workany other patented invention either as patentee or aslicensee thereof, exclusive orotherwise, may apply to the Controller for the grant of a licence ofthe first-mentioned patent on theground that he isprevented or hinderedwithout such licence from workingthe other invention efficientlyor to the best advantage possible.

(2) No order under sub-section (1) shall bemade unless the Controller is satisfied-

(i) thatthe applicant is able and willing to grant, or procure the grantto the patenteeand his licensees if they sodesire, of a licence in respect of the other inventionon reasonable terms; and

(ii) that the other invention hasmade a substantial contribution tothe establishment ordevelopment of commercialor industrial activities in theterritory of India.

(3) When the Controller is satisfied thatthe conditions mentioned in sub-section (1) have been established by theapplicant, he may make an order on such terms as he thinks fit granting alicence under the first-mentioned patent and a similar order under the otherpatent if so requested by the proprietor of the first-mentioned patent or hislicensee:

Provided that the licencegranted by the Controller shall benon-assignable except with the assignment of the respective patents.

(4) The provisionsof sections 87, 88, 89 and90 shallapply to licences granted under this section as they apply tolicences granted under section 84.

92.Special provision for compulsory licences on notificationsby Central Government. –

(1) If the CentralGovernment is satisfied, in respect of any patent in force in circumstances ofnational emergency or in circumstancesof extreme urgencyor in caseof public non-commercial use,that it is necessary that compulsorylicences should be granted at any time after the sealing thereofto work the invention, it may make a declaration to that effect,by notification in the Official Gazette, and thereupon thefollowing provisions shall have effect,that is to say,-

(i) the Controller shall, on application made at anytime after the notification byany person interested, grant to theapplicant a licence underthe patent on such terms and conditions as hethinks fit;

(ii) in settling the terms andconditions of a licence granted underthis section, theController shall endeavourto secure thatthe articles manufactured underthe patent shall be available to thepublic at the lowest prices consistent with thepatentee deriving a reasonable advantagefrom their patent rights.

(2)The provisions of sections 83,87, 88, 89 and 90 shall apply inrelation to the grant of licences underthis section as they apply in relation to the grant of licences under section84.

(3)Notwithstanding anything contained in sub-section (2), where the Controlleris satisfied on consideration of the application referred to in clause (i) of sub-section (1)that it is necessary in-

(i) acircumstance of national emergency; or

(ii) acircumstance of extreme urgency; or

(iii) a caseof public non-commercial use, which mayarise or is required, as the case may be, includingpublic health crises, relating toAcquired Immune Deficiency Syndrome, human immunodeficiency virus,tuberculosis, malaria orother epidemics, he shallnot apply any procedurespecified in section 87 in relation to that application for grant oflicence under this section:

Provided that the Controllershall, as soon as may be practicable, inform the patentee of the patentrelating to the application for such non-application of section 87.

93.Order for licence to operate asa deed between parties concerned.-

Any order for the grant ofa licence under this Chapter shalloperate as if it were a deed granting a licence executed by thepatentee and allother necessary parties embodying theterms and conditions, if any,settled by the Controller.

94. Termination of compulsory licence.-

(1) On an application made by the patenteeor any other person deriving title or interest in the patent, a compulsory licencegranted under section84 may be terminatedby the Controller, if and when the circumstances that gave rise to the grant thereof no longer exist and suchcircumstances are unlikely to recur:

Provided that the holder ofthe compulsory licence shall have the right to object to such termination.

(2) While considering anapplication under sub-section (1), theController shall take into account that the interest of the person who hadpreviously been granted the licence is not unduly prejudiced.]

95. Terms and conditions ofcompulsory licences.

(1) In settling the terms andconditions of a licence under section 84, the Controller shall endeavour tosecure –

(i) that the royalty and other remuneration, if any, reserved tothe patentee or other person beneficially entitled to the patent, isreasonable, having regard to the nature of the invention, the expenditureincurred by the patentee in making the invention or in developing it andobtaining a patent and keeping it in force and other relevant factors;

(ii) that the patented invention is worked to the fullest extent bythe person to whom the licence is granted and with reasonable profit to him;

(iii) that the patented articles are made available to the public atreasonable prices.

(2) No licence granted by theController shall authorise the licensee to import the patented article or anarticle or substance made by a patented process from abroad where suchimportation would, but for such authorisation, constitute an infringement of therights of the patentee.

(3) Notwithstanding anythingcontained in sub-section (2), the Central Government may, if in its opinion itis necessary so to do in the public interest, direct the Controller at any timeto authorise any licensee in respect of a patent to import the patented articleor an article or substance made by a patented process from abroad (subject tosuch conditions as it considers necessary to impose relating among othermatters to the royalty and other remuneration, if any, payable to the patentee,the quantum of import, the sale price of the imported article and the period ofimportation), and thereupon the Controller shall give effect to the directions.

96. Licensing of related patents.

(1) Notwithstanding anythingcontained in the other provisions of this Chapter, at any time after thesealing of a patent, any person who has the right to work any other patentedinvention either as patentee or as licensee thereof, exclusive or otherwise,may apply to the Controller for the grant of a licence of the first mentionedpatent on the ground that he is prevented or hindered without such licence fromworking the other invention efficiently or to the best advantage possible.

(2) No order under sub-section (1)shall be made unless the Controller is satisfied –

(i) that the applicant is able and willing to grant, or procure thegrant to the patentee and his licensees if they so desire, of a licence inrespect of the other invention on reasonable terms; and

(ii) that the other invention has made a substantial contribution tothe establishment or development of commercial or industrial activities inIndia.

(3) When the Controller issatisfied that the conditions mentioned in sub-section (1) have beenestablished by the applicant, he may make an order on such terms as he thinksfit granting a licence under the first mentioned patent and a similar orderunder the other patent if so requested by the proprietor of the first mentionedpatent or his licensee.

(4) The provisions of sections 92and 110 shall apply to licences granted under this section as they apply tolicences granted under section 84.

97. Special provisions forcompulsory licences on notifications by Central Government.

(1) If the Central Government issatisfied in respect of any patent or class of patents in force that isnecessary or expedient in the public interest that compulsory licences shouldbe granted at any time after the sealing thereof to work the invention orinventions, it may make a declaration to that effect in the Official Gazette,and thereupon the following provisions shall have effect, that is to say –

(i) the Controller shall on application made at any time after thenotification by any person interested grant to the applicant a licence underthe patent on such terms as he thinks fit;

(ii) in settling the terms of a licence granted under this section,the Controller shall endeavour to secure that the articles manufactured underthe patent shall be available to the public at the lowest prices consistentwith the patentees deriving a reasonable advantage from their patent rights.

(2) The provisions of sections 92,93, 94 and 95 shall apply in relation to the grant of licences under thissection as they apply in relation to the grant of licences under section 84.

98. Order for licence to operateas a deed between parties concerned

Any order for the grant of alicence under this Chapter shall operate as if it were a deed granting alicence executed by the patentee and all other necessary parties embodying theterms and conditions, if any, settled by the Controller.

CHAPTER XVII

USE OF INVENTIONS FOR PURPOSES OFGOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

99. Meaning of use of invention forpurposes of Government.

(1) for the purposes of this chapter, aninvention 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 StateGovernment or a government undertaking.

(2) [89][89][—–]

(3) Nothing contained inthis Chapter shall apply in respect of any such importation making or using ofany machine, apparatus or other article or of any such using of any process orof any such importation using or distribution of any medicine or drug, as maybe made by virtue of one or more of the conditions specified in section 47.

100. Power of Central Government to useinventions for purposes of Government.

(1) Notwithstandinganything contained in this Act, at any time after an application for a patenthas been filed at the patent office or a patent has been granted, the centralGovernment and any person authorised in writing by it, may use the inventionfor the purposes of Government in accordance with the provisions of thisChapter.

(2) Where an invention has, before thepriority date of the relevant claim of the complete specification, been dulyrecorded in a document, or tested or tried, by or on behalf of the governmentor a Government undertaking, otherwise than in consequence of the communicationof the invention directly or indirectly by the patentee or by a person fromwhom he derives title, any use of the invention by the Central Government orany person authorised in writing by it for the purposes of government may bemade free of any royalty or other remuneration to the patentee.

(3) If and so far as the invention has notbeen so recorded or tried or tested as aforesaid, any use of the invention madeby the Central Government or any person authorised by it under sub–section(1) , at any time after the acceptance of the complete specification in respectof the patent or in consequence of any such communication as aforesaid, shallbe 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 theHigh court on a reference under section 103:

[90][90][Provided thatin case of any such use of any patent,the patentee shall be paid notmore than adequate remuneration in the circumstances of each case, taking intoaccount the economic value of the use of the patent.]

(4) The authorisation by the CentralGovernment in respect of an invention may be given under this section, eitherbefore or after the patent is granted and either before or after the acts inrespect of which such authorisation is given or done, and may be given to anyperson, whether or not he is authorised directly or indirectly by the applicantor the patentee to make, use, exercise or vend the invention or import themachine, apparatus or other article or medicine or drug covered by such patent.

(5) Where an invention has been used by orwith the authority of the central government for the purposes of Governmentunder this section, then, [91][91][except in case of national emergency orother circumstances of extreme urgency or for non-commercial use] the Government shall notify the patentee assoon as practicable of the fact and furnish him with such information as to theextent of the use of the invention as he may, from time to time, reasonablyrequire: and where the invention has been used for the purpose of a Governmentundertaking, the central Government may call for such information as may benecessary for this purpose from such undertaking.

(6) The right to make, use, exercise andvend an inventions for the purposes of government under sub–section (1)shall include the [92][92][rightto sell, on non-commercial basis, the goods] which have been made in exercise of thatright, 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 theperson authorised under sub–section (1) were the patentee of theinvention.

(7) Where in respect of a patent which hasbeen the subject of an authorisation under this section, there is an exclusivelicensee as is referred to in sub–section (3) of section 101, or wheresuch patent has been assigned to the patentee in consideration of royalties orother benefits determined by reference to the use of the invention (includingpayments 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 maybe, and the reference to the patentee in sub–section (3) shall be deemedto include a reference to such assignor or exclusive licensee.

101. Rights of third parties in respect ofuse of invention for purposes of Government.

(1) In relation to any useof a patented invention, or an invention in respect of which an application fora patent is pending, made for the purposes of Government –

(a) bythe Central Government or any person authorised by the Central Government undersection 100; or

(b) bythe patentee or applicant for the patent to the order made by the CentralGovernment,

the provisions of any licence, assignmentor agreement granted or made, [93][93][——] between the patentee orapplicant for the patent (or any person who derives title from him or from whomhe derives title) and any person other than the Central Government shall be ofno effect so far as those provisions –

(i) restrictor regulate the use for the purposes of Government of the invention, or of anymodel, document or information relating thereto, or

(ii) providefor the making of payments in respect of any use of the invention or of themodel, document or information relating thereto for the purposes of Government [94][94][—–] ,

and the reproduction or publication of anymodel or document in connection with the said use for the purposes ofGovernment shall not be deemed to be an infringement of any copyrightsubsisting in the model or document.

(2) Where the patent, or the right to applyfor or obtain the patent, has been assigned to the patentee in consideration ofroyalties or other benefits determined by reference to the use of the invention[95][95][—–], then, in relation to any use ofthe invention made for the purposes of Government by the patentee to the orderof the Central Government, sub–section (3) of section 100 shall haveeffect as if that use were made by virtue of an authority given under thatsection; and any use of the invention for the purposes of Government by virtueof sub–section (3) of that section shall have effect as if the referenceto the patentee included a reference to the assignor of the patent, and any sumpayable by virtue of that sub–section shall be divided between thepatentee an the assignor in such proportion as may be agreed upon between themor as may in default of agreement be determined by the High Court on areference under section 103.

(3) Where by virtue of sub–section(3) of section 100.payments are required to be made by the Central Governmentor persons authorised under sub–section (1) of that section in respectof the use of an invention for the purposes of Government and where in respectof such patent there is an exclusive licensee authorised under his licence touse the invention for the purposes of Government, such sum shall be shared bythe patentee and such licensee in such proportions, if any, as may be agreedupon between them or as may in default of agreement be determined by the HighCourt on a reference under section 103 to be just, having regard to anyexpenditure incurred by the licensee –

(a) indeveloping the said invention; or

(b) inmaking payments to the patentees other than royalties or other benefitsdetermined by reference to the use of the invention [96][96][—–]in consideration of the licence.

102. Acquisition of inventions and patentsby the Central Government.

(1) The Central Government may, ifsatisfied that it is necessary that an invention which is the subject of anapplication for a patent or a patent should be acquired from the applicant orthe patentee for a public purpose, publish a notification to that effect in theOfficial Gazette, and thereupon the invention or patent and all rights inrespect of the invention or patent shall, by force of this section, standtransferred to and be vested in the Central Government.

(2) Notice of the acquisition shall begiven to the applicant, and, where a patent has been granted, to the patenteeand other persons, if any, appearing in the register as having an interest inthe patent.

(3) The Central Government shall pay to theapplicant, or, as the case may be, the patentee and other persons appearing onthe register as having an interest in the patent such compensation as may beagreed upon between the Central Government and the applicant, or the patenteeand other persons; or as may, in default of agreement, be determined bythe High Court on a reference under section 103 to be just having regard to theexpenditure incurred in connection with the invention and, in the case of apatent, the term thereof, the period during which and the manner in which ithas already been worked (including the profits made during such period by thepatentee or by his licensee whether exclusive or otherwise) and other relevantfactors.

103. Reference to High Court of disputes asto use for purposes of Government.

(1) Any dispute as to the exercise by theCentral Government or a person authorise by it of the powers conferred bysection 100, or a to terms for the use of an invention for the purposes ofGovernment there–under or as to the right of any person to receive anypart of a payment made in pursuance of sub–section (3) of that sectionor as to the amount of compensation payable for the acquisition of an inventionor a patent under section 102, may be referred to the High Court by eitherparty to the dispute in such manner as may be prescribed by the rules of theHigh Court.

(2) In any proceedings under this sectionto which the Central Government is a party, the Central Government may, –

(a) ifthe patentee is a party to the proceedings, petition by way of counter–claimfor revocation of the patent on any ground upon which a patent may be revokedunder section 64; and

(b) whethera patentee is or is not a party to the proceedings, put in issue the validityof the patent without petitioning for its revocation.

(3) If in such proceedings as aforesaid anyquestion arises whether an invention has been recorded, tested or tried as ismentioned in section 100, and the disclosure of any document regarding theinvention, or of any evidence of the test or trial thereof, would in theopinion of the Central Government be prejudicial to the public interest,the disclosure may be made confidentially to the advocate of the other party orto an independent expert mutually agreed upon.

(4) In determining under this section anydispute between the Central Government and any person as to terms for the useof an invention for the purposes of Government the High Court shall haveregard to any benefit or compensation which that person or any person from whomhe derives title, may have received, or may be entitled to receive, directly orindirectly in respect of the use of the invention in question for the purposesof Government.

(5) In any proceedings under this section,the High Court may at any time order the whole proceedings or any question orissue of fact arising therein to be referred to an official reference,commissioner or an arbitrator on such terms as the High Court may direct, andreferences to the High court in the foregoing provisions of this section shallbe construed accordingly.

(6) Where the invention claimed in a patentwas made by a person who at the time it was made was in the service of theCentral Government or of a State Government or was an employee of a Governmentundertaking and the subject–matter of the invention is certified by therelevant Government or the principal officer of the Government undertaking tobe connected with the work done in the course of the normal duties of theGovernment servant or employee of the Government undertaking, then,notwithstanding anything contained in this section, any dispute of the naturereferred to in sub–section (1) relating to the invention shall bedisposed of by the Central Government conformably to the provisions of thissection so far as may be applicable, but before doing so the Central Governmentshall give an opportunity to the patentee and such other parties as itconsiders have an interest in the matter to be heard.

CHAPTER XVIII

SUITS CONCERNING INFRINGEMENT OF PATENTS

104. Jurisdiction.

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

Provided that where acounter–claim for revocation of the patent is made by the defendant, thesuit, along with the counter–claim, shall be transferred to the HighCourt for decision.

[97][97][104A. Burden of proof in case of suits concerninginfringement.-

(1) In any suit forinfringement of a patent, where the subject matter of patent is a process for obtaining a product, thecourt may direct the defendant to prove that the process used by him to obtainthe product, identical to theproduct of the patented process, is differentfrom the patented process if,-

(a) the subject matter of the patent is aprocess for obtaining a new product; or

(b) thereis a substantial likelihood that the identical product is madeby the process, and the patenteeor a person deriving title orinterest in the patent from him, has been unablethrough reasonable efforts to determinethe process actually used:

Provided that the patenteeor a person deriving title or interest in the patent from him, first provesthat the product is identical to the product directly obtained by the patentedprocess.

(2) In considering whether a party hasdischarged the burden imposed upon himby sub-section (1), the court shall not requirehim to disclose any manufacturingor commercial secrets, if it appears to the court that it would be unreasonableto do so.]

105. Power of court to make declaration asto non-infringement.

(1) Notwithstanding anything contained insection 34 of the Specific Relief Act, 1963 (47 of 1963), any person mayinstitute a suit for a declaration that the use by him of any process, or themaking 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 theholder of an exclusive licence under the patent, not withstanding that noassertion to the country has been made by the patentee or the licensee, if itis shown –

(a) thatthe plaintiff has applied in writing to the patentee or exclusive license for awritten acknowledgment to the effect of the declaration claimed and hasfurnished him with full particulars in writing to the process or article inquestion; and

(b) thatthe patentee or licensee has refused or neglected to give such anacknowledgment.

(2) The costs of all parties in a suit fora declaration brought by virtue of this section shall, unless for specialreasons the court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a claim of thespecification of a patent shall no be called in question in a suit for adeclaration brought by virtue of this section, and accordingly the making orrefusal of such a declaration in the case of a patent shall not be deemed toimply that the patent is valid or invalid.

(4) A suit for a declaration may be broughtby virtue of this section at any time after the date of advertisement ofacceptance of the complete specification of a patent, and references in thissection to the patentee shall be construed accordingly.

106. Power of Court to grant relief incases of groundless threats of infringement proceedings.

(1) Where any person (whether entitled toor interested in a patent or an application for a patent or not) threatens anyother person by circulars or advertisements or by communications, oral or inwriting addressed to that or any other person with proceedings forinfringement of a patent, any person aggrieved thereby may bring a suit againsthim praying for the following reliefs, that is to say–

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

(b) aninjunction against the continuance of the threats; and

(2) Unless in such suit the defendantproves that the acts in respect of which the proceedings were threatenedconstitute or, if done, would constitute, an infringement of a patent or ofrights arising from the publication of a complete specification in respect of aclaim of the specification not shown by the plaintiff to be invalid, the courtmay grant to the plaintiff all or any of the reliefs prayed for.

Explanation: –A merenotification of the [98][98][existence], of a patent does notconstitute a threat of proceeding within the meaning of this section.

107. Defences, etc. in suits forinfringement.

(1) In any suit for infringement of apatent every ground on which it may be revoked under section 64 shall beavailable as a ground for defence.

(2) In any suit for infringement of apatent by the making, using or importation of any machine, apparatus or otherarticle or by the using of any process or by the importation, use ordistribution of any medicine or drug, it shall be a ground for defence thatsuch making, using, importation or distribution is in accordance with any oneor more of the conditions specified in section 47.

[99][99][107A. Certainacts not to be considered asinfringement.-For the purposes ofthis Act,-

(a) anyact of making, constructing,using or selling apatented invention solely foruses reasonably relating to the developmentand submission of information required under any law for the time beingin force, in India, or in a countryother than India that regulates themanufacture, construction, use or sale of any product;

(b) importation of patented products by anyperson from a person who is duly authorised by the patentee to sell ordistribute the product, shall not be considered as an infringement of patentrights.]

108. Reliefs in suits for infringement:

[100][100][(1)] The relies which a court may grant in anysuit for infringement include an injunction (subject to such terms, if any, asthe court thinks fit) and, at the option of the plaintiff, either damages or anaccount of profits.

[101][101][(2)The court may also order that thegoods which are found to be infringingand materials and implement, the predominant use of which isin the creation of infringing goods shall be seized, forfeited or destroyed,as the court deems fit under the circumstances of the case withoutpayment of any compensation.]

109. Right of exclusive licensee to takeproceedings against infringement.

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

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

110. Right of licensee under section 84 totake proceedings against infringement:

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

111. Restriction on power of court to grantdamages or account of profits for infringement.

(1) In a suit for infringement of a patent,damages or an account of profits shall not be granted against the defendant whoproves that at the date of the infringement he was not aware an had noreasonable grounds for believing that the patent existed.

Explanation: A personshall not be deemed to have been aware or to have had reasonable grounds forbelieving that a patent exists by reason only of the application to an articleof the word "patent", "patented" or any word or wordsexpressing or implying that a patent has been obtained for the article, unlessthe number of the patent accompanies the word or words in question.

(2) In any suit for infringement of apatent the court may, if it thinks fit, refuse to grant any damages or anaccount of profits in respect of any infringement committed after a failure topay any renewal fee within the prescribed period and before any extension ofthat period.

(3) Where an amendment of a specificationby way of disclaimer, correction or explanation has been allowed under this Actafter the publication of the specification, no damages or account of profitsshall be granted in any proceeding in respect of the use of the inventionbefore the date of the decision allowing the amendment unless the courtis satisfied that the specification as originally published was framed in goodfaith and with reasonable skill and knowledge.

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

112.[102][102][——]

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

(1) If in any proceedings before a HighCourt for the revocation of a patent under section 64 the validity of any claimof a specification is contested and that claim is found by the court to bevalid, the Court may certify that the validity of that claim was contested inthose proceedings and was upheld.

(2) Where any such certificate has beengranted, then if in any subsequent suit before a court for infringement of thatclaim of the patent or in any subsequent proceeding for revocation of thepatent in so far as it relates to that claim, the patentee or other personrelying on the validity of the claim obtains a final order or judgment in hisfavour, 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 properlyincurred so far as they concern the claim in respect of which the certificatewas granted, unless the court trying the suit or proceeding otherwise directs:

Provided that the costs asspecified in this sub–section shall not be ordered when the partydisputing the validity of the claim satisfies the court that he was not awareof the grant of the certificate when he raised the dispute and withdrewforthwith such defence when he became aware of such a certificate.

(3)Nothing contained in this section shall be construed as authorising courtshearing appeals from decrees or orders in suits for infringement or petitionsfor revocation to pass orders for costs on the scale referred to therein.

114. Relief for infringement of partiallyvalid specification.

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

Provided that the courtshall not grant relief except by way of injunction save in the circumstancesmentioned in sub–section (2).

(2) Where the plaintiff proves that theinvalid 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 infringedsubject to the discretion of the court as to costs and as to the date fromwhich damages or an account of profits should be reckoned, and in exercisingsuch discretion the court may take into consideration the conduct of theparties in inserting such invalid claims in the specification or permittingthem to remain there.

115. Scientific advisers.

(1) In any suit for infringement or in anyproceeding before a court under this Act, the court may at any time, andwhether 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 andreport upon any such question of fact or of opinion (not involving a questionof interpretation of law) as it may formulate for the purpose.

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

[103][103][CHAPTER XIX

APPEALS TO THE APPELLATE BOARD

116. Appellate Board.-

(1) Subject to the provisions of this Act,the Appellate Board established undersection 83 of the Trade Marks Act,1999 (47of 1999) shall be the Appellate Board for the purposesof this Act and the said Appellate Board shall exercise thejurisdiction, power and authority conferred on it by or under this Act:

Provided thatthe Technical Member of theAppellate Board for the purposesof this Actshall have the qualifications specifiedin sub-section (2).

(2)A person shall not be qualifiedfor appointment as a Technical

Member for the purposes of this Act unlesshe-

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

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

(c) has,for at leastten years, been an advocate ofa proven specialised experiencein practising law relating topatents and designs.

117. Staffof Appellate Board.-

(1) TheCentral Government shall determine thenature and categoriesof the officersand other employees required to assist the Appellate Board in thedischarge of its functions under this Act and provide theAppellate Board with such officers and other employees as it may think fit.

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

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

117A.Appeals to Appellate Board.-

(1) Save as otherwise expresslyprovided in sub-section (2), no appeal shall lie fromany decision, order ordirection made or issued under this Act bythe Central Government, or fromany act or order of the Controller for the purpose of giving effect to any suchdecision, order or direction.

(2) An appeal shall lie to the AppellateBoard from any decision, order ordirection of the Controlleror Central Governmentunder section 15, section 16, section 17, section 18, section19, section 20, section25, section 27, section 28, section 51, section54, section 57, section60, section 61,section 63, section66, sub-section (3) of section69, 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 shallbe in the prescribed form and shall be verified in such manner as may beprescribed and shall be accompaniedby a copy of the decision, orderor direction appealed against and by such fees as may beprescribed.

(4) Every appeal shall be made within threemonths from the date of thedecision, order ordirection, as the casemay be, of theController or the Central Government or within such furthertime as the AppellateBoard may, in accordance with therules made by it,allow.

117B.Procedure and powers of Appellate Board.-

The provisionsof sub-sections (2) to (6) of section 84, section 87, section 92,section 95 and section96 of the Trade Marks Act, 1999 (47 of1999) shall apply to the Appellate Board in the discharge ofits functions under this Act as they apply to it in the discharge ofits functions under the Trade Marks Act,1999.

117C.Bar of jurisdiction of courts, etc.-

No court or otherauthority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the mattersreferred 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 rectificationof the register made to the Appellate Board under section 71 shall be in suchform as may be prescribed.

(2) A certified copy of every order orjudgment of the Appellate Board relatingto a patent under this Act shall be communicatedto the Controller by theBoard and the Controller shall give effect tothe order of the Board and shall,when so directed, amend the entries in, or rectify, the register in accordancewith such order.

117E. Appearance of Controller in legalproceedings.-

(1) The Controller shall have the right toappear and be heard-

(a) in any legal proceedings before theAppellate Board in which the relief sought includes alteration or rectificationof the register or in which any question relating to the practice of the patentoffice is raised;

(b) inany appeal to theAppellate Board from an orderof the Controller on anapplication for grant of a patent-

(i) whichis not opposed, and the application is either refused by the Controller or is acceptedby him subjectto any amendments, modifications, conditions orlimitations, or

(ii) which hasbeen opposed and the Controller considers thathis appearance is necessary in the public interest, and theController shall appear in any case if so directed by the AppellateBoard.

(2) Unless the Appellate Board otherwise directs,the Controller may, in lieu of appearing, submit a statement in writingsigned by him, givingsuch particulars as he thinks proper of the proceedings before him relating to the matter in issue or of thegrounds of any decision given by him or of the practice of the patent office inlike cases, or of other matters relevant to the issues and within hisknowledge as the Controllermay deem it necessary, and suchstatement shall be evidence in the proceeding.

117F. Costs of Controller in proceedingsbefore Appellate Board.-

In all proceedings underthis Act before the Appellate Board, thecosts of the Controller shall be in the discretion of theBoard, but the Controller shall not be ordered to paythe costs of any of the parties.

117G. Transfer of pending proceedings toAppellate Board.-

All cases of appealsagainst any order or decision of the Controller andall cases pertaining to rectification of register, pending before anyHigh Court, shall be transferred to theAppellate Board from such date asmay be notified by the CentralGovernment in the Official Gazette and the Appellate Board may proceed with thematter either de novo or from the stage it was so transferred.

117H.Power of Appellate Board to make rules.-

The Appellate Board maymake rules consistent with this Act as to the conduct and procedure in respectof all proceedings before it under this Act.]

CHAPTER XX

PENALTIES

118. Contravention of secrecy provisionsrelating to certain inventions.

If any person fails to comply with anydirection given under section 35 [104][104][or makes or causes to be made anapplication for the grant ], he shall bepunishable with imprisonment for a term which may extend to two years, or withfine, or with both.

119. Falsification of entries in register,etc.

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

120. Unauthorised claim of patent rights.

If any person falsely represents that anyarticle sold by him is patented in India or is the subject of an applicationfor a patent in India, he shall be punishable with fine which may extend to [105][105][tenthousand rupees ].

Explanation 1: For thepurposes of this section, a person shall be deemed to represent –

(a) that an article is patented in India ifthere is stamped, engraved or impressed on, or otherwise applied to, thearticle the word "patent" or "patented" or some other wordexpressing or implying that a patent for the article has been obtained inIndia;

(b) thatan article is the subject of an application for a patent in India, if there arestamped, engraved or impressed on, or otherwise applied to, the article thewords "patent applied for", "patent pending", or some otherwords implying that an application for a patent for the article has been madein India.

Explanation 2: The use of words"patent", "patented", "patent applied for","patent pending" or other words expressing or implying that anarticle is patented or that a patent has been applied for shall be deemed torefer to a patent in force in India, or to a pending application for a patentin India, as the case may be, unless there is an accompanying indication thatthe patent has been obtained or applied for in any country outside India.

121. Wrongful use of words patent office.

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

122. Refusal or failure to supplyinformation.

(1) If any person refuses or fails tofurnish–

(a) tothe Central Government any information which he is required to furnish undersub–section (5) of section 100,

(b) tothe Controller any information or statement which he is required to furnish byor under section 146,

he shall be punishable with fine which mayextend to [106][106][twenty thousand rupees].

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

123. Practice by non-registered patentagents.

If any person contravenesthe provisions of section 129, he shall be punishable with fine which mayextend to [107][107][tenthousand rupees ] in the case of a first offence and [108][108][forty thousand rupees] in the case of a second or subsequentoffence.

124. Offences by companies.

(1) If the person committing an offenceunder 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 ofthe commission of the offence shall be deemed to be guilty of the offence andshall be liable to be proceeded against and punished accordingly:

Provided that nothing containedin this sub–section shall render any such person liable to anypunishment if he proves that the offence was committed without his knowledge orthat he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained insub–section (1), where an offence under this Act has been committed by acompany and it is proved that the offence has been committed with the consentor connivance of, or that the commission of the offence is attributable to anyneglect on the part of any director, manager, secretary or other officer of thecompany, such director, manager, secretary or other officer shall also bedeemed to be guilty of that offence and shall be liable to be proceeded againstand punished accordingly.

Explanation: For thepurposes of this section, –

(a) "company"means any body corporate and includes a firm or other association ofindividuals; and

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

CHAPTER XXI

PATENTAGENTS

[109][109][125. Register ofpatent agents.-

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

(2) Notwithstanding anything contained insub-section (1), it shall be lawful forthe Controller to keep the register of patent agentsin computer floppies, diskettesor any other electronic form subject tosuch safeguards as may be prescribed.]

126. Qualifications for registration aspatent agents:

(1) A person shall bequalified to have his name entered in the register of patent agents if hefulfils the following conditions, namely: –

(a) heis a citizen of India;

(b) hehas completed the age of 21 years;

(c) hehas obtained a [110][110][degree in science, engineering or technology from anyUniversity established under law for the time being in force] in the territory of India or possesses suchother equivalent qualifications as the Central Government may specify in thisbehalf, and, in addition, –

(i) isan advocate within the meaning of the Advocate Act, 1961(25 of 1961); or

(ii) haspassed the qualifying examination prescribed for the purpose; [111][111][ or]

[112][112][(iii) has,for a total period of not less than ten years, functioned either as anexaminer or discharged the functions of theController under section 73 orboth, but ceased to hold any such capacity at the time of making theapplication for registration; ]

(d) hehas paid such fee as may be prescribed.

[113][113][(2) Notwithstanding anythingcontained in sub-section (1), a person who has been registered as a patentagent before the commencement of the Patents (Amendment) Act, 2002 shall beentitled to continue to be, or when required to be re-registered, as a patentagent, on payment of the fees as may be prescribed.]

127. Rights of patent agents.

Subject to the provisions contained in thisAct and in any rules made thereunder, every patent agent whose name is enteredin the register shall be entitled –

(a) topractise before the Controller; and

(b) toprepare all documents, transact all businesses and discharge such otherfunctions as may be prescribed in connection with any other proceeding before the Controller under thisAct.

128. Subscription and verification ofcertain documents by patent agents.

(1) [114][114][——] All applications andcommunications to the Controller under this Act may be signed by a patent agentauthorised in writing in this behalf by the person concerned.

(2) [115][115][——]

129. Restrictions on practice as patentagents.

(1) No person, either alone or inpartnership with any other person, shall practice, describe or hold himself outas a patent agent, or permit himself to be so described or held out, unless heis registered as a patent agent or, as the case may be, unless he and all hispartners are so registered.

(2) No company or other body corporateshall practice, describe itself or hold itself out as patent agents or permititself to be so described or held out.

Explanation: For thepurposes of this section, practice as a patent agent includes any of thefollowing acts, namely: –

(a) applyingfor or obtaining patents in India or elsewhere;

(b) preparingspecifications or other documents for the purposes of this Act or of the patentlaw of any other country;

130. Removal from register of patent agentsand restoration.

(1) The [116][116][Controller]mayremove the name of any person from the register when [117][117][he] is satisfied, after giving thatperson a reasonable opportunity of being heard and after such further inquiry,if any, as [118][118][he] thinks fit to make –

(i) thathis name has been entered in the register by error or on account ofmisrepresentation or suppression of material fact; and

(ii) thathe has been convicted of any offence and sentenced to a term of imprisonment orhas been guilty of misconduct in his professional capacity which in the opinionof the [119][119][Controller]rendershim unfit to be kept in the register.

(2) The [120][120][Controller] may, on application and onsufficient cause being shown, restore to the register the name of any personremoved therefrom.

131. Power of Controller to refuse to dealwith certain agents:

(1) Subject to any rules made in thisbehalf, the Controller may refuse to recognise as agent in respect of anybusiness under this Act –

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

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

(c) anyperson, not being registered as a patent agent, who in the opinion of theController is engaged wholly or mainly in acting as agent in applying forpatents in India or elsewhere in the name or for the benefit of the person bywhom he is employed; and

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

(2) The Controller shallrefuse to recognise as agent in respect of any business under this Act anyperson who neither resides not has a place of business in India.

132. Savings in respect of other personsauthorised to act as agents.

Nothing in this Chapter shall be deemed toprohibit–

(a) theapplicant for a patent [121][121][——] from drafting any specificationor appearing or acting before the Controller; or

(b) an advocate,not being a patent agent, from taking part in any [122][122][hearingbefore the Controller on behalfof a party who is taking part in any proceeding under thisAct].

CHAPTER XXII

INTERNATIONAL ARRANGEMENTS

133. Notification as to conventioncountries.

(1) With a view to the fulfillment of atreaty, convention or arrangement with any country outside India which affordsto applicants for patents in India or to citizens of India similar privilegesas are granted to its own citizens in respect of the grant of patents and theprotection of patent rights, the Central Government may, by notification thecase of which a declaration made for the purposes of some only of in theOfficial Gazette, declare such country to be a convention country.

(2) A declaration under sub–section(1) may be made for the purposes either of all or of some only of theprovisions of this Act, and a country in the case of which a declaration madefor the purposes of some only of the provisions of this Act is in force shallbe deemed to be a convention country for the purposes of those provisions only.

[123][123][Explanation: For the purposes of this Chapter ”country”includes a

group or union of countries orInter-governmental organisation.]

134. Notification as to countries notproviding for reciprocity.

Where any countryspecified by the Central Government in this behalf by notification in theOfficial Gazette does not accord to citizens of India the same rights inrespect of the grant of patents and the protection of patent rights as itaccords to its own nationals, no national of such country shall be entitled,either solely or jointly with any other person, –

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

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

135. Convention applications.

(1) Without prejudice to the provisionscontained in section 6, where a person has made an application for a patent inrespect of an invention in a convention country (hereinafter referred to as the"basic application"), and that person or the legal representative orassignee of that person makes an application under this Act for a patent withintwelve months after the date on which the basic application was made, thepriority date of a claim of the complete specification, being a claim based onmatter disclosed in the basic application, is the date of making of the basicapplication.

Explanation: Whereapplications have been made for similar protection in respect of an inventionin two or more convention countries, the period of twelve months referred to inthis sub–section shall be reckoned from the date on which the earlier orearliest of the said application was made.

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

Provided that the feepayable on the making of any such application shall be the same as if separateapplications have been made in respect of each of the said inventions, and therequirements of clause (b) of sub–section (1) of section 136 shall, inthe case of any such application, apply separately to the applications forprotection in respect of each of the said inventions.

136. Special provisions relating toconvention applications.

(1) Every convention application shall –

(a) beaccompanied by a complete specifications; and

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

(c) statethat no applications for protection in respect of the invention had been madein a convention country before that date by the applicant or by any person fromwhom be derives title.

(2) Subject to the provisions contained insection 10, a complete specification filed with a convention application mayinclude claims in respect of developments of, or additions to, the invention inrespect of which the application for protection was made in a conventioncountry, being developments or additions in respect of which the applicantwould be entitled under the provisions of section 6 to make a separateapplication for a patent.

(3) A convention application shall not bepost–dated under sub–section (1) of section 17 to a date laterthan the date on which under the provisions of this Act the application couldhave been made.

137. Multiple priorities.

(1) Where two or more applications forpatents in respect of inventions have been made in one or more conventioncountries 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 orearliest of those applications was made, in respect of the inventions disclosedin the specification which accompanied the basic applications.

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

(3) For the purposes of this Act, a mattershall be deemed to have been disclosed in a basic application for protection ina convention country if it was claimed or disclosed (otherwise than by way ofdisclaimer or acknowledgment of a prior act) in that application, or anydocuments submitted by the applicant for protection in support of and at thesame time as that application, but no account shall be taken of any disclosureeffected by any such document unless a copy of the document is filed at thepatent office with the convention application or within such period as may beprescribed after the filing of that application.

138. Supplementary provisions as toconvention applications.

(1) Where a convention application is madein accordance with the provisions of the Chapter, the applicant shall furnish, [124][124][when required by the Controller,] inaddition to the complete specification, copies of the specifications orcorresponding documents filed or deposited by the applicant in the patentoffice of the convention country in which the basic application was made,certified by the official chief or head of the patent office of the conventioncountry, or otherwise verified to the satisfaction of the Controller, alongwith the application or within three months thereafter, or within such furtherperiod as the Controller may on good cause allow.

(2) If any such specification or otherdocument is in a foreign language, a translation into English of thespecification or document, verified by affidavit or otherwise to thesatisfaction of the Controller, shall be [125][125][furnished when required by theController].

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

[126][126][(4) An international applicationfiled under the Patent Cooperation Treaty designating India shall have effectof filing an application for patentunder section 7, section 54 and section 135, as the case may be, and the title, description, claim andabstract and drawings, if any,filed in the internationalapplication shall be takenas complete specification for the purposes of this Act.

(5) The filing date of an application forpatent and its complete specification processed by the patent office asdesignated office shall bethe international filing dateaccorded under thePatent Cooperation Treaty.

(6) Amendment, if any, proposed by theapplicant for an international application designating India or designating andelecting India before international searching authority or preliminaryexamination authority shall, if the applicant so desires, be taken as an amendmentmade before the patent office.]

139. Other provisions of Act to apply toconvention applications.

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

CHAPTER XXIII

MISCELLANEOUS

140. Avoidance of certain restrictiveconditions.

(1) It shall not be lawful to insert –

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

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

(iii) ina licence to work any process protected by a patent, a condition the effect ofwhich may be –

(a) torequire the purchaser, lessee, or licensee to acquire from the vendor, lessor,or licensor, or his nominees, or to prohibit him from acquiring or to restrictin any manner or to any extent his right to acquire from any person or toprohibit him from acquiring except from the vendor, lessor, or licensor or hisnominees, any article other than the patented article or an article other thanthat made by the patented process; or

(b) toprohibit the purchaser, lessee or licensee from using, or to restrict in anymanner or to any extent the right of the purchaser, lessee or licensee, to usean article other than the patented article or an article other than that madeby the patented process, which is not supplied by the vendor, lessor orlicensor or his nominee; or

(c) toprohibit the purchaser, lessee or licensee from using or to restrict in anymanner or to any extent the right of the purchaser, lessee or licensee to useany process other than the patented process,

[127][127][(d) to provide exclusive grantback, prevention to challenges to validity of patent and coercive packagelicensing,]

and any such condition shall be void.

(2) A condition of the nature referred toin clause (a) or clause (b) or clause (c) of sub–section (1) shall notcease to be a condition falling within that sub–section merely by reasonof 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 ofthe patented article or process.

(3) In proceeding against any person forthe infringement of a patent, it shall be a defence to prove that at the timeof the infringement there was in force a contract relating to the patent andcontaining a condition declared unlawful by this section:

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

(4) Nothing in this section shall –

(a) affecta condition in a contract by which a person is prohibited from selling goodsother than those of a particular person;

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

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

(5) [128][128][—–]

141. Determination of certain contracts.

(1) Any contract for the sale or lease of apatented article or for licence to manufacture, use or work a patented articleor process, or relating to any such sale, lease or licence, [129][129][——] may at any time after thepatent or all the patents by which the article or process was protected at thetime of the making of the contract has or have ceased to be in force, andnotwithstanding anything to the contrary in the contract or in any othercontract, be determined by the purchaser, lessee, or licensee, as the case maybe, of the patent on giving three months notice in writing to the other party.

(2) The provisions of this section shall bewithout prejudice to any right of determining a contract exercisable apart fromthis section.

142. Fees.

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

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

[130][130][(3) Where a fee is payable inrespect of the filing of a document at the patent office, the fee shall be paidalong with the document or withinthe prescribed time and thedocument shall be deemed not to have been filed at the office if the feehas not been paid within such time.]

(4)Where a principal patent is granted later than two years from the date offiling of the complete specification, the fees which have become due in themeantime may be paid within a term of three months from the date of therecording of the patent in the register [131][131][or within the extended period not laterthan nine months from the date of recording].

143. Restrictions upon publication ofspecifications.

Subject to the provisionsof Chapter VII, an application for a patent, and any specification filed inpursuance thereof, shall not, except with the consent of the application, bepublished by the Controller [132][132][beforeeighteen months from the date of application or the priority dateof the applicationor before the sameis open topublic inspection] in pursuanceof section 23.

144. Reports of examiners to beconfidential.

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

145. Publication of patented inventions.

The Controller shall issueperiodically a publication of patented inventions containing such informationas the Central Government may direct.

146. Power of Controller to call forinformation from patentees.

(1) The Controller may, at any time duringthe continuance of the patent, by notice in writing, require a patentee or alicensee, exclusive or otherwise, to furnish to him within two months from thedate 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 thepatented invention has been commercially worked in India as may be specified inthe notice.

(2) Without prejudice to the provisions ofsub–section (1), every patentee and every licensee (whether exclusive orotherwise) shall furnish in such manner and form and at such intervals (notbeing less than six months) as may be prescribed statements as to the extent towhich the patented invention has been worked on a commercial scale in India.

(3) The Controller may publish theinformation received by him under sub–section (1) or sub–section(2) in such manner as may be prescribed.

147. Evidence of entries, documents, etc.

(1) A certificate purporting to be signedby the Controller as to any entry, matter or thing which he is authorised bythis Act or any rules made thereunder to make or do, shall be prima facieevidence of the entry having been made and of the contents thereof and of thematter or thing having been done or omitted to be done.

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

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

148. Declaration by infant, lunatic, etc.

(1) If any person is, by reason ofminority, lunacy or other disability, incapable of making any statement ordoing 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 ifthere be none, any person appointed by any court possessing jurisdiction in respectof his property, may make such statement or a statement as nearly correspondingthereto as circumstances permit, and do such thing in the name and on behalf ofthe person subject to the disability.

(2) An appointment may be made by the courtfor the purposes of this section upon the petition of any person acting onbehalf of the person subject to the disability or of any other personinterested in the making of the statement or the doing of the thing.

149. Service of notices, etc., by post.

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

150. Security for costs.

If any party by whomnotice of any opposition is given under this Act or by whom application is madeto the Controller for the grant of a licence under a patent neither resides norcarries on business in India, the Controller may require him to give securityfor the costs of the proceedings, and in default of such security being givenmay treat the opposition or application as abandoned.

151. Transmission of orders of courts toController.

(1) Every order of the High Court on apetition for revocation, including orders granting certificates of validity ofany claim, shall be transmitted by the High Court to the Controller who shallcause 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 106the validity of any claim or a specification is contested and that claim isfound by the court to be valid or not valid, as the case may be, the courtshall transmit a copy of its judgment and decree to the Controller who shall onreceipt thereof cause an entry in relation to such proceeding to be made in theprescribed manner in a supplemental record.

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

152. Transmission of copies ofspecifications, etc., and inspection thereof.

Copies of all suchspecifications, drawings and amendments left at the patent office as becomeopen to public inspection under the provisions of this Act, shall betransmitted, as soon as may be, after the printed copies thereof are available,to such authorities as the Central Government may appoint in this behalf, andshall be open to the inspection of any person at all reasonable times at placesto be specified by those authorities and with the approval of the CentralGovernment.

153. Information relating to patents.

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

154. Loss of destruction of patents.

If a patent is lost or destroyed, or itsnon–production is accounted for to the satisfaction of the Controller,the Controller may at any time, on application made in the prescribed mannerand on payment of the prescribed fee, cause a duplicate thereof to be sealedand delivered to the applicant.

155. Reports of Controller to be placedbefore Parliament.

The Central Governmentshall cause to be placed before both Houses of Parliament once a year a reportrespecting the execution of this Act by or under the Controller.

156. Patent to bind Government.

Subject to the otherprovisions contained in this Act, a patent shall have to all intents the likeeffect as against Government as it has against any person.

157. Right of Government to sell or useforfeited articles.

Nothing in this Act shallaffect the power of the Government or of any person deriving title directly orindirectly from the Government to sell or use any articles forfeited under anylaw for the time being in force.

[133][133][157A. Protection of security of India.-

Notwithstanding anythingcontained in this Act, the Central Government shall-

(a) notdisclose any information relating to any patentable invention or anyapplication relating to the grant of patent under thisAct, which it considersprejudicial to the interest of thesecurity of India;

(b) takeany action including the revocation of any patent which it considersnecessary in the interest of the security of India by issue of anotification in the Official Gazette to that effect.

Explanation: For thepurposes of thissection, the expression

"security of India" includes any action necessaryfor the security of

India which-

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

(ii) relates to the traffic in arms,ammunition and implements of war andto such traffic in other goods and materials as is carriedon directly or indirectlyfor the purpose ofsupplying a military establishment; or

(iii) is takenin time of war or other emergencyin international relations.]

158. Power of High Courts to make rules.

The High Court may makerules consistent with this Act as to the conduct and procedure in respect ofall proceedings before it under this Act.

159. Power of Central Government to makerules.

(1) The Central Government may, bynotification in the Official Gazette, make rules for carrying out the purposesof this Act.

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

(i) theform and manner in which any application for a patent, any specifications ordrawings and any other application or document may be filed in the patentoffice;

[134][134][(ia) the details to be furnished by the applicant under sub-section (2) of section 8;

(ib) the mannerof making therequest for examinationof an application for patent under sub-sections (1), (2) and(3) of section 11B;]

(ii) thetime within which any act or thing may be done under this Act, including themanner in which and the time within which any matter may be advertised underthis Act;

(iii) thefees which may be payable under this Act and the manner [135][135][andtime] of payment of such fees;

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

(v) theform of request for the sealing of a patent;

(vi) theform and manner in which and the time within which any notice may be givenunder this Act;

(vii) theprovisions which may be inserted in an order for restoration of a patent forthe protection of persons who may have availed themselves of the subject–matterof the patent after the patent had ceased;

(viii) theestablishment of branch offices of the patent office and the regulationgenerally of the business of the patent office, including its branch offices;

(ix) themaintenance of the register of patents [136][136][andthe safeguards to beobserved in the maintenance ofsuch register in computerfloppies, diskettes or any otherelectronic form] and the matters to beentered therein;

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

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

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

[137][137][(xiia) the salaries and allowancesand other conditions of service of theofficers and otheremployees of theAppellate Board under sub-section (2),and the manner in which the officersand other employees of theAppellate Board shall discharge their functions under sub-section (3), ofsection 117;

(xiib) the form of making an appeal, the manner ofverification and the fees payable undersub-section (3) of section 117A;

(xiic) the form in which, and theparticulars to be included in, theapplication to the Appellate Board under sub-section (1)of section 117D;]

(xiii) themanner in which any compensation for acquisition by Government of an inventionmay be paid;

(xiv) themanner in which the register of patent agents may be maintained [138][138][under sub-section (1) of section 125and the safeguards to be observed in themaintenance of such register of patent agents on computer floppies,diskettes or any other electronic formunder sub-section (2) of that section] ; the conduct of qualifying examinationsfor patent agents; and matters connected with their practice and conduct,including the taking of disciplinary proceedings against patent agents formisconduct;

(xv) theregulation of the making, printing, publishing and selling of indexes to, andabridgments of, specifications and other documents in the patent office; andthe inspection of indexes and abridgments and other documents;

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

(3) Thepower to make rules under this section shall be subject to condition of therules being made after previous publication.

160. Rules to be placed before Parliament.

Every rule made under this Act shall belaid, as soon as may be after it is made, before each House of Parliament whileit is in session for a total period of thirty days which may be comprised inone session or in [in two or more successivesessions, and if, before the expiry to the session immediately following thesession or the successive sessions aforesaid] both Houses agreein making any modification in the rule or both Houses agree that the ruleshould not be made, the rule shall thereafter have effect only in such modifiedform or be of no effect, as the case may be; so, however, that any suchmodification or annulment shall be without prejudice to the validity ofanything previously done under that rule.

161. [139][139][——]

162. Repeal of Act 2 of 1911 in so far asit relates to patents and savings.

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

(2) [140][140][—–]

(3) [141][141][—–]

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

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

163. Amendment of Act 43 of 1958.

In sub–section (1) of section 4 ofthe Trade and Merchandise Marks Act, 1958, the words and figures "and theController of Patents and Designs for the purposes of the Indian Patents andDesigns Act, 1911 (2 of 1911)" shall be omitted.

THE SCHEDULE

[See section 162]

AMENDMENTS TO THE INDIAN PATENTS ANDDESIGNS ACT, 1911

1.Long title – Omit "Inventionsand".

2.Preamble – Omit "inventionsand".

3.Section 1 – In sub–section(1) omit "Indian Patents and".

4.Section 2 –

(a) omit clause (1);

(b) in clause (2) omit "(as respectsdesigns)";

‘(3) "controller" means theController General of Patents, Designs and Trade Marks appointed under sub–section(1) of section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958)’;

(d) in clause (5) for "trade mark asdefined in section 478", substitute "trade mark as defined in clause(v) of sub–section (1) of section 2 of the Trade and Merchandise MarksAct, 1958"(43 of 1958);

(e) omit clause (6);

(f) in clause 7, after sub–clause(ee), insert,-

"(f) in relation to the Unionterritories of Dadra and Nagar Haveli and Goa, Daman and Diu, the High Court atBombay;

(g) in relation to the Union territory ofPondicherry, the High Court at Madras";

(g) omit clauses (8), (10), and (11);

(h) for clause (12), substitute –

‘(12) "patent office" means thepatent office referred to in section 74 of the Patents Act, 1970.’.

5.Omit Part I.

6.For section 51B, substitute –

"51B.Designs to bindGovernment.- A registered design shall have to all intents the likeeffect as against Government as it has against any person and the provisions ofChapter XVII of the Patents Act, 1970, shall apply to registered designs asthey apply to patents."

7.In section 54, for "The provisionsof this Act", substitute "The provisions of the Patents Act,1970".

8.Omit sections 55 and 56.

9.Section 57 –For sub–section(1), substitute –

"(1) There shall bepaid in respect of the registration of designs and application therefor and inrespect of other matters relating to designs under this Act such fees as may beprescribed by the Central Government.".

10.Omit section 59A.

11.Section 61–Omit sub–section(1).

12.For section 62, substitute –

"62.Power of Controller tocorrect clerical errors.- The Controller may, on request in writingaccompanied by the prescribed fee, correct any clerical error in therepresentation of a design or in the name or address of the proprietor of anydesign or in any other matter which is entered upon the register ofdesigns."

13.Section 63 –

(a) insub–section (1), omit "to a patent or" and "patentor";

(b) insub–section (2), omit "patent or" and for "patents ordesigns, as the case may be,", substitute "designs,";

(d) insub–section (4), omit "to a patent or".

14.Section 64 –

(a) insub–section (1), omit "patents or" and omit the word"either" wherever it occurs;

(b) insub–section (5), omit clause (a).

15.Omit Section 66.

16.Section 67 –Omit "for apatent, or for amendment of an application or of a specification, or".

17.Section 69 –In sub–section(1), omit "to grant a patent for an invention or".

18.Section 71A –Omit "or frompatents, specifications and other".

19.Omit section 72.

20.Omit sections 74A and 75.

21.Section 76 –

(a) in sub–section (1), omit"other";

(b) in sub–section (2), in clause(c), omit "opponent".

22.Section 77 –

(a) in sub–section (1) –

(i) in clauses (c) and (d); omit"specifications";

(ii) for clause (e), substitute –

"(e) providing for the inspection ofdocuments in the patent office and for the manner in which they may bepublished;"

(iii) omit clause (eee);

(b) omit sub–section (2A).

23.Omit section 78.

24.For section 78A, substitute –

"78A.Reciprocal arrangementwith United Kingdom and other Common-wealth countries.- (1) Anyperson who has applied for protection for any design in the United Kingdom orhis legal representative or assignee shall, either alone or jointly with anyother person, be entitled to claim that the registration of the said deignunder this Act shall be in priority to other applicants and shall have the samedate as the date of the application in the United Kingdom:

Provided that –

(a) theapplication is made within six months from the application for protection inthe United Kingdom; and

(b) nothingin this section shall entitle the proprietor of the design to recover damagesfor infringements happening prior to the actual date on which the design isregistered in India.

(2) The registration of a design shall notbe invalidated by reason only of the exhibition or use of, or the publicationof a description or representation of, the design in India during the periodspecified in this section as that within which the application may be made.

(3) The application for the registration ofa design under this section must be made in the same manner as an ordinaryapplication under this Act.

(4) Where it is made to appear to theCentral Government that the legislature of any such Commonwealth country as maybe notified by the Central Government in this behalf has made satisfactoryprovision for the protection of designs registered in India, the CentralGovernment may, by notification in the Official Gazette, direct that theprovisions of this section, with such variations or additions, if any, as maybe set out in such notification, shall apply for the protection of designsregistered in that Commonwealth country."

25.Omit sections 78B, 78C,78D and 78E.

26.Omit the Schedule.

[1][1]Substituted by the Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(a) "assignee" includes the legalrepresentative of a deceased assignee, and references to the assignee of anyperson include references to the assignee of the legal representative orassignee of that person;

[2][2]Substituted by the Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(d) "convention country" means a countrynotified as such under sub–section (1)of section 133;

[3][3]Substituted by the Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(g) "food" means any article ofnourishment and includes any substance intended for the use of babies, invalidsor convalescents as an article of food or drink;

[4][4]Substituted for the words Union Territory od Delhi by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[5][5]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(ii) inrelation to the Union territory of Manipur and the Union territory of Tripura,the High Court of Assam;

[6][6]Substituted for the words Union territory of Goa, Daman and Diu by Patents (Amendment) Act,2002 (Act 38 of 2002)

[7][7]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[8][8]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(j) "invention" means any new and useful –

(i) art, process, method or manner of manufacture;

(ii) machine, apparatus or other article;

(iii) substance produced by manufacture,

and includes any new and useful improvement of any of them, and analleged invention;

[9][9]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(m) "patent" means a patent grantedunder this Act and includes for the purposes of sections 44, 49, 50, 52, 54,55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 andChapters XVI, XVII and XVIII, a patent granted under the Indian Patents andDesigns Act, 1911 (2 of 1911) ;

[10][10]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[11][11]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(u) "prescribed" means, in relationto proceedings before a High Court, prescribed by rules made by the High Court,and in other cases, prescribed by rules made under this Act:

[12][12]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[13][13]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[14][14]Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(g) a method or process of testing applicableduring the process of manufacture for rendering the machine, apparatus or otherequipment more efficient or for the improvement or restoration of the existingmachine, apparatus or other equipment or for the improvement or control ofmanufacture;

[15][15]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[16][16]Words or plants omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[17][17]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[18][18]Section5 renumbered as Sub-section (1) and Sub-section (2) inserted by the Patents(Amendment) Act, 1999 (17 of 1999) w. r. e. f. 1-1-1995.

[19][19]Section5 renumbered as Sub-section (1) and Sub-section (2) inserted by the Patents(Amendment) Act, 1999 (17 of 1999) w. r. e. f. 1-1-1995.

[20][20]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[21][21]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[22][22]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[23][23]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(a)a statement setting out the name of the country where the application isbeing prosecuted, the serial number and date of filing of the application andsuch other particulars as may be prescribed; and

[24][24]Substituted for the words details of the nature referred to in by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[25][25]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

[26][26]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[27][27]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[28][28]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(5) the claim or claims of acomplete specification shall relate to a single invention, shall be clear andsuccinct and shall be fairly based on the matter disclosed in the specificationand shall, in the case of an invention such as is referred to in section 5,relate to a single method or process of manufacture.

[29][29]Substituted for the words EXAMINATION OF APPLICATIONS by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[30][30]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[31][31]Substituted for the words When the complete specification has been filed in respect of an application for a patent,the application and specification relatingthereto by Patents (Amendment) Act,2002 (Act 38 of 2002)

[32][32]Substituted for the words specification relating thereto by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[33][33]Substituted for the words specification relating thereto by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[34][34]Words as the Controller may direct omitted by Patents (Amendment) Act,2002 (Act 38 of 2002)

[35][35]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

15.Power ofController to refuse or require amended applications in certain cases.(1)Where the Controller is satisfied that the application or anyspecification filed in pursuance thereof does not comply with the requirementsof this Act or of any rules made thereunder, the controller may either—

(a) refuse to proceed with the application; or

(b) require the application, specification ordrawings to be amended to his satisfaction beforehe proceeds with the application.

(2) If it appears to the Controller that theinvention claimed in the specification is not an invention within the meaningof, or is not patentable under, this Act, he shall refuse the application.

(3) If it appears to the controller that anyinvention, in respect of which an application for a patent is made, might beused in any manner contrary to law, he may refuse the application, unless thespecification is amended by the insertion of such disclaimer in respect of thatuse of the invention, or such other reference to the illegality thereof, as theController thinks fit.

[36][36]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(2) Where an application orspecification (including drawings) is required to be amended under clause (b)of sub–section (1) of section 15, the application or specificationshall, if the Controller so directs, be deemed to have been made on the date onwhich the requirement is complied with or where the application orspecification is returned to the applicant, on the date on which it is re–filedafter complying with the requirement.

[37][37]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[38][38]Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[39][39]Substituted for the words fifteen months specified in sub-section (1) or theextended period by Inserted by Patents (Amendment) Act, 2002 (Act 38 of2002)

[40][40]Substituted for the words fifteen months or the extended period, as the casemay be by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[41][41]Substituted for the words fifteen months or as the case may be, the extendedperiod, until the expiration of by Patents (Amendment) Act, 2002 (Act 38 of2002)

[42][42]Substituted for the words eighteen months by Patents (Amendment) Act,2002 (Act 38 of 2002)

[43][43]Substituted for the words filed in pursuance thereof by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[44][44]. Chapter IV A containing Sections 24A,24B, 24C, 24D, 24E and 24F inserted by the Patents(Amendment) Act, 1999 (17 of 1999) w. r. e. f. 1-1-1995.

[45][45]Substituted for the words and figures section 85 by Patents (Amendment) Act,2002 (Act 38 of 2002)

[46][46]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[47][47]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[48][48]Substituted for the words shall give by Patents (Amendment) Act,2002 (Act 38 of 2002)

[49][49]Substituted for the words shall be taken of any by Patents (Amendment) Act,2002 (Act 38 of 2002)

[50][50]Words to any personor class ofpersons specified in the directions by Patents (Amendment) Act,2002 (Act 38 of 2002)

[51][51]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[52][52]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[53][53]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[54][54]Thewords and figures "or made or caused to be made an application for thegrant of a patent outside India in contravention of section 39" omitted bythe Patents (Amendment) Act, 1999 (17 of 1999) w. r. e. f. 1-1-1995.

[55][55]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[56][56]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[57][57]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[58][58]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[59][59]Substituted for the words make, use, exercise and sell the patented inventionby Patents(Amendment) Act, 2002 (Act 38 of 2002)

[60][60]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(1) Subject tothe provisions of this Act, the term of every patent granted under this Actshall–

(a) in respect of an invention claiming themethod or process of manufacture of a substance, where the substance isintended for use, or is capable of being used, as food or as a medicine ordrug, be five years from the date of sealing of the patent, or seven years fromthe date of the patent whichever period is shorter; and

(b)in respect of any other invention, be fourteen years from the date of thepatent.

[61][61]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[62][62]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[63][63]Substituted for the words or a specification by Patents (Amendment) Act,2002 (Act 38 of 2002)

[64][64]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[65][65]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[66][66]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[67][67]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(1) In any proceedingbefore the High Court for the revocation of a patent, the High Court may,subject to the provisions contained in section 59, allow the patentee to amendhis complete specification in such manner and subject to such terms as tocosts, advertisement or otherwise, as the High Court may think fit, and if inany proceedings for revocation the High Court decides that the patent isinvalid, it may allow the specification to be amended under this sectioninstead of revoking the patent.

[68][68]Substituted for the words complete specification, any amendment of thespecification by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[69][69]Substituted for the word specification by Patents (Amendment) Act,2002 (Act 38 of 2002)

[70][70]Substituted for the word specification by Patents (Amendment) Act,2002 (Act 38 of 2002)

[71][71]Substituted for the words one year by Patents (Amendment) Act,2002 (Act 38 of 2002)

[72][72]Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(2) The provisions of sub–section (10 shall also apply topatents granted before the commencement of this Act, subject to themodification that for the reference to the prescribed period or to sub–section(3) of section 53, there shall be substituted a reference to the periodprescribed therefor under the Indian Patents and Designs Act 1911 (2 of1911) or to sub–section (2) ofsection 14 of that Act.

[73][73]Proviso omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

Provided that a patent granted under the Indian Patents and DesignsAct, 1911 (2 of 1911) shall not be revoked on the ground that the applicant wasthe communicate or the importer of the invention in India and therefore notentitled to make an application for the grant of a patent under this Act;

[74][74]Proviso omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

Providedthat in relation to patents granted under the Indian Patents and Designs Act,1911, (2 of 1911) this clause shall haveeffect as if the words "or elsewhere" had been omitted:

[75][75]Proviso omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[76][76]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[77][77]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[78][78]Substituted for the words secret use by Patents (Amendment) Act,2002 (Act 38 of 2002)

[79][79]Substituted for the original sub section (4) by Patents (Amendment) Act,2002 (Act 38 of 2002). Before substitution it stood as under:

(4) For the removal of doubts, it is hereby declared that theregister of patents existing at the commencement of this Act shall beincorporated in, and form part of, the register under this Act.

[80][80]Substituted for the words the Controller within six months from the commencement of thisAct or the execution of the document, whichever islater or within suchfurther period by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[81][81]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[82][82]Substituted for the words section 4 of the Trade and Merchandise MarksAct, 1958 (43 of 1958) by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[83][83]Substituted for the word Central Government by Patents (Amendment) Act,2002 (Act 38 of 2002)

[84][84]Words or underthe Indian Patents and DesignsAct, 1911 (2 of 1911) omitted by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[85][85]Words or underthe Indian Patents and DesignsAct, 1911 (2 of 1911) omitted by Patents (Amendment)Act, 2002 (Act 38 of 2002)

[86][86]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[87][87]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[88][88]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[89][89]Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(2) Without prejudice to the generality of theprovisions of sub–section (1),—

(a) theimportation, by or on behalf of the government, of any invention being amachine, apparatus or other article covered by a patent granted before thecommencement of this Act, for the purpose merely of its own use; and

(b) theimportation, by or on behalf of the Government, o any invention being amedicine or drug covered by a patent granted before the commencement of thisAct—

(i) for the purpose merely of its own use; or

(ii) for the purpose of distribution in any dispensary, hospital or othermedical institution maintained by or on behalf of the government or in any otherdispensary, hospital or other medical institution which the Central Governmentmay, having regard to the public service which such other dispensary, hospitalor medical institution renders, specify in this behalf by notification in theOfficial Gazette,

shallalso be deemed, for the purposes of this Chapter, to be use of such inventionfor the purposes of Government.

[90][90]Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[91][91]Substituted for the words unless it appears to theGovernment that it would be contrary to the public interest so to do by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[92][92]Substituted for the words right to sell the goods by Patents (Amendment) Act,2002 (Act 38 of 2002)

[93][93]Words , whether before or after the commencement of this Act, by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[94][94]Words (including payments by way of minimum royalty) by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[95][95]Words (including payments by way of minimum royalty) by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[96][96]Words including payments by way of minimum royalty by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[97][97]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[98][98]Substituted for the words existing by the Repealing and Amending Act 1974.

[99][99]Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[100][100] Renumbered by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[101][101] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[102][102] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

112.Restrictionon power of court to grant injunction in certain cases.- If in proceedings for the infringement of apatent endorsed or deemed to be endorsed with the words "Licences ofright" (otherwise than by the importation of the patented article fromother countries) the infringing defendant is ready and willing to take alicence upon terms to be settled by the Controller as provided in section 88,no injunction shall be granted against him, and the amount if any recoverableagainst him by way of damages shall not exceed double the amount which wouldhave been recoverable against him as licensee if such a licence had beengranted before the earliest infringement.

[103][103] Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

CHAPTER XIX

APPEALS

116.Appeals.- (1)No appeal shall lie from any decision.order or direction made orissued under this Act by the Central Government, or from any act or order ofthe Controller for the purpose of giving effect to any such decision, order ordirection.

(2) Save as otherwise expressly provided in sub–section(1) , an appeal shall lie to a High Court from any decision, order or directionof the Controller under any of the following provisions, that is to say,

section 15, section 16,section 17, section 18, section 19, section 20, section 25, section 27, section28, section 51, section 54, section 57, section 60, section 61, section 63, sub–section(3) of section 69, section 78, section 84, section 86, section 88, (3) section89, section 93, section 96 and section 97.

(3) Every appeal under this section shall be inwriting and shall be made within three months from the date of the decision,order or direction, as the case may be, of the Controller, or within suchfurther time as the High Court may in accordance with the rules made by itunder section 158 allow.

117.Procedure for hearing ofappeals.- (1) Every appeal before a High Court undersection 116 shall be by petition and shall be in such form and shall containsuch particulars as may be prescribed by rules made by the High Court undersection 158.

(2) Every such appeal shall be heard by a singleJudge of the High Court.

Provided that any such Judgemay, if he so thinks fit, refer the appeal at any stage of the proceeding to aBench of the High Court.

(3) Every such appeal shall be heard asexpeditiously as possible and endeavour shall be made to decide the appealwithin a period of twelve months from the date on which it is filed.

[104][104] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[105][105] Substituted for the words five hundred rupees by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[106][106] Substituted for the words one thousand rupees by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[107][107] Substituted for the words five hundred rupees by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[108][108] Substituted for the words two thousand rupees by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[109][109] Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

125.Register of patent rights.- The Controller shall maintain a register tobe called the register of patent agents in which shall be entered the names andaddresses of all persons qualified to have their names so entered under section126.

[110][110] Substituted for the words degree from any University by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[111][111] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[112][112] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[113][113] Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Beforesubstitution it stood as under:

(2) Notwithstanding anythingcontained in sub–section (1), a person who has been practising as apatent agent before the 1st day of November, 1966 and has filed not less thanfive complete specifications before the said day, shall, on payment ofprescribed fee, be qualified to have his name entered in the register of patentagents.

[114][114] Words Subject to the provisions contained in sub section (2) andto any rules made under this Act omitted by Patents (Amendment) Act,2002 (Act 38 of 2002)

[115][115] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(2) The following documents, namely,—

(i) applications for patents;

(ii) applications for the restoration of lapsedpatents;

(iii) applications for the sealing of patentsafter the time allowed for that purpose by or undersub–section (2), or sub–section (3) of section 43 has expired;

(iv) applications for leave to amend;

(v) applications for compulsory licences or forrevocation; and

(vi) notices of surrender of patents,

shall besigned and verified in the manner prescribed by the person making suchapplications or giving such notices:

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

[116][116] Substituted for the word Central Government by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[117][117] Substituted for the word it by Patents (Amendment) Act,2002 (Act 38 of 2002)

[118][118] Substituted for the word it by Patents (Amendment) Act,2002 (Act 38 of 2002)

[119][119] Substituted for the word Central Government by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[120][120] Substituted for the word Central Government by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[121][121] Words or any person, not being a patent agent, who is dulyauthorized by the applicant by Patents (Amendment) Act, 2002 (Act 38 of2002)

[122][122] Substituted for the words proceedings under this Act, otherwisethan by way of drafting any specification by Patents (Amendment) Act,2002 (Act 38 of 2002)

[123][123] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[124][124] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[125][125] Substituted for the words annexed to the specification ordocument by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[126][126] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[127][127] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[128][128] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(5) Two provisions ofthis section shall also apply to contracts made before the commencement of thisAct if, and in so far as, any restrictive conditions declared unlawful by thissection continue in force after the expiration of one year from suchcommencement.

[129][129] Words whether made before or after the commencement of this Act,omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[130][130] Substituted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before substitution it stood as under:

(3) Where a fee is payable in respect of the filing ofa document at the patent office, the document shall be deemed not to have beenfiled at the office until the fee has been paid.S

[131][131] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[132][132] Substituted for the words or be open to public inspection at anytime before the date of advertisement of acceptance of the application by Patents(Amendment) Act, 2002 (Act 38 of 2002)

[133][133] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[134][134] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[135][135] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[136][136] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[137][137] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[138][138] Inserted by Patents (Amendment) Act, 2002 (Act 38 of 2002)

[139][139] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

161.Specialprovisions with respect to certain applications deemed to have been refusedunder Act 2 of 1911.- (1)Where, as a result of action taken by the Controller under section 12 of theAtomic Energy Act, 1948 (20 of 1948), or under section 20 of the Atomic EnergyAct, 1962 (33 of 1962), an application for a patent made before thecommencement of this Act could not be accepted within the time specified forthe purpose in the Indian Patents and Designs Act, 1911(2 of 1911) (hereafterin this section referred to as the repealed Act), and, consequently was deemedto have been refused by reason of sub–section (4) of section 5 of therepealed Act, the application may, if the applicant or, if he is dead his legalrepresentative makes a request in that behalf to the Controller in theprescribed manner within three months from the commencement of this Act, berevived and shall be disposed of as if it were an application pending at thecommencement of this Act to which the provisions of this Act apply by reason ofsub–section (3) of section 162.

(2) The Controller may,before proceeding to act upon any such request as is referred to in sub–section(1), refer the matter to the Central Government for directions as to whetherthe invention is one relating to atomic energy and shall act in conformity withthe directions issued by it.

(3) Where in pursuance ofany such application as is referred to in sub–section (1) a patent isgranted, the rights of the patentee shall be subject to such conditions as theController thinks fit to impose for the protection or compensation of personswho may have begun to avail themselves of, or have taken definite steps bycontract or otherwise to avail themselves of, the patented invention before thedate of advertisement of the acceptance of the complete specification.

(4) A patent granted inpursuance of any such application as is referred to in sub–section (1)shall be dated as of the date on which the request for reviving such applicationwas made under sub–section (1).

[140][140] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(2)Notwithstanding the repeal of the Indian Patents and Designs Act, 1911, in sofar as it relates to patents—

(a) the provisions of section 21A of that Actand of any rules made thereunder shall continue to apply in relation to anypatent granted before the commencement of this Act in pursuance of thatsection, and

(b) the renewal fee in respect of a patent grantedunder that Act shall be as fixed thereunder.

[141][141] Omitted by Patents (Amendment) Act, 2002 (Act 38 of 2002). Before omission itstood as under:

(3) Save asotherwise provided in sub–section (2), the provisions of this Act shallapply to any application for a patent pending at the commencement of this Actand to any proceedings consequent thereon and to any patent granted inpursuance thereof.

PATENTS ACT 1970

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PATENTS ACT 1970

An Act to amendand consolidate the law relating to patents

CHAPTER IV

EXAMINATION OFAPPLICATIONS

OPPOSITIONTO GRANT OF PATENT

GRANTAND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY

WORKINGOF PATENTS, COMPULSORY LICENCES AND REVOCATION

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