MODULE-4

INTRODUCTION TO INTELLECTUAL PROPERTY (IP)

- IP is internationally recognized as covering :

Patents )
Industrial Designs ) Industrial Property
Copyright )
Trade Marks
Know-how and Confidential Information
- Scope of IP developing fast. Therefore they seek protection under
the umbrella of IP rights
- The scope of IP relates to following topics :
1) Nature of the Property
2) Mode of its Acquisition
3) Nature of Rights conferred
4) Commercial Exploitation of those rights
5) Enforcement of those rights
6) Remedies against infringement of those rights

BASIC CONCEPTS OF IP LAW

a) Patent Law - Novelty and Inventive Step
b) Design Law - Novelty and Originality
c) Trade Mark Law - Distinctiveness and Similarity of Marks and goods
d) Copyright - Originality and Reproduction

NATURE OF IP
- IP - Intangible Incorporate Property / Territorial in nature
 A bundle of rights
Eg. a) Patent - Exclusive right to use invention patented
To grant Licenses to others
To sell that right
b) Industrial - Exclusive right to apply design
Design
c) Trade Mark - Exclusive right to use mark in relation
to a product of service
Prevents others from using it
d) Copyright - Right of Reproduction
e) Know How & -Rights exist until it is secret
Confidential Action against unlawful use Information

COMMERCIAL EXPLOITATION OF IP
- Patent - Industrialize )
- Design - Give Licence to use ) Licence can also be
- Copyright - Reproductions ) granted
- Trade Mark - Use will earn Royalty )

ENFORCEMENT OF RIGHTS AND REMEDIES AGAINST

INFRINGEMENT
- Enforcement through Court arises on infringement
- Patent ) Injunction - Damages - Account of profits
Design )
- Trade Mark - Injunction - Damages - Account of profits -
 Delivery of Articles - Imprisonment - Fine
- Copyright - Civil à Injunction - Damages - Account of profits -
Criminal - Imprisonment, Fine - Seizure of copies

IP AND ECONOMIC DEVELOPMENT

- Very substantial
Eg. Patent - New and better products
Technological Information
Industrial - Encourages Creativity
Design - Eg. Consumer products - Toys, Garments,
Furniture
Trade Mark -Ensures Quality and identity of product
Copyright - Printing, Publishing, Entertainment

INTERNATIONAL CHARACTER OF IP
- Globalization of Trade and Commerce has had its impact on IP
- IP travels effortlessly from Country to Country
- Piracy has acquired International character
- International conventions

SALIENT FEATURES OF THE PATENTS ACT, 1970

- An Act to amend and consolidate the Law relating to Patents
1. The Indian Patents and Designs Act, 1911
2. Patents Enquiry Committee - Report in 1950 - Patents Bill, 1953 -
Lapsed with dissolution of 1st Lok Sabha - based on United
Kingdom Patents Act, 1949
3. The Patents Bill, 1965 - Sri. Justice N. Rajagopala Ayyangar Report,
1959 - Joint Committee of Parliament - Lapsed on dissolution of 3rd
Lok Sabha
4. The Patents Act, 1970 - from 20.04.1972
5. 1999 Amendment - To keep it in tune with trade related aspects of
Intellectual Property rights (Trips) entered into by WTO and to
provide for Public Interest, National Security, Bio-diversity,
Traditional Knowledge, Procedure for grant of Patents

EXTANT - Extends to the whole of India

ENFORCEABILITY - 20.04.1972

DEFINITIONS
1. Sec. 2(ab) - ‘ASSIGNEE’ includes as Assignee of the Assignee and
the legal representative of a deceased assignee and references to
the assignee of any person include references to the assignee of the
legal representative or assignee of that person

2. Sec. 2(ac) - ‘CAPABLE OF INDUSTRIAL APPLICATION’ in relation

to an invention means that the invention is capable of being made or
used in an Industry

3. Sec. 2(c) - ‘CONVENTION APPLICATION’ means an application for

Patent made by virtue of Sec. 135

4. Sec. 2(d) - ‘CONVENTION COUNTRY’ means a country or a

country which is member of a group of countries or an union of
countries or an inter-governmental organisation notified as such
under Sec. 133(1)
5. Sec. 2(f) - ‘EXCLUSIVE LICENCE’ means a licence from a Patentee
which confers on the Licensee, or on the Licensee and persons
authorised by him, to the exclusion of all other persons (including
the Patentee) any right in respect of the patented invention and
‘Exclusive Licensee’ shall be construed accordingly.

6. Sec. 2(g) - ‘FOOD’ means any Article of Nourishment for human

consumption and also includes any substance intended for the use
of infants, invalids or convalescents as an article of food or drink

7. Sec. 2(ia) - ‘INTERNATIONAL APPLICATION’ means an application

for Patent made in accordance with the Patent Co-operation Treaty

8. Sec. 2( j) - ‘INVENTION’ means a new product or process involving

an inventive step and capable of industrial application

9. Sec. 2( ja) - ‘INVENTIVE STEP’ means a feature that makes the

invention so obvious to a person skilled in the Art

10. Sec. 2(l) - ‘MEDICINE OR DRUG’ includes

i) All medicines for internal or external use of human beings and
animals
ii) All substances intended to be used for or in the diagnosis,
treatment, mitigation of diseases in human beings and animals
iii) All substances intended to be used for or in the maintenance of
public health, or the prevention or control of any epidemic
disease among human beings or animals
iv) Insecticides, Germicides, Fungicides, Weedecides and all other
substances intended to be used for the protection or
preservation of plants
 v) All chemical substances which are ordinarily used as
intermediates in the preparation or manufacture of any of the
medicines or substances above referred to

11. Sec. 2(m) - ‘PATENT’ means patent granted under the Act

12. Sec. 2(n) - ‘PATENT AGENT’ means a person for the time being
registered under the Act as Patent Agency

13. Sec. 2(o) - ‘PATENTED ARTICLE’ AND ‘PATENTED PROCESS’

means respectively an Article or Process in respect of which a
Patent is in force

14. Sec. 2(oo) - ‘PATENT CO-OPERATION TREATY’ means the Patent

Co-operation Treaty done at Washington on 19th June 1970 as
amended and modified from time to time

15. Sec. 2(p) - ‘PATENTEE’ means a person for the time being entered
on the register as the Grantee or Proprietor of the Patent

16. Sec. 2(q) - ‘PATENT OF ADDITION’ means a Patent granted in

accordance with Sec. 54

17. Sec. 2(t) - ‘PERSON INTERESTED’ includes a person engaged in,

or in promoting research in the same field as that to which the
invention relates

18. Sec. 2(y) - ‘TRUE AND FIRST INVENTOR’ does not include either
the First Importer of any invention into India, or to whom an
invention is first communicated from outside India
INVENTIONS NOT PATENTABLE
Sec. 3 - WHAT ARE NOT INVENTIONS
1. Frivolous and contrary to laws of nature
2. Commercial exploitation of which is contrary to public order or
morality and causes prejudice
3. Discovery of : Scientific principle / Formulation
Living thing
Non-living substance occurring in nature
New property or new use of a known substance
New use of known process, machine or appratus
unless resulting in new product
4. A substances obtained by admixture
5. Mere arrangement or re-arrangement or duplication of known
devices
6. Method of agriculture and horticulture
7. Any process for medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic treatment of human beings and animals to
render them free of disease or which increases its economic value
8. Plants and animals and its biological process for production or
propagation
9. Mathematical or business method or computer program
10. Literary, dramatic, musical or artistic work or aesthetic creation
including cinematographic works and television productions
11. Scheme or role or method of performing mental act or method of
playing game
12. Presentation of Information
13. Topography of integrated circuits
14. An invention involving traditional knowledge
Sec. 4 - INVENTIONS relating to ATOMIC ENERGY NOT
PATENTABLE as per Atomic Energy Act, 1962

Sec. 5 - INVENTIONS where only METHODS OR PROCESSES OF

MANUFACTURE PATENTABLE
1. Substances used in drugs or medicines
2. Substances produced by Chemical processes. Eg. Alloys, Optical
glass, Semi-Conductors and Inter-metallic compounds - But
methods and processes of manufacture patentable

APPLICATION FOR PATENTS

- Every true and first inventor, his assignee (proof) and in case of
death his legal representative (declaration) can file the application
for grant of Patent (Sec. 6)
- To file application in prescribed form and to be accompanied by
Provisional or Complete Specification - applies also to International
Application under Patent Co-operation Treaty (Sec. 7)
- In case of Foreign Application along with application in India
applicant to furnish all particulars and information regarding
progress of Foreign Application to Indian Office (Sec. 8)
- Complete specification to be filed within 12 or 15 months of filing of
Provisional Application (Sec. 9)
- CONTENTS OF SPECIFICATIONS :
i) Title
ii) Description of Invention
iii) Drawings
iv) Model or Sample for illustration
v) Method of Operation
vi) Use / Performance
vii) Claims
 viii) Abstract providing technical information
ix) Deposit of material in case of biological material
x) Declaration regarding furnishing of invention within prescribed
period
xi) Developments and subsequent additions (Sec. 10)
- Priority Date of Complete Specifications :
i) Date of its filing
ii) Two Specifications - Latter date
iii) Relates to two inventions - date is of first disclosure
iv) In case of two Priority Dates - earlier date
v) In case of Ante-Dating and Post-Dating the Ante-dated and
Post-dated Dates (Sec. 11)

PUBLICATION AND EXAMINATION OF APPLICATIONS

- Applications for Patents to be published 18 months after Priority
Date in Official Gazette and in case of secrecy direction after
cessation of direction - Publication to contain date, number, name
and address of Applicant and from date of publication to be open to
public (Sec. 11-A)
- Request for Examination of Application to be within 48 months of
application otherwise considered as withdrawn (Sec. 11-B)
- Application to be referred by Controller to Examiner and Examiner to
submit Report within 18 months on following grounds :
i) in accordance with Act
ii) lawful objection to Grant
iii) result of Search
iv) any other matter (Sec. 12)
- Examiner to conduct Search by Anticipation by Previous Publication
and by prior claim in India and outside (Sec. 13)
- On receipt of Report by Examiner Controller in case of Adversity and
Amendment give Notice to Applicant and reasonable opportunity of
being heard (Sec. 14)
- Powers of Controller in case of Applications : (Secs. 15 - 20)
i) To refuse or require amended Applications in case of non
compliance with requirements of Act
ii) To make orders respecting division of application if it relates to
more than one invention and require fresh application and
specification to be filed and to be dated from date of original
application
iii) To postdate Application for a period not beyond 6 months
iv) In cases of Anticipation
a) Refuse complete Satisfaction
b) Insert reference regarding other Specifications
c) Prove that this Application has earlier priority date
v) In case of potential infringement insert a reference regarding
that Application
vi) To make Order regarding substitution of Applicant if subsequent
one better entitled
- Applicant to comply with all additional requirements within 12
months of date of objections or extended time granted by Controller
(Sec. 21)
- Complete Specification to be accepted after compliance with
requirements (Sec. 22)
- After acceptance of Complete Specification, Notice to Applicant and
Publication in Official Gazette and open to Public Inspection
- From date of acceptance of Complete Specification upto date of
Sealing of Patent, Applicant to have all rights as Patentee except
Right to sue for Infringement (Sec. 24)

EXCLUSIVE MARKETING RIGHTS

- Controller to refer for examination to Examiner Application for Patent
of substances used in the course of manufacture of medicines
including exclusive marketing rights in India (Sec. 24-A & B)
- And grant the same if it is invention that is Patentable
- Provisions relating to licences applicable (Sec. 24-C)
- In Public Interest Central Government can grant power to someone
else to sell and distribute the same and give authority to fix price
(Sec. 24-D)
- Infringement provisions to apply (Sec. 24-E)

OPPOSITION TO GRANT PATENT

- Controller to accept opposition to grant of Patent within 4 - 5 months
of date of advertisement and acceptance of Complete Specification
on following grounds :
a) Applicant has wrongfully obtained invention
b) Invention has been published before Priority Date
c) Invention part of another Complete Specification
d) Invention publicly used in India before Priority Date
e) Invention does not involve inventive step
f) Not an invention or patentable under the Provisions of Act
g) Complete Specification does not sufficiently and clearly
describe invention
h) Information not properly disclosed
i) In case of convention not within prescribed time (12 months)
j) Complete Specification does not disclose or wrongly mentions
Geographical Origin or Biological Material used
k) Invention has been anticipated
And notify Applicant and give opportunity to be heard (Sec. 25)
- In case of wrongful ‘obtaining’ of invention, name of opponent to be
substituted and in case of part of invention, that part is to be
 removed and made subject to another Application which will have a
Priority Date as of earlier Application (Sec. 26)
- Controller may refuse grant of Patent if it comes to his knowledge
that invention has been Anticipated before Priority Date unless
Application suitable amended (Sec. 27)
- Any person having no grounds for opposition but the inventor is to
submit Application within prescribed period of two months of
advertisement of Complete Specification in prescribed manner for
inclusion of name and Controller to carry out same after notice to
Applicant and giving him opportunity of being hard (Sec. 28)

ANTICIPATION
- No Anticipation in following cases :
a) Featured in Complete Specification and prior to Priority Date but has
been obtained or derived from this Application (Sec. 29)
b) Has been communicated to Government under its Authorisastion
(Sec. 30)
c) Has been publicly displayed in an exhibition or described in
newspaper publication with consent of Applicant (Sec. 31)
d) Publicly worked for reasonable trial by Applicant or with consent of
Applicant (Sec. 32)
e) Used and published after filing of Provisional Specification (Sec. 33)
- The above grounds cannot be used by Controller to refuse, revoke
or invalidate Patent (Sec. 34)

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

- When Controller is of opinion that an Application if of a class notified
by Central Government as relevant for defence purposes, Controller
to give direction for its non-publication and inform Central
Government, Central Government to revoke direction or direct if
directions not given (Sec. 35)
- The above direction to be periodically reviewed at 12 months
intervals or on application of Applicant and Applicant to be informed
of same (Sec. 36)
- Consequences of Secrecy Directions :
i) Controller not to pass Orders
ii) No Appeal to lie from direction of Controller
iii) Secs. 100 - 103 to apply
iv) If hardship is caused to Applicant, Solatium to be paid by
Central Government
v) If Patent is granted subsequently, no renewal fee during
pendency of directions
- When revocation of Secrecy Directions has taken place Applicant to
be given extension of time for doing what he has to carry out (Sec.
38)
- No Application can be preferred outside India for grant of Patent
relating to defence purposes or atomic energy without written
permission of Controller and prior consent of Central Government
(Sec. 39)
- Violation of Sec. 35 & 39 results in abandonment and revocation of
Patent (Sec. 40)
- Orders of Controller and Central Government - Final and cannot be
questioned in Court (Sec. 41)
- All disclosures by Controller to Central Government valid (Sec. 42)

GRANT AND SEALING OF PATENTS AND RIGHTS CONFERRED

THEREBY
- On application by Applicant within prescribed time or such extended
time after Advertisement and Acceptance of Complete Specification,
Controller to seal the Patent and register the same if :
a) No opposition or time of filing Opposition has expired
b) Opposition decided in favour of Applicant
 c) Application not refused by Controller
d) Application not in contravention of Provisions of Act
- In case of death of Applicant or non-existence of body corporate
which has filed the Application before Sealing Controller to include
name of person to whom Patent to be granted (Sec. 44)
- Date of Patent entered in Register shall be Date of Application (Sec.
45)
- Patent to be in prescribed form, to have effect throughout India and
to be granted for one invention only (Sec. 46)
- Grant of Patent subject to following conditions :
a) Article or Process may be imported by Government for its use
b) May be used by Government for its use
c) May be used in experiment or research and imparting
instruction to pupils
d) If it is Patent of Medicine or Drugs may be imported by
Government for its use (Sec. 47)
- Rights of Patentees relating to :
a) Goods i) Make
ii) Market / Import
b) Process i) Use
ii) Market / Import (Sec. 48)
- Patent rights not infringed when used on foreign vessels, etc.
temporarily or accidentally in India when required for its operation
(Sec. 49)
- Rights of Co-owners of Patents :
i) Each person entitled to equal undivided share of Patent
ii) Each person entitled to rights without accounting to the other
unless contract to contrary
iii) Licence to be granted by one of them with consent of other
iv) Purchaser to treat sale as though by sole Patentee
 v) Rules of Law applicable to ownership and Devolution of
moveable property applicable (Sec. 50)
- One of the Co-owners to apply to Controller to give directions to
other and Controller to do so after giving opportunity of being heard
and if direction does not effect mutual rights (Sec. 51)
- When grant of Patent has been given to true and first inventor where
it has been obtained by another in fraud of him Controller to give
Patent bearing same Date and Number as of Patent revoked
(Sec. 52)
- Term of Patent to be 20 years from Date of Application and can be
renewed, if not renewed stands revoked and no protection against
infringement during Interim period (Sec. 54)

PATENTS OF ADDITION
- Patent of Addition can be granted to any improvement in or
modification of a Patent wherein a Complete Specification has been
filed and the Complete Specification should have been filed on or
later than Date of Specification in main invention (Sec. 54)
- Patent of Addition shall exist for same period as Main Patent and if
Main Patent is revoked before expiry of period, Patent of Addition to
continue as Independent Patent (Sec. 55)
- Patent of Addition cannot be revoked or invalidated on the ground
that it does not involve :
i) Inventive step
ii) Ought to be subject of Independent Patent

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

- Applicant of Patent or Patentee may file Application for Amendment
of Application or Specification by giving full particulars to Controller
and Controller to grant same and if it is substantive in nature, to be
published, opposition accepted and hearing of Parties and then to
decide and amendment may relate to Priority Date (Sec. 57)
- When proceedings for revocation is pending before High Court,
Application for Amendment can be filed before High Court after
Notice to Controller and High Court to give directions and Direction
of Amendment to be recorded by Controller (Sec. 58)
- Amendment to be allowed only for following purposes :
i) A disclaimer
ii) Correction or Explanation
iii) Incorporation of Actual fact
iv) Within Scope of Specification
And Amendment cannot be questioned except on ground of fraud
(Sec. 59)

RESTORATION OF LAPSED PATENTS

- Application for Restoration of Lapsed Patent by Aggrieved Party can
be filed giving the reasons for non payment of renewal fee within
18 months (Sec. 60)
- Controller to advertise Application if he is satisfied that :
a) Failure to pay renewal fee was unintentional
b) No undue delay in filing Application
Accept opposition on above ground and renew Patent
After hearing Parties and collecting Renewal and Additional fee and
enter the same in Register (Sec. 61) and Controller may impose
conditions
- For the inbetween period i.e. Lapse and Restoration :
a) Compensation to aggrieved persons
b) No Suits of Infringement (Sec. 62)

SURRENDER AND REVOCATION OF PATENTS

- Patentee to notify in prescribed manner of surrender of Patent to
Controller, Controller to advertise and notify Interested Person,
consider opposition, hear Parties and revoke Patent (Sec. 63)
- On Petition by Interested Person, Central Government or Counter-
claim in Suit for Infringement High Court to revoke Patent on
following grounds :
i) is subject to valid claim of earlier Priority Date
ii) Applicant lacks capacity
iii) Patent wrongfully obtained
iv) Not an invention
v) Not new
vi) Does not involve inventive step
vii) Not useful
viii) Complete Specification does not sufficiently and fairly describe
invention
ix) Scope not sufficiently and clearly defined
x) Patent obtained on false suggestion and representation
xi) Secretly used in India
xii) Inadequate information and false information given
xiii) Amendment obtained by Fraud
xiv) Non-disclosure or wrongful disclosure of Geographical origin of
Biological material used
xv) Has been anticipated
xvi) Non-Compliance with Central Government directions
Notice to be given to all interested persons (Sec. 64)
- Central Government may direct Controller to refuse Application or
revoke Patent relating to Atomic Energy and Controller to do same
after Notice to Party (Sec. 65)
- Central Government is of opinion Patent is mischievous to State or
against Public Interest, give Notice, hear and Notify its Revocation
(Sec. 66)

*****

REGISTER OF PATENTS (CHAP. XIII)

PATENT OFFICE AND ITS ESTABLISHMENT (CHAP. XIV)

POWERS OF CONTROLLER GENERALLY (CHAP. XV)

WORKING OF PATENTS, COMPULSORY LICENCES AND

REVOCATION
- ‘Patented Article’ includes Article made by Patented process
‘Patentee’ includes exclusive Licensee (Sec. 82)
- Principles underlying Grant of Patent :
a) Encourage inventions, their Commercial Application without
undue delay
b) Not for Patentees to enjoy monopoly of Article
c) Promotion of Technological Innovation
d) Promote Public Interest
e) Do not prohibit Central Government from taking measures to
protect Public Health
f) Patent Right not to be abused
g) Benefit of Patented Invention to be available at reasonable
prices
- On expiry of 3 years from date of sealing, Party interested to apply
to Controller for Grant of Compulsory Licence on the following
grounds :
a) Reasonable requirements of Public not satisfied
b) Patented Article not available to Public at affordable prices
c) Patent not worked within Territory of India
And stating that person’s interest and to be granted by Controller if
conditions fulfilled and taking into account following factors :
a) Nature of Invention
b) Ability of Applicant to work invention to Public advantage
c) Capacity of Applicant to take risk
d) Whether Applicant has made reasonable attempts to obtain
Licence
And reasonable requirements of Public shall be deemed not to have
been satisfied :
i) a) Existing Trade and Industry prejudiced
b) Demand for Patented Article not met on reasonable terms
c) Market for Export of Patented Article not developed
d) Commercial Activities in India prejudiced
ii) Manufacture of Patented Articles not protected
iii) Results in Coercive Package Licensing - Exclusive Grant back

iv) Not worked in Territory of India

v) Working of Patented Article prevented (Sec. 84)
- Central Government or Person interested may prefer Application on
expiry of two years of Grant of Compulsory Licences for Revocation
of Patent on following grounds :
a) Patented Invention not worked in Territory of India
b) Reasonable requirements of Public not met
 c) Invention not available to Public at reasonably affordable prices
Also to be included prescribed particulars and Applicant’s interest
and if Controller satisfied may revoke Patent and decision to be
within one year of publication (Sec. 85)
- Controller has power to adjourn Application by one year under Sec.
84 & 85 if it feels time was not sufficient for implementation of
working of Patent
- Procedure applicable to Application under Sec. 84 & 85 :
i) Notification to Patentee and Interested Persons
ii) Advertisement in Official Gazette
iii) Opposition à Notice to relevant persons
- Controller has power to give following directions if Application has
been preferred under Section 84 due to unfavourable conditions put
by Patentee while granting Licence :
i) Direct Grant of suitable Licences
ii) Cancel or Amend Licence
iii) Grant Licence in other related Patents
iv) Subsequently revise terms and conditions of Licence
This Application cannot be entertained second time (Sec. 88)
- Grant of Compulsory Licence under Sec. 84 can be on following
general grounds :
i) Patented Article to be commercially exploited on large scale in
India
ii) Other person working invention shall not be prejudicially
effected
- Terms and Conditions to be imposed by Controller while granting
Licence under Sec. 84 except Import and this also with permission
of Central Government :
i) Reasonable Royalty and Remuneration
ii) Can be worked to fullest extant with reasonable profit
 iii) Article made available to Public at reasonable price
iv) Licence is not Non-Exclusive Licence
v) Right of Licence not assignable
vi) Licence is for balance period of Patent
vii) If beneficial, Licence can be for Export
- Licencing of related Patents on reasonable terms and will contribute
to Commercial activity in India on same conditions but not
assignable
- Controller to grant Compulsory Licence on satisfaction of Central
Government in following exigencies :
i) National Emergency
ii) Extreme Urgency
iii) Public Non-Commercial use
iv) Public Health Crisis (Sec. 92)
- Order for Licence to operate as a Deed between Patentee and
Licencee (Sec. 93)
- On Application of Patentee and Interested Person Controller to
cancel Compulsory Licence when conditions of its no longer exist
and Licencee to be heard (Sec. 94)

USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND

ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT
- When Invention is used, exercised or vended for purposes of
Central Government, State Government, or Government
Undertaking it is used for purposes of Government (Sec. 99)
- After filing of Application Central Government or Authorised Person
to use Invention for Government purpose but not for Commercial
purpose and Patentee to be paid adequate remuneration and
Central Government to notify use of Patent to Patentee (Sec. 100)
- Effect on Third Parties in respect of use of Invention for purposes of
Government :
 i) Cannot regulate use by Government
ii) Government to make necessary payments
iii) All Licences, Assignments and Agreements not to have effect
(Sec. 101)
- Central Government may acquire Patents in Public Interest by
Notification to that effect in Official Gazette and Patent to vest in
Government and Government to make necessary payments
(Sec. 102)
- In case of disputes relating to Patent use by Central Government
same may be referred to High Court (Sec. 103)

SUITS CONCERNING INFRINGEMENT OF PATENTS

- District Court to have jurisdiction concerning Suits for Infringement
of Patents and in case of parallel Suit for revocation to be
transferred to High Court (Sec. 104)
- Burden of Proof :
Plaintiff - Product identical to Patented product
Defendant - Process and Product different (Sec. 105)
- Court has power to declare a Product as Non-Infringing (Sec. 106)
- In case of threats of Suits of Infringement Court may direct :
a) By Declaration of Threats as unjustifiable
b) Grant Injunction against Threats
c) Damages (Sec. 106)
- All defenses available under Revocation available for in defense of
Infringement (Sec. 107)
- Following Acts not Infringement :
i) Use as per Law
ii) Import by Authorised Person (Sec. 107)
- Relief in Suits for Injunction :
i) Injunction
 ii) Damages / an Account of Profits
iii) Goods may be seized, forfeited or destroyed (Sec. 108)
- Licencee has same Rights for Infringement of his Rights and in case
of Infringement of Patent Suit by Licencee, Patentee is Plaintiff
otherwise Defendant (Sec. 110)
- In case of Infringement of Patent, Licencee (under Sec. 84) may
request Patentee to file Suit of Infringement and if Patentee fails
within two months, Licencee to file same and Patentee to be
included as Defendant (Sec. 110)
- Court not to grant damages under following circumstances :
i) Infringer was not aware of existence of Patent
ii) Plaintiff has failed to pay Renewal Fee
iii) Amendment of Specification by way of Disclaimer not allowed
And above not to effect Grant of Injunction (Sec. 111)
- High Court may grant Certificate of Validity of Suit for Infringement
but the same not to effect Appeals (Sec. 113)
- Court to grant Relief in case of Valid Claims (Sec. 114)
- Court to take advise of Scientific Advisor on Application or Sou Motu
(Sec. 115)

*****

APPEALS TO APPELLATE BOARD (CHAP. XIX)

PENALTIES (CHAP. XX)

*****
PATENT AGENTS
- Controller to maintain Register of Patent Agents and the same to
contain name, addresses and other relevant particulars of persons
qualified and the same can be retained in Electronic System (Sec.
125)
- Qualifications for registration as Patent Agent :
i) Citizen of India
ii) 21 years
iii) Degree in Science, Engineering or Technology
iv) An Advocate
v) Passed Qualifying Exam
vi) Functioned as Examiner for 10 years
vii) Paid prescribed fee
Already registered as Patent Agent prior to 2002 (Sec. 126)
- Rights of Patent Agent :
i) Practice before Controller
ii) Prepare proceedings before Controller (Sec. 127)
- All Applications and Communications (Verification) to Controller to
be signed by Patent Agent and Concerned Person (Sec. 128)
- One can practise as Patent Agent only if registered as such and
means :
i) Applying for or obtaining Patents in India or elsewhere
ii) Preparation of Documents and Specifications
iii) Advice (Sec. 129)
- Removal of name from Patent Register when
i) Name has been entered in error or on misrepresentation
ii) Sentenced to imprisonment for Professional Misconduct
- Restore name if sufficient cause shown (Sec. 130)
- Controller has power to refuse to deal with certain Agents :
i) Name removed from Register
ii) Convicted for Professional Misconduct
iii) Acting / Employed as Patent Agent of another
iv) Controller does not recognize as Patent Agent - No residence or
place of business in India (Sec. 131)
- No prohibition for
i) Applicant for Patent to draft Specification or appear before
Controller
ii) An Advocate (Sec. 132)

INTERNATIONAL ARRANGEMENTS
- Notification as Convention Country when another Country is given
same Rights as Indians based on Treaty, Convention or
Arrangement (Sec. 133)
- Notification as to Countries not providing for Reciprocity then that
National cannot :
i) Apply for Grant of Patent
ii) Registered as Proprietor of Patent
iii) Apply and hold Licence (Sec. 134)
- Convention Application - Made in more than One Country (Sec. 135)
- Special Provisions relating to Convention Application are :
i) Accompanied by Complete Specification
ii) Specify Date and Countries where Application is submitted
iii) No Application prior to Date of receiving Authority
- Patents of Additions Application
- Convention Application cannot be Post-Dated (Sec. 136)
- One Application sufficient in case Convention Application is made in
more than One Country in respect of same Invention and Priority
 Date is Date of First Application (Sec. 137) and disclosure to have
taken place in First Application
- Supplementary Provisions as to Convention Application -
i) To give information of all Applications
ii) Translation if in Foreign language
iii) Date of Application as given by Head in that Country
iv) Complete Specification in International Application can be used
for purposes of this Act
v) Date of Filing to be Date of Filing under Patent Co-operation
Treaty
vi) Amendment to be considered as made before Patent Office
- All other Provisions to apply to Convention Application (Sec. 139)

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MISCELLANEOUS (CHAP. XXIII)