Compulsory Licenses:

 A ‘compulsory license’ is an authorization given by the Govt. to a person, with-out or

against the consent of the title-holder (holder of the Patent), for the exploitation of a
subject matter protected by a patent, when it is abused.

 Sec. 84 of the Patent Act deals with the various facets of application and grant of
compulsory license.

 As the circumstances that leads to the grant of compulsory licenses differ from
situation to situation, so a strict code of standards can’t be provided for granting of
the license. The right to grant compulsory license is vested with the Controller of
Patent, who can fix the terms on which it can be granted provided that the terms
must be reasonable i.e., fair & just.

 Sec. 84(7) specially lays down that one of the important grounds for grant of
compulsory license is that, ‘the reasonable requirements relating to the public with
respect to the invention is not satisfied’.

 Any interested person is eligible to make an application to the controller for the
grant of compulsory license alleging that the reasonable requirements to the
patented invention was not satisfied or that the patented invention is not available
to the public at a reasonable price, after the expiry of 3 years from the date of grant
of the patent.

 Another valid ground for making such an application is that, ‘the invention has not
been worked in the territory of India.

 Here the interested party also includes a person who might already be a holder of a
license under the patent given by the patent holder.

Types of Compulsory License:

 There are 3 types of compulsory licenses.

 If the Controller of patent is satisfied then, upon the application of any interested
party alleging abuse of Patent the Controller can grant it to him/her.

 Compulsory license may be granted in respect of a patent without the use of which
another patent can’t be worked.

 Upon the notification of the Central govt. in the official gazette that compulsory
license should be granted in respect of certain patents. This also called as ‘License of
Rights’.

Licenses of Rights

 When the Controller is satisfied that the reasonable requirements to the patented
invention was not satisfied or that the patented invention is not available to the
public at a reasonable price; he himself upon the recommendation of the Central
Govt. makes an order that the patent be endorsed with the words ‘License of Rights’.
  Sec. 86-88 of the Act deals with the term ‘License of Rights’. Sec. 86 deals with: -
Endorsement of patent with the words "licenses of right“, Sec. 87 deals with: -
Certain patents deemed to be endorsed with the words “licenses of right” (such as
food, medicine, drug, chemical substances and any such invention as is referred to in
section 5).

 Sec. 88 deals with: - Effect of endorsement of patent with the words “licenses of
right”, which states: (1) Where a patent had been endorsed with the words "licenses
of right", any person who is interested in working the patented invention in India
may require the patentee to grant him a license for the purpose on such terms as
may be mutually agreed upon, notwithstanding that he is already the holder of a
license under the patent.

 (2) If the parties are unable to agree on the terms of the license, either of them may
apply in the prescribed manner to the Controller to settle the terms thereof.

 (3) The Controller shall, after giving notice to the parties and hearing them and after
making such enquiry as he may deem fit, decide the terms on which the license shall
be granted by the patentee.

 (4) The Controller may at any time before the terms of the license are mutually
agreed upon or decided by the Controller, on application made to him in this behalf
by any person who has made any such requisition as is referred to in sub-section (1),
permit him to work the patented invention on such terms as the Controller may,
pending agreement between the parties or decision by the Controller, think fit to
impose. .

Revocation for Non-working

 A patent is granted in India for an invention so that it can be worked upon in India on
a commercial basis only and not for research or experimentation purpose. Working
on a commercial scale means the manufacture of the product or article in such a
volume which is sufficient for reasonable trade or commerce. The invention has to
be worked within the territory of India. The working should be in such a manner that
the manufacturer has to produce to his or her full capacity and the reasonable need
of the public has to be met. If such a situation doesn’t exists, then according to sec.
89 of the Act, the patent can be revoked by the Controller of patents, himself or by
receiving an application from the compulsory license holder on the ground of non-
functionality.

Government use of Inventions

 Sec. 99 to 103 of the Indian Patent Act tells about ‘Govt. use of Inventions’.

 Here Govt. means the Central Govt. or any state govt.

 The govt. can use a patented invention for the benefit of general public as a whole
either without paying the royalty or on payment of the royalty and also by the
acquisition of the invention.

Use by the govt. without payment of royalty:

A Govt. can use a patented invention without paying any royalty in the following
circumstances:

(i) A Govt. can import any patented article/process for the purpose of merely its own
use (for example; import patented medicines or drugs like ‘Tami flue’ for distribution
to Govt. dispensaries, hospitals or other medical or similar institutions specified by
the Govt.). But it can’t manufacture or sale them in a commercial basis in India.

(ii) Before the priority date of the claim of the complete specification of an application
and without any communication from the patentee for non-use; if an invention has
been recorded, tested or tried on behalf of the Govt./undertaking of the Govt., it
may be used for the purpose of the govt. without payment of any royalty. But here,
the Govt. has the right to make, use, exercise, vend, import and sale the article,
which is an invention, yet to get a patent from the Govt. of India.

Use by the Govt. on payment of royalty:

Barring those two options mentioned before, in all the other cases if a Govt. want to use any
patented invention in India for its own purpose, it can use that but on payment of royalty
settled between the patentee and the Govt., and if the terms and conditions to use the
invention were not settled between the govt. and the patentee then that will eventually be
determined by the High Court on a reference made to it.

If the use of invention relates to use of medicine, drug or food then the royalty shouldn’t
exceed four per cent of the net ex-factory sale price in bulk of the patented invention.

Acquisition of invention by Govt. for purpose of its own use:

 Central Govt. can acquire an invention for a public purpose, either before or after
the grant of patent to it by giving a notice to the applicant/patentee/any other
person appearing in the register of the patent.

 Compensation amount for the acquisition will be paid to the interested

persons/patentee, which is to be determined either by agreement between the two
parties or by a reference to the High Court.

While determining the compensation amount the Govt. will take in to consideration the
following matters:

(i) expenditure incurred in connection of the invention.

(ii) the terms during which, period and manner in which the invention has been
worked.

(iii) the profits made during such period by the patentee or licensees.

(iv) And other relevant factors.

 If any dispute arises in connection to the use of invention for the purpose of Govt.
use or acquisition of the patent, then either of the parties may approach to the High
Court to resolve it.
  If any dispute arises between the patentee and an employee of the Central Govt. or
Govt. undertaking then, such will be disposed by the Central Govt. after giving an
opportunity of being heard to the patentee and other interested parties in that
matter.

Use of invention by the Central Govt. for Defense purposes:

 If an application for patent is filed before the controller and after verifying it appears
to him or her that the particular invention belongs to the class notified by the
Central Govt. as ‘relevant for defense purposes, then the controller is entitled to give
direction to either prohibit or restrict the publication of such application. And then if
the Govt. after receiving a notice from the Controller formulates the opinion that, it
is indeed an invention relating to defense purposes, the direction of prohibiting or
restricting the publication would continue to be in force and no patent would be
granted to the applicant.

 But, where a complete specification has been accepted in respect of such an invention,
then the use of the invention by the Central Govt. will be subject to payment of royalty as in
the case of other patents. And where the applicant has suffered hardship due to the
continuance of the directions the Central Govt. may pay the applicant a suitable sum
by way of solatium (an additional allowance for any injury feelings).

Revocation of Patent

 As stated in the law of patent that, ‘the validity of the patent is not guaranteed’ even
if it is granted by the Govt. to an applicant claiming his invention to be novel, useful
and bearing an inventive step. Because all those criteria can seldom be finally
determined at the application stage by the patent office. So, as per the provisions of
the Patent Act, the public is provided with an opportunity to challenge the validity of
the grant if the patent doesn’t fulfill any of the conditions stated above for the grant
of the patent.

 This system is called as revocation of the patent. It is described in sec. 63-66 of the
Patent Act, 1970.

 According to the Act, the modes of revocation of a patent are as follows:

 (i) revocation in the public interest by Central Govt.,

 (ii) revocation of patent relating to atomic energy,

 (iii) revocation for non-working,

 (iv) revocation by the High Court on petition for failure to comply with the
requirements of the Central Govt. to use the invention,

 (v) revocation by the High Court on petition by a person interested on various

specified grounds.

But generally revocation arises only as a counter claim to suit for infringement.

 Grounds for revocation:

There are three grounds for revocation of a patent in total, they are:

(a) Grounds relating to rights of the patentee and his conduct;

(b) Grounds relating to the invention and its quality;

(c) Grounds relating to the description of the invention.

The following points are considered to be the grounds relating to the rights of the patentee
and his conduct;

(1) Patentee is not entitled to the patent.

(2) Patent wrongfully obtained as against the person entitled.

(3) Failure to disclose information regarding foreign applications.

(4) Non-compliance with directions for secrecy.

(5) Amendment of specification obtained by fraud.

The following points are considered to be the grounds relating to the invention and its
quality:

(1) Subject of a claim not an invention.

(2) Subject of a claim not a patentable invention.

(3) Invention claimed was secretly used before the priority date.

(4) Invention claimed already the subject of a prior grant.

(5) Invention claimed lacks novelty having regard to prior knowledge or prior use.

(6) Invention is obvious or doesn’t involve inventive step having regard to prior
knowledge or prior use.

(7) Invention not useful.

(8) Invention claimed was anticipated having regard to the knowledge within any local
or indigenous community in India or elsewhere.

Jurisdiction for Revocation:

A petition for revocation by any interested party should be filed before the appellate board
of the patent office which granted the patent.

A counter claim for infringement should be filed before a High Court of competent
jurisdiction; which has no relation to the location of the patent office which granted the
patent, the place of business of the patented item or residence of the patentee.

Surrender of Patents:
Another ground for revocation of patent by the Controller of patents is, if a patentee
voluntarily surrenders his patent. Sec. 63 of the Act lays down the provisions regarding the
surrender of patents.

The patentee has to give a notice to the Controller. On receiving the notice the Controller
advertises the fact that the patent is being surrendered. He also notifies every one whose
name appears in the register of patent.

An interested person can give notice of opposition to the surrender. This opposition is
notified to the applicant by the Controller.

The controller after hearing the parties (patentee and the opponent), if satisfied, may
accept the petition and revoke the patent.

Infringement of Patent Rights

Introduction:

 The Indian Patent Act doesn’t exactly define the term ‘Infringement’. But it gives
protection to the holder of the patent rights, from some misdeeds (by any person
whether individual or legal) which violates the rights of him/her.

 Sec. 104-114 of the Act deals with infringement of patent rights.

 But, in general, we can define infringement as an intrusion upon or interfering with

or contravention of some legal rights; in this case which are granted to the patentee.

Definition: As patents are granted to a patentee in India only for its commercial
exploitation, so, only commercial use of that invention without permission of the patentee
would be considered as an infringement.

So, by considering all the above points, we can define the term “infringement of patent
rights” as; “Any act or performance by a person without the permission of the patentee,
which is legally permitted to be executed exclusively by the patentee amounts to
infringement of the patent rights of the patentee.”

How to determine the infringement:

The rights to be infringed include:

1. Exclusion of others from making use of, selling the patentees invention without
his/her consent.

2. Preventing third parties from making use of his/her invention for gain of profit.

To determine whether an infringement has taken place, it is very important to answer the
following issues:

a. The extent of the monopoly right conferred by the patent on the patentee.

b. If at all any act has been committed, does that amount to making, using, selling of
the product or using of the process (in case of process patent).
The Onus:

 The onus of establishing infringement is on the plaintiff. It follows from the general
law of evidence. But, in some cases where the infringement is alleged for a ‘process
patent’ the onus may shift to the defendant under certain circumstances.

 In case of infringement, the ‘intention’ or ‘absence of intention’ is immaterial.

 If the defendant didn’t know that the patent existed, he will not be liable to pay any
damages or account of profits. But, here the onus is on the defendant to prove that
he was innocent at the date of infringement. If the patent number of the application
was informed (i.e. notified/published in the journal) to the defendant then, s/he
can’t plead ignorance of a patent granted thereon.

Types of infringement:

In general a patent can be infringed in five ways:

1. Literal (direct) infringement: to constitute this, the alleged process or product must
contain each and every limitation of the claim i.e., an exact imitation of the patented
product or process.

2. Infringement under the doctrine of equivalents: the protection of a patent

encompasses not only the elements of a claim but also their equivalents. That
effectively extends claims beyond the limits of the precise wording of claims. That
means, here the difference between the alleged process or products and the
accused process or products are flimsy (can’t be determined). [Warner-Jenkinson
Co., Inc. vs. Hilton Davis Chem. Co.; U.S.-1997]

3. Inducement of infringement: this occurs when someone directly or actively induces

(influences) infringement of a patent.

4. Contributory infringement: this type of infringement occurs when someone offers to

sell or sells a component of a patented product or process, constituting a material
part of the invention, knowing the same to be especially made or adapted for use in
an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial infringement. [Hewlett-Packard vs. Bausch & Lamb, Fed. Cir.
Court U.S.A., 1990. In this case the court observed that what is required is the proof
of the infringer’s knowledge and not intention.]

5. Colorable imitation: here the plaintiff is required to prove that his process or
product has been imitated or counterfeited. It was held in Lalubhai Chakubhai
Jariwala vs. Chimanlal Chunnilal & Co. (AIR 1936, Bombay HC), that the particulars of
the alleged breach have to be produced as a proof towards the act of imitation.

Acts not amounting to infringement:

There are certain acts which even though constitute ‘infringement’ but are not considered
as infringements. These provisions are incorporated in the Patents (Amendment) Act, 2002
& 2005. They are:
 1. If any act of making, constructing, using, selling or importing of patented invention is
for the purpose of any issue related to the development and submission of
information required under any law. This legal requirement can be under any law in
force in India or any other country.

2. If the patented product is imported by any person from any person who is
authorized by the patentee to produce and sell or distribute the product. In certain
situation the person who uses sells or makes any patented invention can take the
help of the court to declare that the acts done by him or her don’t constitute an
infringement.

Parties to infringement:

An infringer is an individual who without authorization from the patentee makes, uses,
offers for sale or sells any patented invention within the territory or imports it into the
territory in which it is patented. Patent infringers can be of three different categories as
discussed below:

1. Direct infringer: this type of infringer is one person who himself makes, uses, sells a
patented item without permission to do so.

2. Indirect infringer: this type of infringer is one who actively and knowingly aided and
encouraged or induced someone else to commit a direct infringement. There should
be a positive act of inducement by the person who is inducing the other to carry out
a direct infringement.

3. Contributory infringer: this type of infringer sells a component and the seller knows
that the component is made or adapted for use in a patented item or process as is
not a suitable item for substantial non-infringing use.

Action for infringement:

An action for infringement of a patent must be instituted by way of a suit in any district
court or a High court having jurisdiction to try the suit. Where the defendant counter-claims
for revocation of patent, the suit along with the counter-claim will be transferred to the
High Court for decision.

The procedure for conducting a suit for infringement is governed by the relevant provisions
of the CPC of India, 1908.

A suit for infringement can be constituted only after the patent is granted; but, damages
sustained in respect of infringement committed during the period between the date of
publishing of acceptance of the complete specification and the date of grant can be claimed
in the same suit.

The period of limitation for bringing the suit is three years from the date of infringement. No
notice of infringement to the defendant is necessary before the filing of the suit.

Remedies available to the patentee in case of infringement: Sec. 106 of the Indian Patents
Act, states about the remedies available to the patent holder in case of an infringement.
They are as follows:
  Injunction (Permanent/interlocutory),

 Damages,

 Account of profits,

 Order for delivery or destruction,

 Certificate of validity.

Injunction: it is a civil court order, which imposes legal restrictions on others so as to

prevent the committing of any further act, which may amount to infringement.

There are three types of injunction. They are:

1. Temporary/interlocutory Injunction: this type of injunction is provisional in nature

which is in operation until the further order of the court.

2. Perpetual/Permanent Injunction: this type of injunction is granted as the final

judgment of the court if the plaintiff is able to establish his/her right beyond doubt.

3. Prevention injunction: it can be temporary or permanent.

[In the case, National Research & Development Corporation of India vs. Delhi Cloth &
General Mills Co. Ltd, 1980, Delhi HC; the principles of granting interlocutory injunction
were laid down. In the case, Dyson Appliances Ltd. vs. Hoover Ltd., AIR 2001, and
Permanent injunction was granted to plaintiff Dyson Appliances Ltd.]

Damages: It grants relief against patent infringement. It covers any pecuniary injury suffered
by the plaintiff due to the act of the infringer. It is compensation for the actual or exact
economic loss suffered by the patentee or the holder of the patent (plaintiff) and can’t be
called as a punishment to the infringer. The benchmark for fixing the amount of damage is
the profit gained by the infringer; that the patentee could have earned. The principle behind
the objective of granting damages is to put the infringer in the shoe of the patentee
(plaintiff) at the least in terms of money. [Rite-Hite Corp. vs. Kelly Co. Inc., fed. Cir. Court
U.S., 1995.] The highest damages awarded in a infringement of patent case is $5,867,655 +
interest; in UK in the Gerber vs. Lectra, case (1997).

Account of Profit: If account of profit is rewarded to a patentee, that means a patentee is

entitled to get that amount as a profit which includes a combination of :

(a) Which are his/her lost profit.

(b) Which the infringer has gained by reason of the infringement.

i.e. damages are recovered and profits are claimed.

In Celanese International Corp. vs. BP Chemicals Ltd, London HC, UK, 1999; certain principles
to be followed in case of account of profit were laid down. In which the judge has stated
that, defendant is to be treated as having conducted business and made profits on behalf of
plaintiff, Plaintiff must take defendant as he found him, it is irrelevant that defendant might
have made profits in non-infringing way instead or might have made greater profits by
taking alternative course.

Order for delivery or destruction:

This provision was incorporated by the way of the Patents (amendment) Act, 2002. By virtue
of this provision, the court has the power to order to seize, forfeit or destruct that infringing
goods without payment of any compensation, which are found to be infringing and those
materials which are in the predominant use of creation of infringing goods.

Certificate of Validity: In relation to a suit for the revocation of a patent, of which the
validity of certain claim is contested and is subsequently found by the court to be valid, the
court grants a certificate of validity, upholding that the claim was valid. These kinds of
proceedings are normally heard by the appellate board (of a patent office) or High Court.

Here the suit for revocation is dismissed on the grounds that:

i. The invention, claimed in any claim of the complete specification, was claimed in a
valid claim of earlier priority date contained in the complete specification of another
patent granted in India.

ii. The patent was granted on the application of a person not entitled under the
provisions of this act to apply thereof.

After this, the patentee in a subsequent suit for infringement for the same claim, relying on
the validity certificate already granted is entitled to (i) obtain a final order or judgment in his
or her favor. (ii) Obtain an order for payment of his or her full costs, charges and expenses
incurred relating to such claim.

Available defense for defendant in an infringement suit:

Following are some defenses that a defendant may plead in a suit for infringement of a
patent: (sec. 107)

a) Plaintiff not entitled to sue for infringement.

b) Denial of infringement or of any threat or intention to infringe.

c) Leave or license express or implied to use the invention.

d) Suits are barred by principles of Estoppel (due to defect of the plaintiff) or res
judicata (already decided by another court of same stature).

e) Claims alleged to be infringed are invalid on certain grounds.

f) The acts complained of are in accordance with the conditions specified in sec.47
(revocation) of the Act.

g) (g) Existence of a restrictive contract declared unlawful.

h) (h) Acts complained of, comes within the scope of innocent infringement, or done
after failure to pay renewal fee, or done before the date of amendment of the
specification (available only against a claim of damage or account of profit)
 i) (i) Alleged infringement is not noble or is obvious. (Gillette defense case )

Threat of Infringement Proceedings:

 When a party, whether a holder of Patent/Patentee or not; threatens his/her rival

manufacture, dealer or even a purchaser of good with proceeding for infringement
of a patent without filing a suit for infringement it is called as ‘threat of infringement
proceedings’.

 Sometimes a patentee/patent holder who suspects that the good in question are
infringement of his/her patent rights but is not very much sure about that, s/he may
do it with a view to stop the suspected infringement avoiding otherwise an
expensive infringement suit.

 When s/he is not quite sure of wining the suit of infringement or defending the
validity of the patent s/he owns if a counter claim is filed in reply against him/her
then, s/he can go for this type of an activity.

 Here the threatened person has no cause for grievance, even if the acts that s/he has
constituted amounts to infringement of the patent right and the threat is justified.
Because, he has the choice to stop the infringing act at any point of time as the
course is always open for him.

 But, when the patent is not a valid patent, then the person threatened obviously
becomes an aggrieved person and the law (sec. 106 of the Indian Patents Act)
provides the remedies against such unjustified threats, which are listed below:

1. A declaration to the effect that the threats are unjustifiable,

2. An injunction against the continuance of threats (interim as prima facie and

permanent if the plaintiff succeeds at the trail), and

3. Damages, sustained if any.

 Here the plaintiff (threatened party) to take action against a threat only has to make
out a prima facie case that the alleged threats have in fact been made.

 Then the onus of proving that, the acts in respect of which proceedings were
threatened constitute an infringement of patent is on the defendant. If he succeeds
in establishing this then, the plaintiff may try to prove that the patent is invalid.

 In this type of a suit i.e. against a threat of infringement; the reliefs are available to
the plaintiff in the following circumstances:

i. Where in defense to the plaintiffs claim that the threats are indeed being made, the
defendant fails to establish that the acts constitute infringement of a patent and,

ii. Where the defendant proves that the acts constitutes infringement, but the plaintiff
establishes that the patent is invalid.

Ex-parte orders: Here ex parte orders may be issued by the Court but, it should be made for
a limited period of time and not as a final decision. In some exceptional cases if the ex parte
order lapses, the court may dismiss the case citing the reason that the plaintiff has not
carried out his duty of pushing the proceedings to hearing properly (even in case of absence
of the defendant). [Hong Kong Toy Centre v. Tomy V.K. (1994) FSR Patent Court: delay of 11
months so, interim injunction refused]

Calculation of Damages in threat of infringement: Here the loss of contract with the
plaintiff due to the threat of defendant, loss of profits due to the breaking of the contracts
of the plaintiff were taken in to account while accessing the damage amount. Where
negotiations were broken off due to the threats, the loss of profit which would have
resulted from completion of negotiation is taken in to consideration in accessing the
damage.

Offences & Penalties:

 According to Chapter XX of the Indian Patents Act, the under stated acts and
omissions are treated as ‘offences’; for which criminal proceedings are taken
forward and those acts are punishable with imprisonment for a maximum period of
2 years or fine or with both. (sec. 118 – 124)

1. Contravention of secrecy directions given by the Controller prohibiting the

publication or communication of information relating to inventions relevant for
defense purposes. (sec. 118)

2. Making of an application for a patent in a foreign country by an Indian resident

without the permission of the Controller; in respect of an invention for which a
secrecy direction has been issued by the Controller. (sec. 118)

3. If an Indian resident makes an application for patent in a foreign country before

making the same in India which contravenes sec. 39 of the Indian Patents Act. (sec.
118)

4. Production of a false copy of an entry in the register as evidence or any other

fabrication of entries in the register. (sec. 119)

5. If any article sold by a person is falsely represented, as a patented product or a

subject of an existing patent or is subject to an application for patent in India. (sec.
120)

6. If a person uses the word or phrase ‘Patent office’ in such a wrongful way that, it
generates a belief that the place of business is connected with the patent office in
any way. (sec. 121)

7. Failure or refusal to supply information to the Controller regarding the use of

patented invention in India. (sec. 122)

8. If any person who is not a registered Patent agent u/s 129 of Patents Act; describes
himself/herself as so. (sec. 123)

9. If an officer of a corporation, a farm or an association of individuals; has made some

act or omission which is punishable under Indian Patents Act as a criminal liability
and makes the Directors as well as the Managerial personnel responsible for that
 criminal offence as per the rule of ‘strict liability’ and ‘vicarious liability’ of ‘law of
tort’. It is described as ‘Offences by Companies’. (sec. 124)

Offences Penalty

Contravention of secrecy provisions. Imprisonment max. Up to 2 yrs, Or fine

(s. 118) or both.

Falsification of entries in register, etc. Imprisonment max. Up to 2 yrs, Or fine

(s. 119) or both.

Unauthorized claim of patent right. Fine max. Up to 1 lakh.

(s. 120)

Wrongful use of words ‘Patent Office’. Imprisonment max. Up to 6 months,

(s. 121) Or fine or both.

Failure or refusal to supply information. Fine max. Up to 10 lakh.

(s. 122)

Practice by non-registered patent agents. (s. For first offence, fine max. Up to Rs. 1
123) lakh. For second offence and further
fine max. up to 5 lakh.

Offences by Companies. (s. 124) As the Court/ Appellate Board may

deem fit.
Patent agents:

Section 125 – 132 of the Indian Patents Act describes about the legal representative of a
patentee i.e., ‘Patent agent’.

To be a patent agent,

i. A person must be a citizen of India.

ii. S/he must have completed the age of 21 yrs.

iii. S/he must possess a degree in science or engineering or technology from any
University recognized by the relevant authorities.

iv. S/he must pass the written examination prescribed and conducted by Govt. of India.

v. S/he must pay the necessary fees prescribed for a patent agent in India.

Functions of Patent agents:

Though the applicant for a patent is free to handle himself before the ‘Controller of the
Patents’ but, to assist him/her for the work relating to drafting of specifications, making an
application for a patent, subsequent correspondence with the patent office on the
objections raised, representing the applicant’s case at the hearings, filing opposition
proceedings or defending an application against an opposition, the Indian Patents Act has a
provision of appointing Patent Agents on behalf of the applicant; as all the above stated
functions are of a highly technical nature.
Every registered Patent agent is entitled to practice before the Controller. For this purpose
a register of Patent agents is maintained by the Controller of Patents.

Convention Countries & Reciprocity arrangements:

Sec. 133 – 139 of Indian Patents Act, states about the reciprocal arrangements to be made
by the Govt. of India for giving equal protection of Patent rights to individuals/corporations
of foreign countries; that are signatories to various international, regional conventions and
bilateral or multilateral treaties of which India is also a signatory.

s. 133, defines who are convention countries.

s. 134, states about the notification of ‘protection shouldn’t be provided for which
convention countries’ as they are not providing it in reciprocal manner.

s. 135 – 139 states about what is convention application (International Application) and
various provisions and facilities that are to be provided for convention applications.

Powers of the Controller of Patents:

Powers of the Controller of Patents can be divided in to two types, (i) General Power (sec.
77 – 81 & R 122 [2])

(ii) Specific Power (sec. 15, 17-20, 51 & 93)

(i) General Power:

a) The powers of a civil court under CPC, 1908; i.e., to give summons, enforce
attendance of a person and examine him/her on oath, examine witness, (s. 77)
receive evidence on affidavits (s. 79) etc. and review his/her own decision on
application made within the prescribed time and manner (s. 77[1]).

b) Power to correct clerical errors (s. 78) in any patent application, specification,
document or matter in the register either suo moto or on request by any person
interested.

c) Discretionary power to hear any party or give opportunity to be heard. (s. 80)

d) The Controller has the exclusive power to extend the time limit for doing any act
without giving any notice to the party opposing the extension and there is no
procedure for appeal against the Controller for this act also. (s. 81)

e) As per Rule 122 (2) of the Patent (A) Rules 2006, the Controller is entitled to award
cost depending upon the circumstances of each case.

(ii) Specific Power:

a) Power to refuse or require amended application (s.15).

b) Power to give directions to co-owners as to sale or lease of the patent or how to

exercise of any right in absence of any other agreement. If such directions are not
executed by any of the co-owners then to empower any other person on behalf of
the faulty party to execute that instrument. (s. 51)
 c) Power to make orders w.r.t. the date of application by postponing the date for not
more than 6 months if requested by the applicant. (s. 17)

d) Power in case of anticipation (s. 18): If the Controller is satisfied that the Patent
application is anticipated then s/he can refuse to receive the application.

e) Power in case of potential infringement (s. 19): In a case relating to opposition of a

patent application where a direct reference has been made to another patent
without whose infringement the current application for patent under question can’t
function, and the applicant shows to the satisfaction of the Controller that the other
patent is revoked or ceases to be in force or the other patent is amended by the
deletion of the relevant claim or in the proceedings of the Court of Controller, the
relevant claim of that other patent was declared invalid or is not infringed by any
working of the applicants invention, then the Controller has the power to delete the
reference to that other patent if an application is made.

f) Power to make order regarding addition/substitution of applicants (s. 20): If the

Controller is satisfied before the grant of the patent that due to any assignment or
agreement in writing made by the applicant or one of the applicants for the patent
or by operation of law, the claimant would if the patent were then granted, be
entitled to the interest of the applicant therein or has an undivided share of the
patent then s/he has the power to direct that the application shall proceed in the
name/s of the claimant/s as the case may require.

g) Power to adjourn applications for compulsory licenses (s. 93): If an application for
granting a compulsory license for a patented invention is made and the Controller is
not convinced that the sealing of the patent is required due to not sufficient
commercial use of the invention, s/he has the power to adjourn the case of hearing
the application for granting the compulsory license but, not beyond a period of 12
months.

REGISTER OF PATENTS:

 Sec. 67 - 72 of the Indian Patents Act tells about the ‘Register of Patents’.

 According to it a register of patents is to be maintained at the patent office in which,

the name, address etc. of the patentee, the date of the patent filing, the title of the
invention, the date of grant of the same, official number of the patent, notification
of the assignments, transmissions, licenses, amendments, extensions, revocations of
patents, particulars of such other matters affecting the validity or proprietorship of
patents are entered.

 It is open for any public inspection.

 The Controller of patents is also authorized by law to keep the register in floppies,
diskettes or any other electronic form along with its physical form.

 A certificate signed by the Controller as to any entry made in it, acts as a prima facie
evidence of any matter entered therein in case of any conflict before the court of
law.
APPEALS:

 Appeals relating to the decisions of the matters relating to the Patents Act by the
Central Govt. are appealable. The Appellate Board has the jurisdiction to try these
appeals. Sec. 116 & 117 deal with the provisions relating to the appeal. An appeal
can be filed at the Appellate Board against the following orders, directions or
decisions of the Central Govt.

i. Co-owners by the Controller

ii. Patents of addition

iii. Orders relating to applications for restoration of lapsed patents

iv. Procedure for disposal of applications for restoration of lapsed patents

v. Surrender of patents

vi. Revocation of patents in public interest

vii. Registration of assignments, transmissions etc.

viii. Power of controller to correct clerical errors

ix. Compulsory licenses

x. Matters to be taken into account in granting compulsory licenses

xi. Effect of endorsement of patent with the words ‘license of rights’

xii. Power of controller to adjourn applications for compulsory licenses etc. (In some
cases)

xiii. General purposes for granting compulsory licenses

xiv. Procedure for dealing with applications relating to compulsory licenses and
adjournment of application by controller.