India Patent Act 1970 as amended till 2015

India Patent Act 1970 as amended till 2015

CHAPTER I

PRELIMINARY
1.    Short title, extent and commencement.— (1)   This Act may be called the Patents Act, 1970. (2)      It extends to the whole of India.

(3)      It shall come into force on such date as the Central Government   may,  by notification in

the Official Gazette, appoint:

Provided that different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.
2.    Definitions and interpretation.—

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

(a) “Appellate Board” means the Appellate Board referred to in section 11 6;

(ab)  “assignee” includes  an assignee of the assigne e 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;

(aba) “Budapest Treaty” means the Budapest Treaty on the Internati onal Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure done at Budapest on 28th day of April, 1977, as amended and modified from time to time;

(ac)  “capable  of  industrial  application”,  in  relation  to  an  invention,  means  that the invention is capable of being made or used in an industry;

(b)   “Controller”  means  the  Controller  General  of  Patents,  Designs  and Trade Marks referred to in section 73;

(c)   “convention  application”  means  an  application  for  a  patent  made  by  virtue  of section 135;

(d) “convention country” means a country or a country which is  member of a group of countries or a union of countries or an Intergovernmental organization referred to as a convention country in section 133;

(e)      “district court” has the meaning assigned to that expression by     the Code of Civil Procedure, 1908 (5 of 1908);
(f)    “exclusive licence” means a licence from a patentee which confers on the licensee, 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.

(g)   Omitted by the Patents (Amendment) Act, 2005

(h) “Government undertaking” means any industrial undertaking carried on—

(i) by a department of the Government, or

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

(iii) by a Government company as defined in section 617 of the Companies

Act, 1956 (1 of 1956), or

(iv) by an  institution wholly  or  substantially  financed  by  the Government; (i) “High Court”, in relation to a State or Union territory, means the High Court having

territorial jurisdiction in that State or Union territory, as the case may be;

(ia) “international application” means an application for patent made in accordance with the Patent Cooperation Treaty;

(j)”invention” means a new product or process involving an inventive step and capable of industrial application;

(ja)  “inventive  step”  means  a  feature  of  an  invention  that  involves  technical  advance  as

compared to the existing  knowledge or having  economic significance or both and that makes the invention not obvious to a person skilled in the art;

(k) “legal representative” means a person who in law    represents   the estate of a deceased person;

(l)  “new  invention”  means  any  invention  or technology which has  not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art;

(la)  “Opposition  Board”  means  an  Opposition  Board  constituted  under  sub-section  (3)  of section 25;

(m) “patent” means a patent for any invention granted under this Act;

(n) “patent agent” means a person for the time being registered under    this Act as a patent agent;

(o)  “patented  article”  and  “patented  process”  means  respectively  an  article  or  process  in respect of which a patent is in force;

(oa) “Patent Cooperation Treaty” means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time;

(p) “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent;

(q) “patent of addition” means a patent granted in accordance with section   54; (r) “patent office” means the patent office referred to in section 74;

(s) “person” includes the Government;
(t) “person interested” includes  a  person engaged in, or in promoting, research in the same field as that to which the invention relates;

(ta) “pharmaceutical substance” means any new entity involvi ng one or more inventive steps; (u) “prescribed” means,—

(A) in relation to proceedings before a High Court, prescribed by rules made by the

High Court;

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

(C)  in other cases, prescribed by rules made under this Act;

(v) “prescribed manner” includes the payment of the prescribed fee; (w)  “priority date” has the meaning assigned to it by section 11;

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

(y) “true and first inventor” does not include either the first importer of an invention into India,or a person to whom an invention is first communicated from outside India. (2)  In this Act, unless the context otherwise requires, any reference —

(a)   to  the  Controller  shall  be  construed  as  including  a  reference  to  any  officer

discharging the functions of the Controller in pursuance of section 73;

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

CHAPTER II

INVENTIONS  NOT PATENTABLE

3.   What  are not  inventions.—The following  are not inventions within the meaning of this

Act,—

(a) an invention which is frivolous or which claims anything obviously        contrary to well established natural laws;

(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property  or  new  use  for a  known substance or of the mere use of a  known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,  pure  form,  particle  size,  isomers, mixtures  of isomers, complexes,  combinations  and  other derivatives  of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

(e)  a  substance  obtained  by  a  mere  admixture resulting  only in the aggregation of the properties of the components thereof or a process for produci ng such substance;

(f)   the   mere   arrangement  or  re-arrangement  or  duplication  of  known  devices  each functioning independently of one another in a known way;

(g) Omitted by the Patents (Amendment) Act, 2002 (h)  a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic    diagnostic,      therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

(j) plants and animals in whole or any part thereof other than micro organisms but including seeds,   varieties   and  species   and  essentially  biological   processes   for  production  or propagation of plants and animals;

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

(l)   a  literary, dramatic, musical  or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game; (n)   a presentation of information;

(o)   topography of integrated circuits;

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

4. Inventions relating to atomic energy not patentable.—No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).

5. Inventions where only methods or processes of manufacture patentable: [Omitted by the

Patents (Amendment) Act, 2005]

CHAPTER III
APPLICATIONS FOR PATENTS
6.   Persons entitled to apply for patents—(1) Subject to the provisions contained in section

134,  an  application  for a  patent for an invention may be  made by any of the following persons, that is to say,—

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

(b)   by any person being  the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

(c)   by  the legal  representative of any deceased person who immediately before his death 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 or jointly with any other person.

7.  Form of application.—(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.

(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be  filed  designating  India  shall  be  deemed  to  be  an application under this  Act, if a corresponding application has also been filed before the Controller in India.

(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.

(2) Where the application is made by virtue of an assignment of the right to apply for 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 section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall

contain a declaration that the applicant believes the person so named to be the true and first inventor.

(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.

8. Information and undertaking regarding foreign applications. —(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in  respect of the same or substantially the same invention, or where to his knowledge such an appl ication is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file  along  with  his  application  or  subsequently  within  the  prescribed  period  as  the Controller may allow—

(a) a statement setting out detailed particulars of such application; and

(b)   an undertaking  that, up to the date of grant of patent in India, he would keep  the  Controller  informed  in  writing,  from time  to  time,  of detaile d particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2)  At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country  outside  India,  and in that event the applicant shall  furnish to the Controller information available to him within such period as may be prescribed.

9. Provisional and complete specifications.—(1) Where an application for a patent (not being a convention   application   or   an  application  filed  under  the   Patent  Cooperation  Treaty designating  India) is  accompanied by a provisional specification, a complete specification shall  be filed within twelve months  from the date of filing  of the application, and if t he complete specification is not so filed, the application s hall be deemed to be abandoned.

(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a

modification of another and the Controller is of opinion that the whole of such inventions

are such as to constitute a single invention and may properly be included in one patent, he may  allow  one  complete  specification  to  be  filed  in  respec t  of  all  such  provisional specifications.

Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earl iest provisional specification.
(3)      Where an application for a patent (not being a convention appli cation or an application filed  under  the  Patent  Cooperation  Treaty  designating  India)  is  accompanied  by  a specification  purporting  to  be  a  complete  specification,  the  Controller  may,  if  the applicant be requests  at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed wi th the application accordingly.

(4)     Where a complete specification has been filed in pursuance of an a pplication for a patent accompanied by a  provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

10. Contents of specifications.—(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.

(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall,  if  the  Controller  so  requires,  be supplied for the purposes  of  any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.

(3)  If, in any particular case, the Controller considers that an application should be further supplemented by a  model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.

(4) Every complete specification shall —

(a)   fully and particularly describe the invention and its operation or use and the method

by which it is to be performed;
(b)   disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

(c)   end with a claim or claims defining the scope of the invention for which protection is claimed;

(d)   be accompanied by an abstract to provide technical information on the invention: Provided that—

(i) the Controller    may   amend    the    abs tract    for   providing  better information to

third parties; and

(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a)     and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely:—

(A) the deposit of the material shall be made not later than the date of

filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;

(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including  the  name,  address  of  the  depository  institution and the date and number of the deposit of the material at the institution;

(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;

(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.

(4A) In case of an international application designating’ India, the title,     description, drawings, abstract and claims filed with the application shall be taken as the complete specificatio n for the purposes of this Act.

(5)   The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions  linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

(6)  A  declaration  as  to the  inventor ship of the invention shall, in such cases    as  may be

prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.

(7) Subject to the foregoing  provisions  of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions  in  respect  of  which  the  applicant  would  be  entitled  under  the provisions  of section 6 to make a separate application for a patent.

11. Priority dates of claims of a complete specification.—(1) There shall be a priority date for each claim of a complete specification.

(2) Where a complete specification is filed in pursuance of a single application accompanied by—

(a)   a provisional specification; or

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

and the claim is fairly based on the matter disc losed in the specification referred to in clause (a) or clause (b), the priority date of that claim shall be the date of the filing of the relevant specification.

(3)  Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned in sub-section (2) and the claim is fairly based on the matter disclosed—

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

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

(3A) Where a complete specification based on a previously filed application in India has been filed within twelve months from the date of that application and the claim is fairly based on the matter disclosed in the previously filed application, the priority date of that claim shall be the date of the previously filed application in which the matter was first disclosed.

(4) Where the complete specification has been 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 any of the earlier specifications, provisional or complete, as the case may be,

the priority date of that claim shall be the date of the filing of that specification in which the

matter was first disclosed.

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

(6) In any case to which sub-sections (2), (3), (3A), (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 complete specification.

(7)The reference to the date of the filing of the application or of the complete s pecification in this section shall, in cases where there has been a post-dating under section 9 or section 17 or, as the case may be, an ante-dating under section 16, be a reference to the date as so post-dated or ante-dated.

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

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

(b) the grant of another patent which claims the invention, so far as

claimed in the first mentioned claim, in a claim of the same or a later priority date.

CHAPTER IV

PUBLICATION AND EXAMINATION OF APPLICATIONS

11A. Publication of applications.—(1) Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.

(2) The applicant may, in the prescribed manner, request the Controller to

publish his application at any time before the expiry of the period prescribed under sub- section (1) and s ubject to the provisions of sub-section (3), the Controller shall publish such application as soon as possible.

(3)   Every   application   for   a   patent   shall,   on   the   expiry   of   the   period   specified under sub-section (1), be published, except in cases where the application—

(a)   in which secrecy direction is – imposed under section 35; or

(b)   has been abandoned under sub-section (1) of section 9; or

(c)   has  been withdrawn three months prior to the period s pecified under sub-section

(1).

(4) In case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period prescribed under sub-section (1) or when the secrecy direction has ceased to operate, whichever is later.

(5) The publication, of every application under this section shall include the particulars of the date of application, number of application, name and address of the applicant identifying the application and an abstract.

(6) Upon publication of an application for a patent under this section—

(a)   the       depository       institution       shall       make       the       biological       material mentioned in the specification available to the public;

(b)   the   patent   office   may,   on   payment   of   such   fee   as   may   be   prescribed, make     the     specification     and     drawings,     if     any,     of     such     application available to the public.

(7) On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and

rights as if a patent for the invention had been granted on the date of publication of the

application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:

Provided  further  that  the  rights  of a  patentee in respect of applications  made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:

Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty  from  such  enterprises   which  have   made   significant  investment  and  were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be insti tuted against such enterprises.

11B. Request for examination.—(1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.

(2) Omitted by the Patents (Amendment) Act, 2005

(3) In case of an application in respect of a claim for a pate nt filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person.

(4) In case the applicant or any other interested person does not make a request for examination of the application for a  patent within the period as specified under sub – section  (1)  or  sub-section  (3),  the  application  shall  be  treated  as  withdrawn by the applicant:

Provided that—

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revoc ation of the secrecy direction.

12. Examination of application.—(1) When a request for examination has been made in respect of an application for a  patent in the prescribed manner under sub-section (1) or sub-

section (3) of section 11B, the application and specification and other documents related thereto shall  be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely:—

(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;

(b) whether there is any lawful ground of objection to the grant of    the patent under this

Act in pursuance of the application;

(c) the result of investigations made under section 13; and

(d) any other matter which may be prescribed.

(2) The examiner to whom the application and the specification and other documents relating thereto  are  referred  under  sub-section  (1)  shall  ordinarily  make  the  report  to  the Controller within s uch period as may be prescribed.

13. Search for anticipation by previous publication and by prior claim. — (1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification—

(a)   has  been  anticipated  by  publication  before  the  date  of fil ing  of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912;

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

(2) The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.

(3) Where a  complete specification is  amended under the provisions  of this Act before  the grant  of  patent,  the  amended  specification shall  be examined and investigated in li ke manner as the original specification.

(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred

by the Central Government or any officer thereof by reason of, or in connection with, any

such examination or investigation or any report or other proceedings consequent thereon.

14. Consideration of the report of examiner by Controller.—Where, in respect of an application for  a  patent,  the  report  of  the  examiner  received  by  the  Controller  is  adverse  to  the applicant  or  requires   any  amendment  of  the  application,  the  specification  or  other documents  to  ensure  compliance  with  the  provisions  of  this  Act  or  of  the rules  made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant wi thin the prescribed period, give him an opportunity of being heard.

15. Power of Controller to refuse or require amended applications, etc., in certain case. — Where  the Controller is  satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules  made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the appl ication on failure to do so.

16. Power of Controller to make orders respecting division of application.—(1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one

invention, file a further application in respect of an invention disclosed in the provisional or

complete specification 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 complete specification shall not include any matter not in substance disclosed  in  the   complete   specification  filed  in  pursuance   of   the  first  mentioned application.

(3)     The  Controller  may  require  such  amendment  of  the  complete  specification  filed  in

pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.

Explanation.—For  the  purposes  of  this  Act,  the  further application and the complete

specification accompanying it shall be deemed to have been filed on the date on which the  first  mentioned  application  had  been  filed,  and  the further application shall  be

proceeded  with as  a  substantive application and be examined when the request for examination is filed within the prescribed period.

17. Power of Controller to make orders respecting dating of application. — (1) Subject to the provisions of section 9, at any time after the filing of an application and before the grant of the patent under this Act, the Controller may, at the request of the -applicant made in the prescribed manner, direct that the application shall be post-dated to such date as may be specified in the request, and proceed with the application accordingly:

Provided that no application shall be post-dated under this sub-section to a date later

than  six  months  from  the  date  on  which  it  was  actually  made  or  would,  but  for  the provisions of this sub-section, be deemed to have been made.

(2)  Where  an  application  or  specification  (including  drawings)  or  any  other  document  is required  to  be  amended  under  section  15,  the  application  or  specification  or  other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant on the date on which it is re -filed after complying with the requirement.

18. Powers of Controller in cases of anticipation.—(1) Where it appears to the Controller that the  invention  so  far  as  claimed  in  any  claim of  the  complete  specification  has  been anticipated in the manner referred to in clause (a) of sub section (1) or sub-section (2) of section 13, he may refuse the application unless the applicant—

(a)   shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or

(b)   amends his complete specification to the satisfaction of the Controller.

(2)   If   it   appears    to   the   Controller   that   the   invention   is   claimed   in   a   claim   of any other complete specification referred to in c lause (b) of sub-section (1) of section 13, he may, subject to the provisions  herei nafter contained, direct that a reference to that other  specification  shall  be  inserted  by  way  of  notice to the  public in the applicant’s complete specification unless within such time as may be prescribed,—

(a)   the applicant shows to the satisfaction of the Controller that the priority date of his claim is not later than the priority date of the claim of the said other specification; or

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

(3)  If  it  appears  to  the  Controller,  as  a  result  of  an  investigation  under  section  13  or otherwise,—

(a)   that  the  invention  so  far  as  claimed  in  any  claim of  the  applicant’s  complete

specification has  been claimed in any other complete specification referred to in clause (a) of sub-section (1) of section 13; and

(b)   that such other complete specification was published on or after the priority date of the applicant’s claim,

then, unless it is shown to the satisfaction of the Controller that the priority date of the applicant’s claim is not later than the priority date of the claim of that specification, the provisions of sub-section (2) shall apply thereto in the same manner as they apply to a specification published on or after the date of filing of the applicant’s complete specification.

(4) Omitted by the Patents (Amendment) Act, 2005

19.  Powers of Controller in case of potential infringement.—(1) If, in consequence of the investigations  required under this  Act, it appears  to the  Controller that an invention in respect of which an application for a patent has been made cannot be performed without substantial  risk  of  infringement  of  a  claim of  any  other  patent,  he  may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public, unless within such time as may be prescribed—

(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or

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

(2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under sub-section (1)—

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

(b)   the specification of that other patent is amended by the dele tion of the relevant claim; or

(c)    it is  found, in proceedings  before the court or the Controller, that the     relevant claim of  that  other  patent  is  invalid  or  is  not  infringed  by any working  of the applicant’s invention,

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

20. Powers of Controller to make orders regarding substitution of applicants, etc.—(1) If the

Controller is  satisfied, on a  claim made in the prescribed manner at any time before a patent has been granted, that by virtue of 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 thereto or to the interest of the  applicant  therein,  or  to  an  undivided  share  of  the  patent  or  of that 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 the names 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 be given by virtue of any assignment or agreement

made by one of two or more joint applicants for a patent except with the cons ent of the other joint applicant or applicants.

(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless —

(a)   the invention is identified therein by reference to the number of the application for the patent; or

(b)   there is  produced to the Controller an acknowledgement by the person by whom the assignment or agreement was made that the assignment or agreement relates to the invention in respect of which that application is ma de; or

(c)   the rights of the claimant in respect of the invention have been finally established by the decision of a court; or

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

(4) Where one of two or more joint applicants 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 or survivors, and with the consent of the leg al representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

(5) If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.

21. Time for putting application in order for grant .—(1) An application for a patent shall be deemed to have been abandoned unless, Within such period as may be prescribeapplicant has  complied with all  the requirements  imposed on him by or under this Act, whether  in  connection  with  the  complete  specification  or  otherwise  in  relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.

Explanation.—Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re -filed it or the applicant  proves  to  the  satisfaction  of  the  Controller  that  for the reasons  beyond his control such document could not be re-filed.

(2) If at the expiration of the period as prescribed under sub section (1),—

(a)   an appeal to the High Court is pending in respect of the application for the patent for the main invention; or

(b)   in the case of an application for a patent of addition, an appeal to the High Court is pending  in  respect  of  either  that  application  or  the  application  for  the  main invention,  the  time  within  which  the  requirements  of  the  Controller  shall  be complied with shall, on an application made by the applicant before the expi ration of the period as prescribed under sub-section (1), be extended until such date as the High Court may determine.

(3)   If    the    time    within    which    the    appeal    mentioned   in   sub-section   (2)   may   be

instituted has not expired, the Controller may extend the period as prescribed under sub- section (1), to such further period as he may determine:

Provided that if an appeal has been filed during the said further period, and the High Court  has  granted  any  extension  of  time  for  complying  with  the  requirements  of  the Controller, then the requirements  may be complied with within the time granted by the Court.

22. Acceptance of complete specification.- [Omitted by the Patents (Amendment) Act, 2005]

23. Advertisement of acceptance of complete specification.- [Omitted by the Patents (Amendment) Act, 2005]

24. Effect of acceptance of complete specification.- [Omitted by the Patents (Amendment) Act, 2005]

CHAPTER IV A (Omitted)

EXCLUSIVE MARKETING RIGHTS

24A. Application  for  grant  of exclusive rights.- [Omitted by the Patents (Amendment) Act,

2005]

24B. Grant of exclusive rights.- [Omitted by the Patents (Amendment) Act, 2005]

24C. Compulsory licences.- [Omitted by the Patents (Amendment) Act, 2005]

24D. Special provision for selling or distribution.- [Omitted by the Patents (Amendment) Act,

2005]

24E. Suits relating to infringements.- [Omitted by the Patents (Amendment) Act, 2005]

24F.  Central   Government   and  its  officers  not   to  be  liable.-  [Omitted  by  the  Patents

(Amendment) Act, 2005]

CHAPTER V

OPPOSITION PROCEEDINGS TO GRANT OF PATENTS

25. Opposition to the patent.—(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground—

(a)  that  the  applicant  for  the  patent  or  the  person  under  or  through  whom  he  claims,

wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—

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

(ii)  in India 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 an anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29;

(c)  that the invention so far as claimed in any claim of the complete specification is claimed in

a  claim of a complete specification published on or after priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;

(d) that the invention so far as claimed in any claim of the complete specification was publicly

known or publicly used in India before the priority date of that cl aim.

Explanation.—For the purposes of this clause, an invention relating  to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and

clearly does not involve any inventive step, having regard to the matter published as

mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;
(f) that the subject of any claim of the complete s pecification is not an invention within the meaning of this Act, or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or

the method by which it is to be performed;

(h) that the applicant has failed to disclose to the Controller the information required by section

8  or  has  furnished  the  information  which  in  any  material  particular  was  false  to  his knowledge;

(i) that in the case of a convention application, the application was not made within twelve months  from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;

(j)  that  the    complete  specification  does  not disclose   or wrongly mentions  the source or

geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,

but on no other ground, and the Controller shall, if requested by such person for being heard,

hear him and dispose of such representation in such manner and within such period as may be prescribed.

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—

(a)   that  the  patentee  or  the  person  under  or  through  whom he  claims,  wrongfully

obtained  the  invention  or  any  part  thereof from him or from a  person under or through whom he claims;

(b)   that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—

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

(ii)  in India 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 an anticipation of the invention by virtue of

sub-section (2) or sub-section (3) of section 29;

(c)   that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the claim of the patentee and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the claim of the patentee;

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

Explanation.—For the purpos es of this clause, an invention relating to a process for  which  a  patent  is  granted shall  be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;

(e)   that the invention so far as claimed in any claim of the complete specification is

obvious and clearly does not involve any inventive step, having regard to the matter published as  mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;

(f)    that the subject of any claim of the complete specification is not an invention within

the meaning of this Act, or is not patentable under this Act;

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

(h) that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(i) that in the case of a patent granted on a convention application, the application for

patent was not made within twelve months from the date of the first application for protection  for  the  invention  made  in  a  convention  country  or  in  India  by  the patentee or a person from whom he derives title;

(j) that the complete specification does not disclose or wrongly mentions the source and

geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,

but on no other ground.

(3) (a) Where any such notice of opposition is duly given under sub- section (2), the Controller shall notify the patentee.

(b)  On  receipt  of  such  notice  of  opposition,  the  Controller  shall,  by  order  in  writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.

(c) Every Opposition Board constituted under clause (b) shall conduct the examination in

accordance with such procedure as may be prescribed.

(4) On receipt of the recommendation of the Opposition Board and after giving the patentee and  the  opponent  an  opportunity  of  being  heard,  the  Controller  shall  order  either  to maintain or to amend or to revoke the patent.

(5) While passing an order under sub-section (4) in respect of the ground mentioned in clause

(d) or clause (e) of sub-section (2), the Controller shall not take into account any personal document or secret trial or secret use.

(6) In case the Controller issues an order under sub-section (4) that the patent shall be maintained subject to amendment of the specification or any other document, the patent shall stand amended accordingly.

26. In cases of “obtaining” Controller may treat the patent as the patent of opponent.—(1) Where in any opposition proceeding under this Act the Controller finds that—

(a)   the invention, so far as  claimed i n any claim of the complete specification, was obtained from the opponent in the manner set out in clause (a) of sub-section (2) of section  25  and  revokes  the  patent on that ground, he may, on request by such opponent  made  in  the  prescribed  manner,  direct  that  the  patent  shall  stand amended in the name of the opponent;

(b)  a part of an invention described in the complete specification was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part of the invention.

(2)  Where  an  opponent  has,  before  the  date  of  the  order  of  the  Controller  requiring  the

amendment of a complete specification referred to in clause (b) of sub-section ( 1) , filed an application  for  a  patent  for  an  invention  which  include s  the  whole  or  a  part  of  the 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  they relate to the invention held to have been obtained from him, as having been filed, for the purposes of this Act relating to the priority dates of claims of the complete specification, on the date on which the corresponding document was or was deemed to have been filed by the patentee

in the earlier application but for all other purposes the application of the opponent shall be

proceeded with as an application for a patent under this Act.

27.  Refusal to patent without opposition.—[Omitted by the Patents   (Amendment) Act, 2005,]

28.  Mention of inventor as such in patent.—(1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section, —

(a)   that  the  person  in  respect  of  or  by  whom the  request or claim is  made is  the

inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and

(b)  that the application for the patent is a direct consequence of his being the inventor, the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor   in   any   patent   granted   in   pursuance   of   the   application  in  the   complete specification and in the register of patents:

Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.

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

(3)    If  any  person  other  than  a  person in respect of whom a  request  in relation to the

application in question has been made under sub-section (2) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.

(4)   A request or claim under the foregoing provisions of this section shall be made before the grant of patent.

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

(6)    Where a  claim is made under sub-section (3), the Controller shall give notice of the claim to every applicant for the patent (not being the claimant) and to any other person whom  the  Controller  may  consider  to  be  interested;  and  before  deciding  upon any request or claim made under sub-section (2), or subsection (3), the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.

(7)   Where any person has  been mentioned as inventor in pursuance of this section, any

other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a  certificate to that effect, and the Controller may, after

hearing, if required, any person whom he may consider to be interested, issue such a certificate,  and  if  he  does  so,  he  shall  rectify  the  specification  and  the  register

accordingly.
CHAPTER VI

ANTICIPATION

29. Anticipation by previous publication.—(1) An invention claimed in a complete specification  shall  not  be  deemed  to  have  been  anticipated by reason only that the invention was published in a specification filed in pursuance of an application for a patent made in India and dated before the 1st day of January, 1912.

(2)         Subject    as     hereinafter    provided,    an    invention    claimed    in    a    complete specification  shall  not  be  deemed  to  have  been  anti cipated by reason only that the invention was published before the priority da te of the relevant claim of the specification, if the patentee or the applicant for the patent proves —

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

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

Provided that this  sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than for the purpose of reasonable trial, either by the patentee or the applicant for the patent or any person from whom he derives  title or by any other person with the consent of the patentee or the applicant for the patent or any person from whom he derives title.

(3)   Where a complete specification is filed in pursuance of an application for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent in respect of the same invention made in contravention of

the  rights  of  that  person,  or by reason only that after the date of filing  of that other

application the invention was used or published, without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of any invention by that applicant.

30.  Anticipation  by  previous co mmunication to Government.—An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the communication of the invention to the Government or to any person authorized by the Government to investigate the invention or its merits, or of anything done, in consequence of such a communication, for the purpose of the investigation.

31. Anticipation by public display, etc.—An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of—

(a)   the display of the invention with the consent of the true and first inventor or a

person  deriving  title  from him at  an  industrial  or  other exhibition to which the provisions of this section have been extended by the Central Government by notification  in  the  Official  Gazette,  or  the  use  thereof with his  consent for the purpose of such an exhibition in the place where it is held; or

(b)   the publication of any description of the invention in consequence of the display or

use of the invention at any such exhibition as aforesaid; or

(c)   the use of the invention, after it has been displayed or used at any such exhibition as  aforesaid and during  the period of the exhibition, by any person without the consent of the true and first inventor or a person deriving title from him; or

(d)  the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society,

if  the  application  for  the  patent  is  made by the true and first inventor or a  person deriving title from him not later than twelve months after the opening of the exhibition or the reading or publication of the paper, as the case may be.

32. Anticipation     by     public     working.—An     invention     claimed     in     a     complete specification shall not be deemed to have been anticipated by reason only that at any time within  one  year  before  the priority date of the relevant cla im of the specification, the invention was publicly worked in India—

(a)   by the patentee or applicant for the patent or any person from whom he derives title; or

(b)   by any other person with the consent of the patentee or applicant for the

patent or any person from whom he derives title,

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

33. Anticipation by use and publication after provisional Specification.—

(1) Where a complete specification is filed or proceeded with in pursuance of an application which was accompanied by a provisional specification or where a complete specification filed along with an application is treated by virtue of a direction under sub-section (3) of section 9 as a provisional speci fication, then, notwithstanding anything contained in this Act, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated, by reason only that any matter described in the provisional specification or in the specification treated as aforesaid as a provisional specification was used in India or published in India or elsewhere at any time after the date of the filing of that specification.

(2) Where a  complete specification is  filed in pursuance of a  convention application, then, notwithstanding anything contained in this Act, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated, by reason only that any matter disclosed  in  any  application  for  protection  in  a  convention  country  upon  which  the convention application is rounded was used in India or published in India or elsewhere at any time after the date of that application for protection.

34. No anticipation if circumstances are only as described in sections 29, 30, 31 and 32.— Notwithstanding anything contained in this Act, the Controller shall not refuse to grant a patent,   and  a   patent  shall   not  be   revoked   or  invalidated  by  reason  only  of  any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do

not constitute an anticipation of the invention claimed in the specification.

CHAPTER VII

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

35. Secrecy directions relating to inventions relevant for defence purposes.—(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.

(2)  Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions  to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions and notify the applicant accordingly.

(3)   Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention in respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, i t may at any time before grant of patent notify the Controller to that effect, and thereupon the provisions of that sub-section shall  apply as  if the invention where one of the class  notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.

36. Secrecy directions to be periodically reviewed.—(1) The question whether an invention in respect of which directions have been given under section 35 continues to be relevant for defence purposes shall be reconsidered by the Central Government at intervals of six months or on a request made by the applicant which is found to be reasonable by the Controller and if, on such reconsideration it appears to the Central Government that the

publication of the invention would no longer be prejudicial to the defence of India or in

case of an application filed by a foreign applicant it is found that the invention is published outside India it shall forthwith give notice to the Controller to revoke the direction and the Controllers shall thereupon revoke the directions previously given by him.

(2) The result of every re-consideration under sub-section (1), shall be communicated to the applicant within such time and in such manner as may be presc ribed.

37. Consequences of secrecy directions.—(1) So long as any directions under section 35 are in force in respect of an application—

(a)   the Controller shall not pass an order refusing to grant the same; and
(b)   notwithstanding anything contained in this Act, no appeal shall lie from any order of the Controller passed in respect thereof:

Provided that the application may, subject to the directions, proceed up to the stage of grant of the patent, but the application and the specification found to be in order for grant of the patent shall not be published, and no patent shall be granted in pursuance of that application.

(2) Where a  complete specification filed in pursuance of an application for a patent for an invention in respect of which directions have been given under section 35 is found to be in order for grant of the patent during the continuance in force of the directions, then —

(a)  if, during the continuance in force of the directions, any use of the invention is made by or on behalf of, or to the order of the Government, the provisions of sections

100,101 and 103 shall apply in relation to that use as if the patent had been granted for the invention; and

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

(3) Where a patent is granted in pursuance of an application in respect of which directions have been given under section 35, no renewal fee shall be payable in respect of any period during which those directions were in force.

38. Revocation of secrecy directions and extension of time.—When any direction given under

section 35 is  revoked by the Controller, then, notwithstanding  any provision of this Act specifying the time within which any step should be taken or any act done in connection with an application for the patent, the Controller 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 or under this Act in connection with the application whether or not that time has previously expired.

39. Residents not to apply for patents outside India without prior permission. —(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless —

(a)   an application for a patent for the same invention has bee n made in India, not less

than six weeks before the application outside India; and

(b)   either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2)    The    Controller    shall    dispose    of    every    such    application    within    such    period

as may be prescribed:

Provided that if the invention is  relevant for defence purpose or atomic energy, the

Controller shall not grant permit without the prior consent of the Central Government.

(3)    This     section    shall    not    apply    in    relation    to    an    invention    for    which    an application  for  protection  has  first  been  filed  in  a  country  outside  India  by  a  person resident outside India.

40. Liability  for  contravention  of  section  35  or  section  39. —Without  prejudice  to  the provisions contained in Chapter XX, if in respect of an application for a patent any person contravenes any direction as to secrecy given by the Controller under section 35 or makes or causes to be made an application for grant of a patent outside India in contravention of section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.

41.  Finality of orders of Controller and Central Government.—All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government under this Chapter shall  be final  and shall  not be called in question in any court on any ground

whatsoever.

42. Savings respecting disclosure to Gov ernment.—Nothing in this Act shall be held to prevent the disclosure by the Controller of information concerning an application for a patent or a specification filed in pursuance thereof to the Central Government for the purpose of the application or specification being examined for considering whether an order under this

Chapter should be made or whether an order so made should be revoked.

CHAPTER VIII

GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY

43. Grant of patents.—(1) Where an application for a patent has been found to be in order for grant of the patent and either—

(a)   the application has not been refused by the Controller by virtue of any power

vested in him by this Act; or

(b)   the application has not been found to be in contravention of any of the provisions of this Act,

the patent shall be granted as expeditiously as possible to the applicant or, in the case of a

joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.

(2)     On the grant of patent, the Controller shall  publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.

44. Amendment  of patent  granted  to  deceased  applicant.—Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was  granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and sha ll be deemed always to have had effect, accordingly.

45. Date of patent.—(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.

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

(3)   Notwithstanding  anything  contained in this section, no suit or other proceeding shall be commenced  or  prosecuted  in  respect  of  an infringement committed before the date of

publication of the application.

46. Form, extent and effect of patent.—(1) Every patent shall be in the prescribed form and shall have effect throughout India.

(2) A patent shall be granted for one invention only:

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

47. Grant of patents to be subject to certain conditions.—The grant of a patent under this Act shall be subject to the condition that—

(1)   any machine, apparatus or other article in respect of which the patent is granted or

any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;

(2)   any process in respect of which the patent is granted may be used by or on behalf of

the Government for the purpose merely of its own use;

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

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

48.  Rights  of  patentees.—Subject  to  the  other  provisions  contained  in  this  Act  and  the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—

(a)   where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;

(b)   where the subject matter of the patent is a process, the exclusive right to preve nt

third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:

49. Patent rights not infringed when used on foreign vessels etc., temporarily or accidentally in India.—(1) Where a vessel or aircraft registered in a foreign country or a land vehicle owned  by  a  person  ordinarily resident in such country comes  into India  (including  the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—

(a)  in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

(b)    in the construction or working of the aircraft or land vehicle or    of  the accessories

thereof,

as the case may be.

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

50. Rights of co-owners of patents.—(1) Where a patent is granted to two or more persons, each of thos e persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.

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

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

other person or persons.

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

(5)  Subject  to  the  provisions  contained  in  this  section,  the  rules  of  law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.

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

51. Power of Controller to give directions to co -owners.—(1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent, or the exercise of any right under section 50 in relation thereto, as he thinks fit.

(2)   If  any  person  registered  as  grantee  or  proprietor  of  a  patent  fails  to  execute  any

instrument or to do any other thing  required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.

(3)   Before  giving  any  directions  in  pursuance  of  an  application  under  this  section,  the

Controller shall give an opportunity to be heard—

(a)   in the case of an application under sub-section (1) to the other person or persons registered as grantee or proprietor of the patent;

(b)   in the case of an application under sub-section (2), to the person in default.
(4)   No   direction   shall   be   given   under   this    section   so   as   to   affect   the   mutual rights or obligations of trustees or of the legal representatives of a deceased person or of their  rights  or  obligations  as  such,  or  which  is  inconsistent  with  the  terms  of  any

agreement between persons registered as grantee or proprietor of the patent.

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

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

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

(ii)  in cases where the Appellate Board or court permits a part only of the patent to

be granted, a new patent for such part bearing the same date as the patent revoked and numbered in such manner as may be prescribed:

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

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

53. Term of patent.—(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents  (Amendment) Act, 2002, and the term of every patent  which  has  not  expired  and  has  not ceased to have effect, on the date of such commencement,  under  this  Act,  shall  be  twenty  years  from the  date  of  filing  of  the application for the patent.

Explanation.—For the purposes of this sub-section, the term of patent in case of International applications filed under the Patent Cooperation Treaty designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation

Treaty.

(2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.

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

(4)  Notwithstanding  anything  contained  in  any  other  law  for  the  time  being  in  force,  on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of  patent,  the  subject  matter  covered  by  the  said  patent  shall  not be  entitled to any

protection.

CHAPTER IX

PATENTS OF ADDITION

54. Patents      of      addition.—(1)Subject     to     the      provisions      contained     in     this section, where an application is  made for a patent in respect of any improvement in or modification  of  an  invention  described or disclosed in the complete  specification filed therefor (in this Act referred to as the “main invention”) and the applicant also applies or has  applied  for  a  patent  for  that  invention  or  is  the  patentee in respect thereof, the Controller  may,  if  the  applicant  so  requests,  grant  the patent for the improvement or modification as a patent of addition.

(2)   Subject  to  the   provisions  contained  in  this  section,  where  an  inve ntion,  being  an

improvement  in  or modification of another invention, is  the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patente e so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.

(3)   A  patent  shall  not be granted as  a  patent of addition unless  the date of filing  of the

application was the same as or later than the date of filing of the application in respect of the main invention.

(4)  A patent of addition shall not be granted before grant of the patent for the main invention.

55. Term of patents of addition.—(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until  the previous cesser of the patent for the main invention and no longer:

Provided that if the patent for the main invention is revoked under this Act, the court,

or, as  the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the pa tent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.

(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent

becomes  an independent patent under sub-section (1) the same fees shall thereafter be

payable,  upon  the  same  dates,  as  if  the  patent  had  been  originally  granted  as  an independent patent.

56. Validity of patents of addition.—(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—

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

(b)  any improvement in or modification of the main invention described

in the complete specification of a  patent  of addition to the patent for the main invention or of an application for such a patent of addition,

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

(2)  For  the  removal  of doubts  it is  hereby declared that in determining  the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specificati on in which the main

invention is described.

CHAPTER X

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

57. Amendment of application and specification or any document relating thereto before Controller.—(1) Subject to the provisions of section 59, the Controller may, upon application made under this  section in the prescribed manner by an applicant for a  patent or by a patentee,  allow  the  application  for  the  patent  or  the  complete  specification  or  any document  relating  thereto  to  be  amended  subject  to  such  conditions,  if  any,  as  the Controller thinks fit:

Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification or any document relating thereto under this section while any suit before a court for the infringement of the patent or any proceeding before the High Court for the revocation of the patent is pending, whether the suit or proceeding commenced before or after the filing of the application to a mend.

(2) Every application for leave to amend an application for a patent or a complete specification

or any document relating thereto under this section shall state the nature of the proposed amendment, and shall give full particulars of the reasons for which the application is made.

(3) Any application for leave to amend an application for a patent or a complete specification or

a  document  related  thereto  under  this  section made after the grant of patent and the nature of the proposed amendment may be published.

(4)  Where an application is published under sub-section (3), any person interested may, within the  prescribed  period  after  the  publication  thereof,  give  notice  to  the  Controller  of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.

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

(6) The provisions of this section shall be without prejudice to the right of an applicant for a

patent to amend his  specification or any other document related thereto to comply with the directions of the Controller issued before the grant of a patent.

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

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

(3)   Copies  of all  orders  of the Appellate Board or the High Court allowing the patentee to

amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register.

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

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

(a)   the amendment shall for all purposes be deemed to form part of the specification

along with other documents related thereto;

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

(c)   the right of the applicant or patentee to make amendment shall not be called in

question except on the ground of fraud.

(3)  In construing the specification as amended

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