B.A. LL.B. (Five Years) Sem 9 Intellectual Property Rights I 2012 Jun Question Paper with Solutions

The rights and the words that limit them

Section 48 of the Patents Act, 1970 gives the patentee of a product an exclusive right. He may prevent others from making, using, offering for sale, selling or importing it in India. For a process, he may prevent others from using the process, and from dealing in the product obtained directly by it. But the section opens with limiting words. The rights are "subject to the other provisions contained in this Act and the conditions specified in section 47".

Why limits exist

A patent is a bargain. The inventor gets a monopoly for a time, and the public gets the invention. The monopoly must not block research, public health or national needs. TRIPS allows limited exceptions that do not unreasonably conflict with normal exploitation of the patent (Article 30). It also allows use without consent, such as compulsory licences, on conditions (Article 31). In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, the Supreme Court described the object of patent law as encouraging research and industrial progress. The price of the monopoly is disclosure. After the term, the invention passes to the public.

6. Parallel imports (section 107A(b)). Importing patented products from a person duly authorised under the law to produce and sell them is not infringement. Once a product is lawfully placed on the market, the patentee cannot control its later import.

These exceptions are also defences in an infringement suit (section 107(2)).

Part B: Limitations on the right itself

1. A limited term. A patent lasts twenty years from the filing date (section 53). It lapses earlier if renewal fees are not paid. After that, anyone may use the invention.

2. Compulsory licences (sections 84, 92, 92A). Three years after grant, any interested person may apply for a compulsory licence on any of three grounds (section 84(1)):

1. the reasonable requirements of the public are not satisfied;
2. the invention is not available at a reasonably affordable price; or
3. it is not worked in the territory of India.

4. Revocation in the public interest (sections 66, 157A). The Central Government may revoke a patent it finds mischievous to the State or generally prejudicial to the public, after hearing the patentee (section 66). For the security of India it may refuse disclosure or revoke a patent by notification (section 157A).

5. The duty to work (sections 83, 146). Patents are granted to be worked in India on a commercial scale, not merely to enable importation (section 83). The patentee must file statements of working in Form 27, once for every period of three financial years (rule 131).

6. Void restrictive conditions (section 140). Conditions in a licence or sale that force a buyer to buy unpatented goods from the patentee, or prevent challenges to validity, are void. So are exclusive grant-backs and coercive package licensing.

7. Validity always open (section 107(1)). Every ground of revocation in section 64 is a defence in an infringement suit. As Biswanath Prasad shows, a patent may be revoked even after grant.

8. Limits on relief. No damages or account of profits are given against an innocent infringer who did not know of the patent (section 111). Where a patent is only partly valid, relief is limited to the valid claims (section 114).

Conclusion. The patentee's exclusive rights in section 48 are expressly "subject to" the Act and to section 47. Research, Government use, foreign vessels, regulatory approval and parallel imports are not infringement (sections 47, 49, 107A). The right itself is limited by its term, compulsory licences (Bayer), Government use and acquisition, revocation and the duty to work. A compulsory licence still needs a real effort to obtain a voluntary one (BDR). Restrictive licence terms are void (section 140). These limits keep the monopoly within the bargain on which it was granted (Biswanath Prasad).