Law of Patents Notes | LL.M. Semester 1 | Mumbai University | munotes

In one line

A patent is a right the State gives an inventor to stop everyone else from using their invention for twenty years, given in exchange for the inventor telling the public exactly how it works.

In the wording a student can write in an exam: by section 2(1)(m) of the Patents Act, 1970, a "patent" means a patent for any invention granted under this Act, and by section 48 it confers on the patentee the exclusive right to prevent third parties, who do not have his consent, from making, using, offering for sale, selling or importing the patented product or using the patented process in India.

Why the law needs a word for this at all

An idea cannot be owned the way a field can. If a farmer plants wheat, nobody else can plant on that soil at the same time. If an engineer works out a better way to seal a plastic pouch, everybody can use that method at once, and the engineer loses nothing physical by their doing so. Economists call this non-rivalrous, meaning that one person's use does not exhaust it.

That is very good for society and very bad for the engineer. The moment the method is published, a competitor who spent nothing on the years of failed experiments can copy it and undercut the price. Knowing this in advance, a rational engineer either does not spend the years, or spends them and then keeps the method secret for ever.

A patent is the law's attempt to escape both bad outcomes. It creates, artificially and for a fixed period, the one thing an idea does not naturally have, which is exclusivity. In return it demands the one thing secrecy denies, which is publication. Chapter 20 works through whether this bargain is a good one.

The five things a patent is, and is not

One: it is a negative right, not a positive one. Section 48 gives "the exclusive right to prevent third parties" from doing certain acts. It does not give the patentee any right to work the invention. A patented drug still needs the approval of the Central Drugs Standard Control Organisation; a patented weapon still needs a licence under the Arms Act. This is the single most common misunderstanding of the whole subject.

Two: it is granted by a State and stops at that State's border. An Indian patent is infringed only by an act done in India. Section 48 itself says "in India" twice. There is no such thing as a world patent, and chapter 140 explains what the Patent Cooperation Treaty does and does not do about that.

Three: it is limited in time. Section 53 sets the term at twenty years from the date of filing, and it cannot be renewed. When the term ends, the invention falls into the public domain and anybody may use it. Chapter 360 works through the term and the renewal fees.

In one line

The law grants patents because without them nobody would pay for the expensive part of inventing, and it limits them because a monopoly is a real cost paid by everybody who buys the product.

In the wording a student can write in an exam: the patent system is justified as an instrument of public policy, on four grounds that are usually given as natural rights, reward, incentive and disclosure, and it is limited because each of those justifications runs out at a point.

The problem the system is answering

Invention is expensive and copying is cheap. A pharmaceutical company that brings one molecule to market has paid for the thousands that failed. A competitor who copies the molecule pays only for the one that worked. If copying is lawful, the first company can never recover its costs, and the rational decision is not to start.

Secrecy is the alternative, and it is worse. An inventor who cannot get a patent will simply not tell anybody. The knowledge then never enters the public domain at all, it dies when the inventor dies, and every other researcher in the field has to rediscover it independently. Formulae for glass and steel were kept as guild secrets for centuries exactly this way.

So the choice is not between monopoly and free competition. It is between a temporary monopoly with publication, and permanent secrecy with no publication. Put that way, the patent bargain looks better than it does when it is described as a State-granted monopoly.

The four justifications, and the objection to each

One: the natural rights argument. A person owns the fruits of their labour, and an invention is the fruit of mental labour, so the inventor owns it. This is Locke's argument about mixing labour with the commons, and it is what most people feel intuitively.

The objection is that it proves too much. Nobody thinks a mathematician owns a theorem, or that a historian owns a fact they uncovered, though both cost labour. And a natural right would have no reason to expire after twenty years, whereas every patent statute in the world says it does. The natural rights argument explains the feeling but not the rules.

Two: the reward argument. Society benefits from the invention, so it should pay the inventor, and the exclusive right is the payment. This is the argument that fits the older English cases and the word "monopoly" in the Statute of Monopolies 1624.

The objection is that the reward is arbitrary. It bears no relation to the value of the invention or to the cost of making it: a trivial improvement to a mass-market product earns far more than a brilliant advance in a small field. Payment out of public funds, or a prize, would match reward to merit far better.

In one line

Section 83 is the only place in the Act where Parliament says out loud what patents are for, and it says they are for getting inventions worked in India at prices people can pay.

In the wording a student can write in an exam: section 83 of the Patents Act, 1970 lays down the general principles applicable to the working of patented inventions, to which regard shall be had in exercising the powers conferred by Chapter XVI, and it is the statutory expression of the public interest limits on a patent monopoly.

Why a statute states its own philosophy

Most statutes do not. The Indian Contract Act does not say why promises should be kept. Patent statutes elsewhere do not say why monopolies are granted. A court reading them has to infer the policy from the structure.

India wrote it down because the policy was contested. The 1970 Act was passed after two public inquiries into whether the patent system as it then stood was serving India at all, and the answer both times was that it was not. Chapter 220 works through those reports. Parliament therefore put the purpose on the face of the Act so that the Controller and the courts could not read the compulsory licensing provisions narrowly.

And it was strengthened, not weakened, when TRIPS arrived. The Patents (Amendment) Act 2002 added clauses (c) to (f), and the Patents (Amendment) Act 2005 added clause (g). So the section as it now stands is post-TRIPS law, not a survival from 1970, which is the answer to a student who assumes India's public interest provisions are pre-globalisation leftovers.

The provision itself

Section 83 opens: "Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely".

The seven considerations, in the Act's own order.

(a) That patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay.

(b) That they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article.

(c) That the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

(d) That patents granted do not impede protection of public health and nutrition and should act as instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India.

In one line

The Patents Act, 1970 is one statute of twenty-three chapters that takes an invention from the application, through examination and opposition, to grant, and then governs what the owner may do with it and what happens when somebody else uses it.

In the wording a student can write in an exam: the Patents Act, 1970 (39 of 1970) extends to the whole of India and came into force on dates appointed by the Central Government under section 1(3), the bulk of it on 20 April 1972.

Why the scheme is worth learning before the sections

A statute is not a list. The Patents Act is arranged as a story in the order in which things happen to a patent, and a reader who knows the order can find any provision in seconds. A reader who does not will hunt for compulsory licences in the chapter on suits.

And the numbering is treacherous in one specific way. The Act has been amended three times, and the amendments inserted lettered sections in place rather than renumbering. So section 11A comes after section 11 and before section 12, section 92A after section 92, and section 104A after section 104. There is no section 95, 96, 97 or 98 at all, and eighteen sections are printed but omitted. Chapter 230 explains how that happened.

The provision itself

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

Section 1(2). It extends to the whole of India.

Section 1(3). It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint, with a proviso that different dates may be appointed for different provisions.

The two commencement notifications are printed in the Act's own footnote. By notification S.O. 300 of 20 April 1972 the Act came into force on 20 April 1972 except section 12(2), section 13(2), section 28, section 68 and sections 125 to 132. By notification S.O. 799 of 10 March 1978 those excepted provisions came into force on 1 April 1978.

Why this matters at all. Section 1(3) is the reason the patent agent provisions, sections 125 to 132, are six years younger than the rest of the Act, and it is the model for how every later amendment was brought in: assent on one date, commencement on another, sometimes for different provisions on different dates. Chapter 230 works that through for 1999, 2002 and 2005, and it is where students most often go wrong.

The map of the Act

In one line

Section 2 is the dictionary of the Act, and four of its entries decide more litigation than the rest of the statute put together.

In the wording a student can write in an exam: section 2(1) of the Patents Act, 1970 defines the expressions used in the Act unless the context otherwise requires, and section 2(2) provides that references to the Controller and to the patent office include officers and branch offices discharging their functions.

Why a definitions section is not a formality

An Act is a machine, and a definition is a gear. Change the definition of "invention" and the whole statute grants different patents. That is not a figure of speech: the Patents (Amendment) Act 2002 rewrote section 2(1)(j) and inserted section 2(1)(ja), and India's patentability standard changed overnight without a word of section 3 being touched.

And the definitions carry the Act's policy. Section 2(1)(y) says the 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". That single negative sentence is a deliberate refusal to let importation count as inventing, and it is the definitional root of the working obligations in Chapter XVI.

The four definitions that decide cases

Section 2(1)(j), "invention". Means a new product or process involving an inventive step and capable of industrial application. Three requirements, each of which has to be satisfied. Chapter 70 takes it apart.

Section 2(1)(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. Inserted in 2002. Chapter 420 works through every phrase.

Section 2(1)(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 with complete specification, that is, the subject matter has not fallen in the public domain or does not form part of the state of the art. Chapter 400 works through it, and through the puzzle that the Act defines both "invention" and "new invention" and uses the second almost nowhere.

Section 2(1)(y), "true and first inventor". Does not include the first importer of an invention into India, or a person to whom an invention is first communicated from outside India. Chapter 250 works through who may apply.

The rest of section 2, grouped so it can be learned

The people. "Patentee", the person for the time being entered on the register as grantee or proprietor (clause (p)). "Assignee", including an assignee of the assignee and the legal representative of a deceased assignee (clause (ab)). "Legal representative", a person who in law represents the estate of a deceased person (clause (k)). "Patent agent", a person for the time being registered as such (clause (n)). "Person", which includes the Government (clause (s)). "Person interested", which includes a person engaged in, or in promoting, research in the same field as that to which the invention relates (clause (t)).

In one line

A patent protects a working idea, a copyright protects the expression of a thought, a trade mark protects a name that says who made the goods, and a design protects how a thing looks.

In the wording a student can write in an exam: intellectual property in India is protected by separate statutes with separate subject matter, separate terms and separate registration systems, and section 3(l) and section 3(o) of the Patents Act, 1970 expressly keep artistic works and integrated circuit topographies out of the patent system because other statutes cover them.

Why the boundaries have to be drawn

Students lose marks by mixing them up, and lawyers lose cases. The same product can carry four different rights at once. A mobile telephone has patents over the circuitry, a design registration over the shape of the handset, a trade mark over the brand, and copyright over the software and the manual. Each is obtained differently, lasts a different length of time and is infringed by different acts.

And the Act itself forces the boundary. Section 3(l) says a literary, dramatic, musical or artistic work or any other aesthetic creation is not an invention. Section 3(o) says the topography of an integrated circuit is not an invention. Parliament put those exclusions in precisely because other statutes cover them, and chapter 100 works them through.

The comparison

Two more rights complete the Indian picture. A geographical indication under the Geographical Indications of Goods (Registration and Protection) Act 1999 protects a name that tells you where goods come from and what that origin means, such as Darjeeling tea or Nashik grapes; it belongs to a community rather than to a person. A layout design of a semiconductor integrated circuit is registered under the Semiconductor Integrated Circuits Layout-Design Act 2000, which is why section 3(o) keeps it out of the Patents Act.

In one line

An invention is something new that can actually be made or used, and that would not have occurred to a competent person in the field.

In the wording a student can write in an exam: by section 2(1)(j) of the Patents Act, 1970, "invention" means a new product or process involving an inventive step and capable of industrial application.

Why the definition is built out of three parts

Each part answers a different objection. Without novelty the State would grant a monopoly over what the public already had. Without an inventive step it would grant one for any trivial change, and every workshop adjustment would become a private right. Without industrial application it would grant one over a speculation that nobody can build.

And the three are independent. A claim can be perfectly new and still obvious: the first person to make a red version of a blue product has done something new that no one had bothered to do. A claim can be inventive and yet incapable of industrial application: a beautifully reasoned perpetual motion machine. Each requirement has to be satisfied on its own, and an examiner tests them separately.

This is the definitional gate. Section 3 is a second and different gate, and chapter 80 shows why a thing that satisfies section 2(1)(j) can still fail. Both must be passed.

The provision itself

Section 2(1)(j). "'invention' means a new product or process involving an inventive step and capable of industrial application".

Section 2(1)(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".

Section 2(1)(ac). "'capable of industrial application', in relation to an invention, means that the invention is capable of being made or used in an industry".

Section 2(1)(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".

Broken down

"A new product or process." Two categories and no others. A product is a thing: a machine, an apparatus, a substance, a composition. A process is a way of doing something: a method of manufacture, a method of treating a material. Everything patentable in India is one or the other, and chapter 450 works through what turns on the difference.

"New." Section 2(1)(l) supplies the content. The standard is absolute and worldwide for publication: anything published anywhere in any document before the filing date destroys novelty. For use it is expressed as "used in the country or elsewhere in the world", so prior use anywhere also counts. Chapter 400 works through the state of the art, and chapter 410 through the six sections that say what does not count.

In one line

Section 3 is a list of sixteen things that are not inventions in Indian law even if they are new, inventive and industrially applicable.

In the wording a student can write in an exam: section 3 of the Patents Act, 1970 provides that the categories set out in clauses (a) to (p) are not inventions within the meaning of the Act, and it operates independently of the definition in section 2(1)(j).

Why an exclusion list exists at all

Because a definition cannot carry the policy. Section 2(1)(j) is a technical test: new, inventive, industrially applicable. A method of surgery can satisfy all three. So can a business method, a gambling system and a way of using a known medicine for a new disease. Parliament wanted none of them patented, and no wording of the definition would have kept them out.

So the Act uses two gates. The first is definitional, in section 2(1)(j). The second is a policy list, in section 3. The Supreme Court put the relationship beyond argument in Novartis AG v. Union of India, (2013) 6 SCC 1, holding that a product may qualify as an invention under sections 2(1)(j) and 2(1)(ja) and still be refused because section 3(d) puts it outside the category. Chapter 1230 works that case in full.

And the list is not frozen. Clause (b) was substituted in 2002, clause (c) was widened in 2002, clause (d) was substituted in 2005, and clauses (j) to (p) were inserted in 2002. Chapter 230 works through those amendments and why each was made.

The provision itself, opening words

Section 3 opens: "The following are not inventions within the meaning of this Act". Note the phrase "within the meaning of this Act". The things listed may be inventions in ordinary speech and in other countries; they are simply not inventions for the purposes of Indian patent law.

Clause (a): frivolous inventions and those contrary to natural laws

The words. "An invention which is frivolous or which claims anything obviously contrary to well established natural laws".

Two limbs. Frivolous covers a claim of no serious purpose: an umbrella fitted to a bullock's head, a walking stick with a clock. Contrary to well established natural laws covers a claim that could not work whatever the drafting: a perpetual motion machine, a device claiming to produce more energy than it consumes.

Why the word "obviously" matters. The examiner is not required to prove impossibility. The claim must be obviously contrary to a well established law, so a controversial or emerging science is not caught. An examiner who is merely sceptical must object under section 2(1)(ac) instead.

Clause (b): public order, morality, and serious prejudice

The words, as substituted in 2002: "an invention the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment".

In one line

Section 3(d) says that a new form of a medicine you already know is not an invention unless the new form actually works better as a medicine.

In the wording a student can write in an exam: section 3(d) of the Patents Act, 1970 excludes 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, and by its Explanation salts, esters, ethers, polymorphs and other derivatives of a known substance are deemed to be the same substance unless they differ significantly in properties with regard to efficacy.

Why India has a provision no other country has

Because a chemical compound can be dressed a hundred ways. The same active molecule can be made as a salt, an ester, an ether, a polymorph, a hydrate, an isomer or a mixture of isomers. Each is technically a different substance. Each can be new, in the sense that nobody has made exactly it before. And each can be patented for a fresh twenty years.

That is how a monopoly outlives its term. Patent the molecule in year one; patent the salt in year eight; patent the polymorph in year twelve; patent the combination in year sixteen. The original patent expires but the medicine never becomes generic, because a later patent always covers whatever form is on sale. Chapter 1220 works through the practice, which is called ever-greening.

India in 2005 had to allow product patents on medicines for the first time. Chapter 460 works through why. Parliament accepted that obligation and added section 3(d) at the same moment, as the domestic answer to what it feared would follow. The provision is therefore the single most political sentence in the Act.

The provision itself

Section 3(d), as substituted in 2005. The following is not an invention: "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."

The 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".

Broken down: the clause has three limbs and one deeming provision

Limb one: a new form of a known substance. Excluded unless the new form results in the enhancement of the known efficacy of that substance. So a salt of a known drug is not an invention unless the salt works better than the drug.

In one line

The remaining exclusions in section 3 keep out re-arrangements of known devices, farming methods, medical treatments, plants and animals, software, business methods, artistic works, mental acts, presentations of information, chip layouts and traditional knowledge.

In the wording a student can write in an exam: clauses (f) and (h) to (p) of section 3 of the Patents Act, 1970 exclude the further categories set out there from being inventions within the meaning of the Act, clauses (j) to (p) having been inserted by the Patents (Amendment) Act 2002 to bring Indian law into line with what TRIPS permits a member to exclude.

Clause (f): mere arrangement or re-arrangement

The words. "The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way".

The whole clause is in the last nine words. If each known device goes on doing what it always did, side by side, the combination is a collocation and not an invention. If they interact so that the assembly does something none of them does alone, the clause does not reach it.

The classic illustration is a pencil with an eraser fixed to the end. The pencil writes; the eraser erases; neither changes what the other does. That is a collocation. Contrast a torch built into a screwdriver handle so that the beam is focused down the shaft onto the screw: the two now co-operate to solve a problem neither solved alone, and clause (f) does not apply.

This is the statutory form of the workshop improvement rule the Supreme Court stated in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, worked in chapter 420: a mere collocation of integers not involving the exercise of any inventive faculty does not qualify for a patent.

Clause (h): methods of agriculture or horticulture

The words. "A method of agriculture or horticulture".

Excluded outright. A method of sowing at a particular spacing, a method of grafting, a method of preparing a seedbed: none is patentable however new. The policy is that farming techniques should not be privately owned in an agrarian economy.

But the boundary is narrower than students assume. A machine used in agriculture is a product and is patentable. A chemical composition used as a pesticide is a product and is patentable. A method of producing a chemical for agricultural use is a process of manufacture and is patentable. Only the agricultural or horticultural method itself is excluded.

Clause (i): methods of treatment

The words, as amended in 2002: "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".

In one line

No patent can be granted for an invention relating to atomic energy of the kind the Atomic Energy Act 1962 reserves to the Central Government.

In the wording a student can write in an exam: by section 4 of the Patents Act, 1970, 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).

Why it is a separate section

Because it is a different kind of rule. Section 3 says certain things "are not inventions within the meaning of this Act". Section 4 does not say that. It says no patent "shall be granted" for a certain class of invention. The subject matter may be a perfectly good invention, satisfying every requirement of section 2(1)(j); the State has simply reserved it.

The reason is national security and State ownership of fissile material. India's atomic energy programme is run by the Central Government, and the Atomic Energy Act 1962 gives it wide powers over inventions in the field. Section 4 of the Patents Act is the patent-side expression of that policy.

And that difference has a practical consequence. Because section 4 bars the grant rather than defining the invention out of existence, the pre-2002 Act treated it slightly differently from section 3 in the grounds of opposition and revocation. Under the Act as it now stands both are covered: section 25(1)(f) and section 25(2)(f) allow opposition on the ground that the subject is not an invention within the meaning of the Act or is not patentable under the Act, and section 64(1)(d) allows revocation on the same footing.

The provision it points to

Section 20 of the Atomic Energy Act 1962 deals with special provision as to inventions. Sub-section (1), which section 4 of the Patents Act picks up, covers inventions relating to the production, control, use or disposal of atomic energy, or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance, or the ensuring of safety in atomic energy operations.

"Prescribed substance" is itself defined in the 1962 Act and covers uranium, thorium, plutonium, their ores, compounds and derivatives, and heavy water, among others notified by the Central Government.

The Atomic Energy Act also provides its own machinery. Where an application is made for a patent for an invention that appears to relate to atomic energy, the Controller notifies the Central Government, and the 1962 Act contains provisions for the Government to deal with such inventions, including compensation. So the inventor is not simply ignored; the invention is taken into the State system rather than into the patent system.

In one line

India will patent a micro-organism and a genuinely technical biotechnological process, but not a plant, an animal, a gene as it exists in nature, or a way of breeding.

In the wording a student can write in an exam: section 3(c) of the Patents Act, 1970 excludes the discovery of any living thing occurring in nature and section 3(j) excludes plants and animals in whole or any part thereof other than micro-organisms, including seeds, varieties and species, and essentially biological processes for their production or propagation.

Why living matter was ever a problem

Patent law was built for machines. Its vocabulary is manufacture, apparatus, process and product. A living thing reproduces itself, varies as it does so, and was in some sense always there. None of that fits comfortably into a system designed for a better loom.

Three separate objections were made, and they are still made. That a living thing is a discovery and not a manufacture. That living matter is morally different and should not be owned. That a patent over a living thing whose progeny carry the same feature effectively extends the monopoly through the generations.

India answered all three at once in 2002 by inserting clause (j), by widening clause (c), and by leaving micro-organisms out of the exclusion.

Where the line runs in Indian law

The two clauses do different work and must both be applied. Clause (c) asks whether the thing was found or made. Clause (j) asks what kind of living thing it is. A modified micro-organism escapes clause (j) because micro-organisms are carved out, and escapes clause (c) because it was made rather than found. The same modification applied to a plant escapes clause (c) but is caught by clause (j).

What a "micro-organism" carve-out actually permits

The Act does not define micro-organism. In practice it covers bacteria, viruses, algae, fungi, yeasts, plasmids and cell lines. The Patent Office's own practice extends to isolated and modified forms.

And the Budapest Treaty machinery exists because of this carve-out. Section 10(4)(d)(ii) requires that where an invention uses a biological material which cannot be adequately described, the material must be deposited with an international depositary authority not later than the filing date, and the deposit details given in the specification. India acceded to the Budapest Treaty in 2001 and there is a depositary authority at Chandigarh and another at Pune. Chapter 150 works the treaty through and chapter 500 works section 10.

In one line

The Paris Convention is the 1883 treaty that stops a country from treating foreign inventors worse than its own, and gives an applicant twelve months to file the same invention in other member countries without losing the original date.

In the wording a student can write in an exam: the Paris Convention for the Protection of Industrial Property, 1883, as revised, rests on three pillars, national treatment, the right of priority and the independence of patents, and India acceded to it on 7 December 1998.

Why a treaty was needed at all

A patent stops at a border, and inventions do not. By the 1870s an inventor who exhibited a machine at an international exhibition in one country destroyed the novelty of the invention in every other country before an application could be filed there. Exhibitors began to stay away.

The Vienna exhibition of 1873 was the trigger. Austria-Hungary passed a special law protecting exhibitors, and out of the conferences that followed came the Paris Convention of 20 March 1883, signed by eleven States. It has been revised seven times, most recently at Stockholm in 1967, and amended in 1979.

It is administered by the World Intellectual Property Organization, and TRIPS article 2(1) requires every World Trade Organization member to comply with Paris articles 1 to 12 and 19, which is how the Convention now binds States that never signed it. Chapter 160 works that through.

The three pillars

One: national treatment, article 2. Each member country must give nationals of other member countries the same protection it gives its own, and the same legal remedies against infringement, without any requirement of domicile or establishment in the country where protection is claimed.

What this forbids in practice is a rule that foreigners pay higher fees, that they must work the invention within a shorter period, or that they must sue through a local proprietor. India's Patents Act draws no distinction of nationality anywhere, which is national treatment carried out.

Two: the right of priority, article 4. An applicant who has filed a regular application in one member country may, within twelve months for a patent, file in any other member country, and that later application is treated as if it had been filed on the date of the first. Six months applies for industrial designs and trade marks.

What the priority period does. It fixes the date at which novelty and inventive step are judged, so anything published during those twelve months does not defeat the later applications. It does not extend the term, which still runs from the actual filing date in each country.

Three: independence of patents, article 4bis. Patents applied for in different countries for the same invention are independent of each other. A patent refused, revoked or allowed to lapse in one country has no effect on the patent in another. This is why an Indian revocation does not follow from a European one, and why Novartis losing in India did not disturb the Glivec patents elsewhere.

In one line

The Patent Cooperation Treaty lets an inventor file one application that counts as a filing in over one hundred and fifty countries at once, and buys about thirty months before the expensive national decisions have to be made.

In the wording a student can write in an exam: the Patent Cooperation Treaty, done at Washington on 19 June 1970 and defined in section 2(1)(oa) of the Patents Act, 1970, provides for the filing, international search, international publication and international preliminary examination of an international application, which by article 11(3) has the effect of a regular national filing in each designated State.

The problem it solves

The Paris Convention gives twelve months and no more. An applicant with a promising invention must decide, within twelve months of the first filing, in which countries to file, and must then pay the filing fees and the translation costs of every one of them. Translation into Japanese, Korean, Chinese, German and Portuguese is not cheap, and at twelve months the applicant usually does not yet know whether the invention is commercially worth it or whether it is even patentable.

So money is spent on inventions that turn out to be worthless, and inventions are abandoned that turn out to be valuable. The Treaty was negotiated to fix exactly that, and it does it by postponing the decision rather than by changing the law.

What the Treaty actually does

It is a filing and searching treaty, not a granting treaty. There is no such thing as a PCT patent. Every patent is still granted by a national or regional office under its own law. The Treaty organises the first half of the process and hands the result to those offices.

The international phase, in four steps.

One: filing. The applicant files one international application at a receiving office, in one language, with one set of fees. Article 11(3) gives it the effect of a regular national filing in every designated State from the international filing date. India is a receiving office for applicants who are Indian nationals or residents.

Two: international search. An International Searching Authority searches the prior art and issues an international search report with a written opinion on novelty, inventive step and industrial applicability. The opinion is not binding on any office, but it tells the applicant what they are facing.

Three: international publication. The application is published by the International Bureau of WIPO promptly after eighteen months from the priority date.

Four: international preliminary examination, which is optional. On a demand by the applicant, an International Preliminary Examining Authority issues an international preliminary report on patentability, again non-binding.

Then the national phase. By about thirty months from the priority date the applicant must enter the national phase in each country where protection is wanted, paying the national fees and filing translations. From that point each office applies its own law: an application that survived the international search can still be refused in India under section 3(d).

In one line

The Budapest Treaty lets an inventor deposit a micro-organism once, at one recognised institution, and have that single deposit accepted by every patent office in the world.

In the wording a student can write in an exam: the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, done at Budapest on 28 April 1977, is defined in section 2(1)(aba) of the Patents Act, 1970, and its machinery is given effect by section 10(4)(d)(ii), which requires deposit with an international depositary authority where the invention uses a biological material that cannot be adequately described.

The problem it solves

A specification must teach. Section 10(4) requires the complete specification to describe the invention fully and particularly and to disclose the best method of performing it, so that a skilled reader can work it. Chapter 500 works that through.

Words cannot describe a micro-organism well enough to reproduce it. A chemist can write a formula; a microbiologist cannot write a bacterium. Describing morphology, biochemical reactions and growth conditions does not let a reader obtain the identical strain.

So the law requires a sample instead of a description. The applicant deposits a living culture in a recognised collection and gives the accession number in the specification. Anybody entitled to it can then obtain a sample and work the invention.

Before 1977 that had to be done in every country separately. An applicant filing in twelve countries made twelve deposits at twelve institutions, each with its own rules, fees, forms and languages, and each of which had to remain viable for twenty years. The Treaty replaced that with one deposit.

What the Treaty provides

One deposit, recognised by all. A deposit made with any International Depositary Authority must be recognised for patent purposes by every Contracting State. That is the whole of the Treaty in a sentence.

International Depositary Authorities. A scientific institution, in a Contracting State, that has given the assurances required by the Treaty, is capable of storing micro-organisms and of furnishing samples, and acts impartially and objectively. There are about fifty worldwide.

India has two. The Microbial Type Culture Collection and Gene Bank at the Institute of Microbial Technology, Chandigarh, and the Microbial Culture Collection at the National Centre for Cell Science, Pune. India acceded to the Treaty with effect from 17 December 2001, and the Chandigarh authority was recognised in the same period.

Storage and viability. The Authority must store the deposit for at least thirty years from the deposit, and in any case at least five years after the most recent request for a sample. It must test viability and issue a viability statement.

Furnishing of samples. Samples must be furnished to the depositor, to persons authorised by the depositor, and to any office or person entitled under the applicable national law, which in India means once the application is published.

In one line

TRIPS is the World Trade Organization agreement that made every member grant patents for twenty years in every field of technology, and it is why India changed its patent law three times between 1999 and 2005.

In the wording a student can write in an exam: the Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994, forms Annex 1C to the Marrakesh Agreement establishing the World Trade Organization, and Part II Section 5, articles 27 to 34, sets the minimum standards for patents that every member must meet.

Why an intellectual property agreement sits inside a trade treaty

Because the Paris Convention had no teeth. It set standards but provided no way of making a member comply. A country could join and grant nothing.

Trade gave the enforcement. By putting intellectual property inside the World Trade Organization, TRIPS made a failure to protect patents a matter for the Dispute Settlement Body, whose rulings can be enforced by authorised retaliation in trade. That is the single structural fact that makes TRIPS different from every earlier treaty.

And it forced developing countries to accept obligations they had resisted for a century. India had deliberately refused product patents for medicines since 1970, and TRIPS ended that choice. Chapter 460 works through what it cost and what it bought.

The articles a patent student must know

Article 27(1): patentable subject matter. Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application. Patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

Two words in article 27(1) carry most of the argument. "All fields of technology" is what ended India's exclusion of product patents for food, medicine and chemicals. "Without discrimination as to whether products are imported or locally produced" is the clause said to be in tension with India's local working requirement, and chapter 860 works both sides of that.

Article 27(2): the public order exception. Members may exclude inventions whose commercial exploitation must be prevented to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment. Section 3(b) of the Indian Act is this article in Indian words, substituted in 2002.

Article 27(3): the permitted exclusions. Members may exclude (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals, and (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. But members must provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination.

In one line

The Doha Declaration is the 2001 statement by every World Trade Organization member that TRIPS must not stop a country protecting public health, and it led to the one amendment TRIPS has ever had.

In the wording a student can write in an exam: the Declaration on the TRIPS Agreement and Public Health, adopted at the Fourth Ministerial Conference at Doha on 14 November 2001, affirms that the Agreement can and should be interpreted and implemented in a manner supportive of members' right to protect public health and, in particular, to promote access to medicines for all.

Why it was needed six years after TRIPS

Because TRIPS worked, and the consequences arrived. By 2000 antiretroviral treatment for a patient with human immunodeficiency virus cost between ten and fifteen thousand United States dollars a year at patented prices, and generic Indian manufacturers had begun offering the same combinations for a few hundred. In sub-Saharan Africa the arithmetic was a matter of life and death.

Two events crystallised the argument. In 1998 a large group of pharmaceutical companies sued the South African government over legislation permitting parallel importation and substitution, and withdrew in 2001 under public pressure. In 1997 the United States began dispute proceedings against Brazil over the local working requirement in its patent law, and later withdrew.

Developing members went to Doha saying that the flexibilities TRIPS contained were being chilled by the threat of litigation and trade pressure. The Declaration was the answer, and it was adopted by consensus, which means the developed members agreed to it.

What the Declaration says

Paragraph 4 is the heart of it. Members agree that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health, and that the Agreement can and should be interpreted and implemented in a manner supportive of members' right to protect public health and, in particular, to promote access to medicines for all.

Paragraph 5 lists the flexibilities and confirms them. Each provision of TRIPS shall be read in the light of its object and purpose as expressed in its objectives and principles, meaning articles 7 and 8. Each member has the right to grant compulsory licences and the freedom to determine the grounds on which they are granted. Each member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to human immunodeficiency virus, tuberculosis, malaria and other epidemics, can represent such circumstances. Each member is free to establish its own regime for the exhaustion of intellectual property rights, which is the basis for parallel importation.

Paragraph 6 states the problem the Declaration could not solve. Members with insufficient or no manufacturing capacity in the pharmaceutical sector could make effective use of compulsory licensing only with difficulty, because article 31(f) required production under a compulsory licence to be predominantly for the domestic market. A country with no factory could licence nobody usefully. The Council for TRIPS was instructed to find an expeditious solution.

In one line

The World Intellectual Property Organization runs the patent treaties, and the one treaty that would have made patent law the same everywhere was negotiated for a decade and abandoned.

In the wording a student can write in an exam: the World Intellectual Property Organization, established by the Convention signed at Stockholm on 14 July 1967 and a specialised agency of the United Nations since 1974, administers the Paris Convention, the Patent Cooperation Treaty, the Budapest Treaty and the Patent Law Treaty, and India has been a member since 1 May 1975.

The institution

WIPO succeeded the United International Bureaux for the Protection of Intellectual Property, the joint secretariat that had administered the Paris and Berne Conventions since 1893. The 1967 Convention gave it a proper constitution, and in 1974 it became a specialised agency of the United Nations.

What it does. It administers about two dozen treaties; it runs the international registration systems, the Patent Cooperation Treaty for patents, Madrid for trade marks, Hague for designs and Lisbon for appellations of origin; it maintains classification systems, the International Patent Classification among them; it provides technical assistance to developing members; and it runs an Arbitration and Mediation Center which handles domain name disputes.

What it does not do. It does not grant patents, it has no dispute settlement machinery with teeth, and it cannot compel a member to change its law. That last absence is precisely why intellectual property migrated into the trade system in 1994, and chapter 160 works through what TRIPS added.

India's position. India joined WIPO on 1 May 1975 but stayed out of the Paris Convention and the Patent Cooperation Treaty for another twenty-three years, acceding to both only on 7 December 1998 after TRIPS. That gap is itself an examinable fact about Indian policy.

The Patent Law Treaty 2000

What it is. A treaty done at Geneva on 1 June 2000, in force since 28 April 2005, which harmonises the formalities of patent applications: what an office may require to accord a filing date, standardised forms, the manner of representation, relief when a time limit is missed, and restoration of the right of priority.

What it deliberately is not. It says nothing about what is patentable, about novelty, about inventive step or about the rights conferred. It is a procedural treaty by design.

India is not a party. There is no obligation to join, and India has not.

The Substantive Patent Law Treaty, which was abandoned

The ambition. From about 2000 WIPO members negotiated a treaty that would have harmonised the substance: a single definition of prior art, a single standard of novelty and inventive step, a common approach to sufficiency and to the grace period.

In one line

Chapter XXII is the plumbing that turns a foreign filing date into an Indian one.

In the wording a student can write in an exam: Chapter XXII of the Patents Act, 1970, sections 133 to 139, provides for convention countries, convention applications, multiple priorities and the supplementary requirements, and gives effect in Indian law to the right of priority under article 4 of the Paris Convention.

Why the Act needs seven sections for it

Because a priority claim is a legal fiction with real consequences. The applicant is asking the Controller to treat an application filed in India today as though it had been filed a year ago in Germany. That fiction decides what counts as prior art, who wins a contest between two applicants, and whether the applicant's own publication defeats them. A statute cannot do that in one line.

The provisions

Section 133: convention countries. Any country, or a country which is a member of a group of countries, a union of countries or an inter-governmental organisation, which the Central Government by notification declares to be a convention country for the purposes of the Act. As substituted in 2005, the section takes in regional systems such as the European Patent Organisation, not only individual States.

Section 134: notification as to countries not providing for reciprocity. Where a country does not accord to Indian citizens the same rights it accords its own, the Central Government may by notification direct that Indian citizens shall not be entitled to apply for or obtain a patent there, or to any of the reciprocal benefits. This is the retaliation clause and it has never been much used, but it is the statutory expression of reciprocity.

Section 135: convention applications. Where a person has applied for protection for an invention in a convention country, they, or their legal representative or assignee, may apply for a patent in India within twelve months from the date on which the basic application was made. Where applications have been made in two or more convention countries, the twelve months runs from the date of the earliest of them. Section 135(3), inserted in 2005, provides for an application under the Patent Cooperation Treaty designating India.

Section 136: special provisions relating to convention applications. The convention application must be accompanied by a complete specification; it must fully and particularly describe the invention; and the specification may include a claim for protection in respect of developments of or additions to the invention made after the basic application, in respect of which the applicant would be entitled to a separate patent.

Section 137: multiple priorities. Where two or more applications have been made in one or more convention countries and those inventions are so related as to constitute one invention, one convention application may be made in India within twelve months of the earliest of them, and the priority date of a claim is the date of the matter in the basic application from which it is fairly based.

In one line

India's first patent law was passed in 1856, repealed almost at once for a technicality, re-enacted in 1859, and rebuilt twice more before 1911.

In the wording a student can write in an exam: patent protection in India began with Act VI of 1856, which granted exclusive privileges for inventions; it was repealed in 1857, replaced by Act XV of 1859, supplemented by the Patterns and Designs Protection Act 1872 and the Protection of Inventions Act 1883, and consolidated by the Inventions and Designs Act 1888.

Why this history is examinable

MU prints "History of Indian Patent System" as a whole topic, and the examiner is asking for a narrative, not a list of dates. The narrative has a shape: India's patent law was written for a colony, was designed to protect British inventions in an Indian market, and was rewritten in 1970 by an independent country with the opposite priority. Chapters 200 to 240 tell that story in order.

Act VI of 1856

What it did. It was based on the British Patent Law Amendment Act 1852 and granted exclusive privileges to inventors of new manufactures for a period of fourteen years. An inventor filed a specification and, on the Governor-General's leave, obtained the privilege.

Why it was repealed. It had been enacted without the prior sanction of the British Crown, which the constitutional arrangements of the time required. It was repealed in 1857 for that reason and not because of any defect in its content.

Act XV of 1859

What it did. It re-enacted the 1856 scheme with the necessary sanction, and made three changes worth remembering. It confined the privilege to useful inventions, it extended the privilege to the inventor's assignees rather than only to the inventor, and it required a specification to be filed. The term remained fourteen years.

And it introduced priority for prior communication abroad, giving twelve months from the date of a prior communication of the invention abroad, which is the ancestor of the convention priority chapter 190 works through.

The three Acts that followed

The Patterns and Designs Protection Act 1872. It extended protection to designs, and it introduced the word "invention" into Indian legislation in a defined sense.

The Protection of Inventions Act 1883. It gave temporary protection to inventions exhibited at an exhibition, a direct response to the same problem that produced the Paris Convention in the same year. Section 31 of the present Act is the descendant of it.

The Inventions and Designs Act 1888. It consolidated the 1872 and 1883 Acts and brought Indian law closer to the British Patents, Designs and Trade Marks Act 1883.

In one line

The 1911 Act ran Indian patent law for sixty-one years, gave the country its first Controller of Patents, and was repealed so far as it relates to patents in 1972 because it was thought to be serving foreign patentees rather than Indian industry.

In the wording a student can write in an exam: the Indian Patents and Designs Act, 1911 (2 of 1911) established the office of the Controller of Patents and Designs and governed both patents and designs until the Patents Act, 1970 repealed it so far as it relates to patents by section 162 and the Schedule, leaving it in force for designs until the Designs Act 2000.

What the 1911 Act did

It created the administration. For the first time India had a Controller of Patents and Designs and a patent office to administer the system, rather than a system of privileges granted case by case.

It ran patents and designs in one statute, which is why its repeal in 1970 had to be partial: section 162 repealed it "in so far as it relates to patents", and the Schedule to the 1970 Act carried out that surgery clause by clause. What remained governed designs until the Designs Act 2000 replaced it entirely.

It set a fourteen-year term, extendable in certain cases.

It provided for compulsory licences and for revocation on the ground of non-working, but on conditions that made them very hard to obtain in practice.

And it granted patents for substances as well as for processes, including food, medicine and chemicals, with no exclusion of any field.

How grant and validity worked under it

Grant was on a limited examination, and validity was tested only when the patent was litigated. The Supreme Court said this plainly in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, a case decided under the 1911 Act: the grant and sealing of a patent, or the Controller's decision in an opposition, does not guarantee the validity of the patent, which can be challenged in revocation or infringement proceedings. The Court added that this is now expressly provided by section 13(4) of the 1970 Act.

The definition of "invention" carried no requirement of usefulness on its face, and the courts read one in, the Supreme Court noting in the same case that the foundation for doing so was that section 26(1)(f) of the 1911 Act made lack of utility a ground of revocation. Chapter 430 works through why the 1970 Act took a different route.

And section 26 of the 1911 Act was the revocation provision, with section 29 containing the proviso under which a revocation petition and an infringement suit were transferred to the High Court, which is how Biswanath Prasad itself reached the Allahabad High Court.

In one line

Two inquiries, one in 1948 and one in 1959, concluded that Indian patent law was working for foreign patentees rather than for India, and the Patents Act 1970 is what Parliament did about it.

In the wording a student can write in an exam: the Patents Enquiry Committee under Dr Bakshi Tek Chand reported in 1948 and 1950 and the Committee under Justice N. Rajagopala Ayyangar reported in 1959, and the Patents Act, 1970 substantially adopted the Ayyangar recommendations, repealing the Indian Patents and Designs Act 1911 so far as it relates to patents by section 162.

Why India held two inquiries

Because independence made the policy question new. A colonial patent statute serves the industry of the metropolitan power. An independent country with a small industrial base and a large population has to ask a different question: does this system get technology into the country, or does it keep the country as a market?

The Government appointed the first committee within a year of independence. The Patents Enquiry Committee, chaired by Dr Bakshi Tek Chand, a retired judge of the Lahore High Court, was appointed in 1948 and submitted an interim report in 1949 and a final report in 1950.

A Bill based on it was introduced in 1953 and lapsed. The Government then appointed Justice N. Rajagopala Ayyangar in 1957 to review the whole subject afresh, and he reported in September 1959. That report is the intellectual foundation of the 1970 Act and is still cited in Indian judgments, including by the Supreme Court in the Novartis litigation, which chapter 1230 works through.

What the Tek Chand Committee found and recommended

It found that the patent system had not stimulated invention in India and that the great majority of patents in force were held by foreigners and were being used to restrain Indian industry rather than to develop it.

Its principal recommendations. That the definition of invention be tightened. That patents for food, medicine and drugs be confined to processes, so that no monopoly could exist over the substance itself. That compulsory licensing be made real, and that licences of right be available for patents in fields of public importance. That the working requirement be enforced with revocation as a remedy. That the term be reduced from what the 1911 Act allowed. And that the patent office be strengthened with proper examination.

Almost all of that survived into the Ayyangar report and then into the Act.

What the Ayyangar report added

It made the argument empirically. The report assembled the numbers on who held Indian patents, how many were worked, and what the price consequences were, and it is that evidence rather than the theory that carried Parliament.

In one line

Three amendments in six years turned a process-patent statute written for a closed economy into a TRIPS-compliant product-patent statute, and each was the minimum India could do by the deadline it faced.

In the wording a student can write in an exam: the Patents (Amendment) Act, 1999 (17 of 1999), the Patents (Amendment) Act, 2002 (38 of 2002) and the Patents (Amendment) Act, 2005 (15 of 2005) amended the Patents Act, 1970 to give effect to India's obligations under TRIPS, with effect from 1 January 1995, 20 May 2003 and 1 January 2005 respectively.

Why three and not one

Because TRIPS had three deadlines and India met each separately. Chapter 160 works through the transition periods. The mailbox obligation bit from 1 January 1995; the general obligations from 1 January 2000; and product patents in pharmaceuticals and agricultural chemicals from 1 January 2005.

And because each was politically difficult. The 2005 changes were brought in first as an Ordinance on 26 December 2004 because Parliament was not sitting, and the Act that replaced it was passed in April 2005 with effect from 1 January 2005.

The Patents (Amendment) Act 1999

What forced it. India had not provided the mailbox required by TRIPS article 70(8) or the exclusive marketing rights required by article 70(9). The United States and the European Communities brought World Trade Organization complaints, and India lost. Chapter 470 works the dispute through.

What it did. It inserted Chapter IVA, providing for exclusive marketing rights, and made a claim for a patent for a substance itself intended for use as a medicine or drug filable and dealt with in the manner provided by that Chapter. The mechanism was retrospective to 1 January 1995, which is why the amendment is dated 1999 but operates from 1995.

How it appears in the Act today. Sub-section (2) of section 5 as it then stood is printed in the Act as originally enacted, and section 5 itself was omitted in 2005. What survives of the mailbox is section 11A(7), which governs the rights of a mailbox applicant and of an enterprise that had already made a significant investment and was producing and marketing the article before 1 January 2005. Chapter 470 works it through.

The Patents (Amendment) Act 2002

The largest of the three, and the one students underestimate. It commenced on 20 May 2003.

The definitions. It substituted the definition of "invention" in section 2(1)(j) and inserted "inventive step" in section 2(1)(ja), "capable of industrial application" in section 2(1)(ac), "new invention" in section 2(1)(l) and the Budapest Treaty in section 2(1)(aba). Chapters 50 and 70 work them through.

Section 3. It substituted clause (b) in the TRIPS article 27(2) language, widened clause (c) to cover the discovery of any living thing or non-living substance occurring in nature, and inserted clauses (j) to (p), which is where plants and animals, computer programmes and business methods, artistic works, mental acts, presentation of information, integrated circuit topographies and traditional knowledge all come from. Chapters 80 and 100 work them.

In one line

Since 2005 the Act itself has been amended twice, once to abolish the appeal tribunal and once to turn several of its offences into money penalties, and the Rules have been rewritten repeatedly, most recently in March 2024.

In the wording a student can write in an exam: after the Patents (Amendment) Act, 2005 the Patents Act, 1970 was amended by the Tribunals Reforms Act, 2021 (33 of 2021) with effect from 4 April 2021 and by the Jan Vishwas (Amendment of Provisions) Act, 2023 (18 of 2023), while the Patents Rules, 2003 have been amended by, among others, the Patents (Amendment) Rules, 2016, 2019, 2020, 2021 and 2024.

The Tribunals Reforms Act 2021

What it did to this Act. Section 13 of, and the Schedule to, the Tribunals Reforms Act 2021 abolished the Intellectual Property Appellate Board and returned its jurisdiction to the High Courts. In the Patents Act it omitted sections 116, 117, 117B, 117C, 117D, 117F, 117G and 117H, omitted the definition of "Appellate Board" in section 2(1)(a), omitted sub-clause (B) of section 2(1)(u), and substituted "High Court" for "Appellate Board" throughout, so that section 117A is now headed "Appeals to High Court".

With effect from 4 April 2021. That is the date the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021 came into force, and the Act that replaced the Ordinance carried the same date.

What survives of Chapter XIX. Section 117A, the appeal, and section 117E, the appearance of the Controller in legal proceedings. Nothing else.

MU's syllabus still prints "Appellate Tribunal Proceedings" as topic 4.5. Chapters 1180, 1190 and 1200 teach the appeal as it now is, the Board as it was, and where a patent matter goes today.

The Jan Vishwas (Amendment of Provisions) Act 2023

What it is for. The Jan Vishwas Act amended forty-two central statutes to decriminalise minor offences and replace imprisonment and fines with civil penalties imposed by an adjudicating officer, on the policy that trivial regulatory failures should not carry a criminal record.

What it did to the Patents Act. It omitted section 121, which had made the wrongful use of the words "patent office" an offence. It converted the punishments in section 120, unauthorised claim of patent rights, and section 122, refusal or failure to supply information, from fines into penalties, with a continuing penalty for each day the default continues. And it inserted sections 124A and 124B.

Section 124A, adjudication of penalties. The Controller may by order authorise an officer referred to in section 73 to be the adjudicating officer for holding an inquiry and imposing a penalty under the Act, in the prescribed manner, after giving the person concerned a reasonable opportunity of being heard.

In one line

Only three kinds of person may apply for an Indian patent: the true and first inventor, someone to whom the inventor assigned the right to apply, and the legal representative of a person who died holding that right.

In the wording a student can write in an exam: by section 6 of the Patents Act, 1970, an application may be made by any person claiming to be the true and first inventor, by the assignee of such a person in respect of the right to make the application, or by the legal representative of a deceased person who immediately before death was entitled to make it, and any of them may apply alone or jointly with any other person.

Why the Act restricts it

Because the patent is a reward for inventing, not for noticing. If anybody could apply, the first person to read a foreign journal could patent what they read. Section 2(1)(y) says so in terms: the true and first inventor does not include the first importer of an invention into India, or a person to whom an invention is first communicated from outside India.

And because the wrong applicant is a defect that survives grant. Obtaining a patent wrongfully is a ground of opposition under sections 25(1)(a) and 25(2)(a), a ground of revocation under section 64(1)(b), and the trigger for the Controller's power under section 26. Chapters 570 and 580 work them through.

The provision itself

Section 6(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: (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.

Section 6(2). An application under sub-section (1) may be made by any of those persons either alone or jointly with any other person.

Section 2(1)(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.

Broken down

"Claiming to be". Section 6(1)(a) does not require the applicant to prove inventorship at the filing stage. The Controller is not a tribunal of fact about who thought of what. The claim is tested later, in opposition, in revocation, or under section 26.

The assignee, and what must be assigned. Clause (b) is not satisfied by an assignment of the invention in the abstract. It requires an assignment "in respect of the right to make such an application". Section 7(2) then requires proof of that right to be furnished with the application or within the prescribed period.

In one line

An Indian patent application is one invention on one form, filed at the right branch of the patent office, with a specification, a declaration of inventorship and proof of any assignment.

In the wording a student can write in an exam: by section 7 of the Patents Act, 1970, every application for a patent shall be for one invention only, shall be made in the prescribed form and filed in the patent office, shall state that the applicant is in possession of the invention and name the person claiming to be the true and first inventor, and, if not a convention application or an application under the Patent Cooperation Treaty designating India, shall be accompanied by a provisional or a complete specification.

Why the form matters

Because a filing date is a legal position, and it is won or lost on paperwork. Everything in the rest of this book depends on the date: novelty is judged at it, priority is claimed from it, the twenty years run from it, and a rival who filed a day earlier wins. An application that does not comply may not get the date the applicant wanted.

And because "one invention only" decides what has to be split. Section 7(1) is why divisional applications exist at all, and chapter 320 works section 16 through.

The provision itself

Section 7(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.

Section 7(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.

Section 7(1B). The filing date of such an application 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.

Section 7(2). Where the application is made by virtue of an assignment of the right to apply, proof of the right to make the application shall be furnished with the application or within the prescribed period after filing.

Section 7(3). Every application 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 that person 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.

Section 7(4). Every such application, not being a convention application or an application under the Patent Cooperation Treaty designating India, shall be accompanied by a provisional or a complete specification.

In one line

If you are chasing the same invention in another country, you must tell the Indian Controller about it and keep telling them until the patent is granted.

In the wording a student can write in an exam: section 8 of the Patents Act, 1970 requires an applicant who is prosecuting an application for the same or substantially the same invention outside India to file a statement of detailed particulars of that application and an undertaking to keep the Controller informed in writing of the same particulars for every later foreign application, up to the date of grant of the patent in India, and empowers the Controller to require details of the processing of the application abroad.

Why the Act asks for it

Because the examiner cannot search the world. A foreign office may have found a prior art document the Indian examiner will never see, and may have forced the applicant to narrow claims that are still broad in India. Section 8 makes the applicant hand over what other offices have done.

And because the applicant knows and the office does not. The information asymmetry is total, so the Act puts the burden on the party who has the knowledge and backs it with the sharpest sanctions in the statute.

Those sanctions are what make section 8 matter. Non-compliance is a ground of opposition under sections 25(1)(h) and 25(2)(h) and a ground of revocation under section 64(1)(m). It is one of the very few defects that can destroy a granted patent without any argument about the invention at all.

The provision itself

Section 8(1). Where an applicant is prosecuting, alone or jointly, 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 application 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 detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention filed in any country outside India subsequently to the filing of that statement, within the prescribed time.

Section 8(2). At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant 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 the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

In one line

Every patent application is published eighteen months after its earliest date, whether the applicant wants it published or not, and from that moment the world can read it.

In the wording a student can write in an exam: section 11A of the Patents Act, 1970 provides that no application for a patent shall ordinarily be open to the public for eighteen months from the date of filing or the date of priority, whichever is earlier, after which the Controller shall publish it, and that on publication the applicant has the like privileges and rights as if a patent had been granted, though no proceedings for infringement may be instituted until the patent is granted.

Why publication is compulsory

Because publication is the consideration for the monopoly. Chapter 20 works the bargain through. If an applicant could keep the application secret while the examination dragged on, the public would get nothing for years and might get nothing at all if the application were abandoned.

And because the public needs to know what is being claimed. Competitors plan investment around what is and is not free. Pre-grant opposition under section 25(1) is only possible if somebody knows about the application, so publication is what makes that remedy real. Chapter 550 works it.

India had no publication requirement before 2002. Section 11A was inserted by the Patents (Amendment) Act 2002 with effect from 20 May 2003. Before that an application was secret until acceptance, which is why pre-grant opposition in its modern form is also a creature of the 2002 and 2005 amendments.

The provision itself

Section 11A(1). Save as otherwise provided, no application for patent shall ordinarily be opened to the public for such period as may be prescribed.

Section 11A(2). The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of that period, and subject to the provisions of sub-section (3) the Controller shall publish it as soon as possible.

Section 11A(3). Every application shall, on the expiry of the prescribed period, be published, except in three cases: where a secrecy direction is in force under section 35; where the application has been abandoned under section 9(1); and where the application has been withdrawn three months before the prescribed period.

Section 11A(4). In the case of a secrecy direction, the application is published after the expiry of the period prescribed or when the secrecy direction ceases, whichever is later.

Section 11A(5). The publication shall include the particulars of the date of the application, the number, the name and address of the applicant identifying the application, and an abstract.

Section 11A(6). Upon publication, the depository institution shall make the biological material mentioned in the specification available to the public, and the patent office may, on payment of the prescribed fee, make the specification and drawings available to the public.

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Nothing happens to an Indian patent application until somebody asks for it to be examined, and if nobody asks in time the application is treated as withdrawn.

In the wording a student can write in an exam: by section 11B of the Patents Act, 1970, no application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner within the prescribed period, and if no such request is made the application shall be treated as withdrawn by the applicant.

Why examination is not automatic

Because most applications are never worth examining. A large proportion of applications are abandoned once the applicant sees the market, finds the prior art or runs out of money. Examining all of them would waste the office's scarcest resource, which is examiner time.

So India uses deferred examination. The applicant files, publishes, watches the world for a while, and only then decides whether to pay for examination. Japan, Germany and the European Patent Office all work the same way.

And the deferral is a real commercial tool. An applicant who is unsure about a market can leave an application pending and unexamined, which is itself a deterrent to competitors who cannot know what will be granted.

The provision itself

Section 11B(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.

Section 11B(3). In the case of an application in respect of a claim for a patent filed under section 5(2) before 1 January 2005, that is a mailbox application, a request for examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person.

Section 11B(4). If no request is made within the period specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant. Its proviso adds two things: that the applicant may at any time after filing but before grant withdraw the application by a request in the prescribed manner; and that where a secrecy direction has been issued under section 35, the request may be made within the prescribed period from the date of revocation of the direction.

Sub-section (2) was omitted by the Patents (Amendment) Act 2005.

The period, and the change of 2024

Rule 24B(1)(i), as it now stands: a request for examination under section 11B shall be made in Form 18 within thirty-one months from the date of priority of the application or from the date of filing of the application, whichever is earlier.

Rule 24B(1)(ii) applies the same thirty-one months to a request under section 11B(3), and rule 24B(1)(iii) to a request under section 11B(4).

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An examiner searches for earlier patents and publications, reports on whether the application complies with the Act, and the Controller sends the objections to the applicant to answer.

In the wording a student can write in an exam: by section 12 of the Patents Act, 1970 the Controller refers an application on which examination has been requested to an examiner for a report; by section 13 the examiner searches for anticipation by previous publication and by prior claiming; and by section 14, where the report is adverse or requires amendment, the Controller must communicate the gist of the objections to the applicant and, if required, give an opportunity of being heard.

Why examination exists at all

Because a patent granted on a formality is worthless and worse. It clutters the register with rights nobody has tested, and it forces every competitor to litigate to find out whether the right is real. Chapter 210 records that this is exactly what the 1911 Act produced.

And because the applicant cannot be trusted to search against themselves. Not through dishonesty, but because an applicant who has spent four years on an invention will not go looking for the document that destroys it.

But examination does not guarantee anything, and the Act says so in terms. Section 13(4) provides that the examination and investigations under sections 12 and 13 shall not be deemed in any way to warrant the validity of any patent, and that no liability is incurred by the Central Government or any officer by reason of them. The Supreme Court applied the same principle in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, holding that grant and sealing do not guarantee validity, and noting that section 13(4) now says so expressly.

Section 12: the reference and the report

Section 12(1). When a request for examination has been made under section 11B(1) or (3), the application, specification and other documents shall be referred at the earliest by the Controller to an examiner for a report on: (a) whether the application, specification and other documents comply with the Act and the rules; (b) whether there is any lawful ground of objection to the grant; (c) the result of the investigations made under section 13; and (d) any other matter which may be prescribed.

Section 12(2). The examiner shall ordinarily make the report within such period as may be prescribed. Before the 2005 Act this read "a period of eighteen months from the date of such reference".

Section 13: what the examiner searches

Three separate searches, and students must keep them apart.

Section 13(1)(a): anticipation by previous publication. Whether the invention as claimed has been anticipated by publication, before the date of filing 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 1 January 1912. That date is the commencement of the Indian Patents and Designs Act 1911, which chapter 210 works through.

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Between the examiner's report and the grant, the Controller may refuse the application, require it to be amended, deal with anticipation and with potential infringement of an earlier patent, substitute the applicant, and finally hold the applicant to a deadline.

In the wording a student can write in an exam: sections 15 to 21 of the Patents Act, 1970 confer on the Controller the powers to refuse or require amendment, to make orders respecting division and dating, to act where the invention is anticipated or would infringe another patent, to substitute applicants, and to treat an application as abandoned if it is not put in order within the prescribed period.

Section 15: refuse, or require amendment

The provision. Where the Controller is satisfied that the application or any specification or other document filed in pursuance of it does not comply with the requirements of the Act or of any rules made thereunder, the Controller may refuse the application, or may require the application, specification or other documents to be amended to his satisfaction before he proceeds with the application, and refuse the application on failure to do so.

This is the workhorse. Almost every Indian refusal is under section 15, because every substantive objection can be expressed as a failure to comply with a requirement of the Act: a claim lacking novelty does not satisfy section 2(1)(j), a claim to a business method does not satisfy section 3(k), and a specification that does not enable does not satisfy section 10(4).

And the discretion is real. The section gives the Controller a choice between refusing and requiring amendment, and an order that refuses without considering amendment, or without giving reasons, is vulnerable on appeal under section 117A. Chapter 1180 works the appeal through, and chapter 640 works section 80, which requires the Controller to hear a party before deciding against them.

Section 18: anticipation

Section 18(1): refusal. Where it appears to the Controller that the invention so far as claimed has been anticipated in the manner referred to in section 13(1)(a) or section 13(2), that is by an Indian patent specification published before the applicant's filing date or by any other document published anywhere, the Controller may refuse the application unless the applicant either shows that the priority date of the claim is not later than the date on which the relevant document was published, or amends the complete specification to the Controller's satisfaction.

Section 18(2): a reference instead of refusal, for prior claiming. If it appears that the invention is claimed in a claim of another complete specification referred to in section 13(1)(b), the Controller may direct that a reference to that other specification be inserted in the applicant's complete specification by way of notice to the public, unless within the prescribed time the applicant shows that the priority date of his claim is not later than the priority date of the claim in that other specification, or amends the specification.

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If one application claims two inventions, the applicant may split it, and each part keeps the date of the original.

In the wording a student can write in an exam: by section 16 of the Patents Act, 1970, an applicant may at any time before the grant of the patent, of his own motion or to remedy an objection that the claims relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed, and by the Explanation the further application is deemed to have been filed on the date of the first application.

Why the Act allows it

Because section 7(1) says one invention only. An applicant who files a broad specification disclosing three related inventions cannot have three patents on one application. Without section 16, the applicant would have to abandon two of them or file fresh applications that would lose the original date and be defeated by the applicant's own publication.

And because the office needs a way to enforce unity without destroying rights. The Controller can object that the claims relate to more than one invention; the applicant answers by dividing. Nobody loses anything they were entitled to.

The provision itself

Section 16(1). A person who has made an application for a patent 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 application.

Section 16(2). The further application 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 with the first application.

Section 16(3). The Controller may require such amendment of the complete specification of either the original or the further application as may be necessary to ensure that neither includes a claim for any matter claimed in the other.

The Explanation. For the purposes of the Act, the further application and its complete specification shall be deemed to have been filed on the date on which the first application was 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.

Broken down: the four rules of a divisional

One: it must be filed before grant. After grant the parent is no longer an application and there is nothing to divide. An applicant who wants a divisional must file it while the parent is alive, which is why a divisional is often filed on the last day before the parent proceeds to grant.

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An applicant may ask to have their application treated as filed on a later date, but never on an earlier one, and never more than six months later.

In the wording a student can write in an exam: section 17 of the Patents Act, 1970 empowers the Controller, at the request of the applicant made at any time after filing and before the grant of the patent, to direct that the application be post-dated to a specified date, subject to a proviso that no application may be post-dated to a date later than six months from the date on which it was actually made.

Why an applicant would want a later date

It sounds like the wrong direction, and usually it is. A later date is a worse date for prior art: everything published in the interval becomes citable.

But three situations make it worth doing.

One: to buy time on the twelve months under section 9. An applicant who filed with a provisional specification has twelve months to file the complete specification, failing which the application is deemed abandoned under section 9(1). Post-dating the application moves the start of that twelve months, and so moves the deadline.

Two: to escape a defect in the original filing. Where documents had to be returned and refiled, section 17(2) fixes the date by reference to the compliance rather than the original filing.

Three: to align with a related application, so that a family of applications shares a date.

And the price is always the same: everything published in the interval becomes prior art. Post-dating is a trade, not a favour.

The provision itself

Section 17(1). Subject to the provisions of section 9, at any time after the filing of an application and before the grant of the patent, the Controller may, at the request of the applicant made in the prescribed manner, direct that the application be post-dated to such date as may be specified in the request, and proceed with the application accordingly.

The proviso. 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 this sub-section be deemed to have been made.

Section 17(2). Where an application or specification, including drawings, or any other document is required to be amended under section 15, the application, 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 it is returned to the applicant, on the date on which it is refiled after complying with the requirement.

Broken down

Only forward, and only on request, under this section. Section 17(1) speaks of post-dating alone, and there is no power in it to move an application backwards.

In one line

When the office is satisfied, the patent is granted, it is dated as of the day the application was filed, it runs throughout India, and it is for one invention.

In the wording a student can write in an exam: by section 43 of the Patents Act, 1970 a patent is granted as expeditiously as possible where the application is found in order for grant and has not been refused or found to contravene the Act; by section 45 every patent is dated as of the date on which the application was filed; and by section 46 every patent is in the prescribed form, has effect throughout India, and is granted for one invention only.

Why the Act separates grant, date and effect

Because they answer three different questions. When does the right come into existence? What date does it bear? Where and over what does it operate? An examiner asks about all three separately.

And because the answers do not coincide. A patent granted in 2029 on an application filed in 2026 is dated 2026, runs its twenty years from 2026 under section 53, and can be enforced only from its date of publication under section 45(3). Three different dates in one right.

Section 43: the grant

Section 43(1). Where an application has been found to be in order for grant and either the application has not been refused by the Controller by virtue of any power vested in him by the Act, or has not been found to be in contravention of any of its provisions, 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.

Section 43(2). On the grant of a 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.

Two things to notice. The grant is not discretionary once the application is in order: the Act says "shall be granted". And the file wrapper becomes public on grant, which is why prosecution history is available in Indian litigation and is used, for example, in the ever-greening cases chapter 1240 works through.

Section 44: the applicant who died before grant

The provision. Where at any time after a patent has been granted the Controller is satisfied that the person to whom it 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 that person's name the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.

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Every Indian patent is granted on four standing conditions: the Government may make or use it for its own use, anybody may use it for experiment or research or teaching, and a patented medicine may be imported by the Government for its own dispensaries and hospitals.

In the wording a student can write in an exam: section 47 of the Patents Act, 1970 provides that the grant of a patent is subject to the conditions in its four clauses, which permit Government use, use for experiment or research including imparting instruction to pupils, and importation of a patented medicine or drug by the Government for its own use or for distribution in specified medical institutions.

Why these conditions and not others

Because they are the price of the grant, not exceptions to it. Section 48 opens with the words "Subject to the other provisions contained in this Act and the conditions specified in section 47", so section 47 is built into the right rather than sitting outside it. Chapter 660 works section 48.

And because each answers a different public need. The State must be able to procure what it needs. Researchers must be able to study what has been patented, otherwise the disclosure is worthless. And a public hospital must be able to obtain a patented medicine.

They also cost the patentee nothing in money terms and require no procedure. Unlike a compulsory licence under section 84, which requires an application, a hearing and a royalty, section 47 operates automatically and without payment.

The provision itself

Section 47. 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 patented process, 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 patented process, may be made or used, and any patented process 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 medical institution which the Central Government may, having regard to the public service it renders, specify by notification in the Official Gazette.

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Every Indian patent lasts twenty years from the day the application was filed, and it dies earlier if the renewal fee is not paid.

In the wording a student can write in an exam: by section 53 of the Patents Act, 1970, subject to the provisions of the Act, the term of every patent granted after the commencement of the Patents (Amendment) Act, 2002, and of every patent which had not expired and had not ceased to have effect on that commencement, shall be twenty years from the date of filing of the application for the patent.

Why twenty years, and why from filing

Twenty years is TRIPS article 33. It provides that the term of protection available shall not end before the expiration of a period of twenty years counted from the filing date. India adopted exactly twenty and no more, and chapter 160 works the treaty through.

From filing, not from grant, and that is the harsh part. Examination can take four or five years, and every month of it comes out of the patentee's own monopoly. A patent granted in year six has fourteen years of enforceable life left. This is why expedited examination under rule 24C matters commercially, and chapter 290 works it.

And it replaced a much shorter and more complicated term. Before 20 May 2003 the term was five years from sealing or seven years from the date of the patent, whichever was shorter, for a process patent for a food, medicine or drug, and fourteen years from the date of the patent for anything else. Chapter 220 works the original provision, and chapter 230 works the amendment.

The provision itself

Section 53(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, shall be twenty years from the date of filing of the application for the patent.

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

Section 53(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.

Section 53(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 the expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.

In one line

A patent that died because the renewal fee was not paid can be brought back within eighteen months, if the failure was unintentional and the owner did not delay in asking.

In the wording a student can write in an exam: by section 60 of the Patents Act, 1970, where a patent has ceased to have effect by reason of failure to pay a renewal fee, the patentee or his legal representative may within eighteen months from the date on which the patent ceased to have effect apply for its restoration, setting out fully the circumstances which led to the failure.

Why the Act allows a second chance

Because lapse is usually an accident. Renewal fees are paid by agents, dates are diarised, and a change of address or of attorney will lose a patent that the owner very much wanted to keep. The consequence, the permanent loss of an asset worth years of investment, is out of all proportion to the mistake.

But third parties may have relied on the lapse. A competitor who saw the patent cease and started manufacturing has done nothing wrong. Section 62 exists to protect that competitor, and it is the reason restoration is not simply a matter of paying the money late.

Section 60: the application

Section 60(1). Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within such period as may be allowed under section 142(4), the patentee or his legal representative, and where the patent was held by two or more persons jointly, then with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for restoration.

Section 60(3). The application shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require such further evidence as he thinks necessary.

Sub-section (2) was omitted in 2002, and the period in sub-section (1) was raised from one year to eighteen months by the same Act.

Note who may apply. The patentee or a legal representative. A licensee cannot apply, and a competitor certainly cannot. A joint owner may apply alone only with the Controller's leave.

Section 61: the procedure

Section 61(1). If, after hearing the applicant where the applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in making the application, he shall publish the application in the prescribed manner; and within the prescribed period any person interested may give notice of opposition on either or both of two grounds: (a) that the failure to pay was not unintentional; or (b) that there has been undue delay in making the application.

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If an invention matters to the defence of India, the Controller may forbid its publication, and no Indian resident may file abroad first without permission.

In the wording a student can write in an exam: Chapter VII of the Patents Act, 1970, sections 35 to 42, empowers the Controller to give directions prohibiting or restricting publication of an invention relevant for defence purposes, requires those directions to be reconsidered by the Central Government at intervals of six months, and by section 39 forbids a person resident in India from applying for a patent outside India without a written permit unless an Indian application has been on file for at least six weeks with no secrecy direction in force.

Why a patent statute contains a security chapter

Because the patent system is a publication system. Section 11A publishes every application at eighteen months, and section 43(2) opens the whole file on grant. For most inventions that is exactly what the bargain requires. For a guidance system or a submarine hull coating it is a security problem.

And because filing abroad is publishing abroad. An Indian resident who files first in a foreign office puts the invention into a foreign government's hands before India has seen it. Section 39 exists to stop that, and it is the reason Indian applicants file in India first as a matter of routine.

Sections 35 and 36: the direction and its review

Section 35(1). Where in respect of an application 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 the invention otherwise appears to him to be so relevant, he may give directions prohibiting or restricting the publication of information with respect to the invention or the communication of such information.

Section 35(2). The Controller must notify the Central Government of the application and the directions. The Central Government considers whether publication would be prejudicial to the defence of India, and if it would not, gives notice to the Controller, who revokes the directions and notifies the applicant.

Section 35(3). Where the Central Government is of opinion that an invention on which the Controller has given no direction is relevant for defence purposes, it may at any time before grant notify the Controller, and sub-section (1) then applies as if the invention were of a notified class.

Section 36(1). Whether the invention continues to be relevant for defence purposes shall be reconsidered by the Central Government at intervals of six months, or on a request by the applicant found reasonable by the Controller. If it appears that publication would no longer be prejudicial to the defence of India, or, in the case of a foreign applicant, that the invention has been published outside India, the Central Government shall forthwith notify the Controller to revoke the direction.

In one line

If you improve your own patented invention, you may take a second patent that costs no renewal fee, needs no inventive step over your own patent, and dies when the first one does.

In the wording a student can write in an exam: by section 54 of the Patents Act, 1970, where an application is made for a patent in respect of an improvement in or modification of an invention described in a complete specification already filed by the same applicant or patentee, the Controller may on request grant the patent as a patent of addition.

Why the Act offers this

Because an improvement on your own invention is in an awkward position. Your own patent is prior art against you, at least for novelty. An improvement that is obvious in the light of your own disclosure fails the inventive step test, and you cannot patent it as an ordinary patent.

That is unfair and it is bad policy. An inventor who keeps improving a machine should not be worse off than a stranger. And forcing the inventor to file the improvement as a separate ordinary patent would give a fresh twenty years, which would be ever-greening by another name.

The patent of addition solves both. It is not defeated by the main invention, it has no separate term, and it costs no separate renewal fee.

Section 54: when it may be granted

Section 54(1). Where an application is made for a patent in respect of any improvement in or modification of an invention described or disclosed in a complete specification already filed, called the main invention, and the applicant also applies or has applied for a patent for that invention or is the patentee in respect of it, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.

Section 54(2). Where an improvement or modification is already the subject of an independent patent, and the patentee of that patent is also the patentee of the main invention, the Controller may on the patentee's request, by order, revoke the independent patent and grant a patent of addition in respect of the improvement, bearing the same date as the date of the patent so revoked.

Section 54(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 for the main invention.

Three points follow. The applicant must ask; the Controller does not impose it. The same person must hold or be applying for both. And a patent of addition cannot pre-date its parent.

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An invention is new if nothing anywhere in the world, before the filing date, already told the public how to do it.

In the wording a student can write in an exam: novelty is the first requirement of an invention under section 2(1)(j) of the Patents Act, 1970, and section 2(1)(l) defines a new invention as one 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 the patent application with complete specification, that is, the subject matter has not fallen into the public domain or does not form part of the state of the art.

Why novelty is the first question

Because the State cannot give away what the public already has. A patent takes something out of common use and gives it to one person. If the public already had it, the grant is a taking, not a bargain.

And because it is the cheapest question to answer. Novelty is tested against a single document at a time. If one earlier disclosure contains everything claimed, the claim is dead and nothing else needs to be argued. That is why an examiner searches for novelty first.

What the state of the art includes

Everything made available to the public before the filing date, anywhere in the world, by any means. India applies absolute novelty, which means there is no geographical limit and no limit on the form of disclosure.

Four ways the art becomes public.

Publication in a document. A patent specification, a journal article, a thesis in a university library, a product manual, a catalogue, a website. Section 13(2) makes the examiner search for publication "in India or elsewhere in any document".

Prior use. Working the invention in public. Section 2(1)(l) speaks of the subject matter having been "used in the country or elsewhere in the world".

Prior public knowledge. The Supreme Court in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, held that if the manner of manufacture was publicly known, used or practised in the country before or at the date of the patent, that negatives novelty, and that prior public knowledge may be by word of mouth or by publication through books or other media. So oral disclosure counts.

An earlier-filed but later-published Indian application. This is not really "the art" at the filing date at all, since nobody could have read it. Section 13(1)(b) brings it in anyway, as prior claiming, and chapter 300 works it. It exists so that two applicants cannot both get a patent for the same thing.

The rules of comparison

One document at a time. A claim is anticipated only if a single disclosure contains every feature of it. Two documents that together contain everything do not destroy novelty; they may destroy the inventive step, and chapter 420 works that.

In one line

Six sections protect an inventor whose invention got out early through theft, through a Government inquiry, through an exhibition or a learned paper, through a public trial, or through their own provisional specification.

In the wording a student can write in an exam: Chapter VI of the Patents Act, 1970, sections 29 to 34, provides that an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the matters set out in those sections, which are the Indian equivalent of a grace period.

Why the Act needs them

Because absolute novelty is a brutal rule. Any disclosure anywhere destroys the claim, and an inventor can lose everything through an accident that is nobody's fault or somebody else's wrong.

And because the four situations the Chapter covers are ones where the public gained nothing. A stolen disclosure, a confidential submission to Government, a display in a hall for a fortnight, a trial that had to be done outdoors: in none of them did the invention really enter the public stock of knowledge in a way that should defeat the inventor.

Read the whole Chapter as one idea: a disclosure that was not the inventor's fault, or was necessary, or was theirs and was promptly followed by an application, does not count.

Section 29: previous publication

Section 29(1): the 1912 line. An invention shall not be deemed anticipated by reason only that it was published in a specification filed in pursuance of an Indian patent application dated before 1 January 1912. That is the commencement of the Indian Patents and Designs Act 1911, and pre-1912 Indian specifications are simply out of account.

Section 29(2): publication obtained from the inventor without consent. An invention shall not be deemed anticipated by reason only that it was published before the priority date, if the patentee or applicant proves (a) that the matter published was obtained from him, or from a person from whom he derives title, and was published without his consent; and (b) where he learned of the publication before the date of the application, or before the date of the application for protection in a convention country, that the application was made as soon as reasonably practicable thereafter.

Its proviso. Sub-section (2) does not apply if the invention was, before the priority date, commercially worked in India, otherwise than for the purpose of reasonable trial, by the patentee or applicant or a person from whom he derives title, or by any other person with their consent.

Section 29(3): a rival's application in contravention of the inventor's rights. Where a complete specification is filed by the true and first inventor or a person deriving title from him, the invention shall not be deemed anticipated by reason only of another application for the same invention made in contravention of the rights of that person, or by reason only that after the date of filing that other application the invention was used or published, without that person's consent, by that other applicant or by any other person in consequence of a disclosure by that applicant.

In one line

An invention must be more than a step a competent person in the field would have taken anyway.

In the wording a student can write in an exam: by section 2(1)(ja) of the Patents Act, 1970, "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.

Why novelty is not enough

Because anything can be made new by changing something trivial. A chair with four legs is known; a chair with four legs painted blue is new. If novelty were the only test, the register would fill with rights over trivialities and every ordinary act of manufacture would risk infringement.

And because the public gets nothing for a trivial change. The bargain in chapter 20 is a monopoly for a contribution. A change any competent engineer would have made contributes nothing that the public did not already effectively have.

So every patent system has a second, harder test. It is the hardest question in patent law, because it asks a court to decide what somebody would have thought of, after the event, knowing the answer.

The provision itself

Section 2(1)(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".

The definition has two requirements joined by "and".

First requirement, with an internal choice. The feature must involve technical advance as compared to the existing knowledge, or have economic significance, or both.

Second requirement. That feature must make the invention not obvious to a person skilled in the art.

Both must be satisfied. Economic significance alone will not save a change that a skilled person would obviously have made. Technical advance alone will not save one either. The advance or the significance is what the feature must have; unobviousness is what it must produce.

The leading case: Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries

Facts. Both parties made brass and German silver utensils at Mirzapur. In 1951 a partner of Hindustan Metal Industries claimed to have invented a device and method for holding utensils on a lathe, which he said improved convenience, speed, safety and finish over the older method, in which utensils flew off the headstock during manufacture. He filed specifications and claims and obtained a patent under the Indian Patents and Designs Act 1911, effective 13 December 1951, as assignee. In September 1952 he learned that Biswanath Prasad Radhey Shyam was using the same method, served notice, and in 1953 sued for a permanent injunction. The defendant resisted, counter-claimed, and petitioned under section 26 of the 1911 Act for revocation, saying the alleged invention was neither a manner of new manufacture nor an improvement involving any inventive step or novelty, having regard to what was already known or used before the patent. A single judge dismissed the suit and revoked the patent; a Division Bench of the Allahabad High Court reversed.

In one line

The invention must be something that can actually be made or used in an industry, which in India is a low hurdle and not a test of how useful it is.

In the wording a student can write in an exam: by section 2(1)(ac) of the Patents Act, 1970, "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry, and it is the third of the three requirements of an invention under section 2(1)(j).

Why the requirement exists

Because a patent is for a practical thing. The patent system is not a register of ideas. It exists to bring workable technology into public use, and something that cannot be made or used is not technology.

And because it excludes the impossible without needing a separate rule. A machine that cannot work is not capable of being used in an industry. That overlaps with section 3(a), which excludes an invention obviously contrary to well established natural laws, and chapter 80 works that.

But it is deliberately a low hurdle in India. The Act does not ask whether the invention is commercially viable, whether anybody would buy it, or whether it works better than what exists.

The provision itself

Section 2(1)(ac). "'capable of industrial application', in relation to an invention, means that the invention is capable of being made or used in an industry."

Three words carry it. "Capable" means it need not have been made; the specification must simply show that it can be. "Made or used" is disjunctive, so a process that is used but not made satisfies it. And "industry" is read broadly, covering manufacture, agriculture, mining, construction and services, which is why a method of agriculture is excluded by the separate rule in section 3(h) rather than by this definition.

Utility under the 1911 Act, and why it is different

The Indian Patents and Designs Act 1911 had no usefulness requirement in its definition of invention, and the courts read one in. The Supreme Court explained why in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511: the 1911 Act did not specify the requirement of being useful in the definition, but courts always took the view that a patentable invention, apart from being a new manufacture, must also be useful, the foundation for that judicial interpretation being that section 26(1)(f) of the 1911 Act recognised lack of utility as one of the grounds on which a patent could be revoked. Chapter 420 works the case in full.

The 1970 Act took a different route. It did not adopt a general usefulness requirement. It requires capability of industrial application, and it deals with the failures utility used to catch through other provisions.

In one line

Finding out how the world already works is a discovery and cannot be patented; making something out of that knowledge is an invention and can be.

In the wording a student can write in an exam: section 3(c) of the Patents Act, 1970 provides that the mere discovery of a scientific principle or the formulation of an abstract theory, or the discovery of any living thing or non-living substance occurring in nature, is not an invention within the meaning of the Act.

Why the line is drawn here

Because the laws of nature belong to everybody. Gravity, the properties of copper and the structure of a naturally occurring protein were there before anyone looked. Granting a monopoly over them would take from the public something it always had.

And because a discovery is not a technology. The patent bargain in chapter 20 is a monopoly in exchange for teaching the public how to do something. A discovery tells the public that something is so; it does not tell them how to make anything.

But the line is not where laypeople assume. Almost every invention rests on a discovery, and the law does not refuse a patent because a discovery underlies it. It refuses a patent for the discovery as such.

The word that does the work

"Mere". Section 3(c) excludes the mere discovery of a scientific principle, and section 3(d) the mere discovery of a new form, property or use of a known substance. Take the word away and the clauses would exclude the whole of chemistry.

The rule, stated once. A scientific principle discovered and then applied to produce a practical result is patentable, because what is claimed is the application and not the principle.

Three illustrations of the same rule. The law that a current through a coil produces a magnetic field is not patentable; an electric motor built on it is. The property that a particular polymer softens at sixty degrees is not patentable; a heat-shrink sleeve using that property is. That a plant contains an antifungal compound is not patentable; a process for extracting and formulating it is.

What "manner of manufacture" meant, and why it still matters

The 1911 Act defined an invention as any manner of new manufacture, taking the phrase from the English Statute of Monopolies 1624. Every Indian case before 1972, and several after, asks whether the claim is a manner of manufacture.

The 1970 Act does not use the phrase. Section 2(1)(j) speaks of a new product or process involving an inventive step and capable of industrial application. So a modern answer should reason from section 2(1)(j) and section 3, and should treat "manner of manufacture" as the older formulation of the same idea.

In one line

A product patent covers the thing however it is made; a process patent covers only the way of making it, and the thing made directly by that way.

In the wording a student can write in an exam: by section 48 of the Patents Act, 1970, where the subject matter of the patent is a product, the patentee has the exclusive right to prevent third parties without consent from making, using, offering for sale, selling or importing that product in India; and where the subject matter is a process, from using that process and from using, offering for sale, selling or importing the product obtained directly by that process in India.

Why the distinction decides cases

Because it decides who can be sued. A product patent stops everybody who deals in the thing. A process patent stops only those who use the patented route, and those who deal in what that route produced.

And because it decides what an inventor gets for the same research. Two inventors may spend the same years on the same molecule: one obtains the compound claim, the other only a synthesis. The first has a monopoly on the molecule; the second has a monopoly on one way to it.

The two kinds of claim

A product claim. "A composition comprising X, Y and Z in the proportions..." or "A brake caliper comprising a housing, a piston and a heat sink arranged so that...". It covers the thing itself, and it is infringed by anybody who makes, uses, offers for sale, sells or imports the thing in India, whatever route they took to it.

A process claim. "A process for preparing X comprising heating A with B at 120 degrees in the presence of a catalyst C." It covers the steps. Under section 48(b) it also covers the product obtained directly by that process, which is what makes a process claim worth having at all.

And there is a third shape a student should recognise. A product-by-process claim, "a fibre obtained by the process of claim 1". It is a product claim whose novelty is supplied by the way the product is made, and Indian practice treats the process features as limiting.

What "obtained directly by that process" means

It is the reach of a process claim, and it is narrower than it looks. The product must come directly from the patented process. If the process makes an intermediate and the intermediate is then chemically transformed into something else, the final product is not obtained directly by the process, and dealing in it does not infringe.

The practical consequence. A competitor who uses the patented process to make an intermediate abroad, converts it there, and imports the converted product, is outside section 48(b). Whether that is a loophole or a proper limit is a real argument, and it is the reason a chemical patentee always seeks a compound claim as well as a process claim.

In one line

For thirty-three years India refused to patent medicines and chemicals themselves, allowing patents only on ways of making them, and that decision built the Indian pharmaceutical industry.

The name for it. From 1970 to 2004 India ran a process patent regime in food, medicine, drug and chemical inventions, and from 1 January 2005 it runs a product patent regime in all of them. Chapter 450 works the distinction between the two kinds of claim; this chapter is about why India chose the first and what made it change.

In the wording a student can write in an exam: section 5 of the Patents Act, 1970, as originally enacted, provided that in the case of inventions claiming substances intended for use or capable of being used as food, medicine or drug, or relating to substances prepared or produced by chemical processes, no patent should be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture were patentable; and it was omitted by the Patents (Amendment) Act 2005 with effect from 1 January 2005.

The provision, in its own words

Section 5(1) as enacted. In the case of inventions (a) claiming substances intended for use, or capable of being used, as food or as medicine or drug, or (b) relating to substances prepared or produced by chemical processes, including alloys, optical glass, semi-conductors and inter-metallic compounds, no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable.

Section 5(2), inserted in 1999. Notwithstanding sub-section (1), a claim for a patent of an invention for a substance itself intended for use, or capable of being used, as medicine or drug, except a medicine or drug specified under section 2(1)(l)(v), may be made and shall be dealt with, without prejudice to the other provisions of the Act, in the manner provided in Chapter IVA. Chapter 470 works this.

The reasoning behind it

The Ayyangar report supplied it, and chapter 220 works the report. The argument in three steps.

Step one: a product patent on a medicine is a monopoly on the medicine. Nobody may make it by any route, so the price is whatever the patentee sets, and India in the 1960s had some of the highest medicine prices in the world while having one of the poorest populations.

Step two: a process patent leaves the field open to invention. A rival who devises a different synthesis may make and sell the same medicine. Competition returns, prices fall, and the country gets a chemical industry that is good at process research.

Step three: India needed process skill more than it needed molecules. A country with a small research base could not realistically discover new drugs in 1970. It could learn to make known ones cheaply, and that is exactly what happened.

In one line

Between 1995 and 2005 India had to accept applications for medicine patents it could not yet grant, keep them in a mailbox, and give some applicants a temporary right to sell.

In the wording a student can write in an exam: article 70(8) and (9) of TRIPS required a member which did not make product patent protection available for pharmaceutical and agricultural chemical products on 1 January 1995 to provide a means by which applications could be filed and, in defined circumstances, to grant exclusive marketing rights, and India gave effect to that obligation by the Patents (Amendment) Act 1999, which inserted section 5(2) and Chapter IVA.

The obligation

TRIPS article 70(8). Where a member does not make available, as of the date of entry into force of the Agreement, patent protection for pharmaceutical and agricultural chemical products, that member shall provide a means by which applications for patents for such inventions can be filed from that date; apply to those applications, as of the date of application of the Agreement, the criteria for patentability as if they were applied on the date of filing or of priority; and provide patent protection from the grant of the patent for the remainder of the patent term counted from the filing date.

TRIPS article 70(9). Where a product is the subject of such an application, exclusive marketing rights shall be granted for a period of five years after obtaining marketing approval in that member, or until a product patent is granted or rejected, whichever is shorter, provided that a patent application has been filed and a patent granted for that product in another member and marketing approval obtained in that other member.

What the two together mean. India could keep its process-only regime until 2005, but it had to hold the applications in a queue so that no priority was lost, and it had to give a limited commercial right in the meantime.

What India did, and did not do

It did nothing for four years. The mailbox was operated administratively for a period under an Ordinance that lapsed, and no statutory provision was in force.

Two complaints were brought to the World Trade Organization, by the United States and separately by the European Communities, on the ground that India had not provided the means required by article 70(8) or the exclusive marketing rights required by article 70(9). India lost both.

The Patents (Amendment) Act 1999 followed, operating retrospectively from 1 January 1995. It inserted section 5(2), which allowed a claim for a patent for a substance itself intended for use as a medicine or drug to be made and dealt with in the manner provided by Chapter IVA, and it inserted Chapter IVA to provide for exclusive marketing rights.

In one line

Where a process patent is infringed the plaintiff cannot see inside the defendant's factory, so in two situations the court may order the defendant to prove that its process is different.

In the wording a student can write in an exam: section 104A of the Patents Act, 1970 provides that in a suit for infringement where the subject matter of the patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain a product identical to the product of the patented process is different from the patented process, in the two cases set out in clauses (a) and (b), and subject to the proviso and to sub-section (2).

The problem it solves

A process is invisible from outside. A plaintiff who suspects that a competitor is using its patented synthesis can buy the competitor's product, analyse it, and prove that it is identical. What the plaintiff cannot do is prove what happened inside the factory.

The ordinary rule of evidence would defeat every process patent. He who asserts must prove. If the plaintiff must prove the defendant's process and cannot see it, the patent is worth nothing.

So the burden is reversed, but only on conditions. A blanket reversal would let any patentee force a competitor to disclose its manufacturing methods on a bare allegation, which would turn the provision into a discovery weapon.

The provision itself

Section 104A(1). In any suit for infringement of a patent, where the subject matter of the patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process, if:

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

(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him has been unable through reasonable efforts to determine the process actually used.

The proviso. The patentee, or a person deriving title or interest from him, first proves that the product is identical to the product directly obtained by the patented process.

Section 104A(2). In considering whether a party has discharged the burden imposed by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.

Broken down

The gateway is the proviso, and it comes first in practice. Before anything else the patentee must prove that the defendant's product is identical to the product directly obtained by the patented process. Note the word "directly", which is the same limit that section 48(b) uses and chapter 450 works.

In one line

A specification is the document in which the inventor describes the invention, and it comes in two kinds: a provisional one that buys a date, and a complete one that buys the patent.

In the wording a student can write in an exam: section 9 of the Patents Act, 1970 provides that where an application is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, failing which the application shall be deemed to be abandoned.

Why there are two kinds

Because inventions are not finished when they are first had. An engineer who sees the answer on a Tuesday may need eight months of work before the design is settled. Under absolute novelty, every week of that eight months is a week in which somebody else may file or publish.

So the Act lets the inventor stop the clock early. A provisional specification describes the invention as far as it has gone, secures the filing date, and gives twelve months to complete the work.

And the price is that the date is only as good as the description. A provisional that does not disclose a feature gives no priority for that feature, and chapter 530 works section 11, which fixes priority claim by claim.

The provision itself

Section 9(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 the complete specification is not so filed, the application shall be deemed to be abandoned.

Section 9(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 respect of all such provisional specifications. Its proviso: the twelve months shall be reckoned from the date of filing of the earliest provisional specification.

Section 9(3). Where an application, not being a convention or Treaty application, is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing, direct that such specification shall be treated as a provisional specification and proceed with the application accordingly.

Section 9(4). Where a complete specification has been filed in pursuance of an application accompanied by a provisional specification, or by a specification treated as provisional under sub-section (3), 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.

In one line

A complete specification must describe the invention fully, disclose the best method the applicant knows, end with claims, and carry an abstract.

In the wording a student can write in an exam: section 10(4) of the Patents Act, 1970 requires every complete specification to fully and particularly describe the invention and its operation or use and the method by which it is to be performed, to disclose the best method of performing the invention known to the applicant and for which he is entitled to claim protection, to end with a claim or claims defining the scope of the invention for which protection is claimed, and to be accompanied by an abstract.

Why the Act is prescriptive about a document

Because the specification is the consideration for the patent. Chapter 20 works the bargain. A monopoly is granted in exchange for a teaching, and if the teaching is inadequate the public has paid for nothing.

And because the specification does two jobs at once. It teaches, through the description; and it defines, through the claims. A document that teaches beautifully and claims vaguely gives the public knowledge and gives the patentee an unenforceable right. One that claims precisely and teaches nothing gives a monopoly for no consideration.

Section 10 is drafted for both jobs, and section 64 makes failure at either a ground of revocation, which chapter 1030 works.

Sub-sections (1) to (3): every specification

Section 10(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.

Section 10(2). Subject to any rules, 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 the Act to a specification shall be construed accordingly.

Section 10(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.

Note the contrast between (2) and (3). Drawings form part of the specification; models and samples do not. So a feature shown only in a drawing is disclosed, and a feature shown only in a model is not.

Section 10(4): the four requirements of a complete specification

Clause (a): full and particular description. It must fully and particularly describe the invention and its operation or use and the method by which it is to be performed. This is the sufficiency requirement, and chapter 520 works it.

In one line

The claims are the numbered sentences at the end of a specification that say exactly what the patentee owns, and everything else in the document exists to support them.

In the wording a student can write in an exam: by section 10(4)(c) of the Patents Act, 1970 every complete specification shall end with a claim or claims defining the scope of the invention for which protection is claimed, and by section 10(5) the claims 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.

Why the claims and not the description define the monopoly

Because a description tells you what the inventor did, and a claim tells you what nobody else may do. They are different tasks. A description can wander through examples, alternatives and background. A monopoly cannot.

And because the public needs a boundary it can read. A competitor deciding whether to invest must be able to look at the claims and know whether the plan infringes. That is only possible if the claims, and not the whole document, fix the limit.

The Supreme Court stated the rule of construction in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511: the proper way to construe a specification is to first read the description of the invention and then see the claims, for a patentee cannot claim more than they desire to patent. So the description is read for context, and the claims are read for scope.

The anatomy of a claim

A claim is one sentence. However long, it has no full stop until the end. That is a drafting convention, not a rule of law, and it exists so that the claim reads as a single indivisible definition.

Three parts, in the usual form.

The preamble. "A brake caliper for a bicycle, comprising" or "A process for preparing compound X, comprising". It states what kind of thing is claimed and, often, its purpose.

The transition. "Comprising" is open: the claim covers anything that has the listed features and may have more. "Consisting of" is closed: the claim covers only what has exactly the listed features. This one word decides many infringement cases.

The body. The features, each one a limitation. Every feature narrows the claim and every feature must be present in an infringing article.

The counting rule that follows. More features means a narrower claim, easier to obtain and harder to infringe. Fewer features means a broader claim, harder to obtain and easier to infringe. That trade-off is the whole art of drafting.

In one line

The specification must teach a skilled reader how to do the invention, and it must teach the best way the applicant knows.

In the wording a student can write in an exam: section 10(4)(a) and (b) of the Patents Act, 1970 require a complete specification to fully and particularly describe the invention and its operation or use and the method by which it is to be performed, and to disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection.

Why insufficiency is fatal

Because the disclosure is the price. Chapter 20 works the bargain. A patentee who takes twenty years of exclusivity and gives a document nobody can work from has taken without paying.

And because the Act enforces it three times over. Insufficiency is a ground of opposition under sections 25(1)(g) and 25(2)(g), a ground of revocation under section 64(1)(h), and, in the form of failure to disclose the best method, a further ground under section 64(1)(h) as well. Chapters 570 and 1030 work them.

The result is that a patent can be perfectly novel, perfectly inventive and still worthless. Sufficiency is a wholly separate attack, and a defendant who cannot win on the prior art will very often plead it.

The four requirements packed into section 10(4)

One: fully and particularly describe the invention. What the invention is.

Two: describe its operation or use. What it does and how it is used.

Three: describe the method by which it is to be performed. How to make or carry out the invention. This is the enablement requirement, and it is the heart of sufficiency.

Four: disclose the best method known to the applicant. Not any workable method, but the best one the applicant knows and is entitled to claim protection for.

The fourth is peculiar to a small number of systems and India is one of them. Many countries require enablement and not best method. India requires both, which makes an Indian specification a fuller document and gives a defendant an extra line of attack.

The test: who reads it, and when

The reader is the person skilled in the art, the same notional person as in the inventive step enquiry, and chapter 420 works that. They bring the common general knowledge of the field and no inventive capacity.

The time is the filing date of the complete specification. A specification that was insufficient when filed is not saved by later knowledge, and one that was sufficient then is not made bad by later advances.

The standard is undue burden. The skilled reader may have to do routine work: ordinary trial, calibration, selection among known alternatives. They may not have to invent, and they may not have to carry out a research programme.

In one line

Every claim in a specification has its own priority date, and it is the date of the earliest document that fairly supports it.

In the wording a student can write in an exam: section 11(1) of the Patents Act, 1970 provides that there shall be a priority date for each claim of a complete specification, and sub-sections (2) to (7) fix that date by reference to the earlier specification on which the claim is fairly based.

Why priority is per claim and not per patent

Because a specification is written over time. A provisional in March, a second provisional in July, a complete specification the following February: each adds something, and the claims that rest on the March document deserve the March date while the claims that rest only on the February document cannot have it.

And because prior art is judged at the priority date. Chapter 400 works the state of the art. A document published in October is prior art against a claim with a February date and not against one with a March date. So a single patent can be valid in part and invalid in part, and section 114 gives relief for infringement of a partially valid specification, which chapter 1110 works.

The provision itself

Section 11(1). There shall be a priority date for each claim of a complete specification.

Section 11(2). Where a complete specification is filed in pursuance of a single application accompanied by a provisional specification, or by a specification treated as provisional under section 9(3), and the claim is fairly based on the matter disclosed in that specification, the priority date of that claim shall be the date of filing of the relevant specification.

Section 11(3). Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications, and the claim is fairly based on the matter disclosed (a) in one of those specifications, the priority date is the date of filing of the application accompanied by that specification; (b) partly in one and partly in another, the priority date is the date of filing of the application accompanied by the specification of the later date.

Section 11(3A), inserted in 2005. 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.

Section 11(4). Where the complete specification has been filed in pursuance of a further application under section 16, and the claim is fairly based on the matter disclosed in any of the earlier specifications, provisional or complete, the priority date shall be the date of filing of the specification in which the matter was first disclosed.

In one line

A specification may be amended only to narrow, to correct or to explain, and never to claim something the original did not disclose.

In the wording a student can write in an exam: by section 59(1) of the Patents Act, 1970, no amendment of an application, a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment 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 before the amendment, or that any claim as amended would not fall wholly within the scope of a claim before the amendment.

Why amendment is allowed at all, and why it is fenced

Allowed, because prosecution is a negotiation. The examiner cites prior art the applicant had not found, and the claims must be narrowed to distinguish it. Without amendment every objection would mean refusal.

Fenced, because the public reads the specification. A competitor who read a published application and concluded that its own product was outside the claims must not find, three years later, that the claims have grown to cover it. The date at which the public reads is the publication date, and an amendment that broadens defeats that reliance.

So the whole of the law is: narrower, never wider.

Section 59: the limits

Section 59(1) contains three separate prohibitions.

One: the permitted forms. No amendment shall be made except by way of disclaimer, correction or explanation. A disclaimer gives something up. A correction fixes an error. An explanation clarifies without adding.

Two: the purpose. No amendment shall be allowed except for the purpose of incorporation of actual fact.

Three: the two effects that are forbidden. No amendment of a complete specification shall be allowed the effect of which would be (i) that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment; or (ii) that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

Limb (i) forbids new matter. Limb (ii) forbids broadening. They are different tests and both must be satisfied. A claim can be narrower than the original and still add matter, for example by adding a feature taken from nowhere; that fails limb (i) though it passes limb (ii).

Section 59(2), after grant. Where after the date of grant an amendment of the specification or related documents is allowed by the Controller or by the High Court, (a) the amendment shall for all purposes be deemed to form part of the specification; (b) the fact of amendment shall be published as expeditiously as possible; and (c), in substance, the right of the patentee to make the amendment shall not be called in question except on the ground of fraud.

In one line

Once an application is published and before the patent is granted, anybody at all may write to the Controller and object.

In the wording a student can write in an exam: by section 25(1) of the Patents Act, 1970, 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, on the eleven grounds set out in clauses (a) to (k) and on no other ground, and the Controller shall, if requested by that person to be heard, hear him and dispose of the representation in the prescribed manner and within the prescribed period.

Why an outsider is let in before grant

Because the examiner cannot know everything. A competitor in the same industry knows what was on sale, what was published in an obscure trade journal, and what everybody in the trade had been doing for years. The examiner knows what a database search returns.

And because a bad patent is far cheaper to stop than to remove. A pre-grant representation costs a letter. A revocation petition after grant costs years of litigation, and in the meantime the patent is being enforced.

India's pre-grant opposition is unusually open. "Any person" means any person: no interest need be shown, and public interest groups have used it, particularly in the pharmaceutical field. Post-grant opposition is confined to a "person interested", and that difference is examined constantly.

The provision itself

Section 25(1). Where an application 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 grounds in clauses (a) to (k), but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of the representation in such manner and within such period as may be prescribed.

Three limits are built into that sentence. The window is publication to grant. The form is a written representation. And the grounds are closed.

The eleven grounds, in outline

Chapter 570 works all eleven in full, because they are the same eleven for a pre-grant representation under section 25(1) and a post-grant opposition under section 25(2), and it would be waste to state them twice. What matters here is which of them an outsider can realistically run before grant.

In one line

For one year after a patent is granted, anybody with a real interest may ask the Controller to revoke it, and a Board of officers examines the objection.

In the wording a student can write in an exam: by section 25(2) of the Patents Act, 1970, at any time after the grant of a patent but before the expiry of a period of one year from the date of publication of grant, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the eleven grounds in clauses (a) to (k) and on no other ground.

Why a second bite is given after grant

Because pre-grant opposition happens too early for some objections. A competitor may not know that a patent matters until the patentee starts enforcing it, and that usually happens after grant.

Because the Controller has more machinery available. Section 25(3) creates an Opposition Board, which examines the notice and makes recommendations. Nothing of the kind exists before grant.

And because revocation under section 64 is slower and dearer. A post-grant opposition is decided by the Controller. A revocation petition goes to the High Court. For a competitor with a good prior art document and no wish for a five-year suit, the opposition is the better route, and the one-year window is the price.

The provision itself

Section 25(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 grounds in clauses (a) to (k), but on no other ground.

Section 25(3). (a) Where such notice is duly given, the Controller shall notify the patentee. (b) On receipt of the notice, 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 the notice with the documents to that Board for examination and submission of its recommendations to the Controller. (c) Every Opposition Board shall conduct the examination in accordance with such procedure as may be prescribed.

Section 25(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.

Section 25(5). While passing an order under sub-section (4) in respect of the ground 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.

In one line

The eleven grounds of opposition and the seventeen grounds of revocation overlap heavily but not completely, and knowing which are in one list and not the other is what an examination question is testing.

In the wording a student can write in an exam: the grounds of opposition are the same in section 25(1) and section 25(2) of the Patents Act, 1970, being clauses (a) to (k) of each, while the grounds of revocation in section 64(1) run from clause (a) to clause (q) and include several grounds the opposition list does not contain.

The two lists, side by side

Read the table in both directions. Seven grounds are available on revocation and not on opposition: the applicant not being entitled to apply, want of utility, a claim not clearly defined or not fairly based, false suggestion or representation, secret use in India, contravention of section 35 or section 39, and an amendment obtained by fraud. One ground is available on opposition and not on revocation: that a convention application was made out of the twelve months.

The eleven grounds worked

(a) Wrongful obtaining. That the applicant or patentee, or the person under or through whom he claims, wrongfully obtained the invention or any part of it from the opponent or from a person under or through whom the opponent claims. The opponent must be the person from whom it was taken, which is why this ground is narrow. Chapter 580 works section 26, which lets the Controller treat the patent as the opponent's.

(b) Prior publication. That the invention so far as claimed has been published before the priority date of the claim, either in an Indian patent specification filed on or after 1 January 1912, or in India or elsewhere in any other document. Its proviso removes the second limb where the publication does not anticipate by virtue of section 29(2) or (3), which chapter 410 works.

In one line

Where an opponent proves that the applicant took the invention from them, the Controller may treat the patent as the opponent's rather than simply refusing the application.

In the wording a student can write in an exam: section 26 of the Patents Act, 1970 provides that where in an opposition the Controller finds that the invention or a part of it was obtained from the opponent in the manner set out in section 25(1)(a) or 25(2)(a), he may pass the orders in that section, including a direction that the patent stand amended or that an application be treated as the opponent's own.

The problem it answers

Refusal is not a remedy for theft. If the Controller merely refuses the application, the true inventor gets nothing. The invention has been published, so it is in the public domain, and the true inventor cannot file afresh because their own invention is now prior art against them.

So section 26 lets the Controller transfer rather than destroy. The invention stays in the system and the right ends up with the person entitled to it.

The provision itself

Section 26(1). Where in any opposition proceeding the Controller finds that:

(a) the invention, so far as claimed in 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.

Section 26(2). Where an opponent has, before the date of the order requiring amendment under clause (b), filed an application for a patent for an invention which included the whole or a part of the invention held to have been obtained from him, and that application is pending, the Controller may treat that application and specification, so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of the Act relating to the priority dates of claims, 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 opponent's application proceeds as an ordinary application.

Note carefully what section 26 does and does not reach. Clause (a) is expressed by reference to section 25(2)(a), the post-grant ground, and it operates where the Controller revokes the patent. It is not a power exercised on a pre-grant representation. A pre-grant opponent who makes out section 25(1)(a) gets the application refused, and their route to a patent of their own is section 26(2)'s priority rule only if they have an application pending, or section 52 after a revocation.

In one line

An inventor who owns nothing may still insist on being named as the inventor in the patent and in the register, and that is all it gets them.

In the wording a student can write in an exam: section 28 of the Patents Act, 1970 provides that where the Controller is satisfied that the person making or in respect of whom a request or claim is made is the inventor of an invention or of a substantial part of it, and that the application is a direct consequence of his being the inventor, the Controller shall cause him to be mentioned as inventor in any patent granted, in the complete specification and in the register, with the proviso that such mention shall not confer or derogate from any rights under the patent.

Why the Act says this at all

Because ownership and authorship are separated in patent law. In most Indian patents the applicant is a company, the inventor is an employee, and the employee has assigned everything. Chapter 250 works who may apply.

Attribution is the one thing that cannot be assigned. Whoever owns the patent, one human being had the idea, and the Act lets them say so on the face of the document.

It also carries out a treaty obligation. Article 4ter of the Paris Convention provides that the inventor shall have the right to be mentioned as such in the patent, and chapter 130 works the Convention. Section 28 is India's compliance with it.

The provision itself

Section 28(1). If the Controller is satisfied, upon a request or claim made in accordance with the 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 an application 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 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.

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

Section 28(2). A request may be made in the prescribed manner by the applicant, or, where the person alleged to be the inventor is not the applicant or one of the applicants, by the applicant and that person.

Section 28(3). Any person other than one in respect of whom a request has been made under sub-section (2) who desires to be mentioned may make a claim in the prescribed manner.

In one line

The register is the official list of who owns every Indian patent and what has been done with it, and it is open to the public.

In the wording a student can write in an exam: section 67 of the Patents Act, 1970 requires a register of patents to be kept at the patent office, in which shall be entered the names and addresses of grantees, notifications of assignments, transmissions, licences, amendments, extensions and revocations, and particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.

Why a public register exists

Because a patent is a right against the world, and the world must be able to find out about it. A competitor deciding whether to invest needs to know whether a patent is in force, who owns it, whether it is licensed and whether it has been amended.

And because ownership must be provable. A purchaser of a patent, a bank taking a mortgage over it and a licensee all need a public record of title. Section 69 provides for registering that title, and chapter 730 works it.

The register is therefore the patent system's equivalent of a land register, with one crucial difference: it does not guarantee validity. A patent on the register may be revoked tomorrow.

Section 67: what the register is and what goes in it

Section 67(1). There shall be kept at the patent office a register of patents, wherein shall be entered: (a) the names and addresses of grantees of patents; (b) notifications of assignments and of transmissions of patents, of licences under patents, and of amendments, extensions and revocations of patents; and (c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.

Section 67(2): no trusts. No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.

Section 67(3). Subject to the superintendence and direction of the Central Government, the register shall be kept under the control and management of the Controller.

Section 67(4). The Controller may lawfully keep the register or any part of it in computer floppies, diskettes or any other electronic form, subject to such safeguards as may be prescribed.

Section 67(5). Notwithstanding anything in the Indian Evidence Act, 1872, a copy of or extract from the register, certified to be a true copy under the hand of the Controller or a duly authorised officer, shall in all legal proceedings be admissible in evidence.

Section 67(6). Where the register is kept in electronic form, references in the Act to an entry, to registration and to rectification are to be read as including the electronic record.

In one line

Where the register is wrong, the High Court may order it to be put right.

In the wording a student can write in an exam: section 71 of the Patents Act, 1970 empowers the High Court, on the application of any person aggrieved, to order the register to be rectified by the making of an entry wrongly omitted, or the expunging or variation of an entry wrongly made or remaining on the register.

Why a separate remedy is needed

Because the register can be wrong in ways nothing else corrects. An assignment may be registered on a forged deed. A licence may be noted that was never granted. An entry may survive after the interest it records has ended. None of that is revocation, and none of it is opposition.

And because the register is relied on. Section 70 lets a person deal with the registered proprietor, and section 67(5) makes a certified extract evidence. An error on the register therefore has consequences for strangers, and there must be a way to fix it.

The provision itself

Section 71(1). The High Court may, on the application of any person aggrieved (a) by the absence or omission from the register of any entry; (b) by any entry made in the register without sufficient cause; (c) by any entry wrongly remaining on the register; or (d) by any error or defect in any entry in the register, make such order for the making, variation or deletion of any entry therein as it may think fit.

Section 71(2). In any proceeding under the section the High Court may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

Section 71(3). Notice of any application to the High Court shall be given in the prescribed manner to the Controller, who shall be entitled to appear and be heard, and shall appear if so directed by the Court.

Section 71(4). Any order of the High Court under this section shall direct that notice of the order shall be served on the Controller in the prescribed manner, and the Controller shall on receipt of the notice rectify the register accordingly.

Broken down

"Any person aggrieved" is the standing test, and it is not the same as "person interested" in section 2(1)(t). A person aggrieved is somebody whose interests are affected by the entry: a rival claimant to title, a licensee whose licence has been wrongly removed, a mortgagee whose charge is not noted.

Four kinds of grievance, in sub-section (1). Something left out; something put in without sufficient cause; something wrongly still there; and an error or defect in an entry. Together they cover every way a register can be wrong. And note that the relief is not tied to the grievance: the Court may make such order for the making, variation or deletion of any entry as it thinks fit.

In one line

There is one Indian patent office with a head office and four branches, and where an applicant files is decided by where the applicant is, not by choice.

In the wording a student can write in an exam: section 74 of the Patents Act, 1970 provides that there shall be an office known as the patent office, that the Central Government may specify its name by notification, that its head office shall be at such place as the Central Government may specify with branch offices at such other places as it thinks fit, and that there shall be a seal of the patent office.

The provision itself

Section 74(1). For the purposes of the Act, there shall be an office which shall be known as the patent office.

Section 74(2). The Central Government may, by notification in the Official Gazette, specify the name of the Patent Office.

Section 74(3). The head office shall be at such place as the Central Government may specify, and for the purpose of facilitating the registration of patents there may be established, at such other places as the Central Government thinks fit, branch offices.

Section 74(4). There shall be a seal of the patent office.

The seal is not decorative. Section 43(1) requires a patent to be granted with the seal of the patent office, and section 72(1) requires certified copies of register entries to be sealed with it.

Where the offices are

The head office is at Kolkata, which is where the office established under the Indian Patents and Designs Act 1911 sat, and it has remained there.

There are four offices in all: Kolkata, the head office; and branch offices at Delhi, Mumbai and Chennai.

Their territorial jurisdiction is fixed by rule 4 of the Patents Rules 2003. The appropriate office is the one within whose territorial limits the applicant, or the first-named applicant where there are several, ordinarily resides, has a domicile or has a place of business, or the place from which the invention actually originated. Where the applicant has no place of business or domicile in India, the appropriate office is decided by the address for service in India.

In broad terms: Delhi covers the northern States and Union territories; Mumbai covers Maharashtra, Gujarat, Madhya Pradesh, Goa, Chhattisgarh and the western Union territories; Chennai covers the southern States and Union territories; and Kolkata covers the rest, including the eastern and north-eastern States.

And the office once chosen does not change. Rule 4's proviso is that further applications and proceedings in respect of an application are dealt with by the same office, so an applicant cannot move the file to a more convenient branch.

In one line

One officer, the Controller General of Patents, Designs and Trade Marks, is the Controller for this Act, and the examiners work under his authority with two strict prohibitions on them.

In the wording a student can write in an exam: section 73 of the Patents Act, 1970 provides that the Controller General of Patents, Designs and Trade Marks appointed under section 3(1) of the Trade Marks Act, 1999 shall be the Controller of Patents for the purposes of the Act, and that the Central Government may appoint as many examiners and other officers as it thinks fit, who discharge such of the Controller's functions as he authorises.

Section 73: who the Controller is

Section 73(1). The Controller General of Patents, Designs and Trade Marks appointed under section 3(1) of the Trade Marks Act, 1999 (47 of 1999) shall be the Controller of Patents for the purposes of this Act.

One officer runs three registries. The same person is the head of the patents, designs and trade marks offices, and the geographical indications registry as well. That is administratively convenient and it is the reason section 2(1)(b) defines the Controller by reference to that office.

Section 73(2). The Central Government may appoint as many examiners and other officers and with such designations as it thinks fit.

Section 73(3). Subject to the Act, those officers shall discharge, under the superintendence and directions of the Controller, such of the Controller's functions as he may from time to time by general or special order in writing authorise them to discharge.

Section 73(4). Without prejudice to sub-section (3), the Controller may, by order in writing and for reasons to be recorded, withdraw any matter pending before an officer and deal with it himself either de novo or from the stage at which it was withdrawn, or transfer it to another officer, who may proceed de novo or from the stage of transfer subject to any special directions.

Sub-section (4) matters in practice. It is the source of the power to move a contested matter from one officer to another, and the requirement of written reasons is a real safeguard against doing it arbitrarily.

Why the Act names a person and not a post created by itself

Because the office already existed. The Controller General is appointed under trade marks legislation, and the Patents Act simply borrows the office holder. The consequence is that a challenge to the appointment is a challenge under the Trade Marks Act, not under this one.

And because the functions are delegated, not shared. Section 73(3) makes every examiner's act an exercise of the Controller's own function, done under his superintendence and by his written authorisation. That is why an appeal under section 117A lies against a decision "of the Controller" even where an Assistant Controller signed it.

In one line

The Controller has the powers of a civil court over the matters listed in section 77, must hear a party before deciding against them, and may correct clerical errors and extend time.

In the wording a student can write in an exam: Chapter XV of the Patents Act, 1970, sections 77 to 81, confers on the Controller the powers of a civil court in respect of the matters listed in section 77, the power to correct clerical errors under section 78, control over the form of evidence under section 79, the duty to hear a party before exercising a discretion adversely under section 80, and the power to extend time under section 81.

Section 77: the civil court powers

Section 77(1). Subject to any rules, the Controller in any proceedings before him shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908, in respect of:

(a) summoning and enforcing the attendance of any person and examining him on oath; (b) requiring the discovery and production of any document; (c) receiving evidence on affidavits; (d) issuing commissions for the examination of witnesses or documents; (e) awarding costs; (f) reviewing his own decision on application made within the prescribed time and in the prescribed manner; (g) setting aside an order passed ex parte on application made within the prescribed time and in the prescribed manner; (h) any other matter which may be prescribed.

Section 77(2). Any order for costs awarded by the Controller under sub-section (1) shall be executable as a decree of a civil court.

Two of the eight are easy to miss and both are examined. Clause (f) gives the Controller a power of review of his own decision, which is unusual for an administrative authority and which exists here because the alternative would be an appeal for every slip. Clause (g) gives the power to set aside an ex parte order, which is the remedy for a party who did not appear for good reason.

And note what the section does not give. The Controller has the powers of a civil court only in respect of the listed matters. He is not a civil court, cannot grant an injunction, and cannot award damages.

Section 78: correcting clerical errors

Section 78(1). Without prejudice to sections 57 and 59 as regards amendment, and subject to section 44, the Controller may correct any clerical error in any patent, in any specification or other document filed in pursuance of an application, in any application for a patent, or in any matter entered in the register.

Section 78(2). A correction may be made upon a request in writing by any person interested, accompanied by the prescribed fee, or without such a request.

In one line

Only a registered patent agent may practise before the Controller, and since 2005 an advocate cannot register without passing the examination.

In the wording a student can write in an exam: Chapter XXI of the Patents Act, 1970, sections 125 to 132, requires the Controller to maintain a register of patent agents, fixes the qualifications for registration in section 126, confers the right to practise before the Controller in section 127, and by section 129 forbids any unregistered person or body corporate from practising or holding itself out as a patent agent.

Why the Act regulates this at all

Because drafting a specification is a technical and a legal act at once. A claim is a legal instrument written in the language of engineering or chemistry. A person who understands the law and not the technology will draft a claim that does not describe the invention; a person who understands the technology and not the law will draft one that is unenforceable.

So India requires both. Section 126 demands a degree in science, engineering or technology and a qualifying examination in the law. That combination is the reason the Indian patent agent is a distinct profession from the advocate.

And section 132 preserves what the advocate can still do, which is the point most students get wrong, and the last section of this chapter deals with it.

Section 125: the register of patent agents

Section 125(1). The Controller shall maintain a register called the register of patent agents, in which shall be entered the names, addresses and other prescribed particulars of all persons qualified under section 126.

Section 125(2). The Controller may lawfully keep it in electronic form, subject to prescribed safeguards.

Section 126: the qualifications

Section 126(1). A person is qualified if:

(a) he is a citizen of India;

(b) he has completed the age of 21 years;

(c) he has obtained a degree in science, engineering or technology from any University established under law for the time being in force in the territory of India, or possesses such other equivalent qualifications as the Central Government may specify, and in addition either (ii) has passed the qualifying examination prescribed for the purpose, or (iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but has ceased to hold any such capacity at the time of making the application;

(d) he has paid the prescribed fee.

Section 126(2). A person registered as a patent agent before the commencement of the Patents (Amendment) Act 2005 is entitled to continue as, or to be re-registered as, a patent agent on payment of the prescribed fee.

In one line

A patentee may stop other people from making, using, selling or importing the invention in India, and can do nothing else with the patent as such.

In the wording a student can write in an exam: by section 48 of the Patents Act, 1970, subject to the other provisions of the Act and the conditions specified in section 47, a patent granted under the Act confers on the patentee, where the subject matter 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; and where the subject matter is a process, the exclusive right to prevent third parties 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.

The provision itself

Section 48 opens with two qualifications. "Subject to the other provisions contained in this Act and the conditions specified in section 47". Everything that follows is already cut down by section 47's four standing conditions, by Chapter XVI's compulsory licences, by Chapter XVII's Government use, and by section 107A. Chapters 350, 670 and 770 work them.

Clause (a), for a product patent. The exclusive right to prevent third parties, who do not have the patentee's consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India.

Clause (b), for a process patent. The exclusive right to prevent third parties, who do not have the patentee's 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.

Broken down

"Exclusive right to prevent". The right is negative. It is a right to stop, not a right to do. Chapter 10 works that, and it is the single most examined misconception in the subject.

Five acts for a product. Making, using, offering for sale, selling, importing. Each is a separate act, so a person who only imports infringes as fully as one who manufactures.

"Offering for sale" is a separate act. A defendant who advertises the article but has not yet sold one is infringing. That matters at a trade fair, in a catalogue and on a website.

"For those purposes". The words attach to importing: importing for the purposes of using, offering for sale or selling. Importing a single article for personal study is dealt with by section 47(3) and by section 107A, which chapters 350 and 1080 work.

In one line

An Indian patent is cut into by the conditions of grant, by the foreign vessels rule, by the acts the Act declares not to be infringement, by compulsory licences, and by the Government's own powers.

In the wording a student can write in an exam: section 49 of the Patents Act, 1970 provides that where a vessel or aircraft registered in a foreign country, or a land vehicle owned by a person ordinarily resident in such a country, comes into India temporarily or accidentally only, the rights conferred by a patent are not deemed to be infringed by the use of the invention in the body, machinery, tackle, apparatus or accessories of the vessel so far as it is used on board and for its actual needs only, or in the construction or working of the aircraft or land vehicle or its accessories.

The map: five kinds of limit

Two more limits belong to the list and are easy to forget. Section 140 makes certain restrictive conditions in a licence void, and chapter 890 works it. And section 111 restricts damages against an innocent infringer, which chapter 1110 works.

Section 49: foreign vessels, aircraft and land vehicles

Section 49(1). Where a vessel or aircraft registered in a foreign country, or a land vehicle owned by a person ordinarily resident in such a country, comes into India, including its territorial waters, temporarily or accidentally only, the rights conferred by a patent 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, 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.

Section 49(2): reciprocity. The section shall not extend to vessels, aircraft 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 territorial waters of that country or otherwise within the jurisdiction of its courts.

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An Indian patentee must tell the Controller how far the invention has actually been worked in India, and the statement is public.

In the wording a student can write in an exam: section 146 of the Patents Act, 1970 empowers the Controller at any time during the continuance of the patent to require a patentee or licensee to furnish information or periodical statements as to the extent to which the patented invention has been commercially worked in India, and separately obliges every patentee and every licensee to furnish such statements in the prescribed manner, form and intervals, not being less than six months.

Why an obligation to report exists

Because section 83 says patents are granted so that inventions are worked in India. Chapter 30 works that section. An obligation that nobody can measure is no obligation at all.

Because the compulsory licence provisions depend on the facts. Section 84 asks whether the reasonable requirements of the public are satisfied and whether the invention is worked in India; section 85 allows revocation for non-working. An applicant for a compulsory licence needs evidence, and the working statements are where it comes from. Chapters 770 and 850 work them.

And because the information is asymmetric. Only the patentee knows what it has made and sold. Section 146 makes it say.

The provision itself

Section 146(1): on demand. The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish within two months from the date of the notice, or within such further time as the Controller may allow, such information or periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.

Section 146(2): as a routine. Without prejudice to sub-section (1), every patentee and every licensee, whether exclusive or otherwise, shall furnish, in such manner and form and at such intervals, not being less than six months, as may be prescribed, statements as to the extent to which the patented invention has been worked on a commercial scale in India.

Section 146(3): publication. The Controller may publish the information received under sub-section (1) or (2) in such manner as may be prescribed.

Three features. The duty falls on licensees as well as patentees. The Act sets a floor of six months on the interval but leaves the actual interval to the Rules. And the statements are published, which is what makes them useful to a compulsory licence applicant.

Form 27, and what it asks

Rule 131 of the Patents Rules 2003 prescribes the form and the interval, and Form 27 is the statement.

In one line

Beyond working and paying renewal fees, a patentee owes duties about fees, information and marking, and the Act carries a body of machinery about journals, evidence, service and the Government's powers.

In the wording a student can write in an exam: Chapter XXIII of the Patents Act, 1970 contains the miscellaneous provisions, including fees under section 142, restrictions on publication under section 143, the confidentiality of examiners' reports under section 144, the official journal under section 145, evidence and service under sections 147 to 149, security for costs under section 150, and the protection of the security of India under section 157A.

Section 142: fees

Section 142(1). Such fees as may be prescribed by the Central Government shall be paid in respect of the grant of patents, applications for them, and other matters in relation to the grant of patents.

Section 142(2). Where a fee is payable in respect of the doing of an act by the Controller, the Controller shall not do that act until the fee has been paid.

Section 142(3). Where a fee is payable in respect of the filing of a document, the fee shall be paid along with the document or within the prescribed time, and the document shall be deemed not to have been filed if the fee is not paid within that time.

Section 142(4). Where a principal patent is granted later than two years from the date of filing of the application, the fees which have become due in the meantime may be paid within three months from the date of the recording of the patent in the register, or within an extended period not later than nine months from that date.

Sub-section (4) is the one that answers a common question. A patent granted in year six carries several years of accrued renewal fees, and this sub-section gives three months, extendable to nine, from recording in the register to pay them. Chapter 360 works the term and the renewal fees.

And sub-section (3) is a trap. A document filed without its fee is deemed not filed at all, so a reply filed on the last day without the fee is out of time.

Sections 143 to 145: publication and the journal

Section 143: restriction on publication. Subject to Chapter VII, an application and any specification filed in pursuance of it shall not, except with the consent of the applicant, be published by the Controller before the expiration of the period prescribed under section 11A(1), or before the same is open to public inspection under section 11A(3) or section 43. Chapter 280 works section 11A.

Section 144: examiners' reports are confidential. The reports of examiners to the Controller shall not be open to public inspection or be published by the Controller, and shall not be liable to production or inspection in any legal proceeding unless the court certifies that their production or inspection is desirable in the interests of justice and ought to be allowed.

In one line

Where a patent belongs to two people, each may work it alone and keep the profit, but neither may licence it or sell a share without the other's consent.

In the wording a student can write in an exam: by section 50 of the Patents Act, 1970, where a patent is granted to two or more persons, each is entitled, unless an agreement to the contrary is in force, to an equal undivided share; each may exercise the rights conferred by section 48 for his own benefit without accounting to the others; but a licence shall not be granted and a share shall not be assigned by one of them except with the consent of the others.

The provision itself

Section 50(1): equal undivided shares. Where a patent is granted to two or more persons, each shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.

Section 50(2): each may work it alone. Subject to this section and to section 51, where two or more persons are registered as grantee or proprietor, then unless an agreement to the contrary is in force, each shall be entitled, by himself or his agents, to the rights conferred by section 48 for his own benefit without accounting to the other person or persons.

Section 50(3): but not licence or assign alone. Subject to this section and section 51 and to any agreement in force, where two or more persons are registered, a licence under the patent shall not be granted and a share in the patent shall not be assigned by one of them except with the consent of the other or others.

Section 50(4): the purchaser is protected. Where a patented article is sold by one of two or more registered proprietors, the purchaser and any person claiming through him may deal with the article as if it had been sold by a sole patentee.

Section 50(5): movable property rules apply. Subject to the section, the rules of law applicable to the ownership and devolution of movable property generally apply in relation to patents; and nothing in sub-sections (1) or (2) affects the mutual rights or obligations of trustees or of legal representatives, or their rights or obligations as such.

Section 50(6). Nothing in the section affects the rights of assignees of a partial interest in a patent created before the commencement of the Act.

The shape of the default regime

Working: each may, alone, and keeps the money. Sub-section (2) is unusual and it is what students misremember. A co-owner may make, use, sell and import the patented article for their own benefit and need not account to the other co-owner for a rupee of it.

In one line

Where a patent is revoked because somebody stole the invention, the court may order a new patent to be granted to the true inventor, bearing the old patent's date.

In the wording a student can write in an exam: section 52 of the Patents Act, 1970 provides that where a patent has been revoked under section 64 on the ground that it was obtained wrongfully and in contravention of the rights of the petitioner, or where in a petition for revocation the court, instead of revoking, directs the specification to be amended by the exclusion of claims obtained from the petitioner, the court may in the same proceeding permit the grant to the petitioner of the whole or such part of the invention as it finds was wrongfully obtained.

Why a fresh grant is the only remedy that works

Because revocation alone leaves the true inventor with nothing. The invention has been published in the wrongdoer's application, so it is in the public domain and cannot be applied for afresh.

And because damages would not restore the monopoly. What the true inventor lost was a patent, and the only thing that replaces a patent is a patent.

So section 52 grants one, and, crucially, it bears the same date as the patent revoked, so the true inventor gets the term the wrongdoer would have had, less what has run.

The provision itself

Section 52(1): when the power arises. Where a 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 of a person under or through whom he claims; or where, in a petition for revocation, the court instead of revoking the patent directs the complete specification to be amended by the exclusion of a claim or claims in consequence of a finding that the invention covered by them had been obtained from the petitioner; the court may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the invention as it finds was wrongfully obtained, in lieu of the patent so revoked or excluded by amendment.

Section 52(2): what the Controller then grants. Where such an order is passed, the Controller shall, on request by the petitioner made in the prescribed manner, grant:

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

(ii) where the court permits a part only, a new patent for that part bearing the same date as the patent revoked, numbered as prescribed.

In one line

A patent is movable property, and like any other movable property it can be sold, given, mortgaged, licensed, inherited or taken by operation of law.

In the wording a student can write in an exam: by section 50(5) of the Patents Act, 1970 the rules of law applicable to the ownership and devolution of movable property generally apply in relation to patents, and by section 69(1) a person may become entitled to a patent or a share in it by assignment, transmission or operation of law, or entitled as a mortgagee, licensee or otherwise to any other interest in it.

Why the Act treats it as property at all

Because a right that cannot be sold is worth much less. An inventor who cannot transfer the patent must exploit it personally or not at all, and most inventors have no factory. The value of a patent to a small inventor lies almost entirely in the ability to sell or licence it.

And because investment needs security. A bank that lends against a patent needs to be able to take a charge over it, and section 69(1) contemplates a mortgagee's interest in terms.

The five ways a patent moves

One: assignment. A transfer of ownership, in whole or in part, by act of the parties. It may be of the whole patent, of an undivided share, or limited to a territory or a field. Chapter 870 works the practice.

Two: transmission. Devolution otherwise than by an ordinary assignment: on death to a legal representative, on the winding up of a company to its liquidator, on the amalgamation of two companies to the transferee.

Three: mortgage. The patent is transferred or charged as security for money, with a right of redemption. Section 69(1) names a mortgagee expressly.

Four: licence. Not a transfer of ownership at all, but a permission. The patentee remains the owner; the licensee gets consent, which is what section 48 makes the whole difference turn on. Chapters 750 and 760 work licences.

Five: operation of law. Vesting without an act of the parties: on insolvency, on a court's order, or by a statutory scheme of amalgamation. Section 69(1) names it.

Assignment against licence

The line matters most for the right to sue. An assignee sues as patentee. A licensee generally cannot sue at all, and the two exceptions are section 109 for an exclusive licensee and section 110 for a licensee under section 84. Chapters 760 and 1080 work them.

In one line

Every assignment, mortgage or licence of an Indian patent must be a written document containing all the terms and duly executed, and the person who takes it must register with the Controller.

In the wording a student can write in an exam: section 68 of the Patents Act, 1970 provides that an assignment of a patent or of a share in a patent, a mortgage, a licence or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and duly executed.

Section 68: validity

The provision. An assignment of a patent or of a share in a patent, a mortgage, a licence, or the creation of any other interest in a patent shall not be valid unless:

(i) the same were in writing; and

(ii) the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations; and

(iii) it is duly executed.

Three requirements and the sanction is invalidity. Not unenforceability, not a bar to registration: the dealing is not valid.

What the 2005 substitution added. The section as it previously stood required writing and execution. The 2005 Act added the requirement that the agreement be reduced to a document embodying all the terms and conditions. So a one-line assignment that refers to terms agreed elsewhere does not satisfy the section, and a written record of a partly oral bargain does not either.

"Any other interest" is wide. A charge, a right of first refusal over the patent, an option to take a licence: all are interests in the patent and all need a section 68 document.

Section 69: registration

Section 69(1): the duty on the person who takes. Where any person becomes entitled by assignment, transmission or operation of law to a patent or a share in a patent, or becomes entitled as mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.

Section 69(2): the other party may also apply. Without prejudice to sub-section (1), an application for registration of the title of a person becoming entitled by assignment, or entitled by virtue of a mortgage, licence or other instrument to any other interest, may be made by the assignor, mortgagor, licensor or other party to that instrument.

In one line

Whoever is on the register may deal with the patent and give a good receipt, subject to co-ownership, to interests noted on the register, and to equities.

In the wording a student can write in an exam: section 70 of the Patents Act, 1970 provides that, subject to the provisions of the Act relating to co-ownership and to any rights vested in any other person of which notice is entered in the register, the person or persons registered as grantee or proprietor shall have power to assign, grant licences under, or otherwise deal with the patent and to give effectual receipts for any consideration, with a proviso that any equities in respect of the patent may be enforced in like manner as in respect of any other movable property.

The provision itself

Section 70. Subject to the provisions contained in this Act relating to co-ownership of patents, and subject also to any rights vested in any other person of which notice is entered in the register, the person or persons registered as grantee or proprietor of a patent shall have power to:

assign the patent; grant licences under it; or otherwise deal with it; and to give effectual receipts for any consideration for any such assignment, licence or dealing.

The proviso. Any equities in respect of the patent may be enforced in like manner as in respect of any other movable property.

Broken down

The power comes from the register. Not from the underlying title, but from the entry. A person shown as proprietor may deal, and a person dealing with them may rely on it.

"Effectual receipts" is the practical half. A purchaser paying the registered proprietor gets a good discharge, and cannot be made to pay twice by somebody with an unregistered interest.

Three limits, and they are in the section's own order.

One: co-ownership. Section 50(3) requires the consent of the other co-owners to a licence or to the assignment of a share, and section 51 gives the Controller power to direct. Chapter 700 works them. A registered co-proprietor's power under section 70 is cut down by those provisions.

Two: rights of which notice is entered in the register. A registered mortgage, a noted exclusive licence or any other interest entered under section 69(3)(b) binds a person dealing with the proprietor.

Three: equities. The proviso preserves them, and it is the answer to any suggestion that the Indian register gives indefeasible title.

What "equities" means here

It means the rights that arise in equity rather than from the register, and the proviso says they are enforced as for any other movable property.

Three familiar examples. A patent held on trust, which section 67(2) keeps off the register altogether. A contract to assign, not yet performed, which gives the buyer an equitable interest. And a right to have a transaction set aside for fraud or misrepresentation.

In one line

A voluntary licence is a contract by which a patentee gives somebody consent to do what section 48 otherwise lets the patentee stop.

In the wording a student can write in an exam: a voluntary licence is a permission granted by the patentee under a contract, which by section 68 of the Patents Act, 1970 must be in writing, reduced to a document embodying all the terms and conditions and duly executed, and notice of which must be registered under section 69; it operates by supplying the consent whose absence is what makes an act an infringement under section 48.

Why a licence is the ordinary way a patent earns money

Because most patentees cannot exploit the invention themselves. An individual inventor, a university, a research institute and a small company usually have no factory, no distribution and no capital.

Because a monopoly can be split. One licensee for the north, one for the south; one for automotive use, one for medical use; one to manufacture, one to import. An assignment transfers everything at once; a licence lets the patentee slice the right along whatever line suits the market.

And because the patentee keeps the patent. If the licensee fails, the licence ends and the right returns.

What the Act requires

Section 68: writing. A licence is not valid unless in writing, reduced to a document embodying all the terms and conditions, and duly executed. Chapter 730 works it.

Section 69: registration of notice. A licensee becomes entitled to an interest in the patent and shall apply to have notice of that interest entered in the register. Chapter 730 works the consequence of not doing so, and chapter 740 works section 70.

Section 140: certain conditions are void. Tie-ins, restrictions on using other articles or processes, exclusive grant-back, prevention of challenges to validity and coercive package licensing. Chapter 890 works the section, and a drafter must know it before writing a single clause.

Section 141: determination when the patent ends. Chapter 900 works it.

And section 50(3) for a co-owned patent: one co-owner cannot licence alone. Chapter 700 works it.

Beyond that the Act is silent. There is no statutory form of licence, no implied term, and no minimum royalty. It is a contract, governed by the Indian Contract Act 1872 like any other.

The commercial anatomy of a licence

The grant clause. What is licensed: which patent, and which of the section 48 acts. A licence to "make and sell" does not permit importing, and a licence that does not mention offering for sale leaves an odd gap.

The scope. Territory, field of use, and duration. Each is a permitted way of limiting the licence, and none of them is caught by section 140 provided it does not stray into the prohibited conditions.

In one line

An exclusive licensee may sue infringers in its own name; a sole or non-exclusive licensee may not.

In the wording a student can write in an exam: by section 2(1)(f) of the Patents Act, 1970 an "exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons including the patentee, any right in respect of the patented invention; and by section 109 the holder of an exclusive licence has the like right as the patentee to institute a suit in respect of any infringement committed after the date of the licence.

The three kinds

Non-exclusive. The patentee may licence anybody else and may work the invention itself. The licensee has consent and nothing more. Most licences are of this kind.

Sole. The patentee undertakes not to licence anybody else, but reserves the right to work the invention itself. So there are exactly two people in the market: the licensor and the licensee.

Exclusive. The right is conferred to the exclusion of all other persons including the patentee. The licensee alone may exercise the right licensed, and the patentee may not.

The whole difference is whether the patentee is excluded. A sole licence excludes everybody except the patentee; an exclusive licence excludes the patentee too. Section 2(1)(f) says "including the patentee" in terms, so a licence that reserves the patentee's own right to work is not an exclusive licence within the Act, whatever the parties call it.

The definition, read closely

Section 2(1)(f). "Exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention; and "exclusive licensee" shall be construed accordingly.

"Any right" is the phrase that matters. The exclusivity need not cover the whole patent. A licence that gives the exclusive right to make in India, while the patentee keeps the right to import, confers a right to the exclusion of all others, and the licensee is an exclusive licensee of that right.

So exclusivity may be partial, by act, by territory or by field. A licensee with the exclusive right to sell in Maharashtra is an exclusive licensee for Maharashtra, and section 109 gives it standing there.

Section 109: the right to sue

Section 109(1). The holder of an exclusive licence shall have the like right as the patentee to institute a suit in respect of any infringement of the patent committed after the date of the licence; and in awarding damages or an account of profits or granting any other relief the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such, or the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.

In one line

Three years after grant, anybody with a real interest may ask the Controller to licence somebody else to work the patent, on three grounds: the public's requirements are unmet, the price is not reasonably affordable, or the invention is not worked in India.

In the wording a student can write in an exam: by section 84(1) of the Patents Act, 1970, at any time after the expiration of three years from the date of the grant of a patent, any person interested may apply to the Controller for a compulsory licence on the ground that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or that the patented invention is not available to the public at a reasonably affordable price, or that the patented invention is not worked in the territory of India.

Why a State grants a monopoly and then licences round it

Because the grant was conditional in purpose from the start. Section 83 says patents are granted to encourage inventions and to secure that they are worked in India, not merely to enable a monopoly of importation, and that the benefit must be available at reasonably affordable prices. Chapter 30 works the section.

Because TRIPS permits it. Article 31 governs "other use without authorisation of the right holder", and article 5A(2) of the Paris Convention permits compulsory licences to prevent abuses resulting from the exercise of the exclusive right, in particular failure to work. Chapters 160 and 130 work them.

And because the alternative is worse. The choice is between a licence on terms with a royalty, and revocation. Section 85 provides for revocation for non-working, and chapter 850 explains why it has never been used.

The provision itself

Section 84(1). At any time after the expiration of three years from the date of the grant of a patent, any person interested may apply to the Controller for the grant of a compulsory licence on any of the following grounds:

(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied; or

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

(c) that the patented invention is not worked in the territory of India.

Section 84(2): an existing licensee may apply, and no estoppel. An application may be made by any person notwithstanding that he is already the holder of a licence, and no person shall be estopped from alleging any of the three grounds by reason of any admission made in such a licence or otherwise, or by reason of having accepted such a licence.

In one line

The Controller first decides whether there is a prima facie case, then publishes the application, hears any opposition, and may adjourn for up to a year if the patentee needs more time to work the invention.

In the wording a student can write in an exam: section 87 of the Patents Act, 1970 requires the Controller, where satisfied that a prima facie case has been made out on an application under section 84 or section 85, to direct the applicant to serve copies on the patentee and other interested persons and to publish the application in the official journal, and to hear the applicant and any opponent before deciding.

Section 87: the procedure

Section 87(1): the prima facie stage. Where the Controller is satisfied, on consideration of an application under section 84 or section 85, that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application on the patentee and on any other person appearing from the register to be interested, and shall publish the application in the official journal.

Section 87(2): opposition. The patentee or any other person desiring to oppose may, within the prescribed time or such further time as the Controller may allow on an application made before or after the expiry of that time, give notice of opposition.

Section 87(3). The notice shall contain a statement setting out the grounds on which the application is opposed.

Section 87(4). Where notice is duly given, the Controller shall notify the applicant, and shall give the applicant and the opponent an opportunity to be heard before deciding.

Why the prima facie stage exists. It filters. An application that discloses no case at all is dismissed without troubling the patentee, which is why it comes before service and publication rather than after.

And publication matters for a second reason. It tells the market that the patent is under challenge, and it lets other interested persons come forward under sub-section (2).

Section 86: the adjournment

Section 86(1). Where an application under section 84 or section 85 is made on the ground that the invention has not been worked in the territory of India, or on the ground in section 84(7)(d), and the Controller is satisfied that the time which has elapsed since the sealing of the patent has for any reason been insufficient to enable the invention to be worked on a commercial scale to an adequate extent, or to the fullest extent reasonably practicable, he may by order adjourn the further hearing for such period not exceeding twelve months in the aggregate as appears sufficient.

Its proviso: regulatory delay. Where the patentee establishes that the reason the invention could not be worked before the date of the application was a State or Central Act, or a rule or regulation or an order of Government imposed otherwise than as a condition for working the invention in India or for disposing of the patented articles, the period of adjournment is reckoned from the date on which the period during which working was so prevented, computed from the date of the application, expires.

In one line

A compulsory licence must carry a reasonable royalty, must be non-exclusive and non-assignable, must run for the balance of the term, and must be predominantly for supply in the Indian market.

In the wording a student can write in an exam: by section 90(1) of the Patents Act, 1970, in settling the terms and conditions of a licence under section 84 the Controller shall endeavour to secure the nine matters set out in clauses (i) to (ix), including a reasonable royalty, the fullest working of the invention with reasonable profit to the licensee, availability to the public at reasonably affordable prices, a non-exclusive and non-assignable licence for the balance term of the patent, and a predominant purpose of supply in the Indian market.

Section 89: the purposes

The Controller's powers on a section 84 application shall be exercised with a view to securing two general purposes.

(a) That patented inventions are worked on a commercial scale in the territory of India without undue delay and to the fullest extent that is reasonably practicable.

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

Read the two clauses as a pair. Clause (a) is the public interest in getting the invention made here. Clause (b) is the protection of the patentee and of any existing licensee already doing so. Section 89 is therefore the balancing instruction, and it is drawn from section 83, which chapter 30 works.

Section 90(1): the nine matters

(i) A reasonable royalty. That the royalty and other remuneration reserved to the patentee is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force, and other relevant factors.

(ii) Fullest working, with profit to the licensee. That the invention is worked to the fullest extent by the licensee and with reasonable profit to him.

(iii) Reasonably affordable prices. That the patented articles are made available to the public at reasonably affordable prices.

(iv) Non-exclusive. That the licence granted is a non-exclusive licence.

(v) Non-assignable. That the right of the licensee is non-assignable.

(vi) The balance of the term. That the licence is for the balance term of the patent unless a shorter term is consistent with public interest.

(vii) Predominantly for India, with export permitted. That the licence is granted with a predominant purpose of supply in the Indian market, and that the licensee may also export the patented product if need be, in accordance with section 84(7)(a)(iii).

In one line

Where one person's patented improvement cannot be worked without infringing somebody else's patent, either may ask the Controller for a licence over the other.

In the wording a student can write in an exam: section 91 of the Patents Act, 1970 provides that notwithstanding the other provisions of Chapter XVI, at any time after the sealing of a patent, any person who has the right to work any other patented invention either as patentee or as licensee, exclusive or otherwise, may apply to the Controller for the grant of a licence of the first-mentioned patent on the grounds set out in the section.

The problem: blocking patents

An improvement usually infringes what it improves. A patents a machine. B invents a genuinely inventive improvement to it and patents that. B cannot make the improved machine without infringing A's patent, and A cannot make the improvement without infringing B's.

Neither can work. That is a deadlock, and it wastes both inventions. The commercial answer is a cross-licence, and it is agreed most of the time.

Section 91 is what happens when it is not agreed. It lets the Controller impose the licence that the parties would sensibly have negotiated.

The provision itself

Section 91(1). Notwithstanding anything contained in the other provisions of Chapter XVI, at any time after the sealing of a patent, any person who has the right to work any other patented invention either as patentee or as licensee thereof, exclusive or otherwise, may apply to the Controller for the grant of a licence of the first-mentioned patent on the ground that:

(a) he is prevented or hindered without such licence from working the other invention efficiently or to the best advantage possible.

Section 91(2). No order shall be made under sub-section (1) unless the Controller is satisfied:

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

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

Section 91(3). When the Controller is satisfied that the conditions have been established, he may make an order on such terms as he thinks fit granting a licence under the first-mentioned patent, and a similar order under the other patent if so requested by the proprietor of the first-mentioned patent or his licensee. Its proviso: the licence granted by the Controller shall be non-assignable except with the assignment of the respective patents.

Section 91(4). The provisions of sections 87, 88, 89 and 90 apply to licences granted under this section as they apply to licences granted under section 84.

In one line

In a national emergency, in extreme urgency, or for public non-commercial use, the Central Government may notify a patent, and anybody interested may then get a licence, at once and at the lowest price consistent with a reasonable return to the patentee.

In the wording a student can write in an exam: section 92 of the Patents Act, 1970 provides that if the Central Government is satisfied, in respect of a patent in force, in circumstances of national emergency or extreme urgency or in a case of public non-commercial use, that compulsory licences should be granted at any time after the sealing of the patent, it may make a declaration to that effect by notification in the Official Gazette, whereupon the Controller shall, on application by any person interested, grant a licence on such terms and conditions as he thinks fit.

Why section 84 is not enough

Because section 84 is slow. Three years from grant; a request for a voluntary licence and a reasonable period of six months; a prima facie stage; service; publication; opposition; a hearing; and possibly a twelve-month adjournment under section 86. Chapters 770 and 780 work them.

An epidemic does not wait. Section 92 exists so that where the Government has declared the situation, the machinery runs at once.

And it moves the initiative. Under section 84 a private applicant must make out the grounds. Under section 92 the Central Government makes the declaration, and the applicant need only apply.

The provision itself

Section 92(1). If the Central Government is satisfied, in respect of any patent in force, in circumstances of national emergency, or in circumstances of extreme urgency, or in case of public non-commercial use, that it is necessary that compulsory licences should be granted at any time after the sealing of the patent to work the invention, it may make a declaration to that effect by notification in the Official Gazette, and thereupon:

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

(ii) in settling those terms and conditions, the Controller shall endeavour to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights.

Section 92(2). The provisions of sections 83, 87, 88, 89 and 90 apply to licences granted under this section as they apply to licences under section 84.

Section 92(3), inserted in 2005: the fast route. Notwithstanding sub-section (2), where the Controller is satisfied on consideration of the application that it is necessary in (i) a circumstance of national emergency, or (ii) a circumstance of extreme urgency, or (iii) a case of public non-commercial use, which may arise or is required, including public health crises relating to Acquired Immuno Deficiency Syndrome, human immunodeficiency virus, tuberculosis, malaria or other epidemics, he shall not apply any procedure specified in section 87. Its proviso: the Controller shall as soon as may be practicable inform the patentee of that non-application.

In one line

An Indian manufacturer may be licensed to make a patented medicine solely for export to a country that cannot make it for itself.

In the wording a student can write in an exam: section 92A of the Patents Act, 1970 provides that a compulsory licence shall be available for the manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided that country has granted a compulsory licence or has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India.

The problem it answers

Chapter 170 works the problem in full. TRIPS article 31(f) required production under a compulsory licence to be predominantly for the supply of the domestic market. A country with no pharmaceutical industry could therefore licence nobody usefully: it had no domestic manufacturer, and a foreign manufacturer could not produce for it under its own country's compulsory licence.

Paragraph 6 of the Doha Declaration recognised the difficulty and instructed the Council for TRIPS to find an expeditious solution. The waiver of 30 August 2003 and then article 31bis, in force 23 January 2017, provided it.

Section 92A is India's expression of the solution, enacted in 2005 before the amendment itself came into force.

The provision itself

Section 92A(1). A compulsory licence shall be available for the manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided compulsory licence has been granted by such country, or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India.

Section 92A(2). The Controller shall, on receipt of an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of the concerned pharmaceutical product to such country, under such terms and conditions as may be specified and published by him.

Section 92A(3). Sub-sections (1) and (2) are without prejudice to the extent to which pharmaceutical products produced under a compulsory licence can be exported under any other provision of the Act.

The Explanation. "Pharmaceutical products" means any patented product, or product manufactured through a patented process, of the pharmaceutical sector needed to address public health problems, and shall be inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use.

Broken down

The importing country must qualify. Insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product. That is product-specific: a country may be able to make tablets and not vaccines.

And it must have acted. Either it has granted a compulsory licence itself, or it has by notification or otherwise allowed importation from India. Without one of those, section 92A is not engaged.

In one line

A compulsory licence order takes effect as though the patentee had signed the licence, and it can be terminated when the reason for it has gone.

In the wording a student can write in an exam: section 93 of the Patents Act, 1970 provides that any order for the grant of a licence under Chapter XVI shall operate as if it were a deed granting a licence executed by the patentee and all other necessary parties embodying the terms and conditions settled by the Controller; and section 94 provides for the termination of a compulsory licence granted under section 84 when the circumstances that gave rise to it no longer exist and are unlikely to recur.

Section 93: the order as a deed

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

Why it is needed. Section 68 makes a licence invalid unless it is in writing, reduced to a document embodying all the terms and duly executed. A patentee who has just lost a compulsory licence application will not sign anything. Section 93 supplies the signature by operation of law.

"And all other necessary parties" matters. A co-owner, an exclusive licensee whose rights are affected, a mortgagee: all are deemed to have executed.

And the terms are the Controller's. The deed embodies what the Controller settled under section 90, and chapter 790 works those terms.

Note the width of the section. It applies to any order for the grant of a licence under this Chapter, so it covers section 84, section 91, section 92 and section 92A alike.

Section 94: termination

Section 94(1). On an application made by the patentee or any other person deriving title or interest in the patent, a compulsory licence granted under section 84 may be terminated by the Controller if and when the circumstances that gave rise to the grant no longer exist and such circumstances are unlikely to recur. Its proviso: the holder of the compulsory licence shall have the right to object to such termination.

Section 94(2). While considering an application under sub-section (1), the Controller shall take into account that the interest of the person who had previously been granted the licence is not unduly prejudiced.

Three requirements in sub-section (1), and all three are needed. The circumstances that gave rise to the grant must no longer exist; they must be unlikely to recur; and the applicant must be the patentee or a person deriving title or interest.

In one line

A licence of right was an endorsement on a patent that entitled anybody to a licence as of right, and Indian law abolished it in 2003.

In the wording a student can write in an exam: sections 86 to 88 of the Patents Act, 1970 as originally enacted provided for the endorsement of a patent with the words "Licences of right", the effect of which was that any person interested was entitled to a licence on terms settled by the Controller; and the institution was abolished when section 39 of the Patents (Amendment) Act, 2002 substituted the whole of Chapter XVI with effect from 20 May 2003.

Why this chapter says so first

Because MU's printed syllabus, topic 3.5, is "Licence of Right and Revocation for non working patents", and half of that no longer exists. A student who writes an answer describing a live Indian remedy will be describing law that was repealed before most of them were born.

The honest treatment is threefold. Explain what the institution was, because MU asks. Explain that it is gone and when. And explain what does the same work now, which is section 84 and Chapter XVI as substituted, and chapters 770 to 830 work them.

What a licence of right was

The idea. A patent could be endorsed with the words "Licences of right". Once endorsed, the patentee no longer controlled who worked the invention: any person interested was entitled to a licence, and if the terms could not be agreed the Controller settled them.

It sat between an ordinary patent and no patent at all. The patentee kept a right to a royalty and lost the right to exclude.

Two routes to endorsement, in the Act as enacted.

Route one, old section 86: on the Central Government's application. At any time after the expiration of three years from the date of the sealing of a patent, the Central Government could apply to the Controller for an order that the patent be endorsed with the words "Licences of right", on the ground that the reasonable requirements of the public had not been satisfied or that the invention was not available to the public at a reasonable price. If the Controller was satisfied of either ground he could make the order. Sub-section (3) carried the endorsement across to a patent of addition, and sub-section (4) required every endorsement to be entered in the register and published in the Official Gazette, and otherwise brought to the notice of manufacturers.

Route two, old section 87: automatically, for section 5 inventions. Every patent in respect of an invention referred to in section 5, that is a substance intended for use as food, medicine or drug, and a process for the manufacture or production of a chemical substance including alloys, optical glass, semiconductors and inter-metallic compounds, was deemed to be endorsed with the words "Licences of right": for a pre-Act patent, from the commencement of the Act or from three years after sealing under the 1911 Act, whichever was later; and for a patent granted after the commencement of the Act, from the expiration of three years from the date of sealing. Sub-section (2) applied section 88 to every such deemed endorsement.

In one line

Two years after a compulsory licence has been granted, the patent itself may be revoked if the invention is still not worked, the public's requirements are still unmet, or the price is still not reasonably affordable.

In the wording a student can write in an exam: section 85 of the Patents Act, 1970 provides that where a compulsory licence has been granted in respect of a patent, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the Controller for an order revoking the patent on the ground that the invention has not been worked in the territory of India, or that the reasonable requirements of the public have not been satisfied, or that the invention is not available to the public at a reasonably affordable price.

Why the Act has a second, harsher remedy

Because a compulsory licence may not be enough. The licensee may be unable to work the invention, or may work it and still leave the public unserved, or the patentee may go on doing nothing.

And because the bargain has then wholly failed. Section 83 says patents are granted to secure that inventions are worked in India. If two years of a compulsory licence have not produced working, the monopoly is serving nobody, and the Act allows it to be taken away.

But the Act puts revocation last, not first. The sequence is deliberate: a voluntary licence, then a compulsory licence, then two more years, then revocation.

The provision itself

Section 85(1). Where, in respect of a patent, a compulsory licence has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the Controller for an order revoking the patent on the ground that:

the patented invention has not been worked in the territory of India; or

the reasonable requirements of the public with respect to the patented invention have not been satisfied; or

the patented invention is not available to the public at a reasonably affordable price.

Section 85(2). Every application shall contain the prescribed particulars and the facts on which it is based, and, in the case of an application other than by the Central Government, shall also set out the nature of the applicant's interest.

Section 85(3). The Controller, if satisfied of any of those matters, may make an order revoking the patent.

Section 85(4). Every application shall ordinarily be decided within one year of its being presented to the Controller.

Broken down

The condition precedent is the whole difficulty. Sub-section (1) opens "Where, in respect of a patent, a compulsory licence has been granted". No compulsory licence, no section 85 application. And India has granted one compulsory licence in the history of the Act, in 2012, upheld in Bayer Corporation v. Union of India, 2014 SCC OnLine Bom 963, which chapter 770 works.

In one line

The Act never says what working means, and the argument is whether importing the article into India counts.

In the wording a student can write in an exam: section 82 of the Patents Act, 1970 defines "patented article" as including any article made by a patented process, and "patentee" as including an exclusive licensee, for the purposes of Chapter XVI; the Act nowhere defines "worked", and whether importation amounts to working has been held to depend on the facts of each case.

Section 82: the only definitions Chapter XVI gives

In Chapter XVI, unless the context otherwise requires:

(a) "patented article" includes any article made by a patented process; and

(b) "patentee" includes an exclusive licensee.

Both extensions matter. Clause (a) means that the working obligations and the compulsory licence grounds reach the products of a patented process, not only articles covered by a product claim. Clause (b) means that where the Chapter speaks of the patentee, an exclusive licensee is included, so a compulsory licence application is not defeated by the patentee having licensed the whole field to somebody else.

And the definition Chapter XVI does not give is "worked". That absence is the whole of this chapter.

What the Act says around the gap

Section 83(a). Patents are granted to encourage inventions and to secure that they are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay.

Section 83(b). Patents are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article.

Section 84(1)(c). A ground for a compulsory licence is that the invention is not worked in the territory of India.

Section 84(7)(d). The reasonable requirements are deemed unsatisfied if the invention is not being worked in the territory of India on a commercial scale to an adequate extent, or not so worked to the fullest extent that is reasonably practicable.

Section 84(7)(e). They are also deemed unsatisfied if working in India is being prevented or hindered by importation of the patented article by the patentee, by persons claiming under him, by persons purchasing from him, or by persons against whom the patentee is not taking infringement proceedings.

Section 146. The patentee and every licensee must state the extent to which the invention has been worked on a commercial scale in India, and chapter 680 works it.

Read those together and the policy is plain, even if the definition is missing. Section 83(b) says importation alone is not what a patent is for; section 84(7)(e) treats importation as capable of hindering working. But neither says that importation can never be working.

In one line

An assignment of a patent is a deed that identifies the patent, transfers it, states the price, gives warranties and gets registered.

In the wording a student can write in an exam: an assignment is the transfer of ownership of a patent or a share in it, which by section 68 of the Patents Act, 1970 is not valid unless in writing, reduced to a document embodying all the terms and conditions, and duly executed, and which the assignee must register under section 69.

The three kinds of assignment

Legal assignment. The whole of the patentee's interest in a granted patent, transferred by a deed. The assignee registers under section 69 and becomes the patentee within section 2(1)(p).

Equitable assignment. An agreement to assign, or a transfer that does not satisfy section 68's requirements as to form. It gives the transferee an interest that equity will enforce, and the proviso to section 70 preserves equities. But the transferee is not the patentee and cannot sue as one until a proper assignment is made and registered.

Mortgage. A transfer as security, with a right of redemption. Section 69(1) names a mortgagee, and the interest is entered as a notice under section 69(3)(b) rather than as proprietorship.

And a partial assignment is possible. An undivided share, which produces co-ownership under section 50; a defined territory within India; or a defined field of use. Each must be drawn precisely, because what is not assigned stays with the assignor.

What the deed must contain

Parties and recitals. Who is assigning, who is taking, and why. The recitals should state the assignor's title, the patent's number and date, and any prior dealings.

The patent, identified exactly. Number, date of filing, title, and, where the assignment is partial, the claims, territory or field concerned. An assignment that identifies the patent only by its subject matter invites a dispute.

The operative words of transfer. "Hereby assigns to the assignee absolutely all its right, title and interest in and to the said patent, together with all rights of action and all rights to sue for and recover damages in respect of infringements committed before the date hereof."

That last clause is not optional. A right to sue for past infringements does not pass automatically with the patent; it is a separate chose in action, and it must be assigned in terms if the assignee is to have it.

Consideration. A lump sum, instalments, a royalty, shares, or a combination. Where consideration is deferred, the deed should say what happens on default.

Warranties from the assignor. That it is the sole beneficial owner; that the patent is in force and the renewal fees are paid to date; that no licence, mortgage or charge subsists except as disclosed; that no revocation or opposition proceeding is pending or threatened; and that no third party has asserted invalidity or non-infringement.

In one line

A patent licence is drafted clause by clause against section 140, and its commercial value lies in the royalty, the field and the improvements.

In the wording a student can write in an exam: a patent licence must satisfy section 68 of the Patents Act, 1970 as to form, must be registered under section 69, and must not contain any of the conditions declared void by section 140; subject to that, its terms are matters of contract governed by the Indian Contract Act, 1872.

The order of a licence agreement

Parties, recitals and definitions. Who, and what the licensed patent, the licensed products, the territory, the field of use and net sales mean. Definitions do more work in a licence than in any other commercial contract.

The grant. Which of the section 48 acts are licensed, over which patent, in what territory, in what field, for how long, and on what exclusivity. Chapter 760 works exclusivity.

Sub-licensing. Permitted or not; if permitted, on what terms, with what royalty share and with what obligation to pass down the licence's own restrictions.

Consideration. An upfront fee, a running royalty, minimum annual royalties, and milestone payments.

Records, reports and audit. The licensee's obligation to keep books, report quarterly and permit an audit, with the cost falling on the licensee if the audit finds an understatement over a threshold.

Improvements. Who owns what each side develops, and what licence each gives the other.

Quality, marking and product liability. Specifications, the right to inspect, and who bears a claim by a consumer.

Prosecution and maintenance. Who pays the renewal fees, who conducts any opposition, and what happens if the licensor decides to abandon the patent.

Enforcement. Who sues an infringer, who pays, and how any recovery is shared. This clause matters most to a non-exclusive licensee, which has no right to sue at all.

Warranties and their limits. Title and quiet enjoyment; and no warranty of validity.

Term and termination. Expiry with the patent; termination for material breach after notice; termination on insolvency; and what survives, including confidentiality and accrued royalties.

Confidentiality, notices, assignment, force majeure, governing law and dispute resolution.

The clauses that carry the money

The royalty base. "Net sales" should be defined as gross invoiced amounts less returns, trade discounts actually allowed, freight and insurance separately stated, and taxes. Every one of those exclusions is negotiated, and a licensee that sells through an affiliate needs a transfer-pricing provision so that the base is not eroded.

Stacking. Where the licensee must also pay royalties to others to make the product, a stacking clause reduces this royalty proportionately, subject to a floor.

Minimum royalties. The commercial answer to a licensee who takes an exclusive licence and does nothing. The alternative, and often the better one, is a diligence clause requiring the licensee to achieve stated milestones, with the licence converting to non-exclusive on failure.

In one line

Certain conditions in a patent licence or sale are void, and their presence is a defence to an infringement suit.

In the wording a student can write in an exam: section 140 of the Patents Act, 1970 provides that it shall not be lawful to insert in a contract for the sale or lease of a patented article or an article made by a patented process, or in a licence to manufacture or use a patented article, or in a licence to work a patented process, a condition of the kinds set out in clauses (a) to (d), and that any such condition shall be void.

The provision itself

Section 140(1). It shall not be lawful to insert:

(i) in any contract for or in relation to the sale or lease of a patented article or an article made by a patented process; or (ii) in a licence to manufacture or use a patented article; or (iii) in a licence to work any process protected by a patent,

a condition the effect of which may be:

(a) the tie-in. To require the purchaser, lessee or licensee to acquire from the vendor, lessor or licensor or his nominees, or to prohibit him from acquiring, or to restrict in any manner or to any extent his right to acquire from any person, or to prohibit him from acquiring except from the vendor, lessor or licensor or his nominees, any article other than the patented article or an article other than that made by the patented process;

(b) the use restriction on other articles. To prohibit the purchaser, lessee or licensee from using, or to restrict in any manner or to any extent his right to use, an article other than the patented article or an article other than that made by the patented process, which is not supplied by the vendor, lessor or licensor or his nominee;

(c) the use restriction on other processes. To prohibit the purchaser, lessee or licensee from using, or to restrict in any manner or to any extent his right to use, any process other than the patented process;

(d) inserted in 2002. To provide exclusive grant back, prevention to challenges to validity of patent, and coercive package licensing;

and any such condition shall be void.

Section 140(2): no escape by a separate agreement. A condition of the kind in clause (a), (b) or (c) does not cease to fall within sub-section (1) merely because the agreement containing it has been entered into separately, whether before or after the contract relating to the sale, lease or licence.

Section 140(3): the defence. In proceedings against any person for the infringement of a patent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent and containing a condition declared unlawful by this section. Its proviso: the sub-section does not apply if the plaintiff is not a party to the contract and proves to the court's satisfaction that the restrictive condition was inserted without his knowledge and consent, express or implied.

In one line

When the patent ends, the licensee may walk away on three months' notice, whatever the contract says.

In the wording a student can write in an exam: section 141 of the Patents Act, 1970 provides that any contract for the sale or lease of a patented article, or for licence to manufacture, use or work a patented article or process, or relating to any such sale, lease or licence, may at any time after the patent or all the patents by which the article or process was protected at the time of making the contract have ceased to be in force, and notwithstanding anything to the contrary in that or any other contract, be determined by the purchaser, lessee or licensee on giving three months' notice in writing to the other party.

Why the Act gives this right

Because a licensee should not go on paying for a monopoly that has ended. When the patent expires, the invention is in the public domain and anybody may use it. A licensee who is still bound to a royalty is paying for nothing while its competitors pay nothing.

And because the contract will usually not say so. A long-term licence drafted in year three may run for fifteen years and say nothing about what happens when the patent falls. Without section 141 the licensee would be left to argue frustration or total failure of consideration, both of which are difficult.

So the Act supplies the term. It is a statutory right to determine, exercisable notwithstanding anything to the contrary in the contract or in any other contract, which is the phrase that makes it impossible to draft around.

The provision itself

Section 141(1). Any contract:

for the sale or lease of a patented article; or

for licence to manufacture, use or work a patented article or process; or

relating to any such sale, lease or licence,

may at any time after the patent, or all the patents by which the article or process was protected at the time of the making of the contract, has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by the purchaser, lessee or licensee on giving three months' notice in writing to the other party.

Section 141(2). The provisions of the section are without prejudice to any right of determining a contract exercisable apart from this section.

Broken down

Whose right is it? The purchaser, lessee or licensee. Not the seller, lessor or licensor. The asymmetry is deliberate: the party who has lost the benefit of the bargain gets the exit.

In one line

A patent licence that goes beyond protecting the patent can be an anti-competitive agreement or an abuse of dominance, and the Competition Act's exemption for intellectual property is narrower than it looks.

In the wording a student can write in an exam: section 3(5)(i) of the Competition Act, 2002 exempts from section 3 the right of any person to restrain infringement of, or to impose reasonable conditions as may be necessary for protecting, rights conferred under the Patents Act, 1970 among other statutes; but section 4, on abuse of a dominant position, contains no such exemption.

Two statutes over the same conduct

The Patents Act voids a short list. Section 140 declares four kinds of condition void, and chapter 890 works them.

The Competition Act reaches much further. Section 3 prohibits agreements that cause or are likely to cause an appreciable adverse effect on competition, and section 4 prohibits abuse of a dominant position.

And the two are not alternatives. A tie-in clause may be void under section 140 of the Patents Act and an anti-competitive agreement under section 3 of the Competition Act, with different consequences: voidness in the one case, a penalty and a cease-and-desist order in the other.

The exemption, and its limits

Section 3(5)(i) of the Competition Act 2002. Nothing in section 3 shall restrict the right of any person to restrain any infringement of, or to impose reasonable conditions as may be necessary for protecting any of his rights which have been or may be conferred upon him under the statutes listed, which include the Patents Act 1970.

Three limits are built into that sentence.

One: it exempts only section 3. There is no equivalent in section 4, so a dominant patentee's conduct is fully exposed to the abuse provisions.

Two: "reasonable conditions as may be necessary for protecting" the rights. A condition that goes beyond what the patent protects is outside the exemption. A field-of-use limit protects the right; a requirement to buy unpatented consumables does not.

Three: the rights are those "conferred upon him under" the Act. Section 48 confers the right to prevent the listed acts. A term that seeks more than section 48 gives is not protecting a conferred right.

Section 4: abuse of dominance

A patent is not itself dominance, and the Competition Commission has said so. Dominance is assessed in a relevant market, and a patent over one product in a market with substitutes confers none.

But a patent can create dominance, most obviously where the patented technology is essential to a standard, so that nobody can make a compliant product without it. That is the standard essential patent problem.

What section 4 then forbids includes imposing unfair or discriminatory conditions or prices, limiting production or technical development, and using dominance in one market to enter or protect another.

In one line

Traditional knowledge cannot be patented in India, and knowledge held orally in any local or indigenous community anywhere destroys novelty.

In the wording a student can write in an exam: section 3(p) of the Patents Act, 1970 provides that an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components is not an invention; and section 25(1)(k), section 25(2)(k) and section 64(1)(q) make it a ground of opposition and of revocation that the invention was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Why the ordinary rules were not enough

Because the novelty rules assume knowledge is written down. Chapter 400 works the state of the art: a claim is anticipated by publication in a document, or by prior public use. An examiner searches databases of documents.

Traditional knowledge is usually neither. It is held orally, transmitted in families and communities, recorded if at all in classical texts in Sanskrit, Urdu, Tamil or Persian that no patent database indexes.

So a foreign applicant could claim it, and did. Chapter 930 works the three famous instances. Each turned on the same failure: the knowledge existed, and the examiner could not find it.

India's answer had three parts. A statutory exclusion, so that the subject matter is not patentable at all. An express ground of opposition and revocation, so that oral knowledge counts. And a searchable library, so that examiners can find it, which chapter 940 works.

What traditional knowledge is

There is no statutory definition in the Patents Act. The working description used in Indian policy and at the World Intellectual Property Organization is knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.

Three features matter for patent law. It is usually collective rather than individual, so there is no inventor to name under section 6. It is cumulative, developed over generations rather than at a moment, so there is no priority date. And it is often undocumented, which is why it escapes an ordinary novelty search.

And it is not folklore alone. For this paper the relevant category is technical: medicinal uses of plants, agricultural practices, food preparation, textile and metallurgical techniques.

The four provisions

Section 3(p): not an invention. An invention which, in effect, is traditional knowledge, or which is an aggregation or duplication of known properties of traditionally known component or components, is not an invention within the meaning of the Act.

Two limbs, and the second is the wider. "In effect is traditional knowledge" catches a claim that simply restates what a community knew. "An aggregation or duplication of known properties of traditionally known components" catches the dressed-up version: combining two traditionally known plants, each used for the same purpose, and claiming the mixture.

In one line

Three foreign patents over things India had used for centuries were challenged and overturned, and between them they changed Indian law and produced the Traditional Knowledge Digital Library.

In the wording a student can write in an exam: biopiracy is the appropriation of biological resources or traditional knowledge without the authorisation of, or benefit to, the community that holds it; and the turmeric, neem and basmati disputes are the three episodes through which India came to insist on the exclusions now in section 3(p) and the grounds in sections 25 and 64.

Turmeric

The patent. In 1995 the United States Patent and Trademark Office granted a patent to two researchers at a United States university for the use of turmeric in wound healing.

Why it was objectionable. Turmeric has been applied to wounds in India for centuries. The use was not new anywhere except in a database.

The challenge. The Council of Scientific and Industrial Research filed a re-examination request, and its evidence was documentary: an ancient Sanskrit text and a paper published in an Indian medical journal in 1953.

The outcome. The claims were revoked in 1997, the office accepting that the use was not novel.

The lesson India drew. The challenge succeeded because the knowledge happened to be written down and could be produced. Where it is only oral, the same challenge would have failed. That is the direct origin of section 25(1)(k)'s reference to knowledge "oral or otherwise", which chapter 920 works.

Neem

The patent. In 1994 the European Patent Office granted a patent, on an application by a United States company and the United States Department of Agriculture, for a method of controlling fungi on plants using a hydrophobic extracted neem oil.

Why it was objectionable. The fungicidal use of neem is ancient in India and is described in Indian texts and practice.

The challenge. An opposition was filed by a group including a member of the European Parliament, a non-governmental organisation and an Indian farmers' organisation. The evidence included prior public use in India, supported by affidavits from an Indian company that had been making and selling a neem-based product for years before the priority date.

The outcome. The Opposition Division revoked the patent in 2000, and the revocation was upheld on appeal in 2005.

The lesson. Prior use in India defeated a European patent, but only because somebody could produce evidence of it. Documented use is provable; village practice is not, unless it is recorded.

Basmati

The patent. In 1997 the United States Patent and Trademark Office granted a patent to a Texas company for basmati rice lines and grains, with claims covering rice plants, grains and a method of breeding.

In one line

India translated its classical medical texts into a searchable database and gave foreign patent offices access to it, so that examiners can find the prior art before they grant the patent.

In the wording a student can write in an exam: the Traditional Knowledge Digital Library is a database created in 2001 by the Council of Scientific and Industrial Research with the Department of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homoeopathy, which converts documented Indian traditional medicinal knowledge into five international languages and classifies it so that patent examiners can search it as prior art.

The problem it solves

Chapter 930 works the three biopiracy episodes, and their common feature is that the knowledge existed and the examiner could not find it.

Three reasons an examiner could not. The texts are in Sanskrit, Urdu, Persian, Arabic and Tamil, which no examiner reads. They are in classical formats that no patent database indexes. And they are classified, if at all, by the traditional system's own categories, which do not map onto the International Patent Classification.

So the answer had to do three things at once. Translate, so that examiners can read. Structure, so that a database can hold it. And classify, so that a search on the examiner's own terms retrieves it.

What the library is

Created in 2001, by the Council of Scientific and Industrial Research and what is now the Ministry of Ayush.

What it contains. Formulations and knowledge from Ayurveda, Unani, Siddha and Yoga, transcribed from classical texts, with the original reference, the formulation, the ingredients with their botanical names, the method of preparation and the use.

Five languages. The entries are rendered in English, German, French, Japanese and Spanish, which are the working languages of the major patent offices.

A classification of its own. The Traditional Knowledge Resource Classification structures the material into a hierarchy compatible with the International Patent Classification, so that an examiner searching a subclass reaches the traditional entries.

And it is very large. The published figures run to hundreds of thousands of formulations, drawn from several hundred classical texts.

How it reaches foreign examiners

By access agreements, not by publication. The library is not open to the public.

Access has been given to major patent offices, including the European Patent Office, the United States Patent and Trademark Office, and the offices of Japan, Germany, the United Kingdom, Canada and Australia, under agreements that permit examiners to search it for the purposes of examination and forbid disclosure to third parties.

Why it is closed rather than open. This is the criticism most worth understanding. A publicly available database is prior art against everybody, but it also hands the knowledge to anybody who wants to commercialise it without any obligation to the communities that hold it. India chose a defensive measure: make the knowledge findable by examiners, so that patents are refused, without making it a free resource.

In one line

Taking a plant or a micro-organism from India for research requires approval, and a patent based on that research requires approval too, with a share of the benefits going back.

In the wording a student can write in an exam: bioprospecting is the search for biological resources and associated traditional knowledge for commercial use; the Convention on Biological Diversity 1992 and the Nagoya Protocol 2010 establish that States have sovereign rights over their biological resources and that access requires prior informed consent and mutually agreed terms; and in India the Biological Diversity Act, 2002 gives effect to that, requiring approval of the National Biodiversity Authority before an intellectual property application based on research on Indian biological resources.

Bioprospecting and biopiracy distinguished

Bioprospecting is lawful. It is the systematic search for useful compounds, genes and organisms in nature. A pharmaceutical company screening soil samples for antibiotic producers is bioprospecting, and a great deal of modern medicine came from it.

Biopiracy is bioprospecting without consent, benefit or acknowledgement. Chapter 930 works the three famous instances.

The line between them is process, not purpose. Prior informed consent from the country and the community, agreed terms, a share of the benefit and disclosure of the source turn the one into the other.

The international framework

The Convention on Biological Diversity, 1992. Article 3 affirms that States have the sovereign right to exploit their own resources. Article 15 provides that the authority to determine access to genetic resources rests with the national government and is subject to national legislation; that access shall be on mutually agreed terms and subject to prior informed consent of the providing party; and that each party shall take measures to share in a fair and equitable way the results of research and the benefits arising from commercial use, on mutually agreed terms.

Article 8(j) requires each party, subject to its national legislation, to respect, preserve and maintain the knowledge, innovations and practices of indigenous and local communities, to promote their wider application with the approval and involvement of the holders, and to encourage the equitable sharing of the benefits.

The Nagoya Protocol, 2010, in force 2014, gives article 15 an operative machinery: access permits, internationally recognised certificates of compliance, checkpoints and compliance measures in user countries. India ratified it.

And the contrast with TRIPS is the whole political argument. TRIPS requires patents; the Convention requires consent and benefit sharing; and TRIPS contains no obligation to disclose the source of a genetic resource. India has pressed for an amendment to article 29 to supply one, and chapters 180 and 960 work that.

The Biological Diversity Act 2002

Section 3: foreigners need approval. No person who is not a citizen of India, no non-resident citizen, and no body corporate or association not registered in India or having non-Indian participation in its share capital or management, shall obtain any biological resource occurring in India, or knowledge associated with it, for research or for commercial utilisation or for bio-survey and bio-utilisation, without the previous approval of the National Biodiversity Authority.

In one line

An Indian patent specification must say where the biological material came from, and getting that wrong or leaving it out can cost the patent.

In the wording a student can write in an exam: sub-clause (D) of proviso (ii) to section 10(4)(d) of the Patents Act, 1970 requires an applicant to disclose the source and geographical origin of the biological material used in an invention in the specification, and by sections 25(1)(j), 25(2)(j) and 64(1)(p) it is a ground of opposition and of revocation that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.

Why disclosure is the pivot of the whole topic

Because everything else depends on knowing where the material came from. The Biological Diversity Act's access controls, the benefit-sharing obligation and the traditional knowledge exclusions all presuppose that somebody can trace the resource. Chapters 920 and 950 work them.

Because it is cheap to require and hard to evade. The applicant knows the answer. Requiring it in the specification costs nothing and puts the fact on the public record, where a State Biodiversity Board, a community or a competitor can see it.

And because the alternative is investigation after the event. The turmeric, neem and basmati episodes in chapter 930 all involved reconstructing an origin nobody had recorded.

The provision

Section 10(4)(d)(ii)(D). Where the applicant mentions a biological material in the specification which may not be described so as to satisfy clauses (a) and (b), and the material is not available to the public, the application shall be completed by depositing it with an international depositary authority under the Budapest Treaty and by fulfilling four conditions, of which the fourth is to disclose the source and geographical origin of the biological material in the specification, when used in an invention.

The other three conditions are worked in chapters 150 and 500. Deposit by the filing date; all available characteristics with the depositary's particulars; and restricted access until the application or priority date.

Note where sub-clause (D) sits. It is inside the proviso about deposits. In practice, and in the Patent Office's own examination practice, the disclosure duty is applied whenever biological material is used in an invention, whether or not a deposit is needed, and the words "when used in an invention" support that. Form 1 requires a declaration on the point, and the Rules require the applicant to state whether the invention uses biological material from India and whether the approval of the National Biodiversity Authority has been obtained.

The two words

"Source" is where the applicant got the material: the collection, the culture bank, the supplier, the collaborating institution.

In one line

The Central Government may use any patented invention for its own purposes, without asking anybody, and must pay the patentee not more than adequate remuneration.

In the wording a student can write in an exam: by section 100(1) of the Patents Act, 1970, notwithstanding anything contained in the Act, at any time after an application for a patent has been filed or a patent has been granted, the Central Government and any person authorised in writing by it may use the invention for the purposes of Government in accordance with Chapter XVII.

Section 99: what "for the purposes of Government" means

Section 99(1). For the purposes of Chapter XVII, an invention is said to be used for the purposes of Government if it is made, used, exercised or vended for the purposes of the Central Government, a State Government or a Government undertaking.

Note the breadth. All three tiers are included, and "Government undertaking" is defined in section 2(1)(h) to cover a department, a statutory corporation, a Government company and an institution wholly or substantially financed by Government.

Section 99(3): the section 47 carve-out. Nothing in Chapter XVII applies in respect of any importation, making or using of a machine, apparatus or other article, any using of a process, or any importation, using or distribution of a medicine or drug, as may be made by virtue of one or more of the conditions specified in section 47.

So the two regimes do not overlap. Where the Government is acting within a section 47 condition, which chapter 350 works, Chapter XVII does not apply and no remuneration is payable. Where it goes beyond those conditions, Chapter XVII applies and remuneration is.

Section 100: the power

Section 100(1). Notwithstanding anything contained in this Act, at any time after an application for a patent has been filed at the patent office or a patent has been granted, the Central Government and any person authorised in writing by it may use the invention for the purposes of Government in accordance with Chapter XVII.

Three features of that sentence. It overrides the whole Act. It operates from the filing of the application, not from grant. And it extends to any person authorised in writing, so a private manufacturer may be authorised to make for the Government.

Section 100(2): free use where the Government already had it. Where an invention has, before the priority date of the relevant claim, been duly recorded in a document, or tested or tried, by or on behalf of the Government or a Government undertaking, otherwise than in consequence of a communication from the patentee or a person from whom he derives title, any use for the purposes of Government may be made free of any royalty or other remuneration.

In one line

Where the Government uses a patented invention, any clause in a licence or assignment that would restrict that use, or charge for it, has no effect, and the money is divided between the people entitled.

In the wording a student can write in an exam: section 101 of the Patents Act, 1970 provides that in relation to any use of a patented invention for the purposes of Government, the provisions of any licence, assignment or agreement between the patentee and any person other than the Central Government shall be of no effect so far as they restrict or regulate that use or provide for payments in respect of it, and that copyright in a model or document is not infringed by its reproduction or publication in connection with that use.

Section 101(1): the clauses that have no effect

In relation to any use of a patented invention, or of an invention for which an application is pending, made for the purposes of Government:

(a) by the Central Government or a person authorised under section 100; or (b) by the patentee or applicant to the order of the Central Government,

the provisions of any licence, assignment or agreement granted or made between the patentee or applicant, or a person deriving title from or giving title to him, and any person other than the Central Government, shall be of no effect so far as those provisions:

(i) restrict or regulate the use for the purposes of Government of the invention, or of any model, document or information relating to it; or

(ii) provide for the making of payments in respect of any such use of the invention, model, document or information.

And the copyright point. The reproduction or publication of any model or document in connection with that use for the purposes of Government shall not be deemed to be an infringement of any copyright subsisting in the model or document.

Why the sub-section is necessary

Because a patentee could otherwise obstruct by contract what it cannot obstruct by patent. Section 100 gives the Government the right to use. If the patentee had granted an exclusive licence containing a covenant that the invention shall not be worked for any Government department, or that any Government use attracts a payment to the licensee, the Government's own right would be caught in a private arrangement it was never party to.

So the Act simply disables the clause. Not the whole licence: the licence stands, and it is only the offending provisions, and only "so far as" they do those two things, that are of no effect.

And the copyright limb closes a second gap. Working an invention usually requires drawings, manuals and models, in which copyright subsists. Without the last sentence of sub-section (1) a patentee could refuse Government use by asserting copyright in the very documents that teach it.

In one line

If the Central Government thinks a patent should be taken for a public purpose, it publishes a notification and the patent becomes the Government's.

In the wording a student can write in an exam: section 102 of the Patents Act, 1970 provides that the Central Government may, if satisfied that it is necessary that an invention which is the subject of an application or a patent should be acquired from the applicant or the patentee for a public purpose, publish a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in it shall, by force of the section, stand transferred to and be vested in the Central Government.

The provision itself

Section 102(1): the acquisition. The Central Government may, if satisfied that it is necessary that an invention which is the subject of an application for a patent or a patent should be acquired from the applicant or the patentee for a public purpose, publish a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in respect of the invention or patent shall, by force of this section, stand transferred to and be vested in the Central Government.

Section 102(2): notice. Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the patentee and other persons appearing in the register as having an interest in the patent.

Section 102(3): compensation. The Central Government shall pay to the applicant, or the patentee and other persons appearing on the register as having an interest, such compensation as may be agreed between them; or, in default of agreement, as may be determined by the High Court on a reference under section 103 to be just, having regard to:

the expenditure incurred in connection with the invention; and, in the case of a patent, the term of the patent, the period during which and the manner in which it has already been worked, including the profits made during that period by the patentee or by a licensee, exclusive or otherwise; and other relevant factors.

Broken down

"By force of this section" is the operative phrase. No conveyance, no assignment, no registration is needed. The notification vests the patent.

"For a public purpose" is the only condition, and it is stated as the Government's own satisfaction. The section does not define a public purpose and does not require any procedure before the notification.

Notice comes after the vesting, under sub-section (2). The section is not drafted as a hearing followed by an order; it is drafted as a taking followed by compensation.

In one line

Every dispute about Government use or acquisition goes to the High Court, and the Government may there attack the patent it is being asked to pay for.

In the wording a student can write in an exam: section 103 of the Patents Act, 1970 provides that any dispute as to the exercise by the Central Government or an authorised person of the powers conferred by section 100, or as to the terms for such use, or as to a person's right to part of a payment, or as to the amount of compensation payable for an acquisition under section 102, may be referred to the High Court by either party in the manner prescribed by the rules of the High Court.

The provision itself

Section 103(1): what may be referred, and by whom. Any dispute as to:

the exercise by the Central Government or a person authorised by it of the powers conferred by section 100; or

the terms for the use of an invention for the purposes of Government under that section; or

the right of any person to receive any part of a payment made under section 100(3); or

the amount of compensation payable for the acquisition of an invention or a patent under section 102,

may be referred to the High Court by either party to the dispute, in such manner as may be prescribed by the rules of the High Court.

Section 103(2): the Government's counter-attack. In any proceeding under the section to which the Central Government is a party, the Central Government may:

(a) if the patentee is a party, petition by way of counter-claim for revocation of the patent on any ground upon which a patent may be revoked under section 64; and

(b) whether the patentee is or is not a party, put in issue the validity of the patent without petitioning for its revocation.

Section 103(3): confidential disclosure. If a question arises whether an invention has been recorded, tested or tried as mentioned in section 100, and the disclosure of a document or of evidence of the test or trial would, in the opinion of the Central Government, be prejudicial to the public interest, the disclosure may be made confidentially to the advocate of the other party or to an independent expert mutually agreed upon.

Section 103(4): what the Court weighs. In determining any dispute between the Central Government and any person as to terms for the use of an invention for the purposes of Government, the High Court shall have regard to any benefit or compensation which that person, or any person from whom he derives title, may have received or may be entitled to receive, directly or indirectly, in respect of the use of the invention for the purposes of Government.

In one line

The Central Government may have a patent revoked if it relates to atomic energy, and may itself revoke one that is mischievous to the State or generally prejudicial to the public.

In the wording a student can write in an exam: section 65 of the Patents Act, 1970 empowers the Central Government to direct the Controller to revoke a patent for an invention relating to atomic energy for which no patent can be granted under section 20(1) of the Atomic Energy Act, 1962; and section 66 provides that where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette, whereupon the patent shall be deemed to be revoked.

Section 65: atomic energy

Section 65(1). Where at any time after grant the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no patent can be granted under section 20(1) of the Atomic Energy Act, 1962, it may direct the Controller to revoke the patent; and thereupon the Controller, after giving notice to the patentee and every other person whose name has been entered in the register as having an interest in the patent, and after giving them an opportunity of being heard, may revoke the patent.

Section 65(2). In any proceeding under sub-section (1), the Controller may allow the patentee to amend the complete specification in such manner as he considers necessary instead of revoking the patent.

Read it as the enforcement of section 4. Chapter 110 works section 4, which forbids the grant of a patent for an invention relating to atomic energy falling within section 20(1) of the 1962 Act. Section 65 is what happens when one was granted anyway.

Three protections are built in. The direction is the Government's, but the revocation is the Controller's, so there is an adjudicating step. Notice must go to the patentee and to every person on the register with an interest. And amendment is available as an alternative under sub-section (2), which is the sensible answer where only some claims stray into the reserved field.

And the order is appealable. An order of the Controller revoking a patent under section 65 is an order the appeal in section 117A reaches, and chapter 1180 works it.

Section 66: mischievous to the State

The whole provision, in one sentence. Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette, and thereupon the patent shall be deemed to be revoked.

In one line

A patentee may offer to give up the patent, but the offer is published, may be opposed, and takes effect only when the Controller accepts it and revokes.

In the wording a student can write in an exam: section 63 of the Patents Act, 1970 provides that a patentee may at any time by notice to the Controller offer to surrender his patent; the Controller shall publish the offer and notify every other person appearing in the register as having an interest; any person interested may oppose within the prescribed period; and if the Controller is satisfied after hearing the patentee and any opponent that the patent may properly be surrendered, he may accept the offer and by order revoke the patent.

Why anybody surrenders a patent

To stop paying renewal fees on something worthless. In practice the patentee simply lets the patent lapse under section 53(2), and chapter 360 works it. Surrender is deliberate where lapse would be too slow or too public.

To settle litigation. A patentee facing a revocation petition it expects to lose may prefer to surrender, which avoids a judgment recording that the patent was bad.

To comply with an agreement. A settlement or a licence may require the patentee to surrender.

And to clear the way for something else. Where a patent of addition or a later patent covers the same ground, surrendering the earlier one may be tidier than maintaining both.

The provision itself

Section 63(1). A patentee may, at any time, by giving notice in the prescribed manner to the Controller, offer to surrender his patent.

Section 63(2). Where such an offer is made, the Controller shall publish the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.

Section 63(3). Any person interested may, within the prescribed period after such publication, give notice to the Controller of opposition to the surrender, and where such notice is given the Controller shall notify the patentee.

Section 63(4). If the Controller is satisfied, after hearing the patentee and any opponent if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.

Broken down: four steps, and why each exists

Step one, the offer. It is an offer, not a surrender. The patent continues until the Controller acts.

Step two, publication and notice to those on the register. A registered licensee or mortgagee has an economic interest in the patent's survival, and sub-section (2) makes sure they hear about it.

Step three, opposition by any person interested. Sub-section (3) does not confine the objector to persons on the register: any person interested may oppose.

In one line

Section 64 lists seventeen grounds on which the High Court may take a patent away, and they are wider than the grounds of opposition.

In the wording a student can write in an exam: by section 64(1) of the Patents Act, 1970, subject to the provisions of the Act, a patent, whether granted before or after the commencement of the Act, may be revoked on a petition of any person interested or of the Central Government, or on a counter-claim in a suit for infringement, by the High Court, on any of the grounds set out in clauses (a) to (q).

The seventeen grounds

(a) Prior claiming. That the invention, so far as claimed, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India.

(b) The applicant was not entitled. That the patent was granted on the application of a person not entitled under the Act to apply. Chapter 250 works section 6.

(c) Wrongful obtaining. That the patent was obtained wrongfully in contravention of the rights of the petitioner or of a person under or through whom he claims. Chapters 580 and 710 work sections 26 and 52.

(d) Not an invention. That the subject of any claim is not an invention within the meaning of the Act. This is sections 2(1)(j) and 3, worked in chapters 70 to 110.

(e) Not new. That the invention so far as claimed is not new, having regard to what was publicly known or publicly used in India before the priority date, or to what was published in India or elsewhere in any of the documents referred to in section 13. Chapter 400 works novelty.

(f) Obvious. That the invention so far as claimed is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India, or what was published in India or elsewhere, before the priority date. Chapter 420 works it.

(g) Not useful. That the invention so far as claimed is not useful. Chapter 430 works the point that usefulness survives here and not in the definition.

(h) Insufficiency. That the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say that the description or the instructions are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to work the invention; or that it does not disclose the best method of performing it known to the applicant and for which he was entitled to claim protection. Chapter 520 works it.

In one line

Only a person interested, the Central Government or a defendant by counter-claim may seek revocation, it goes to the High Court, and a person may not run two of these remedies over the same patent at once.

In the wording a student can write in an exam: section 64(1) of the Patents Act, 1970 provides that a patent may be revoked on a petition of any person interested or of the Central Government, or on a counter-claim in a suit for infringement, by the High Court; and section 2(1)(t) defines a person interested to include a person engaged in, or in promoting, research in the same field as that to which the invention relates.

The three routes

Route one: a petition by a person interested. Filed in the High Court, at any time during the life of the patent.

Route two: a petition by the Central Government. Under section 64(1), on any of the seventeen grounds; and separately under section 64(4), where the patentee has without reasonable cause failed to comply with a request to make, use or exercise the invention for the purposes of Government on reasonable terms.

Route three: a counter-claim in an infringement suit. The defendant, sued under section 104, counter-claims that the patent should be revoked. The proviso to section 104 then transfers the suit and the counter-claim to the High Court, and chapter 1060 works it.

And note what is not a route. A post-grant opposition under section 25(2) is not revocation: it goes to the Controller, is confined to one year and to eleven grounds, and is a different proceeding. Chapters 560 and 570 work it.

Who is a person interested

Section 2(1)(t). "Person interested" includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

"Includes" makes the definition extensive, not exhaustive. The named category, a researcher, is the one Parliament wanted to put beyond argument; the ordinary meaning survives alongside it.

Who qualifies in practice. A manufacturer in the same trade. A trader dealing in the article. A person the patentee has threatened. A research institute or a university department working in the field. A generic manufacturer preparing a product that the patent would block.

Who does not. A stranger with no connection to the art. A person acting for somebody who will not come forward, though this is a question of fact.

And the standard is real interest, not a bare assertion. Section 64 requires the petition to be by a person interested, and the point can be taken as a preliminary objection.

Compare section 25(1), where any person may file a pre-grant representation with no interest at all. Chapter 550 works the contrast, which is examined constantly.

In one line

Infringement is doing, in India and without consent, one of the acts section 48 lets the patentee prevent, and the whole question is whether what the defendant does falls inside the claims.

In the wording a student can write in an exam: the Patents Act, 1970 contains no definition of infringement; it is the doing, in India and without the patentee's consent, of an act which by section 48 the patentee has the exclusive right to prevent, and whether an act falls within the patent is decided by construing the claims of the complete specification.

The acts

For a product patent, section 48(a). Making, using, offering for sale, selling, or importing for those purposes, that product in India.

For a process patent, section 48(b). Using the process, and using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

Each is a separate act. A person who only imports infringes; so does one who only offers for sale.

Three elements in every case. An act within section 48; done in India; without the consent of the patentee. Chapter 660 works each.

The three questions in an infringement action

One: what does the claim mean? A question of construction, for the court, decided as at the date of the patent through the eyes of a person skilled in the art.

Two: does the defendant's article or process fall within it? A question of fact, decided by comparing the construed claim with what the defendant actually does.

Three: is the claim valid? Almost always raised, by defence under section 107 or by counter-claim under section 64. Chapters 1070 and 1030 work them.

The order matters. A court construes the claim first, without looking at the defendant's product, because construing it with the alleged infringement in view invites a claim shaped to catch the defendant.

How a claim is construed

Read the description first, then the claims. The Supreme Court stated the rule in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, worked in chapter 420: the proper way to construe a specification is to read the description of the invention first and then to see the claims, because a patentee cannot claim more than they desire to patent.

Construe purposively, not literally. The question is what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. A word is not given a meaning the skilled reader would not have given it, and a claim is not defeated by an immaterial variation.

The pith and marrow doctrine. An infringer does not escape by omitting an inessential feature or by substituting an obvious equivalent for one. The court asks whether the defendant has taken the substance of the invention, its pith and marrow.

In one line

A patent suit starts in a district court, and moves to the High Court the moment the defendant counter-claims for revocation.

In the wording a student can write in an exam: section 104 of the Patents Act, 1970 provides that no suit for a declaration under section 105, or for any relief under section 106, or for infringement of a patent, shall be instituted in any court inferior to a district court having jurisdiction to try the suit, with a proviso that where a counter-claim for revocation of the patent is made by the defendant, the suit along with the counter-claim shall be transferred to the High Court for decision.

The provision itself

Section 104. No suit for a declaration under section 105, or for any relief under section 106, or for infringement of a patent, shall be instituted in any court inferior to a district court having jurisdiction to try the suit.

The proviso. Where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

Broken down

Three kinds of suit are covered. A declaration of non-infringement under section 105, chapter 1130; a suit on a groundless threat under section 106, chapter 1140; and infringement itself.

"Not inferior to a district court" is a floor, not a designation. The suit is instituted in the district court that has jurisdiction under the ordinary rules of the Code of Civil Procedure 1908, which is where the defendant resides or carries on business or where the cause of action arose, subject to pecuniary limits. Where a High Court has ordinary original civil jurisdiction, as the Bombay, Calcutta, Delhi, Madras and Himachal Pradesh High Courts do, a suit above the pecuniary limit may be instituted there directly.

The proviso is mandatory. "Shall be transferred". The district court has no discretion once a counter-claim for revocation is filed.

And the whole suit moves, not only the counter-claim. That is deliberate: validity and infringement are two halves of one dispute, and splitting them between two courts would produce inconsistent findings.

The tactical consequence. A defendant who wants the High Court has only to counter-claim. A defendant content with the district court pleads invalidity as a defence under section 107(1) without counter-claiming, because a defence does not trigger the proviso. Chapter 1070 works the difference.

The Commercial Courts Act 2015

Why it matters here. Section 2(1)(c) of that Act defines a "commercial dispute" to include disputes arising out of intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits.

What follows. A patent suit above the specified value is tried as a commercial suit by a Commercial Court at the district level, or by a Commercial Division of a High Court that has ordinary original civil jurisdiction.

In one line

Every ground on which a patent could be revoked is available as a defence, and so is compliance with the section 47 conditions.

In the wording a student can write in an exam: section 107(1) of the Patents Act, 1970 provides that in any suit for infringement of a patent, every ground on which it may be revoked under section 64 shall be available as a ground for defence; and section 107(2) provides that it shall be a ground of defence that the making, using, importation or distribution complained of is in accordance with one or more of the conditions specified in section 47.

The provision itself

Section 107(1). In any suit for infringement of a patent, every ground on which it may be revoked under section 64 shall be available as a ground for defence.

Section 107(2). In any suit for infringement by the making, using or importation of any machine, apparatus or other article, or by the using of any process, or by the importation, use or distribution of any medicine or drug, it shall be a ground for defence that such making, using, importation or distribution is in accordance with any one or more of the conditions specified in section 47.

Defence and counter-claim distinguished

A defence under section 107(1) defeats the claim. It says the patent is bad, so the plaintiff has nothing to sue on. If it succeeds, the suit is dismissed.

A counter-claim under section 64 destroys the patent. It asks the court to revoke, and revocation operates against the world.

Three practical differences.

Forum. A counter-claim transfers the suit to the High Court under the proviso to section 104; a defence does not. Chapter 1060 works it.

Effect on others. A defence protects only this defendant in this suit. A revocation clears the field for everybody.

Election. A person who has already filed a revocation petition may not also counter-claim, on the rule in the Aloys Wobben litigation, which chapter 1040 works. That rule does not stop them defending.

The full list of defences

All seventeen revocation grounds, through section 107(1). Chapter 1030 lists them. In practice a written statement pleads want of novelty, obviousness, section 3 exclusions, insufficiency, want of fair basis and non-compliance with section 8.

The section 47 conditions, through section 107(2). Government's own use, and making or using merely for experiment or research including the imparting of instructions to pupils. Chapter 350 works them.

Non-infringement. Not a statutory defence at all, and the most important of them. The defendant says its article or process falls outside the claims, properly construed. Chapter 1050 works construction.

Section 107A. That the act is not an infringement at all: done for regulatory approval, or a parallel import. Chapter 1080 works it.

In one line

Working the invention to get a regulator's approval is not infringement, and neither is importing the article from somebody lawfully entitled to sell it.

In the wording a student can write in an exam: section 107A of the Patents Act, 1970 provides that for the purposes of the Act, any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law regulating the manufacture, construction, use, sale or import of any product, in India or in a country other than India, and the importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights.

Clause (a): the Bolar exemption

The words. Any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product.

The problem it solves. A generic manufacturer cannot sell a medicine on the day the patent expires unless it already has regulatory approval. Approval requires bioequivalence and stability data, and generating that data means making and using the patented product. Without an exemption, every step of the preparation would infringe, and the patentee would enjoy a period of monopoly after the term ended while the generic worked through the regulator.

Why it is called Bolar. After the United States litigation in which the point first arose, and after which the United States Congress enacted a statutory exemption. India's version is broader in three ways.

One: it is not confined to medicines. The words are "any product" regulated by any law regulating manufacture, construction, use, sale or import. So an agrochemical, a medical device or a vehicle component subject to type approval is within it.

Two: it covers foreign regulators. "In India, or in a country other than India". An Indian manufacturer may make the patented product here to generate data for a submission to a foreign regulator.

Three: it includes selling and exporting. The 2005 substitution added "selling or importing" to the acts covered. So a manufacturer may sell the patented product to another party, including abroad, if the sale is solely for uses reasonably related to a regulatory submission.

And the limit is the word "solely". Commercial stockpiling for launch is not solely for uses reasonably related to a submission, and quantities far beyond what a submission needs invite the inference that the purpose was not solely regulatory.

In one line

A successful patentee gets an injunction and, at its own option, either damages or an account of profits, and the court may also order the infringing goods and the tools that make them to be seized, forfeited or destroyed.

In the wording a student can write in an exam: section 108(1) of the Patents Act, 1970 provides that the reliefs which a court may grant in a suit for infringement include an injunction, subject to such terms as the court thinks fit, and, at the option of the plaintiff, either damages or an account of profits; and section 108(2) empowers the court to order that infringing goods, and materials and implements the predominant use of which is in the creation of infringing goods, be seized, forfeited or destroyed without payment of any compensation.

The provision itself

Section 108(1). The reliefs which a court may grant in any suit for infringement include:

an injunction, subject to such terms, if any, as the court thinks fit; and

at the option of the plaintiff, either damages or an account of profits.

Section 108(2). The court may also order that the goods which are found to be infringing, and materials and implements the predominant use of which is in the creation of infringing goods, shall be seized, forfeited or destroyed, as the court deems fit in the circumstances, without payment of any compensation.

Note the word "include" in sub-section (1). The list is not exhaustive. A court may also grant a declaration, delivery up, an order for disclosure and costs, and Raj Parkash v. Mangat Ram Chowdhry, AIR 1978 Del 1, worked in chapter 1050, granted an enquiry as to damages, an affidavit of infringing stock and delivery up.

The injunction

Permanent, on succeeding at trial. It restrains the defendant from making, using, offering for sale, selling or importing the patented product, or from using the patented process and dealing in its direct product.

"Subject to such terms as the court thinks fit". The court may confine the injunction to particular acts, may suspend it for a period to let the defendant clear stock, and may make it conditional.

And it lasts only as long as the patent. An injunction cannot outlive the term, because after expiry the acts are lawful. Chapter 360 works section 53.

The interim injunction is a different question and has its own chapter, 1100.

Damages against an account of profits

They are alternatives and the plaintiff chooses. Section 108(1) says "at the option of the plaintiff, either damages or an account of profits". A plaintiff cannot have both, and the election is usually made after discovery, when the plaintiff can see which is larger.