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Copyright © 2022 by LexCampus
We have spent a lot of time and effort to come up with this
comprehensive handbook on Patent Laws. Although we have taken
utmost care in preparing this handbook, it is possible that some
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our readers to provide their feedback on the handbook that can
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This handbook is prepared for the purpose of quick reference for
students and professionals. It is suggested that to avoid any doubt,
the reader should cross-check all the facts, law and contents of this
book with the original Government publication or notification, etc.
or visit Indian Patent Office website for more information.
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INTRODUCTION
We re-invented the Bare Act and the sweet co-incidence is that our first offering is on
Patents. Traditionally printed in black and white, the Bare Act depicts the law in a hard
to navigate format. We have made it better this time. We present the most comprehensive
handbook for understanding the Indian Patent Laws. The handbook contains distinct
colour-coded headings with relevant cross-references. The legislative history of all the
preceding amendments are provided, which are helpful to understand the evolution of
the law. The handbook also features relevant case laws under appropriate provisions.
This handbook on Patent Law, comprises the Patents Act, 1970, as amended by the
Patents (Amendment) Act, 2005 and the Tribunal Reforms Act, 2021, along with, Patents
Rules, 2003, as amended by the Patents (Amendment) Rules, 2021, the Intellectual
Property Appellate Board (Patent Procedure) Rules, 2010, the Patents (Appeals and
Applications to the Intellectual Property Appellate Board) Rules, 2011, and the Patents
(Applications and Appeals to the Intellectual Property Appellate Board) Amended Rules,
2013.
Each provision is presented with a colour-coded heading for easy identification.
Every provision of the Act and the Rules, which has a cross-reference to another section,
rule, form or a schedule has been mentioned in the margin. Cross-reference to sections,
rules, forms and schedules are mentioned as ‘S.’, ‘R.’, ‘F.’ and ‘Sch.’, respectively.
A special thanks to Akhila V. P., Sai Ratna Manjari, P. S. Manjunathan, and Poulomi
Sen who worked on the 2022 Edition.
—The LexCampus Team
www.lexcampus.in
CONTENTS
THE PATENTS ACT, 1970
CHAPTER I
PRELIMINARY
1.
2.
Short title, extent and commencement
Definition and interpretation
1
1
CHAPTER II
INVENTIONS NOT PATENTABLE
3.
4.
5.
What are not inventions
Inventions relating to atomic energy not patentable
[Omitted by the Patents (Amendment) Act, 2005]
5
6
7
CHAPTER III
APPLICATIONS FOR PATENTS
6.
7.
8.
9.
10.
11.
Persons entitled to apply for patents
Form of application
Information and undertaking regarding foreign applications
Provisional and complete specifications
Contents of specifications
Priority dates of claims of a complete specification
7
7
8
9
10
11
CHAPTER IV
PUBLICATION AND EXAMINATION OF APPLICATIONS
11A. Publication of applications
11B. Request for examination
12. Examination of application
13. Search for anticipation by previous publication and by prior claim
14. Consideration of report of examiner by Controller
15. Power of Controller to refuse or require amendment of applications, etc.,
in certain cases
16. Power of Controller to make orders respecting division of application
17. Power of Controller to make order respecting dating of application
18. Powers of Controller in cases of anticipation
19. Powers of Controller in case of potential infringement
20. Powers of Controller to make orders regarding substitution of applicants, etc.
21. Time for putting application in order for grant
22. [Omitted by the Patents (Amendment) Act, 2005]
23. [Omitted by the Patents (Amendment) Act, 2005]
24. [Omitted by the Patents (Amendment) Act, 2005]
13
14
15
15
16
16
17
17
18
19
19
20
21
22
22
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CONTENTS
CHAPTER V
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
25.
26.
27.
28.
Opposition to the patent
In cases of “obtaining” Controller may treat the patent as the patent of
opponent
[Omitted by the Patents (Amendment) Act, 2005]
Mention of inventor as such in patent
22
26
27
27
CHAPTER VI
ANTICIPATION
29.
30.
31.
32.
33.
34.
Anticipation by previous publication
Anticipation by previous communication to government
Anticipation by public display, etc.
Anticipation by public working
Anticipation by use and publication after provisional specification
No anticipation if circumstances are only as described in sections 29, 30, 31
and 32
28
29
29
29
30
30
CHAPTER VII
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS
35.
36.
37.
38.
39.
40.
41.
42.
Secrecy directions relating to inventions relevant for defence purposes
Secrecy directions to be periodically reviewed
Consequences of secrecy directions
Revocation of secrecy directions and extension of time
Residents not to apply for patents outside india without prior permission
Liability for contravention of section 35 or section 39
Finality of orders of Controller and Central Government
Savings respecting disclosure of government
30
31
32
32
33
33
33
34
CHAPTER VIII
GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY
43.
44.
45.
46.
47.
48.
49.
50.
51.
52.
53.
Grant of patents
Amendment of patent granted to deceased applicant
Date of patent
Form, extent and effect of patent
Grant of patents to be subject to certain conditions
Rights of patentees
Patents rights not infringed when used on foreign vessels, etc., temporarily
or accidentally in India
Rights of co-owners of patents
Power of Controller to give directions to co-owners
Grant of patent to true and first inventor where it has been obtained by
another in fraud of him
Term of patent
34
35
35
35
36
36
37
37
38
39
39
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CONTENTS
CHAPTER IX
PATENTS OF ADDITION
54.
55.
56.
Patents of addition
Term of patents of addition
Validity of patents of addition
40
41
41
CHAPTER X
AMENDMENT OF APPLICATIONS AND SPECIFICATIONS
57.
58.
59.
Amendment of application and specification before Controller
Amendment of specification before Appellate Board or High Court
Supplementary provisions as to amendment of application or specification
42
43
44
CHAPTER XI
RESTORATION OF LAPSED PATENTS
60.
61.
62.
Applications for restorations of lapsed patents
Procedure for disposal of applications for restoration of lapsed patents
Rights of patentees of lapsed patents which have been restored
45
45
46
CHAPTER XII
SURRENDER AND REVOCATION OF PATENTS
63.
64.
65.
66.
Surrender of patents
Revocation of patents
Revocation of patent or amendment of complete specification on directions
from government in cases relating to atomic energy
Revocation of patent in public interest
46
46
50
50
CHAPTER XIII
REGISTER OF PATENTS
67.
68.
69.
70.
71.
72.
Register of patents and particulars to be entered therein
Assignments, etc., not to be valid unless in writing and duly executed
Registration of assignments, transmissions, etc.
Power of registered grantee or proprietor to deal with patent
Rectification of register by Appellate Board
Register to be open for inspection
50
52
52
53
53
54
CHAPTER XIV
PATENT OFFICE AND ITS ESTABLISHMENT
73.
74.
75.
76.
Controller and other officers
Patent office and its branches
Restriction on employees of patent office as to right or interest in patents
Officers and employees not to furnish information, etc.
54
54
55
55
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CONTENTS
CHAPTER XV
POWERS OF CONTROLLER GENERALLY
77.
78.
79.
80.
81.
Controller to have certain powers of civil court
Power of Controller to correct clerical errors, etc.
Evidence how to be given and power of Controller in respect thereof
Exercise of discretionary powers by Controller
Disposal by Controller of applications for extension of time
55
56
57
57
57
CHAPTER XVI
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION
82.
83.
84.
85.
86.
Definitions of “patented articles” and “patentee”
General principles applicable to working of patented inventions
Compulsory licences
Revocation of patents by the Controller for non-working
Power of Controller to adjourn applications for compulsory licences, etc.,
in certain cases
87. Procedure for dealing with applications under sections 84 and 85
88. Powers of Controller in granting compulsory licences
89. General purposes for granting compulsory licences
90. Terms and conditions of compulsory licences
91. Licensing of related patents
92. Special provision for compulsory licences on notifications by Central
Government
92A. Compulsory licence for export of patented pharmaceutical products in
certain exceptional circumstances
93. Order for licence to operate as a deed between parties concerned
94. Termination of compulsory licence
95. [Omitted by the Patents (Amendment) Act, 2005]
96. [Omitted by the Patents (Amendment) Act, 2005]
97. [Omitted by the Patents (Amendment) Act, 2005]
98. [Omitted by the Patents (Amendment) Act, 2005]
57
57
58
60
60
61
61
62
62
63
64
65
65
65
65
65
65
65
CHAPTER XVII
USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT
AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT
99.
100.
101.
102.
103.
Meaning of use of inventions for purposes of government
Power of Central Government to use inventions for purposes of government
Rights of third parties in respect of use of invention for purposes of government
Acquisition of inventions and patents by the Central Government
Reference to high court of disputes as use for purposes of government
66
66
68
69
70
CHAPTER XVIII
SUITS CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction
104A. Burden of proof in case of suits concerning infringement
71
71
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CONTENTS
105.
106.
Power of court to make declaration as to non-infringement
Power of court to grant relief in cases of groundless threat of
infringement proceedings
107. Defences, etc., in suits for infringement
107A. Certain acts not to be considered as infringements
108. Reliefs in suits for infringement
109. Right of exclusive licensee to take proceedings against infringement
110. Right of licensee under section 84 to take proceedings against
infringement
111. Restriction on power of court to grant damages or account of profits for
infringement
112. [Omitted by the Patents (Amendment) Act, 2002]
113. Certificate of validity of specification and costs of subsequent suits for
infringement thereof
114. Relief for infringement of partially valid specification
115. Scientific advisers
72
72
73
73
74
75
75
75
76
76
77
77
CHAPTER XIX
APPEALS TO THE APPELLATE BOARD
116. Appellate Board
117. Staff of Appellate Board
117A. Appeals to Appellate Board
117B. Procedure and powers of Appellate Board
117C. Bar of jurisdiction of courts, etc
117D. Procedure for application for rectification, etc., before Appellate Board
117E. Appearance of Controller in legal proceedings
117F. Costs of Controller in proceedings before Appellate Board
117G. Transfer of pending proceedings to Appellate Board
117H. Power of Appellate Board to make rules
78
78
79
79
79
79
80
80
80
80
CHAPTER XX
PENALTIES
118.
119.
120.
121.
122.
123.
124.
Contravention of secrecy provisions relating to certain inventions
Falsification of entries in register, etc.
Unauthorized claim of patents rights
Wrongful use of words, “patent office”
Refusal or failure to supply information
Practice by non-registered patent agents
Offences by companies
81
81
81
81
82
82
82
CHAPTER XXI
PATENT AGENTS
125.
126.
127.
Register of patent agents
Qualifications for registration as patent agents
Rights of patent agents
83
83
84
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CONTENTS
128.
129.
130.
131.
132.
Subscription and verification of certain documents by patent agents
Restrictions on practice as patent agents
Removal from register patent agents and restoration
Power of Controller to refuse to deal with certain agents
Saving in respect of other persons authorised to act as agent
84
84
85
85
85
CHAPTER XXII
INTERNATIONAL ARRANGEMENTS
133.
134.
135.
136.
137.
138.
139.
Convention countries
Notification as to countries not providing for reciprocity
Convention applications
Special provisions relating to convention applications
Multiple priorities
Supplementary provisions as to convention applications
Other provisions of Act to apply to convention applications
86
86
86
87
87
88
89
CHAPTER XXIII
MISCELLANEOUS
140.
141.
142.
143.
144.
145.
146.
147.
148.
149.
150.
151.
152.
153.
154.
155.
156.
157.
157A.
158.
159.
160.
161.
162.
163.
Avoidance of certain restrictive conditions
Determination of certain contracts
Fees
Restrictions upon publication of specification
Reports of examiners to be confidential
Publication of official journal
Power of Controller to call for information from patentees
Evidence of entries, documents, etc.
Declaration by infant, lunatic, etc.
Service of notices, etc., by post
Security for costs
Transmission of orders of courts to Controller
[Omitted by the Patents (Amendment) Act, 2005]
Information relating to patents
Loss or destruction of patents
Reports of Controller to be placed before Parliament
Patent to bind government
Right of government to sell or use forfeited articles
Protection of security of India
Power of High Courts to make rules
Power of Central Government to make rules
Rules to be placed before Parliament
[Omitted by the Patents (Amendment) Act, 2002]
Repeal of Act 2 of 1911 in so far as it relates to patents and savings
[Omitted by the Patents (Amendment) Act, 2002]
89
90
90
91
91
91
91
92
92
92
92
92
93
93
93
93
93
93
94
94
94
96
97
97
97
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CONTENTS
THE PATENTS RULES, 2003
As Amended by the Patents (Amendment) Rules, 2021
CHAPTER I
PRELIMINARY
1.
2.
3.
4.
5.
6.
7.
8.
9.
Short title and commencement
Definitions
Prescribed particulars
Appropriate office
Address for service
Leaving and serving documents
Fees
Forms
Filing of documents and copies, etc.
98
98
100
100
101
102
103
105
106
CHAPTER II
APPLICATION FOR PATENTS
10.
11.
12.
13.
14.
15.
16.
Period within which proof of the right under section 7(2) to make the
application shall be furnished
Order of recording applications
Statement and undertaking regarding foreign applications
Specifications
Amendments to specifications
Drawings
Models
107
107
107
108
109
110
110
CHAPTER III
INTERNATIONAL APPLICATIONS UNDER PATENT COOPERATION
TREATY (PCT)
17. Definitions
18. Appropriate office in relation to international applications
19. International applications filed with appropriate office as receiving office
19A. Indian International Searching Authority
19B. International search report
19C. Time limit for establishing international search report
19D. Transmittal of the International Search Report and written opinion
19E. Confidential treatment
19F. Indian International Preliminary Examining Authority
19G. Period for making a demand
19H. Fees payable to Examining Authority
19I. Manner of making a demand
19J. Processing of demands for international preliminary examination
19K. International Preliminary Examination Report
19L. Period for establishing international preliminary examination report and
its transmission
110
111
112
112
112
114
114
114
114
115
115
115
115
115
116
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CONTENTS
19M. Transmittal of the International Preliminary Examination Report
19N. Conditions for and extent of refund
20. International applications designating or designating and electing
India
21. Filing of priority document
22. Effect of non-compliance with certain requirements
23. The requirements under this Chapter to be supplemental of the
regulations, etc., under the Treaty
117
117
117
118
119
119
CHAPTER IV
PUBLICATION AND EXAMINATION OF APPLICATIONS
24. Publication of application
24A. Request for publication
24B. Examination of application
24C. Expedited examination of applications
25. Identification of published applications
26. Request for withdrawal
27. Inspection and supply of published documents
28. Procedure in case of anticipation by prior publication
28A. Procedure in relation to consideration of report of examiner under section 14
29. Procedure in case of anticipation by prior claiming
30. Amendment of the complete specification in case of anticipation
31. Form of reference to another specification
32. Procedure in case of potential infringement
33. Form of reference to another patent
34. Manner in which a claim under section 20(1) shall be made
35. Manner in which a request may be made under section 20(4)
36. Manner of application under section 20(5)
37. Numbering of applications on the grant of patent
38. [Omitted by Patents (Amendment) Rules, 2005]
119
119
119
121
123
123
124
124
125
125
125
125
126
126
126
126
126
126
126
CHAPTER V
EXCLUSIVE MARKETING RIGHTS (OMITTED)
39-54. [Omitted by Patents (Amendment) Rules, 2005]
127
CHAPTER VI
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
55. Opposition to the patent
55A. Filing of notice of opposition
56. Constitution of Opposition Board and its proceeding
57. Filing of written statement of opposition and evidence
58. Filing of reply statement and evidence
59. Filing of reply evidence by opponent
60. Further evidence to be left with the leave of the Controller
61. Copies of documents to be supplied
127
128
128
128
129
129
129
129
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CONTENTS
62. Hearing
63. Determination of costs
63A. Request made under section 26(1)
64 & 65. [Omitted by Patents (Amendment) Rules, 2005]
66. Form of making a request under section 28(2)
67. Form of making a claim under section 28(3)
68. Form of application to be made under section 28(7)
69. Procedure for the hearing of claim or an application under section 28
70. Mention of inventor
129
130
130
130
130
130
130
131
131
CHAPTER VII
SECRECY DIRECTIONS
71.
72.
Permission for making patent application outside India under section 39
Communication of result of reconsideration under section 36(2)
131
131
CHAPTER VIII
GRANT OF PATENTS
73. [Omitted by Patents (Amendment) Rules, 2005]
74. Form of patent
74A. Inspection of documents related to grant of patent
75. Amendment of patent under section 44
76. Manner of applying for direction under section 51(1)
77. Manner of application under section 51(2)
78. Procedure for the hearing of proceedings under section 51
79. Request under section 52(2)
80. Renewal fees under section 53
132
132
132
132
132
132
132
133
133
CHAPTER IX
AMENDMENT OF APPLICATION, SPECIFICATION OR ANY DOCUMENT
RELATING THERETO
81.
82.
83.
Amendment of application, specification or any document relating thereto
Preparation of amended specifications, etc.
Publication of the amendment allowed
133
134
134
CHAPTER X
RESTORATION OF PATENTS
84.
85.
86.
Restoration of patents
Opposition to restoration under section 61
Payment of unpaid renewal fees
134
134
135
CHAPTER XI
SURRENDER OF PATENTS
87.
Surrender of Patents
135
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CONTENTS
CHAPTER XII
REGISTER OF PATENTS
88.
89.
90.
91.
92.
93.
94.
95.
Register of patents under section 67
[Omitted by Patents (Amendment) Rules, 2005]
Registration of title and interest in patents
Presentation of assignment, etc., of patent to Controller
Registration of title or interest in a patent
Entry of renewal fee
Alteration of address
Inspection of register of patents under section 72 and fees payable therefor
135
136
136
136
136
136
136
137
CHAPTER XIII
COMPULSORY LICENCE AND REVOCATION OF PATENT
96.
97.
98.
99.
100.
101.
102.
Application for compulsory licence, etc.
When a prima facie case is not made out
Notice of opposition under section 87(2)
Manner of publication of the revocation order
Application under section 88(4)
Procedure to be followed in case of applications under section 88(4)
Application for termination of compulsory licence under section 94
137
137
137
138
138
138
139
CHAPTER XIV
SCIENTIFIC ADVISERS
103.
103A.
104.
105.
106.
107.
Roll of scientific advisers
Disqualifications for inclusion in the roll of scientific advisers
Manner of application for inclusion in the roll of scientific advisers
Inclusion of the name of any other person in the roll of scientific advisers
Power to relax
Removal of names from the roll of scientific advisers
140
140
140
141
141
141
CHAPTER XV
PATENT AGENTS
108.
109.
110.
111.
111A.
112.
113.
114.
115.
116.
117.
Particulars to be contained in the register of patent agents
Application for registration of patent agents
Particulars of the qualifying examination for patent agents
Registration of patent agents
Issue of duplicate certificate of patent agents
Details to be included in an application for the registration of a patent
agent
Registration of patent agents under section 126 (2)
Disqualifications for registration as a patent agent
Payment of fees
Removal of a name from the register of patent agents
Restoration of name of persons removed from the register of patent agents
141
142
142
142
143
143
143
143
143
143
144
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CONTENTS
118.
119.
120.
Alteration of names, etc., in the register of patent agents
Refusal to recognise as patent agent
Publication of the names of patent agents, registered under the Act
144
145
145
CHAPTER XVI
MISCELLANEOUS
121.
121A.
122.
123.
124.
125.
126.
127.
128.
129.
129A.
130.
131.
132.
133.
134.
135.
136.
137.
138.
139.
Period within which copies of specification, etc. are to be filed
Address of communications
Correction of clerical errors
Manner of advertisement of the proposed correction of any error
Manner and time of opposition to the making of corrections
Notification of corrections
Form, etc., of affidavits
Exhibits
Directions not otherwise prescribed
Exercise of discretionary power by the Controller
Adjournment of hearing
Application for review of decisions or setting aside of orders of the
Controller
Form and manner in which statements required under section 146(2)
to be furnished
Form of application for the issue of a duplicate patent
Supply of certified copies and certificates under sections 72 and 147
Request for information under section 153
Agency
Scale of costs
Powers of Controller generally
Power to extend time prescribed
Hearing before the Controller to be in public in certain cases
145
145
145
145
145
146
146
146
147
147
147
147
148
148
148
148
149
150
150
150
150
SCHEDULES
FIRST SCHEDULE—Fees
SECOND SCHEDULE—List of Forms
FORM 1—APPLICATION FOR GRANT OF A PATENT
FORM 2—PROVISIONAL/COMPLETE SPECIFICATION
FORM 3—STATEMENT AND UNDERTAKING
FORM 4—REQUEST FOR EXTENSION FOR TIME
FORM 5—DECLARATION AS TO INVENTORSHIP
FORM 6—CLAIM OR REQUEST REGARDING ANY CHANGE IN
APPLICANT FOR PATENT
FORM 7—NOTICE OF OPPOSITION ON GRANT OF A PATENT
FORM 7A—FOR FILING A REPRESENTATION OPPOSING GRANT
OF A PATENT UNDER SUB-SECTION (1) OF SECTION 25]
FORM 8—REQUEST OR CLAIM REGARDING MENTION OF
INVENTOR AS SUCH IN A PATENT
FORM 9—REQUEST FOR PUBLICATION
FORM 10—APPLICATION FOR AMENDMENT OF PATENT
151
159
161
166
167
168
169
171
173
174
175
176
177
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CONTENTS
FORM 11—APPLICATION FOR DIRECTION OF THE CONTROLLER
FORM 12—REQUEST FOR GRANT OF PATENT
FORM 13—APPLICATION FOR AMENDMENT OF THE APPLICATION
FOR PATENT/COMPLETE SPECIFICATION
FORM 14—NOTICE OF OPPOSITION TO AMENDMENT/
RESTORATION/SURRENDER OF PATENT/GRANT OF
COMPULSORY LICENSE OR REVISION OF TERMS
THEREOF OR TO A CORRECTION OF CLERICAL
ERRORS
FORM 15—APPLICATION FOR RESTORATION OF PATENTS
FORM 16—APPLICATION FOR REGISTRATION OF TITLE/
INTEREST IN A PATENT OR SHARE IN IT OR
REGISTRATION OF ANY DOCUMENT PURPORTING TO
AFFECT PROPRIETORSHIP OF THE PATENT
FORM 17—APPLICATION FOR COMPULSORY LICENSE
FORM 18—REQUEST FOR EXAMINATION OF APPLICATION FOR
PATENT
FORM 18A— REQUEST FOR EXPEDITED EXAMINATION OF
APPLICATION FOR PATENT
FORM 19—APPLICATION FOR REVOCATION OF A PATENT FOR
NON-WORKING
FORM 20—APPLICATION FOR REVISION OF TERMS AND
CONDITIONS OF LICENSE
FORM 21—REQUEST FOR TERMINATION OF COMPULSORY
LICENCE
FORM 22—APPLICATION FOR REGISTRATION OF PATENT AGENT
FORM 23—APPLICATION FOR THE RESTORATION OF THE NAME
IN THE REGISTER OF PATENT AGENTS
FORM 24—APPLICATION FOR REVIEW/SETTING ASIDE
CONTROLLER’S DECISION/ORDER
FORM 25—REQUEST FOR PERMISSION FOR MAKING PATENT
APPLICATION OUTSIDE INDIA
FORM 26—FORM OF AUTHORIZATION OF A PATENT AGENT/OR
ANY PERSON IN A MATTER OR PROCEEDING UNDER
THE ACT
FORM 27—STATEMENT REGARDING THE WORKING OF THE
PATENTED INVENTION ON COMMERCIAL SCALE
IN INDIA
FORM 28—TO BE SUBMITTED BY A SMALL ENTITY WITH EVERY
DOCUMENT FOR WHICH A FEE HAS BEEN SPECIFIED
FORM 29—REQUEST FOR WITHDRAWAL OF PATENT
APPLICATION
FORM 30—MISCELLANEOUS FORM, TO BE USED WHEN NO
OTHER FORM IS PRESCRIBED
THIRD SCHEDULE—Form of Patent
FOURTH SCHEDULE
FIFTH SCHEDULE
178
179
181
182
184
185
187
188
190
193
195
196
198
200
201
202
204
205
207
208
209
210
211
212
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS
PROCEDURE) RULES, 2010
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
32.
Short title and commencement
Definitions
Form of procedure of appeal or application
Appeal or application to be in writing
Documents to accompany appeal or application
Fees
Authorisation
Verification of the appeal or application
Presentation and scrutiny of appeal or application
Notices of appeal or application to the respondents
Filing of counter-statement to the appeal or application and other
documents by the respondent
Affidavit and Exhibits
Filing of reply by the appellant or applicant
Filing of Additional documents in appeal
Translation of documents
Extension of time
Intervention by third parties
Date of hearing to be notified
Hearing of appeal or application
Adjournment of hearing
Award of costs by the Appellate Board
Language of the Appellate Board
Order to be signed and dated
Communication of orders
Publication of the orders
Review Petitions
Rectification of Orders
Continuation of proceedings afterothe death of a party, merger, assignment,
acquismon or transmission
Fee for inspection of records and obtaining copies thereof
Functions of the Deputy Registrar
Additional functions and duties of the Deputy Registrar
Dress code for the Chairman, Vice-Chairman, Technical Member of the
Appellate Board and for the representatives of the parties
FIRST SCHEDULE—Forms
FORM 1—FORM OF COUNTER-STATEMENT
FORM 2—APPLICATION FOR EXTENSION OF TIME
FORM 3—APPLICATION FOR LEAVE TO INTERVENE IN
PROCEEDINGS RELATING TO THE RECTIFICATION OF
THE REGISTER OR THE REMOVAL OF PATENT FROM
THE REGISTER OF PATENTS
FORM 4—PETITION FOR ADJOURNMENT OF HEARING
FORM 5—PETITION FOR REVIEW OF THE ORDER OF THE
APPELLATE BOARD
SECOND SCHEDULE—Fee
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214
214
214
215
215
215
215
216
216
216
217
217
217
217
217
218
218
218
218
218
218
218
218
218
219
219
219
219
219
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226
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xviii CONTENTS
THE PATENTS (APPEALS AND APPLICATIONS TO THE
INTELLECTUAL PROPERTY APPELLATE BOARD) RULES, 2011
1.
2.
3.
4.
Short title and commencement
Appeals and applications
Condonation of delay in filing appeal
Fees
227
227
227
227
FIRST SCHEDULE—Forms
FORM 1—APPLICATION FOR REVOCATION
FORM 2—APPEAL
FORM 3—APPLICATION FOR CONDONING THE DELAY IN FILING
APPEAL UNDER SECTION 117A OF TI IE PATENTS ACT, 1970
SECOND SCHEDULE—Fees
228
229
231
232
www.lexcampus.in
THE PATENTS ACT, 1970
(Act No. 39 of 1970)
[As Amended by the Patents (Amendment) Act, 2005 (15 of 2005)]
An Act to amend and consolidate the law relating to patents.
BE it enacted by Parliament in the Twenty-first year of the Republic of India
as follows:-
CHAPTER I
PRELIMINARY
1. Short title, extent and commencement
(1) This Act may be called the Patents Act, 1970.
(2) It extends to the whole of India.
(3) It shall come into force on such date1 as the Central Government may, by
notification in the Official Gazette, appoint:
PROVIDED that different dates may be appointed for different provisions
of this Act, and any reference in any such provision to the commencement of this
Act shall be construed as a reference to the coming into force of that provision.
2. Definition and interpretation
(1) In this Act, unless the context otherwise requires, 2
[(a)
“Omitted by the Tribunals Reforms Act, 2021;]
3
[(ab) “assignee” includes an assignee of the assignee and the legal
representative of a deceased assignee and references to the
assignee of any person include references to the assignee of the
legal representative or assignee of that person;]
4
[(aba) “Budapest Treaty” means the Budapest Treaty on the International
Recognition of the Deposit of Micro-organisms for the purposes of
Patent Procedure done at Budapest on 28th day of April, 1977, as
amended and modified from time to time;]
5
[(ac) “Capable of industrial application”, in relation to an invention,
means that the invention is capable of being made or used in an
industry;]
(b)
“Controller” means the Controller General of Patents, Designs
and Trade Marks referred to in section 73;
­1
­2
­
3
­4
­
5
S. 113, 116,
F. 1, 3,117A-117H
12, 25; S.
6(c), 50(6)
S. 10
S. 2(1)(j)
S. 2(2)(a), 73(1)
The provisions of this Act, other than Ss. 12(2), 13(2), 28, 68, and 125 to 132 thereof brought
into force on 20.04.1972.Ss. 12(2), 13(2), 28, 68, and 125 to 132 thereof brought into force on
01.04.1978
”Omitted by the Tribunals Reforms Act, 2021 (w.e.f 04-04-2021)
Substituted by The Patents (Amendment) Act, 2002, S.3, for Cl. (a). (w.e.f 02.04.2007). Prior
to its substitution, Cl. (ab) read as under:“(ab) “assignee” includes the legal representative of a deceased assignee, and references to
the assignee of any person include references to the assignee of the legal representatives or
assignee of that person.
Inserted by The Patents (Amendment) Act, 2002, S. 3 for Cl. (a). (w.e.f 20.05.2003).
Inserted by The Patents (Amendment) Act, 2005, S.2(a) (w.r.e.f. 01.01.2005)
Substituted by The Patents (Amendment) Act, 2002, S.3 for Cl. (a), (w.e.f. 20.05.2003).
www.lexcampus.in
2
The Patents Act, 1970
(c)
[(d)
6
(e)
(f)
(g)
(h)
[(i)
12
“Convention application” means an application for a patent made
by virtue of section 135;
“Convention country” means a country or a country which is
member of a group of countries or a union of countries or an Intergovernmental organization 7[referred to as a convention country
in section 133];
“District court” has the meaning assigned to that expression by
the Code of Civil Procedure, 1908(5 of 1908);
“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;
8
[Clause (g) omitted by the Patents (Amendment) Act, 2005 (w.r.e.f
01.01.2005)]
“Government undertaking” means any industrial undertaking
carried on –
(i)
by a department of the Government, or
(ii)
by a corporation established by a Central, Provincial or State
Act, which is owned or controlled by the Government, or
(iii)
by a Government company as defined in section 617 of the
Companies Act, 1956(1 of 1956) 9[or],
10
[(iv) by an institution wholly or substantially financed by the
Government]
11
[***]
“High Court”, in relation to a State or Union territory, means the
High Court having territorial jurisdiction in that State or Union
territory, as the case may be;]
S. 135
S. 133, 135;
F. 1, 5, 25
S. 104
S. 109(1)
S. 64(3)(b), 100(2)
S. 104, 158
­6
Substituted by The Patents (Amendment) Act, 2002, S.3, for Cl. (d) (w.e.f. 20.05.2003). Prior
to its substitution, Cl. (d) read as under:-“(d) “Convention country” means a country notified
as such under sub-section (1) of section 133.”
­7
Substituted by The Patents (Amendment) Act, 2005, S. 2(b), for “notified as such under subsection (1) of section 133” (w.r.e.f. 01.01.2005).
­8
Omitted by The Patents (Amendments) Act, 2005 S.2(c). (w.r.e.f 01.01.2005).
­9
Inserted by The Patents (Amendment) Act, 2005, S. 2(d) (i) (w.r.e.f. 01.01.2005).
­10
Inserted by The Patents (Amendment) Act, 2005, S. 2(d) (ii) (w.r,e.f. 01.01.2005).
­ 1
1
Omitted by The Patents (Amendment) Act, 2005, the words “and includes the Council of
Scientific and Industrial Research and any other institutions which is financed wholly or for
the major part of the said Council.”
­ 2
1
Substituted by The Patents (Amendment) Act, 2005, S. 2(e), for Cl. (i) (w.e.f. 01.01.2005). Prior
to its substitution, Cl. (i) read as under:- “(i) “High Court” means, (i) In relation to the *National Capital Territory of Delhi, the High Court of Delhi;
(ii) *In relation to the State of Arunachal Pradesh and the State of Mizoram, the Gauhati
High Court (the High Court of Assam, Nagaland, Meghalaya, Manipur, Tripura,
Mizoram, and Arunachal Pradesh);
(iii) In relation to the Union territory of the Andaman and Nicobar Islands, the High Court
of Calcutta;
(iv) In relation to the Union territory of the Lakshadweep, the High Court of Kerala;
(v) In relation to the *State of Goa, the Union territory of Daman and Diu and the Union
territory of Dadra and Nagar Haveli, the High Court of Bombay;
(vi) In relation to the Union territory of Pondicherry, the High Court of Madras;
(vii) In relation to the Union territory of Chandigarh, the High Court of Punjab and Haryana;
and
(viii) In relation to any other state, the High Court for that State;” -* Substituted by Patents
(Amendment) Act, 2002, S.3 (w.e.f. 20.05.2003).
www.lexcampus.in
3
The Patents Act, 1970
[(ia) “International application” means an application for patent made
in accordance with the Patent Cooperation Treaty;]
14
[(j)
“invention” means a new product or process involving an inventive
step and capable of industrial application;]
15
[(ja) “inventive step” means a feature of an invention that involves
technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not
obvious to a person skilled in the art;]
(k)
“legal representative” means a person who in law represents the
estate of a deceased person;
16
[(l)
“new invention” means any invention or technology which has
not been anticipated by publication in any document or used in
the country or elsewhere in the world before the date of filing
of patent application with complete specification, i.e., the subject
matter has not fallen in public domain or that it does not form
part of the state of the art;
(la)
“Opposition Board” means an Opposition Board constituted under
sub-section (3) of section 25;]
(m)
“patent” means a patent for any invention granted under this Act;]
(n)
“patent agent” means a person for the time being registered under
this Act as a patent agent;
(o)
“patented article” and “patented process” mean respectively an
article or process in respect of which a patent is in force;
17
[(oa) “Patent Cooperation Treaty” means the Patent Cooperation Treaty
done at Washington on the 19th day of June, 1970 as amended
and modified from time to time;]
(p)
“patentee” means the person for the time being entered on the
register as the grantee or proprietor of the patent;
(q)
“patent of addition” means a patent granted in accordance with
section 54;
13
S. 138(4); R. 17-23
S. 3, 4
S. 6(1)(c)
S. 13, 29-34
S. 25(3)(b), R. 56
S. 43; R.74
S. 125; R. 111;
F.22, 26
S. 82
S. 135(3), 2(ia)
S. 48, 82
S. 54; R. 13(3);
F. 1
­13
­14
Inserted by Patents (Amendment) Act, 2002, S.3 (w.e.f. 20.05.2003).
Substituted by Patents (Amendment) Act, 2002, S.3, for Cl. (j) (w.e.f. 20.05.2003). Prior to the
substitution Cl. (j) read as under:- “(j) “invention” means any new and useful –
(i) Art, process, method or manner of manufacture,
(ii) Machine, apparatus or other article,
(iii) Substance produced by manufacture,
and includes any new and useful improvement of any of them and an alleged invention;”
­15
Substituted by The Patents (Amendment) Act, 2005, S. 2(f), for Cl. (ja) (w.r,e.f. 01.01.2005).
Prior to its substitution, Cl. (ja) read as under:- “(ja) “inventive step” means a feature that
makes the invention not obvious to a person skilled in the art;”
­ 6
1
Substituted by The Patents (Amendment) Act, 2005, S. 2(g), for Cl. (l) (w.r,e.f. 01.01.2005).
Prior to its substitution, Cl. (l) read as under:- “(l) “ “medicine or drug” includes –
(i) All medicines for internal or external use of human beings or animals,
(ii) All substances intended to be used for or in the diagnosis, treatment, mitigation or
prevention of diseases in human beings or animals,
(iii) All substances intended to be used for or in the maintenance of public health, or the
prevention or control of an epidemic among human beings or animals,
(iv) Insecticides, germicides, fungicides, weedicides and all other substances intended to be
used for the protection of plants,
(v) All chemical substances which are ordinarily used as intermediates in the preparation
or manufacture of any of the medicines or substances above referred to;
*(m) “patent” means a patent granted under this Act;” - * Substituted by The Patents
(Amendment) Act, 2002, S.3 (w.e.f. 20.05.2003).
­ 7
1
Inserted by The Patents (Amendment) Act, 2002, S.3 (w.e.f. 20.05.2003).
www.lexcampus.in
4
The Patents Act, 1970
(r)
(s)
(t)
“patent office” means the patent office referred to in section 74;
“person” includes the Government;
“person interested” includes a person engaged in, or in promoting,
research in the same field as that to which the invention relates;
18
[(ta) “pharmaceutical substance” means any new entity involving one
or more inventive steps;]
19
[(u) “prescribed” means,(A) in relation to proceedings before a High Court, prescribed by
rules made by the High Court;
20
[(B) Omitted by the Tribunals Reforms Act, 2021; and
(C) in other cases, prescribed by rules made under this Act;]
(v)
“prescribed manner” includes the payment of the prescribed fee;
(w)
“priority date” has the meaning assigned to it by section 11;
(x)
“register” means the register of patents referred to in section 67;
(y)
“true and first inventor” does not include either the first importer
of an invention into India, or a person to whom an invention is
first communicated from outside India.
(2) In this Act, unless the context otherwise requires, any reference –
(a)
to the Controller shall be construed as including a reference to any
officer discharging the functions of the Controller in pursuance of
section 73;
(b)
to the patent office shall be construed as including a reference to
any branch office of the patent office.
S. 74; R. 4
S. 25(2), 64(1)
S. 3(d)
S. 158
S. 117H
R. 7
S. 11
S. 67; R. 88
CASE LAW
Patent is granted only for an invention which is new and useful, that is, it
must have novelty and utility. Biswanath Prasad Radhey Shyam v.
Hindustan Metal Industries, AIR 1982 SC 1444 (1448): 1979 All LJ 290:
PTC (Suppl) (1) 731 (SC).
Novelty and an inventive step is a mixed question of law and fact.
If the allegedly invention stated to be publicly known either by word of
mouth or by publication through books or other media, then patent can’t
be granted. Biswanath Prasad Radhey Shyam v. Hindustan Metal
Industries, AIR 1982 SC 1444 (1449): 1979 All LJ 290: PTC (Suppl)
(1) 731 (SC).
Invention can be claimed either in Product or Process. In case of an article,
the patent is in the end product and in the case of process, lies in the process
by which it is arrived at. Raj Parkash v. Mangat Ram Chowdhry and
Ors, AIR 1987 Delhi 1(8) 1977: Rajdhani LR 440 (DB).
Along with technical advancement, the allegedly invention should also
not be obvious to the person skilled in the art. F. Hoffmann-La Roche Ltd
v. Cipla Ltd, 2012 (195) DLT 641 (674).
Merely change of material in a traditional product “Kilta” from bamboo
­­18
­­19
Inserted by The Patents (Amendment) Act, 2005, S. 2(h) (w.r.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2002, S.3 for Cl. (u) (w.e.f. 20.05.2003 except
sub-clause B which is enforceable w.e.f 02.04.2007). Prior to its substitution, Cl. (u) read as
under:- “(u) “prescribed” means, in relation to proceedings before a High Court, prescribed by
rules made by the High Court, and in other cases, prescribed by rules made under this Act;”
­­ 0
2
Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021)”
www.lexcampus.in
S. 6(1)(a)
S. 73(1)
S. 74
5
The Patents Act, 1970
to plastic and development of nylon straps with buckles can’t be said to
be an innovative step. Dhanpat Seth & Others v. Nil Kamal Plastic
Crates, AIR 2008 HP 23 (25): 2008 AIHC (NOC) 212 (DB): 2006 (33)
PTC 339(HP).
CHAPTER II
INVENTIONS NOT PATENTABLE
3. What are not inventions
The following are not inventions within the meaning of this Act, (a)
an invention which is frivolous or which claims anything obviously
contrary to well established natural laws;
21
[(b) an invention the primary or intended use or commercial
exploitation of which could be contrary to public order or morality
or which causes serious prejudice to human, animal or plant life
or health or to the environment;]
(c)
the mere discovery of a scientific principle or the formulation of
an abstract theory 22[or discovery of any living thing or non-living
substance occurring in nature;]
23
[(d) the mere discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy of that
substance or the mere discovery of any new property or new use
for a known substance or of the mere use of a known process,
machine or apparatus unless such known process results in a new
product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters,
ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the
same substance, unless they differ significantly in properties with
regard to efficacy;]
(e)
a substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a
process for producing such substance;
(f)
the mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known
way;
­21
Substituted by The Patents (Amendment) Act, 2002, S.4 for Cl. (b) (w.e.f. 20.05.2003). Prior
to its substitution, Cl. (b) read as under:- “(b) an inventions of the primary or intended use of
which would be contrary to law or morality or injurious to public health;”
­22
Inserted by The Patents (Amendment) Act, 2002, S. 4 (w.e.f. 20.05.2003).
­23
Substituted by The Patents (Amendment) Act, 2005, S.3 for Cl. (d) (w.r.e.f. 01.01.2005).
Prior to its substitution, Cl. (d) read as under:- “(d) the mere discovery of any new property
or mere 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;”
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6
The Patents Act, 1970
24
[(g)
(h)
(i)
[(j)
27
(k)
(l)
(m)
(n)
(o)
(p)
[Omitted by the Patents (Amendment) Act, 2002]
a method of agriculture or horticulture;
any process for the medicinal, surgical, curative, prophylactic,
25
[diagnostic, therapeutic] or other treatment of human beings or any
process for a similar treatment of animals 26[***] to render them free
of disease or to increase their economic value or that of their products.
Plants and animals in whole or any part thereof other than
micro-organisms but including seeds, varieties and species and
essentially biological processes for production or propagation of
plants and animals;
a mathematical method or a business method or a computer
program per se or algorithms;
a literary, dramatic, musical or artistic work or any other
aesthetic creation whatsoever including cinematographic works
and television productions;
a mere scheme or rule or method of performing mental act or
method of playing game;
a presentation of information;
topography of integrated circuits;
an invention which, in effect, is traditional knowledge or which is
an aggregation or duplication of known properties of traditionally
known component or components.]
S. 10(4)(d)(ii)
S. 25(1)(k),
64(1)(q)
CASE LAW
Patent cannot be granted unless the alleged invention demonstrates enhanced
efficacy as mandated by section 3(d). F. Hoffmann-La Roche Ltd. & Anr. v.
Cipla Ltd, 2009 (159) DLT 243 (266) (DB).
Explanation to Section 3 (d) appears to prevent derivatives or other
forms of the already patented pharmaceutical products. It makes sure that
the derivatives or other forms “differ significantly in properties in regard to
efficacy”. F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd, 2009 (159) DLT
243 (266) (DB).
A method of doing advertisement business electronically is only an
improvement in the method of doing business and is an excluded subject
matter under Section 3(k) of the Patents Act, 1970. Yahoo! Inc (formerly
‘Overture Services Inc.’) v. The Assistant Controller of Patents &
Designs. [2011] IPAB 106.
4. Inventions relating to atomic energy not patentable
No patent shall be granted in respect of an invention relating to atomic energy
falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 (33
of 1962).
­24
Cl. (g) omitted by The Patents (Amendment) Act, 2002, S.4 (w.e.f. 20.05.2003). Prior to its
omission, Cl. (g) read as under:- “(g) a method or process of testing applicable during the
process of manufacture for rending the machine, apparatus or other equipment more efficient
or for the improvement or restoration of the existing machine, apparatus or other equipment
or for the improvement or control manufacture;”
­25
Inserted by The Patents (Amendment) Act, 2002, S.4, (w.e.f. 20.05.2003).
­ 6
2
The words “or plants” omitted by The Patents (Amendment) Act, 2002, S.4 (w.e.f. 20.05.2003).
­ 7
2
Inserted by The Patents (Amendment) Act, 2002, S.4, (w.e.f. 20.05.2003).
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S. 65
7
The Patents Act, 1970
5.
28
[Omitted by the Patents (Amendment) Act, 2005]
CHAPTER III
APPLICATIONS FOR PATENTS
6. Persons entitled to apply for patents
(1) Subject to the provisions contained in section 134, an application for a
patent for an invention may be made by any of the following persons, that
is to say, (a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true
and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately
before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons
referred to therein either alone or jointly with any other person.
S. 7, 10(7), 134,
135, 136
S. 2(1)(y)
S. 2(1)(ab)
S. 2(1)(k)
7. Form of application
(1) Every application for a patent shall be for one invention only and shall be
made in the prescribed form and filed in the patent office.
29
[(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.]
30
[(1B) The filing date of an application referred to in sub-section (1A)
and its complete specification processed by the patent office as
designated office or elected office shall be the international filing
date accorded under the Patent Cooperation Treaty.]
(2) Where the application is made by virtue of an assignment of the right
to apply for a patent for the invention, there shall be furnished with the
application, or within such period as may be prescribed after the filing of
the application, proof of the right to make the application.
S. 10(5), F.1
S. 53(1), 135(3);
R. 17-23; F. 1
S. 45(1), 138(4),
138(5)
­28
S. 5 repealed by The Patents (Amendment) Act, 2005, (w.r.e.f. 01.01.2005) S. 4. Prior to its
omission, S.5 read as under:- “5. Inventions where only methods or processes of manufacture
patentable. – [(1) 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.]
*[(2) Notwithstanding anything contained in sub-section (1), a claim for patent of an invention
for a substance itself intended for use, or capable of being used, as medicine or drug,
except the medicine or drug specified under sub-clause (v) of clause (1) of sub-section (1)
of section 2, may be made and shall be dealt, without prejudice to the other provisions
of this Act, in the manner provided in Chapter IV-A.]
**[Explanation. – For the purposes of this section, “chemical processes” includes
biochemical, biotechnological and microbiological processes].” Inserted by the Patents
(Amendment) Act, 1999, S.2 (w.r.e.f. 01.01.1995).
**Inserted by The Patents (Amendment) Act, 2002, S.5 (w.e.f. 20.05.2003).
­29
Inserted by The Patents (Amendment) Act, 2002 , S.6 (w.e.f. 20.05.2003).
­ 0
3
Inserted by The Patents (Amendment) Act, 2005, S. 5(a) (w.r.e.f. 01.01.2005).
www.lexcampus.in
R. 10
8
The Patents Act, 1970
(3) Every application under this section shall state that the applicant is in
possession of the invention and shall name the 31[person] claiming to be the
true and first inventor; and where the person so claiming is not the applicant
or one of the applicants, the application shall contain a declaration that the
applicant believes the person so named to be the true and first inventor.
32
[(4) Every such application (not being a convention application or an
application filed under the Patent Cooperation Treaty designating India)
shall be accompanied by a provisional or a complete specification.]
8. Information and undertaking regarding foreign applications.
(1) Where an applicant for a patent under this Act is prosecuting either alone
or jointly with any other person an application for a patent in any country
outside India in respect of the same or substantially the same invention,
or where to his knowledge such an 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 33[or subsequently 34[within
the prescribed period as the Controller may allow]] –
35
[(a) a statement setting out detailed particulars of such application; and]
(b)
an undertaking that, 36[up to the date of grant of patent in India],
he would keep the Controller informed in writing, from time to time,
of 37[detailed particulars as required under] clause (a) in respect of
every other application relating to the same or substantially the same
invention, if any, filed in any country outside India subsequently to
the filing of the statement referred to in the aforesaid clause, within
the prescribed time.
38
[(2) At any time after an application for patent is filed in India and till the
grant of a patent or refusal to grant of patent made thereon, the Controller
may also require the applicant to furnish details, as may be prescribed,
relating to the processing of the application in a country outside India,
and in that event the applicant shall furnish to the Controller information
available to him within such period as may be prescribed.]
­31
­32
­33
­34
­35
­36
­37
­38
F. 1, 4, 5
S. 10, 136(1)(a);
R. 13; F.2
R.12(1), 12(1A),
12(2), 134(1)(aa);
S.25(1)(h),
25(2)(h),
64(1)(m); F.3
Substituted by The Patents (Amendment) Act, 2005, S. 5(b), for “owner” (w.r,e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 5(c), for sub-S. (4) (w.re.f. 01.01.2005).
Prior to its substitution, sub-S. (4) read as under:- “(4) Every such application (not being a
convention application) shall be accompanied by a provisional or a complete specifications.”
Inserted by The Patents (Amendment) Act, 2002, S.7 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 6(a), for “within such period as the
Controller may, for good and sufficient reasons, allow” (w.r.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2002, S.7 for Cl. (a) (w.e.f. 20.05.2003). Prior
to its substitution, Cl. (a) read as under:- “(a) a statement setting out the name of the
country where the application is being prosecuted, the serial number and date of filing of the
application and such other particulars as may be prescribed; and”
Substituted by The Patents (Amendment) Act, 2005, S. 6(b), for “upto the date of the
acceptance of his complete specifications filed in India” (w.r.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2002, S.7, for “details of the nature referred to
in” (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 6(b), for sub-S. (2) (w.r.e.f. 01.01.2005).
Prior to its substitution, sub-S. (2) read as under:- “*[(2) At any time after an application
for patent is filed in India and till the grant of patent or refusal to grant of patent is made
thereon, the Controller may also require the applicant to furnish details, as may be prescribed,
relating to the processing of the application in a country outside India, and in that event the
applicant shall furnish information available to him to the Controller within thirty days
from the date of receipt of the communication requiring such furnishing of information or
within such further period as the Controller may, for good and sufficient reasons, allow.]” - *
Substituted by The Patents (Amendment) Act, 2002, S.7 (w.e.f. 20.05.2003).
www.lexcampus.in
S.159(ia)
9
The Patents Act, 1970
CASE LAW
Under section 8, an applicant has to make full disclosures to the Controller
about all information relating to applications for patents which are same or
substantially the same invention and also information related to title of the
said patents owned by the applicant and other persons in foreign countries.
F. Hoffmann-La Roche Ltd v. Cipla Ltd, 2012 (195) DLT 641 (715).
9. Provisional and complete specifications.
[(1) Where an application for a patent (not being a convention application
or an application filed under the Patent Cooperation Treaty designating
India) is accompanied by a provisional specification, a complete
specification shall be filed within twelve months from the date of filing
of the application, and if the complete specification is not so filed, the
application shall be deemed to be abandoned.]
(2) Where two or more applications in the name of the same applicant are
accompanied by provisional specifications in respect of inventions which
are cognate or of which one is a modification of another and the Controller
is of opinion that the whole of such inventions are such as to constitute a
single invention and may properly be included in one patent, he may allow
one complete specification to be filed in respect of all such provisional
specifications:
40
[Provided that the period of time specified under sub-section (1) shall be
reckoned from the date of filing of the earliest provisional specification.]
41
[(3) 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 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 of the application, direct
that such specification shall be treated, for the purposes of this Act, as
a provisional specification and proceed with the application accordingly.]
(4) Where a complete specification has been filed in pursuance of an
application for a patent accompanied by a provisional specification or by
a specification treated by virtue of a direction under sub-section (3) as a
provisional specification, the Controller may, if the applicant so requests at
any time before 42[grant of patent], cancel the provisional specification and
post-date the application to the date of filing of the complete specification.
39
S. 136, 138(4);
R. 13; F. 2
S. 10(5), 11(2)(b),
33(1).
S. 17(1), 11(7)
­39
Substituted by The Patents (Amendment) Act, 2005, S. 7(a), for sub-S. (1) (w.r.e.f. 01.01.2005).
Prior to its substitution, sub-S. (1) read as under:- “(1) Where an application for a patent (not
being a convention application) 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:
Provided that the complete specification may be filed at any time after twelve months but within
fifteen months from the date aforesaid, if a request to that effect is made to the Controller and
the prescribed fee is paid on or before the date on which the compete specification is filed.”
­40
Inserted by The Patents (Amendment) Act, 2005, S. 7(b), (w.r.e.f. 01.01.2005).
­ 1
4
Substituted by The Patents (Amendment) Act, 2005, S. 7(c), for sub-S. (3) (w.r.e.f. 01.01.2005).
Prior to its substitution, sub-S. (3) read as under:- “(3) Where an application for a patent
(not being a convention application) is accompanied by a specification purporting to be a
complete specification, the Controller may, if the applicant so requests at any time before the
acceptance of the specification, direct that such specifications shall be treated for the purposes
of this Act as a provisional specification and proceed with the application accordingly.”
­ 2
4
Substituted by The Patents (Amendment) Act, 2005, S. 7(d), for “the acceptance of the
complete specification” sub-S. (3) (w.r.e.f. 01.01.2005).
www.lexcampus.in
10
The Patents Act, 1970
CASE LAW
Post-dating of patent can be done only to the date of filing of the complete
specifications. Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd., AIR 2000
Del. 23; 1999 (19) PTC 479 (Del).
10. Contents of specifications
(1) Every specification, whether provisional or complete, shall describe the
invention and shall begin with a title sufficiently indicating the subjectmatter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act,
drawings may, and shall, if the Controller so requires, be supplied for the
purposes of any specification, whether complete or provisional; and any
drawings so supplied shall, unless the Controller otherwise directs, be
deemed to form part of the specification, and references in this Act to a
specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application
should be further supplemented by a model or sample of anything
illustrating the invention or alleged to constitute an invention, such model
or sample as he may require shall be furnished 43[before the application is
found in order for grant of a patent], but such model or sample shall not
be deemed to form part of the specification.
(4) Every complete specification shall(a)
fully and particularly describe the invention and its operation or
use and the method by which it is to be performed;
(b)
disclose the best method of performing the invention which is known
to the applicant and for which he is entitled to claim protection; and
(c)
end with a claim or claims defining the scope of the invention for
which protection is claimed;
44
[(d) be accompanied by an abstract to provide technical information
on the invention:
Provided that(i)
the Controller may amend the abstract for providing better
information to third parties; and
(ii)
if the applicant mentions a biological material in the specification
which may not be described in such a way as to satisfy clauses
(a) and (b), and if such material is not available to the public, the
application shall be completed by depositing 45[the material to an
international depository authority under the Budapest Treaty]
and by fulfilling the following conditions, namely:46
[(A) the deposit of the material shall be made not later than the date of
filing the patent application in India and a reference thereof shall
be made in the specification within the prescribed period;]
R. 13(7)(a), 14,
15; F. 2
R. 13(4), 15
R. 16
S. 159(2)(ib);
R. 13(7)
­43
Substituted by The Patents (Amendment) Act, 2005, S. 8(a), for “before the acceptance of the
application” sub-S. (3) (w.r.e.f. 01.01.2005).
­44
Inserted by The Patents (Amendment) Act, 2002, S.8, (w.e.f. 20.05.2003).
­ 5
4
Substituted by The Patents (Amendment) Act, 2005, S. 8(b)(i), for “the material to an
authorized depository institution as may be notified by the Central Government in the
Official Gazette” (w.r.e.f. 01.01.2005).
­ 6
4
Substituted by The Patents (Amendment) Act, 2005, S. 8(b)(ii), for sub-Cl. (A) (w.r.e.f.
01.01.2005). Prior to its substitution, sub-Cl. (A) read as under:- “(A) the deposit of the
material shall be made not later than the date of the patent application in India.”
www.lexcampus.in
S. 2(aba)
R. 13(8)
11
The Patents Act, 1970
(B)
all the available characteristics of the material required for it to be
correctly identified or indicated are included in the specification
including the name, address of the depository institution and the
date and number of the deposit of the material at the institution;
(C)
access to the material is available in the depository institution
only after the date of the application for patent in India or if a
priority is claimed after the date of the priority;
(D)
disclose the source and geographical origin of the biological
material in the specification, when used in an invention.]
47
[(4A) In case of an international application designating India, the title,
description, drawings, abstract and claims filed with the application shall
be taken as the complete specification for the purposes of this Act.]
48
[(5) The claim or claims of a complete specification shall relate to a single
invention, or to a group of inventions linked so as to form a single inventive
concept, shall be clear and succinct and shall be fairly based on the matter
disclosed in the specification.]
(6) A declaration as to the inventorship of the invention shall, in such cases as
may be prescribed, be furnished in the prescribed form with the complete
specification or within such period as may be prescribed after the filing of
that specification.
(7) Subject to the foregoing provisions of this section, a complete specification
filed after a provisional specification may include claims in respect of
developments of, or additions to, the invention which was described in the
provisional specification, being developments or additions in respect of
which the applicant would be entitled under the provisions of section 6 to
make a separate application for a patent.
S. 7, 135(2),
136(2)
S. 7(3); R. 13(6);
F. 5
S. 6, 54
CASE LAW
The proper way to understand a specification would be first to read the
description of invention so that the mind may be prepared for what it is, than
that the invention is to be claimed. However, the specification and claim must
be looked at and construed together. Biswanath Prasad Radhey Shyam v.
Hindustan Metal Industries, AIR 1982 SC 1444 (1452): 1797 All L J 290:
PTC (Suppl) (1) 731 (SC).
11. Priority dates of claims of a complete specification.
(1) There shall be a priority date for each claim of a complete specification.
(2) Where a complete specification is filed in pursuance of a single application
accompanied by -
S. 2(w), 9(3)
­47
Substituted by The Patents (Amendment) Act, 2005, S. 8(c), for sub-S. (4-A) (w.r.e.f. 01.01.2005).
Prior to its substitution, sub-S. (4-A) read as under:- “(4-A) In case of an international
application designating India,(i) The title, description, drawings, abstract and claims filed with the application shall be
taken as the complete specifications for the purpose of this Act; and
(ii) The filing date of the 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.”
­ 8
4
Substituted by The Patents (Amendment) Act, 2005, S. 8, for sub-S. (5) (w.r,e.f. 01.01.2005).
Prior to its substitution, sub-S. (5) read as under:- “(5) The claim or claims of a complete
specification shall relate to a single invention, shall be clear and succinct and shall be fairly
based on the matter disclosed in the specification and shall, in the case of an invention such
as is referred to in section 5, relate to a single method or process of manufacture.”
www.lexcampus.in
12
The Patents Act, 1970
(a)
(b)
a provisional specification; or
a specification which is treated by virtue of a direction under subsection (3) of section 9 as a provisional specification,
and the claim is fairly based on the matter disclosed in the
specification referred to in clause (a) or clause (b), the priority date of
that claim shall be the date of the filing of the relevant specification.
(3) Where the complete specification is filed or proceeded with in pursuance
of two or more applications accompanied by such specifications as are
mentioned in sub-section(2) and the claim is fairly based on the matter
disclosed (a)
in one of those specifications, the priority date of that claim shall
be the date of the filing of the application accompanied by that
specification;
(b)
partly in one and partly in another, the priority date of that claim
shall be the date of the filing of the application accompanied by
the specification of the later date.
49
[(3A) Where a complete specification based on a previously filed application
in India has been filed within twelve months from the date of that
application and the claim is fairly based on the matter disclosed in the
previously filed application, the priority date of that claim shall be the
date of the previously filed application in which the matter was first
disclosed.]
(4) Where the complete specification has been filed in pursuance of a further
application made by virtue of sub-section (1) of section 16 and the claim
is fairly based on the matter disclosed in any of the earlier specifications,
provisional or complete, as the case may be, the priority date of that claim
shall be the date of the filing of that specification in which the matter was
first disclosed.
(5) Where, under the foregoing provisions of this section, any claim of a
complete specification would, but for the provisions of this sub-section,
have two or more priority dates, the priority date of that claim shall be the
earlier or earliest of those dates.
(6) In any case to which sub-sections (2), (3),50[(3A)], (4) and (5) do not apply,
the priority date of a claim shall, subject to the provisions of section 137,
be the date of filing of the complete specification.
(7) The reference to the date of the filing of the application or of the complete
specification in this section shall, in cases where there has been a postdating under section 9 or section 17 or, as the case may be, an ante-dating
under section 16, be a reference to the date as so post-dated or ante-dated.
(8) A claim in a complete specification of a patent shall not be invalid by
reason only of (a)
the publication or use of the invention so far as claimed in that
claim on or after the priority date of such claim; or
(b)
the grant of another patent which claims the invention, so far as
claimed in the first-mentioned claim, in a claim of the same or a
later priority date.
­49
­50
S. 9(2)
S. 16(1)
S. 137
S. 9, 17, 16
Inserted by The Patents (Amendment) Act, 2005, S. 9(a), (w.r.e.f. 01.01.2005).
Inserted by The Patents (Amendment) Act, 2005, S. 9(b), (w.r.e.f. 01.01.2005).
www.lexcampus.in
13
The Patents Act, 1970
CHAPTER IV
51
[PUBLICATION AND EXAMINATION OF APPLICATIONS]
[11A. Publication of applications
52
[(1) Save as otherwise provided, no application for patent shall ordinarily be
open to the public for such period as may be prescribed.
(2) The applicant may, in the prescribed manner, request the Controller to
publish his application at any time before the expiry of the period prescribed
under sub-section (1) and subject to the provisions of sub-section (3), the
Controller shall publish such application as soon as possible.
(3) Every application for a patent shall, on the expiry of the period specified
under sub-section (1), be published, except in cases where the application–
(a)
in which secrecy direction is imposed under section 35; or
(b)
has been abandoned under sub-section (1) of section 9; or
(c)
has been withdrawn three months prior to the period specified
under sub-section (1)]
(4) In case a secrecy direction has been given in respect of an application
under section 35, then it shall be published after the expiry of the period
54
[prescribed under sub-section (1)] or when the secrecy direction has
ceased to operate, whichever is later.
(5) The publication of every application under this section shall include the
particulars of the date of application, number of application, name and
address of the applicant identifying the application and an abstract.
(6) Upon publication of an application for a patent under this section(a)
the depository institution shall make the biological material
mentioned in the specification available to the public;
(b)
the patent office may, on payment of such fee as may be prescribed,
make the specification and drawings, if any, of such application
available to the public.
55
[(7) On and from the date of publication of the application for patent and
until the date of grant of a patent in respect of such application, the
applicant shall have the like privileges and rights as if a patent for the
invention had been granted on the date of publication of the application:
Provided that the applicant shall not be entitled to institute any
proceedings for infringement until the patent has been granted:
Provided further that the rights of a patentee in respect of applications
made under sub-section (2) of section 5 before the 1st day of January, 2005
shall accrue from the date of grant of the patent:
53
S.143, 159(2)(ic)
R. 24
R. 24A, 24B(2)(i),
24C(3), 25; F. 9
S. 35, 9(1), 143
S. 35(2)
R. 25, 27)
S. 10(4)
S. 45, 5(2)
­51
Substituted by The Patents (Amendment) Act, 2002, S. 9. (w.e.f 20.05.2003).Prior to the
substitution, the heading read as “EXAMINATION OF APPLICATIONS”
Inserted by The Patents (Amendment) Act, 2002, S.9 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 10(a), for sub-Ss. (1), (2) and (3) (w.e.f.
01.01.2005). Prior to their substitution, sub-Ss. (1), (2) and (3) read as under:“(1) Applications for patents shall not be open to the public for period of eighteen months
from the date of filing or date of priority, whichever is earlier.
(2) Except when a secrecy direction is given under section 35, every application for a patent
shall, on the expiry of the period as specified in sub-section (1), be published.
(3) The publication of every application for a patent shall be notified in the Official Gazette.”
­54
Substituted by The Patents (Amendment) Act, 2002, S.10 (b), for “of eighteen months” (w.e.f.
20.05.2003).
­ 5
5
Inserted by The Patents (Amendment) Act, 2005, S. 10(c), (w.r.e.f. 01.01.2005).
­52
­53
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14
The Patents Act, 1970
Provided also that after a patent is granted in respect of applications made
under sub-section (2) of section 5, the patent-holder shall only be entitled to
receive reasonable royalty from such enterprises which have made significant
investment and were producing and marketing the concerned product prior
to the 1-1-2005 and which continue to manufacture the product covered by
patent on the date of grant of the patent and no infringement proceedings
shall be instituted against such enterprises.]
11B.
Request for examination
[(1) No application for a patent shall be examined unless the applicant or
any other interested person makes a request in the prescribed manner for
such examination within the prescribed period.]
57
[(2) Omitted by the Patents (Amendment) Act, 2005.]
58
[(3) In case of an application in respect of a claim for a patent filed under
sub-section (2) of section 5 before the 1st day of January, 2005 a request
for its examination shall be made in the prescribed manner and within
the prescribed period by the applicant or any other interested person.]
(4) In case the applicant or any other interested person does not make a
request for examination of the application for a patent within the period
as specified under sub-section (1) 59[***] or sub-section (3), the application
shall be treated as withdrawn by the applicant:
60
[Provided that–
(i)
the applicant may, at any time after filing the application but
before the grant of a patent, withdraw the application by making
a request in the prescribed manner; and
(ii)
in a case where secrecy direction has been issued under section 35,
the request for examination may be made within the prescribed
period from the date of revocation of the secrecy direction.]
56
­56
­57
­58
­59
­60
R. 24b(1)(i); F. 18
R. 24b(1)(ii)
S. 35; R. 7(4A),
24B(1)(iii), 24C(5),
26; F. 29
Substituted by The Patents (Amendment) Act, 2005, S. 11(a), for sub-S. (1) (w.r.e.f. 01.01.2005).
Prior to their substitution, sub-S. (1) read as under:- “(1) No application for a patent shall be
required to be examined unless the applicant or any other interested person makes a request
in the prescribed manner for such examination within forty-eight months from the date of
filing of the application for patent.”
Omitted by The Patents (Amendment) Act, 2005, S. 11(b), (w.r.e.f. 01.01.2005). Prior to its
omission sub-S. (1) read as under:- “(2) In case of an application filed before the commencement
of The Patents (Amendment) Act, 2002, a request in the prescribed manner for examination
shall be made by the applicant or any other interested person within a period of twelve
months from the date of such commencement or within forty-eight months from the date of
filing of the application, whichever is later.”
Substituted by The Patents (Amendment) Act, 2005, S. 11(c), for sub-S. (3) (w.r.e.f. 01.01.2005).
Prior to their substitution, sub-S. (3) read as under:- “(3) In case of an application in respect
of a claim for a patent covered under sub-section (2) of section 5, a request in the prescribed
manner for examination shall be made by the applicant or any other interested person within
a period of twelve months from the 31st day of December, 2004 or within forty-eight months
from the date of the application, whichever is later.”
The words, brackets and figure “or sub-section (2)” omitted by The Patents (Amendment) Act,
2005, S. 11(d)(i) (w.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 11(d) (ii), for the proviso (w.e.f.
01.01.2005). Prior to their substitution, the proviso read as under:- “Provided that –
(i) The applicant may, at any time after the filing of the application but before the grant of
the patent, withdraw the application made by him; and
(ii) In a case where a secrecy direction has been issued under section 35, the request for
examination may be made within forty-eight months from the date of revocation of the
secrecy direction.”
www.lexcampus.in
15
The Patents Act, 1970
12. Examination of application
[(1) When a request for examination has been made in respect of an application
for a patent in the prescribed manner 62[under sub-section (1) or sub-section (3)
of section 11B, the application and specification and other documents related
thereto shall be referred, at the earliest by the Controller]] to an examiner for
making a report to him in respect of the following matters, namely:(a)
whether the application 63[for specification and other documents
relating thereto] are in accordance with the requirements of this
Act and of any rules made thereunder;
(b)
whether there is any lawful ground of objection to the grant of the
patent under this Act in pursuance of the application;
(c)
the result of investigations made under section 13; and
(d)
any other matter which may be prescribed.
(2) The examiner to whom the application and the 64[specification and other
documents relating thereto] are referred under sub-section (1) shall
ordinarily make the report to the Controller within 65[such period as may
be prescribed.]
61
S. 11B; R. 24B,
24C, 134(1)(e);
F. 18
S. 13
R. 24B(2), 24C(6)
13.Search for anticipation by previous publication and by prior
claim
(1) The examiner to whom an application for a patent is referred under section
12 shall make investigation for the purpose of ascertaining whether the
invention so far as claimed in any claim of the complete specification (a)
has been anticipated by publication before the date of 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 the 1st day of January, 1912;
(b)
is claimed in any claim of any other complete specification
published on or after the date of filing of the applicant’s complete
specification, being a specification filed in pursuance of an
application for a patent made in India and dated before or claiming
the priority date earlier than that date.
(2) The examiner shall, in addition, make such investigation 66[***] for the
purpose of ascertaining whether the invention, so far as claimed in any
claim of the complete specification, has been anticipated by publication in
India or elsewhere in any document other than those mentioned in subsection (1) before the date of filing of the applicant’s complete specification.
­61
­62
­63
­64
­65
­66
S. 12, 29, 64(1)(e)
S.18(1);
R. 28, 29, 32
S. 18(1)
Substituted by The Patents (Amendment) Act, 2002, S. 10, for “when the complete
specification has been has been filed in respect of an application for a patent, the application
and specifications relating thereto” (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 12(a), for “under sub-section (1) or
sub-section (2) or sub-section (3) of section 11-B, the application and specification and other
documents relating thereto shall be referred by the Controller” (w.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2002, S. 10, for “specifications relating thereto”
(w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 10, for “specifications relating thereto”
(w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 12(a), for “a period of eighteen months
from the date of such reference” (w.e.f. 01.01.2005).
The words “as the Controller may direct” omitted by The Patents (Amendment) Act, 2002, S.
11 (w.e.f. 20.05.2003).
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16
The Patents Act, 1970
(3) Where a complete specification is amended under the provisions of this
Act before 67[the grant of a patent], the amended specification shall be
examined and investigated in like manner as the original specification.
(4) The examination and investigations required under section 12 and this
section shall not be deemed in any way to warrant the validity of any
patent, and no liability shall be incurred by the Central Government or any
officer thereof by reason of, or in connection with, any such examination or
investigation or any report or other proceedings consequent thereon.
S. 12
CASE LAW
The grant of patent by the Controller can be challenged before the High Court
on various grounds in revocation or infringement proceedings. Merely grant
of patent does not guarantee the validity of a patent under section 13(4).
Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR
1982 SC 1444 (1448): 1979 All LJ 290: PTC (Suppl) (1) 731 (SC).
The burden to prove that the patent is valid lies upon the patentee in
cases of application for Injunction. Mariappan v. A.R. Safiullah, 2008 (5)
CTC 97 (102): 2008 (3) Mad LW 775 (DB): 2008 (38) PTC 341 (Mad).
[14. Consideration of report of examiner by Controller
68
Where, in respect of an application for a patent, the report of the examiner
received by the Controller is adverse to the applicant or requires any
amendment of the application, the specification or other documents to
ensure compliance with the provisions of this Act or of the rules made there
under, the Controller, before proceeding to dispose of the application in
accordance with the provisions hereinafter appearing, shall communicate
as expeditiously as possible the gist of the objections to the applicant and
shall, if so required by the applicant within the prescribed period, give him
an opportunity of being heard.
R. 14, 28A
15.Power of Controller to refuse or require amendment of
applications, etc., in certain cases
Where the Controller is satisfied that the application or any specification
or any other document filed in pursuance thereof does not comply with the
S. 17(2), 117A(2)
­67
Substituted by The Patents (Amendment) Act, 2005, S. 13, for “it has been accepted” (w.e.f.
01.01.2005).
­ 8
6
Substituted by The Patents (Amendment) Act, 2005, S. 14, for Ss. 14 and 15 (w.e.f. 01.01.2005).
Prior to their substitution, Ss. 14 and 15 read as under:- “14. Consideration of report of
examiner by Controller – Where, in respect of an application for a patent, the report of the
examiner received by the Controller is adverse to the applicant or requires any amendment
of the application or of the specification to ensure compliance with the provisions of this Act
or of the rules made thereunder, the Controller, before proceeding to dispose of the application
in accordance with the provisions hereinafter appearing, shall communicate the gist of the
objections to the applicant and shall, if so required by the applicant within the prescribed
time give him an opportunity of being heard.
15. Power of Controller to refuse or require amended applications in certain cases – Where
the Controller is satisfied that the application or any specification or any other document
filed in pursuance thereof does not comply with the requirements of this Act or of any
rules made thereunder, the Controller may require the application, specification, or any
other document filed as the case may be, to be amended to his satisfaction before he
proceeds with the application or refuse the application on failure to do so.” - Substituted
by The Patents (Amendment) Act, 2002, S. 12 (w.e.f. 20.05.2003).
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The Patents Act, 1970
requirements of this Act or of any rules made thereunder, the Controller may
refuse the application or may require the application, specification or the other
documents, as the case may be, to be amended to his satisfaction before he
proceeds with the application and refuse the application on failure to do so.]
16. Power of Controller to make orders respecting division of
application
(1) A person who has made an application for a patent under this Act may, at
any time 69[before the grant of the patent], if he so desires, or with a view
to remedy the objection raised by the Controller on the ground that the
claims of the complete specification relate to more than one invention, file
a further application in respect of an invention disclosed in the provisional
or complete specification already filed in respect of the first mentioned
application.
(2) The further application under sub-section (1) shall be accompanied by a
complete specification, but such complete specification shall not include
any matter not in substance disclosed in the complete specification filed
in pursuance of the first mentioned application.
(3) The Controller may require such amendment of the complete specification
filed in pursuance of either the original or the further application as may
be necessary to ensure that neither of the said complete specifications
includes a claim for any matter claimed in the other.
70
[Explanation– For the purposes of this Act, the further application and
the complete specification accompanying it shall be deemed to have been
filed on the date on which the first mentioned application had been filed,
and the further application shall be proceeded with as a substantive
application and be examined when the request for examination is filed
within the prescribed period.]
S. 11(4), 11(7),
117A(2);
R. 4(4), 4(5), 13(2),
24B(2)
R. 24B(1)(iv)
17. Power of Controller to make order respecting dating of
application
(1) Subject to the provisions of section 9, at any time after the filing of an
application and 71[before the grant of the patent] under this Act, the
Controller may, at the request of the applicant made in the prescribed
manner, direct that the application shall be post-dated to such date as may
be specified in the request, and proceed with the application accordingly:
Provided that no application shall be post-dated under this sub-section to
a date later than six months from the date on which it was actually made
or would, but for the provisions of this sub-section, be deemed to have
been made.
S. 9, 11(7),
117A(2), 136(3)
­69
Substituted by The Patents (Amendment) Act, 2005, S. 15 (a), for “before the acceptance of the
complete specification” (w.e.f. 01.01.2005).
­70
Substituted by The Patents (Amendment) Act, 2005, S. 15 (b), for the Explanation (w.e.f.
01.01.2005). Prior to its substitution, the Explanation read as under:- “Explanation. – For
the purpose of this Act, the further application and the complete specifications accompanying
it shall be deemed to have been filed on the date of which the complete specifications in
pursuance of the first mentioned application has been filed, and the further application
shall, subject to the determination of the priority date under sub-section (4) of section 11, be
proceeded with as a substantive application.”
­ 1
7
Substituted by The Patents (Amendment) Act, 2005, S. 16, for “before the acceptance of the
complete specification” (w.e.f. 01.01.2005).
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The Patents Act, 1970
72
[(2) Where an application or specification (including drawings) or any
other document is required to be amended under section 15, the application or
specification or other document shall, if the Controller so directs, be deemed to
have been made on the date on which the requirement is complied with or where
the application or specification or other document is returned to the applicant,
on the date on which it is re-filed after complying with the requirement.]
18. Power of Controller in cases of anticipation
(1) Where it appears to the Controller that the invention so far as claimed
in any claim of the complete specification has been anticipated in the
manner referred to in clause (a) of sub-section (1) or sub-section (2) of
section 13, he may refuse 73[the application] unless the applicant (a)
shows to the satisfaction of the Controller that the priority date
of the claim of his complete specification is not later than the date
on which the relevant document was published; or
(b)
amends his complete specification to the satisfaction of the Controller.
(2) If it appears to the Controller that the invention is claimed in a claim of
any other complete specification referred to in clause (b) of sub-section
(1) of section 13, he may, subject to the provisions hereinafter contained,
direct that a reference to that other specification shall be inserted by way
of notice to the public in the applicant’s complete specification unless
within such time as may be prescribed, (a)
the applicant shows to the satisfaction of the Controller that the
priority date of his claim is not later than the priority date of the
claim of the said other specification; or
(b)
the complete specification is amended to the satisfaction of the
Controller.
(3) If it appears to the Controller, as a result of an investigation under section
13 or otherwise, (a)
that the invention so far as claimed in any claim of the applicant’s
complete specification has been claimed in any other complete
specification referred to in clause (a) of sub-section (1) of section
13; and
(b)
that such other complete specification was published on or after
the priority date of the applicant’s claim,
then, unless it is shown to the satisfaction of the Controller that
the priority date of the applicant’s claim is not later than the
priority date of the claim of that specification, the provisions of
sub-section (2) shall apply thereto in the same manner as they
apply to a specification published on or after the date of filing of
the applicant’s complete specification.
S. 15
S. 13(1)(a), 13(2)
117A(2); R. 28, 30
S. 13(1)(b);
R. 29, 30, 31
­72
Substituted by The Patents (Amendment) Act, 2002, S. 13, for sub-S (2) (w.e.f. 20.05.2003).
Prior to the substitution, sub-S (2) read as under:- “(2) Where an application or specification
(including drawings) is required to be amended under clause (b) of sub-section (1) of section
15, the application or specification shall, if the Controller so direct, be deemed to have been
made on the date on which the requirement is complied with or where the application or
specification is returned to the applicant, on the date on which it is re-filed after complying
with the requirements.”
­ 3
7
Substituted by The Patents (Amendment) Act, 2005, S. 17 (a), for “to accept the complete
specification” (w.e.f. 01.01.2005).
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The Patents Act, 1970
74
[(4) [Omitted by the Patents (Amendment) Act, 2005.]
19. Powers of Controller in case of potential infringement
(1) If, in consequence of the investigations required 75[under this Act],
it appears to the Controller that an invention in respect of which an
application for a patent has been made cannot be performed without
substantial risk of infringement of a claim of any other patent, he may
direct that a reference to that other patent shall be inserted in the
applicant’s complete specification by way of notice to the public, unless
within such time as may be prescribed –
(a)
the applicant shows to the satisfaction of the Controller that there
are reasonable grounds for contesting the validity of the said
claim of the other patent; or
(b)
the complete specification is amended to the satisfaction of the
Controller.
(2) Where, after a reference to another patent has been inserted in a complete
specification in pursuance of a direction under sub-section (1) –
(a)
that other patent is revoked or otherwise ceases to be in force; or
(b)
the specification of that other patent is amended by the deletion of
the relevant claim; or
(c)
it is found, in proceedings before the court or the Controller, that
the relevant claim of that other patent is invalid or is not infringed
by any working of the applicant’s invention,
the Controller may, on the application of the applicant, delete the
reference to that other patent.
S.117A(2);
R. 29, 32, 33
20. Powers of Controller to make orders regarding substitution of
applicants, etc
(1) If the Controller is satisfied, on a claim made in the prescribed manner at
any time before a patent has been granted, that by virtue of any assignment
or agreement in writing made by the applicant or one of the applicants for
the patent or by operation of law, the claimant would, if the patent were then
granted, be entitled thereto or to the interest of the applicant therein, or to an
undivided share of the patent or of that interest, the Controller may, subject
to the provisions of this section, direct that the application shall proceed in
the name of the claimant or in the names of the claimants and the applicant
or the other joint applicant or applicants, accordingly as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any assignment
or agreement made by one of two or more joint applicants for a patent
except with the consent of the other joint applicant or applicants.
(3) No such direction as aforesaid shall be given by virtue of any assignment
or agreement for the assignment of the benefit of an invention unless (a)
the invention is identified therein by reference to the number of
the application for the patent; or
S.117A(2);
R. 34; F. 6
­74
Sub-S (4) omitted by The Patents (Amendment) Act, 2005, S. 17 (b) (w.e.f. 01.01.2005). Prior
to its omission, sub-S (4) read as under:- “(4) Any order of the Controller under sub-section
(2) or sub-section (3) directing the insertion of a reference to another complete specification
shall be of no effect unless the other patent is granted.
­ 5
7
Substituted by The Patents (Amendment) Act, 2005, S. 18, for “by the foregoing provisions of
this Act or of proceedings under section 25” (w.e.f. 01.01.2005).
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The Patents Act, 1970
(b)
there is produced to the Controller an acknowledgement by the
person by whom the assignment or agreement was made that the
assignment or agreement relates to the invention in respect of
which that application is made; or
(c)
the rights of the claimant in respect of the invention have been
finally established by the decision of a court; or
(d)
the Controller gives directions for enabling the application
to proceed or for regulating the manner in which it should be
proceeded with under sub-section (5).
(4) Where one of two or more joint applicants for a patent dies at any time
before the patent has been granted, the Controller may, upon a request
in that behalf made by the survivor or survivors, and with the consent of
the legal representative of the deceased, direct that the application shall
proceed in the name of the survivor or survivors alone.
(5) If any dispute arises between joint applicants for a patent whether or in
what manner the application should be proceeded with, the Controller,
may upon application made to him in the prescribed manner by any of
the parties, and after giving to all parties concerned an opportunity to be
heard, give such directions as he thinks fit for enabling the application to
proceed in the name of one or more of the parties alone or for regulating the
manner in which it should be proceeded with, or for both those purposes,
as the case may require.
76
R. 36; F. 6
[21. Time for putting application in order for grant
(1) An application for a patent shall be deemed to have been abandoned unless,
within such period as may be prescribed, the applicant has complied with
all the requirements imposed on him by or under this Act, whether in
connection with the complete specification or otherwise in relation to the
­76
R. 35; F. 6
R. 24B(5), 24B(6),
24C(10), 24C(11),
24C(12), 28(2), 43
Substituted by The Patents (Amendment) Act, 2005, S. 19, for S. 21 (w.e.f. 01.01.2005). Prior to
its substitution, S. 21 read as under:- “21. Time for putting application in order for acceptance. –
(1) An application for a patent shall be deemed to have been abandoned unless within
twelve months from the date on which the first statement of objections to the application
or complete specification or other documents related therto is forwarded to the applicant
by the Controller the applicant has complied with all the requirements imposed on
him by or under this Act, whether in connection with the complete specifications or
otherwise in relation to the application.
Explanation - Where the application or any specification or, in the case of a convention
application, any document filed as part of the application has been returned to the
applicant by the Controller in the course of the proceedings, the applicant shall not be
deemed to have complied with such requirements unless and until he has re-filed it.
[***]
(3) If at the expiration of the period of twelve months –
(a) An appeal to the Appellate Board is pending in respect of the application for the
patent for the main invention, or
(b) In the case of an application for a patent of addition, an appeal to the Appellate Board
is pending in respect of either that application or the application for the main invention,
the time within which the requirements of the Controller shall be complied with shall,
on an application made by the applicant before the expiration of the said period of
twelve months, be extended until such date as the Appellate Board may determine.
(4) If the time within which the appeal mentioned in sub-section (3) may be instituted has
not expired, the Controller may extend the period of twelve months such further period
as he may determined:
Provided that if an appeal has been filed during the said further period, and the Appellate
Board has granted any extension of time for complying with the requirements of the Controller,
the, the requirements may be complied with within the time granted by the Board.”
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21
The Patents Act, 1970
application from the date on which the first statement of objections to the
application or complete specification or other documents related thereto
is forwarded to the applicant by the Controller.
Explanation.–Where the application for a patent or any specification or,
in the case of a convention application or an application filed under the
Patent Cooperation Treaty designating India any document filed as part
of the application has been returned to the applicant by the Controller in
the course of the proceedings, the applicant shall not be deemed to have
complied with such requirements unless and until he has refiled it or the
applicant proves to the satisfaction of the Controller that for the reasons
beyond his control such document could not be re-filed.
(2) If at the expiration of the period as prescribed under sub-section (1),–
(a)
an appeal to the High Court is pending in respect of the application
for the patent for the main invention; or
(b)
in the case of an application for a patent of addition, an appeal to
the High Court is pending in respect of either that application or
the application for the main invention, the time within which the
requirements of the Controller shall be complied with shall, on
an application made by the applicant before the expiration of the
period as prescribed under sub-section (1), be extended until such
date as the High Court may determine.
(3) If the time within which the appeal mentioned in sub-section (2) may
be instituted has not expired, the Controller may extend the period as
prescribed under sub-section (1), to such further period as he may determine:
Provided that if an appeal has been filed during the said further period,
and the High Court has granted any extension of time for complying with the
requirements of the Controller, then the requirements may be complied with
within the time granted by the Court.]
[22. [Omitted by the Patents (Amendment) Act, 2005]
77
­77
Prior to their omission, Ss. 22 to 24 read as under:- “22. Acceptance of complete specifications
– Subject to the provisions of section 21, the complete specification filed in pursuance of an
application for a patent may be accepted by the Controller at any time after the applicant
has complied with the requirements mentioned in sub-section (1) of that section and if
not so accepted within the period allowed under that section for compliance with those
requirements, shall be accepted as soon as may be thereafter:
Provided that the applicant may make an application to the Controller in the prescribed
manner requesting him to postpone acceptance until such date (not being later than [twelve
months] from the date on which the objections referred to in sub-section (1) of section 21 are
forwarded to the applicant) as may be specified in the application, and , if such application is
made, the Controller may postpone acceptance accordingly.
23. Advertisement of acceptance of complete specifications – On the acceptance of a complete
specification, the Controller shall give notice thereof to the applicant and shall advertise
in the Official Gazette the fact that the specifications has been accepted, and thereupon
the application and the specifications with the drawings (if any) [as accepted by the
Controller along with other documents filed by the applicant in pursuance thereof] shall
be open to public inspection.
24. Effect of acceptance of complete specifications – On and from the date of advertisement
of the acceptance of complete specification and until the date of sealing of a patent in
respect thereof, the applicant shall have the like privileges and rights as if a patent
for the invention had been sealed on the date of advertisement of acceptance of the
complete specification:
Provided that the applicant shall not be entitled to institute any proceedings for infringement
until the patent has been sealed.
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The Patents Act, 1970
23. [Omitted by the Patents (Amendment) Act, 2005]
24. [Omitted by the Patents (Amendment) Act, 2005]
CHAPTER V
[OPPOSITION PROCEEDINGS TO GRANT OF PATENTS]
78
[25. Opposition to the patent
79
(1) Where an application for a patent has been published but a patent has not
been granted, any person may, in writing, represent by way of opposition
to the Controller against the grant of patent on the ground –
(a)
that the applicant for the patent or the person under or through
whom he claims, wrongfully obtained the invention or any part
thereof from him or from a person under or through whom he
claims;
S. 117A(2), 159(v);
R. 55, 57-63;
F. 7(A)
­78
Substituted by The Patents (Amendment) Act, 2005, S. 22, for “OPPOSITION TO GRANT OF
PATENT” (w.e.f. 01.01.2005)
­ 9
7
Substituted by The Patents (Amendment) Act, 2005, S. 23 for Ss. 25 and 26 (w.e.f. 01.01.2005).
Prior to their substitution, Ss. 25 and 26 read as under:- “25. Opposition to grant of patent:(1) At any time within four months from the date of advertisement of the acceptance of a
complete specification under this Act (or within such further period not exceeding one
month in the aggregate of the Controller may allow on application made to him in the
prescribed manner before the expiry of the four months aforesaid) any person interested
may give notice to the Controller of opposition to the grant of the patent on any of the
following grounds, namely:(a) That the applicant for the patent or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person under
or through whom he claims;
(b) That the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim–
(i) In any specification filed in pursuance of an application for a patent made in India
on or after the 1st day of January, 1912; or
(ii) In India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not be available where such
publication does not constitute an anticipation of the invention by virtue of sub-section
(2) or sub-section (3) of section 29;
(c) That the invention so far as claimed in any claim of the complete specification is claimed
in a claim of a complete specification published on or after the priority date of the
applicant’s claim and filed in pursuance of an application for a patent in India, being a
claim of which the priority date is earlier than that of the applicant’s claim.
(d) That the invention so far as claimed in any claim of the complete specification was
publicly known or publicly used in India before the priority date of that claim.
Explanation:- For the purposes of this clause, an invention relating to a process for
which a patent is claimed shall be deemed to have been publicly known or publicly
used in India before the priority date of the claim if a product made by the process had
already been imported into India before that date except where such importation has
been for the purpose of reasonable trial or experiment only;
(e) That the invention so far as claimed in any claim for the complete specification is
obvious and clearly does not involve any inventive step, having regard to the matter
published as mentioned in clause (b) or having regard to what was used in India before
the priority date of the applicant’s claim.
(f) That the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;
(g) That the complete specification does not sufficiently or clearly describe the invention or
the method by which it is to be performed;
(h) That the applicant has failed to disclose to the Controller the information required by
section 8 or has furnished the information which in any material particular was false to
his knowledge;
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23
The Patents Act, 1970
(b)
(c)
that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim(i) in any specification filed in pursuance of an application for a
patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document;
Provided that the ground specified in sub-clause (ii) shall not
be available where such publication does not constitute an
anticipation of the invention by virtue of sub-section (2) or subSection (3) of Section 29;
that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification published
on or after the priority date of the applicant’s claim and filed in
pursuance of an application for a patent in India, being a claim of
which the priority date is earlier than that of the applicant’s claim.
S. 13
S. 29(3),(2)
S. 13(1)b
(i)
That in the case of a convention application, the application was not made within twelve
months from the date of the first application for protection for the invention made in a
convention country by the applicant or a person from whom he derives title, but on no
other ground;
(j) That the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
(k) That the invention so far as claimed in any claim of the complete specification is
anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere;
(2) Where any such notice of opposition is duly given, the Controller shall notify the
applicant and may, if so desired, give to the applicant and the opponent an opportunity
to be heard before deciding the case.
(3) The grant of a patent shall not be refused on the ground stated in clause (c) of subsection (1), if no patent has been granted in pursuance of the application mentioned
in the clause; and for the purpose of inquiry under clause (d) or clause (e) of that subsection, no account shall be taken of any personal document or secret trial or secret use.
26. In cases of “obtaining” Controller may treat application as application of opponent.–
(1) Where in any opposition proceedings under this Act–
(a) The Controller finds that 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 subsection (1) of section 25 and refuses the application on the ground, he may, on request by
such opponent made in the prescribed manner, direct that the application shall proceed
in the name of the opponent as if the application and the specification had been filed by
the opponent on the date on which they were actually filed;
(b) The Controller finds that a part of an invention described in the complete specification
was so obtained from the opponent and passes an order requiring that the specification
be amended by the exclusion of that part of the invention, the opponent may, subject to
the provisions of sub-section (2), file an application in accordance with the provisions
of this Act accompanied by a complete specification for the grant of a patent for the
invention so excluded from the applicant’s specification, and the Controller may treat
such application and specification as having been filed, for the purpose of this Act
relating to the priority dates of claims of the complete specification, on the date on
which the corresponding document was or was deemed to have been filed by the earlier
applicant, but for all other purposes the application of the opponent shall be proceeded
with as an application for a patent under this Act.
(2) When an opponent has, before the date of the order of the Controller requiring the
amendment of a complete specification referred to in clause (b) of sub-section (1), filed
an application for a patent for an invention which includes the whole or a part of the
invention held to have been obtained from him and such application is pending, the
Controller may treat such application and specification insofar as they relate to the
invention held to have been obtained from him, as having been filed, for the purposes
of this Act relating to the priority dates of claims of the complete specification, on the
date on which the corresponding document was or was deemed to have been filed by
the earlier applicant, but for all other purpose the application of the opponent shall be
proceeded with as an application for a patent under this Act.”
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The Patents Act, 1970
(d)
That the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before
the priority date of that claim.
Explanation:— For the purposes of this clause, an invention
relating to a process for which a patent is claimed shall be deemed
to have been publicly known or publicly used in India before the
priority date of the claim if a product made by that process had
already been imported into India before that date except where
such importation has been for the purpose of reasonable trial or
experiment only;
(e)
that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive
step, having regard to the matter published as mentioned in
clause (b) or having regard to what was used in India before the
priority date of the applicant’s claim;
(f)
that the subject of any claim of the complete specification is not
an invention within the meaning of this Act, or is not patentable
under this Act;
(g)
that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h)
that the applicant has failed to disclose to the Controller the
information required by Section 8 or has furnished the information
which in any material particular was false to his knowledge;
(i)
that in the case of convention application, the application was not
made within twelve months from the date of the first application
for protection for the invention made in a convention country by
the applicant or a person from whom he derives title;
(j)
that the complete specification does not disclose or wrongly
mentions the source or geographical origin of biological material
used for the invention;
(k)
that the invention so far as claimed in any claim of the complete
specification is anticipated having regard to the knowledge, oral
or otherwise, available within any local or indigenous community
in India or elsewhere,
but on no other ground and the Controller shall, if requested by such
person for being heard, hear him and dispose of such representation
in such manner and within such period as may be prescribed.
(2) At any time after the grant of patent but before the expiry of a period
of one year from the date of publication of grant of patent, any person
interested may give notice of opposition to the Controller in the prescribed
manner on any of the following grounds, namely;(a)
that the patentee or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or
from a person under or through whom he claims;
(b)
that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim(i) in any specification filed in pursuance of an application for a
patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
S. 64(1)f
S. 3, 4, 10(4)a,
10(4)b
S. 8; F. 3
S. 26(1)(a),;
R.55A, 56-63; F. 7
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S. 13
25
The Patents Act, 1970
Provided that the ground specified in sub-clause (ii) shall not
be available where such publication does not constitute an
anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29;
(c)
that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification
published on or after the priority date of the claim of the patentee
and filed in pursuance of an application for a patent in India,
being a claim of which the priority date is earlier than that of the
claim of the patentee;
(d)
that the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before
the priority date of that claim.
Explanation.—For the purposes of this clause, an invention
relating to a process for which a patent is granted shall be deemed
to have been publicly known or publicly used in India before the
priority date of the claim if a product made by that process had
already been imported into India before that date except where
such importation has been for the purpose of reasonable trial or
experiment only;
(e)
that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive
step, having regard to the matter published as mentioned in
clause (b) or having regard to what was used in India before the
priority date of the claim;
(f)
that the subject of any claim of the complete specification is not
an invention within the meaning of this Act, or is not patentable
under this Act;
(g)
that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h)
that the patentee has failed to disclose to the Controller
the information required by section 8 or has furnished the
information which in any material particular was false to his
knowledge;
(i)
that in the case of a patent granted on convention application, the
application for patent was not made within twelve months from
the date of the first application for protection for the invention
made in a convention country or in India by the patentee or a
person from whom he derives title;
(j)
that the complete specification does not disclose or wrongly
mentions the source and geographical origin of biological material
used for the invention;
(k)
that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral
or otherwise, available within any local or indigenous community
in India or elsewhere,
but on no other ground.
(3) (a) Where any such notice of opposition is duly given under sub-section (2),
the Controller shall notify the patentee.
S. 8
S. 2(1)(la);
R. 56(4)
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26
The Patents Act, 1970
(b)
On receipt of such notice of opposition, the Controller shall, by order
in writing, constitute a Board to be known as the Opposition Board
consisting of such officers as he may determine and refer such notice
of opposition along with the documents to that Board for examination
and submission of its recommendations to the Controller.
(c)
Every Opposition Board constituted under clause (b) shall conduct the
examination in accordance with such procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition Board and after giving
the patentee and the opponent an opportunity of being heard, the Controller
shall order either to maintain or to amend or to revoke the patent.
(5) While passing an order under sub-section (4) in respect of the ground
mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall
not take into account any personal document or secret trial or secret use.
(6) In case the Controller issues an order under sub-section (4) that the
patent shall be maintained subject to amendment of the specification or
any other document, the patent shall stand amended accordingly.
R. 56
S. 15
CASE LAW
An order cannot be passed without giving hearing to objector on amended
claim or application in a pre-grant proceeding. Neon Laboratories Private
Ltd v. Troikaa Pharma Ltd, 2011 (1) AIR Bom R 557: 2011(2) Bom CR
54 (DB).
The moment, the pre-grant opposition is rejected, the Controller is
empowered to pass the order on the grant of patent and there is no question
of stating the grant is conditional. Dr. Snehlata C Gupte v. Union of India
& Ors, 189 (2012) DLT 342: 2012 (50) PTC 327 (Del).
The date on which the patent is granted cannot be the date of issuance of
certificate but has to be the date on which orders are passed by the Controller.
Dr. Snehlata C Gupte v. Union of India & Ors, 189 (2012) DLT 342: 2012
(50) PTC 327 (Del).
26.In cases of “obtaining” Controller may treat the patent as the
patent of opponent
(1) Where in any opposition proceeding under this Act the Controller finds
that—
(a)
the invention, so far as claimed 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.
(2) Where an opponent has, before the date of the order of the Controller
requiring the amendment of a complete specification referred to in clause
(b) of sub-section (1), filed an application for a patent for an invention
which included the whole or a part of the invention held to have been
S. 25(2); R. 63A;
F. 12
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27
The Patents Act, 1970
obtained from him and such application is pending, the Controller may
treat such application and specification in so far as they relate to the
invention held to have been obtained from him, as having been filed, for
the purposes of this Act relating to the priority dates of claims of the
complete specification, on the date on which the corresponding document
was or was deemed to have been filed by the patentee in the earlier
application but for all other purposes the application of the opponent shall
be proceeded with as an application for a patent under this Act.
27. [Omitted by the Patents (Amendment) Act, 2005]
28. Mention of inventor as such in patent
80
(1) If the Controller is satisfied, upon a request or claim made in accordance
with the provisions of this section, (a)
that the person in respect of or by whom the request or claim is made
is the inventor of an invention in respect of which application for a
patent has been made, or of a substantial part of that invention; and
(b)
that the application for the patent is a direct consequence of his
being the inventor, the Controller shall, subject to the provisions
of this section, cause him to be mentioned as inventor in any
patent granted in pursuance of the application in the complete
specification and in the register of patents:
Provided that the mention of any person as inventor under this section
shall not confer or derogate from any rights under the patent.
(2) A request that any person shall be mentioned as aforesaid may be made
in the prescribed manner by the applicant for the patent or (where
the person alleged to be the inventor is not the applicant or one of the
applicants) by the applicant and that person.
(3) If any person [other than a person in respect of whom a request in
relation to the application in question has been made under sub-section
(2),] desires to be mentioned as aforesaid, he may make a claim in the
prescribed manner in that behalf.
81
[(4) A request or claim under the foregoing provisions of this section shall be
made before the grant of patent.]
S. 117A(2)
R. 55A, 57-63,
69, 70
R. 66; F. 8
R. 67; F. 8
­80
Prior to its omission, S.27 read as under:- “27. Refusal of patent without opposition.- If at any
time after the acceptance of the complete specifications filed in pursuance of an application
for a patent and before the grant of a patent thereon, it comes to the notice of the Controller
otherwise than in consequence of proceedings in opposition to the grant under section 25,
that the invention, so far as claimed in any claim of the complete specification has been
published before the priority date of the claim(a) In any specification filed in pursuance of an application for a patent made in India and
dated on or after the 1st day of January, 1912;
(b) In any other document in India or elsewhere,
The Controller may refuse to grant the patent unless, within such time as may be prescribed
the complete specification is amended to his satisfaction:
Provided that the Controller shall not refuse to grant the patent on the ground specified in
clause (b) if such publication does not constitute an anticipation of the invention by virtue of
sub-section (2) or sub-section (3) of section 29.”
­ 1
8
Substituted by The Patents (Amendment) Act, 2005, S. 25 (a), for Sub-S. (4) (w.e.f. 01.01.2005).
Prior to their substitution, sub-S (4) read as under:- “(4) A request or claim under the foregoing
provisions of this section shall be made not later than two months after the date of advertisement
of acceptance of the complete specification or within such further period (not exceeding one
month) as the Controller may, on an application made to him in that behalf before the expiration
of the said period of two months and subject to the payment of the prescribed fee, allow.”.
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The Patents Act, 1970
82
[(5) [Omitted by the Patents (Amendment) Act, 2005]]
(6) 83[where] a claim is made under sub-section (3), the Controller shall
give notice of the claim to every applicant for the patent (not being the
claimant) and to any other person whom the Controller may consider to
be interested; and before deciding upon any request or claim made under
sub-section (2) or sub-section (3), the Controller shall, if required, hear
the person in respect of or by whom the request or claim is made, and, in
the case of a claim under sub-section (3), any person to whom notice of the
claim has been given as aforesaid.
(7) Where any person has been mentioned as inventor in pursuance of this
section, any other person who alleges that he ought not to have been so
mentioned may at any time apply to the Controller for a certificate to that
effect, and the Controller may, after hearing, if required, any person whom
he may consider to be interested, issue such a certificate, and if he does so,
he shall rectify the specification and the register accordingly.
R. 68; F. 8
CHAPTER VI
ANTICIPATION
29. Anticipation by previous publication
(1) An invention claimed in a complete specification shall not be deemed to
have been anticipated by reason only that the invention was published in
a specification filed in pursuance of an application for a patent made in
India and dated before the 1st day of January, 1912.
(2) Subject as hereinafter provided, an invention claimed in a complete
specification shall not be deemed to have been anticipated by reason only that
the invention was published before the priority date of the relevant claim of
the specification, if the patentee or the applicant for the patent proves (a)
that the matter published was obtained from him, or (where he
is not himself the true and first inventor) from any person from
whom he derives title, and was published without his consent or
the consent of any such person; and
(b)
where the patentee or the applicant for the patent or any person
from whom he derives title learned of the publication before the
date of the application for the patent, or, in the case of a convention
application, before the date of the application for protection in
a convention country, that the application or the application in
the convention country, as the case may be, was made as soon as
reasonably practicable thereafter:
Provided that this sub-section shall not apply if the invention was before
the priority date of the claim commercially worked in India, otherwise
S. 13, 25, 34
­82
Sub-S. (5) omitted by The Patents (Amendment) Act, 2005, S. 25 (b) (w.e.f. 01.01.2005). Prior to
its omission, sub-S (5) read as under:- “(5) No request or claim under the foregoing provisions
of this section shall be entertained if it appears to the Controller that the request or claim is
based upon facts which, if proved in the case of an opposition under the provisions of clause
(a) of sub-section (1) of section 25 by the person in respect of or by whom the request or claim
is made, would have entitled him to relief under that section.”
­ 3
8
Substituted by The Patents (Amendment) Act, 2005, S. 25 (c), for “Subject to the provisions of
sub-section (5), where” (w.e.f. 01.01.2005).
www.lexcampus.in
S. 13, 25
29
The Patents Act, 1970
than for the purpose of reasonable trial, either by the patentee or the
applicant for the patent or any person from whom he derives title or by
any other person with the consent of the patentee or the applicant for the
patent or any person from whom he derives title.
(3) Where a complete specification is filed in pursuance of an application for a
patent made by a person being the true and first inventor or deriving title
from him, an invention claimed in that specification shall not be deemed to
have been anticipated by reason only of any other application for a patent
in respect of the same invention made in contravention of the rights of that
person, or by reason only that after the date of filing of that other application
the invention was used or published, without the consent of that person, by
the applicant in respect of that other application, or by any other person in
consequence of any disclosure of any invention by that applicant.
30. Anticipation by previous communication to Government
An invention claimed in a complete specification shall not be deemed to have
been anticipated by reason only of the communication of the invention to the
Government or to any person authorised by the Government to investigate
the invention or its merits, or of anything done, in consequence of such a
communication, for the purpose of the investigation.
31. Anticipation by public display, etc
An invention claimed in a complete specification shall not be deemed to have
been anticipated by reason only of (a) the display of the invention with the consent of the true and first inventor
or a person deriving title from him at an industrial or other exhibition to
which the provisions of this section have been extended by the Central
Government by notification in the Official Gazette, or the use thereof with
his consent for the purpose of such an exhibition in the place where it is
held; or
(b) the publication of any description of the invention in consequence of the
display or use of the invention at any such exhibition as aforesaid; or
(c) the use of the invention, after it has been displayed or used at any such
exhibition as aforesaid and during the period of the exhibition, by any
person without the consent of the true and first inventor or a person
deriving title from him; or
(d) the description of the invention in a paper read by the true and first
inventor before a learned society or published with his consent in the
transactions of such a society,
if the application for the patent is made by the true and first inventor or a
person deriving title from him 84[not later than twelve months] after the
opening of the exhibition or the reading or publication of the paper, as the
case may be.
S. 34
S. 34
S. 25
32. Anticipation by public working
An invention claimed in a complete specification shall not be deemed to have
been anticipated by reason only that at any time within one year before the
­84
Substituted by The Patents (Amendment) Act, 2005, S. 26, for “not later than six months”
(w.e.f. 01.01.2005).
www.lexcampus.in
S. 34
30
The Patents Act, 1970
priority date of the relevant claim of the specification, the invention was
publicly worked in India (a)
by the patentee or applicant for the patent or any person from
whom he derives title; or
(b)
by any other person with the consent of the patentee or applicant
for the patent or any person from whom he derives title,
if the working was effected for the purpose of reasonable trial only and if
it was reasonably necessary, having regard to the nature of the invention,
that the working for that purpose should be effected in public.
33.Anticipation by use and publication after provisional
specification
(1) Where a complete specification is filed or proceeded with in pursuance of
an application which was accompanied by a provisional specification or
where a complete specification filed along with an application is treated
by virtue of a direction under sub-section (3) of section 9 as a provisional
specification, then, notwithstanding anything contained in this Act, the
Controller shall not refuse to grant the patent, and the patent shall not
be revoked or invalidated, by reason only that any matter described in
the provisional specification or in the specification treated as aforesaid
as a provisional specification was used in India or published in India or
elsewhere at any time after the date of the filing of that specification.
(2) Where a complete specification is filed in pursuance of a convention
application, then, notwithstanding anything contained in this Act, the
Controller shall not refuse to grant the patent, and the patent shall not
be revoked or invalidated, by reason only that any matter disclosed in
any application for protection in a convention country upon which the
convention application is founded was used in India or published in India
or elsewhere at any time after the date of that application for protection.
S. 25
34. No anticipation if circumstances are only as described in
sections 29, 30, 31 and 32
S. 29-34
Notwithstanding anything contained in this Act, the Controller shall not refuse
85
[***] to grant a patent, and a patent shall not be revoked or invalidated by
reason only of any circumstances which, by virtue of section 29 or section 30
or section 31 or section 32, do not constitute an anticipation of the invention
claimed in the specification.
CHAPTER VII
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS
35. Secrecy directions relating to inventions relevant for defence
purposes
S. 11A(3), 11A(4),
11B(4)(ii), 36-38;
R. 72(2).
(1) Where, in respect of an application made before or after the commencement
of this Act for a patent, it appears to the Controller that the invention
is one of a class notified to him by the Central Government as relevant
­85
The words “to accept complete specifications for a patent or” omitted by The Patents
(Amendment) Act, 2005, S. 27 (w.e.f. 01.01.2005).
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31
The Patents Act, 1970
for defence purposes, or, where otherwise the invention appears to him
to be so relevant, he may give directions for prohibiting or restricting
the publication of information with respect to the invention or the
communication of such information 86[***].
(2) Where the Controller gives any such directions as are referred to in subsection (1), he shall give notice of the application and of the directions to
the Central Government, and the Central Government shall, upon receipt
of such notice, consider whether the publication of the invention would
be prejudicial to the defence of India, and if upon such consideration, it
appears to it that the publication of the invention would not so prejudice,
give notice to the Controller to that effect, who shall thereupon revoke the
directions and notify the applicant accordingly.
(3) Without prejudice to the provisions contained in sub-section (1), where
the Central Government is of opinion that an invention in respect of
which the Controller has not given any directions under sub-section (1), is
relevant for defence purposes, it may at any time before 87[grant of patent]
notify the Controller to that effect, and thereupon the provisions of that
sub-section shall apply as if the invention were one of the class notified by
the Central Government, and accordingly the Controller shall give notice
to the Central Government of the directions issued by him.
S. 118
36. Secrecy directions to be periodically reviewed
[(1) The question whether an invention in respect of which directions have
been given under section 35 continues to be relevant for defence purposes
shall be reconsidered by the Central Government at intervals of 89[six
months] or on a request made by the applicant which is found to be
reasonable by the Controller and if, on such reconsideration it appears to
the Central Government that the publication of the invention would no
longer be prejudicial to the defence of India or in case of an application
filed by a foreign applicant it is found that the invention is published
outside India, it shall forthwith give notice to the Controller to revoke
the direction and the Controller shall thereupon revoke the directions
previously given by him.]
(2) The result of every re-consideration under sub-section (1), shall be
communicated to the applicant within such time and in such manner as
may be prescribed.
88
S. 35; R. 72
­86
The words “to any person or class of persons specified in the directions” omitted by The
Patents (Amendment) Act, 2002, S. 19 (w.e.f. 20.05.2003).
­87
Substituted by The Patents (Amendment) Act, 2005, S. 28, for “acceptance of complete
specifications” (w.e.f. 01.01.2005).
­ 8
8
Substituted by The Patents (Amendment) Act, 2002, S. 20, for sub-S. (1) (w.e.f. 20.05.2003).
Prior to its substitution, sub-S. (1) read as under:- “(1) The question whether an invention
in respect of which directions have been given under section 35 continues to be relevant for
defence purposes, shall be reconsidered by the Central Government within nine months from
the date of issue of such directions and thereafter at intervals not exceeding twelve months,
and if, on such reconsideration it appears to the Central Government that the publication of
the invention would no longer be prejudicial to the defence of India, it shall forthwith give
notice to the Controller accordingly and the Controller shall thereupon revoke the directions
previously given by him.”
­ 9
8
Substituted by The Patents (Amendment) Act, 2005, S. 29, for “twelve months” (w.e.f.
01.01.2005).
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32
The Patents Act, 1970
37. Consequences of secrecy directions
(1) So long as any directions under section 35 are in force in respect of an
application (a)
the Controller shall not pass an order refusing 90[to grant] the
same; and
(b)
notwithstanding anything contained in this Act, no appeal shall
lie from any order of the Controller passed in respect thereof:
91
[Provided that the application may, subject to the directions, proceed up
to the stage of grant of the patent, but the application and the specification
found to be in order for grant of the patent shall not be published, and no
patent shall be granted in pursuance of that application.]
(2) Where a complete specification filed in pursuance of an application for
a patent for an invention in respect of which directions have been given
under section 35 92[is found to be in order for grant of the patent] during
the continuance in force of the directions, then (a)
if, during the continuance in force of the directions, any use of
the invention is made by or on behalf of, or to the order of the
Government, the provisions of sections 100, 101 and 103 shall
apply in relation to that use as if the patent had been granted for
the invention; and
(b)
if it appears to the Central Government that the applicant for the
patent has suffered hardship by reason of the continuance in force
of the directions, the Central Government may make to him such
payment (if any) by way of solatium as appears to the Central
Government to be reasonable having regard to the novelty and
utility of the invention and the purpose for which it is designed,
and to any other relevant circumstances.
(3) Where a patent is granted in pursuance of an application in respect of
which directions have been given under section 35, no renewal fee shall
be payable in respect of any period during which those directions were in
force.
S. 35
S. 100, 101, 103
38. Revocation of secrecy directions and extension of time
When any direction given under section 35 is revoked by the Controller, then,
notwithstanding any provision of this Act specifying the time within which
any step should be taken or any act done in connection with an application for
the patent, the Controller may, subject to such conditions, if any, as he thinks
fit to impose, extend the time for doing anything required or authorised to be
done by or under this Act in connection with the application, whether or not
that time has previously expired.
S. 35; R. 72(2)
­90
Substituted by The Patents (Amendment) Act, 2005, S. 30 (a) (i), for “to accept” (w.e.f.
01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 30 (a) (ii), for the proviso (w.e.f.
01.01.2005). Prior to its substitution, the proviso read as under:- “Provided that the
application may, subject to the directions, proceed up to the stage of the acceptance of the
complete specifications, but the acceptance shall not be advertised nor the specification
published, and no patent shall be granted in pursuance of the application.”
­ 2
9
Substituted by The Patents (Amendment) Act, 2005, S. 30 (b), for “is accepted” (w.e.f.
01.01.2005).
­91
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33
The Patents Act, 1970
[39. R
esidents not to apply for patents outside India without prior
permission
93
(1) No person resident in India shall, except under the authority of a written
permit sought in the manner prescribed and granted by or on behalf of the
Controller, make or cause to be made any application outside India for the
grant of a patent for an invention unless–
(a)
an application for a patent for the same invention has been made
in India, not less than six weeks before the application outside
India; and
(b)
either no direction has been given under sub-section (1) of section
35 in relation to the application in India, or all such directions
have been revoked.
(2) The Controller shall dispose of every such application within such period
as may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic
energy, the Controller shall not grant permit without the prior consent of the
Central Government.
(3) This section shall not apply in relation to an invention for which an
application for protection has first been filed in a country outside India by
a person resident outside India.]
S. 35, 40, 64, 118,
159(2)(va); R. 71;
F. 25
40. Liability for contravention of section 35 or section 39
Without prejudice to the provisions contained in Chapter XX, if in respect of
an application for a patent any person contravenes any direction as to secrecy
given by the Controller under section 35 94[or makes or causes to be made
an application for grant of a patent outside India in contravention of section
39], the application for patent under this Act shall be deemed to have been
abandoned and the patent granted, if any, shall be liable to be revoked under
section 64.
S. 35, 39, 64
41. Finality of orders of Controller and Central Government
All orders of the Controller giving directions as to secrecy as well as all orders
of the Central Government under this Chapter shall be final and shall not be
called in question in any court on any ground whatsoever.
­93
Substituted by The Patents (Amendment) Act, 2005, S. 31, for S.39 (w.e.f. 01.01.2005). Prior to
its substitution, S. 39 read as under:- “*[39. Prohibition to apply, under certain circumstances,
for patents relevant for defence purposes, etc. –
(1) No person shall, except under the authority of a written permit granted by or on behalf
of the Controller, make or cause to be made any application outside India for the grant
of a patent for an invention relevant for defence purposes or related to atomic energy
unless –
(a) An application for a patent for the same invention has been made in India, not less than
six weeks before the application outside India; and
(b) Either no direction has been given under sub-section (1) of section 35 in relation to the
application in India, or all such directions have been revoked.
(2) The Controller shall not grant written permission to any person to make any application
outside India without the prior consent of the Central Government.
(3) This section shall not apply in relation to an invention for which an application
for protection has first been filed in a country outside India by a person resident
outside India.]” – *Inserted by The Patents (Amendment) Act, 2002, S. 21 (w.e.f.
20.05.2003).
­ 4
9
Inserted by The Patents (Amendment) Act, 2002, S. 22 (w.e.f. 20.05.2003).
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34
The Patents Act, 1970
42. Savings respecting disclosure of Government
Nothing in this Act shall be held to prevent the disclosure by the Controller of
information concerning an application for a patent or a specification filed in
pursuance thereof to the Central Government for the purpose of the application
or specification being examined for considering whether an order under this
Chapter should be made or whether an order so made should be revoked.
CHAPTER VIII
[GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY]
95
S. 143
[43. Grant of patents
96
(1) Where an application for a patent has been found to be in order for grant
of the patent and either–
(a)
the application has not been refused by the Controller by virtue of
any power vested in him by this Act; or
(b)
the application has not been found to be in contravention of any of
­95
Substituted by The Patents (Amendment) Act, 2005, S. 32, for “GRANT AND SEALING OF
PATENTS AND RIGHTS CONFERRED THEREBY” (w.e.f. 01.01.2005).
­ 6
9
Substituted by The Patents (Amendment) Ac1t, 2005, S. 33, for s. 43 (w.e.f. 01.01.2005).
Prior to its substitution, S. 43 read as under:-“43. Grant and sealing of patent. – (1) Where
a complete specification in pursuance of an application for a patent has been accepted and
either –
(a) The application has not been opposed under section 25 and the time for the filing of the
opposition has expired; or
(b) The application has been opposed and the opposition has been finally decided in favour
of the applicant; or
(c) The application has not been refused by the Controller by virtue of any power vested in
him by this Act, *[or]
**[(d) The application has not been found to be in contravention of any of the provisions of
the Act]
the patent shall, on request made by the applicant in the prescribed form, be granted
to the applicant or, in the case of a joint application to the applicants jointly, and the
Controller shall cause the patent to be sealed with the seal of the patent office and the
date on which the patent is sealed shall be entered in the register.
(2) Subject to the provisions of sub-section (1) and of the provisions of this Act with respect to
patents of addition, a request under this section for the sealing of a patent shall be made
not later than the expiration of a period of six months from the date of advertisement of
the acceptance of the complete specifications:
Provided that –
(a) Where at the expiration of the said six months any proceeding in relation to the application
for the patent is pending before the Controller or the Appellate Board, the request may be
made within the prescribed period after the final determination of that proceeding;
(b) Where the applicant or one of the applicants has died before the expiration of the time
within which under the provisions of this sub-section the request could otherwise be
made, the said request may be made at any time within twelve months, after the date of
the death or at such later time as the Controller may allow.
(3) The period within which under sub-section (2) a request for the sealing of a patent may
be made, may, from time to time, be extended by the Controller to such longer period as
may be specified in an application made to him in that behalf, if the application is made
and the prescribed fee paid within that longer period:
Provided that the first mentioned period shall not be extended under this sub-section by
more than three months in the aggregate.
Explanation.– For the purposes of this section a proceeding shall be deemed to be pending so
long as the time for any appeal therein (apart from any future extension of that time)
has not expired, and a proceeding shall be deemed to be finally determined when the
time for any appeal therein (apart from any such extension) has expired without the
appeal being brought.” – *Inserted by The Patents (Amendment) Act, 2002, S. 23 (w.e.f.
20.05.2003). **Substituted, ibid.
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35
The Patents Act, 1970
the provisions of this Act,
the patent shall be granted as expeditiously as possible to the applicant
or, in the case of a joint application, to the applicants jointly, with the seal
of the patent office and the date on which the patent is granted shall be
entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the
patent has been granted and thereupon the application, specification and
other documents related thereto shall be open for public inspection.]
R. 74, 74A
CASE LAW
The grant and sealing of the patent, or the decision rendered by the Controller
in the case of opposition, does not guarantee the validity of the patent as it
is expressly provided in section 13(4) of the Patents Act, 1970. Biswanath
Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC
1444 (1448): 1979 All LJ 290: PTC (Suppl) (1) 731 (SC)
44. Amendment of patent granted to deceased applicant
Where at any time after a patent has been 97[granted] in pursuance of an
application under this Act, the Controller is satisfied that the person to whom
the patent was granted had died, or, in the case of a body corporate, had ceased
to exist, before the patent was granted, the Controller may amend the patent
by substituting for the name of that person the name of the person to whom
the patent ought to have been granted, and the patent shall have effect, and
shall be deemed always to have had effect, accordingly.
S. 78; R. 75
45. Date of patent
[(1) Subject to the other provisions contained in this Act, every patent shall
be dated as of the date on which the application for patent was filed.]
(2) The date of every patent shall be entered in the register.
(3) Notwithstanding anything contained in this section, no suit or other
proceeding shall be commenced or prosecuted in respect of an infringement
committed before 99[the date of publication of the application.]
98
S. 13(1)
S. 88(1)
46. Form, extent and effect of patent
(1) Every patent shall be in the prescribed form and shall have effect
throughout India.
(2) A patent shall be granted for one invention only:
Provided that it shall not be competent for any person in a suit or other
proceeding to take any objection to a patent on the ground that it has been
granted for more than one invention.
­97
­98
Substituted by The Patents (Amendment) Act, 2005, S. 34, for “sealed” (w.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2002, S. 24, for sub-S. (1) (w.e.f. 20.05.2003).
Prior to its substitution, sub-S. (1) read as under:- “(1) Subject to the other provisions contained
in this Act, every patent shall be dated as of the date on which the complete specification was
filed:
Provided that a patent which is granted in pursuance of an application to which any direction
issued under section 78-C of the Indian Patents and Designs Act, 1911 (2 of 1911), applied
immediately before the commencement of this Act, shall be dated as of the date of the filing
of the complete specification or the date of such commencement whichever is later.”
­ 9
9
Substituted by The Patents (Amendment) Act, 2005, S. 34, for “the date of advertisement of
the acceptance of the complete specifications” (w.e.f. 01.01.2005).
www.lexcampus.in
R. 74
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The Patents Act, 1970
47. Grant of patents subject to certain conditions
The grant of a patent under this Act shall be subject to the condition that (1) any machine, apparatus or other article in respect of which the patent
is granted or any article made by using a process in respect of which
the patent is granted, may be imported or made by or on behalf of the
Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on
behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is
granted or any article made by the use of the process in respect of which
the patent is granted, may be made or used, and any process in respect of
which the patent is granted or may be used, by any person, for the purpose
merely of experiment or research including the imparting of instructions
to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine
or drug may be imported by the Government for the purpose merely
of its own use or for distribution in any dispensary, hospital or other
medical institution maintained by or on behalf of the Government or
any other dispensary, hospital or other medical institution which the
Central Government may, having regard to the public service that such
dispensary, hospital or medical institution renders, specify in this behalf
by notification in the Official Gazette.
S. 48, 99(3),
107(2)
CASE LAW
The effect of grant of patent is quid pro quo. Quid is the knowledge disclosed
to the public through the invention and quo is the monopoly granted for the
term of the patent. Raj Prakash v. Mangat Ram, AIR 1978 Del. 1 (DB).
100
[48. Rights of patentees
Subject to the other provisions contained in this Act and the conditions
specified in section 47, a patent granted under this Act shall confer upon the
patentee(a)
where the subject matter of the patent is a product, the exclusive
right to prevent third parties, who do not have his consent, from
the act of making, using, offering for sale, selling or importing for
those purposes that product in India;
(b)
where the subject matter of the patent is a process, the exclusive
right to prevent third parties, who do not have his consent, from
the act of using that process, and from the act of using, offering for
sale, selling or importing for those purposes the product obtained
directly by that process in India.
­100
S. 47, 50)
Substituted by The Patents (Amendment) Act, 2002, S. 24, for sub-S. (1) (w.e.f. 20.05.2003).
Prior to its substitution, sub-S. (1) read as under:- “(1) Subject to the other provisions contained
in this Act, every patent shall be dated as of the date on which the complete specification was
filed:
Provided that a patent which is granted in pursuance of an application to which any direction
issued under section 78-C of the Indian Patents and Designs Act, 1911 (2 of 1911), applied
immediately before the commencement of this Act, shall be dated as of the date of the filing
of the complete specification or the date of such commencement whichever is later.”
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The Patents Act, 1970
[***]
101
CASE LAW
In a suit for permanent injunction restraining the defendants from infringing
any manner, the patentee had to make prima facie case about the existence
of his monopoly right and its infringement by the defendant. Surendra Lal
Mahendra v. Jain Glazers & Ors., ILR (1981) 1 Delhi 257 (263,265):
1981(1) PTC112 (Del).
The statutory and monopoly rights cannot be reduced to a nullity as by
virtue of section 48 of the Act till the term of validity of the suit patents,
the plaintiff is entitled to prevent any third party from infringing his patent
rights. Novartis AG v. Cipla Ltd., (2015) 216 DLT 689.
A Patentee has cause of action to restrain the infringement of patent only
during the continuance of the patent. Indian Hume Pipe Co. Ltd v. Vendra
Venkanna, AIR 1963 AP 58 (61) (DB).
49.Patents rights not infringed when used on foreign vessels, etc.,
temporarily or accidentally in India
(1) Where a vessel or aircraft registered in a foreign country or a land vehicle
owned by a person ordinarily resident in such country comes into India
(including the territorial waters thereof) temporarily or accidentally only,
the rights conferred by a patent for an invention shall not be deemed to
be infringed by the use of the invention (a)
in the body of the vessel or in the machinery, tackle, apparatus or
other accessories thereof, so far as the invention is used on board
the vessel and for its actual needs only; or
(b)
in the construction or working of the aircraft or land vehicle or of
the accessories thereof, as the case may be.
(2) This section shall not extend to vessels, 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, aircrafts or land vehicles owned by persons ordinarily resident
in India while in the ports or within the territorial waters of that foreign
country or otherwise within the jurisdiction of its courts.
50. Rights of co-owners of patents
(1) Where a patent is granted to two or more persons, each of those persons
shall, unless an agreement to the contrary is in force, be entitled to an
equal undivided share in the patent.
(2) Subject to the provisions contained in this section and in section 51, where
two or more persons are registered as grantee or proprietor of a patent,
then, unless an agreement to the contrary is in force, each of those persons
shall be entitled, by himself or his agents, to 102[the rights conferred by
section 48] for his own benefit without accounting to the other person or
S. 48, 51
­101
Proviso omitted by The Patents (Amendment) Act, 2005, S. 36 (w.e.f. 01.01.2005). Prior to its
omission, the proviso read as under:- “Provided that the product obtained is not a product in
respect of which no patent shall be granted under this Act.”
­ 02
1
Substituted by The Patents (Amendment) Act, 2002, S. 26, for “make, use, exercise and sell
the patented invention.” (w.e.f. 20.05.2003).
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The Patents Act, 1970
persons.
(3) Subject to the provisions contained in this section and in section 51 and
to any agreement for the time being in force, where two or more persons
are registered as grantee or proprietor of a patent, then, a licence under
the patent shall not be granted and a share in the patent shall not be
assigned by one of such persons except with the consent of the other
person or persons.
(4) Where a patented article is sold by one of two or more persons registered as
grantee or proprietor of a patent, the purchaser and any person claiming
through him shall be entitled to deal with the article in the same manner
as if the article had been sold by a sole patentee.
(5) Subject to the provisions contained in this section, the rules of law applicable
to the ownership and devolution of movable property generally shall apply
in relation to patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the
representatives of a deceased person or their rights or obligations as such.
(6) Nothing in this section shall affect the rights of the assignees of a partial
interest in a patent created before the commencement of this Act.
S. 51
51. Power of Controller to give directions to co-owners
(1) Where two or more persons are registered as grantee or proprietor of a
patent, the Controller may, upon application made to him in the prescribed
manner by any of those persons, give such directions in accordance with
the application as to the sale or lease of the patent or any interest therein,
the grant of licence under the patent, or the exercise of any right under
section 50 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of a patent fails to execute
any instrument or to do any other thing required for the carrying out of
any direction given under this section within fourteen days after being
requested in writing so to do by any of the other persons so registered, the
Controller may, upon application made to him in the prescribed manner
by any such other person, give directions empowering any person to
execute that instrument or to do that thing in the name and on behalf of
the person in default.
(3) Before giving any directions in pursuance of an application under this
section, the Controller shall give an opportunity to be heard (a)
in the case of an application under sub-section (1), to the other
person or persons registered as grantee or proprietor of the patent;
(b)
in the case of an application under sub-section (2), to the person in
default.
(4) No direction shall be given under this section so as to affect the mutual
rights or obligations of trustees or of the legal representatives of a deceased
person or of their rights or obligations as such, or which is inconsistent
with the terms of any agreement between persons registered as grantee
or proprietor of the patent.
S. 50, 117A(2);
R. 55A, 57-63, 76,
78; F. 11
R. 55A, 57-63, 77,
78; F. 11
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The Patents Act, 1970
52.Grant of patent to true and first inventor where it has been
obtained by another in fraud of him
(1)
[Where the patent has been revoked under section 64] on the ground
that the patent was obtained wrongfully and in contravention of the rights
of the petitioner or any person under or through whom he claims, or, where
in a petition for revocation, the 104[Court], instead of revoking the patent,
directs the complete specification to be amended by the exclusion of a
claim or claims in consequence of a finding that the invention covered by
such claim or claims had been obtained from the petitioner, the 105[Court]
may, by order passed in the same proceeding, permit the grant to the
petitioner of the whole or such part of the invention which the 106[court]
finds has been wrongfully obtained by the patentee, in lieu of the patent
so revoked or is excluded by amendment.
(2) Where any such order is passed, the Controller shall, on request by the
petitioner made in the prescribed manner grant to him (i)
in cases where the 107[Court] permits the whole of the patent to be
granted, a new patent bearing the same date and number as the
patent revoked;
(ii)
in cases where the 108[Court] permits a part only of the patent
to be granted, a new patent for such part bearing the same date
as the patent revoked and numbered in such manner as may be
prescribed:
Provided that the Controller may, as a condition of such grant, require the
petitioner to file a new and complete specification to the satisfaction of the
Controller describing and claiming that part of the invention for which
the patent is to be granted.
(3) No suit shall be brought for any infringement of a patent granted under this
section committed before the actual date on which such patent was granted.
103
S. 6(a), (b), 64
R. 79; F. 12
53. Term of patent
109
[(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
­103
Substituted by The Patents (Amendment) Act, 2005, S. 37 (a) (i), for “Where a patent has been
revoked.”
The words "Appellate Board or" Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).”
The words "Appellate Board or" Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).”
The words "Appellate Board or" Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).”
The words "Appellate Board or" Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).”
The words "Appellate Board or" Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).”
Substituted by The Patents (Amendment) Act, 2002, S. 27, for sub-S. (1) (w.e.f. 20.05.2003).
Prior to its substitution, sub-S. (1) read as under:- “(1) Subject to the provisions of this Act,
the term of every patent granted under this Act shall –
(a) In respect of an invention claiming the method or process of manufacture of a substance,
where the substance is intended for use, or is capable of being used, as food or as a
medicine or drug, be five years from the date of sealing of the patent, or seven years from
the date of the patent whichever period is shorter; and
(b) In respect of any other invention, be fourteen years from the date of the patent.”
­104
­105
­106
­107
­108
­109
S. 7(1A), 60.
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The Patents Act, 1970
effect, on the date of such commencement, under this Act, shall be twenty
years from the date of filing of the application for the patent.]
110
[Explanation.–For the purposes of this sub-section, the term of patent
in case of International applications filed under the Patent Cooperation
Treaty designating India, shall be twenty years from the international
filing date accorded under the Patent Cooperation Treaty.]
(2) A patent shall cease to have effect notwithstanding anything therein or
in this Act on the expiration of the period prescribed for the payment of
any renewal fee, if that fee is not paid within the prescribed period 111[or
within such extended period as may be prescribed.]
(3) 112[Omitted by the Patents (Amendment) Act, 2005.]
(4) 113[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.]
R. 80; F. 4
CASE LAW
An order of delivery for destruction is not intended as a punishment to the
infringer, rather it is made with a view to assist the plaintiff and to assure
the order of injunction is effective and to prevent the defendant from the
temptation of carrying on further breach. Therefore, upon the lapse of
patent, an order of injunction cannot be continued. C. Siddeswaran v. R.
Shanmugham Pillai, (1977) 2 MLJ 242.
Court can ask the patentee to make complete disclosure about the profits
earned by the inventor or his assignees in his country and all countries where
the invention was registered or exploited during the term of the patent. If the
court believes that there has not been a full or bonafide disclosure, then the
court may summarily reject the application. The Indian Casablancas High
Draft Company v. The Millowners Association, AIR 1935 Bom 195 (196).
CHAPTER IX
PATENTS OF ADDITION
54. Patents of addition
(1) Subject to the provisions contained in this section, where an application is
made for a patent in respect of any improvement in or modification of an
invention described or disclosed in the complete specification filed therefor
(in this Act referred to as the “main invention”) and the applicant also
applies or has applied for a patent for that invention or is the patentee in
S. 2(1)(q),
117A(2), 138(4);
R. 13(3); F. 1
­110
­111
Inserted by The Patents (Amendment) Act, 2005, S. 38 (a) (w.e.f. 01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 38 (b), for “or within that period as
extended under this section” (w.e.f. 01.01.2005).
­112
Sub-S. (3) omitted by The Patents (Amendment) Act, 2005, S. 38 (c), (w.e.f. 01.01.2005). Prior
to its omission sub-S (3) read as under:- “(3) The period prescribed for the payment of any
renewal fee shall be extended to such period, not being more than six months longer than the
prescribed period, as may be specified in a request made to the Controller if the request is
made and the renewal fee and the prescribed additional fee paid before the expiration of the
period so specified.”
­ 13
1
Inserted by the The Patents (Amendment) Act, 2002, S. 27 (w.e.f. 20.05.2003).
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The Patents Act, 1970
respect thereof, the Controller may, if the applicant so requests, grant the
patent for the improvement or modification as a patent of addition.
(2) Subject to the provisions contained in this section, where an invention, being
an improvement in or modification of another invention, is the subject of an
independent patent and the patentee in respect of that patent is also the
patentee in respect of the patent for the main invention, the Controller may,
if the patentee so requests, by order, revoke the patent for the improvement
or modification and grant to the patentee a patent of addition in respect
thereof, bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless the date of
filing of the 114[application] was the same as or later than the date of filing
of the 115[application] in respect of the main invention.
(4) 116[A patent of addition shall not be granted before grant of the patent for
the main invention.]
55. Term of patents of addition
(1) A patent of addition shall be granted for a term equal to that of the patent
for the main invention, or so much thereof as has not expired, and shall
remain in force during that term or until the previous cesser of the patent
for the main invention and no longer:
Provided that if the patent for the main invention is revoked under this
Act, the court, or, as the case may be, the Controller, on request made to
him by the patentee in the prescribed manner, may order that the patent
of addition shall become an independent patent for the remainder of the
term for the patent for the main invention and thereupon the patent shall
continue in force as an independent patent accordingly.
(2) No renewal fee shall be payable in respect of a patent of addition, but, if
any such patent becomes an independent patent under sub-section (1),
the same fee shall thereafter be payable, upon the same dates, as if the
patent had been originally granted as an independent patent.
56. Validity of patents of addition
(1) The grant of a patent of addition shall not be refused, and a patent
granted as a patent of addition shall not be revoked or invalidated, on the
ground only that the invention claimed in the complete specification does
not involve any inventive step having regard to any publication or use of (a)
the main invention described in the complete specification relating
thereto; or
(b)
any improvement in or modification of the main invention
described in the complete specification of a patent of addition to
­114
Substituted by The Patents (Amendment) Act, 2005, S. 39 (a), for “complete specifications”
(w.e.f. 01.01.2005).
­115
Substituted by The Patents (Amendment) Act, 2005, S. 39 (a), for “complete specifications”
(w.e.f. 01.01.2005).
­ 16
1
Substituted by The Patents (Amendment) Act, 2005, S. 39 (b), for sub-S. (4) (w.e.f. 01.01.2005).
Prior to its substitution, sub-S. (4) read as under:- “(4) A patent of addition shall not be sealed
before the sealing of the patent for the main invention; and if the period within which, but
for the provisions of this sub-section, a request for the sealing of a patent of addition could
be made under section 43 expires before the period within which a request for the sealing of
the patent for the main invention may be so made, the request for the sealing of the patent of
addition may be made at any time within the last-mentioned period.”
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The Patents Act, 1970
the patent for the main invention or of an application for such a
patent of addition,
and the validity of a patent of addition shall not be questioned on
the ground that the invention ought to have been the subject of an
independent patent.
(2) For the removal of doubts it is hereby declared that in determining the
novelty of the invention claimed in the complete specification filed in
pursuance of an application for a patent of addition regard shall be
had also to the complete specification in which the main invention is
described.
CHAPTER X
AMENDMENT OF APPLICATIONS AND SPECIFICATIONS
57. Amendment of application and specification or any document
related thereto before Controller
(1) Subject to the provisions of section 59, the Controller may, upon application
made under this section in the prescribed manner by an applicant for
a patent or by a patentee, allow the application for the patent or the
complete specification 117[or any document related thereto] to be amended
subject to such conditions, if any, as the Controller thinks fit:
Provided that the Controller shall not pass any order allowing or refusing
an application to amend an application for a patent or a specification
118
[or any document related thereto] under this section while any suit
before a court for the infringement of the patent or any proceeding before
the High Court for the revocation of the patent is pending, whether the
suit or proceeding commenced before or after the filing of the application
to amend.
(2) Every application for leave to amend an application for a patent 119[or a
complete specification or any document related thereto] under this section
shall state the nature of the proposed amendment, and shall give full
particulars of the reasons for which the application is made.
(3) 120[Any application for leave to amend an application for a patent or a
complete specification or a document related thereto under this section
made after the grant of patent and the nature of the proposed amendment
may be published;]
S. 59, 64(1)(o),
117A(2); R. 14,
57-63, 81-83;
F. 13
R. 81(3); F. 14
­117
­118
­119
Inserted by The Patents (Amendment) Act, 2002, S. 28 (w.e.f. 20.05.2003).
Inserted by The Patents (Amendment) Act, 2002, S. 28 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 28 for “or a specification” (w.e.f.
20.05.2003).
­ 20
1
Substituted by The Patents (Amendment) Act, 2005, S. 40 (a), for sub-S. (3) (w.e.f. 01.01.2005).
Prior to its substitution, sub-S. (3) read as under:- “*[(3) Any application for leave to amend
an application for a patent or a complete specification or a document relating thereto under
this section made after the acceptance of the complete specification and the nature of the
proposed amendment may be advertised in the Official Gazette if the amendment, in the
opinion of the Controller, substantive.]” - * Substituted by The Patents (Amendment) Act,
2002, S. 28 (w.e.f. 20.05.2003)
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The Patents Act, 1970
(4) Where an application is 121[published] under sub-section (3), any person
interested may, within the prescribed period after the 122[publication]
thereof, give notice to the Controller of opposition thereto; and where such
a notice is given within the period aforesaid, the Controller shall notify
the person by whom the application under this section is made and shall
give to that person and to the opponent an opportunity to be heard before
he decides the case.
(5) An amendment under this section of a complete specification may be, or
include, an amendment of the priority date of a claim.
(6) 123[The provisions of this section shall be without prejudice to the right
of an applicant for a patent to amend his specification or any other
document related thereto to comply with the directions of the Controller
issued before the grant of a patent.]
124
[58.Amendment of specification before Appellate Board or High
Court
(1) In any proceeding before the 125[***] High Court for the revocation of a
patent, the High Court, 126[***] may, subject to the provisions contained
in section 59, allow the patentee to amend his complete specification in
such manner and subject to such terms as to costs, advertisement or
otherwise, as the High Court may think fit, and if in any proceedings for
revocation the High Court decides that the patent is invalid, it may allow
the specification to be amended under this section instead of revoking the
patent.
(2) Where an application for an order under this section is made to the High
­121
­122
­123
­124
­125
­126
S. 59, 64(1)(o)
Substituted by The Patents (Amendment) Act, 2005, S. 40 (b) (i), for “advertised” (w.e.f.
01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 40 (b) (ii), for “advertisement” (w.e.f.
01.01.2005).
Substituted by The Patents (Amendment) Act, 2005, S. 40 (c), for sub-S. (6) (w.e.f. 01.01.2005).
Prior to its substitution, sub-S. (6) read as under:- “(6) The provisions of this section shall be
without prejudice to the right of an applicant for a patent to amend his specification *[or any
document relating thereto] to comply with the directions of the Controller issued before the
acceptance of the complete specification *[along with other documents filed by the applicant]
or in the course of proceedings in opposition to the grant of a patent.” - *Inserted by The
Patents (Amendment) Act, 2002, S. 28 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 41 for S. 58. Prior to its substitution,
S. 58 read as under:- “58. Amendment of specification before High Court. –
(1) In any proceeding before the High Court for the revocation of a patent, the High Court
may, subject to the provisions contained in section 59, allow the patentee to amend
his complete specification in such manner and subject to such terms as to costs,
advertisement or otherwise, as the High Court may think fit, and if in any proceedings
for revocation the High Court decides that the patent is invalid, it may allow the
specification to be amended under this section instead of revoking the patent.
(2) Where an application for an order under this section is made to the High Court, the
applicant shall give notice of the application to the Controller, and the Controller shall
be entitled to appear and be heard, and shall appear if so directed by the High Court.
(3) Copies of all orders of the High Court allowing the patentee to amend the specification
shall be transmitted by the High Court to the Controller who shall on receipt thereof
cause an entry thereof and reference thereto to be made in the register.”
The words "the Appellate Board or" omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).
The words "as the case may be" omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021).
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The Patents Act, 1970
Court, the applicant shall give notice of the application to the Controller,
and the Controller shall be entitled to appear and be heard, and shall
appear if so directed by the High Court.
(3) Copies of all orders of the High Court allowing the patentee to amend
the specification shall be transmitted by the High Court to the Controller
who shall, on receipt thereof, cause an entry thereof and reference
thereto to be made in the register.]
59.Supplementary provisions as to amendment of application or
specification
[(1) No amendment of an application for a patent or a complete
specification or any document related thereto shall be made except by
way of disclaimer, correction or explanation, and no amendment thereof
shall be allowed, except for the purpose of incorporation of actual fact,
and no amendment of a complete specification shall be allowed, the effect
of which would be that the specification as amended would claim or
describe matter not in substance disclosed or shown in the specification
before the amendment, or that any claim of the specification as amended
would not fall wholly within the scope of a claim of the specification
before the amendment.]
128
[(2) Where after the date of grant of patent any amendment of the
specification or any other documents related thereto is allowed by the
Controller or by 129[***} the High Court, as the case may be,—
(a)
the amendment shall for all purposes be deemed to form part of
the specification along with other documents related thereto;
(b)
the fact that the specification or any other documents related
thereto has been amended shall be published as expeditiously as
possible; and
(c)
the right of the applicant or patentee to make amendment shall
not be called in question except on the ground of fraud.]
127
­127
Substituted by The Patents (Amendment) Act, 2002, S. 29, for sub-S. (1) (w.e.f. 20.05.2003).
Prior to its substitution sub-S (1) read as under:- “(1) No amendment of an application for
a patent or complete specification shall be made except by way of disclaimer, correction or
explanation, and no amendment thereof shall be allowed, except for the purpose of correcting
an obvious mistake, 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 in the specification before the amendment, or that any claim of the
specification as amended would not fall wholly within the scope of a claim of the specification
before the amendment.”
­128
Substituted by The Patents (Amendment) Act, 2005, S. 42, for sub-S. (2). Prior to its
substitution, sub-S. (2) read as under:- “(2)Where after the date of advertisement of acceptance
of a complete specification, any amendment of the specification 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 that the specification has been amended shall be advertised
in the Official Gazette; and(c) the right of the applicant or patentee to make amendment
shall not be called in question except on the ground of fraud.” –*Substituted by The Patents
(Amendment) Act, 2002, S. 29 (w.e.f. 20.05.2003).
­ 29
1
The words "the Appellate Board or" omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021)..
www.lexcampus.in
S. 57, 58
45
The Patents Act, 1970
(3) In construing the specification as amended, reference may be made to the
specification as originally accepted.
CHAPTER XI
RESTORATION OF LAPSED PATENTS
60. Applications for restorations of lapsed patents
(1) Where a patent has ceased to have effect by reason of failure to pay any
renewal fee within the 130[period prescribed under section 53 or within
such period as may be allowed under sub-section (4) of section 142] 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 131[eighteen months] from
the date on which the patent ceased to have effect, make an application
for the restoration of the patent.
(2) 132[Omitted by the Patents (Amendment) Act, 2002].
(3) An application under this section 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 from
the applicant such further evidence as he may think necessary.
S. 53, 117A(2),
142; R. 85
R. 84; F. 15
61.Procedure for disposal of applications for restoration of lapsed
patents
(1) If, after hearing the applicant in cases 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 the making of the application, he shall 133[publish the
application] in the prescribed manner; and within the prescribed period
any person interested may give notice to the Controller of opposition
thereto on either or both of the following grounds, that is to say, (a)
that the failure to pay the renewal fee was not unintentional; or
(b)
that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller
shall notify the applicant, and shall give to him and to the opponent an
opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in
the case of opposition, the decision of the Controller is in favour of the
applicant, the Controller shall, upon payment of any unpaid renewal fee
and such additional fee as may be prescribed, restore the patent and any
S. 117A(2)
R. 57-63, 85, 86;
F. 14
­130
Substituted by The Patents (Amendment) Act, 2005, S. 43, for “prescribed period or within
that period as extended under sub-section (3) of section 53” (w.e.f. 01.01.2005).
­131
Substituted by The Patents (Amendment) Act, 2002, S. 30, for “one year” (w.e.f. 20.05.2003).
­ 32
1
Sub-S. (2) omitted by The Patents (Amendment) Act, 2002, S. 30, (w.e.f. 20.05.2003). Prior to
its omission, sub-S. (2) read as under:- “(2) The provisions of sub-section (1) shall also apply to
patents granted before the commencement of this Act, subject to the modification that for the
reference to the prescribed period or to sub-section (3) of section 53, there shall be substituted
a reference to the period prescribed therefor under the Indian Patents and Designs Act, 1911
or to sub-section (2) of section 14 of that Act.”
­ 33
1
Substituted by The Patents (Amendment) Act, 2005, S. 44, for “advertise the application”
(w.e.f. 01.01.2005).
www.lexcampus.in
R. 85
46
The Patents Act, 1970
patent of addition specified in the application which has ceased to have
effect on the cesser, of that patent.
(4) The Controller may, if he thinks fit, as a condition of restoring the patent,
require that an entry shall be made in the register of any document or
matter which, under the provisions of this Act, has to be entered in the
register but which has not been so entered.
62. Rights of Patentees of lapsed patents which have been restored
(1) Where a patent is restored, the rights of the patentee shall be subject
to such provisions as may be prescribed and to such other provisions as
the Controller thinks fit to impose for the protection or compensation
of persons who may have begun to avail themselves of, or have taken
definite steps by contract or otherwise to avail themselves of the patented
invention between the date when the patent ceased to have effect and the
date of the 134[publication] of the application for restoration of the patent
under this Chapter.
(2) No suit or other proceeding shall be commenced or prosecuted in respect
of an infringement of a patent committed between the date on which
the patent ceased to have effect and the 135[date of publication] of the
application for restoration of the patent.
CHAPTER XII
SURRENDER AND REVOCATION OF PATENTS
63. Surrender of patents
(1) A patentee may, at any time by giving notice in the prescribed manner to
the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall 136[publish] the offer
in the prescribed manner, and also notify every person other than the
patentee whose names appears in the register as having an interest in the
patent.
(3) Any person interested may, within the prescribed period after 137[such
publication], give notice to the Controller of opposition to the surrender,
and where any such notice is given the Controller shall notify the
patentee.
(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.
S. 117A(2);
R. 57-63, 87(1)
R. 87(3)
64. Revocation of patents
(1) Subject to the provisions contained in this Act, a patent, whether granted
S. 52, 103(2),
107(1), 113(1),
117D(1);
­134
Substituted by The Patents (Amendment) Act, 2005, S. 45 (a), for “advertisement” (w.e.f.
01.01.2005).
­135
Substituted by The Patents (Amendment) Act, 2005, S. 45 (b), for “date of the advertisement”
(w.e.f. 01.01.2005).
­ 36
1
Substituted by The Patents (Amendment) Act, 2005, S. 46 (a), for “advertise” (w.e.f. 01.01.2005).
­ 37
1
Substituted by The Patents (Amendment) Act, 2005, S. 46 (b), for “such advertisement” (w.e.f.
01.01.2005).
www.lexcampus.in
47
The Patents Act, 1970
before or after the commencement of this Act, may 138[be revoked on
a petition of any person interested or of the Central Government by
139
[***] or on a counter-claim in a suit for infringement of the patent by
the High Court] on any of the following grounds, that is to say (a)
that the invention, so far as claimed in any claim of the complete
specification, was claimed in a valid claim of earlier priority date
contained in the complete specification of another patent granted
in India;
(b).
that the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefore:
140
[***]
(c)
that the patent was obtained wrongfully in contravention of the
rights of the petitioner or any person under or through whom he
claims;
(d)
that the subject of any claim of the complete specification is not an
invention within the meaning of this Act;
(e)
that the invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly known
or publicly used in India before the priority date of the claim or to
what was published in India or elsewhere in any of the documents
referred to in section 13;
141
[***]
(f)
that the invention so far as claimed in any claim of the complete
specification 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 of the claim;
142
[***]
(g)
that the invention, so far as claimed in any claim of the complete
specification, is not useful;
(h)
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 of the method or the
instructions for the working of the invention as contained in the
­138
­139
­140
­141
­142
Substituted by The Patents (Amendment) Act, 2005, S. 47, for “on the petition of any person
interested or of the Central Government or on a counter-claim in a suit for infringement of
the patent, be revoked by the High Court.”
The words "the Appellate Board or" omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021)..
Proviso to Cl. (b) omitted by The Patents (Amendment) Act, 2002, S. 31 (w.e.f. 20.05.2003).
Prior to its omission, the proviso read as under:- “Provided that a patent granted under the
Indian Patents and Designs Act, 1911 (2 of 1911) shall not be revoked on the ground that the
applicant was the communicatee or the importer of the invention in India and therefore not
entitled to make an application for the grant of a patent under this Act;”
Proviso to Cl. (e) omitted by The Patents (Amendment) Act, 2002, S. 31 (w.e.f. 20.05.2003).
Prior to its omission, the proviso read as under:- “Provided that in relation to patents granted
under the Indian Patents and Designs Act, 1911 (2 of 1911), this clause shall have effect as if
the words “or elsewhere” had been omitted;”
Proviso to Cl. (f) omitted by The Patents (Amendment) Act, 2002, S. 31 (w.e.f. 20.05.2003).
Prior to its omission, the proviso read as under:- “Provided that in relation to patents granted
under the Indian Patents and Designs Act, 1911 (2 of 1911), this clause shall have effect as if
the words “or elsewhere” had been omitted;”
www.lexcampus.in
48
The Patents Act, 1970
complete specification are not by themselves sufficient to enable a
person in India possessing average skill in, and average knowledge
of, the art to which the invention relates, to work the invention,
or that it does not disclose the best method of performing it which
was known to the applicant for the patent and for which he was
entitled to claim protection;
(i)
that the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the
specification;
(j)
that the patent was obtained on a false suggestion or
representation;
(k)
that the subject of any claim of the complete specification is not
patentable under this Act;
(l)
that the invention so far as claimed in any claim of the complete
specification was secretly used in India, otherwise than as
mentioned in sub-section (3), before the priority date of the claim;
(m)
that the applicant for the patent has failed to disclose to the
Controller the information required by section 8 or has furnished
information which in any material particular was false to his
knowledge;
(n)
that the applicant contravened any direction for secrecy passed
under section 35 143[or made or caused to be made an application
for the grant of a patent outside India in contravention of section
39;]
(o)
that leave to amend the complete specification under section 57 or
section 58 was obtained by fraud;
144
[(p) that the complete specification does not disclose or wrongly
mentions the source or geographical origin of biological material
used for the invention;
(q).
that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral
or otherwise, available within any local or indigenous community
in India or elsewhere.]
(2) For the purposes of clauses (e) and (f) of sub-section (1), (a)
no account shall be taken of 145[personal document or secret trial
or secret use;] and
(b)
where the patent is for a process or for a product as made by a
process described or claimed, the importation into India of the
product made abroad by that process shall constitute knowledge or
use in India of the invention on the date of the importation, except
where such importation has been for the purpose of reasonable
trial or experiment only.
(3) For the purpose of clause (l) of sub-section (1), no account shall be taken
of any use of the invention -
S. 35, 39
S. 8
S. 57, 58
­143
­144
Inserted by The Patents (Amendment) Act, 2002, S. 31 (w.e.f. 20.05.2003).
Inserted by The Patents (Amendment) Act, 2002, S. 31 (w.e.f. 20.05.2003). Earlier these words
were omitted by Act 17 of 1999, S. 6 (w.r.e.f. 01.01.1995)
­ 45
1
Substituted by The Patents (Amendment) Act, 2002, S. 31, for “secret use” (w.e.f. 20.05.2003).
www.lexcampus.in
49
The Patents Act, 1970
(a)
(b)
for the purpose of reasonable trial or experiment only; or
by the Government or by any person authorised by the Government
or by a Government undertaking, in consequence of the applicant
for the patent or any person from whom he derives title having
communicated or disclosed the invention directly or indirectly
to the Government or person authorised as aforesaid or to the
Government undertakings; or
(c)
by any other person, in consequence of the applicant for the
patent or any person from whom he derives title having
communicated or disclosed the invention, and without the
consent or acquiescence of the applicant or of any person from
whom he derives title.
(4)
Without prejudice to the provisions contained in sub-section (1),
a patent may be revoked by the High Court on the petition of
the Central Government, if the High Court is satisfied that the
patentee has without reasonable cause failed to comply with the
request of the Central Government to make, use or exercise the
patented invention for the purposes of Government within the
meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall
be served on all persons appearing from the register to be proprietors
of that patent or to have shares or interests therein and it shall not be
necessary to serve a notice on any other person.
CASE LAW
If the patent is new and its validity has not been established in judicial
proceeding till then, and doubts have been raised to show that the paten ought
not to have been granted, the court will not interfere by issuing a temporary
injunction. V Manioka Thevar v. Star Plough Works, Melur, AIR 1965
Mad 327: (1965) 1 MLJ 406.
The application for a revocation of a patent under section 64 can only be
filed by “a person who is interested”. UCB Farchim SA v. Cipla Ltd & Ors.,
2010 (167) DLT 459 (464).
Under section 64, “a person interested” means a person who has a direct,
present and tangible commercial interest or public interest which is affected
by continuance of the patent in question. Ajay Industrial Corporation v.
Shiro Kanao of Ibaraki City, AIR 1983 Delhi: 496 (507) (DB): 1983 (3)
PTC 245 (Del).
One cannot claim revocation of patent by making allegation that patent
embodies no discovery or invention without submitting any technical or
expert evidence to support the allegation. Ajay Industrial Corporation Vs.
Shiro Kanao of Ibaraki City. AIR 1983 Delhi: 496 (507) (DB): 1983 (3)
PTC 245 (Del).
When damages are claimed for infringement the defendant can resist the
suit on the ground that he was not aware of existence of such patent or had
not reasonable means of knowing existence of the patent. And question over
the validity of the patent can also be raised as a defence. Indian Hume Pipe
Co. Ltd v. Vendra Venkanna, AIR 1963 AP 58 (61) (DB).
www.lexcampus.in
S. 99
50
The Patents Act, 1970
Even if a particular defendant did not raise opposition during pre-grant
and post-grant stages, even then also, the legislature permits such defendant
to question the validity of the patent during an infringement suit stage. F.
Hoffmann-LA Roche Ltd. and Anr. v. Cipla Ltd., 2009 (154) DLT 243
(267) (DB).
Once the defendant already sought revocation of patent in an infringement
suit through a counter-claim, then he cannot thereafter in his capacity as
“any person interested” assail the concerned patent, by a way of revocation.
Dr. Aloys Wobben v. Yogesh Mehra, (2014) 15 SCC 360: AIR 2014 SC
2210.
Section 64 provides two remedies for interested person. He can file a
revocation petition or raise a counter-claim in infringement suit. Dr. Aloys
Wobben v. Yogesh Mehra, (2014) 15 SCC 360: AIR 2014 SC 2210.
146
[65. Revocation of patent or amendment of complete specification on
directions from Government in cases relating to atomic energy
(1) Where at any time after grant of a patent, the Central Government is
satisfied that a patent is for an invention relating to atomic energy for
which no patent can be granted under sub-section (1) of section 20 of
the Atomic Energy Act, 1962 (33 of 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.
(2) In any proceedings 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.]
66. Revocation of patent in public interest
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.
S. 4
S. 3(b), 117A(2)
CHAPTER XIII
­146
Substituted by The Patents (Amendment) Act, 2005, S. 48, for S. 65, (w.e.f. 01.01.2005). Prior
to its substitution, S. 65 read as under:- “65. Revocation of patent or amendment of complete
specification on directions from Central Government in cases relating to atomic energy. –
(1) Where at any time after acceptance of a complete specification, the Central Government
is satisfied that an application for a patent or a patent is for an invention relating to
atomic energy for which no patent can be granted under sub-section (1) of section 20
of the Atomic Energy Act, 1962 (33 of 1962), it may direct the Controller to refuse to
proceed further with the application or to revoke the patent, as the case may be, and
thereupon the Controller, after giving notice to the applicant or, as the case may be, 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 refuse to proceed further with the application or may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may allow the applicant for the
patent or the patentee to amend the complete specification in such manner as he considers
necessary instead of refusing to proceed with the application or revoking the patent.
www.lexcampus.in
51
The Patents Act, 1970
REGISTER OF PATENTS
67. Register of patents and particulars to be entered therein
(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 transmission 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.
(2) 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.
(3) Subject to the superintendence and directions of the Central Government,
the register shall be kept under the control and management of the
Controller.
147
[(4) Notwithstanding anything contained in sub-section (1), it shall be
lawful for the Controller to keep the register of patents or any part thereof
in computer floppies, diskettes or any other electronic form subject to such
safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872
(1 of 1872), a copy of, or extracts from, the register of patents, certified
to be a true copy under the hand of the Controller or any officer duly
authorised by the Controller in this behalf shall, in all legal proceedings,
be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies,
diskettes or any other electronic form,(a)
reference in this Act to an entry in the register shall be deemed
to include reference to a record of particulars kept in computer
floppies, diskettes or any other electronic form and comprising the
register or part of the register;
(b)
references in this Act to particulars being registered or entered in
the register shall be deemed to include references to the keeping
of record of those particulars comprising the register or part of
the register in computer floppies, diskettes or any other electronic
form; and
(c)
references in this Act to the rectification of the register are to
be read as including references to the rectification of the record
of particulars kept in computer floppies, diskettes or any other
electronic form and comprising the register or part of the register.]
­147
S. 2(1)(x);
R. 88(1), 94
R. 88(3)
Substituted by The Patents (Amendment) Act, 2002, S. 32, for sub-S (4) (w.e.f. 20.05.2003).
Prior to its substitution, sub-S. (4) read as under:- “(4) For the removal of doubts, it is hereby
declared that the register of patents existing at the commencement of this Act shall be
incorporated in, and form part of, the register under this Act.”
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52
The Patents Act, 1970
[68.Assignments, etc., not to be valid unless in writing and duly
executed
148
An assignment of a patent or of a share in a patent, a mortgage, 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 concerned is reduced
to the form of a document embodying all the terms and conditions governing
their rights and obligations and duly executed.]
69. Registration of assignments, transmissions, etc.
(1) Where any person becomes entitled by assignment, transmission or
operation of law to a patent or to a share in a patent or becomes entitled
as a 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.
(2) Without prejudice to the provisions of sub-section (1), an application for
the registration of the title of any person becoming entitled by assignment
to a patent or a share in a patent or becoming entitled by virtue of a
mortgage, licence or other instrument to any other interest in a patent
may be made in the prescribed manner by the assignor, mortgagor, licensor
or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration
of the title of any person the Controller shall, upon proof of title to his
satisfaction, (a)
where that person is entitled to a patent or a share in a patent,
register him in the register as proprietor or co-proprietor of the
patent, and enter in the register particulars of the instrument or
event by which he derives title; or
(b)
where that person is entitled to any other interest in the patent,
enter in the register notice of his interest, with particulars of the
instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the
assignment, mortgage, licence, transmission, operation of law or any other
such transaction has validly vested in such person a title to the patent or
any share or interest therein, the Controller may refuse to take any action
under clause (a) or, as the case may be, under clause (b), until the rights
of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for
being filed in the patent office copies of all agreements, licences and other
­148
R. 90-92; F. 16
S. 117A(2)
Substituted by The Patents (Amendment) Act, 2005, S. 49, for S. 68, (w.e.f. 01.01.2005). Prior
to its substitution, S. 68 read as under:- “68. Assignments, etc., not to be valid unless in writing
and registered. –An assignment of a patent or of a share in a patent, a mortgage, 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 concerned is reduced to the form of a
document embodying all the terms and conditions governing their rights and obligations
and the application for registration of such document is filed in the prescribed manner with
the Controller within six months from the commencement of this Act or the execution of the
document, whichever is later or within such further period not exceeding six months in the
aggregate as the Controller on application made in the prescribed manner allows:
Provided that the document shall, when registered, have effect from the date of its execution.”
–* Substituted by The Patents (Amendment) Act, 2002, S. 33 (w.e.f. 20.05.2003).
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53
The Patents Act, 1970
documents affecting the title to any patent or any licence thereunder
authenticated in the prescribed manner and also such other documents
as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller
shall, if so requested by the patentee or licensee, take steps for securing
that the terms of the licence are not disclosed to any person except under
the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an
application to rectify the register, a document in respect of which no entry
has been made in the register under sub-section (3) shall not be admitted
by the Controller or by any court as evidence of the title of any person to a
patent or to a share or interest therein unless the Controller or the court,
for reasons to be recorded in writing, otherwise directs.
70. Power of registered grantee or proprietor to deal with patent
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, grant licences under,
or otherwise deal with, the patent and to give effectual receipts for any
consideration for any such assignment, licence or dealing:
Provided that any equities in respect of the patent may be enforced in like
manner as in respect of any other movable property.
71. Rectification of register by Appellate Board
(1) The 149[High Court] may, on the application of any person aggrieved (a)
by the absence or omission from the register of any entry; or
(b)
by any entry made in the register without sufficient cause; or
(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.
(2) In any proceeding under this section the 150[High Court] may decide any
question that may be necessary or expedient to decide in connection with
the rectification of the register.
(3) Notice of any application to the 151[High Court] under this section shall be
given in the prescribed manner to the Controller who shall be entitled to
appear and be heard on the application, and shall appear if so directed by
the 152[High Court].
(4) Any order of the 153[High Court] under this section rectifying the register
shall direct that notice of the rectification shall be served upon the
­149
­150
­151
­152
­153
The words "Appellate Board" and "Board"
Reforms Act, 2021 (w.e.f. 04-04-2021).
The words "Appellate Board" and "Board"
Reforms Act, 2021 (w.e.f. 04-04-2021).
The words "Appellate Board" and "Board"
Reforms Act, 2021 (w.e.f. 04-04-2021).
The words "Appellate Board" and "Board"
Reforms Act, 2021 (w.e.f. 04-04-2021).
The words "Appellate Board" and "Board"
Reforms Act, 2021 (w.e.f. 04-04-2021).
S. 117D(1)
substituted by "High Court" by the Tribunals
substituted by "High Court" by the Tribunals
substituted by "High Court" by the Tribunals
substituted by "High Court" by the Tribunals
substituted by "High Court" by the Tribunals
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The Patents Act, 1970
Controller in the prescribed manner who shall upon receipt of such notice
rectify the register accordingly.
72. Register to be open for inspection
(1) Subject to the provisions contained in this Act and any rules made
thereunder, the register shall at all convenient times be open to inspection
by the public; and certified copies, sealed with the seal of the patent office,
of any entry in the register shall be given to any person requiring them on
payment of the prescribed fee.
(2) The register shall be prima facie evidence of any matters required or
authorised by or under this Act to be entered therein.
154
[(3) If the record of particulars is kept in computer floppies or diskettes
or in any other electronic form, sub-sections (1) and (2) shall be deemed
to have been complied with if the public is given access to such computer
floppies, diskettes or any other electronic form or printouts of such record
of particulars for inspection.]
R. 95, 133
CHAPTER XIV
PATENT OFFICE AND ITS ESTABLISHMENT
73. Controller and other officers
(1) The Controller General of Patents, Designs and Trade Marks appointed
under sub-section (1) of 155[section 3 of the Trade Marks Act, 1999 (47 of
1999)], shall be the Controller of Patents for the purposes of this Act.
(2) For the purposes of this Act, the Central Government may appoint as many
Examiners and other officers and with such designations as it thinks fit.
(3) Subject to the provisions of this Act, the officers appointed under subsection (2) shall discharge under the superintendence and directions of
the Controller such functions of the Controller under this Act as he may,
from time to time by general or special order in writing, authorise them to
discharge.
(4) Without prejudice to the generality of the provisions of sub-section (3),
the Controller may, by order in writing and for reasons to be recorded
therein withdraw any matter pending before an officer appointed under
sub-section (2) and deal with such matter himself either de novo or from
the stage it was so withdrawn or transfer the same to another officer
appointed under sub-section (2) who may, subject to special directions in
the order of transfer, proceed with the matter either de novo or from the
stage it was so transferred.
S. 2(1)(b), 2(2)(a),
126(1); R. 19B(2),
19K(1), 56(2)
74. Patent office and its branches
(1) For the purposes of this Act, there shall be an office which shall be known
as the patent office.
­154
­155
Inserted by The Patents (Amendment) Act, 2002, S. 34 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 35, for “section 4 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958)” (w.e.f. 20.05.2003).
www.lexcampus.in
S. 2(1)(r)
55
The Patents Act, 1970
[(2) The Central Government may, by notification in the Official Gazette,
specify the name of the Patent Office.]
(3) The head office of the patent 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 may think fit, branch offices of the patent office.
(4) There shall be a seal of the patent office.
156
75.Restriction on employees of patent office as to right or interest
in patents
All officers and employees of the patent office shall be incapable, during the
period for which they hold their appointments, to acquire or take, directly
or indirectly, except by inheritance or bequest, any right or interest in any
patent issued by that office.
76. Officers and employees not to furnish information, etc.
An officer or employee in the patent office shall not, except when required
or authorized by this Act or under a direction in writing of the 157[Central
Government 158[***]] or the Controller or by order of a court,
(a)
furnish information on a matter which is being, or has been, dealt
with under this Act 159[***]; or
(b)
prepare or assist in the preparation of a document required or
permitted by or under this Act 160[***] to be lodged in the patent
office; or
(c)
conduct a search in the records of the patent office.
CHAPTER XV
POWERS OF CONTROLLER GENERALLY
77. Controller to have certain powers of civil court
(1) Subject to any rules made in this behalf, the Controller in any proceedings
before him under this Act shall have the powers of a civil court while
trying a suit under the Code of Civil Procedure, 1908 (5 of 1908), in respect
of the following matters, namely:(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
­156
­157
­158
­159
­160
Substituted by The Patents (Amendment) Act, 2005, S. 50, for sub-S. (2), (w.e.f. 01.01.2005).
Prior to its substitution, sub-S (2) read as under:-“ (2) The patent office provided by the
Central Government under the Indian Patents and Designs Act, 1911 (2 of 1911), shall be the
patent office under this Act.”
Substituted by The Patents (Amendment) Act, 2002, S. 36, for “Central Government” (w.e.f.
20.05.2003).
The words "or Appellate Board" omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-042021)..
The word and figures “or under the Indian Patents and Designs Act, 1911 (2 of 1911)”, omitted
by The Patents (Amendment) Act, 2002, S. 36 (w.e.f. 20.05.2003).
The word and figures “or under the Indian Patents and Designs Act, 1911 (2 of 1911)”, omitted
by The Patents (Amendment) Act, 2002, S. 36 (w.e.f. 20.05.2003).
www.lexcampus.in
R. 137
56
The Patents Act, 1970
documents;
awarding costs;
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; and
(h)
any other matter which may be prescribed.
(2) Any order for costs awarded by the Controller in exercise of the powers
conferred upon him under sub-section (1) shall be executable as a decree
of a civil court.
(e)
(f)
R. 130; F. 24
R. 130; F. 24
78. Power of Controller to correct clerical errors, etc.
(1) Without prejudice to the provisions contained in sections 57 and 59 as
regards amendment of applications for patents or complete specifications
161
[or other documents related thereto] and subject to the provisions of
section 44, the Controller may, in accordance with the provisions of this
section, correct any clerical error in any patent or in any specification or
other document filed in pursuance of such application or in any application
for a patent or any clerical error in any matter which is entered in the
register.
(2) A correction may be made in pursuance of this section either upon a
request in writing made by any person interested and accompanied by
the prescribed fee, or without such a request.
(3) Where the Controller proposes to make any such correction as aforesaid
otherwise than in pursuance of a request made under this section, he
shall give notice of the proposal to the patentee or the applicant for the
patent, as the case may be, and to any other person who appears to him
to be concerned, and shall give them an opportunity to be heard before
making the correction.
(4) Where a request is made under this section for the correction of any error
in a patent or application for a patent or any document filed in pursuance
of such an application, and it appears to the Controller that the correction
would materially alter the meaning or scope of the document to which
the request relates and ought not to be made without notice to persons
affected thereby, he shall require notice of the nature of the proposed
correction to be 162[published] in the prescribed manner.
(5) Within the prescribed time after any 163[such publication] as aforesaid
any person interested may give notice to the Controller of opposition to
the request, and, where such notice of opposition is given, the Controller
shall give notice thereof to the person by whom the request was made, and
shall give to him and to the opponent an opportunity to be heard before he
decides the case.
S. 44, 117A(2);
R. 58-63, 122-125
­161
­162
Inserted by The Patents (Amendment) Act, 2002, S. 37 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 51 (a), for “advertised” (w.e.f.
01.01.2005).
­ 63
1
Substituted by The Patents (Amendment) Act, 2005, S. 51 (b), for “such advertisement” (w.e.f.
01.01.2005).
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The Patents Act, 1970
CASE LAW
Controller has no power to make any amendment suo moto. AIA Engineering
Ltd. v. Controller of Patents and Anr, 2007 (34) PTC 457.
79.Evidence how to be given and power of Controller in respect
thereof
Subject to any rules made in this behalf, in any proceeding under this Act
before the Controller, evidence shall be given by affidavit in the absence
of direction by the Controller to the contrary, but in any case in which the
Controller thinks it right so to do, he may take oral evidence in lieu of or in
addition to, evidence by affidavit, or may allow any party to be cross-examined
on the contents of his affidavit.
80. Exercise of discretionary powers by Controller
R. 129
Without prejudice to any provision contained in this Act requiring the
Controller to hear any party to the proceedings thereunder or to give any
such party an opportunity to be heard, the Controller shall give to any
applicant for a patent, or for amendment of a specification (if within the
prescribed time the applicant so requires) an opportunity to be heard before
exercising adversely to the applicant any discretion vested in the Controller
by or under this Act:
164
[Provided that the party desiring a hearing makes the request for such
hearing to the Controller at least ten days in advance of the expiry of the
time-limit specified in respect of the proceeding.]
81. Disposal by Controller of applications for extension of time
Where under the provisions of this Act or the rules made thereunder the
Controller may extend the time for doing any act, nothing in this Act shall
be deemed to require him to give notice to or hear the party interested in
opposing the extension, nor shall any appeal lie from any order of the
Controller granting such extension.
R. 138
[CHAPTER XVI
WORKING OF PATENTS, COMPULSORY LICENCES AND
REVOCATION
165
82. Definitions of “patented articles” and “patentee”
In this Chapter, unless the context otherwise requires,(a)
“patented article” includes any article made by a patented process;
and
(b)
“patentee” includes an exclusive licensee.
83. General principles applicable to working of patented inventions
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
­164
­165
S. 92(2)
Inserted by The Patents (Amendment) Act, 2002, S. 37 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 39 for Chapter XVI (sections 82 to 98)
(w.e.f. 20.5.2003).
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The Patents Act, 1970
general considerations, namely:
(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;
(e)
that patents granted do not in any way prohibit Central
Government in taking measures to protect public health;
(f)
that the patent right is not abused by the patentee or person deriving
title or interest on patent from the patentee, and the patentee or a
person deriving title or interest on patent from the patentee does not
resort to practices which unreasonably restrain trade or adversely
affect the international transfer of technology; and
(g)
that patents are granted to make the benefit of the patented
invention available at reasonably affordable prices to the public.
84. Compulsory licences
(1) At any time after the expiration of three years from the date of the
166
[grant] of a patent, any person interested may make an application
to the Controller for grant of compulsory licence on patent on any of the
following grounds, namely:(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.
(2) An application under this section may be made by any person notwith­
standing that he is already the holder of a licence under the patent and no
person shall be estopped from alleging that the reasonable requirements of
the public with respect to the patented invention are not satisfied or that
the patented invention is not worked in the territory of India or that the
patented invention is not available to the public at a reasonably affordable
price by reason of any admission made by him, whether in such a licence or
otherwise or by reason of his having accepted such a licence.
(3) Every application under sub-section (1) shall contain a statement setting
out the nature of the applicant’s interest together with such particulars
­166
S. 86-92, 94, 110,
117A(2); R. 96;
F. 17, 19
Substituted by The Patents (Amendment) Act, 2005, S. 52 (a), for “sealing” (w.e.f. 01.01.2005).
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The Patents Act, 1970
as may be prescribed and the facts upon which the application is based.
(4) The Controller, if satisfied that the reasonable requirements of the public
with respect to the patented invention have not been satisfied or that
the patented invention is not worked in the territory of India or that the
patented invention is not available to the public at a reasonably affordable
price, may grant a licence upon such terms as he may deem fit.
(5) Where the Controller directs the patentee to grant a licence he may, as
incidental thereto, exercise the powers set out in section 88.
(6) In considering the application filed under this section, the Controller shall
take into account,(i)
the nature of the invention, the time which has elapsed since
the sealing of the patent and the measures already taken by the
patentee or any licensee to make full use of the invention;
(ii)
the ability of the applicant to work the invention to the public
advantage;
(iii)
the capacity of the applicant to undertake the risk in providing
capital and working the invention, if the application were granted;
(iv)
as to whether the applicant has made efforts to obtain a licence
from the patentee on reasonable terms and conditions and such
efforts have not been successful within a reasonable period as the
Controller may deem fit:
Provided that this clause shall not be applicable in case of national
emergency or other circumstances of extreme urgency or in case of public
non-commercial use or on establishment of a ground of anti-competitive
practices adopted by the patentee,
but shall not be required to take into account matters subsequent to the
making of the application.
167
[Explanation.—For the purposes of clause (iv), “reasonable period” shall
be construed as a period not ordinarily exceeding a period of six months.]
(7) For the purposes of this Chapter, the reasonable requirements of the
public shall be deemed not to have been satisfied(a)
if, by reason of the refusal of the patentee to grant a licence or
licences on reasonable terms,(i) an existing trade or industry or the development thereof or
the establishment of any new trade or industry in India or
the trade or industry of any person or class of persons trading
or manufacturing in India is prejudiced; or
(ii) the demand for the patented article has not been met to an
adequate extent or on reasonable terms; or
(iii) a market for export of the patented article manufactured in
India is not being supplied or developed; or
(iv) the establishment or development of commercial activities in
India is prejudiced; or
(b)
if, by reason of conditions imposed by the patentee upon the grant
of licences under the patent or upon the purchase, hire or use
of the patented article or process, the manufacture, use or sale
of materials not protected by the patent, or the establishment or
­167
Inserted by The Patents (Amendment) Act, 2005, S. 52 (b) (w.e.f. 01.01.2005).
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The Patents Act, 1970
(c)
(d)
(e)
development of any trade or industry in India, is prejudiced; or
if the patentee imposes a condition upon the grant of licences under
the patent to provide exclusive grant back, prevention to challenges
to the validity of patent or coercive package licensing, or
if the patented invention is not being worked in the territory of
India on a commercial scale to an adequate extent or is not being
so worked to the fullest extent that is reasonably practicable, or
if the working of the patented invention in the territory of India
on a commercial scale is being prevented or hindered by the
importation from abroad of the patented article by(i) the patentee or persons claiming under him; or
(ii) persons directly or indirectly purchasing from him; or
(iii) other persons against whom the patentee is not taking or has
not taken proceedings for infringement.
85. Revocation of patents by the Controller for non-working
(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 that reasonable requirements of the public with respect to the patented
invention has not been satisfied or that the patented invention is not
available to the public at a reasonably affordable price.
(2) Every application under sub-section (1) shall contain such particulars as
may be prescribed, the facts upon which the application 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.
(3) The Controller, if satisfied that the reasonable requirements of the public
with respect to the patented invention have not been satisfied or that
patented invention has not been worked in the territory of India or that
the patented invention is not available to the public at a reasonably
affordable price, may make an order revoking the patent.
(4) Every application under sub-section (1) shall ordinarily be decided within
one year of its being presented to the Controller.
S. 86, 87, 117A(2)
R. 62, 96-99
S. 84, 85
86.Power of Controller to adjourn applications for compulsory
licences, etc., in certain cases
(1) Where an application under section 84 or section 85, as the case may
be, is made on the grounds that the patented invention has not been
worked in the territory of India or on the ground mentioned in clause (d)
of sub-section (7) of section 84 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 enable the invention to be so worked to the fullest
extent that is reasonably practicable, he may, by order, adjourn the further
hearing of the application for such period not exceeding twelve months in
the aggregate as appears to him to be sufficient for the invention to be so
worked:
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The Patents Act, 1970
Provided that in any case where the patentee establishes that the reason
why a patented invention could not be worked as aforesaid before the
date of the application was due to any State or Central Act or any rule
or regulation made thereunder or any order of the Government imposed
otherwise than by way of a condition for the working of the invention in the
territory of India or for the disposal of the patented articles or of the articles
made by the process or by the use of the patented plant, machinery, or
apparatus, then, the period of adjournment ordered under this sub-section
shall be reckoned from the date on which the period during which the
working of the invention was prevented by such Act, rule or regulation or
order of Government as computed from the date of the application, expires.
(2) No adjournment under sub-section (1) shall be ordered unless the
Controller is satisfied that the patentee has taken with promptitude
adequate or reasonable steps to start the working of the invention in the
territory of India on a commercial scale and to an adequate extent.
87. Procedure for dealing with applications under sections 84 and 85
(1) Where the Controller is satisfied, upon 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 upon the patentee and any other person appearing
from the register to be interested in the patent in respect of which the
application is made, and 168[shall publish the application in the official
journal.]
(2) The patentee or any other person desiring to oppose the application may,
within such time as may be prescribed or within such further time as the
Controller may on application (made either before or after the expiration
of the prescribed time) allow, give to the Controller notice of opposition.
(3) Any such notice of opposition shall contain a statement setting out the
grounds on which the application is opposed.
(4) Where any such notice of opposition is duly given, the Controller shall
notify the applicant, and shall give to the applicant and the opponent an
opportunity to be heard before deciding the case.
S. 84, 85, 92(2);
R. 62, 96-99
R. 98; F. 14
88. Powers of Controller in granting compulsory licences
(1) Where the Controller is satisfied on an application made under section 84
that the manufacture, use or sale of materials not protected by the patent
is prejudiced by reason of conditions imposed by the patentee upon the
grant of licences under the patent, or upon the purchase, hire or use of
the patented article or process, he may, subject to the provisions of that
section, order the grant of licences under the patent to such customers of
the applicant as he thinks fit as well as to the applicant.
(2) Where an application under section 84 is made by a person being the
holder of a licence under the patent, the Controller may, if he makes an
order for the grant of a licence to the applicant, order the existing licence
to be cancelled, or may, if he thinks fit, instead of making an order for
­168
S. 84, 92(2),
117A(2); R. 62
Substituted by The Patents (Amendment) Act, 2005, S. 53, for “shall advertise the application
in the Official Gazette” (w.e.f. 01.01.2005).
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The Patents Act, 1970
the grant of a licence to the applicant, order the existing licence to be
amended.
(3) Where two or more patents are held by the same patentee and an applicant
for a compulsory licence establishes that the reasonable requirements of
the public have not been satisfied with respect to some only of the said
patents, then, if the Controller is satisfied that the applicant cannot
efficiently or satisfactorily work the licence granted to him under those
patents without infringing the other patents held by the patentee and if
those patents involve important technical advancement of considerable
economic significance in relation to the other patents, he may, by order,
direct the grant of a licence in respect of the other patents also to enable
the licensee to work the patent or patents in regard to which a licence is
granted under section 84.
(4) Where the terms and conditions of a licence have been settled by the
Controller, the licensee may, at any time after he has worked the invention
on a commercial scale for a period of not less than twelve months, make an
application to the Controller for the revision of the terms and conditions
on the ground that the terms and conditions settled have proved to be
more onerous than originally expected and that in consequence thereof
the licensee is unable to work the invention except at a loss:
Provided that no such application shall be entertained a second time.
89. General purposes for granting compulsory licences
R. 100, 101
S. 84, 92(2);
The powers of the Controller upon an application made under section 84 shall
be exercised with a view to securing the following general purposes, that is
to say,(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 the territory of India under the
protection of a patent are not unfairly prejudiced.
90. Terms and conditions of compulsory licences
(1) In settling the terms and conditions of a licence under section 84, the
Controller shall endeavour to secure(i)
that the royalty and other remuneration, if any, reserved to the
patentee or other person beneficially entitled to the patent, 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)
that the patented invention is worked to the fullest extent by the
person to whom the licence is granted and with reasonable profit
to him;
(iii)
that the patented articles are made available to the public at
reasonably affordable prices;
(iv)
that the licence granted is a non-exclusive licence;
(v)
that the right of the licensee is non-assignable;
S. 84, 92(2);
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The Patents Act, 1970
(vi)
that the licence is for the balance term of the patent unless a
shorter term is consistent with public interest;
169
[(vii) 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 the provisions of
sub-clause (iii) of clause (a) of sub-section (7) of section 84;
(viii) that in the case of semi-conductor technology, the licence granted
is to work the invention for public non-commercial use;
(ix)
that in case the licence is granted to remedy a practice determined
after judicial or administrative process to be anti-competitive, the
licensee shall be permitted to export the patented product, if need
be.]
(2) No licence granted by the Controller shall authorise the licensee to import
the patented article or an article or substance made by a patented process
from abroad where such importation would, but for such authorisation,
constitute an infringement of the rights of the patentee.
(3) Notwithstanding anything contained in sub-section (2), the Central
Government may, if in its opinion it is necessary so to do, in the public
interest, direct the Controller at any time to authorise any licensee in
respect of a patent to import the patented article or an article or substance
made by a patented process from abroad (subject to such conditions as it
considers necessary to impose relating among other matters to the royalty
and other remuneration, if any, payable to the patentee, the quantum of
import, the sale price of the imported article and the period of importation),
and thereupon the Controller shall give effect to the directions.
91. Licensing of related patents
(1) Notwithstanding anything contained in the other provisions of this
Chapter, 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
license thereof, exclusive or otherwise, may apply to the Controller for
the grant of a licence of the first-mentioned patent on the ground that
he is prevented or hindered without such licence from working the other
invention efficiently or to the best advantage possible.
(2) No order under sub-section (1) shall be made 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 the territory of India.
(3) When the Controller is satisfied that the conditions mentioned in sub­169
S. 117A(2);
R. 62, 96-98
S. 117A(2);
R. 96
Substituted by The Patents (Amendment) Act, 2005, S. 54, for Cl. (vii) (w.e.f. 01.01.2005).
Prior to its substitution, Cl. (vii) read as under:- “(vii) that the licence is granted with a
predominant purpose of supplying in Indian market and in the case of semi-conductor
technology, the licence granted is to work the invention for public noncommercial use and in
the case, the licence granted to remedy a practice determined after judicial or administrative
process to be anti-competitive, licensee shall be permitted to export the patented product.”
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The Patents Act, 1970
section (1) have been established by the applicant, 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:
Provided that the licence granted by the Controller shall be non-assignable
except with the assignment of the respective patents.
(4) The provisions of sections 87, 88, 89 and 90 shall apply to licences granted
under this section as they apply to licences granted under section 84.
S.S.83,84,84,87-90
87-90
92.Special provision for compulsory licences on notifications by
Central Government
(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
thereof to work the invention, it may make a declaration to that effect, by
notification in the Official Gazette, and thereupon the following provisions
shall have effect, that is to say,(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 the terms and conditions of a licence granted under
this section, 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 patentee deriving a
reasonable advantage from their patent rights.
(2) The provisions of sections 83, 87, 88, 89 and 90 shall apply in relation to
the grant of licences under this section as they apply in relation to the
grant of licences under section 84.
(3) Notwithstanding anything contained in sub-section (2), where the
Controller is satisfied on consideration of the application referred to in
clause (i) of sub-section (1) 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, as the case may be, 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 in relation to that
application for grant of licence under this section:
Provided that the Controller shall, as soon as may be practicable, inform
the patentee of the patent relating to the application for such nonapplication of section 87.
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The Patents Act, 1970
170
[92-A. Compulsory licence for export of patented pharmaceutical
products in certain exceptional circumstances
(1) Compulsory licence shall be available for 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.
(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.
(3) The provisions of sub-sections (1) and (2) shall be without prejudice to the
extent to which pharmaceutical products produced under a compulsory
licence can be exported under any other provision of this Act.
Explanation.—For the purposes of this section, “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.]
R. 62, 96-98
93. Order for licence to operate as a deed between parties concerned
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.
94. Termination of compulsory licence
(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 thereof no longer exist and such circumstances are
unlikely to recur:
Provided that the holder of the compulsory licence shall have the right to
object to such termination.
(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.]
S. 84, 117A(2);
S. 64(4)
R. 62, 102; F. 21
95. to 98. [Repealed by the Patent (Amendment) Act, 2002 (38 of 2002),
w.e.f. 20.05.2005
­170
Inserted by The Patents (Amendment) Act, 2005, S. 55 (w.e.f. 01.01.2005).
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The Patents Act, 1970
CHAPTER XVII
USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT
AND ACQUISITION OF INVENTIONS BY CENTRAL
GOVERNMENT
99. Meaning of use of inventions for purposes of Government
(1) For the purposes of this Chapter, 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.
(2) 171[Omitted by the Patents (Amendment) Act, 2002]
(3) Nothing contained in this Chapter shall apply in respect of any such
importation making or using of any machine, apparatus or other article
or of any such using of any process or of any such importation, using or
distribution of any medicine or drug, as may be made by virtue of one or
more of the conditions specified in section 47.
S. 47
100. P
ower of Central Government to use inventions for purposes of
Government
(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 the provisions of this Chapter.
(2) Where an invention has, before the priority date of the relevant claim of
the complete specification, 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 the communication of the invention
directly or indirectly by the patentee or by a person from whom he derives
title, any use of the invention by the Central Government or any person
authorised in writing by it for the purposes of Government may be made
free of any royalty or other remuneration to the patentee.
(3) If and so far as the invention has not been so recorded or tried or tested as
aforesaid, any use of the invention made by the Central Government or any
­171
S. 101, 103
Sub-S. (2) omitted by The Patents (Amendment) Act, 2002, S. 40 (w.e.f. 20.05.2003). Prior to its
omission, sub-S. (2) read as under:- “(2) Without prejudice to the generality of the provisions
of sub-section (1),(a) the importation, by or on behalf of the Government, of any invention being a machine,
apparatus or other article covered by a patent granted before the commencement of this
Act, for the purpose merely of its own use; and
(b) the importation, by or on behalf of the Government, of any invention being a medicine
or drug covered by a patent granted before the commencement of this Act(i) for the purpose merely of its own use; or
(ii) for the purpose of distribution in any dispensary, hospital or other medical institution
maintained by or on behalf of the Government or in any other dispensary, hospital or
other medical institution which the Central Government may, having regard to the
public service which such other dispensary, hospital or medical institution renders,
specify in this behalf by notification in the Official Gazette,
shall also be deemed, for the purposes of this Chapter, to be use of such invention for the
purposes of Government.”
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The Patents Act, 1970
(4)
(5)
(6)
(7)
person authorised by it under sub-section (1), at any time after 172[grant
of the patent] or in consequence of any such communication as aforesaid,
shall be made upon terms as may be agreed upon either before or after
the use, between the Central Government or any person authorised under
sub-section (1) and the patentee, or, as may in default of agreement be
determined by the High Court on a reference under section 103:
173
[Provided that in case of any such use of any patent, the patentee
shall be paid not more than adequate remuneration in the circumstances
of each case, taking into account the economic value of the use of the
patent.]
The authorisation by the Central Government in respect of an invention
may be given under this section, either before or after the patent is granted
and either before or after the acts in respect of which such authorisation
is given or done, and may be given to any person, whether or not he is
authorised directly or indirectly by the applicant or the patentee to make,
use, exercise or vend the invention or import the machine, apparatus or
other article or medicine or drug covered by such patent.
Where an invention has been used by or with the authority of the Central
Government for the purposes of Government under this section, then,
174
[except in case of national emergency or other circumstances of extreme
urgency or for non-commercial use], the Government shall notify the
patentee as soon as practicable of the fact and furnish him with such
information as to the extent of the use of the invention as he may, from
time to time, reasonably require; and where the invention has been used
for the purposes of a Government undertaking, the Central Government
may call for such information as may be necessary for this purpose from
such undertaking.
The right to make, use, exercise and vend an invention for the purposes
of Government under sub-section (1) shall include the 175[right to sell,
on non-commercial basis, the goods] which have been made in exercise
of that right, and a purchaser of goods so sold, and a person claiming
through him, shall have the power to deal with the goods as if the Central
Government or the person authorised under sub-section (1) were the
patentee of the invention.
Where in respect of a patent which has been the subject matter of an
authorisation under this section, there is an exclusive licensee as is
referred to in sub-section (3) of section 101, or where such patent has been
assigned to the patentee in consideration of royalties or other benefits
determined by reference to the use of the invention (including payments
S. 122(1)(a)
S. 101(3)
­172
Substituted by The Patents (Amendment) Act, 2005, S. 56, for “the acceptance of the complete
specification in respect to the patent” (w.e.f. 01.01.2005).
­173
Substituted by The Patents (Amendment) Act, 2002, S. 41, for the proviso (w.e.f. 20.05.2003).
Prior to its substitution, the proviso read as under: - “Provided that in the case of any such
use of any patent in respect of any medicine or drug or article of food the royalty and other
remuneration shall in no case exceed four per cent. of the net ex-factory sale price in bulk of
the patented article (exclusive of taxes levied under any law for the time being in force and
any commissions payable) determined in such manner as may be prescribed.”
­ 74
1
Substituted by The Patents (Amendment) Act, 2002, S. 41, for “unless it appears to the
Government that it would be contrary to the public interest to do so” (w.e.f. 20.05.2003).
­ 75
1
Substituted by The Patents (Amendment) Act, 2002, S. 41, for “right to sell the goods” (w.e.f.
20.05.2003).
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The Patents Act, 1970
by way of minimum royalty), the notice directed to be given under subsection (5) shall also be given to such exclusive licensee or assignor, as the
case may be, and the reference to the patentee in sub-section (3) shall be
deemed to include a reference to such assignor or exclusive licensee.
CASE LAW
Under section 100 of the patent act, the Central Government or its department
can authorize task to somebody else. That is an agreement in the name of
President of India signed by the officers of Railways can be a good substitute
for authorization. Garware Wall Ropes Ltd v. A.I. Chopra, 2009(4) AIR
Bom R 441.
101. R
ights of third parties in respect of use of invention for
purposes of Government
(1) In relation to any use of a patented invention, or an invention in respect
of which an application for a patent is pending, made for the purposes of
Government (a)
by the Central Government or any person authorised by the
Central Government under section 100; or
(b)
by the patentee or applicant for the patent to the order made by
the Central Government,
the provisions of any licence, assignment or agreement granted or
made, 176[***] between the patentee or applicant for the patent (or
any person who derives title from him or from whom he derives
title) 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 thereto, or
(ii) provide for the making of payments in respect of any use
of the invention or of the model, document or information
relating thereto for the purposes of Government, 177[***]
and the reproduction or publication of any model or document in
connection with the said use for the purposes of Government shall
not be deemed to be an infringement of any copyright subsisting
in the model or document.
(2) Where the patent, or the right to apply for or obtain the patent, has been
assigned to the patentee in consideration of royalties or other benefits
determined by reference to the use of the invention 178[***], then, in
relation to any use of the invention made for the purposes of Government
by the patentee to the order of the Central Government, sub-section (3)
of section 100 shall have effect as if that use were made by virtue of an
authority given under that section; and any use of the invention for the
­176
The word “, whether before or after the commencement of this Act,” omitted by The Patents
(Amendment) Act, 2002, S. 42 (w.e.f. 20.05.2003).
­177
The brackets and words “(including payments by way of minimum royalty)” omitted by The
Patents (Amendment) Act, 2002, S. 42 (w.e.f. 20.05.2003).
­ 78
1
The brackets and words “(including payments by way of minimum royalty)” omitted by The
Patents (Amendment) Act, 2002, S. 42 (w.e.f. 20.05.2003).
www.lexcampus.in
S. 100
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The Patents Act, 1970
purposes of Government by virtue of sub-section (3) of that section shall
have effect as if the reference to the patentee included a reference to the
assignor of the patent, and any sum payable by virtue of that sub-section
shall be divided between the patentee and the assignor in such proportion
as may be agreed upon between them or as may in default of agreement
be determined by the High Court on a reference under section 103.
(3) Where by virtue of sub-section (3) of section 100, payments are required
to be made by the Central Government or persons authorised under subsection (1) of that section in respect of the use of an invention for the
purposes of Government and where in respect of such patent there is an
exclusive licensee authorised under his licence to use the invention for
the purposes of Government, such sum shall be shared by the patentee
and such licensee in such proportions, if any, as may be agreed upon
between them or as may in default of agreement be determined by the
High Court on a reference under section 103 to be just, having regard to
any expenditure incurred by the licensee (a)
in developing the said invention; or
(b)
in making payments to the patentees other than royalties or
other benefits determined by reference to the use of the invention
179
[***] in consideration of the licence.
S. 100(3), 103
102. Acquisition of inventions and patents by the Central
Government
(1) 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.
(2) Notice of the acquisition shall be given to the applicant, and, where a
patent has been granted, to the patentee and other persons, if any,
appearing in the register as having an interest in the patent.
(3) The Central Government shall pay to the applicant, or, as the case may
be, the patentee and other persons appearing on the register as having an
interest in the patent such compensation as may be agreed upon between
the Central Government and the applicant, or the patentee and other
persons; or, as may, in default of agreement, 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 thereof, the period during which and the manner in
which it has already been worked (including the profits made during such
period by the patentee or by his licensee whether exclusive or otherwise)
and other relevant factors.
­179
The word “including payments by way of minimum royalty” omitted by The Patents
(Amendment) Act, 2002, S. 42 (w.e.f. 20.05.2003).
www.lexcampus.in
S. 103
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The Patents Act, 1970
103. R
eference to High Court of disputes as to use for purposes of
Government
(1) Any dispute as to the exercise by the Central Government or a person
authorised by it of the powers conferred by section 100, or as to terms for the
use of an invention for the purposes of Government thereunder or as to the
right of any person to receive any part of a payment made in pursuance of
sub-section (3) of that section or as to 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.
(2) In any proceedings under this section to which the Central Government is
a party, the Central Government may, (a)
if the patentee is a party to the proceedings, 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 a patentee is or is not a party to the proceedings, put in
issue the validity of the patent without petitioning for its revocation.
(3) If in such proceedings as aforesaid any question arises whether an
invention has been recorded, tested or tried as is mentioned in section
100, and the disclosure of any document regarding the invention, or of any
evidence of the test or trial thereof, 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.
(4) In determining under this section 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 in question for the
purposes of Government.
(5) In any proceedings under this section, the High Court may at any time
order the whole proceedings or any question or issue of fact arising therein
to be referred to an official referee, commissioner or an arbitrator, on such
terms as the High Court may direct, and references to the High Court in
the foregoing provisions of this section shall be construed accordingly.
(6) Where the invention claimed in a patent was made by a person who at
the time it was made was in the service of the Central Government or of
a State Government or was an employee of a Government undertaking
and the subject-matter of the invention is certified by the relevant
Government or the principal officer of the Government undertaking to be
connected with the work done in the course of the normal duties of the
Government servant or employee of the Government undertaking, then,
notwithstanding anything contained in this section, any dispute of the
nature referred to in sub-section (1) relating to the invention shall be
disposed of by the Central Government conformably to the provisions of
this section so far as may be applicable, but before doing so the Central
Government shall give an opportunity to the patentee and such other
parties as it considers have an interest in the matter to be heard.
S. 100, 101, 102(3)
www.lexcampus.in
S. 64
S. 100
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The Patents Act, 1970
CHAPTER XVIII
SUITS CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction
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 to suit:
Provided 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.
S. 105, 106, 113
CASE LAW
When a person infringes a patent by making the article himself or by his
agent or servant, then action can be taken against the servants and agents
individually or collectively along with their employer and principal. Rohtas
Industries Ltd. and Ors v. Indian Hume Pipe Co. Ltd., AIR 1954 Pat
492 (497) (DB).
Delay in filing infringement suit can disentitle plaintiffs’ to relief of
perpetual injunction, if it has capacity to create considerable loss or prejudice
to defendants. Farbewerke Hoechst Aktiengesellschaft v. Unichem
Laboratories, AIR 1969 Bom 255 (260).
The proviso to section 104 is an exception to the general rule, it needs
to be construed strictly. Jurisdiction of District Court is ousted only when
there is a counter claim seeking renovation of patent. Fabcon v Industrial
Engineering Corporation, AIR 1987 All 338 (339): 1986 All WC 420.
In a suit for infringement of patent, the plaintiff has to prove that his
process has been counterfeited or imitated by the defendants. He must give
the particulars of the breaches constituting the alleged infringement of his
patent rights. Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal
and Co, AIR 1936 Bom 99 (100,101).
In a suit for infringement of patent, the plaintiff must prove that the
patent is being infringed by resorting to a process patented by him. He need
to make it clear that the article is the same which was seized and to have
been produced by defendant is of Plaintiff’s. The Bombay Agarwal Co. v.
Ramchand Diwanchand and Anr., AIR 1953 Nag 154 (157, 158) (DB).
Where a counter claim for revocation of patent is made by the defendant,
the suit along with counter claim would be transferred to the High Court.
SERGI Transformers Explosion Prevention Technologies Pvt. Ltd. v.
CTR Manufacturing Industries Ltd., 2011 (47) PTC 521.
180
[104A. Burden of proof in case of suits concerning infringement
(1) In any suit for infringement of a patent, where the subject matter of 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
­180
Inserted by The Patents (Amendment) Act, 2002, S. 43 (w.e.f. 20.05.2003).
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72
The Patents Act, 1970
product; or
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:
Provided that the patentee or a person deriving title or interest in the
patent from him, first proves that the product is identical to the product
directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon
him 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.]
(b)
S. 104, 151(2)
105. Power of Court to make declaration as to non-infringement
(1) Notwithstanding anything contained in section 34 of the Specific Relief
Act, 1963(47 of 1963), any person may institute a suit for a declaration
that the use by him of any process, or the making, use or sale of any article
by him does not, or would not, constitute an infringement of a claim of a
patent against the patentee or the holder of an exclusive licence under the
patent, notwithstanding that no assertion to the contrary has been made
by the patentee or the licensee, if it is shown (a)
that the plaintiff has applied in writing to the patentee or exclusive
licensee for a written acknowledgement to the effect of the
declaration claimed and has furnished him with full particulars
in writing of the process or article in question; and
(b)
that the patentee or licensee has refused or neglected to give such
an acknowledgement.
(2) The costs of all parties in a suit for a declaration brought by virtue of
this section shall, unless for special reasons the court thinks fit to order
otherwise, be paid by the plaintiff.
(3) The validity of a claim of the specification of a patent shall not be called in
question in a suit for a declaration brought by virtue of this section, and
accordingly the making or refusal of such a declaration in the case of a
patent shall not be deemed to imply that the patent is valid or invalid.
(4) A suit for a declaration may be brought by virtue of this section at any
time 181[after the publication of grant of a patent], and references in this
section to the patentee shall be construed accordingly.
106. P
ower of Court to grant relief in cases of groundless threat of
infringement proceedings
(1) Where any person (whether entitled to or interested in a patent or an
application for a patent or not) threatens any other person by circulars
or advertisements or by communications, oral or in writing addressed to
that or any other person, with proceedings for infringement of a patent,
any person aggrieved thereby may bring a suit against him praying for
the following reliefs, that is to say (a)
a declaration to the effect that the threats are unjustifiable;
­181
Substituted by The Patents (Amendment) Act, 2005, S. 57, for “after the date of advertisement
of acceptance of the complete specification of a patent” (w.e.f. 01.01.2005).
www.lexcampus.in
S. 104
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The Patents Act, 1970
(b)
an injunction against the continuance of the threats; and
(c)
such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which
the proceedings were threatened constitute or, if done, would constitute,
an infringement of a patent or of rights arising from the publication of a
complete specification in respect of a claim of the specification not shown
by the plaintiff to be invalid, the court may grant to the plaintiff all or any
of the reliefs prayed for.
Explanation. – A mere notification of the existence of a patent does not
constitute a threat of proceeding within the meaning of this section.
CASE LAW
Suppression of material facts can be a reason to refuse Injunction. Standipack
Pvt. Ltd v. Oswal Trading Co. Ltd, AIR 2000 Del 23: 1999(19) PTC 479
(Del).
Injunction cannot be granted if the validity of patent is questioned at
the time of moving revocation application. Standipack Pvt. Ltd v. Oswal
Trading Co. Ltd, AIR 2000 Del 23: 1999 (19) PTC 479 (Del).
107. Defences, etc., in suits for infringement
(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.
(2) In any suit for infringement of a patent 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 or more of the conditions specified
in section 47.
CASE LAW
If a foreigner who got his patents registered in India does not keep them in use
in India and thereby seriously affected market and economy of India, cannot
seek temporary injunction for restraining others from using the patented
devices. Franz Xaver Huemer v. New Yash Engineers, AIR 1997 (Del)
79(85): ILR (1996) 2 Delhi 791 (DB).
The defendant cannot plead that the plaintiff has no locus standi to institute
proceeding for infringement of patent without claiming to be the owner of the
patent or without filing any petition or counter-claim. By merely raising the plea
that the plaintiff’s registration is improper. Schnieder Electric Industries
SA v Telemecanique and Controls (I) Ltd., 2000(20) PTC 620 (Del).
182
[107A. Certain acts not to be considered as infringement
For the purposes of this Act,(a)
any act of making, constructing, 183[using, selling or importing]
a patented invention solely for uses reasonably relating to the
­182
­183
Inserted by The Patents (Amendment) Act, 2002, S. 44 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 58(a)(i), for “using or selling” (w.e.f.
01.01.2005).
www.lexcampus.in
S. 64
S. 47
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The Patents Act, 1970
(b)
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, 184[use, sale
or import] of any product;
importation of patented products by any person from a person
185
[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.]
CASE LAW
There is no outer limit in respect of the period for which the Appellate Board
may condone the delay. The delay can be condoned upon being satisfied that
sufficient cause for extending the time for preferring an appeal has been
disclosed. Gilead Sciences v. IPAB, 2012 (188) DLT 437 (445).
108. Reliefs in suits for infringement
[(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.]
187
[(2) The court may also order that the goods which are found to be
infringing and materials and implement, the predominant use of which is
in the creation of infringing goods shall be seized, forfeited or destroyed, as
the court deems fit under the circumstances of the case without payment
of any compensation.]
186
CASE LAW
When the Plaintiff suppressed factum of earlier application before Delhi
High Court and its rejection, then it means he is not coming to Court with
clean hands. Therefore, not entitled to discretionary relief of Injunction. Ravi
Kamal Bali v Kala Tech and Ors., (2008) 5 Bom CR 138.
Injunction cannot be granted as a matter of course. It can be refused,
where the plaintiff can be adequately compensated in terms of money or the
court can sufficiently protect the interest of the plaintiffs by passing certain
other directions. Vringo Infrastructure v. Indiamart Intermesh, (60)
PTC 437 (Del).
Where the allegedly infringement was not novel at the date of patent and
it is not exploited by the patentee, then the damages, if any suffered could
be provisionally quantified, hence temporary injunction rejected. Hindustan
Lever Limited v Godrej Soaps Limited and others, AIR 1996 Cal 367
(383).
­184
Substituted by The Patents (Amendment) Act, 2005, S. 58(a)(ii), for “use or sell” (w.e.f.
01.01.2005).
­185
Substituted by The Patents (Amendment) Act, 2005, S. 58(b), for “who is duly authorized by
the patentee to sell or distribute the product” (w.e.f. 01.01.2005).
­ 86
1
S. 108 renumbered as sub-S. (1) thereof by The Patents (Amendment) Act, 2002, S. 45 (w.e.f.
20.05.2003).
­ 87
1
Inserted by The Patents (Amendment) Act, 2002, S. 45 (w.e.f. 20.05.2003).
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75
The Patents Act, 1970
109. R
ights of exclusive licensee to take proceedings against
infringement
(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 in any such suit the court shall take
into consideration any loss suffered or likely to be suffered by the exclusive
licensee as such or, as the case may be, the profits carried by means of the
infringement so far as it constitutes an infringement of the rights of the
exclusive licensee as such.
(2) In any suit for infringement of a patent by the holder of an exclusive
licence under sub-section (1), the patentee shall, unless he has joined as a
plaintiff in the suit, be added as a defendant, but a patentee so added as
defendant shall not be liable for any costs unless he enters an appearance
and takes part in the proceedings.
110. R
ight of licensee under section 84 to take proceedings against
infringement
Any person to whom a licence has been granted under section 84 shall be entitled
to call upon the patentee to take proceedings to prevent any infringement
of the patent, and, if the patentee refuses or neglects to do so within two
months after being so called upon, the licensee may institute proceedings for
the infringement in his own name as though he were the patentee, making
the patentee a defendant; but a patentee so added as defendant shall not
be liable for any costs unless he enters an appearance and takes part in the
proceedings.
111. R
estriction on power of Courts to grant damages or account of
profits for infringement
(1) In a suit for infringement of a patent, damages or an account of profits
shall not be granted against the defendant who proves that at the date
of the infringement he was not aware and had no reasonable grounds for
believing that the patent existed.
Explanation – A person shall not be deemed to have been aware or to
have had reasonable grounds for believing that a patent exists by reason
only of the application to an article of the word “patent”, “patented” or any
word or words expressing or implying that a patent has been obtained
for the article, unless the number of the patent accompanies the word or
words in question.
(2) In any suit for infringement of a patent the court may, if it thinks fit,
refuse to grant any damages or an account of profits in respect of any
infringement committed after a failure to pay any renewal fee within the
prescribed period and before any extension of that period.
(3) Where an amendment of a specification by way of disclaimer, correction
or explanation has been allowed under this Act after the publication of
the specification, no damages or account of profits shall be granted in any
proceeding in respect of the use of the invention before the date of the
decision allowing the amendment, unless the court is satisfied that the
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S. 84
76
The Patents Act, 1970
specification as originally published was framed in good faith and with
reasonable skill and knowledge.
(4) Nothing in this section shall affect the power of the court to grant an
injunction in any suit for infringement of a patent.
112. 188[Omitted by the Patents (Amendment) Act, 2002].
113.Certificate of validity of specification and costs of subsequent
suits for infringement thereof
[(1) If in any proceedings before 190[***] a High Court for the revocation
of a patent under section 64 and section 104, 191[***], the validity of any
claim of a specification is contested and that claim is found by [***] the
High Court to be valid, [***] the High Court may certify that the validity
of that claim was contested in those proceedings and was upheld.]
(2) Where any such certificate has been granted, then, if in any subsequent
suit before a court for infringement of that claim of the patent or in
any subsequent proceeding for revocation of the patent in so far as
it relates to that claim, the patentee or other person relying on the
validity of the claim obtains a final order or judgement in his favour, he
shall be entitled to an order for the payment of his full costs, charges
and expenses of and incidental to any such suit or proceeding properly
incurred so far as they concern the claim in respect of which the
certificate was granted, unless the court trying the suit or proceeding
otherwise directs:
Provided that the costs as specified in this sub-section shall not be ordered
when the party disputing the validity of the claim satisfies the court that
he was not aware of the grant of the certificate when he raised the dispute
and withdrew forthwith such defence when he became aware of such a
certificate.
192
[(3) Nothing contained in this section shall be construed as authorising
189
­188
­189
­190
­191
­192
S. 64, 104
Prior to its omission, S. 112 read as under: - “112. Restriction on power of Court to grant
injunction in certain cases. –If in proceedings for the infringement of a patent endorsed
or deemed to be endorsed with the words “Licences of right” (otherwise than by the
importation of the patented article from other countries) the infringing defendant is ready
and willing to take a licence upon terms to be settled by the Controller as provided in
section 88, no injunction shall be granted against him, and the amount if any recoverable
against him by way of damages shall not exceed double the amount which would have
been recoverable against him as licensee if such a licence had been granted before the
earliest infringement.”
Substituted by The Patents (Amendment) Act, 2005, S. 59(a), for sub-S. (1). Prior to its
substitution, sub-S. (1) read as under:- “(1) If in any proceedings before a High Court for the
revocation of a patent under section 64 the validity of any claim of a specification is contested
and that claim is found by the court to be valid, the Court may certify that the validity of that
claim was contested in those proceedings and was upheld.”
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); "the Appellate Board or",
wherever they occur, shall be omitted in this section
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "as the case may
be" omitted
Substituted by The Patents (Amendment) Act, 2005, S. 59(b), for sub-S. (3). Prior to its
substitution, sub-S. (3) read as under:- “(3) Nothing contained in this section shall be construed
as authorising courts hearing appeals from decrees or orders in suits for infringement or
petitions for revocation to pass orders for costs on the scale referred to therein.”
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The Patents Act, 1970
the courts 193 [***] hearing appeals from decrees or orders in suits for
infringement or petitions for revocation, as the case may be, to pass orders
for costs on the scale referred to therein.]
114. Relief for infringement of partially valid specification
(1) If in proceedings for infringement of a patent it is found that any claim of
the specification, being a claim in respect of which infringement is alleged,
is valid, but that any other claim is invalid, the court may grant relief in
respect of any valid claim which is infringed:
Provided that the court shall not grant relief except by way of injunction
save in the circumstances mentioned in sub-section (2).
(2) Where the plaintiff proves that the invalid claim was framed in good faith
and with reasonable skill and knowledge, the court shall grant relief in
respect of any valid claim which is infringed subject to the discretion
of the court as to costs and as to the date from which damages or an
account of profits should be reckoned, and in exercising such discretion
the court may take into consideration the conduct of the parties in
inserting such invalid claims in the specification or permitting them to
remain there.
115. Scientific advisers
(1) In any suit for infringement or in any proceeding before a court under
this Act, the court may at any time, and whether or not an application
has been made by any party for that purpose, appoint an independent
scientific adviser to assist the court or to inquire and report upon any such
question of fact or of opinion (not involving a question of interpretation of
law) as it may formulate for the purpose.
(2) The remuneration of the scientific adviser shall be fixed by the court and
shall include the costs of making a report and a proper daily fee for any
day on which the scientific adviser may be required to attend before the
court, and such remuneration shall be defrayed out of moneys provided by
Parliament by law for the purpose.
S. 159(2)(xii);
R. 103-107
S. 159(2)(xiia)
CHAPTER XIX
194
[APPEALS]
195
[116. Omitted by the Tribunals Reforms Act, 2021]
196
[117. Omitted by the Tribunals Reforms Act, 2021]
117A. Appeals to Appellate Board
(1) Save as otherwise expressly provided in sub-section (2), no appeal shall
lie from any decision, order or direction made or issued under this Act by
the Central Government, or from any act or order of the Controller for the
­193
­194
­195
­196
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); "or the Appellate Board",
omitted in this section
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
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78
The Patents Act, 1970
purpose of giving effect to any such decision, order or direction.
(2) An appeal shall lie to the 197[High Court] from any decision, order or
direction of the Controller or Central Government under section 15,
section 16, section 17, section 18, section 19, 198[section 20, sub-sections
(4) of section 25, section 28], section 51, section 54, section 57, section
60, section 61, section 63, section 66, sub-section (3) of section 69, section
78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91,
section 92 and section 94.
(3) Every appeal under this section shall be in the prescribed form and shall
be verified in such manner as may be prescribed and shall be accompanied
by a copy of the decision, order or direction appealed against and by such
fees as may be prescribed.
(4) Every appeal shall be made within three months from the date of the
decision, order or direction, as the case may be, of the Controller or the
Central Government or within such further time as the 199[High Court]
may, in accordance with the rules made by it, allow.
S. 16-20, 25(4), 28,
51, 54, 57, 60, 61,
63, 66, 69(3), 78,
84, 85, 91, 92, 94
S. 159(2)(xiib)
[117B. Omitted by the Tribunals Reforms Act, 2021]
200
201
[117C. Omitted by the Tribunals Reforms Act, 2021]
[117D. Omitted by the Tribunals Reforms Act, 2021]
202
117E. Appearance of Controller in legal proceedings
(1) The Controller shall have the right to appear and be heard(a)
in any legal proceedings before the 203[Hight Court} in which the relief
sought includes alteration or rectification of the register or in which
any question relating to the practice of the patent office is raised;
(b)
in any appeal to the 204[Hight Court} from an order of the Controller
on an application for grant of a patent(i) which is not opposed, and the application is either refused
by the Controller or is accepted by him subject to any
amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Controller considers that his
appearance is necessary in the public interest,
and the Controller shall appear in any case if so directed by the
205
[Hight Court}.
­197
­198
­199
­200
­201
­202
­203
­204
­205
S. 117A(2), 117D
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
Substituted by The Patents (Amendment) Act, 2005, S. 61 for “section 20, section 25, section
27, section 28”.
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
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The Patents Act, 1970
(2) Unless the 206[Hight Court} otherwise directs, the Controller may, in lieu
of appearing, submit a statement in writing signed by him, giving such
particulars as he thinks proper of the proceedings before him relating to
the matter in issue or of the grounds of any decision given by him or of
the practice of the patent office in like cases, or of other matters relevant
to the issues and within his knowledge as the Controller may deem it
necessary, and such statement shall be evidence in the proceeding.
[117F. Omitted by the Tribunals Reforms Act, 2021]
207
[117G. Omitted by the Tribunals Reforms Act, 2021]
208
[117H. Omitted by the Tribunals Reforms Act, 2021]
209
CHAPTER XX
PENALTIES
118. C
ontravention of secrecy provisions relating to certain
inventions
If any person fails to comply with any direction given under section 35
210
[or makes or causes to be made an application for the grant of a patent in
contravention of section 39], he shall be punishable with imprisonment for a
term which may extended to two years, or with fine or with both.
S. 35, 39
119. Falsification of entries in register, etc.
If any person makes, or causes to be made, a false entry in any register kept
under this Act, or a writing falsely purporting to be a copy of an entry in such
a register, or produces or tenders, or causes to be produced or tendered, in
evidence any such writing knowing the entry or writing to be false, he shall
be punishable with imprisonment for a term which may extend to two years,
or with fine, or with both.
120. Unauthorized claim of patents rights
If any person falsely represents that any article sold by him is patented in
India or is the subject of an application for a patent in India, he shall be
punishable with fine which may extend to 211[one lakh rupees.]
Explanation 1– For the purposes of this section, a person shall be deemed to
represent (a)
that an article is patented in India if there is stamped, engraved
or impressed on, or otherwise applied to, the article the word
“patent” or “patented” or some other word expressing or implying
­206
­207
­208
­209
­210
­211
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "Appellate
Board", substituted by the words "High Court"
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); ”
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021);
Inserted by The Patents (Amendment) Act, 2002, S. 48 (w.e.f. 20.05.2003). Earlier these words
were omitted by Act 17 of 1999, S.7 (w.r.e.f. 01.01.0995).
Substituted by The Patents (Amendment) Act, 2005, S. 64, for “ten thousand rupees” (w.e.f.
01.01.2005). Earlier these words were substituted by The Patents (Amendment) Act, 2002, S.
49 (w.e.f. 20.05.2003).
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S. 67
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The Patents Act, 1970
that a patent for the article has been obtained in India;
that an article is the subject of an application for a patent in India,
if there are stamped, engraved or impressed on, or otherwise
applied to, the article the words “patent applied for”, “patent
pending”, or some other words implying that an application for a
patent for the article has been made in India.
Explanation 2 – The use of words “patent”, “patented”, “patent applied for”,
“patent pending” or other words expressing or implying that an article is
patented or that a patent has been applied for shall be deemed to refer to a
patent in force in India, or to a pending application for a patent in India, as
the case may be, unless there is an accompanying indication that the patent
has been obtained or applied for in any country outside India.
(b
121. Wrongful use of words “patent office”
If any person uses on his place of business or any document issued by him or
otherwise the words “patent office” or any other words which would reasonably
lead to the belief that his place of business is, or is officially connected with,
the patent office, he shall be punishable with imprisonment for a term which
may extend to six months, or with fine, or with both.
S. 2(1)(r)
122. Refusal or failure to supply information
(1) If any person refuses or fails to furnish (a)
to the Central Government any information which he is required
to furnish under sub-section (5) of section 100,
(b)
to the Controller any information or statement which he is
required to furnish by or under section 146,
he shall be punishable with fine which may extend to 212[ten lakh
rupees.]
(2) If any person, being required to furnish any such information as is referred
to in sub-section (1), furnishes information or statement which is false,
and which he either knows or has reason to believe to be false or does not
believe to be true, he shall be punishable with imprisonment which may
extend to six months, or with fine, or with both.
S. 100(5)
S. 146
123. Practice by non-registered patent agents
If any person contravenes the provisions of section 129, he shall be punishable
with fine which may extend to 213[one lakh rupees in the case of a first offence
and five lakh rupees] in the case of a second or subsequent offence.
S. 129, 131(1)(b)
124. Offences by companies
(1) If the person committing an offence under this Act is a company, the
company as well as every person in charge of, and responsible to, the
company for the conduct of its business at the time of the commission of
the offence shall be deemed to be guilty of the offence and shall be liable
to be proceeded against and punished accordingly:
­212
Substituted by The Patents (Amendment) Act, 2005, S. 65, for “twenty thousand rupees”
(w.e.f. 01.01.2005). Earlier these words were substituted by The Patents (Amendment) Act,
2002, S. 50 (w.e.f. 20.05.2003).
­ 13
2
Substituted by The Patents (Amendment) Act, 2005, S. 66, for “ten thousand rupees in the
case of a fist offence and forty thousand rupees” (w.e.f. 01.01.2005).
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81
The Patents Act, 1970
Provided that nothing contained in this sub-section shall render any
such person liable to any punishment if he proves that the offence was
committed without his knowledge or that he exercised all due diligence to
prevent the commission of such offence.
(2) Notwithstanding anything contained in sub-section (1), where an offence
under this Act has been committed by a company and it is proved that the
offence has been committed with the consent or connivance of, or that the
commission of the offence is attributable to any neglect on the part of any
director, manager, secretary or other officer of the company, such director,
manager, secretary or other officer shall also be deemed to be guilty of
that offence and shall be liable to be proceeded against and punished
accordingly.
Explanation – For the purposes of this section, (a)
“company” means any body corporate and includes a firm or other
association of individuals; and
(b)
“director”, in relation to a firm, means a partner in the firm.
CHAPTER XXI
PATENT AGENTS
214
[125. Register of patent agents
(1) The Controller shall maintain a register to be called the register of patent
agents in which shall be entered the names, addresses and other relevant
particulars, as may be prescribed, of all persons qualified to have their
names so entered under section 126.
(2) Notwithstanding anything contained in sub-section (1), it shall be lawful
for the Controller to keep the register of patent agents in computer
floppies, diskettes or any other electronic form subject to such safeguards
as may be prescribed.]
S. 126, 159(2)(xiv)
R. 108, 115
126. Qualifications for registration as patent agents
(1) A person shall be qualified to have his name entered in the register of
patent agents if he fulfils the following conditions, namely: (a)
he is a citizen of India;
(b)
he has completed the age of 21 years;
(c)
he has obtained a 215[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 in this
behalf, and, in addition,(i) 216[Omitted by the Patents (Amendment) Act, 2005]
S. 125
R. 109, 110; F. 22
­214
Substituted by The Patents (Amendment) Act, 2002, S. 52, for S. 125 (w.e.f. 20.05.2003). Prior
to its substitution S. 125 read as under: - “125. Register of patent agents.–The Controller shall
maintain a register to be called the register of patent agents in which shall be entered the
names and addresses of all persons qualified to have their names so entered under section 126.”
­215
Substituted by The Patents (Amendment) Act, 2002, for “degree from any University” (w.e.f.
20.05.2003).
­ 16
2
Sub-Cl. (i) omitted by The Patents (Amendment) Act, 2005, S. 67 (a), (w.e.f. 01.01.2005). Prior
to its omission, sub-Cl. (i0 read as under:- “(i) is an advocate within the meaning of the
Advocates Act, 1961 (25 of 1961); or”
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The Patents Act, 1970
(ii) has passed the qualifying examination prescribed for the
purpose; 217[or]
218
[(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 ceased to hold any such
capacity at the time of making the application for registration;]
(d)
he has paid such fee as may be prescribed.
219
[(2) Notwithstanding anything contained in sub-section (1), a person who
has been registered as a patent agent before the commencement of 220[the
Patents (Amendment) Act, 2005] shall be entitled to continue to be, or
when required to be re-registered, as a patent agent, on payment of the
fees as may be prescribed.]
S. 73
R. 111, 112, 113;
F. 22
127. Rights of patent agents
Subject to the provisions contained in this Act and in any rules made
thereunder, every patent agent whose name is entered in the register shall
be entitled (a)
to practise before the Controller; and
(b)
to prepare all documents, transact all business and discharge
such other functions as may be prescribed in connection with any
proceeding before the Controller under this Act.
128. S
ubscription and verification of certain documents by patent
agents
[***] All applications and communications to the Controller under this
Act may be signed by a patent agent authorised in writing in this behalf
by the person concerned.
(2) 222[Omitted by the Patents (Amendment) Act, 2002]
(1)
221
­217
­218
­219
Inserted by The Patents (Amendment) Act, 2002, S. 53 (w.e.f. 20.05.2003).
Inserted by The Patents (Amendment) Act, 2002, S. 53 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 53, for sub-S. (2) (w.e.f. 20.05.2003).
Prior to its substitution sub-S. (2) read as under:- “(2) Notwithstanding anything contained
in sub-section (1), a person who has been practising as a patent agent before the 1st day of
November, 1966 and has filed not less than five complete specifications before the said day,
shall, on payment of prescribed fee, be qualified to have his name entered in the register of
patent agents.”
­220
Substituted by The Patents (Amendment) Act, 2005, S. 67 (b), for “The Patents (Amendment)
Act, 2002 (38 of 2002) (w.e.f. 01.01.2005).
­ 21
2
The words, brackets and figures“(1) Subject to the provisions contained in sub-section (2) and
to any rules made under this Act” omitted by The Patents (Amendment) Act, 2002, S. 54 (w.e.f.
20.05.2003).
­ 22
2
Sub-S. (2) omitted by The Patents (Amendment) Act, 2002, S. 54 (w.e.f. 20.05.2003). Prior to
its omission, sub-S. (2) read as under:- “(2) The following documents, namely,(i) applications for patent;
(ii) applications for the restoration of lapsed patents;
(iii) applications for the sealing of patents after the time allowed for that purpose by or
under sub-section (2), or sub-section (3) of section 43 has expired;
(iv) applications for leave to amend;
(v) applications for compulsory licences or for revocation; and
(vi) notices of surrender of patents,
shall be signed and verified in the manner prescribed by the person making such
applications or giving such notices:
Provided that if such person is absent from India, they may be signed and verified on his
behalf by a patent agent authorised by him in writing in that behalf.
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F. 26
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The Patents Act, 1970
129. Restrictions on practice as patent agents
(1) No person, either alone or in partnership with any other person, shall
practise, describe or hold himself out as a patent agent, or permit himself
to be so described or held out, unless he is registered as a patent agent or,
as the case may be, unless he and all his partners are so registered.
(2) No company or other body corporate shall practice, describe itself or hold
itself out as patent agents or permit itself to be so described or held out.
Explanation – For the purposes of this section, practice as a patent agent
includes any of the following acts, namely: (a)
applying for or obtaining patents in India or elsewhere;
(b)
preparing specifications or other documents for the purposes of
this Act or of the patent law of any other country;
(c)
giving advice other than of a scientific or technical nature as to
the validity of patents or their infringement.
S. 123
130. Removal from register patent agents and restoration
(1) The 223[Controller] may remove the name of any person from the register
when 224[he] is satisfied, after giving that person a reasonable opportunity
of being heard and after such further inquiry, if any, as 225[he] thinks fit to
make (i)
that his name has been entered in the register by error or on
account of misrepresentation or suppression of material fact;
(ii)
that he has been convicted of any offence and sentenced to a
term of imprisonment or has been guilty of misconduct in his
professional capacity which in the opinion of the 226[Controller]
renders him unfit to be kept in the register.
(2) The 227[Controller] may, on application and on sufficient cause being
shown, restore to the register the name of any person removed therefrom.
R. 116
R. 117; F. 23
131. Power of Controller to refuse to deal with certain agents
(1) Subject to any rules made in this behalf, the Controller may refuse to
recognise as agent in respect of any business under this Act (a)
any individual whose name has been removed from, and not
restored to, the register;
(b)
any person who has been convicted of an offence under section 123;
(c)
any person, not being registered as a patent agent, who in the
opinion of the Controller is engaged wholly in acting as agent in
applying for patents in India or elsewhere in the name or for the
benefit of the person by whom he is employed; and
(d)
any company or firm, if any person whom the Controller could
refuse to recognise as agent in respect of any business under this
Act, is acting as a director or manager of the company or is a
­223
­224
­225
­226
­227
Substituted by The Patents (Amendment) Act, 2002, S. 55, for “Central Government” (w.e.f.
20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 55, for “it” (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 55, for “it” (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 55, for “Central Government” (w.e.f.
20.05.2003).
Substituted by The Patents (Amendment) Act, 2002, S. 55, for “Central Government” (w.e.f.
20.05.2003).
www.lexcampus.in
S. 130(1)
S. 123
R. 119
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The Patents Act, 1970
partner in the firm.
(2) The Controller shall refuse to recognize as agent in respect of any business
under this Act any person who neither resides nor has a place of business
in India.
132. Savings in respect of other persons authorized to act as agent
Nothing in this Chapter shall be deemed to prohibit (a)
the applicant for a patent 228[***] from drafting any specification
or appearing or acting before the Controller; or
(b)
an advocate, not being a patent agent, from taking part in any
229
[hearing before the Controller on behalf of a party who is taking
part in any proceeding under this Act.]
F. 26
CHAPTER XXII
INTERNATIONAL ARRANGEMENTS
[133. Convention countries
230
Any country, which is a signatory or party or a group of countries, union of
countries or inter-governmental organisations which are signatories or parties
to an international, regional or bi-lateral treaty, convention or arrangement
to which India is also a signatory or party and which affords to the applicants
for patents in India or to citizens of India similar privileges as are granted
to their own citizens or citizens to their member countries in respect of the
grant of patents and protection of patent rights shall be a convention country
or convention countries for the purposes of this Act.]
S. 2(1)(d), 138(1)
134. Notification as to countries not providing for reciprocity
Where any country specified by the Central Government in this behalf by
notification in the Official Gazette does not accord to citizens of India the
same rights in respect of the grant of patents and the protection of patent
rights as it accords to its own nationals, no national of such country shall be
entitled, either solely or jointly with any other person, (a)
to apply for the grant of a patent or be registered as the proprietor
of a patent;
­228
The words, “or any person, not being a patent agent, who is duly authorised by the applicant”
omitted by The Patents (Amendment) Act, 2002, S. 56 (w.e.f. 20.05.2003).
­229
Substituted by The Patents (Amendment) Act, 2002, S. 56, for “proceedings under this Act
otherwise than by way of drafting any specifications” (w.e.f. 20.05.2003).
­ 30
2
Substituted by The Patents (Amendment) Act, 2005, S. 68, for S. 133 (w.e.f. 01.01.2005). Prior
to its substitution, S. 133 read as under:- “133. Notification as to convention countries. –
(1) With a view to the fulfilment of a treaty, convention or arrangement with any country
outside India which affords to applicants for patents in India or to citizens of India similar
privileges as are granted to its own citizens in respect of the grant of patents and the
protection of patent rights, the Central Government may, by notification in the Official
Gazette, declare such country to be a convention country for the purposes of this Act.
(2) A declaration under sub-section (1) may be made for the purposes either of all or of some
only of the provisions of this Act, and a country in the case of which a declaration made
for the purposes of some only of the provisions of this Act is in force shall be deemed to
be a convention country for the purposes of those provisions only.
*[Explanation.– For the purposes of this Chapter “county” includes a group or union of
countries or Inter-government organisation.]” – *Inserted by The Patents (Amendment) Act,
2002, S. 57 (w.e.f. 20.05.2003).
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S. 6
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(b)
(c)
to be registered as the assignee of the proprietor of a patent; or
to apply for a licence or hold any licence under a patent granted
under this Act.
135. Convention applications
(1) Without prejudice to the provisions contained in section 6, where a person
has made an application for a patent in respect of an invention in a
convention country (hereinafter referred to as the “basic application”), and
that person or the legal representative or assignee of that person makes
an application under this Act for a patent within twelve months after the
date on which the basic application was made, the priority date of a claim
of the complete specification, being a claim based on matter disclosed in
the basic application, is the date of making of the basic application.
Explanation. – Where applications have been made for similar protection
in respect of an invention in two or more convention countries, the period
of twelve months referred to in this sub-section shall be reckoned from the
date on which the earlier or earliest of the said applications was made.
(2) Where applications for protection have been made in one or more
convention countries in respect of two or more inventions which are
cognate or of which one is a modification of another, a single convention
application may, subject to the provisions contained in section 10, be made
in respect of those inventions at any time within twelve months from the
date of the earliest of the said applications for protection:
Provided that the fee payable on the making of any such application shall
be the same as if separate applications have been made in respect of each
of the said inventions, and the requirements of clause (b) of sub-section (1)
of section 136 shall, in the case of any such application, apply separately
to the applications for protection in respect of each of the said inventions.
231
[(3) In case of an application filed under the Patent Cooperation Treaty
designating India and claiming priority from a previously filed application
in India, the provisions of sub-sections (1) and (2) shall apply as if the
previously filed application were the basic application:
Provided that a request for examination under section 11B shall be made
only for one of the applications filed in India.]
S. 2(1)(c), 6,
137(1), 138(4); F. 1
S. 10
S. 136(1)(b)
136. Special provisions relating to convention applications
(1) Every convention application shall (a)
be accompanies by a complete specification; and
(b)
specify the date on which and the convention country in which the
application for protection, or as the case may be, the first of such
applications was made; and
(c)
state that no application for protection in respect of the invention
had been made in a convention country before that date by the
applicant or by any person from whom he derives title.
(2) Subject to the provisions contained in section 10, a complete specification filed
with a convention application may include claims in respect of developments
or, or additions to, the invention in respect of which the application for
protection was made in a convention country, being developments or additions
­231
Inserted by The Patents (Amendment) Act, 2005, S. 69 (w.e.f. 01.01.2005).
www.lexcampus.in
S. 11B
S. 135(2)
S. 6, 10
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The Patents Act, 1970
in respect of which the applicant would be entitled under the provisions of
section 6 to make a separate application for a patent.
(3) A convention application shall not be post-dated under sub-section (1) of
section 17 to a date later than the date on which under the provisions of
this Act the application could have been made.
S. 17(1)
137. Multiple priorities
(1) Where two or more applications for patents in respect of inventions have
been made in one or more convention countries and those inventions are
so related as to constitute one invention, one application may be made
by any or all of the persons referred to in sub-section (1) of section 135
within twelve months from the date on which the earlier or earliest of
those applications was made, in respect of the inventions disclosed in the
specifications which accompanied the basic application.
(2) The priority date of a claim of the complete specification, being a claim
based on matters disclosed in one or more of the basic applications, is the
date on which that matter was first so disclosed.
(3) For the purposes of this Act, a matter shall be deemed to have been
disclosed in a basic application for protection in a convention country
if it was claimed or disclosed (otherwise than by way of disclaimer or
acknowledgement of a prior art) in that application, or any documents
submitted by the applicant for protection in support of and at the same
time as that application, but no account shall be taken of any disclosure
effected by any such document unless a copy of the document is filed at
the patent office with the convention application or within such period as
may be prescribed after the filing of that application.
138. Supplementary provisions as to convention applications
[(1) Where a convention application is made in accordance with the
provisions of this Chapter, the applicant shall furnish, when required
by the Controller, in addition to the complete specification, copies of
the specifications or corresponding documents filed or deposited by the
applicant in the patent office of the convention country as referred to
in section 133 verified to the satisfaction of the Controller, within the
prescribed period from the date of communication by the Controller.]
(2) If any such specification or other document is in a foreign language, a
translation into English of the specification or document, verified by
affidavit or otherwise to the satisfaction of the Controller, shall be
233
[furnished when required by the Controller.]
(3) For the purposes of this Act, the date on which an application was made
232
R. 121
S. 11(6), 135(1)
­232
Substituted by The Patents (Amendment) Act, 2005, S. 70, for sub-S. (1) (w.e.f. 01.01.2005).
Prior to its substitution, sub-S. (1) read as under:- “(1) Where a convention application is made
in accordance with the provisions of this Chapter, the applicant shall furnish, in addition to
the complete specification, copies of the specifications or corresponding documents filed or
deposited by the applicant in the patent office of the convention country in which the basic
application was made, certified by the official chief or head of the patent office of the convention
country, or otherwise verified to the satisfaction of the Controller, along with the application or
within three months thereafter, or within such further period as the Controller may on good
cause allow.” *Inserted by The Patents (Amendment) Act, 2002, S. 58 (w.e.f. 20.05.2003).
­ 33
2
Substituted by The Patents (Amendment) Act, 2002, S. 58, for “annexed to the specification or
document” (w.e.f. 20.05.2003).
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The Patents Act, 1970
in a convention country is such date as the Controller is satisfied, by
certificate of the official chief or head of the patent office of the convention
country or otherwise, in the date on which the application was made in
that convention country.
234
[(4) An international application filed under the Patent Cooperation
Treaty designating India shall have effect of filing an application for
patent under section 7, section 54 and section 135, as the case may be,
and the title, description, claim and abstract and drawings, if any, filed in
the international application shall be taken as complete specification for
the purposes of this Act.
(5) The filing date of application for patent and its complete specification
processed by the patent office as designated office shall be the international
filing date accorded under the Patent Cooperation Treaty.
(6) Amendment, if any, proposed by the applicant for an international
application designating India or designating and electing India before
international searching authority or preliminary examination authority
shall, if the applicant so desires, be taken as an amendment made before
the patent office.]
S. 7, 54, 135
139. Other provisions of Act to apply to convention applications
Save as otherwise provided in this Chapter, all the provisions of this Act
shall apply in relation to a convention application and a patent granted in
pursuance thereof as they apply in relation to an ordinary application and a
patent granted in pursuance thereof.
CHAPTER XXIII
MISCELLANEOUS
140. Avoidance of certain restrictive conditions
(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) 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; or
(b) to prohibit the purchaser, lessee or licensee from using, or to
restrict in any manner or to any extent the right of the purchaser,
lessee or licensee, 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; or
­234
Inserted by The Patents (Amendment) Act, 2002, S. 58 (w.e.f. 20.05.2003).
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The Patents Act, 1970
(2)
(3)
(4)
(5)
(c) to prohibit the purchaser, lessee or licensee from using or
to restrict in any manner or to any extent the right of the
purchaser, lessee or licensee to use any process other than
the patented process, or
235
[(d) to provide exclusive grant back, prevention to challenges to
validity of patent and coercive package licensing,]
and any such condition shall be void.
A condition of the nature referred to in clause (a) or clause (b) or clause (c)
of sub-section (1) shall not cease to be a condition falling within that subsection merely by reason of the fact that the agreement containing it has
been entered into separately, whether before or after the contract relating
to the sale, lease or licence of the patented article or process.
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:
Provided that this sub-section shall not apply if the plaintiff is not a
party to the contract and proves to the satisfaction of the court that the
restrictive condition was inserted in the contract without his knowledge
and consent, express or implied.
Nothing in this section shall (a)
affect a condition in a contract by which a person is prohibited
from selling goods other than those of a particular person;
(b)
validate a contract which, but for this section, would be invalid;
(c)
affect a condition in a contract for the lease of, or licence to use, a
patented article, by which the lessor or licensor reserves to himself
or his nominee the right to supply such new parts of the patented
article as may be required or to put or keep it in repair.
236
[Omitted by the Patents (Amendment) Act, 2002]
141. Determination of certain contracts
(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, 237[***], 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, as the case
may be, of the patent on giving three months notice’ in writing to the
other party.
(2) The provisions of this section shall be without prejudice to any right of
determining a contract exercisable apart from this section.
­235
­236
Inserted by The Patents (Amendment) Act, 2002, S. 59 (w.e.f. 20.05.2003).
Sub-S. (5) omitted by The Patents (Amendment) Act, 2002, S. 59 (w.e.f. 20.05.2003). Prior
to its omission, sub-S. (5) read as under:- “(5) The provisions of this section shall also apply
to contracts made before the commencement of this Act if, and in so far as, any restrictive
conditions declared unlawful by this section continue in force after the expiration of one year
from such commencement.”
­ 37
2
The words, “whether made before or after the commencement of this Act,” omitted by The
Patents (Amendment) Act, 2002, S. 60 (w.e.f. 20.05.2003).
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The Patents Act, 1970
142. Fees
(1) There shall be paid in respect of the grant of patents and applications
therefor, and in respect of other matters in relation to the grant of patents
under this Act, such fees as may be prescribed by the Central Government.
(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.
238
[(3) Where a fee is payable in respect of the filing of a document at the
patent office, 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
at the office if the fee has not been paid within such time.]
(4) Where a principal patent is granted later than two years from the date
of filing of 239[the application], the fees which have become due in the
meantime may be paid within a term of three months from the date of the
recording of the patent in the register 240[or within the extended period
not later than nine months from the date of recording.]
S. 60(1)
[143. Restrictions upon publication of specification
241
Subject to the provisions of Chapter VII, an application for a patent, and any
specification filed in pursuance thereof, shall not, except with the consent
of the applicant, be published by the Controller before the expiration of the
period prescribed under sub-section (1) of section 11A or before the same is
open to public inspection in pursuance of sub-section (3) of section 11A or
section 43.]
S. 11A, 43
144. Reports of Examiners to be confidential
The reports of examiners to the Controller under this Act shall not be open
to public inspection or be published by the Controller; and such reports shall
not be liable to production or inspection in any legal proceeding unless the
court certifies that the production or inspection is desirable in the interests of
justice, and ought to be allowed.
[145. Publication of official journal
242
The Controller shall publish periodically an official journal which shall
contain such information as may be required to be published by or under the
provisions of this Act or any rule made thereunder.]
­238
­239
­240
­241
­242
Substituted by The Patents (Amendment) Act, 2002, S. 61, for sub-S. (3) (w.e.f. 20.05.2003).
Prior to its substitution sub-S. (3) read as under:- “(3) Where a fee is payable in respect of the
filing of a document at the patent office, the document shall be deemed not to have been filed
at the office until the fee has been paid.”
Substituted by The Patents (Amendment) Act, 2005, S. 71, for “the complete specification”
(w.e.f. 01.01.2005).
Inserted by The Patents (Amendment) Act, 2002, S. 61 (w.e.f. 20.05.2003).
Substituted by the Patents (Amendment) Act, 2005, S. 72, for S. 143 (w.e.f. 01.01.2005). Prior
to its substitution, S. 143 read as under:- “143. Restrictions upon publication of specifications.Subject to the provisions of Chapter VII, an application for a patent, and any specification
filed in pursuance thereof, shall not, except with the consent of the applicant, be published by
the Controller *[before eighteen months from the date of application or the priority date of
the application or before the same is open to public inspection] in pursuance of section 23.” *
Substituted by The Patents (Amendment) Act, 2002, S. 62 (w.e.f. 20.05.2003).
Substituted by The Patents (Amendment) Act, 2005, S. 73, for S. 145 (w.e.f. 01.01.2005).
Prior to its substitution, S. 145 read as under:- “145. Publication of patented inventions.–
The Controller shall issue periodically a publication of patented inventions containing such
information as the Central Government may direct.”
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The Patents Act, 1970
146. Power of Controller to call for information from patentees
(1) 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 to him within two months from the date of such notice or
within such further time as the Controller may allow, such information
or such periodical statements as to the extent to which the patented
invention has been commercially worked in India as may be specified in
the notice.
(2) Without prejudice to the provisions of 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.
(3) The Controller may publish the information received by him under subsection (1) or sub-section (2) in such manner as may be prescribed.
S. 122
R. 131; F. 27
147. Evidence of entries, documents, etc.
(1) A certificate purporting to be signed by the Controller as to any entry,
matter or thing which he is authorised by this Act or any rules made
thereunder to make or do, shall be prima facie evidence of the entry
having been made and of the contents thereof and of the matter or thing
having been done or omitted to be done.
(2) A copy of any entry in any register or of any document kept in the patent
office or of any patent, or an extract from any such register or document,
purporting to be certified by the Controller and sealed with the seal of
the patent office shall be admitted in evidence in all courts, and in all
proceedings, without further proof or production of the original.
(3) The Controller or any other officer of the patent office shall not, in any
legal proceedings to which he is not a party, be compellable to produce the
register or any other document in his custody, the contents of which can
be proved by the production of a certified copy issued under this Act or to
appear as a witness to prove the matters therein recorded unless by order
of the court made for special causes.
148. Declaration by infant, lunatic, etc.
(1) If any person is, by reason of minority, lunacy or other disability, incapable
of making any statement or doing anything required or permitted by or
under this Act, the lawful guardian, committee or manager (if any) of the
person subject to the disability, or if there be none, any person appointed
by any court possessing jurisdiction in respect of his property, may
make such statement or a statement as nearly corresponding thereto as
circumstances permit, and do such thing in the name and on behalf of the
person subject to the disability.
(2) An appointment may be made by the court for the purposes of this section
upon the petition of any person acting on behalf of the person subject
to the disability or of any other person interested in the making of the
statement or the doing of the thing.
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The Patents Act, 1970
149. Service of notions, etc., by post.
Any notice required or authorised to be given by or under this Act and any
application or other document so authorised or required to be made or filed,
may be given, made or filed by post.
R. 6
150. Security for costs
If any party by whom notice of any opposition is given under this Act or by
whom application is made to the Controller for the grant of a licence under
a patent neither resides nor carries on business in India, the Controller may
require him to give security for the costs of the proceedings, and in default of
such security being given may treat the opposition or application as abandoned.
151. Transmission of orders of courts to Controller
(1) Every order of 243[the High Court 244[***]] on a petition for revocation,
including orders granting certificates of validity of any claim, shall be
transmitted by 245[the High Court 246[***]] to the Controller who shall
cause an entry thereof and reference thereto to be made in the register.
(2) Where in any suit for infringement of a patent or in any suit under section
106 the validity of any claim or a specification is contested and that claim
is found by the court to be valid or not valid, as the case may be, the court
shall transmit a copy of its judgment and decree to the Controller who
shall on receipt thereof cause an entry in relation to such proceeding to be
made in the prescribed manner in a supplemental record.
(3) The provisions of sub-sections (1) and (2) shall also apply to the court to
which appeals are preferred against decisions of 247[the courts] referred to
in those sub-sections.
152. 248[Omitted by the Patents (Amendment) Act, 2005]
153. Information relating to patents
A person making a request to the Controller in the prescribed manner for
information relating to any such matters as may be prescribed as respects
any patent specified in the request or as respects any application for a patent
so specified shall be entitled, subject to the payment of the prescribed fee, to
have information supplied to him accordingly.
­243
­244
­245
­246
­247
­248
Substituted by The Patents (Amendment) Act, 2005, S. 74 (a), for “the High Court” (w.e.f.
01.01.2005).
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "or the Appellate
Board", omitted
Substituted by The Patents (Amendment) Act, 2005, S. 74 (a), for “the High Court” (w.e.f.
01.01.2005).
Omitted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "or the Appellate
Board", omitted
Substituted by The Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021); the words "the Appellate
Board or the courts, as the case may be" substituted by the words "the courts".
Prior to its omission, S. 152 read as under:- “152. Transmission of copies of specifications, etc.,
and inspection thereof.– Copies of all such specifications, drawings and amendments left at
the patent office as become open to public inspection under the provisions of this Act, shall
be transmitted, as soon as may be, after the printed copies thereof are available, to such
authorities as the Central Government may appoint in this behalf, and shall be open to the
inspection of any person at all reasonable times at places to be specified by those authorities
and with the approval of the Central Government.”
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S. 106
R. 134
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The Patents Act, 1970
154. Loss or destruction of patents
If a patent is lost or destroyed, or its non-production is accounted for to the
satisfaction of the Controller, the Controller may at any time, on application
made in the prescribed manner and on payment of the prescribed fee, cause a
duplicate thereof to be sealed and delivered to the applicant.
155. Reports of Controller to be placed before Parliament
The Central Government shall cause to be placed before both Houses of
Parliament once a year a report respecting the execution of this Act by or
under the Controller.
156. Patent to bind Government
Subject to the other provisions contained in this Act, a patent shall have to
all intents the like effect as against Government as it has against any person.
157. Right of Government to sell or use forfeited articles
Nothing in this Act shall affect the power of the Government or of any person
deriving title directly or indirectly from the Government to sell or use any
articles forfeited under any law for the time being in force.
[157A. Protection of security of India
249
Notwithstanding anything contained in this Act, the Central Government shall(a)
not disclose any information relating to any patentable invention or
any application relating to the grant of patent under this Act, which
it considers prejudicial to the interest of the security of India;
(b)
take any action including the revocation of any patent which it
considers necessary in the interest of the security of India by
issue of a notification in the Official Gazette to that effect.
Explanation.-For the purposes of this section, the expression “security of
India” includes any action necessary for the security of India which(i)
relates to fissionable materials or the materials from which they
are derived; or
(ii)
relates to the traffic in arms, ammunition and implements of war and
to such traffic in other goods and materials as is carried on directly or
indirectly for the purpose of supplying a military establishment; or
(iii)
is taken in time of war or other emergency in international relations.]
­249
Substituted by The Patents (Amendment) Act, 2002, S. 63, for S. 157-A (w.e.f. 20.05.2003).
Prior to its substitution S. 157-A read as under:- “157A. Protection of security of India.–
Notwithstanding anything contained in this Act, the Central Government shall(a) not disclose any information relating to any patentable invention or any application
relating to the grant of patent under this Act, which it considers prejudicial to the
interest of the security of India;
(b) take any action including the revocation of any patent which it considers necessary in the
interest of the security of India by issue of a notification in the Official Gazette to that effect.
Explanation.- For the purposes of this section, the expression “security of India” includes any
action necessary for the security of India which(i) relates to fissionable materials or the materials from which they are derived; or
(ii) relates to the traffic in arms, ammunition and implements of war and to such traffic
in other goods and materials as is carried on directly or indirectly for the purpose of
supplying a military establishment; or
(iii) is taken in time of war or other emergency in international relations.” - *Inserted by Act
17 of 1999, S. 8 (w.r.e.f. 01.01.1995).
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The Patents Act, 1970
158. Power of High Court to make rules
The High Court may make rules consistent with this Act as to the conduct
and procedure in respect of all proceedings before it under this Act.
159. Power of Central Government to make rules
(1) The Central Government may, by notification in the Official Gazette,
make rules for carrying out the purposes of this Act.
(2) Without prejudice to the generality of the foregoing power, the Central
Government may make rules to provide for all or any of the following
matters, namely: (i)
the form and manner in which any application for a patent, any
specifications or drawings and any other application or document
may be filed in the patent office;
250
[(ia) the period which the Controller may allow for filing of statement and
undertaking for in respect of applications under sub-section (1), the
period within which the details relating to processing of applications
may be filed before the Controller and the details to be furnished by
the applicant to the Controller under sub-section (2) of section 8;
(ib)
the period within which a reference to the deposit of materials
shall be made in the specification under sub-clause (A) of clause
(ii) of the proviso to sub-section (4) of section 10;
(ic)
the period for which application for patent shall not be open to
the public under sub-section (1) and the manner in which the
applicant may make a request to the Controller to publish his
application under sub-section (2) of section 11 A;
(id)
the manner of making the request for examination for an application
for patent and the period within which such examination shall be
made under sub-sections (1) and (3) of section 11B;
(ie)
the manner in which an application for withdrawal of an application
for grant of a patent shall be made and the period within which a request
for examination from the date of revocation of secrecy directions shall
be made under the proviso to sub-section (4) of section 11B.]
(ii)
the time within which any act or thing may be done under this
Act, including the manner in which and the time within which
any matter may be 251[published] under this Act;
(iii)
the fees which may be payable under this Act and the manner
252
[and time] of payments of such fees;
(iv)
the matters in respect of which the Examiner may make a report
to the Controller;
253
[(v) the manner in which and the period within which the Controller
S. 10(4)
S. 11A
S. 11B(1), 11B(3)
­250
Substituted by The Patents (Amendment) Act, 2005, S. 76 (i)(a), for Cls. (ia) and (ib) (w.e.f.
01.01.2005). Prior to its substitution, Cls. (ia) and (ib) read as under:- “(ia) the details to be
furnished by the applicant under sub-section (2) of section 8.
(ib) the manner of making the request for examination of an application for patent under subsections (1), (2) and (3) of section 11-B;” *Inserted by The Patents (Amendment) Act, 2002, S.
64 (w.e.f. 20.05.2003).
­251
Substituted by The Patents (Amendment) Act, 2005, S. 76 (i)(b), for “advertised” (w.e.f.
01.01.2005).
­ 52
2
Inserted by The Patents (Amendment) Act, 2002, S. 64 (w.e.f. 20.05.2003).
­253
Substituted by The Patents (Amendment) Act, 2005, S. 76 (i)(c), for Cls. (v) (w.e.f. 01.01.2005).
Prior to its substitution, Cls. (v) read as under:-“(v) the form of request for the sealing of a patent.
www.lexcampus.in
S. 11B(4)
S. 8(2)
S. 25(1)
94
The Patents Act, 1970
shall consider and dispose off a representation under sub-section
(1) of section 25;
(va)
the period within which the Controller is required to dispose off
an application under section 39;]
(vi)
the form and manner in which and the time within which any
notice may be given under this Act;
(vii)
the provisions which may be inserted in an order for restoration of a
patent for the protection of persons who may have availed themselves
of the subject matter of the patent after the patent had ceased;
(viii) the establishment of branch offices of the patent office and the
regulation generally of the business of the patent office, including
its branch offices;
(ix)
the maintenance of the register of patents 254[and the safeguards
to be observed in the maintenance of such register in computer
floppies, diskettes or any other electronic form] and the matters
to be entered therein;
(x)
the matters in respect of which the Controller shall have powers
of a civil court;
(xi)
the time when and the manner in which the register and any other
document open to inspection may be inspected under this Act;
(xii)
the qualifications of, and the preparation of a roll of, scientific
advisers for the purpose of section 115;
255
[(xiia) Omitted by the Tribunals Reforms Act, 2021]
256
[(xiib) Omitted by the Tribunals Reforms Act, 2021]
257
[(xiic) Omitted by the Tribunals Reforms Act, 2021];]
(xiii) the manner in which any compensation for acquisition by
Government of an invention may be paid;
(xiv)
the manner in which the register of patent agents may be
maintained 258[under sub-section (1) of section 125 and the
safeguards to be observed in the maintenance of such register
of patent agents on computer floppies, diskettes or any other
electronic form under sub-section (2) of that section]; and conduct
of qualifying examinations for patent agents; and matters
connected with their practice and conduct, including the taking of
disciplinary proceedings against patent agents for misconduct;
(xv)
he regulation of the making, printing, publishing and selling of
indexes to, and abridgments of, specifications and other documents
in the patent office; and the inspection of indexes and abridgments
and other documents;
(xvi)
any other matter which has to be or may be prescribed.
(3) The power to make rules under this section shall be subject to condition of
the rules being made after previous publication.
259
[Provided that the Central Government may, if it is satisfied that
­254
­255
­256
­257
­258
­259
S. 39
S. 115
S. 117
S. 117A
S. 117D
Substituted by The Patent (Amendment) Act of 2005, S. 76, for clause (v) (w.e.f. 1.01.2005)
Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021).
Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021).
Omitted by the Tribunals Reforms Act, 2021 (w.e.f. 04-04-2021).
Inserted by The Patents (Amendment) Act, 2002, S. 64 (w.e.f. 20.05.2003).
Added by The Patents (Amendment) Act, 2005, S. 76 (ii) (w.e.f. 01.01.2005).
www.lexcampus.in
S. 125
95
The Patents Act, 1970
circumstances exist which render it practically not possible to comply with
such condition of previous publication, dispense with such compliance.]
160. Rules to be placed before Parliament
Every rule made under this Act shall be laid, as soon as may be after it is made,
before each House of Parliament while it is in session for a total period of thirty
days which may be comprised in one session or 260[in two or more successive
sessions, and, if before the expiry of the session immediately following the
session or the successive sessions aforesaid], both Houses agree in making any
modification in the rule or both Houses agree that the rule should not be made,
the rule shall thereafter have effect only in such modified form or be of no effect,
as the case may be; so, however, that any such modification or annulment shall
be without prejudice to the validity of anything previously done under that rule.
161. 261[Omitted by the Patents (Amendment) Act, 2002]
162. Repeal of Act 2 of 1911 in so far as it relates to patents and savings
(1) The Indian Patents and Designs Act, 1911, insofar as it relates to patents,
is hereby repealed, that is to say, the said Act shall be amended in the
manner specified in the Schedule.
(2) 262[Omitted by the Patents (Amendment) Act, 2002]
­260
­261
Substituted by Act 4 of 1986, S. 2 and Sch. (w.e.f. 15.05.1986).
Prior to omission, S. 161 read as under:- “161. Special provisions with respect to certain
applications deemed to have been refused under Act 2 of 1911. –
(1) Where, as a result of action taken by the Controller under section 12 of the Atomic Energy
Act, 1948, or under section 20 of the Atomic Energy Act, 1962, an application for a patent
made before the commencement of this Act could not be accepted within the time specified
for the purpose in the Indian Patents and Designs Act, 1911 (hereafter in this section
referred to as the repealed Act), and, consequently, was deemed to have been refused by
reason of subsection (4) of section 5 of the repealed Act, the application may, if the applicant
or, if he is dead, his legal representative makes a request in that behalf to the Controller in
the prescribed manner within three months from the commencement of this Act, be revived
and shall be disposed of as if it were an application pending at the commencement of this
Act to which the provisions of this Act apply by reason of sub-section (3) of section 162.
(2) The Controller may, before proceeding to act upon any such request as is referred to in
sub-section (1), refer the matter to the Central Government for directions as to whether
the invention is one relating to atomic energy and shall act in conformity with the
directions issued by it.
(3) Where in pursuance of any such application as referred to in sub-section (1) a patent is
granted, the rights of the patentee shall be subject to such conditions as the Controller
thinks fit to impose for the protection or compensation of persons who may have begun
to avail themselves of, or have taken definite steps by contract or otherwise to avail
themselves of, the patented invention before the date of advertisement of the acceptance
of the complete specification.
(4) A patent granted in pursuance of any such application as is referred to in sub-section
(1) shall be dated as of the date on which the request for reviving such application was
made under sub-section (1).
­ 62
2
Sub-S (2) omitted by The Patents (Amendment) Act, 2002, S. 66 (w.e.f. 20.05.2003). Prior to
its omission sub-S. (2) read as under:- “(2) Notwithstanding the repeal of the Indian Patents
and Designs Act, 1911, in so far as it relates to patents(a) the provisions of section 21A of that Act5 and of any rules made thereunder shall
continue to apply in relation to any patent granted before the commencement of this
Act in pursuance of that section, and
(b) the renewal fee in respect of a patent granted under that Act shall be as fixed thereunder.”
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96
The Patents Act, 1970
(3) 263[Omitted by the Patents (Amendment) Act, 2002]
(4) The mention of particular matters in this section shall not prejudice the
general application of the General Clause Act, 1897 (10 of 1897), with
respect of repeals.
(5) Notwithstanding anything contained in this Act, any suit for infringement
of a patent or any proceeding for revocation of a patent, pending in any
court at the commencement of this Act, may be continued and disposed of,
as if this Act had not been passed.
163. 264[Omitted by the Patents (Amendment) Act, 2005.]
­263
Sub-S (3) omitted by The Patents (Amendment) Act, 2002, S. 66 (w.e.f. 20.05.2003). Prior
to its omission sub-S. (3) read as under:- “(3) Save as otherwise provided in sub-section
(2), the provisions of this Act shall apply to any application for a patent pending at the
commencement of this Act and to any proceedings consequent thereon and to any patent
granted in pursuance thereof.”
­ 64
2
Prior to its omission, S. 163 read as under:- “163. Amendment of Act 43 of 1958.– In subsection (1) of section 4 of the Trade and Merchandise Marks Act, 1958, the words and figures
“and the Controller of Patents and Designs for the purposes of the Indian Patents and
Designs Act, 1911 (2 of 1911) “ shall be omitted.
www.lexcampus.in
THE PATENTS RULES, 2003
[As Amended by the Patents (Amendment) Rules, 2021, vide GSR 646 (E),
Dated. 21.09.2021]
S.O.493(E).-WHEREAS certain draft rules were published in exercise of the
powers conferred by section 159 of the Patents Act, 1970 (39 of 1970) vide
notification of the Government of India in Ministry of Commerce and Industry
(Department of Industrial Policy and Promotion) vide Number S.O. 1018(E)
dated the 20th September, 2002, in Part II, Section 3, sub-section (ii) of the
Gazette of India, (Extraordinary) dated 20th September, 2002 for inviting
objections and suggestions from persons likely to be affected thereby before
expiry of a period of thirty days from the date on which copies of the Gazette
containing the Notification were made available to the public;
AND WHEREAS the copies of the Gazette containing the said Notification
were made available to the public on 3rd October, 2002.
AND WHEREAS objections and suggestions received from the public on
the said draft rules have been considered by the Central Government;
Now, THEREFORE, in exercise of the powers conferred by section 159 of
the Patents Act, 1970 (39 of 1970) and in supersession of the Patents Rules,
1972 published in the Gazette of India, vide S.O. 301(E) dated 20th April, 1972
in Part II, Section 3, sub- section (ii), except as respect things done or omitted
to be done before such supersession, Central Government hereby makes the
following rules, namely:—
CHAPTER I
PRELIMINARY
1. Short title and commencement
(1) These rules may be called the Patents Rules, 2003.
(2) They shall come into force on the date265 on which the Patents (Amendment)
Act, 2002 comes into force.
2. Definitions
In these rules, unless the context otherwise requires,(a)
“Act” means the Patents Act, 1970 (39 of 1970);
(b)
“appropriate office” means the appropriate office of the patent
office as specified in rule 4;
(c)
“article” includes any substance or material, and any plant,
machinery or apparatus, whether affixed to land or not;
266
[(ca) “educational institution” means a university established or
incorporated by or under Central Act, a Provincial Act, or a State
Act, and includes any other educational institution as recognised
by an authority designated by the Central Government or the
State Government or the Union territories in this regard;”.]
­265
­266
R. 4, 18, 19
S. 2(1)(o), 82
Brought into force on 20.05.2003.
Inserted vide G.S.R. 646(E). dated 21-09-2021 w.e.f (21-09-2021)
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98
The Patents Rules, 2003
(d)
“Form” means a Form specified in the Second Schedule;
267
[(da) “person other than a natural person” shall include a “small entity”;]
268
[(db) “Request for examination” means a request for examination,
including expedited examination, made under section 11B in
respect of rule 24B or rule 24C;]
(e)
“Schedule” means Schedule to these rules;
(f)
“section” means a section of the Act;
269
[(fa) “small entity” means,(i) in case of an enterprise engaged in the manufacture or
production of goods, an enterprise where the investment
in plant and machinery does not exceed the limit specified
for a medium enterprise under clause (a) of sub-section (1)
of section 7 of the Micro, Small and Medium Enterprises
Development Act, 2006 (27 of 2006); and
(ii) in case of an enterprise engaged in providing or rendering of
services, an enterprise where the investment in equipment
is not more than the limit specified for medium enterprises
under clause (b) of sub-section (1) of Section 7 of the Micro,
Small and Medium Enterprises Development Act, 2006.
Explanation 1 – For the purpose of this clause, “enterprise” means an
industrial undertaking or a business concern or any other establishment, by
whatever name called, engaged in the manufacture or production of goods, in
any manner, pertaining to any industry specified in the First Schedule to the
Industries (Development and Regulation) Act, 1951 (65 of 1951) or engaged
in providing or rendering of any service or services in such an industry.
Explanation 2 – In calculating the investment in plant and machinery,
the cost of pollution control, research and development, industrial safety
devices and such other things as may be specified by notification under
the Micro, Small and Medium Enterprises Development Act, 2006 (27 of
2006), shall be excluded.
Explanation 3 – The reference rates of foreign currency of the Reserve
Bank of India shall prevail.]
­267
­268
­269
R. 2(f), 7
S. 11B R. 24B,
24C
Inserted vide G.S.R. 125(E), dated 28.02.2014, w.e.f. 28.02.2014.
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
Inserted vide G.S.R. 125(E), dated 28.02.2014, w.e.f. 28.02.2014.
www.lexcampus.in
R. 2(da)
99
The Patents Rules, 2003
[(fb) "Startup" means
(a) an entity in India recognised as a startup by the competent
authority under Startup India initiative.
(b) In case of a foreign entity, an entity fulfilling the criteria
for turnover and period of incorporation/ registration as per
Startup India Initiative and submitting declaration to that
effect.
Explanation: In calculating the turnover, reference rates of foreign
currency of Reserve Bank of India shall prevail.]
(g)
words and expressions used, but not defined in these rules, shall
have the meanings respectively assigned to them in the Act.
270
F. 28
3. Prescribed particulars
Save as otherwise provided in these rules, the particulars contained in a Form
are hereby prescribed as the particulars, if any, required under the relevant
provision or provisions of the Act.
4. Appropriate office
(1) The appropriate office of the patent office shall –
(i)
for all the proceedings under the Act, 271[***] be the head office of
the patent office or the branch office, as the case may be, within
whose territorial limits-
R. 2(b), 18, 19
­270
Subs. By G.S.R. 1472€, dated 1st December, 2017, for sub-rule (fb) (w.e.f 1-12-2017). Sub-rule
(fb) before substitution read as follows:
“(fb) “Startup” means an entity, where—
(i) more than five years have not lapsed from the date of its incorporation or registration;
(ii) the turnover for any of the financial years, out of the aforementioned five years, did not
exceed rupees twenty-five crores; and
(iii) it is working towards innovation, development, deployment or commercialisation of new
products, processes or services driven by technology or intellectual property:
Provided that any such entity formed by splitting up or reconstruction of a business
already in existence shall not be considered as a startup.
Provided further that the mere act of developing—
(a) products or services or processes which do not have potential for commercialisation,
or
(b) undifferentiated products or services or processes, or
(c) products or services or processes with no or limited incremental value for customers
or workflow, would not be covered under this definition.
Explanation 1. – An entity shall cease to be a startup on completion of five years from
the date of its incorporation/ or registration or if its turnover for any previous year
exceeds rupees twenty-five crores.
Explanation 2. – Entity means a private limited company (as defined in the Companies
Act, 2013), or a registered partnership firm registered under section 59 of the Partnership
Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act,
2002.
Explanation 3. – The term “Turnover” shall have the same meaning as defined in the
Companies Act, 2013 (18 of 2013).
Explanation 4. – An entity is considered to be working towards innovation, development,
deployment or commercialisation of new products, processes or services driven by
technology or intellectual property if it aims to develop and commercialise a new
product or service or process, or a significantly improved existing product or service or
process that will create or add value for customers or workflow.
Explanation 5. – The reference rates of foreign currency of the Reserve Bank of India
shall prevail.”
­ 71
2
The words and figures “other than those under section 39, 65, and 125” omitted by S.O.
657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
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100 The Patents Rules, 2003
(a)
(b)
the applicant or first mentioned applicant in case of joint
applicants for a patent, normally resides or has his domicile or
has a place of business or the place from where the invention
actually originated; or
the applicant for a patent or party in a proceeding if he has no
place of business or domicile in India, the address for service in
India given by such applicant or party is situated; and
272
[***]
(2) The appropriate office once decided in respect of any proceedings under
the Act shall not ordinarily be changed.
273
[(3) Notwithstanding anything contained in sub-rule (2), the Controller
may transfer an application for patent so filed, to head office or, as the
case may be, branch office of the Patent Office.
(4) Notwithstanding anything contained in sub-rule (1), further application
referred to in section 16 of the Act, shall be filed at the appropriate office
of the first mentioned application only.
(5) All further applications referred to Section 16 of the Act filed in an office
other than the appropriate office of the first mentioned application, before
the commencement of the Patents (Amendment) Rules, 2013 shall be
transferred to the appropriate office of the first mentioned application.]
274
R. 5
S. 16
S. 16
[5. Address for service
Every person, concerned in any proceedings to which the Act or these rules
relate and every patentee, shall furnish to the Controller an address for service,
including a postal address in India and an e-mail address, and such address
for service shall be treated for all purposes connected with such proceedings
or patent as the address of the person concerned in the proceedings or of the
patentee. Unless such an address for service is given, the Controller shall be
under no obligation either to proceed or deal with any proceeding, or patent
or to send any notice that may be required to be given under the Act or these
rules and the Controller may take suo moto decision in the matter:
Provided that a patent agent shall also be required to furnish to the
Controller a mobile number registered in India.]
­272
Cl. (ii) omitted by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006). Prior to its omission, Cl.
(ii) read as under:- “(ii) for proceedings under section [***] 39, 65, and 125 be the head office
of the patent office.”
­273
Inserted vide SO 1029(E), dated 23.04.2013, (w.e.f. 15.10.2013 vide SO 3101 (E), dated
14.10.2013).
­ 74
2
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
5 read as under:
“5. Address for service. – Every person, concerned in any proceedings to which the Act
or these rules relate and every patentee, shall furnish to the Controller an address
for service in India and that address may be treated for all purposes connected with
such proceedings or patent as the address of the person concerned in the proceedings
or of the patentee. Unless such an address is given, the Controller shall be under no
obligation either to proceed or deal with any proceeding, or patent or to send any notice
that may be required to be given under the Act or these rules and the Controller may
take suomotu decision in the matter.”
www.lexcampus.in
R. 6(2)
101
The Patents Rules, 2003
6. Leaving and serving documents
[(1) Any application, notice or other document authorized or required to
be filed, left, made or given at the patent office, or to the Controller or to
any other person under the Act or these rules, may be tendered by hand
or sent by a letter addressed to the Controller at the appropriate office
or to that person through post or registered post or speed post 276[***]
or by electronic transmission duly authenticated. If it is sent by post or
registered post or speed post 277[***] or by electronic transmission duly
authenticated, it shall be deemed to have been filed, left, made or given at
the time when the mail containing the same would have been delivered
in the ordinary course of post or registered post or speed post 278[***]
or by electronic transmission duly authenticated, as the case may be.
In proving such sending, it shall be sufficient to show that the mail was
properly addressed and transmitted.
279
[***]]
280
[(1A) Notwithstanding anything contained in sub-rule (1), a patent agent
shall file, leave, make or give all documents only by electronic transmission
duly authenticated:
Provided that any document, if asked to be submitted in original, shall be
submitted within a period of fifteen days, failing which such documents
shall be deemed not to have been filed.”]
281
[(2) Any written communication addressed to a patentee at his postal
address or e-mail address, as it appears on the register of patents or at
his address for service given under rule 5, or to any applicant or opponent
in any proceedings under the Act or these rules, at the postal address or
e-mail address, appearing on the application or notice of opposition, or
given for service, shall be deemed to be properly addressed.]
(3) All notices and all written communications addressed to a patentee, or to any
applicant or opponent in any proceedings under the Act or these rules, and
all documents forwarded to the patentee or to the said applicant or opponent,
shall, except when they are sent by special messenger, be sent by registered
post or speed post 282[***] or by electronic transmission duly authenticated.
(4) The date of a notice or a written communication addressed to a patentee
or to any applicant or opponent in any proceedings under the Act and
these rules shall be the date of dispatch of the said notice or written
communication, by registered post or speed post 283[***] or fax or by
electronic transmission duly authenticated, as the case may be, unless
otherwise specified under the Act or these rules.
(5) In case of delay in receipt of a document or a communication sent by the
patent office to a party to any proceedings under the Act or these rules, the
delay in transmitting or resubmitting a document to the patent office or
275
­275
­276
­277
­278
­279
­280
­281
­282
­283
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (1) (w.e.f. 01.01.2005).
Words “or courier service” omitted vide GSR 523 (E), dated 16.05.2016, (w.e.f. 16.05.2016).
Words “or courier service” omitted vide GSR 523 (E), dated 16.05.2016, (w.e.f. 16.05.2016).
Words “or courier service” omitted vide GSR 523 (E), dated 16.05.2016, (w.e.f. 16.05.2016)
Proviso omitted by the Patents (Amendment) Rules, 2006. (w.e.f. 05.05.2006).
Inserted vide G.S.R. 663(E), dated 17.09.2019, w.e.f. 17.09.2019.
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
Words “or courier service” omitted by Patents (Amendment) Rules, 2016, w.e.f. 16.05.2016.
Words “or courier” omitted by Patents (Amendment) Rules, 2016, w.e.f. 16.05.2016.
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R. 5
102
The Patents Rules, 2003
doing any act by the party may be condoned by the Controller if a petition
for such condonation of delay is made by the party to the Controller
immediately after the receipt of the document or a communication along
with a statement regarding the circumstances of the fact and evidence in
support of the statement:
Provided that the delay condoned by the Controller shall not exceed the
period between the date on which the party was supposed to have received
the document or communication by ordinary course of mail or electronic
transmission and the actual date of receipt of the same.
284
[(6) Without prejudice to sub-rule (5) and notwithstanding anything
contained in sub-rule (2) of rule 138, the Controller may condone the
delay in transmitting or resubmitting a document to the patent office or
performing any act by a party, if a petition for such condonation of delay
is made by the party to the Controller along with a statement regarding
the circumstances of the fact and evidence in support of the statement, to
the satisfaction of the Controller, that the delay was due to war, revolution,
civil disorder, strike, natural calamity, a general unavailability of electronic
communication services or other like reason in the locality where the
party resides or has place of business, and that such situation was of such
severity that it disrupted the normal communication in that area and that
the relevant action was taken as soon as reasonably possible not later than
one month from the date when such situation had ceased to exist:
Provided that the delay condoned by the Controller shall not exceed the
period for which the national emergency was in force, or six months from
the expiry of the prescribed period, whichever is earlier.
(7) Any liability or burden of proof regarding the authenticity of any document
filed, left, made or given under these rules, including electronically
transmitted documents, shall lie only with the party filing, leaving, making
or giving the document.]
R. 138(2)
R. 138(2)
7. Fees
(1) The fees payable under section 142 in respect of the grant of patents and
applications therefor, and in respect of other matters for which fees are
required to be payable under the Act shall be as specified in the First Schedule.
285
[Provided that ten per cent additional fee shall be payable when the
applications for patent and other documents are filed through physical
mode, namely, in hard copy format:
286
[Provided further that in the case of a small entity, or startup, or
educational institution, every document for which a fee has been specified
shall be accompanied by Form-28.]
(2) 287[(a)The fees payable under the Act or these rules may be paid at the
­284
­285
­286
­287
S. 142; F. 28;
Sch. 1
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
Inserted vide G.S.R. 125(E), dated 28.02.2014, w.e.f. 28.02.2014.
Substituted vide G.S.R. 646(E). dated 21-09-2021 w.e.f. 21-09-2021.
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
clause (a) read as under:
“(a) The fees, payable under the Act may either be paid in cash or through electronic means
or may be sent by bank draft or cheque payable to the Controller of Patents and drawn
on a scheduled bank at the place where the appropriate office is situated. If the draft or
chequeis sent by post, the fees shall be deemed to have been paid on the date on which
the draft or cheque would have reached the Controller in the ordinary course of mail.”
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103
The Patents Rules, 2003
appropriate office either in cash or through electronic means or may be
sent by bank draft or banker’s cheque payable to the Controller of Patents
and drawn on a scheduled bank at the place where the appropriate office
is situated and if the draft or banker’s cheque is sent by post, the fees shall
be deemed to have been paid on the date on which the draft or banker’s
cheque has actually reached the Controller.]
288
[***]
289
[(c) Where a fee is payable in respect of a document, the entire fee shall
accompany the document:]
Provided that the Controller may accept the fee in part and allow
remaining part of the fee to be paid at any time within one month from
the date of filing of the document notwithstanding the expiry of the due
date for filing of such document and on such payment the document shall
be taken on record from the date of its filing.
290
[(3) In case an application processed by a natural person, startup,
small entity or educational institution is fully or partly transferred to a
person other than a natural person, startup, small entity or educational
institution, the difference, if any, in the scale of fees between the fees
charged from the natural person, startup, small entity or educational
institution and the fees chargeable from the person other than a natural
person, startup, small entity or educational institution, shall be paid by
the new applicant along with the request for transfer.”]
291
[(3A) In case an application processed by a small entity is fully or partly
transferred to a person other than a natural person (except a small entity),
the difference, if any, in the scale of fee(s) between the fee(s) charged from
a small entity and the fee(s) chargeable from the person other than a
natural person (except a small entity) in the same matter shall be paid by
the new applicant with the request for transfer.]
292
[(3B) In case an application processed by a startup is fully or partly
transferred to any person other than a natural person or a startup, the
difference, if any, in the scale of fees between the fees charged from a
­288
­289
­290
­291
­292
Clause (b) omitted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to its
omission, clause (b) read as under:
“(b) Cheques or drafts not including the correct amount of commission and cheques on which
the full value specified therein cannot be collected in cash shall be accepted only at the
discretion of the Controller.”
Substituted by S.O. 657(E), dated 05.05.2006, for Cl. (c) (w.e.f. 05.05.2006). Prior to its
substitution, Cl. (c) read as under:- “(c) Where a fee is payable in respect of a document, the
entire fee shall accompany the document or shall be paid within one month from the date of
filing of the document:
Provided that the Controller may accept the fee in part and allow remaining part of
the fee to be paid at any time within one month from the date of filing of the document
notwithstanding the expiry of the due date for filing such document and on such
payment the document shall be taken on record from the date of its filing.”
Substituted vide G.S.R. 646(E). dated 21-09-2021 w.e.f. 21-09-2021. Prior to its substitution,
Cl. (c) read as under:- “(c) Where a fee is payable in respect of a document, the entire fee shall
accompany the document or shall be paid within one month from the date of filing of the
document:
Provided that the Controller may accept the fee in part and allow remaining part of
the fee to be paid at any time within one month from the date of filing of the document
notwithstanding the expiry of the due date for filing such document and on such
payment the document shall be taken on record from the date of its filing.”
Inserted vide G.S.R. 125(E), dated 28.02.2014, w.e.f. (28.02.2014.)
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. (16.05.2016.)
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startup and such person to whom the application is transferred, shall be
paid by the new applicant along with the request for transfer:
Explanation.- Where the startup ceases to be a startup after having filed
an application for patent due to lapse of more than five years from the
date of its incorporation or registration or the turnover subsequently
crosses the financial threshold limit as defined, no such difference in the
scale of fees shall be payable.]
293
[(4) Fees once paid in respect of any proceeding shall not ordinarily be
refunded irrespective of whether the proceeding has taken place or not:
Provided that, if the Controller is satisfied that during the online filing
process, the fee was paid more than once for the same proceeding, the
excess fee shall be refunded.]
294
[(4A) Notwithstanding anything contained in sub-rule (4), upon the
withdrawal of an application in respect of which a request for examination
has been filed, but before issuance of first statement of objection, the
fee may be refunded to the extent prescribed in the First Schedule on a
request made by the applicant in Form 29.]
(5) (i)Subject to the approval of the Controller, any person may deposit
money in advance and request the Controller to realise any fee
payable by him from the said deposit and in such case the date of
the receipt of the request to realise the fee or the date on which the
request to realise the fee is deemed to have been received, whichever
is earlier, shall be taken as the date of payment of the fee:
Provided that the requisite amount of money is available at the credit of
the person making such request
(ii)Subject to the approval of the Controller, any person may discontinue
the deposit of money in advance and in such case the balance, if any,
shall be refunded.
F. 29; Sch. 1
8. Forms
(1) The Forms set forth in the Second Schedule with such variations as the
circumstances of each case may require shall be used for the purposes
mentioned therein.
295
[(2) Where no Form is so specified for any purpose, the applicant may use
Form 30 specified in the Second Schedule.]
­293
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (4) read as under:
“(4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective
of whether the proceeding has taken place or not.”
­294
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
­ 95
2
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (2) read as under:
“(2) Where no Form is so specified for any purpose, the applicant may adopt any Form specified
in the Second Schedule with such modifications and variations as may be required.”
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[9. Filing of documents and copies, etc.
296
(1) All documents and copies of the documents, except affidavits and drawings,
filed with patent office, shall –
(a)
be typewritten or printed in Hindi or English (unless otherwise
directed or allowed by the Controller) in large and legible
characters not less than 0.28 centimetre high with deep indelible
ink with lines widely spaced not less than one and half spaced
only upon one side of the paper;
(b)
be on such paper which is flexible, strong, white, smooth, nonshiny, and durable of size A4 of approximately 29.7 centimetre
by 21centimetre with a margin of at least 4 centimetre on the top
and left hand part and 3 centimetre on the bottom and right hand
part thereof;
(c)
be numbered in consecutive Arabic numerals in the centre of the
bottom of the sheet; and
(d)
contain the numbering to every fifth line of each page of the
description and each page of the claims at right half of the left
margin.
(2) Any signature which is not legible or which is written in a script other
than English or Hindi shall be accompanied by a transcription of the
name either in Hindi or English in capital letters.
(3) In case, the application for patent discloses sequence listing of nucleotides
or amino acid sequences, the sequence listing of nucleotides or amino acid
sequences shall be filed in computer readable text format along with the
application, and no print form of the sequence listing of nucleotides or
amino acid sequences is required to be given.
(4) Additional copies of all documents shall be filed at the appropriate office
as may be required by the Controller.
(5) Names and addresses of applicant and other persons shall be given in full
together with their nationality and such other particulars, if any, as are
necessary for their identification.]
­296
Substituted vide S.O. 1029(E), dated 23.04.2013. Prior to substitution, rule 9 read as under:
“9. Size etc. of documents. – (1) All documents and copies of documents, except affidavits
and drawings, sent to or left at the patent office or otherwise furnished to the Controller
shall be written or typewritten or printed either in Hindi or in English language (unless
otherwise directed or allowed by the Controller) in large and legible characters with
deep indelible ink with lines widely spaced upon one side only of strong white paper of
a size A4 of approximately 29.7 centimetres by 2l centimetres with a margin of at least
4 centimetres on the top and left hand part and 3cm on the bottom and right hand part
thereof. Any signature which is not legible or which is written in a script other than
Hindi or English shall be accompanied by a transcription of the name either in Hindi or
in English in block letters:
Provided that any document including drawing, if any, may also be filed in electronic
form along with a copy of it on white paper:
Provided further that in case the application for patent discloses sequence listing of
nucleotides and/or amino acids, the same shall be filed in electronic form.
(2) Additional copies of all documents shall be filed at the appropriate office, if required by
the Controller.
(3) Names and addresses of applicants and other persons shall be given in full together with
their nationality and such other particulars, if any, as are necessary for identification.”
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The Patents Rules, 2003
CHAPTER II
APPLICATION FOR PATENTS
10.Period within which proof of the right under section 7(2) to make
the application shall be furnished
Where, in an application for a patent made by virtue of an assignment of the
right to apply for the patent for the invention, if the proof of the right to make
the application is not furnished with the application, the applicant shall within
a period of 297[six months] after the filing of such application furnish such proof.
Explanation – For the purposes of this rule, the 298[six months] period in
case of an application corresponding to an international application in
which India is designated shall be reckoned from the actual date on which
the corresponding application is filed in India.
S. 7(2)
11. Order of recording applications
The applications filed in a year shall constitute a series identified by the year
of such filing. In case of an application filed corresponding to an international
application in which India is designated, such application shall constitute a
series distinct from the rest of the applications identified by the year of filing
of corresponding applications in India.
12. Statement and undertaking regarding foreign applications
(1) The statement and undertaking required to be filed by an applicant for a
patent under sub-section (1) of section 8 shall be made in Form 3.
299
[(1A). The period within which the applicant shall file the statement and
undertaking under sub-section (1) of section 8 shall be 300[six months]
from the date of filing the application.
Explanation – For the purpose of this rule, the period of 301[six months]
in case of an application corresponding to an international application in
which India is designated shall be reckoned from the actual date on which
the corresponding application is filed in India.]
(2) The time within which the applicant for a patent shall keep the Controller
informed of the details in respect of other applications filed in any country
in the undertaking to be given by him under clause (b) of sub-section (1)
of section 8 shall be six months from the date of such filing
302
[(3) When so required by the Controller under sub-section (2) of section
8, the applicant shall furnish information relating to objections, if any,
in respect of novelty and patentability of the invention and any other
particulars as the Controller may require which may include claims
of application allowed within 303[six months] from the date of such
communication by the Controller.]
­297
­298
­299
­300
­301
­302
­303
S. 8(1); F. 3
S. 8(1)
S. 8(1)(b)
S. 8(2)
Substituted by S.O. 657(E), dated 05.05.2006, for “three months” (w.e.f. 05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “three months” (w.e.f. 05.05.2006).
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 657(E), dated 05.05.2006, for “three months” (w.e.f. 05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “three months” (w.e.f. 05.05.2006).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-Rr. (3) and (4) (w.e.f. 01.01.2005).
Substituted by S.O. 657(E), dated 05.05.2006, for “three months” (w.e.f. 05.05.2006).
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13. Specifications
(1) Every specification, whether provisional or complete, shall be made in
Form 2.
(2) A specification in respect of a divisional application under section 16 shall
contain specific reference to the number of the original application from
which the divisional application is made.
(3) A specification in respect of a patent of addition under section 54 shall contain
a specific reference to the number of the main patent, or the application for
the main patent, as the case may be, and a definite statement that the
invention comprises an improvement in, or a modification of, the invention
claimed in the specification of the main patent granted or applied for.
304
[(4) Where the invention requires explanation through drawings, such
drawings shall be prepared in accordance with the provisions of rule 15
and shall be supplied with, and referred to in detail, in the specification,
including the claims where the features illustrated in the drawings shall
be followed by their respective reference signs in parentheses:
Provided that in case of a complete specification, if the applicant desires
to adopt the drawings filed with the provisional specification as the
drawings or part of the drawings for the complete specification, it shall
be sufficient to refer to them in the complete specification as those left or
filed with the provisional specification.]
(5) Irrelevant or other matter, not necessary, in the opinion of the Controller,
for elucidation of the invention, shall be excluded from the title, description,
claims and drawings.
305
[(6) Except in the case of an application (other than a convention
application or an application filed under the Patent Cooperation Treaty
designating India) which is accompanied by a complete specification, a
declaration as to the inventorship of the invention shall be filed in Form
5 with the complete specification or at any time before the expiration of
one month from the date of filing of the complete specification, as the
Controller may allow on an application made in Form 4.]
Explanation: For the purposes of this rule, the date of filing of the
complete specification with respect to an application corresponding to an
international application in which India is designated shall be reckoned
from the actual date on which the corresponding application is filed in
India.
(7) (a)
The abstract as specified under clause (d) of sub-section (4) of
section 10, accompanying the specification shall commence with
the title of the invention. The title of the invention shall disclose
the specific features of the invention normally in not more than
S. 10; F. 2
S. 16
S. 54
R. 15
S. 10(6); F. 4, 5
S. 10(4)(d)
­304
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (4) read as under:
“(4) Where the invention requires explanation through drawings, such drawings shall be
prepared in accordance with the provisions of rule 15 and shall be supplied with, and
referred to in detail, in the specification:
Provided that in the case of a complete specification, if the applicant desires to adopt the
drawings filed with his provisional specification as the drawings or part of the drawings
for the complete specification, it shall be sufficient to refer to them in the complete
specification as those left with the provisional specification.”
­ 05
3
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (6) (w.e.f. 01.01.2005).
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The Patents Rules, 2003
fifteen words.
[(b) The abstract shall contain a concise summary of the matter
contained in the specification and the summary shall indicate
clearly the technical field to which the invention belongs, technical
advancement of the invention as compared to the existing
knowledge and principal use of the invention excluding any
speculative use and where necessary, the abstract shall contain
the chemical formula, which characterises the invention.]
(c)
The abstract may not contain more than one hundred and fifty
words.
(d)
If the specification contains any drawing, the applicant shall
indicate on the abstract the figure, or exceptionally, the figures of
the drawings which may accompany the abstract when published.
Each main feature mentioned in the abstract and illustrated by
a drawing shall be followed by the reference sign used in that
drawing.
(e)
The abstract shall be so drafted that it constitutes an efficient
instrument for the purposes of searching in the particular technical
field, in particular by making it possible to assess whether there
is a need to consult the specification itself.
307
[(8) The period within which reference to the deposit shall be made in the
specification under sub-clause (A) of clause (ii) of sub-section (4) of section
10 shall be three months from the date of filing of the application:
Provided that in case of a request for publication under rule 24A, such
reference shall be made on or before the date of filing of such request.]
306
S. 10(4)(ii)(A)
R. 19B(5), 19K(5),
24A
[14. Amendments to Specifications
308
(1) When amendments are made to a provisional or complete specification or
any drawing accompanying it, the pages incorporating such amendments
shall be retyped and submitted to form a continuous document.
S. 57; R. 20, 81;
F. 13
­306
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
Clause (b) read as under:
“(b) The abstract shall contain a concise summary of the matter contained in the specification.
The summary shall indicate clearly the technical field to which the invention belongs,
technical problem to which the invention relates and the solution to the problem
through the invention and principal use or uses of the invention. Where necessary, the
abstract shall contain the chemical formula, which characterises the invention.”
­307
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (8) read as under:
“(8) The period within which reference to the deposit shall be made in the specification
under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months
from the date of filing of the application.”
­ 08
3
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
14 read as under:
“14. Amendments to specifications. – (1) When a provisional or complete specification
or any drawing accompanying it has been received by the applicant or his agent
for amendment, and amendment is duly made thereon, the page incorporating
such amendment shall be retyped and submitted to form a continuous document.
Amendments shall not be made by slips pasted on, or as footnotes or by writing in the
margin of any of the said documents.
(2) The amended documents shall be returned to the Controller together with the superseded
pages or drawings, if any, duly marked, cancelled and initialed by the applicant or his
agent. Copies of any pages that have been retyped or added and of any drawing that has
been added or substantially amended shall be sent in duplicate.”
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The Patents Rules, 2003
(2) A marked copy clearly identifying the amendments carried out and a
statement clearly indicating the portion (page number and line number)
of the specification or drawing being amended along with the reason shall
also be filed.
(3) Amendments shall not be made by slips pasted on, or as footnotes or by
writing in the margin of any of the said documents.
(4) When a retyped page or pages incorporating amendments are submitted,
the corresponding earlier page shall be deemed to have been superseded
and cancelled by the applicant.]
15. Drawings
(1) Drawings, when furnished under section 10 by the applicants otherwise
than on requisition made by the Controller, shall accompany the
specifications to which they relate.
(2) No drawings or sketch, which would require a special illustration of the
specification, shall appear in the specification itself.
(3) At least one copy of the drawing shall be prepared neatly and clearly on a
durable paper sheet.
(4) Drawings shall be on standard A4 size sheets with a clear margin of at
least 4cm on the top and left hand and 3cm at the bottom and right hand
of every sheet.
(5) Drawings shall be on a scale sufficiently large to show the inventions
clearly and dimensions shall not be marked on the drawings.
(6) Drawing shall be sequentially or systematically numbered and shall bear –
(i)
in the left hand top corner, the name of the applicant;
(ii)
in the right hand top corner, the number of the sheets of drawings,
and the consecutive number of each sheet; and
(iii)
in the right hand bottom corner, the signature of the applicant or
his agent.
(7) No descriptive matter shall appear on the drawings except in the flow
diagrams.
16. Models
Models or samples shall be furnished under section 10 only when required by
the Controller.
S. 10(3)
CHAPTER III
INTERNATIONAL APPLICATIONS UNDER PATENT
COOPERATION TREATY (PCT)
17. Definitions
In this Chapter, unless the context otherwise requires, (a)
“Article” means an Article of the Treaty;
309
[(aa) “Examining Authority” means the Indian International
Preliminary Examining Authority referred to in sub-rule (1) of
rule 19F;
(ab)
“International Bureau” means the International Bureau of World
­309
R. 19F(1)
Inserted vide SO 1029(E), dt. 23.04.2013, w.e.f. 15.10.2013 vide SO 2101)E), dt. 14.10.2013.
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(ac)
(b)
(c)
310
Intellectual Property Organisation;
“Searching Authority” means the Indian International Searching
Authority referred to in sub-rule (1) of Rule 19A;]
“Treaty” or “PCT” means the Patent Cooperation Treaty;
All other words and expressions used herein and not defined but
defined in the PCT shall have the same meaning as assigned to
them in that Treaty.
R. 19A(1)
[18. Appropriate office in relation to international applications
(1) The receiving office, the designated office and the elected office, as the
case may be, for the purposes of international applications shall be the
appropriate office referred to in rule 4.
(2) Notwithstanding anything contained in sub-rule (1), the Patent Office,
Delhi branch shall be the appropriate office for dealing with the
International Bureau and any other International Searching Authority
and International Preliminary Examining Authority.
(3) An international application shall be filed at and processed by the
appropriate office, referred to in sub-rule (1), in accordance with the
provisions of this Chapter, the Treaty and the regulations under the
Treaty.
(4) The appropriate office referred to in sub-rule (1),shall, on receipt of an
international application,(a)
keep one copy of the application to be called the “home copy” in its
office;
(b)
transmit one copy to be called the “record copy” to the International
Bureau; and
(c)
transmit one copy to be called “search copy” to the competent
International Searching Authority referred to in Article 16 of the
Treaty,
and simultaneously furnish complete details of such application
to the Patent Office, Delhi branch.]
­310
Substituted vide S.O. 1029(E), dated 23.04.2013. Prior to substitution, rule 18 read as under:
“18. Appropriate office in relation to international applications. – (1) The receiving
office, designated office and elected office for the purposes of international applications
filed under the Treaty shall be the appropriate office in accordance with rule 4.
(2) The head office of the patent office shall be the appropriate office for dealing with the
International Bureau of the World Intellectual Property Organisation, International
Searching Authorities and International Preliminary Examining Authorities.
(3) An international application under the Treaty shall be filed at and processed by the
appropriate office in accordance with the provisions of this Chapter, the Treaty and the
regulations established under the PCT.
(4) Notwithstanding anything contained in sub-rule (2), on receipt of an international
application, the appropriate office shall transmit one copy as record copy of such
application to International Bureau of the World Intellectual Property Organisation
and another copy as search copy to Competent International Searching Authority. The
appropriate office shall simultaneously furnish complete details of such application to
the head office of the patent offices.”
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311
[19.International applications filed with appropriate office as
receiving office
(1) An international application shall be filed with the appropriate office in
triplicate either in English or Hindi language.
(2) The fees payable in respect of an international application shall, in
addition to the fees specified in the regulations under the Treaty, be the
fees as specified in the First Schedule and the Fifth Schedule.
(3) Where an international application has not been filed in triplicate, the
appropriate office shall, upon payment of fees specified in the First
Schedule, prepare the required additional copies.
(4) On receipt of a request from the applicant and on payment of the fees
specified in the First Schedule, the appropriate office shall prepare a
certified copy of the priority document and promptly transmit the same
to the International Bureau and intimate the applicant and the Patent
Office, Delhi branch.
R. 139
Sch. 1, 5.
Sch. 1
Sch. 1
19A. Indian International Searching Authority
(1) The Patent Office, Delhi branch shall perform the functions of the Indian
International Searching Authority under the treaty in accordance with an
agreement between the Indian Patent Office and the International Bureau.
(2) The fees payable to the Searching Authority shall, in addition to the fees
specified in the regulations made under the Treaty, be the fees as specified
in the Fifth Schedule.
(3) The Searching Authority referred to in sub-rule (1), shall establish
international search report in respect of international applications, or,
as the case may be, declare in accordance with sub-rule (3) of rule 19B,
in cases where India has been indicated as a competent International
Searching Authority.
Sch. 5.
R. 19B(3)
19B. International search report
(1) The Searching Authority shall, on receipt of the search copy, notify the
International Bureau and the applicant about the receipt of search copy
with identification mark ‘ISA/IN’ along with the international application
number and its serial number and the date of receipt of the search copy.
(2) Notwithstanding anything contained in the proviso to item (i) of sub-rule
(2) of rule 24B, the Searching Authority shall, upon receipt of the search
­311
S. 73(2);
R. 24B(2)(i)
Substituted vide S.O. 1029(E), dated 23.04.2013. Prior to substitution, rule 19 read as under:
“19. International applications filed with appropriate office as receiving office. –
(1) An international application shall be filed with the appropriate office in triplicate
either in English or in Hindi language.
(2) The fees payable in respect of an international application filed with the appropriate
office shall be, in addition to the fees as specified in the regulations under the Treaty, the
fees as specified in the First Schedule.
(3) Where an international application filed with the appropriate office has not been filed as
specified under sub-rule (1) and the applicant desires that the appropriate office should
prepare the additional copies required, the fee for making such copies shall be paid by
the applicant.
(4) On receipt of a request from the applicant and on payment of the prescribed fee by
him, the appropriate office shall prepare a certified copy of the priority document and
promptly transmit the same to the International Bureau of the World Intellectual
Property Organisation for the purpose of an international application filed with the
appropriate office with an intimation to the applicant and the head office.”
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The Patents Rules, 2003
(3)
(4)
(5)
(6)
(7)
(8)
(9)
copy, refer the international application, in the order in which the search
copy was received, to an examiner or any other officer appointed under
sub-section (2) of Section 73 of the Act for preparing an international
search report, in accordance with the provisions contained in the Treaty
and the regulations under the Treaty, ordinarily within a period of one
month but not exceeding two months from the date of such reference.
The Searching Authority, if it considers that(a)
the international application relates to a subject matter which
the Searching Authority is not required to search and accordingly
decides not to search; or
(b)
the description, claims or drawings fail to comply with the
requirements prescribed under the regulation under the Treaty
to such an extent that a meaningful search could not be carried
out,
the Authority shall so declare and notify the applicant and the
International Bureau that no international search report shall be
established.
In a case where any situation referred to in clause (a) or clause (b) of
sub-rule (3) is found to exist in connection with certain claims only, the
Searching Authority shall indicate this fact in the International Search
Report in respect of such claims, and for other claims, it shall establish
the International Search Report.
The Searching Authority, if it considers that the international application
does not comply with the requirement of unity of invention, in accordance
with the provisions contained in Rule 13 of the regulations under the Treaty,
shall send a notice specifying the reasons for which the international
application is not considered as complying with the requirement of unity
of invention and inviting the applicant(a)
to pay the additional fees specified in the Fifth Schedule, indicating
the amount of fees to be paid, within a period of one month from
the date of such invitation; and
(b)
to pay, where applicable, the protest fee specified in the Fifth
Schedule, indicating the amount of fee to be paid, within a period
of one month from the date of such invitation.
The Searching Authority shall establish the International Search Report
on those parts of the international application which relate to the
invention first mentioned in the claims (“main invention”) and subject to
payment of additional fee within the period specified in sub-rule (5), on
those parts of the international application which relate to inventions in
respect of which such additional fees were paid.
Any applicant may pay the additional fees under protest, that is,
accompanied by a reasoned statement to the effect that the international
application complies with the requirement of unity of invention or that
the amount of the required additional fees is excessive.
The examination of the protest referred to in sub-rule (7) shall be carried
out by a Review Committee constituted by the Controller.
The Review Committee constituted under sub-rule (8) shall examine the
extent to which the protest is justified and shall accordingly order for the
total or partial reimbursement of the additional fee to the applicant.
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Sch. 5
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The Patents Rules, 2003
(10) Where the applicant has not paid the fees for the protest in accordance
with clause (b) of sub-rule (5), the protest shall be considered not to have
been made and the Searching Authority shall so declare.
(11) The protest fee shall be refunded to the applicant where the Review
Committee referred to in sub-rule (8) finds that the protest was entirely
justified.
(12)Where the international application contains the disclosure of one or more
nucleotide or amino acid sequences and the sequences are not furnished
in computer-readable text format, the Searching Authority shall send
a notice to the applicant to submit the sequence listing in computerreadable text format and pay the late furnishing fee specified in the Fifth
Schedule, within a period of one month from the date of such notice and
if the applicant fails to comply with the notice, the Searching Authority
shall search the international application to the extent that a meaningful
search can be carried out without the sequence listing.
19C. Time limit for establishing international search report
The Searching Authority shall establish the International Search Report and
written opinion or, as the case may be, the declaration referred to in sub-rule
(3) of rule 19B within a period of three months from the date of receipt of the
search copy by the Searching Authority, or within a period of nine months
from the date of priority, whichever expires later.
R. 19B(3)
19D.Transmittal of the International Search Report and written opinion
The Searching Authority shall transmit one copy of the International Search
Report or of the declaration referred to in Article 17(2)(a) of the Treaty, and one
copy of the written opinion established under Rule 43bis.1 of the regulations
under the Treaty, to the International Bureau and one copy to the applicant,
on the same day.
19E. Confidential treatment
All matters pertaining to international applications shall be kept confidential
in accordance with the treaty and the regulations under the Treaty.
19F. Indian International Preliminary Examining Authority
(1) The Patent Office, Delhi branch shall perform the functions of the
International Preliminary Examining Authority under the Treaty in
accordance with an agreement between the Indian Patent Office and the
International Bureau.
(2) The Examining Authority referred to in sub-rule (1), shall establish(a)
the International Preliminary Examination Report in respect of
all international applications electing India as an International
Preliminary Examining Authority;
(b)
the International Preliminary Examination Report in respect of
the demands filed by the nationals or residents of other countries
in accordance with an agreement between Indian Patent Office
and the International Bureau, upon being notified by the
International Bureau;
(c)
the International Preliminary Examination in respect of demands
made by the nationals or residents of other countries not party
R. 17(aa)
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to the Treaty or not bound by Chapter II of the Treaty, if the
Assembly has so approves.
19G. Period for making a demand
(1) The demand for international preliminary examination shall be made
within the period specified in the Treaty or regulations under the Treaty.
(2) In case the demand is made after the expiry of the period specified in subrule (1), it shall be considered to have not been made and no International
Preliminary Examination Report shall be prepared.
19H. Fees payable to Examining Authority
The fees payable to the Examining Authority shall, in addition to the fees
specified in the regulations under the Treaty, be the fees specified in the Fifth
Schedule.
Sch. 5
19I. Manner of making a demand
A demand shall be made in accordance with the provisions contained in these
rules, the Treaty and the regulations under the Treaty.
19J.Processing of demands for international preliminary
examination
(1) The Examining Authority, on receipt of the demand for international
preliminary examination, if the Examining Authority is competent to
conduct an international preliminary examination, shall assign the
identification mark ‘IPEA/IN’ and shall notify the Applicant and the
International Bureau.
(2) In case where the Examining Authority is not competent to conduct the
international preliminary examination of the international application, it
shall transmit the demand promptly to the International Bureau.
19K. International Preliminary Examination Report
(1) Notwithstanding anything contained in the proviso to item (i) of sub-rule
(2) of rule 24B, the Examining Authority shall refer the international
application, in accordance with the provisions contained in the Treaty and
the regulations under the Treaty, in the order in which the demand was
received in the Examining Authority to an examiner or any other officer
appointed under sub-section (2) of section 73 of the Act for preparing an
International Preliminary Examination Report ordinarily within a period
of three months but not exceeding four months from the date of such
reference.
(2) Claims relating to inventions in respect of which no International Search
Report has been established shall not be the subject of international
preliminary examination.
(3) The Examining Authority, if considers that(a)
the international application relates to a subject matter on
which the Examining Authority is not required to carry out an
international preliminary examination, and, decides not to carry
out such examination; or
(b)
that the description, the claims, or the drawings, are so unclear,
or the claims are so inadequately supported by the description,
S. 73(2);
R. 24B(2)(i)
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The Patents Rules, 2003
(4)
(5)
(6)
(7)
(8)
(9)
that no meaningful opinion can be formed on the questions
of novelty, inventive step (non-obviousness), or industrial
applicability, the Examining Authority shall not go into these
questions and shall inform the applicant of this opinion and the
reasons therefor.
In a case where any situation referred to in clause (a) or clause (b) of
sub-rule (3) is found to exist in connection with certain claims only,
the Examining Authority shall indicate this fact in the International
Preliminary Examination Report in respect of such claims, and for other
claims, it shall establish the International Preliminary Examination
Report.
Where the Examining Authority finds that the international application
does not comply with the requirement of unity of invention, in
accordance with the provisions contained in Rule 13 of the regulations
under the Treaty and chooses to invite the applicant, at his option, to
restrict the claims or to pay additional fees. it shall issue a notice to the
applicant:
(a)
specifying at least one possibility of restriction which. in the
opinion of the Examining Authority, would be in compliance with
the applicable requirement;
(b)
specifying the reasons for which the international application
is not considered as complying with the requirement of unity of
invention;
(c)
inviting the applicant to comply with the invitation within one
month from the date of such notice;
(d)
indicating the amount of the required additional fees to be paid in
case the applicant so chooses; and
(e)
inviting the applicant to pay, the protest fee within one month
from the date of such notice, and indicate the amount to be paid,
as specified in the Fifth Schedule.
Any applicant may pay the additional fees under protest, that is,
accompanied by a reasoned statement to the effect that the international
application complies with the requirement of unity of invention or that
the amount of the required additional fees is excessive.
The examination of the protest referred to in sub-rule (5) shall be carried
out by a Review Committee constituted by the Controller.
The Review Committee constituted under sub-rule (7) shall examine the
extent to which the protest is justified and shall accordingly order for the
total or partial reimbursement to the applicant of the additional fee.
The protest fee shall be refunded to the applicant where the Review
Committee referred to in sub-rule (6) finds that the protest was entirely
justified.
19L.Period for establishing international preliminary examination
report and its transmission
The period for establishing the International Preliminary Examination
Report shall be:
(i)
twenty eight months from the priority date; or
(ii)
six months from the period specified under Rule 69.1 of the
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(iii)
regulations under the Treaty for the start of the international
preliminary examination; or
six months from the date of receipt by the Examining Authority
of the translation furnished under Rule 55.2 of the regulations
under the Treaty, whichever expires last.
19M. Transmittal of the International Preliminary Examination Report
The Examining Authority shall transmit one copy of the International
Preliminary Examination Report and its annexures, if any, to the International
Bureau, and one copy to the applicant, on the same day.
19N. Conditions for and extent of refund
The fee paid by the applicant may be refunded, waived or reduced to the
extent and in accordance with the conditions specified in the Treaty or the
regulations under the Treaty and the agreement entered between the Indian
Patent Office and the International Bureau.]
20.International applications designating or designating and
electing India
[(1) An application corresponding to an international application filed
under Patent Cooperation Treaty may be made in Form 1 under subsection (1A) of section 7
Explanation – For the purpose of this rule, “an application corresponding
to an international application” means an international application as
filed under Patent Cooperation Treaty which includes any amendments
made by the applicant under Article 19 and communicated to Designated
Office under Article 20 or any amendment made under sub-clause (b) of
clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such application corresponding
to an international application designating India, may delete a claim, in
accordance with the provisions contained in rule 14.]
(2) The Patent Office shall not commence processing of an application filed
corresponding to international application designating India before the
expiration of the time-limit prescribed under 313[sub-rule (4)(i).]
(3) An applicant in respect of an international application designating India
shall, before the time limit prescribed in 314[sub-rule (4)(i),]312
(a)
(b)
S. 139, 7(1A)
R. 22; F. 1
pay the prescribed national fee and other fees to the patent
office in the manner prescribed under these rules and under the
regulations made under the Treaty;
and where the international application was either not filed or
has not been published in English, file with the patent office, a
translation of the application in English, duly verified by the
­312
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (1) read as under:
“(1) An application corresponding to an international application under the Patent
Cooperation Treaty under section 7(1A) may be made in [Form 1.]”
­313
Substituted by S.O. 1418 (E), dated 28.12.2004, for “sub-rule (4)” (w.e.f. 01.01.2005).
­ 14
3
Substituted by S.O. 1418 (E), dated 28.12.2004, for “sub-rule (4)” (w.e.f. 01.01.2005).
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applicant 315[or the person duly authorized by him] that the
contents thereof are correct and complete.
316
[(4)(i)
The time limit referred to in sub-rule (2) shall be thirty-one
months from the priority date as referred to in Article 2(xi);
(ii)
Notwithstanding anything contained in clause (i), the Patent
Office may, on the express request filed in Form 18 along with the
fee specified in First Schedule, process or examine the application
at any time before thirty-one months.]
(5) The translation of the international referred to in sub-rule (3) shall
include a translation in English of,(i)
the description;
(ii)
the claims as filed;
(iii)
any text matter of the drawings;
(iv)
the abstract;
(v)
in case the applicant has not elected India and if the claims have
been amended under Article 19, then the amended claims together
with any statement filed under the said Article; and
(vi)
in case the applicant has elected India and any amendments
to the description, the claims and text matter of the drawings
that are annexed to the international preliminary examination
report.
(6) If the applicant fails to file a translation of the amended claims and
annexures referred to in sub-rule (5), even after invitation from the
appropriate office to do so, within a time limit as may be fixed by that
office having regard to the time left for meeting the requirements, the
amended claims and annexures shall be disregarded in the course of
further processing the application by the appropriate office.
(7) The applicant in respect of an international application designating India
shall when complying with sub-rule (3), preferably use Forms set out in
the Second Schedule before the appropriate office as designated office.
R. 21(1), 21(2),
138(1)
F. 18, Sch. 1
R. 138(1)
Sch. 2
21. Filing of priority document
[(1) Where the applicant in respect of an international application
designating India has not complied with the requirements of paragraph (a),
(b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation
Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations
under the Treaty, the applicant shall file the priority document referred to
in that rule before the expiration of the time limit referred to in sub-rule
(4) of rule 20, in the Patent Office.
(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule
51bis.1 of the regulations under the Patent Cooperation Treaty is
applicable, an English translation thereof duly verified by the applicant
or the person duly authorised by him shall be filed within the time limit
specified in sub-rule (4) of rule 20.
(3) Where the applicant does not comply with the requirements of sub-rule
(1) or sub-rule (2), the Patent Office shall invite the applicant to file the
317
­315
­316
­317
S. 139;
R. 20(4), 138(1)
R. 20(4)
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (4) (w.e.f. 01.01.2005).
Substituted by G.S.R. 652(E), dated 19.10.2020 (w.e.f. 01.01.2021).
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priority document or the translation thereof, as the case may be, within
three months from the date of such invitation, and if the applicant fails
to do so, the claim of the applicant for thepriority shall be disregarded for
the purposes of the Act.”
22. Effect of non-compliance with certain requirements
An international application designating India shall be deemed to be
withdrawn if the applicant does not comply with the requirements of rule 20.
S. 139; R. 20
23.The requirements under this Chapter to be supplemental of the
regulations, etc, under the Treaty
S. 139
(1) The provisions of this Chapter shall be supplemental to the PCT and the
regulation and the administrative instructions made thereunder.
(2) In case of a conflict between any provisions of the rules contained in
this Chapter and provisions of the Treaty and the regulations and the
administrative instructions made thereunder, the provisions of the Treaty
and the regulations and administrative instructions made thereunder
shall apply in relation to international applications.
CHAPTER IV
PUBLICATION AND EXAMINATION OF APPLICATIONS
[24. Publication of application
318
The period for which an application for patent shall not ordinarily be open to
public under sub-section (1) of section 11A shall be eighteen months from the
date of filing of application or the date of priority of the application, whichever
is earlier:
319
[Provided that the period within which the Controller shall publish the
application in the Journal shall ordinarily be one month from the date of
expiry of said period, or one month from the date of request for publication
under rule 24A.]
24A.Request for publication
A request for publication under sub-section (2) of section 11A shall be made
in Form 9.
S. 11A(1);
R. 24A
S. 11A(2);
R. 13(8), 24,
24B, 24C; F. 9
24B. Examination of application
(1) (i)
­318
­319
­320
A request for examination under section 11B shall be made in
Form 18 320[within forty-eight months] from the date of priority
of the application or from the date of filing of the application,
whichever is earlier;
S. 11B(1)
R. 2(db), 24C
F. 18
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 24 (w.e.f. 01.01.2005).
Added by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “after the publication of the application but
within thirty-six months” (w.e.f. 05.05.2006).
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[(ii) The period within which the request for examination under subsection (3) of section 11B to be made shall be forty-eight months
from the date of priority, if applicable, or forty-eight months from
the date of filing of the application;
(iii)
The request for examination under sub-section (4) of section 11B
shall be made within forty-eight months from the date of priority
or from the date of filing of the application, or within six months
from the date of revocation of the secrecy direction, whichever is
later;
(iv)
The request for examination of application as filed according to
the ‘Explanation’ under sub-section (3) of section 16 shall be made
within forty-eight months from the date of filing of the application
or from the date of priority of the first mentioned application or
within six months from the date of filing of the further application,
whichever is later;]
(v)
The period for making request for examination under section
11B, of the applications filed before the 1st day of January, 2005
shall be 322[the period specified under the section 11B before the
commencement of the Patents (Amendment) Act, 2005 or] the
period specified under these rules, whichever expires later.
(2) 323[(i) Where the request for examination has been filed under sub-rule
(1) and application has been published under section 11A, the Controller
shall refer the application, specification and other documents related
thereto to the examiner and such reference shall be made in the order in
which the request is filed:
Provided that in case of a further application filed under section 16, the
order of reference of such further application shall be the same as that of
the first mentioned application:
Provided further that in case the first mentioned application has already
been referred for examination, the further application shall have to be
321
S. 11B(3)
S. 11B(4), 38
S. 16(3)
S. 11B
R. 19B(2), 19K(1)
S. 11A, 12(2), 16
­321
Substituted by S.O. 657(E), dated 05.05.2006, for Cls. (ii), (iii) and (iv) (w.e.f. 05.05.2006).
Prior to their substitution, Cls. (ii), (iii) and (iv) read as under:- “(ii) The period within which
the request for examination under sub-section (3) of section 11-B to be made shall be thirtysix months from the date of priority or from the date of filling of the application or twelve
months from the 1st day of January, 2005.
(iii) The request for examination under sub-section (4) of section 11-B shall be made after
the publication of the application, but within thirty-six months from the date of priority
or from the date of filling of the application or within six months from the date of
revocation of the secrecy direction, whichever is later.
(iv) The request for examination of application as filed according to the Explanation under
sub-section (3) of section 16 shall be made after the publication of the first mentioned
application, but within thirty-six months from the date of filling of the application or
from the date of priority of the first mentioned application or within six months from the
date of filing of the further application, whichever is later.”
­322
Substituted by S.O. 657(E), dated 05.05.2006, for “the period specified under the section 11-B
or” (w.e.f. 05.05.2006).
­ 23
3
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
clause (i) read as under:
“(i) The period within which the Controller shall refer the application and specification and
other documents to the examiner in respect of the applications where the request for
examination has been received shall ordinarily be one month from the date its publication
or one month from the date of the request for examination whichever is later:
Provided that such reference shall be made in order in which the request is filed under
sub-rule (1)”
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accompanied by a request for examination, and such further application
shall be published within one month and be referred to the examiner
within one month from the date of such publication.]
(ii)
The period within which the examiner shall make the report
under sub-section (2) of section 12, shall ordinarily be one month
but not exceeding three months from the date of reference of the
application to him by the Controller.
324
[(iii) The period within which the Controller shall dispose off the report
of the examiner shall ordinarily be one month from the date of the
receipt of the such report by the Controller.]
325
[(3) A first statement of objections, along with any documents as may
be required, shall be issued by the Controller to the applicant or his
authorized agent within one month from the date of disposal of the report
of examiner by the Controller:
Provided that where the request for examination was filed by a person
interested, only an intimation of such examination may be sent to such
person interested.]
326
[(4) Reply to the first statement of objections and subsequent reply, if any,
shall be processed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21
shall be six months from the date on which the first statement of objections
is issued to the applicant to comply with the requirements.
(6) The time for putting an application in order for grant under section 21
as prescribed under sub-rule (5) may be further extended for a period
of three months on a request in Form 4 for extension of time along with
prescribed fee, made to the Controller before expiry of the period specified
under sub-rule (5).]
[24C. Expedited examination of applications
S. 21; R. 138(1)
F. 4
327
(1) An applicant may file a request for expedited examination in Form 18A
along with the fee as specified in the first schedule only by electronic
transmission duly authenticated within the period prescribed in rule 24B
on any of the following grounds, namely:(a)
that India has been indicated as the competent International
Searching Authority or elected as an International Preliminary
Examining Authority in the corresponding international
application; or
R. 2(db), 138(1)
­324
­325
Inserted by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (3) read as under:
“(3) A first examination report along with the application and specification shall be sent to
the applicant or his authorised agent ordinarily within six months from the date of the
request for examination or six months from the date of publication whichever is later.
In case other interested person files the request for examination, an intimation of such
examination may be sent to such interested person.
­326
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (4) read as under:
“(4) The time for putting an application in order for grant under section 21 shall be twelve
months from the date on which the first statement of objection is issued to the applicant
to comply with the requirements”
­ 27
3
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
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The Patents Rules, 2003
(2)
(3)
(4)
(5)
­328
328
[(b) that the applicant is a startup; or
(c)
that the applicant is a small entity; or
(d)
that if the applicant is a natural person or in the case of joint
applicants, all the applicants are natural persons, then the
applicant or at least one of the applicants is a female; or
(e)
that the applicant is a department of the Government; or
(f)
that the applicant is an institution established by a Central,
Provincial or State Act, which is owned or controlled by the
Government; or
(g)
that the applicant is a Government company as defined in clause
(45) of section 2 of the Companies Act, 2013 (18 of 2013); or
(h)
that the applicant is an institution wholly or substantially
financed by the Government;
Explanation:- For the purpose of this clause, the term ‘substantially
financed’ shall have the same meaning as in the Explanation to
subsection (1) of section 14 of the Comptroller and Auditor General’s
(Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or
(i)
that the application pertains to a sector which is notified by the
Central Government on the basis of a request from the head of a
department of the Central Government.:
Provided that public comments are invited before any such notification; or
(j)
that the applicant is eligible under an arrangement for processing
a patent application pursuant to an agreement between Indian
Patent Office and a foreign Patent Office.
Explanation:- The patentability of patent applications filed under clause
(j) above will be in accordance with the relevant provisions of the Act.]
A request for examination filed under rule 24B may be converted to a
request for expedited examination under sub-rule (1) of rule 24C by
paying the relevant fees and submitting requisite documents as required
under sub-rule (1).
Except where the application has already been published under subsection (2) of section 11A or a request for publication under rule 24A
has already been filed, a request for expedited examination shall be
accompanied by a request for publication under rule 24A.
Where the request for expedited examination does not comply with the
requirements of this rule, such a request shall be processed in accordance
with the provisions contained in rule 24B, with an intimation to the
applicant, and shall be deemed to have been filed on the date on which
the request for expedited examination was filed.
The Controller shall refer the request for expedited examination along
with the application and specification and other documents to the
examiner, in respect of the applications where the request for expedited
examination has been received, in the order of filing of such requests.
Provided that a request for expedited examination under this rule
filed by a startup or small entity shall not be questioned merely on the
ground that the startup or small entity, having filed an application for
a patent, ceases to be a startup or small entity due to the lapse of the
R. 24B, 2(fb),
19B, 19K; F. 18A;
Sch. 1
S. 11A; R. 24A,
24B
Substituted vide G.S.R. 663(E), dated 17.09.2019, w.e.f. 17.09.2019.
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period during which it is recognised by the competent authority, or its
turnover subsequently crosses the financial threshold limit as notified by
the competent authority.
(6) The period within which the examiner shall make the report under subsection (2) of section 12, shall ordinarily be one month but not exceeding
two months from the date of reference of the application to him by the
Controller.
(7) The period within which the Controller shall dispose of the report of the
examiner shall be one month from the date of receipt of such report by the
Controller.
(8) A first statement of objections along with any document, if required, shall
be issued by the Controller to the applicant or his authorised agent within
fifteen days from the date of disposal of the report of examiner by the
Controller.
(9) Reply to the first statement of objections and subsequent reply, if any, in
respect of an application where the request for expedited examination
was filed, shall be processed in the order in which such reply for such
application is received.
(10) The time for putting an application in order for grant under section 21
shall be six months from the date on which the first statement of objections
is issued to the applicant.
(11) The time for putting an application in order for grant under section 21,
as prescribed in sub-rule (10) may be further extended for a period of
three months on a request for extension made in Form 4 along with the
prescribed fee, made to the Controller before the expiry of the period
specified under sub-rule (10).
(12) The Controller shall dispose of the application within a period of three
months from the date of receipt of the last reply to the first statement of
objections or within a period of three months from the last date to put the
application in order for grant under section 21 of the Act, whichever is
earlier:
Provided that this time limit shall not be applicable in case of pre-grant
opposition.
(13) Notwithstanding anything contained this rule, the Controller may limit
the number of requests for expedited examination to be received during
the year by way of a notice to be published in the official journal.]
S. 12(2);
R. 24B(2)
S. 21; R. 138(1)
S. 21; F. 4
S. 21
25. Identification of published applications
S. 11A
Publication of application under sub-sections (2) and (5) of section 11A shall
be identified by the letter ‘A’ along with the number of application.
[26.A request for withdrawal
329
The application under sub-section (4) of section 11 B shall be made in Form 29.]
S. 11B(4), 35; R.
7(4A), 24B(1)(iii),
24C(5), 26; F. 29
299a
Inserted
­329
vide G.S.R. 663(E), dated 17.09.2019, w.e.f. 17.09.2019.
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
26 read as under:
“26. Request for withdrawal. – A request for withdrawing the application under subsection (4) of section 11B shall be made in writing.”
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[27. Inspection and supply of published documents
330
After the date of publication of the application under section 11A, the application
together with the complete specification and provisional specification, if any,
the drawing, if any, 331[the abstract filed in respect of the application may
be inspected at the appropriate office by making a written request to the
Controller on payment of the fee in that behalf and copies thereof may be
obtained on payment of fees specified in the First Schedule.]
S. 11A; Sch. 1
28. Procedure in case of anticipation by prior publication
(1) If the Controller is satisfied after investigation under section 13 that the
invention so far as claimed in any claim of the complete specification has
been published in any specification or other document referred to in clause
(a) of sub-section (1) or sub-section (2) of the said section, the Controller
shall communicate the gist of specific objections and the basis thereof to
the applicant and the applicant shall be afforded an opportunity to amend
his specification.
(2) If the applicant contests any of the objections communicated to him by the
Controller under sub-rule (1), or if he refiles his specification along with
his observations as to whether or not the specification is to be amended, he
shall be given an opportunity to be heard in the matter if he so requests:
Provided that such request shall be made on a date earlier than ten days
of the final date of the period 332[referred to] under sub-section (1) of
section 21:
Provided further that a request for hearing may be allowed to be
filed within such shorter period as the Controller may deem fit in the
circumstances of the case.
(3) If the applicant requests for a hearing under sub-rule (2) within a period of
one month from the date of communication of the gist of objections, or, the
Controller, considers it desirable to do so, whether or not the applicant has
refiled his application, he shall forthwith fix a date and time for hearing
having regard to the period remaining for putting the application in order
or to the other circumstances of the case.
(4) The applicant shall be given ten days’ notice of any such hearing or
such shorter notice as appears to the Controller to be reasonable in the
circumstances of the case and the applicant shall, as soon as possible,
notify the Controller whether he will attend the hearing.
(5) After hearing the applicant, or without a hearing if the applicant has not
attended or has notified that he does not desire to be heard, the Controller
may specify or permit such amendment of the specification as he thinks fit
to be made and may refuse to 333[grant the patent] unless the amendment
so specified or permitted is made within such period as may be fixed.
334
[(6) The hearing may also be held through video-conferencing or audiovisual communication devices: Provided that such hearing shall be
deemed to have taken place at the appropriate office.
­330
­331
­332
­333
­334
S. 13(1), 18(1
R. 28A)
S. 21(1), 18(2), 43
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 27 (w.e.f. 01.01.2005).
Subsituted for änd the abstract”vide SO 1029(E), dt. 23.04.2013 (w.e.f. 15.10.2013).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “specified” (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “accept the specification” (w.e.f. 01.01.2005).
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
www.lexcampus.in
S. 15
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The Patents Rules, 2003
Explanation – For the purposes of this rule, the expression “communication
device” shall have the same meaning as assigned to it in clause (ha) of subsection (1) of section 2 of the Information Technology Act, 2000 (21 of 2000).
(7) In all cases of hearing, written submissions and the relevant documents,
if any, shall be filed within fifteen days from the date of hearing.]
[28A. Procedure in relation to consideration of report of examiner
under section 14
335
In case the applicant contests any of the objections communicated to him, the
procedure specified under rule 28 may apply.]
29. Procedure in case of anticipation by prior claiming
(1) When it is found that the invention so far as claimed in any claim of the
complete specification, is claimed in any claim of any other specification
falling within clause (b) of sub-section (1) of section 13, the applicant
shall be so informed and shall be afforded an opportunity to amend his
specification.
336
[(2) If the applicant’s specification is otherwise in order for grant and an
objection under clause (b) of sub-section (1) of section 13 is outstanding,
the Controller may postpone the grant of patent and allow a period of two
months for removing the objection.]
S. 14; R. 28
S. 13(1); R. 32
R. 30(1)
30. Amendment of the complete specification in case of anticipation
(1) If the applicant so requests at any time, or if the Controller is satisfied
that the objection has not been removed within the period referred to in
sub-clause (2) of rule 29, a date for hearing the applicant shall be fixed
forthwith and the applicant shall be given at least ten days’ notice of the
date so fixed. The applicant shall, as soon as possible, notify the Controller
whether he will attend the hearing.
(2) After hearing the applicant, or without a hearing if the applicant has not
attended or has notified that he does not desire to be heard, the Controller
may specify or permit such amendment of the specification as will be to
his satisfaction to be made and may direct that reference to such other
specification, as he shall mention shall be inserted in the applicant’s
specification unless the amendment is made or agreed to within such
period as he may fix.
S. 13(3)
R. 29(2), 31
R. 28(5)
31. Form of reference to another specification
When in pursuance of rule 30, the Controller directs that a reference to another
specification shall be inserted in the applicant’s complete specification, such
reference shall be inserted after the claims and shall be in the following form,
namely:
“Reference has been directed, in pursuance of section 18(2) of the Patents
Act, 1970, to the specification filed in pursuance of application No. ...............”
­335
­336
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (2) (w.e.f. 01.01.2005).
www.lexcampus.in
R. 30
S. 18(2)
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32. Procedure in case of potential infringement
If in consequence of an investigation made under section 13, 337[***] it appears
to the Controller that the applicant’s invention cannot be performed without
substantial risk of infringement of a claim of another patent, the applicant
shall be so informed and the procedure provided in rule 29 shall, so far as may
be necessary, be applicable.
S. 13, 19; R. 29
33. Form of reference to another patent
Where the Controller directs that a reference to another patent shall be inserted
in the applicant’s complete specification under sub-section (1) of section 19, such
reference shall be inserted after the claims in the following form, namely“Reference has been directed, in pursuance of section 19(1) of the Patents
Act, 1970, to Patent No...........”
S. 19
34. Manner in which a claim under section 20(1) shall be made
(1) A claim under sub-section (1) of section 20 shall be made in Form 6.
(2) The original assignment or agreement or an official copy or notarized
copy thereof shall also be produced for the Controller’s inspection and the
Controller may call for such other proof of title or written consent as he
may require.
S. 20(1)
35. Manner in which a request may be made under section 20(4)
(1) A request under sub-section (4) of section 20 shall be made in Form 6.
(2) The request shall be accompanied by proof of death of the joint applicant
and a certified copy of the probate of the will of the deceased or letters of
administration in respect of his estate or any other document to prove
that the person who gives the consent is the legal representative of the
deceased applicant.
S. 20(4)
36. Manner of application under section 20(5)
(1) An application under sub-section (5) of section 20 shall be made in Form
6 in duplicate and shall be accompanied by a statement setting out fully
the facts upon which the applicant relies and the directions which he
seeks.
(2) A copy of the application and statement shall be sent by the Controller to
every other joint applicant.
S. 20(5)
[37. Numbering of applications on the grant of patent
338
On the grant of a patent, the application shall be accorded a number (called
serial number) in the series of numbers accorded to patents under the Indian
Patents and Designs Act, 1911 (2 of 1911)339 which shall be the number of the
patent so granted.]
38. 340[Omitted by the Patents (Amendment) Rules, 2005]
­337
­338
­339
­340
The words “or section 25” omitted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 37 (w.e.f. 01.01.2005).
Now see Designs Act, 2000 (16 of 2000).
***
www.lexcampus.in
R. 74
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CHAPTER V
EXCLUSIVE MARKETING RIGHTS
39 to 54. 341[Omitted by the Patents (Amendment) Rules, 2005]
342
CHAPTER VI
[OPPOSITION PROCEEDINGS TO GRANT OF PATENT]
[55. 344[Opposition to the patent]
343
[(1) Representation for opposition under sub-section (1) of section 25 shall
be filed in Form 7(A) at the appropriate office with a copy to the applicant,
and shall include a statement and evidence, if any, in support of the
representation and a request for hearing, if so desired.]
(1A) Notwithstanding anything contained in sub-rule(1), no patent shall
be granted before the expiry of a period of six months from the date of
publication of the application under section 11A.]
(2) The Controller shall consider such representation only when a request for
examination of the application has been filed.
346
[(3) On consideration of the representation if the Controller is of the
opinion that application for patent shall be refused or the complete
specification requires amendment, he shall give a notice to the applicant
to that effect.]
347
[(4) On receiving the notice under sub-rule (3), the applicant shall, if
he so desires, file his statement and evidence, if any, in support of his
application within three months from the date of the notice, with a copy
to the opponent.]
345
­341
­342
­343
­344
­345
­346
­347
S. 25(1); F. 7(A)
***
Substituted by S.O. 657(E), dated 05.05.2006, for “OPPOSITION PROCEEDINGS” (w.e.f.
05.05.2006).
Substituted by S.O. 1418 (E), dated 28.12.2004, for Rr. 55 to 57 (w.e.f. 01.01.2005).
Substituted by S.O. 657(E), dated 05.05.2006, for “Opposition by representation against
the grant of patent” (w.e.f. 05.05.2006).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (1) read as under:
“(1) Representation for opposition under sub-section (1) of section 25 shall be filed at the
appropriate office and shall include a statement and evidence, if any, in support of the
representation and a request for hearing if so desired.”
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (3) read as under:
“(3) On consideration of the representation if the Controller is of the opinion that application
for patent shall be refused or the complete specification requires amendment, he shall
give a notice to the applicant to that [effect along with a copy of such representation.”
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (4) read as under:
“(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his
statement and evidence, if any in support of his application within [three months] from
the date of the notice.”
www.lexcampus.in
S. 11A
R. 138(1)
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[(5) On consideration of the statement and evidence filed by the applicant,
the representation including the statement and evidence filed by the
opponent, submissions made by the parties, and after hearing the parties,
if so requested, the Controller may either reject the representation or
require the complete specification and other documents to be amended to
his satisfaction before the patent is granted or refuse to grant a patent on
the application, by passing a speaking order to simultaneously decide on
the application and the representation ordinarily within one month from
the completion of above proceedings.]
349
[***]
348
55A. Filing of notice of opposition
The notice of opposition to be given under 350[sub-section (2) of section 25] shall
be made in Form 7 and sent to the Controller in duplicate at the appropriate
office.
S. 25(2); R. 56
F. 7
56. Constitution of Opposition Board and its proceeding
(1) On receipt of 351[notice of opposition under rule 55A], the Controller shall,
by order, constitute an Opposition Board consisting of three members and
nominate one of the members as the Chairman of the Board.
(2) An examiner appointed under sub-section (2) of section 73 shall be eligible
to be a member of the Opposition Board.
(3) The examiner, who has dealt with the application for patent during the
proceeding for grant of patent thereon shall not be eligible as member of
Opposition Board as specified in sub-rule (2) for that application.
(4) The Opposition Board shall conduct the examination of the notice of
opposition along with documents filed under rules 57 to 60 referred to
under 352[sub-section (3) of section 25], submit a report with reasons on
each ground taken in the notice of opposition with its joint recommendation
within three months from the date on which the documents were forwarded
to them.
S. 25(2); R. 55A
S. 73(2)
S. 25(3);
R. 57-60
57. Filing of written statement of opposition and evidence
The opponent shall send a written statement in duplicate setting out the
nature of the opponent’s interest, the facts upon which he bases his case and
relief which he seeks and evidence, if any, along with notice of opposition
­348
­349
­350
­351
­352
S. 25, 28, 51, 57,
61, 63; R. 58
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (5) read as under:
“(5) On consideration of the statement and evidence filed by the applicant, the Controller may
either refuse to grant a patent on the application or require the complete specification to
be amended to his satisfaction before the patent is granted.”
Sub-rule (6) omitted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to
substitution, sub-rule (6) read as under:
“(6) After considering the representation and submission made during the hearing if so
requested, the Controller shall proceed further simultaneously either rejecting the
representation and granting the patent or accepting the representation and refusing the
grant of patent on that application, ordinarily within one month from the completion of
above proceedings.”
Substituted by S.O. 657(E), dated 05.05.2006, for “sub-section (3) of section 25” (w.e.f.
05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “notice of opposition” (w.e.f. 05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “sub-section (4) of section 25” (w.e.f.
05.05.2006).
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The Patents Rules, 2003
and shall deliver to the patentee a copy of the statement and the evidence,
if any.]
58. Filing of reply statement and evidence
(1) If the 353[patentee] desires to contest the opposition, he shall leave at the
appropriate office a reply statement setting out fully the grounds upon
which the opposition is contested and evidence if any, in support of his
case within a period of two months from the date of receipt of the copy of
the written statement and opponent’s evidence, if any by him under rule
57 and deliver to the opponent a copy thereof.
354
[(2) If the patentee does not desire to contest or leave his reply and
evidence within the period as specified in sub-rule (1), the patent shall be
deemed to have been revoked.]
S. 25, 28, 51, 57,
61, 63, 78
R. 57, 59
59. Filing of reply evidence by opponent
The opponent may, within one month from the date of delivery to him of a
copy of the 355[patentee’s] reply statement and evidence under rule 58, leave
at the appropriate office evidence in reply strictly confined to matters in the
patentee’s evidence and shall deliver to the patentee a copy of such evidence.
S. 25, 28, 51, 57,
61, 63, 78; R. 58
60. Further evidence to be left with the leave of the Controller
No further evidence shall be delivered by either party except with the leave or
directions of the Controller:
Provided that such leave or direction is prayed before the Controller has
fixed the hearing under rule 62.
S. 25, 28, 51, 57,
61, 63, 78; R. 62
61. Copies of documents to be supplied
(1) Copies of all documents referred to in the notice of opposition or in
any statement or evidence filed in connection with the opposition and
authenticated to the satisfaction of the Controller, shall be simultaneously
furnished in duplicate unless the Controller otherwise directs.
(2) Where a specification or other document in a language other than English
is referred to in the notice, statement or evidence, an attested translation
thereof, in duplicate, in English shall be furnished along with such notice,
statement or evidence, as the case may be.
62. Hearing
[(1) On the completion of the presentation of evidence, if any, and on
receiving the recommendation of Opposition Board or at such other time
as the Controller may think fit, he shall fix a date and time for the hearing
of the opposition and shall give the parties not less than ten days’ notice of
such hearing and may require members of Opposition Board to be present
in the hearing.]
(2) If either party to the proceeding desires to be heard, he shall inform the
Controller by a notice along with the fee as specified in the First Schedule.
(3) The Controller may refuse to hear any party who has not given notice
356
­353
­354
­355
­356
S. 25, 28, 51, 57,
61, 63, 78
S. 25, 28, 51, 57,
61, 63, 78, 85, 87,
88, 91, 92A, 94
R. 60,
R. 98(6), 101(7),
102(6)
Substituted by S.O. 1418 (E), dated 28.12.2004, for “applicant” (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (2) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “applicant’s” (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (1) (w.e.f. 01.01.2005).
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The Patents Rules, 2003
under sub-rule (2),
(4) If either party intends to rely on any publication at the hearing not already
mentioned in the notice, statement or evidence, he shall give to the other
party and to the Controller not less than five days’ notice of his intention,
together with details of such publication.
357
[(5) After hearing the party or parties desirous of being heard, or if neither
party desires to be heard, then without a hearing, and after taking into
consideration the recommendation of Opposition Board, the Controller
shall decide the opposition and notify his decision to the parties giving
reasons therefor.]
[63. Determination of costs
358
If the patentee notifies the Controller that he desires to withdraw the patent
after notice of opposition is given, the Controller, depending on the merits of
the case, may decide whether costs should be awarded to the opponent.]
S. 25, 28, 51, 57,
61, 63, 78; R. 136
[63A.Request made under section 26(1)
359
Request under section 26(1) shall be made on Form 12 within three months
from the date of the order of the Controller and shall be accompanied by a
statement setting out the facts upon which the petitioner relies and relief he
claims.]
S. 26(1); F. 12
64. [Omitted by the Patents (Amendment) Rules, 2005]
65. [Omitted by the Patents (Amendment) Rules, 2005]
66. Form of making a request under section 28(2)
A request under sub-section (2) of section 28 shall be made in Form 8.
S. 28(2); F. 8
67. Form of making a claim under section 28(3)
(1) A claim under sub-section (3) of section 28 shall be made in Form 8, and
shall be accompanied by a statement setting out the circumstances under
which the claim is made.
(2) A copy of the claim and the statement shall be sent by the Controller to
every applicant for the patent (not being the claimant) and to any other
person whom the Controller may consider to be interested.
S. 28(3); F. 8
68. Form of application to be made under section 28(7)
(1) An application under sub-section (7) of section 28 shall be made in Form
8 and shall be accompanied by a statement setting out the circumstances
under which the application is made.
(2) A copy of the application and the statement shall be sent by the Controller
to each patentee or the applicant for patent, as the case may be, and to
any other person whom the Controller may consider to be interested.
­357
­358
­359
S. 28(7); F. 8
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (5) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 63 (w.e.f. 01.01.2005).
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
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The Patents Rules, 2003
[69.Procedure for the hearing of claim or an application under
section 28
360
The procedure specified in rules 55A and 57 to 63 relating to the filing of
notice of opposition, written statement, reply statement, leaving evidence,
hearing and cost shall, so far as may be, apply to the hearing of a claim or
an application under section 28 as they apply to the opposition proceedings
subject to the modification that reference to patentee shall be construed as
the person making the claim, or an application, as the case may be.]
S. 28; R. 55A,
57-63
70. Mention of inventor
Any mention of the inventor under sub-section (1) of section 28 shall be
madein the relevant documents in the following form, namely: “The inventor of this invention/substantial part of this invention within
the meaning of section 28 of the Patents Act, 1970, is _______ of_______”
S. 28(1)
CHAPTER VII
SECRECY DIRECTIONS
[71.Permission for making patent application outside India
under section 39
361
(1) The request for permission for making patent application outside India
shall be made in Form 25.
362
[(2) The Controller shall dispose of the request made under sub-rule (1)
within a period of twenty-one days from the date of filing of such request:
Provided that in case of inventions relating to defence or atomic energy,
the period of twenty-one days shall be counted from the date of receipt of
consent from the Central Government.]
S. 39; F. 25
72. Communication of result of reconsideration under section 36(2)
(1) The result of every reconsideration under sub-section (1) of section 36
shall be communicated to the applicant for patent within fifteen days of
the receipt of the notice by the Controller.
(2) Extension of time on revocation of secrecy directions under Section 38 – The
extension of time to be given for doing anything required or authorised to
be done under section 38 shall not exceed the period for which directions
given by the Central Government under sub-section (1) of section 35 were
in force.
­360
­361
­362
S. 36(2)
S. 38, 35(1)
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 69 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 71 (w.e.f. 01.01.2005).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (2) read as under:
“(2) The time within which the Controller dispose of the request made under sub-rule (1),
except in case of inventions relating to defence and atomic energy applications, shall
ordinarily be within a period of twenty one days from the date of filing of such request”
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The Patents Rules, 2003
CHAPTER VIII
363
[GRANT OF PATENTS]
73. [Omitted by the Patents (Amendment) Rules, 2005]
[74. Form of patent
364
(1) A patent shall be in the form as specified in the Third Schedule with such
modifications as the circumstances of each case may require and shall
bear the number accorded to the application under rule 37.
(2) The patent certificate shall ordinarily be issued within seven days from
the date of grant of patent under section 43.]
S. 46; R. 37
S. 43
[74A.Inspection of documents related to grant of patent
365
After the date of publication of a grant of a patent, the application together
with the complete specification and provisional specification, if any, the
drawing if any, abstract and other documents related thereto may be inspected
at the appropriate office by making a written request to the Controller and on
payment of fee and may obtain copies on payment of fee specified in the First
Schedule.]
75. Amendment of patent under section 44
An application under section 44 for the amendment of a patent shall be made
in Form 10 along with substantiating evidence and be accompanied by the
patent.
S. 44; F. 10
76. Manner of applying for direction under section 51(1)
(1) An application for directions under sub-section (1) of section 51 shall be
made in Form 11 and shall be accompanied by a statement setting out the
facts upon which the applicant relies.
(2) A copy of the application and of the statement shall be sent by the
Controller to every other person registered as grantee or proprietor of the
patent.
S. 51(1); F. 11
77. Manner of application under section 51(2)
(1) An application for directions under sub-section (2) of section 51 shall be
made in Form 11 and shall be accompanied by a statement setting out the
facts upon which the applicant relies.
(2) A copy of the application and statement shall be sent by the Controller to
the person in default.
S. 51(2); F. 11
[78. Procedure for the hearing of proceedings under section 51
366
The procedure specified in rules 55A and 57 to 63 relating to the filing of notice
of opposition, written statement, reply statement, leaving evidence, hearing
S. 51; R. 55A,
57–63
­363
Substituted by S.O. 1418 (E), dated 28.12.2004, for “SEALING OF PATENT” (w.e.f.
01.01.2005).
­364
Substituted by S.O. 657(E), dated 05.05.2006, for R. 74 (w.e.f. 05.05.2006). Prior to its
substitution, R. 74 read as under:- “74. Form of patent.– A patent shall be in the form as
specified in the Third Schedule with such modifications as the circumstances of each case
may require and shall bear the number accorded to the application under rule 37.
­ 65
3
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
­ 66
3
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 78 (w.e.f. 01.01.2005).
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The Patents Rules, 2003
and costs shall, so far as may be, apply to the hearing of an application under
section 51 as they apply to the hearing of an opposition proceeding.]
79. Request under section 52(2)
(1) A request under sub-section (2) of section 52 shall be made in Form
12 within three months from the date of the order of the 367[Appellate
Board or] Court referred to in sub-section (1) of the said section and shall
be accompanied by a statement setting out the facts upon which the
petitioner relies and the relief he claims and a certified copy of the order
of the 368[Appellate Board or] Court.
(2) Where the 369[Appellate Board or Court] has ordered the grant of patent
to the applicant only for a part of the invention, the new patent granted
shall be accorded a number in the same series of numbers accorded to the
complete specifications accepted on the same day as the patent is granted.
S. 52(2); F. 12
80. Renewal fees under section 53
(1) To keep a patent in force, the renewal fees specified in the First Schedule
shall be payable at the expiration of the second year from the date of the
patent or of any succeeding year and the same shall be remitted to the
patent office before the expiration of the second or the succeeding year.
370
[(1A) The period for payment of renewal fees so specified in sub-rule (1) may
be extended to such period not being more than six months if the request
for such extension of time is made in Form 4 with the fee specified in the
First Schedule.]
(2) While paying the renewal fee, the number and date of the patent concerned
and the year in respect of which the fee is paid shall be quoted.
(3) The annual renewal fees payable in respect of two or more years may be
paid in advance.
(4) The Controller shall, after making such enquiry as he may deem necessary,
credit any renewal fee and issue a certificate that the fee has been paid.
S. 53; F. 4
CHAPTER IX
AMENDMENT OF APPLICATION, SPECIFICATION OR ANY
DOCUMENT RELATING THERETO
81.Amendment of application, specification or any document
relating thereto
(1) An application under section 57 for the amendment of an application for
a patent or a complete specification or any document related thereto shall
be made in Form 13.
(2) If the application for amendment under sub-rule (1) relates to an application
for a patent which has not been 371[granted], the Controller shall determine
whether and subject to what conditions, if any, the amendment shall be allowed.
­367
­368
­369
­370
­371
S. 57; R. 14; F. 13
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “accepted” (w.e.f. 01.01.2005).
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372
[3(a)
(b)
(c)
If the application for amendment under sub-rule (1) is made after
grant of patent and the nature of the proposed amendment is
substantive, the application shall be published.
Any person interested in opposing the application for amendment
shall give a notice of opposition in Form 14 within three months
from the date of publication of the application.
The procedure specified in rules 57 to 63 relating to the filing of written
statement, reply statement, leaving evidence, hearing and costs shall,
so far as may be, apply to the hearing of the opposition under section
57 as they apply to the hearing of an opposition proceeding.]
F. 14
R. 57-63
82. Preparation of amended specifications, etc.
Where the Controller allows the application for a patent or the complete
specification or any other document to be amended, the applicant shall, if the
Controller so requires and within the time to be specified by him, leave at the
appropriate office an amended application or the specification of the other
document, as the case may be, in accordance with the provisions of these rules.
S. 57
[83. Publication of the amendment allowed
373
S. 57
The amendments allowed after a patent has been granted, shall be published.]
CHAPTER X
RESTORATION OF PATENTS
84. Restoration of patents
(1) An application for the restoration of a patent under section 60 shall be
made in Form 15.
(2) Where the Controller is satisfied that a prima facie case for the restoration
of any patent has not been made out, he shall intimate the applicant
accordingly and unless the applicant makes a request to be heard in the
matter within one month from the date of such intimation the Controller
shall refuse the application.
374
[(3) Where applicant requests for a hearing within the time allowed and
the Controller, after giving the applicant such a hearing, is prima facie
satisfied that the failure to pay the renewal fees was unintentional, he
shall publish the application.]
S. 60(2); F. 15
R. 85
[85. Opposition to restoration under section 61
375
(1) At any time, within two months from the date of publication of the
application under sub-rule (3) of rule 84, any person interested may give
notice of opposition thereto in Form 14.
(2) A copy of the notice of opposition shall be sent by the Controller to the
applicant.
(3) The procedure specified in rules 57 to 63 relating to the filing of written
statement, reply statement, leaving evidence, hearing and costs shall, so
­372
­373
­374
­375
S. 61; F. 14;
R. 84(3)
R. 57-63
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (3) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 83 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (3) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 85 (w.e.f. 01.01.2005).
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far as may be, apply to the hearing of the opposition under section 60 as
they apply to the hearing in the opposition proceeding.]
86. Payment of unpaid renewal fees
(1) Where the Controller decides in favour of the applicant, the applicant
shall pay the unpaid renewal fees and the additional fee specified in the
First Schedule, within a month from the date of the order of the Controller
allowing the application for restoration.
376
[(2) The Controller shall publish his decision.]
S. 61
CHAPTER XI
SURRENDER OF PATENTS
[87. Surrender of Patents
377
(1) The Controller shall publish the notice of an offer given under section 63.
(2) Any person interested may, within three months from the date of
publication of the notice, give notice of opposition to the Controller in
Form 14 in duplicate.
(3) The procedure specified in rules 57 to 63 relating to the filing of written
statement, reply statement, leaving evidence, hearing and costs shall, so
far as may be, apply to the hearing of the opposition under section 63 as
they apply to the hearing in opposition proceeding.
(4) If the Controller accepts the patentee’s offer to surrender the patent, he may
direct the patentee to return the patent, and on receipt of such patent, the
Controller shall by order revoke it and publish the revocation of the patent.]
S. 63
F. 14
S. 63; R. 57-63
CHAPTER XII
REGISTER OF PATENTS
88. Register of patents under section 67
(1) Upon the 378[grant] of a patent, the Controller shall enter in the register
of patents at each appropriate office, the name, address and nationality of
the grantee as the patentee thereof, the title of the invention (including
the categories to which the invention relates), the date of the patent and
the date of 379[grant] thereof together with the address for service of the
patentee.
(2) The Controller shall also enter in the register of patents particulars
regarding proceedings under the Act before the 380[Controller or Appellate
Board or the courts] in respect of every patent.
(3) Where the register of patents or any part thereof is in computer floppies,
diskettes or any other electronic form it shall be maintained and accessed
only by the person who is duly authorised by the Controller and no entry
or alteration of any entry or rectification of any entry in the said register
­376
­377
­378
­379
­380
S. 67(1)
S. 71
S. 67(3), 117D(2)
R. 95(2)
Substituted by S.O. 1418 (E), dated 28.12.2004, for sub-R. (2) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 87 (w.e.f. 01.01.2005).
Substituted by S.O. 657(E), dated 05.05.2006, for “sealing” (w.e.f. 05.05.2006).
Substituted by S.O. 657(E), dated 05.05.2006, for “sealing” (w.e.f. 05.05.2006).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Controller or the courts” (w.e.f. 01.01.2005).
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The Patents Rules, 2003
shall be made by any person who is not so authorised by the Controller.
89. [Omitted by the Patents (Amendment) Rules, 2005]
90. Registration of title and interest in patents
(1) An application referred to in sub-section (1) or sub-section (2) of section 69
shall be made in 381[Form 16.]
(2) An application for an entry in the register of patents of any other
document purporting to affect the proprietorship of the patent by the
person benefiting under the document shall be made in 382[Form 16.]
S. 69; F. 16
F. 16
91. Presentation of assignment, etc of patent to Controller
Every assignment and every other document giving effect to or being evidence
of the transfer of a patent or affecting the proprietorship thereof or creating
an interest therein as claimed in such application, shall, unless the Controller
otherwise directs, be presented to him together with the application which
shall be accompanied by two copies of the assignment or other document
certified to be true copies by the applicant or his agent and the Controller may
call for such other proof of title or written consent as he may require.
S. 69
92. Registration of title or interest in a patent
After the receipt of an application under sub-section (1) or sub-section (2) of
section 69, the Controller shall register the title of the person concerned or
his interest in a patent, as the case may be, and an entry in the following form
shall be made in the register, namely: “In pursuance of an application received on the____________
Proprietor________ Assignment _________ registered as ____________ licensee
______ by virtue of licence _________ Mortgagee, etc ___________ Mortgage,
deed, etc dated _______ and made between ____________ on the one part and
________ of the other part.”
S. 69
[93. Entry of renewal fee
383
Upon receipt of the payment of the prescribed renewal fee in respect of a
patent, the Controller shall enter in the register of patents the fact that the
fee has been paid and the date of payment of such fee and issue a certificate
of renewal of the patent.]
94. Alteration of address
(1) A patentee may make a request in writing along with fee payable to the
Controller for the alteration of his name, nationality, address or address
for service as entered in the register of patents in respect of any patent
granted to him. The Controller may require such proof of the alteration as
he may think fit before acting on a request to alter the name or nationality.
(2) If the Controller allows a request made under sub-rule (1), he shall cause
­381
­382
­383
Substituted by S.O. 1418 (E), dated 28.12.2004, for ‘Form 17” (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for ‘Form 17” (w.e.f. 01.01.2005).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
93 read as under:
“93. Entry of renewal fee. – Upon receipt of the payment of the prescribed renewal fee in
respect of patent, the Controller shall enter in the register of patents the fact that the fee
has been paid and the date of payment of such fee and issue a certificate of the payment.”
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S. 67
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The Patents Rules, 2003
the entries in the register to be altered accordingly.
(3) If a patentee makes a request in writing along with fee payable for
entering an additional address for service in India and if the Controller is
satisfied that the request should be allowed, he shall have the additional
address for service entered in the register.
95.Inspection of register of patents under section 72 and fees
payable therefor
(1) The register of patents shall be open for public inspection during office
hours on payment of the fees specified therefor in the First Schedule.
(2) When register of patents or any part thereof is in computer floppies, diskettes
or any other electronic form the person authorised by the Controller under
sub-rule (3) of rule 88 shall provide access to the computer floppies, diskettes
or other electronic form or printouts of the records thereof.
S. 72; R. 133
R. 88
CHAPTER XIII
COMPULSORY LICENCE AND REVOCATION OF PATENT
[96.Application for compulsory licence, etc.
384
An application to the Controller for an order under section 84, section 85,
section 91 or section 92 or section 92A shall be in Form 17, or Form 19, as
the case may be. Except in the case of an application made by the Central
Government, the application shall set out the nature of the applicant’s interest
and terms and conditions of the licence the applicant is willing to accept.]
S. 84, 85, 87, 91,
92A; R. 97
F. 17, 19
97. When a prima facie case is not made out
(1) If, upon consideration of the evidence, the Controller is satisfied that a
prima facie case has not been made out for the making of an order under
any of the sections referred to in rule 96, he shall notify the applicant
accordingly, and unless the applicant requests to be heard in the matter,
within one month from the date of such notification, the Controller shall
refuse the application.
(2) If the applicant requests for a hearing within the time allowed under subrule (1), the Controller shall, after giving the applicant an opportunity of
being heard, determine whether the application may be proceeded with or
whether it shall be refused.
S. 85, 87, 91, 92A
R. 96
98. Notice of opposition under section 87(2)
(1) A notice of opposition under sub-section (2) of section 87 shall be given in
Form 14 and shall be sent to the Controller within two months from the
date of the 385[publication] of the application under sub-section (1) of the
said section.
(2) The notice of opposition referred to in sub-rule (1) shall include the terms
and conditions of the licence, if any, the opponent is prepared to grant
to the applicant and shall be accompanied by evidence in support of the
opposition.
­384
­385
S. 84, 85, 87, 91,
92A
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 96 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “advertisement” (w.e.f. 01.01.2005).
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The Patents Rules, 2003
(3) The opponent shall serve a copy of his notice of opposition and evidence
on the applicant and notify the Controller when such service has been
effected.
(4) No further statement or evidence shall be delivered by either party except
with the leave of or on requisition by the Controller.
(5) The Controller shall forthwith fix a date and time for the hearing of the
case and shall give the parties not less then ten days’ notice of such hearing.
(6) The procedure specified in sub-rules (2) to (5) of rule 62, shall, so far as
may be, apply to the procedure for hearing under this rule as they apply
to the hearing 386[in opposition proceedings.]
R. 62
[99. Manner of publication of the revocation order
387
S. 85, 87
The Controller shall publish the order made by him under sub-section (3) of
section 85 revoking a patent.]
100. Application under section 88(4)
(1) An application under sub-section (4) of section 88 for the revision of
the terms and conditions of a licence which have been settled by the
Controller shall be in 388[Form 20] and shall state the facts relied upon
by the applicant and the relief he seeks and shall be accompanied by
evidence in support of the application.
(2) If the Controller is satisfied that a prime facie case has not been made out
for the revision of the terms and conditions of the licence, he may notify the
applicant accordingly and unless within a month the applicant requests
to be heard in the matter, the Controller may refuse the application.
(3) The Controller, after giving the applicant an opportunity of being heard,
shall determine whether the application shall be proceeded with or
whether the application shall be refused.
101.Procedure to be followed in case of applications under section
88(4)
S. 88(4); F. 20
S. 88(4)
(1) If the Controller allows the application to be proceeded with, he shall
direct the applicant to serve copies of the application and of the evidence
in support thereof upon the patentee or any other person appearing in the
register to be interested in the patent or upon any other person on whom,
in his opinion such copies should be so served.
(2) The applicant shall inform the Controller the date on which the service
of copies of application and of the evidence on the patentee and other
persons referred to in sub-rule (1) has been effected.
(3) The patentee or any other person on whom copies of the application and
of the evidence have been served, may give to the Controller notice of
opposition in Form 14 within one month from the date of such service.
Such notice shall contain the grounds relied upon by the opponent and
shall be accompanied by evidence in support of the opposition.
­386
Substituted by S.O. 1418 (E), dated 28.12.2004, for “of opposition to the grant of patents”
(w.e.f. 01.01.2005).
­387
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 99 (w.e.f. 01.01.2005).
­ 88
3
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 21” (w.e.f. 01.01.2005).
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F. 14
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The Patents Rules, 2003
(4) The opponent shall serve copies of the notice of opposition and his evidence
on the applicant and inform the Controller the date on which such service
has been effected.
(5) No further evidence or statement shall be filed by either party except with
special leave of or on requisition by the Controller.
(6) On completion of the above proceedings, the Controller shall forthwith fix
a date and the time for the hearing of the case and shall give the parties
not less than ten days’ notice of such hearing.
(7) The procedure specified in sub-rules (2) to (5) of rule 62 shall; so far as
may be, apply to the procedure for hearing under this rule as they apply
to the hearing 389[in opposition proceedings.]
(8) If the Controller decides to revise the terms and conditions of licence
he shall forthwith amend the licence granted to the applicant in such
manner, as he may deem necessary.
R. 62
102.Application for termination of compulsory licence under
section 94
(1) An application for termination of compulsory licence under section 94(1)
shall be made in 390[Form 21] by the patentee or any other person deriving
title or interest in the patent. The application shall be accompanied by the
evidence in support of the application.
(2) The applicant shall serve a copy of the application and evidence on the
holder of the compulsory licence and shall inform the Controller the date
on which the service has been effected.
(3) The holder of the compulsory licence may file his objection along with
evidence, if any, to the application within one month from the date of
receipt of the application and evidence by him to the Controller and serve
a copy thereof to the applicant.
(4) No further evidence or statement shall be filed by either party except with
special leave of or on requisition by the Controller.
(5) On completion of the above proceedings, the Controller shall forthwith fix
a date and the time for the hearing of the case and shall give the parties
not less than ten days’ notice of such hearing.
(6) The procedure specified in sub-rules (2) to (5) of rule 62 so far as may be,
apply to the procedure for hearing under this rule as they apply to the
hearing 391[in opposition proceedings.]
(7) If the Controller decides to terminate the compulsory licence he shall
forthwith issue an order giving terms and conditions, if any, of such
termination and serve copies of the order to both the parties.
­389
­390
­391
S. 94; F. 21
Substituted by S.O. 1418 (E), dated 28.12.2004, for “of opposition to the grant of patents”
(w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 22” (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “of opposition to the grant of patents”
(w.e.f. 01.01.2005).
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R. 62
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The Patents Rules, 2003
CHAPTER XIV
SCIENTIFIC ADVISERS
103. Roll of scientific advisers
(1) The Controller shall maintain a roll of scientific advisers for the purpose of
section 115. The roll shall be updated annually. The roll shall contain the
392
[names, addresses, specimen signatures and photographs] of scientific
advisers, their designations, information regarding their educational
qualifications, the disciplines of their specialisation and their technical,
practical and research experience.
(2) A person shall be qualified to have his name entered in the roll of scientific
advisers, if he(i)
holds a degree in science, engineering, technology or equivalent;
393
[(ii) has at least fifteen years’ technical, practical or research
experience; and]
(iii)
he holds or has held a responsible post in a scientific or technical
department of the Central or State Government or in any
organisation.
S. 115
R. 106
[103A. Disqualifications for inclusion in the roll of scientific
advisers
394
A person shall not be eligible to be included in the roll of scientific advisors,
if he—
(i)
has been adjudged by a competent court to be of unsound mind;
(ii)
is an undischarged insolvent;
(iii)
being a discharged insolvent, has not obtained from the court
a certificate to the effect that his insolvency was caused by
misfortune without any misconduct on his part;
(iv)
has been convicted by a competent court, whether within or outside
India of an offence to undergo a term of imprisonment, unless
the offence of which he has been convicted has been pardoned or
unless on an application made by him, the Central Government
has, by order in this behalf, removed the disability; or
(v)
has been guilty of professional misconduct.]
S. 115
[104. M
anner of application for inclusion in the roll of scientific
advisers
395
Any interested person may apply to the Controller for inclusion of his name in
the roll of scientific advisers by furnishing his bio-data.]
­392
­393
Substituted by S.O. 1418 (E), dated 28.12.2004, for “names and addresses” (w.e.f. 01.01.2005).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
clause (ii) read as under:
“(ii) has at least fifteen years’ practical or research experience; and”
­394
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
­ 95
3
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
104 read as under:
“104. Manner of application for inclusion in the roll of scientific advisers. – Any interested
person may apply to the Controller for inclusion of his name in the roll of scientific
advisers furnishing his bio-data.”
www.lexcampus.in
S. 115
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The Patents Rules, 2003
105.Inclusion of the name of any other person in the roll of
scientific advisers
The Controller may, notwithstanding anything contained in rules 103 and
104, enter the name of any person in the roll of scientific advisers, if he is of
the opinion after such inquiry as he deems fit, that such person should be
entered in the roll of scientific advisers.
S. 115; R. 103, 104
106. Power to relax
Where the Controller is of the opinion that it is necessary or expedient so to
do, he may, by order, for reasons to be recorded in writing, relax any of the
qualifications specified in sub-rule (2) of rule 103 with respect to any person,
if such person is otherwise well qualified.
S. 115; R. 103
107. Removal of names from the roll of scientific advisers
The Controller may remove the name of any person from the roll of scientific
advisers, if(a)
such person makes a request for such removal; or
(b)
the Controller is satisfied that his name has been entered in the
roll by error or on account of misrepresentation or suppression of
any material fact; or
396
[(c) such person has been convicted of an offence and sentenced to
a term of imprisonment or has been guilty of misconduct in his
professional capacity and the Controller is of the opinion that his
name should be removed from the roll; or
(d)
such person is dead:
Provided that except in the cases falling under clause (a) and (d)
above, before removing the name of any person from the roll of
scientific advisers under this rule, such person shall be given a
reasonable opportunity of being heard.]
S. 115
CHAPTER XV
PATENT AGENTS
108. Particulars to be contained in the register of patent agents
397
[(1) The register of patent agents maintained under section 125 shall contain
the name, nationality, address of the principal place of business, addresses
of branch offices, if any, the qualifications, the date of registration of every
registered patent agent and the details of their renewal of registration
­396
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
clause (c)and proviso thereunder read as under:
“(c) such person has been convicted of an offence and sentenced to a term of imprisonment
or has been guilty of misconduct in his professional capacity and the Controller is of the
opinion that his name should be removed from the roll:
Provided that, before removing the name of any person from the roll of scientific advisers
under this rule, such person shall be given a reasonable opportunity of being heard.”
­ 97
3
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (1) read as under:
“(1) The register of patent agents maintained under section 125 shall contain the name,
nationality, address of the principal place of business, addresses of branch offices, if any,
the qualifications and the date of registration of every registered patent agent.”
www.lexcampus.in
S. 125
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The Patents Rules, 2003
and any other particulars so specified by the Controller.]
(2) Where the register of patent agents is in computer floppies, diskettes or
any other electronic form, it shall be maintained and accessed only by the
person who is duly authorised by the Controller and no entry or alteration
of any entry or rectification of any entry in the said register shall be made
by any person who is not so authorised by the Controller.
398
[(3)(i)
Copies of register of patent agents shall be maintained in each of
the branch offices;
(ii)
The register of patent agents shall also contain specimen signatures
and photographs of the persons registered as patent agents.]
S. 117D(2)
109. Application for registration of patent agents
(1) Every person who desires to be registered as a patent agent shall make an
application in 399[Form 22.]
(2) The applicant shall furnish such other information as may be required by
the Controller.
400
[(3) A person desirous to appear in the qualifying examination under rule
110 shall make a request to the Controller along with the fee specified in
the First Schedule after announcement of such examination and within
the period as may be specified in the announcement.]
S. 125; F. 22
R. 110
110. Particulars of the qualifying examination for patent agents
(1) The qualifying examination referred to in clause (c) (ii) of sub-section (1)
of section 126 shall consist of a written test and a viva voce examination.
(2) The qualifying examination shall consist of the following papers and
marks, namely:
Paper I Patent Act and Rules
100
Paper IIDrafting and interpretation of patent specifications
and other documents
100
401
Viva Voce
[50]
402
[(3) A candidate shall be required to secure a minimum of fifty marks in
paper I and paper II and shall be declared to have passed the examination
only, if he obtains an aggregate of sixty percent of the total marks.]
S. 126
R. 109(3), 111
111. Registration of patent agents
After a candidate passes the qualifying examination specified in rule 110
and after obtaining any further information which the Controller considers
necessary he shall, on receipt of the fee specified therefor in the First Schedule,
enter the candidate’s name in the register of patent agents and issue to him a
certificate of registration as a patent agent.
R. 110, 111A
S. 126(1)d
­398
­399
­400
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 23” (w.e.f. 01.01.2005).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (3) read as under:
“(3) A person desirous to appear in the qualifying examination under rule 110 shall make a
request to the Controller along with the fee as specified in the First Schedule.”
­401
Substituted for the figure “100” by the Patent(Amendment) Rules, 2012 vide SO 229(E), dated
25.09.2012, w.e.f. 25.09.2012
­ 02
4
Substituted by the Patent (Amendment) Rules, 2012 vide SO 2296(E ), dated 25.09.2012,
w.e.f. 25.09.2012
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The Patents Rules, 2003
[111A. Issue of duplicate certificate of patent agents
403
R. 111
The Controller may issue a duplicate certificate of registration as patent
agent on a request made by the person so registered as patent agent along
with fee specified in the First Schedule and contain a statement setting out
the circumstances in which the original certificate issued under rule 111 was
lost, destroyed and cannot be produced.]
112.Details to be included in an application for the registration of a
patent agent
An application by a person entitled to be registered as a patent agent under
sub-section (2) of section 126 shall also be made in 404[Form 22.]
S. 126; R. 113;
F. 22
113. Registration of patent agents under section 126(2)
On receipt of an application for the registration of a person as a patent agent
under rule 112, the Controller may if he is satisfied that the said person fulfils
the conditions specified in sub-section (2) of section 126 enter his name in the
register of patent agents.
S.126(2); R. 112
114. Disqualifications for registration as a patent agent
A person shall not be eligible to be registered as a patent agent, if he(i)
has been adjudged by a competent court to be of unsound mind;
(ii)
is an undischarged insolvent;
(iii)
being a discharged insolvent, has not obtained from the court
a certificate to the effect that his insolvency was caused by
misfortune without any misconduct on his part;
(iv)
has been convicted by a competent court, whether within or outside
India of an offence to undergo a term of imprisonment, unless
the offence of which he has been convicted has been pardoned or
unless on an application made by him, the Central Government
has, by order in this behalf, removed the disability;
(v)
being a legal practitioner has been guilty of professional
misconduct; or
(vi)
being a chartered accountant, has been guilty of negligence or
misconduct.
115. Payment of fees
The continuance of a person’s name in the register of patent agents shall be
subject to the payment of the fees specified therefor in the First Schedule.
R. 116(1)(d)
116.Removal of a name from the register of patent agents
(1) The Controller may delete from the register of patent agents, the name of
any patent agent(a)
from whom a request has been received to that effect; or
(b)
when he is dead; or
(c)
when the Controller has removed the name of a person under sub­403
­404
Inserted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 23” (w.e.f. 01.01.2005).
www.lexcampus.in
S. 130
S. 130(1)
143
The Patents Rules, 2003
section (1) of section 130; or
[(d) if he has defaulted in the payment of fees specified in rule 115, by
more than three months after they are due; or
(e)
if he ceases to be a citizen of India:
Provided that except under clause (a) and (b), before removing the
name of any person from the register of patent agents under this
rule, such person shall be given a reasonable opportunity of being
heard.]
(2) The removal of the name of any person from the register of patent
agents 406[shall be published] and shall be, where relevant forthwith
communicated to the person concerned.
R. 115
405
117. Restoration of name of persons removed from the register of
patent agents
(1) An application for the restoration of the name of any person removed from
the register of patent agents under sub-section (2) of section 130 shall be
made in 407[Form 23] within two months from the date of such removal.
(2) If the name of a person is restored to the register of patent agents, his
name shall be continued therein for a period of one year from the date on
which his last annual fee became due.
408
[(3) The restoration of a name to the register of patent agents shall be
communicated to the patent agent and also published on the official
website.]
S. 130(2); F. 23
118. Alteration of names etc in the register of patent agents
[(1) A patent agent may apply for the alteration of his name, address of the
principal place of business and branch offices, if any, or the qualifications
entered in the register of patent agents, e-mail address, telephone number,
fax number or any other particulars under sub-section (1) of section 125.
On receipt of such application and the fee specified therefor in the First
Schedule for such request for alteration of particulars, the Controller shall
cause the necessary alterations to be made in the register of patent agents.]
(2) Every alteration made in the register of patent agents 410[shall be
published.]
409
­405
­406
­407
­408
­409
­410
S. 125(1)
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution,
clause (a) read as under:
“(d) if he has defaulted in the payment of fees specified in rule 115, by more than three
months after they are due.”
Substituted by S.O. 1418 (E), dated 28.12.2004, for “shall be notified in the Official Gazette”
(w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 24” (w.e.f. 01.01.2005).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (3) read as under:
“(3) The restoration of a name to the register of patent agents shall be published and
communicated to the person concerned.”
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (1) read as under:
“(1) A patent agent may apply for the alteration of his name, address of the principal place
of business and branch offices, if any, or the qualifications entered in the register of
patent agents. On receipt of such application and the fee specified therefor in the First
Schedule, the Controller shall cause the necessary alterations to be made in the register
of patent agents.”
Substituted by S.O. 1418 (E), dated 28.12.2004, for “shall be notified in the Official Gazette”
(w.e.f. 01.01.2005).
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144
The Patents Rules, 2003
119. Refusal to recognise as patent agent
If the Controller is of the opinion that any person should not be recognised as
a patent agent in respect of any business under the Act as provided in subsection (1) of section 131 thereof, he shall communicate his reasons to that
person and direct him to show-cause why he should not refuse to recognise
him as such agent, within such time as he may allow, and after considering
the reply, if any, of that person and giving him an opportunity of being heard,
the Controller may pass such orders as he may deem fit.
S. 131(d)
120.Publication of the names of patent agents, registered under the
Act
The names and addresses of persons registered as patent agents shall from
time to time be published 411[***].
CHAPTER XVI
MISCELLANEOUS
[121. Period within which copies of specification, etc. are to be filed
412
The period within which copies of specification or corresponding documents
to be filed by the applicant under subsection (1) of section 138 shall be three
months from the date of communication by the Controller.
S. 138
121A. Address of communications
All communications in relation to any proceeding under the Act or these rules
shall be addressed to the Controller at the appropriate office.]
122. Correction of clerical errors
A request for the correction of a clerical error in any document referred to in
section 78 shall be accompanied by a copy of the document highlighting the
corrections clearly along with the fees payable therefor as specified in the
First Schedule.
S. 78
123.Manner of advertisement of the proposed correction of any error
Where the Controller requires a notice of the nature of the proposed correction
to be advertised, the request and the nature of the proposed correction shall be
published 413[***] and the person making the request shall also serve copies of
the request and the copies of the document showing the proposed corrections
to such persons who, in the opinion of the Controller, may be interested.
S. 78
124. Manner and time of opposition to the making of corrections
(1) Any person interested may, at any time, within three months from the
date of the advertisement of the request for correction and 414[***] give
notice of opposition to the Controller in Form 14 in duplicate.
S. 78; F. 14
­411
The words “in the Official Gazette, and in such other manner as the Controller may deem fit”
omitted by S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
­412
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 121 (w.e.f. 01.01.2005).
­ 13
4
The words “in the Official Gazette” omitted by S.O. 1418 (E), dated 28.12.2004 (w.e.f.
01.01.2005).
­ 14
4
Substituted by S.O. 1418 (E), dated 28.12.2004, for “to the hearing of the opposition to the
grant of patents” (w.e.f. 01.01.2005).
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145
The Patents Rules, 2003
(2) Such notice of opposition shall be accompanied by a statement in duplicate
setting out the nature of the opponent’s interest, the facts on which he
relies and the relief which he seeks.
(3) A copy of the notice and of the statement shall be sent by the Controller
to the person making the request.
(4) The procedure specified in rules 58 to 63 relating to the filing of reply
statement, leaving evidence, hearing and costs shall, so far as may be,
apply to the hearing of the opposition proceeding under section 78 as they
apply 415[in the hearing of the opposition proceedings.]
R. 58-63
125. Notification of corrections
The Controller shall notify the person making a request for the correction and
the opponent, if any, of the corrections made in the relevant document.
S. 78
126. Form, etc of affidavits
(1) The affidavits required by the Act or these rules to be filed at the patent
office or furnished to the Controller shall be duly sworn to in the manner
as prescribed in sub-rule (3).
(2) Affidavits shall be confined to such facts as the deponent is able, of his own
knowledge, to prove except in interlocutory matters, where statements of
belief of the deponent may be admitted, provided that the grounds thereof
are given.
(3) Affidavits shall be sworn to as follows: (a)
in India - before any court or person having by law authority to
receive evidence, or before any officer empowered by such court as
aforesaid to administer oaths or to take affidavits;
(b)
in any country or place outside India - before a diplomatic or
consular officer, within the meaning of the Diplomatic and
Consular Officers (Oaths and Fees) Act, 1948 (41 of 1948) in
such country or place or before a notary of the country or place,
recognised by the Central Government under section 14 of the
Notaries Act, 1952 (53 of 1952), or before a Judge or Magistrate of
the country or place.
(4) Alterations and interlineations shall, before an affidavit is sworn to or
affirmed be authenticated by the initials of the person before whom the
affidavit is sworn to.
R. 10
127. Exhibits
Where there are exhibits to be filed in an opposition or any other proceedings,
a copy or impression of each exhibit shall be supplied to the other party at his
request and expense; if copies or impressions of the exhibits cannot conveniently
be furnished, the originals shall be left with the Controller for inspection by the
person interested by prior appointment. The exhibits in original if not already
left with the Controller shall be produced at the hearing.
­415
Substituted for “to the hearing of the opoositon to the grant of patents”, (w.e.f. 01.01.2005).
www.lexcampus.in
R. 10
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The Patents Rules, 2003
128. Directions not otherwise prescribed
(1) Where for the proper prosecution or completion of any proceedings under
the Act or these rules, the Controller is of the opinion that it is necessary
for a party to such proceedings to perform an act, file a document or
produce evidence, for which provision has not been made in the Act or
these rules, he may, by notice in writing, require such party to perform the
act, file the document or produce the evidence specified in such notice.
(2) Where an applicant or a party to a proceeding desires to be heard or
not heard, the Controller may, at any time, require him to submit his
statement in writing giving such information as the Controller may deem
necessary within the time specified by him.
[129. Exercise of discretionary power by the Controller
416
Before exercising any discretionary power under the Act or these rules which
is likely to affect an applicant for a patent or a party to a proceeding adversely,
the Controller shall give such applicant or party, a hearing, after giving him
or them, ten days’ notice of such hearing ordinarily.]
S. 80
[129A. Adjournment of hearing
417
An applicant for patent or a party to a proceeding may make a request for
adjournment of the hearing with reasonable cause along with the prescribed
fee prescribed in First Schedule, at least three days before the date of hearing
and the Controller, if he thinks fit to do so, and upon such terms as he may
direct, may adjourn the hearing and intimate the parties accordingly:
Provided that no party shall be given more than two adjournments and
each adjournment shall not be for more than thirty days.]
130.Application for review of decisions or setting aside of orders of
the Controller
(1) An application to the Controller for the review of his decision under
clause (f) of sub-section (1) of section 77 shall be made in 418[Form 24]
within one month from the date of communication of such decision to
the applicant or within such further period not exceeding one month
thereafter as the Controller may on a request made in Form 4 allow
and shall be accompanied by a statement setting forth the grounds on
which the review is sought. Where the decision in question concerns any
other person in addition to the applicant, the Controller shall forthwith
transmit a copy of each of the application and the statement to the other
person concerned.
(2) An application to the Controller for setting aside an order passed by
him ex parte under clause (g) of sub-section (1) of section 77 shall be
made in Form 24 within one month from the date of communication of
such order to the applicant or within such further period not exceeding
one month as the Controller may on a request made in Form 4 allow
and shall be accompanied by a statement setting forth the grounds on
which the application is based. Where the order concerns any other
­416
­417
­418
S. 77; R. 138(1)
F. 24
Substituted by S.O. 1418 (E), dated 28.12.2004, for R. 129 (w.e.f. 01.01.2005).
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 25” (w.e.f. 01.01.2005).
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147
The Patents Rules, 2003
person in addition to the applicant, the Controller shall, forthwith
transmit a copy each of the application and the statement to the other
person concerned.
131.Form and manner in which statements required under section
146(2) to be furnished
(1) The statements shall be furnished by every patentee and every licensee
under sub-section (2) of section 146 in 419[Form 27] which shall be duly
verified by the patentee or the licensee or his authorised agent.
420
[(2) The statements referred to in sub-rule (1) shall be furnished once in
respect of every financial year, starting from the financial year commencing
immediately after the financial year in which the patent was granted,
and shall be furnished within six months from the expiry of each such
financial year.]
(3) The Controller may publish the information received by him under subsection (1) or sub-section (2) of section 146 421[***].
S. 146; F. 27
132. Form of application for the issue of a duplicate patent
S. 154
An application for the issue of a duplicate patent under section 154 shall
contain a statement setting out the circumstances in which the patent was
lost or destroyed or cannot be produced together with the fee as specified
therefor in the First Schedule.
[133. S
upply of certified copies and certificates under sections 72
and 147
422
(1) Certified copies of any entry in the register, or certificates of, or extracts
from patents, specifications and other public documents in the patent office,
or from registers and other records including records in computer floppies,
diskettes or any other electronic form kept there, may be furnished by the
Controller on a request therefor made to him and on payment of the fee
specified therefor in the First Schedule:
Provided that certified copies shall be issued in the order in which the
request is filed.
(2) Notwithstanding anything contained in sub-rule (1), certified copies shall
be furnished within a period of one week if such request is made along
with the fee specified therefore in the First Schedule.]
S. 72, 147
134. Request for information under section 153
(1) A request for information in respect of the following matters relating to
S. 153 (1)
­419
­420
­421
Substituted by S.O. 1418 (E), dated 28.12.2004, for “Form 29” (w.e.f. 01.01.2005).
Substituted by G.S.R. 652(E), dated 19.10.2020 (w.e.f. 01.01.2021).
The words “in the Official Gazette and in such other manner as he may deem fit” omitted by
S.O. 1418 (E), dated 28.12.2004 (w.e.f. 01.01.2005).
­ 22
4
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, rule
133 read as under:
“133. Supply of certified copies and certificates under sections 72 and 147. –
Certified copies of any entry in the register, or certificates of, or extracts from patents,
specifications and other public documents in the patent office, or from registers and
other records including records in computer floppies, diskettes or any other electronic
form kept there, may be furnished by the Controller on a request therefor made to him
and on payment of the fee specified therefor in the First Schedule.”
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148
The Patents Rules, 2003
any patent or application for patent shall be admissible, namely: (a)
as to when a complete specification following a provisional
specification has been filed or an application for patent has been
deemed to have been abandoned;
423
[(aa) as to when the information under section 8 has been filed;]
(b)
as to when publication of application has been made under section
11A;
(c)
as to when an application has been withdrawn under section 11B;
(d)
as to when a request for examination has been made under section
11B;
(e)
as to when the examination report has been issued under section
12;
424
[(f) as to when an application for patent has been refused;
(g)
as to when a patent has been granted;]
(h)
as to when a renewal fee has been paid;
(i)
as to when a term of a patent has expired or shall expire;
(j)
as to when an entry has been made in the register or application
has been made for the making of such entry; or
425
[(k) as to when any application is made or action taken involving an
entry in the register, publication in the 426[Official Journal] or
otherwise, if the nature of the application or action is specified in
the request.]
(2) Separate request shall be made in respect of each item of information
required.
(3) The fee payable on a request to be made under section 153 shall be as set
out in the First Schedule.
S. 8
S. 11A
S. 11B
S. 11B
S. 12
S. 153
135. Agency
[(1) The authorisation of an agent for the purposes of the Act and these
rules shall be filed in Form 26 or in the form of a power of attorney within
a period of three months from the date of filing of such application or
document, failing which no action shall be taken on such application or
documents for further processing till such deficiency is removed.]
(2) Where any authorisation has been made under sub-rule (1), service upon
the agent of any document relating to any proceeding or matter under
the Act or these rules shall be deemed to be service upon the person so
authorising him and all communications directed to be made to a person
in respect of any proceeding or matter may be addressed to such agent,
and all appearances before the Controller relating thereto may be made
by or through such agent.
(3) Notwithstanding anything contained in sub-rule (1) and (2), the Controller
may, if it is considered necessary, require the personal signature or
presence of an applicant, opponent or party to such proceeding or matter.
427
­423
­424
­425
­426
­427
Inserted by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
Substituted by S.O. 1418 (E), dated 28.12.2004, for Cls. (f) and (g) (w.e.f. 01.01.2005).
Substituted by S.O. 1418 (E), dated 28.12.2004, for Cl. (k) (w.e.f. 01.01.2005).
Substituted by S.O. 657(E), dated 05.05.2006, for “Official Gazette” (w.e.f. 05.05.2006).
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016. Prior to substitution, subrule (1) read as under:
“(1) The authorisation of an agent for the purposes of the Act and these rules shall be in
Form 26 or in the form of a power of attorney.”
www.lexcampus.in
F. 26
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The Patents Rules, 2003
136. Scale of costs
(1) In all proceedings before the Controller, he may, subject to rule 63, award
costs as he considers reasonable, having regard to all the circumstances
of the case:
Provided that the amount of costs awarded in respect of any matter set
forth in the Fourth Schedule shall not exceed the amount specified therein.
(2) Notwithstanding anything contained in sub-rule (1), the Controller may,
in his discretion award a compensatory cost in any proceeding before him
which in his opinion is false or vexatious.
R. 63
137. Powers of Controller generally
Any document for the amendment of which no special provision is made in the
Act may be amended and any irregularity in procedure which in the opinion
of the Controller may be obviated without detriment to the interests of any
person, may be corrected if the Controller thinks fit and upon such terms as
he may direct.
[138. Power to extend time prescribed
428
(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, subrule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules
(10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule (1A) of rule 80
and sub-rules (1) and (2) of rule 130, the time prescribed by these rules
for doing of any act or the taking of any proceeding thereunder may be
extended by the Controller for a period of one month, if he thinks it fit to
do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing
of any act or the taking of any proceeding thereunder shall be made before
the expiry of such time prescribed in these rules.]
R. 20(4)(i), 20(6),
21, 24B(1), (5), (6),
24l(10), (11), 55(4),
80(1A), 130(1), (2)
139. Hearing before the Controller to be in public in certain cases
Where the hearing before the Controller of any dispute between two or more
parties relating to an application for a patent or to any matter in connection
with a patent takes place after the date of the publication of the complete
specification, the hearing of the dispute shall be in public unless the Controller,
after consultation with the parties to the dispute who appear in person or are
represented at the hearing, otherwise directs.
­428
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16. 05.2016. Prior to substitution, rule
138 read as under:
“138 Power to extend time prescribed. – (1) Save as otherwise provided [in the rules 24B, subrule (4) of 55 and sub-rule (1A) of 80], the time prescribed by these rules for doing of any
act or the taking of any proceeding thereunder may be extended by the Controller for a
period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time made under these rules shall be made before the
expiry of prescribed period.”
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150
The Patents Rules, 2003
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1
On application for a patent under
sections 7, 54 or 135 and rule 20(1)
accompanied by provisional or complete
specifications---
1.
1
Number
of the
relevant
Form
Substituted vide G.S.R. 689(E), dated 04.11.2021, w.e.f. 04.11.2021
(i) for each sheet of specification in
addition to 30, excluding sequence
listing of nucleotides and/ or amino acid
sequences under sub-rule (3) of rule (9)
(ii) for each claim in addition to 10;
(iii) for each page of sequence listing
of nucleotides and/ or amino acid
sequences under sub-rule (3) of rule (9).
On what payable
No. of
entry
(ii) 1750
Not allowed
(ii) 350
Not allowed
(ii) 1600
(iii) 800
‘subject to a
Maximum
of 120000
(ii) 320
(iii)160 subject
to a maximum of
24000
(i) 160
8800
Multiple of
8800 in Case of
every multiple
priority
(i) 880
Rupees
1750
Multiple of
1750 in case
of every multiple
priority
(i) 180
Rupees
Other(s), alone or
with natural
person(s) or
Startup(s) or
Small
entit(y)/(ies) or
educational
institution(s)
8000
Multiple of 8000
in case
of every
multiple priority
(i) 800
Rupees
Rupees
Natural
person(s) or
Startup(s) or
Small
entit(y)/(ies)
or
educational
institution(s)
For Physical filing
1600
Multiple of 1600
in case of every
multiple priority.
Other(s), alone or
with natural
person(s) or
Startup(s) or
Small
entit(y)/(ies) or
educational
institution(s)
Natural
person(s) or
Startup(s) or
Small
entit(y)/(ies)
or
educational
institution(s)
For e-filing
Table 1 – FEES PAYABLE
(See Rule 7)
[THE FIRST SCHEDULE
1
151
[THE FIRST SCHEDULE
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On application for deletion of reference
under section 19 (2)
(i) On claim under section 20(1);
(ii) On request for direction under
section 20 (4) or 20 (5)
7.
8.
6
6
–
–
On application for postdating
6.
4
iii) On request for extension of time
under sub-rule (11) of rule 24C (per
month)
On filing a declaration as to inventorship 5
under sub-rule (6) of rule 13.
4
ii) On request for extension of time
under sub-rule (5) of rule 24B (per
month).
5.
4
i) On request for extension of time
under sections 53(2) and 142(4), rules
13(6), 80(1A) and 130(per month).
4
3
On filing a statement and undertaking
under section 8.
(iii) for each page of sequence listing
of nucleotides and/ or amine acid
sequences under sub-rule (3) of rule (9).
On filing complete specification after
provisional up to 30 pages having up to
10 claims –
(i) for each sheet of specification in
addition to 30, excluding sequence
listing of nucleotides and/ or amino acid
sequences under sub-rule (3) of rule (9);
(ii) for each claim in additions to 10.
3.
2.
2
800
800
800
800
No fee
2000
1000
480
No fee
4000
4000
4000
4000
No fee
10000
4000
2400
No fee
Not allowed
Not allowed
(iii) 400
Subject to a
Maximum of
60000
(iii) 160
Subject to a
Maximum of
24000
(ii) 1800
(ii) 350
(ii) 1600
880
880
880
880
No fee
2200
1100
530
No fee
4400
4400
4400
4400
No fee
11000
4400
2600
No fee
(i) 880
(ii) 320
(i) 180
(i) 800
No fee
(i) 160
No fee
No fee
No fee
152
[THE FIRST SCHEDULE
www.lexcampus.in
(i) On notice of opposition to grant of
patent under section 25(2);
(ii) On filing representation opposing
grant of patent under section 25(1)
On giving notice that hearing before
Controller under rule 62(2).
On application under sections 28(2),
28(3), or 28(7)
Request for publication under section
11A(2) and rule 24A.
Application for withdrawing the
application under section 11B(4), and
rules 7(4A) and 26.
On request for examination of
application for patent(i) under section 11B and rule 24(1);
(ii) under rule 20(4)(ii)
On request for expedited examination
of application of patent under rule 24C
Conversion of the request for
examination filed under rule 24B to
request for expedited. Examination
under rule 24C
On application under section 44 for
amendment of patent
On application for directions under
section 51(1) or 51(2)
On request for grant of a patent under
sections 26(1) and 52(2)
On request for converting a patent
of addition to an independent patent
under section 55(1).
9.
10.
11.
12.
13.
14.
14.A
14B.
15.
16.
17.
18.
–
12
11
2400
2400
2400
2400
4000
18A
10
8000
4000
5600
No fee
2500
800
18A
18
29
9
8
1500
No fee
7A
–
2400
7
12000
12000
12000
12000
40000
60000
20000
28000
No fee
12500
4000
7500
No fee
12000
2650
2650
2650
2650
Not allowed
Not allowed
4400
6150
No fee
2750
880
1700
No fee
2600
13200
13200
13200
13200
Not allowed
Not allowed
22000
4400
30800
No fee
13750
4400
8300
No fee
13200
153
[THE FIRST SCHEDULE
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19.
–
–
–
(ix) Before the expiration of the 10th
year in respect of the 11th year.
(x) Before the expiration of the 11th year –
in respect of the 12th year.
–
(viii) Before the expiration of the 9th
year in respect of the 10th year.
(xi) Before the expiration of the 12th
year in respect of the 13th year.
(xii) Before the expiration of the 13th
year in respect of the 14th year.
–
–
(vii) Before the expiration of the 8th
year in respect of the 9th year.
(xv) Before the expiration of the 16th
year in respect of the 17th year.
–
(vi) Before the expiration of the 7th year
in respect of the 8th year.
–
4800
–
(v) Before the expiration of the 6th year
in respect of the 7th year;
(xiv) Before the expiration of the 15th
year in respect of the 16th year.
4800
–
(iv) Before the expiration of the 5th year
in respect of the 6th year.
–
4800
–
(iii) Before the expiration of the 4th year
in respect of the 5th year;
(xiii) Before the expiration of the 14th
year in respect of the 15th year.
800
–
(ii) Before the expiration of the 3rd year
in respect of the 4th year;
8000
8000
4800
4800
2400
2400
2400
2400
800
800
800
(i) Before the expiration of the 2nd year from –
the date of patent in respect of 3rd year.
For renewal of a patent under section 53--
40000
40000
24000
24000
24000
24000
24000
12000
12000
12000
24000
4000
4000
4000
4000
8800
8800
5300
5300
5300
5300
5300
2560
2560
2560
2560
880
880
880
880
44000
44000
26400
26400
26400
26400
26400
13200
13200
13200
13200
4400
4400
4400
4400
154
[THE FIRST SCHEDULE
www.lexcampus.in
–
(xviii) Before the expiration of the 19th
year in respect of the 20th year.
2400
On notice of opposition to an application 14
under sections 57(4), 61(1) and 87(2)
or to surrender a patent under section
63(3) or to a request under section 78(5)
On application for restoration of patent
under section 60.
Additional fee for restoration under
section 61(3) and rule 86(1)
On notice of offer to surrender a patent
under section 63.
On application for the entry in the
register of patents of the name of a
person entitled to a patent or as a
share or as a mortgage or as licensee
or as otherwise or for the entry in the
register of patents of notification of a
document under sections 69(1) or 69(2)
and rules 90(1) or 90(2).
21.
22.
23.
24.
25.
1600
8000
(In respect of each (In respect of
patent)
each patent)
16
5000
24000
1000
4800
12000
12000
1500
8000
4000
40000
40000
40000
–
–
2400
320
(iii) Where amendment is for changing
name or address or nationality or
address for service
15
1600
(ii) After grant of patent;
8000
8000
800
13
On application for amendment of
application for patent or complete
specification or other related documents
under section 57---
–
(xvii) Before the expiration of the 18th
year in respect of the 19th year.
8000
(i) Before grant of patent;
20.
–
(xvi) Before the expiration of the 17th
year in respect of the 18th year.
1750
(In respect of each
patent)
1100
5300
2650
2650
350
1750
880
8800
8800
8800
8800
(In respect of each
patent)
5500
26400
13200
13200
1750
8800
4400
44000
44000
44000
155
[THE FIRST SCHEDULE
www.lexcampus.in
On request for entry of an additional
address for service in the Register of
Patents under rule 94(3)
On application for compulsory license
under sections 84(1) 91(1), 92(1) and
92A
On application for revocation of a
patent under section 85(1)
On application for revision of terms and
conditions of licence under section 88(4)
On request for termination to
compulsory licence under section 94.
On application for registration as a patent 22
agent under rule 109(1) or rule 112
On request for appearing in the
qualifying examination under rule 109(3)
For continuance of the name of a person
in the register of patent agents--(i) for the 1st year to be paid along with –
registration;
(ii) for every year excluding the 1st year
to be paid on the 1st April in each year
–
On application for duplicate certificate
of patent agent under rule 111A.
On application for restoration of the
name of a person in the register of
patent agents under rule 117(1)
27.
28.
29.
30.
31.
32.
33.
34.
35.
36.
23
–
–
21
20
19
17
–
On application for alteration of an entry –
in the register of patents or register of
patent agents under rules 94(1) or rule
118(1)
26.
Not applicable
1600
(Plus continuation
fee under entry
number 34)
Not applicable
Not applicable
800
1600
Not applicable
Not applicable
Not applicable
12000
12000
12000
12000
4000
1600
800
1600
3200
2400
2400
2400
2400
800
320
1750
(Plus continuation
fee under entry
number 34)
1750
880
880
1750
3500
2650
2650
2650
2650
880
350
Not applicable
Not applicable
Not applicable
Not applicable
Not applicable
Not applicable
13200
13200
13200
13200
4400
1750
156
[THE FIRST SCHEDULE
www.lexcampus.in
On application for review or setting aside
the decision or order of the controller
under section 77(1)(f) of 77(1)(g).
On application for permission for
applying patent outside India under
section 39 and rule 71(1).
On application for duplicate patent
under section 154 and rule 132.
(i) On request for certified copies under
section 72 or for certificate under
section 147 and rule 133(1).
38.
39.
40.
41.
On request for inspection of register
under section 72, inspection under rule
27 or rule 74A.
On request for information under
section 153 and rule 134.
On form of authorization of a patent agent.
On petition not otherwise provided for.
43.
44.
45.
46.
–
26
–
–
For certifying office copies, printed each. –
1600
No fee
480
320
800
2400
(up to 30
Pages and,
thereafter,
30 for each
extra page)
1000
(up to 30
Pages and,
thereafter,
30 for each
extra page)
–
–
1600
1600
1600
800
–
25
24
–
42.
(ii) On request for certified copies
under section 72 or for certificate under
section 147 and rule 133(2).
On a request for correction of clerical
error under section 78(2)
37.
8000
No fee
2400
1600
4000
1750
No fee
530
350
880
3300
(up to 30
Pages and,
thereafter,
30 for each
extra page)
8800
No fee
2650
1750
4400
13200
(up to 30
Pages and,
thereafter,
30 for each
extra page)
5500
(up to 30
Pages and,
thereafter,
150 for each
extra page)
1100
(up to 30
Pages and,
thereafter,
30 for each
extra page)
5000
(up to 30
Pages and,
thereafter,
150 for each
extra page)
12000
(up to 30
Pages and,
thereafter,
30 for each
extra page)
8800
8800
8800
4400
1750
1750
1750
880
8000
8000
8000
4000
157
[THE FIRST SCHEDULE
www.lexcampus.in
2
3
For preparation of certified copy of
priority document and for transmission
of the same to the International
Bureau of World Intellectual Property
Organization
49.
Miscellaneous form under rule 8(2), to be 30
used when no other form is prescribed.
53.
1000
5000
No fee
No fee
5500
No fee
No fee
Not
applicable
90% of fee paid for request for examination or request for expedited examination”.]
Refund of fees
As applicable.
1100
No fee
No fee
Not
applicable
5500
(up to 30 pages
and, thereafter,150
for each extra
page)
1100
(up to 30 Pages and,
thereafter, 30 for
each extra page)
5000
(up to 30 Pages
and, thereafter,
150 for each
extra page)
No fee
Not
applicable
17600
10
Not
applicable
3500
10
No fee
16000
10
[TABLE II – FEES REFUNDABLE
–
No fee
Substituted vide G.S.R. 689(E), dated 04.11.2021, w.e.f. 04.11.2021
Substituted vide G.S.R. 689(E), dated 04.11.2021, w.e.f. 04.11.2021
Refund of fees under sub-rule (4A) of rule 7,
On what account fee refundable
Request for adjournment of hearing
udner rule 129A (for each adjournment)
52.
28
To be submitted for claiming the status
of a small entity or startup
51.
No fee
27
On statement regarding working of a
potential invention on a commercial
scale in India under section 146(2) and
rule 131(1).
50.
No fee
–
1000
(up to 30 Pages
and, thereafter,
30 for each extra
page)
–
For preparation of certified copy of
priority document and e-transmission
through WIPO DAS.
No fee
3200
10
–
–
–
[49A.
3
Transmittal fee for International
application (for ePCT filing).
Transmittal fee for International
application
48.
[48A.
2
For supplying of photocopies of the
documents, per page
47.
158
[THE FIRST SCHEDULE
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159
THE SECOND SCHEDULE
THE SECOND
SCHEDULE
[THE SECOND SCHEDULE
4
(See Rule 8)
FORMS
LIST OF FORMS5
Form
No.
Section and rule
1.
Sections 7, 54, and 135 and rule 20(1)
Application for grant of a patent
2.
Section 10; rule 13
Provisional/Complete Specification
3.
Section 8 and rule 12
Statement and undertaking
4.
Sections 53(2) and 142(4), rules 13(6),
24B(6), 24C(11), 80(1A), and 138
Request for extension for time
5.
Section 10(6) and rule 13(6)
Declaration as to inventorship
6.
Sections 20(1), 20(4), 20(5) and rules
34(1), 35(1) or 36(1)
Claim or request regarding any change in
applicant for patent
7.
Section 25(3) and rule 55A
Notice of opposition on grant of a patent
[7A. Section 25(1) and rule 55(1)
4
4
5
Title
For filing a representation opposing grant of
a patent under sub-section (1) of section 25]
8.
Sections 28(2), 28(3) or 28(7) and rules
66, 67, 68
Request or claim regarding mention of
inventor as such in a patent
9.
Section 11A(2) and rule 24A
Request for publication
10.
Section 44 and rule 75
Application for amendment of patent
11.
Sections 51(1), 51(2) and rules 76, 77
Application for direction of the controller
12.
Sections 26(1) & 52(2) and rules 63A and
79
Request for grant of patent
13.
Section 57 and rule 81(1)
Application for amendment of the
application for patent/complete specification
14.
Sections 57(4), 61(1), 63(3), 78(5) and
87(2) and rules 81(3)(b), 85(1), 87(2),
98(1), 101 (3) or 124
Notice of opposition to amendment/
restoration/surrender of patent/grant of
compulsory license or revision of terms
thereof or to a correction of clerical errors
15.
Section 60 and rule 84.
Application for restoration of patents
16.
Sections 69(1) or 69(2) and rules 90(1)
and 90(2)
Application for registration of title/interest
in a patent or share in it or registration
of any document purporting to affect
proprietorship of the patent
17.
Sections 84(1), 91, 92 or 92A and rule 96
Application for compulsory license
18.
Section 11B and Rule 20(4)(ii) and 24B(1) Request for examination of application for
(i)
patent
18A
Section 11B and Rule 24C
Request for expedited examination of
application for patent
Substituted by S.O. 1418 (E), dated 28.12.2004, for Second Schedule (w.e.f. 01.01.2005).
Inserted by the Patents (Amendment) Rules, 2014 vide GSR 125(E) dated 28.02.2014, w.e.f. 28.02.2014.
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THE SECOND SCHEDULE
19.
Section 85(1) and rule 96
Application for revocation of a patent for
non-working
20.
Section 88(4) and rule 100
Application for revision of terms and
conditions of license
21.
Section 94, rule 102(1)
Request for termination of compulsory
licence
22.
Rules 109(1) and 112
Application for registration of Patent Agent
23.
Section 130(2) and rule 117(1)
Application for the restoration of the name
in the register of Patent Agents
24.
Sections 77(1)(f), 77(1)(g) and rules
130(1) and 130(2)
Application for review/setting aside
controller’s decision/order
25.
Section 39 and rule 71(1)
Request for permission for making patent
application outside India
26.
Sections 127, 132 and rule 135
Form of authorization of a Patent Agent/or
any person in a matter or proceeding under
the Act
27.
Section 146(2) and rule 131(1)
Statement regarding the working of the
Patented invention on commercial scale in
India]
[28. Rules 2(fa) and 7
To be submitted by a small entity with every
document for which a fee has been specified]
[29. Section 11B(4) and rules 7(4A), 24C(5)
and 26
Request for withdrawal of patent application
30.
Miscellaneous form, to be used when no
other form is prescribed]
5
6
Rule 8(2)
6
7
6
7
Inserted by the Patents (Amendment) Rules, 2014 vide GSR 125(E), dated 28.02.2014, w.e.f. 28.02.2014.
Inserted by the Patents (Amendment) Rules, 2016 vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
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161
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8
[FORM 1
THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS RULES, 2003
APPLICATION FOR GRANT OF PATENT
(See section 7, 54 and 135 and sub-rule (1) of rule 20)
(FOR OFFICE USE ONLY)
Application No.
Amount of Fee paid
CBR No.
Signature:
1. APPLICANT’S REFERNCE / IDENTIFICATION NO.
(AS ALLOTTED BY OFFICE)
2. TYPE OF APPLICATION [Please tick () at the appropriate category)
Ordinary ( )
Divisional ( )
Convention ( )
Patent of
Addition ( )
PCT – NP ( )
Divisional ( )
Patent of
Addition ( )
Divisional ( )
Patent of
Addition ( )
3A. APPLICANT(S)
Name in Full
Nationality
Country of
Residence
Address of the Applicant
House No.
Street
City
State
Country
Pin code
3B. CATEGORY OF APPLICANT [Please tick () at the appropriate category]
Natural Person ( )
Other than Natural Person
Small Entity ( )
Startup ( )
Other ( )
4. INVENTOR(S) [Please tick () at the appropriate category]
Are all the inventor(s) same as the applicant(s)
named above?
Yes ( )
No ( )
If “No”, furnish the details of the inventor (s)
Name in Full
Nationality
Country of
Residence
Address of the Inventor
House No.
Street
City
8
Substituted by the Patents (Amendment) Rules, 2016 vide G.S.R. 523(E), dated 16.05.2016, w.e.f.
16.05.2016.
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162
THE SECOND SCHEDULE
State
Country
Pin code
5. TITLE OF THE INVENTION 6. AUTHORISED REGISTERED PATENT AGENT(S)
IN/PA No.
Name
Mobile No.
7. ADDRESS FOR SERVICE OF APPLICANT IN INDIA
Name
Postal Address
Telephone No.
Mobile No.
Fax No.
E-mail ID
8. IN CASE OF APPLICATION CLAIMING PRIORITY OF APPLICATION
FILED IN CONVENTION COUNTRY, PARTICULARS OF CONVENTION
APPLICATION
Country
Application
Number
Filing date
Name of the
applicant
Title of the
invention
IPC (as classified
in the convention
country)
9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF
INTERNATIONAL APPLICATION FILED UNDER PATENT CO-OPERATION
TREATY (PCT)
International application number
International filing date
10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16,
PARTICULARS OF ORIGINAL (FIRST) APPLICATION
Original (first) application No.
Date of filing original (first) application
11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54,
PARTICULARS OF MAIN APPLICTION OR PATENT
Main application/patent No.
Date of filing of main application
12. DECLARATIONS
(i)
Declaration by the inventor(s)
(In case the applicant is an assigner: the inventor(s) may sign herein
or the applicant may upload the assignment or enclose the assignment
with this application for patent or send the assignment by post/electronic
transmission duly authenticated within the prescribed period)
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THE SECOND SCHEDULE
I/We, the above named inventor(s) is/are the true & first inventor(s) for this
Invention and declare that the applicant(s) herein is/are my/our assignee or
legal representative.
(a) Date
(b) Signature (s)
(c) Name (s)
(ii)
Declaration by the applicant(s) in the convention country
(In case the applicant in India is different than the applicant in
the convention country: the applicant in the convention country may
sign herein below or applicant in India may upload the assignment from the
applicant in the convention country or enclose the said assignment with this
application for patent or send the assignment by post/electronic transmission
duly authenticated within the prescribed period)
I/We, the applicant(s) in the convention country declare that the applicant(s)
herein is/are my/our assignee or legal representative.
(a) Date
(b) Signature(s)
(c) Name(s) of the signatory
(iii)
Declaration by the applicant(s)
I/We the applicant(s) hereby declare(s) that:• I am/We are in possession of the above-mentioned invention.
• The provisional/complete specification relating to the invention is filed
with this application
• The invention as disclosed in the specification uses the biological
material from India and the necessary permission from the competent
authority shall be submitted by me/us before the grant of patent to
me/us.
• There is no lawful ground of objection(s) to the grant of the Patent to
me/us.
• I am/we are the true & first inventor(s).
• I am/we are the assignee or legal representative of true & first
inventor(s).
• The application or each of the application, particulars of which are given
in Paragraph-8, was the first application in convention country/countries
in respect of my/our inventions(s).
• I/We claim the priority from the above mentioned application(s) filed
in convention country/countries and state that no application for
protection in respect of the invention had been made in a convention
country before that date by me/us or by an y person from which I/We
derive the title.
• My/our application in India is based on international application under
patent Cooperation Treaty (PCT) as mentioned in paragraph-9.
• The application is divided out of my / our application particulars of
which is given in paragraph-10 and pray that this application may be
treated as deemed to have been filed on DD/MM/YYYY under section
16 of the Act.
• The said invention is an improvement in or modification of the invention
particulars of which are given in paragraph-11.
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THE SECOND SCHEDULE
13. FOLLOWING ARE THE ATTACHMENTS WITH THE APPLICATION
(a)
Form 2
Item
Details
Fee
Remarks
Complete/ provisional
Specification)#
No of pages
No. of Claim(s)
No. of claims and
No. of pages
Abstract
No. of pages
No. of Drawing(s)
No. of drawings
and No. of pages
# In case of a complete specification, if the applicant desires to adopt the drawings filed
with his provisional specification as the drawings or part of the drawings for the complete
specification under rule 13(4), the number of such pages filed with the provisional specification
are required to be mentioned here.
(b)
(c)
(d)
(e)
(f)
(g)
(h)
(i)
(j)
Complete specification (in conformation with the international application)/
as amended before the International Preliminary Examination Authority
(IPEA), as applicable (2 copies).
Sequence listing in electronic form
Drawings (in conformation with the international application)/as amended
before the International Preliminary Examination Authority (IPEA), as
applicable (2 copies).
Priority document(s) or a request to retrieve the priority document(s) from
DAS (Digital Access Service( if the applicant had already requested the office
of first filing to make the priority document(s) available to DAS.
Translation of priority document/Specification/International Search Report/
International Preliminary Report on Patentability.
Statement and Undertaking of Form 3
Declaration of Inventionrship on Form 5
Power of Authority
____________________________________________________________
Total fee `_______ in Cash/Banker’s Cheque/Bank Draft bearing No______
Date………on __________Bank
I/We hereby declare that to the best of my/our knowledge, information and believe
the facts and matter stated herein are correct and I/We request that a patent may be
granted to me/us for the said invention.
Dated this_____________ day of__________ 20___________
Signature
Name:
To,
The Controller of Patents
The Patent Office,
At __________________
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THE SECOND SCHEDULE
Note:• Repeat boxes in case of more than one entry.
•
To be signed by the applicant(s) or by authorized registered patent agent
otherwise where mentioned.
•Tick () cross () whichever is applicable/not applicable in declaration in
paragraph-12.
•Name of the inventor and applicant should be given in full, family name in the
beginning.
• Strike out the portion which is/are not applicable.
• For fee; See First Schedule”]
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166
THE SECOND SCHEDULE
FORM 2
THE PATENT ACT 1970
(39 OF 1970) & THE PATENTS RULES, 2003
PROVISIONAL/COMPLETE SPECIFICATION
[See section 10 and rule 13]
1. TITLE OF THE INVENTION
2. APPLICANT(S)
(a) Name:
(b) Nationality:
(c) Address:
3. PREAMBLE TO THE DESCRIPTION
Provisional
The following specification describes the
invention.
Complete
The following specification particularly
describes the invention and the manner in
which it is to be performed
4. DESCRIPTION (Description shall start from next page)
5. CLAIMS (not applicable for provisional specification. Claims should start with the
preamble --- “I/we claim” on separate page)
6. DATE AND SIGNATURE ( to be given at the end of last page of specification)
7. ABSTRACT OF THE INVENTION (to be given along with complete specification on
separate page)
Note:• Repeat boxes in case of more than one entry.
•To be signed by the applicant(s) or by authorized registered patent agent.
•Name of the applicant should be given in full, family name in the beginning.
•Complete address of the applicant should be given stating the postal index No./
code, state and country.
• Strike out the column which is/are not applicable.
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THE SECOND SCHEDULE
[FORM 3
THE PATENTS ACT, 1970
9
(39 of 1970)
AND
THE PATENTS RULES, 2003
STATEMENT AND UNDERTAKING UNDER SECTION 8
(See section 8; Rule 12)
1. Name of the applicant(s) I/We
________________________________________
________________________________________
________________________________________
________________________________________
________________________________________
Hereby declare.
2. Name address and
nationality of the joint
applicant.
(i) that I/We have not made any application for the same/
substantially the same invention outside India.
Or
(ii) that I/We who have made this applicant No_________ dated
_______ alone/jointly with____________made for the same/
substantially same invention, application(s) for patent in the
other countries, the particulars of which are given below:
Name of the
country
Application
No.
Date of
application
3. Name and address of
the assignee
Status of the
application
Date of
publication
Date of grant
(iii) that the rights in the application(s) has/have been assigned
to_______________________________________
_______________________________________
_______________________________________
that I/We undertake that upto the date of grant of the patent
by the Controller, I/We would keep him informed in writing the
details regarding corresponding applications for patents filed
outside India within six months from the date of filing of such
application.
Dated this__________ day of _________20_____
4. To be signed by the
applicant or his authorized Signature_________________________
registered patent agent.
5. Name of the natural
person who has signed.
( __________________________ )
To
The Controller of Patents,
The Patent Office,
At ________________________________
Note:- Strike out whichever is not applicable.]
9
Substituted by the Patents (Amendment) Rules, 2016 vide G.S.R. 523(E), dated 16.05.2016, w.e.f.
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168
THE SECOND SCHEDULE
[FORM 4
THE PATENTS ACT, 1970
10
(39 of 1970)
AND
THE PATENTS RULES, 2003
REQUEST FOR EXTENSION OF TIME
[See section 53(2), and 142(4); rules 13(6), 24B(6), 24C(11) and 80(1A), 138]
1. Name of the applicant
I/We______________________________________
__________________________________________
__________________________________________ hereby
request for extension of time for______ months(s)
under section/rule______ is connection with my/our/
applications/Patent No. ___________
The reasons for making the request are as follows:_____________________________________________
_____________________________________________
Dated this__________ day of_________20___
2. To be signed by the applicant or
his authorized registered patent
agent
Signature
( ______________________ )
3. Name of the natural person who
has signed
To
The Controller of Patents,
The Patent Office,
At __________________________________________
Note:- Fore fee; See First Schedule]
10
Substituted by the Patents (Amendment) Rules, 2016 vide G.S.R. 523(E), dated 16.05.2016, w.e.f.
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THE SECOND SCHEDULE
FORM 5
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
DECLARATION AS TO INVENTORSHIP
[See section 10(6) and, rule 13(6)]
1. Name of applicant(s). _______________________________________________
___________________________________________________________________
hereby declare that the true and first inventor(s) of the invention disclosed in
the complete specification filed in pursuance of my/our application numbered
______________________dated _____________________ is/are
2. Inventor(s)
(a)
Name
__________________________________________________________
(b)
Nationality __________________________________________________________
(c)
Address
__________________________________________________________
__________________________________________________________
Dated this__________________ day of___________________20_____
Signature
Name of the signatory ________________________________________
3. Declaration to be given when the application in India is filed by the applicant(s) in
the convention country: We the applicant(s) in the convention country hereby declare that our right to apply
for a patent in India is by way or assignment from the true and first inventor(s).
Dated this___________________ day of__________________ 20_____
Signature
Name of the signatory ________________________________________
4. STATEMENT (to be signed by the additional inventor(s) not mentioned in the
application form)
I/We assent to the invention referred to in the above declaration, being included in
the complete specification filed in pursuance of the stated application.
Dated this________________ day ____________of 20______
Signature of the additional inventor(s)
Name:
To,
11
[The Controller of Patents],
The Patent Office,
At _____________________________
11
Substituted by S.O. 657(E), dated 05.05.2006, for “The Controller of Patent” (w.e.f. 05.05.2006).
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Note:• Repeat boxes in case of more than one entry.
•
To be signed by the applicant(s) or by authorized registered patent agent
otherwise where mentioned.
•Name of the inventor and applicant should be given in full, family name in the
beginning.
•Complete address of the inventor should be given stating the postal index No./
code, state and country.
• Strike out the column which is/are not applicable.
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FORM 6
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
CLAIM OR REQUEST REGARDING ANY CHANGE IN APPLICANT
FOR PATENT
[Refer sections 20 (1), 20 (4) & 20 (5) and, rules 34 (1), 35 (1) & 36 (1)]
Repeat the columns (a) to (c) if there are more than one Applicant. Insert the name in
full. The family or principal name in the beginning if the applicant is a natural person.
I/We ___________________________________________________________________________
(a) _________________________________________________________________________
(b) _________________________________________________________________________
(c) _________________________________________________________________________
Complete address including postal index number/code and state and/or country.
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Nationality. _____________________________
Hereby request that the application for patent No________________________ dated made by
________________________________________________________ may proceed in my/our name
and further request that direction of the Controller, if necessary be made in that effect
Reasons for making the above request are as follows :________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
(Original and certified copies of the documents shall accompany the claim or request.
Consent by the legal representative of the deceased joint applicant shall be filed
whenever required.)
I furnish the following document(s) in support of my above request –
(a) _________________________________________________________________________
(b) _________________________________________________________________________
(c) _________________________________________________________________________
My/our address for service in India is (complete address including postal index number/
code and state along with Telephone and Telefacsimile number(s).)
________________________________________________________________________________
________________________________________________________________________________
Dated this________________ day of____________ 20_____
Signature
(____________________________________)
(to be signed by the applicant(s) or authorized registered patent agent.)
(_________________________________________________________)
(name of the natural person who has to sign)
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To,
The Controller of Patents,
The Patent Office,
At _____________________________________
N.B.: This form is not applicable for mere change of name.
Note:(a)
Strike out whichever is not applicable.
(b)
For fee: See First Schedule.
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THE SECOND SCHEDULE
FORM 7
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
NOTICE OF OPPOSITION
(12[See section 25(2)] and rule 55A)
I/We ( state names, address and nationality) ______________________________________
________________________________________________________________________________
________________________________________________________________________________
Hereby give notice of opposition to patent No. _____________________________________
granted on application No.________________________________________________ made by
________________________________________________________________________________
________________________________________________________________________________
on the grounds (state the grounds taken, one after another)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
My/our address for service in India is (complete address including postal index number
code and state along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Signature______________________________________________
(To be signed by the opponent or by the authorised registered patent agent)
To,
The Controller of Patents,
The Patent Office,
At ____________________________________
Note: For fee: See First Schedule
12
Substituted by S.O. 657(E), dated 05.05.2006, for “See section 25(3)” (w.e.f. 05.05.2006).
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[FORM 7A
THE PATENTS ACT, 1970(39 OF 1970)
AND
THE PATENTS RULES, 2003
13
REPRESENTATION FOR OPPOSITION TO GRANT OF PATENT
[See Rule 55]
1. State names, address and nationality.
I/ We, ___________________________
_________________________________
Hereby give representation by way of opposition to the grant of patent in respect of
application No.__________________made by__________ and published on
____________________________
2. State the grounds taken one after on the grounds_____________________
another. _________________________________
_________________________________________
3. Complete address including postal _________________________________
Index number/code and state along with telephone and fax number. ______________
___________________
My / Our address for service in India is _________________________________
4. To be signed by the opponent or by his/her authorized registered patent agent.
Signature _________________________________
5. Name and designation of the natural person who has signed.
( __________________ )
To
13
The Controller of Patents,
The Patent Office,
At____________________ ]
Inserted by the Patents (Amendment) Rules, 2014 vide GSR 125(E) dated 28.02.2014, w.e.f. 28.02.2014.
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FORM 8
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
REQUEST OR CLAIM REGARDING MENTION OF INVENTOR
AS SUCH IN A PATENT
[See section 28(2), 28(3) & 28(7) and rules 66, 67 & 68]
I/We (state name, address and nationality of the person making this application)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby state / claim that the following person(s) be mentioned as inventor(s) in the
patent application No._______________________________ dated _______________
made by ________________________________________________________________________
________________________________________________________________________________
or hereby declare that ( insert the name of the person mentioned as inventor)
________________________________________________________________________________
________________________________________________________________________________
ought not to have mentioned as inventor in the application for Patent No._______________
dated _____________________ made by _____________________________________________
________________________________________________________________________________
and I/We hereby apply for a certificate to that effect.
A statement setting out the circumstances under which this application is made is
attached together with the copy / copies thereof as required under the Rules.
My / Our address for service in India is ( complete address including postal index
number/code and state along with telephone and fax number )
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this _________________________ day of __________________________ 20______
Signature ______________________________________________
(to be signed by the applicant or his authorized registered patent agent)
(________________________________________________________)
( name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At_______________________________________
Note: For fee, see First Schedule
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176
THE SECOND SCHEDULE
FORM 9
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
REQUEST FOR PUBLICATION
[See section 11A(2) and rule 24A]
I/We ( state name, address and nationality of applicant(s)) ____________________________
________________________________________________________________________________
________________________________________________________________________________
hereby request for early publication of my/our 14[Patent application No].___________________
dated _____________________ under section 11A(2) of the act.
Dated this ______________________ day of __________________________ 20 _______
Signature_______________________________________________
(to be signed by the applicant or his authorized registered patent agent)
(________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At __________________________________________
Note: For fee, see First Schedule
14
Substituted by S.O. 657(E), dated 05.05.2006, for “application for Patent No.” (w.e.f. 05.05.2006).
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177
THE SECOND SCHEDULE
FORM 10
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR AMENDMENT OF PATENT
(See section 44 and rule75)
I/We ( Repeat the columns (a) to (c) if, there are more than one applicant) _____________
(a)
(insert the name in full, Family or, principal name in the beginning if the
applicant is a natural person )
_____________________________________________________________________
_____________________________________________________________________
(b)
(insert the complete address including postal index number / code and state
and/or country )
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
(c)
(insert the nationality) ________________________________________________
hereby request that Patent No. _______________________ dated ______________________
granted to ______________________________________________________________________
________________________________________________________________________________
may be amended by substituting my/our name for the name grantee and in support to
my/our request. I / We furnish the following documents:________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
My/Our address for service in India is (complete address including postal index number
code and state along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this ________________________ day of _________________________ 20 ______
Signature________________________________________________
(to be signed by the applicant(s) or his authorized registered patent agent)
(__________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At ____________________________________________
Note: For fee, see First Schedule
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178
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FORM 11
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR DIRECTION OF THE CONTROLLER
[See section 51(1) & 51(2) and rules 76 & 77]
I / We, ( state the name in full, address and nationality ) ____________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply for the following direction in respect of patent no.
dated _________________________ grant to ________________________________
_______________________________________________________________________
The reasons for making this application are as follows:
_______________________________________________________________________
_______________________________________________________________________
_______________________________________________________________________
My/Our address for service in India is (complete address including postal index number
code and state along with telephone and fax number)
_______________________________________________________________________
_______________________________________________________________________
_______________________________________________________________________
Dated this _____________________ day ___________________ of 20 _______
Signature_______________________________________________
(to be signed by the applicant(s) or his authorized registered patent agent)
(__________________________________________________________)
( name of the natural person who has signed )
To,
The Controller of Patents,
The Patent Office,
At __________________________________
Note: For fee, see First Schedule
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179
THE SECOND SCHEDULE
FORM 12
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
REQUEST FOR GRANT OF PATENT UNDER SECTION 26(1) & 52(2)
[See section 26(1) & 52(2) and rules 63A & 79]
I/We (Repeat the columns (a) to (c) if, there are more than one applicant) ____________
(a)
(insert the name in full, Family or, principal name in the beginning if the
applicant is a natural person)
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
(b)
(insert the complete address including postal index number / code and state
and/or country)
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
(c)
(insert the nationality) ______________________________________
hereby declare :
(i)
that I/we made opposition under section 25(3) before the controller or a
petition under section 64 of the Act before the Appellate board or High Court
of (name of the high court)
____________________________________________________________
and the details of the patent and the opposition for the petition are given
below:Patent No._______________ dated _______________ Grantee / Patentee _____
______________________________________________
Opposition _________________________________________________
Notice dated ____________ or Petition No. _______________ dated
________________
(ii)
that I/we have claimed to be the true and first inventor(s)/assignee(s)/legal
representative(s) of (name, address and nationality of the true and first
inventor) ______________________
_____________________________________________________________________
_____________________________________________________________________
the true and first inventor of the invention for which the said patent was
granted.
(iii)
that by an order in the said opposition or petition the patent was revoked/the
complete specification of the patent was directed to be amended by exclusion
of claims thereof.
(iv)
that the Controller or Appellate Board or Court ordered to grant to me
a patent in lieu of the said patent/part of the invention excluded by the
amendment.
(v)
that I/We submit a statement and certified copy of the order of the Controller
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or Appellate Board or Court in support of my application and request that a
patent be granted to me in accordance with the order of the Appellate Board
or Court.
My/Our address for service in India is (complete address including postal index number
code and state along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this _______________________ day of ________________ 20 ________
Signature_______________________________________________)
(To be signed by the applicant(s) or his authorized registered patent agent)
(___________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At _________________________________________
Note:
(a)
(b)
Strike out whichever is not applicable
For fee: see First Schedule
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181
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[FORM 13
THE PATENTS ACT, 1970
15
(39 of 1970)
AND
THE PATENTS RULES, 2003
APPLICATION FOR AMENDMENT OF THE APPLICATION FOR
PATENT
COMPLETE SPECIFICATION/ANY DOCUMENT RELATED THERETO
[See section 57, sub-rule (1) of rule 81]
1. Name of the applicant(s).
I/We ________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
Request leave to amend the application/any document related thereto/complete
specification with respect to application for patent No_______ dated________ as
highlighted in the copy hereto annexed.
My/Our reason for making this request are as follows:_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
I/We declare that no action for infringement or for the revocation of the patent in
question is pending before Appellate Bound or a Court.
I/We declare that the facts and matters stated herein are true to the best of my/our
knowledge information and belief.
2. To be signed by the applicant(s) or patentee(s) or by his authorized registered patent
agent
Dated this________ day of________20_______
Signature___________________________
3. Name of the natural person who has signed
( _______________________ )
To
The Controller of Patents,
The Patent Office,
At ___________________________
Note:- For fee: See First Schedule] :
15
Substituted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16. 05.2016.
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FORM 14
THE PATENTS ACT, 1970
(39 of 1970)&
THE PATENT RULES, 2003
NOTICE OF OPPOSITION TO AMENDMENT/RESTORATION/
SURRENDER OF PATENT/GRANT OF COMPULSORY LICENCE OR
REVISION OF TERMS THEREOF
OR TO CORRECTION OF CLERICAL ERRORS
[Refer sections 57(4), 61(1), 63(3), 78(5) & 87(2) and
rules 81(3)(b), 85(1), 87(2), 98(1), 101(3) & 124]
I/We (State the name, address and nationality.) ___________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby give notice of opposition:—
to the amendment of the application/specification with respect to application for Patent
No._____________________ dated ___________________________
or
To the application for restoration of Patent No.___________________ dated _____________
or
To the offer to surrender the Patent No. _____________________ dated ________________
or
For the grant of compulsory/licence, or revocation of Patent No. _______________________
dated _________________________
or
for the revision of the terms and conditions of licence in respect of Patent No._____________
dated __________________________
or
For correction of a clerical error in Patent No. _________________ dated _______________
/ Specification No. ________________________ dated _____________________ in respect of
Patent No. _____________________ dated ____________________
or
Patent application No. ______________________ dated ________________________
The grounds in which the opposition is made are as follows:________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
My/Our address for service in India is (complete address including postal index number/
code and state along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this _____________________ day of __________________ 20_________
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Signature_______________________________________
(to be signed by the opponent or his authorized registered patent agent)
(________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At _______________________________________
Note:
(a)
(b)
Strike out whichever is not applicable
For fee: see First Schedule
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184
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FORM 15
THE PATENTS ACT, 1970
(39 of 1970)&
THE PATENTS RULES, 2003
APPLICATION FOR THE RESTORATION OF PATENT
[See section 60 and rule 84]
I/We (insert the name, address, nationality of the applicant(s)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply for an order of the Controller for the restoration of Patent No ______________
dated _________________ granted to ________________________
_______________________________________________________________________
The circumstances which led to the failure to pay the renewal fee for the year ____________
On or before _______________________ are as follows :
_______________________________________________________________________
I /We declare that I/We have not assigned the patent to any other person(s) and that the
facts and matters stated herein are true to the best of my/our knowledge information
and belief.
Dated this _____________________ day of __________________ 20 ________
Signature_____________________________________________
(to be signed by the applicant(s) or by his authorized registered patent agent)
To,
(_____________________________________________________________)
(name of the natural person who has signed)
The Controller of Patents,
The Patent Office,
At __________________________________________
Note: For fee: see First Schedule
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185
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FORM 16
THE PATENTS ACT, 1970
39 of 1970 &
THE PATENTS RULES, 2003
APPLICATION FOR REGISTRATION OF TITLE/INTEREST IN A
PATENT OR SHARE IN IT OR REGISTRATION OF ANY DOCUMENT
PURPORTING TO AFFECT PROPRIETORSHIP OF THE PATENT
[See sections 69 (1) & 69 (2) and rules 90 (1) & 90 (2)]
I/We ( Insert the name, address and nationality of the applicant(s))
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply that my/our name(s) may be registered in the register of patent as a person
entitled to the patent / a share in the patent / an interest in the patent details of which
are specified below:
Patent No. ________________ dated _______________ Grantee ______________________
______________________________________________________________________________
Patentee __________________________________________________________________ and
in proof thereof we transmit the accompanying. (a description of the nature of the
document, giving the date and the names, address and nationality of the parties thereto)
________________________________________________________________________________
________________________________________________________________________________
with a certified copy thereof.
or
Transmit herewith an attested copy of (a description of the nature of the document, giving
the date and the names, address and nationality of the parties thereto)
________________________________________________________________________________
________________________________________________________________________________
in respect of Patent No(s) _____________________ dated ______________________ granted is
________________________________________________________________________________
as well as the original document for verification and I/We hereby apply that a notification
thereof may be entered in the register of patents.
My/Our address for service in India is (complete address including postal index number
code and state along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this ________________________ day of ______________________ 20 ___________
Signature_____________________________________________
(to be signed by the applicant or his authorized registered patent agent)
(________________________________________________________)
(name of the natural person who has signed)
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To,
The Controller of Patents,
The Patent Office,
At __________________________________
Note:
(a)
(b)
Strike out whichever is not applicable
For fee: see First Schedule
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187
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FORM 17
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR COMPULSORY LICENCE
[See sections 84 (1), 91, 92(1) or 92A and rule 96]
I/We (Name, address and nationality of the applicant(s))
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply for the grant of a compulsory license under Patent No. __________________
dated_____________________ granted to ____________________________________________
for which the patentee is _________________________________________________________
on the following grounds namely :________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
I/We declare that the facts and matters stated herein are true to the best of my/our
knowledge information and belief.
The details of documentary evidence in support of my/our interest and the grounds
stated above are given below (certified copies of the documents are to be enclosed in
duplicate )
(a)
_____________________________________________________________________
(b)
_____________________________________________________________________
(c)
_____________________________________________________________________
(d)
_____________________________________________________________________
My/Our address for service in India is ( complete address including postal index number/
code and state along with telephone and fax number )
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
Dated this _________________________ day of ______________________ 20 __________
Signature_______________________________________________
(to be signed by the applicant(s) or by his authorized registered patent agent)
To,
(_____________________________________________________________)
(name of the natural person who has signed)
The Controller of Patents,
The Patent Office,
At ___________________________________________________
Note: For fee: see First Schedule
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FORM 18
THE PATENTS ACT 1970
(39 of 970) &
THE PATENTS RULES, 2003
REQUEST/EXPRESS RFQUEST FOR
EXAMINATION OF APPLICATION FOR PATENT
[See section 11B and rules 20 (4)(ii) & 24B(1)(i)]
(FOR OFFICE USE ONLY)
RQ. No: _________________________________________________________
Filing Date: _____________________________________________________
Amount of Fee Paid: _____________________________________________
CBR No: ________________________________________________________
Signature: ______________________________________________________
1. APPLICANT(S)/OTHER INTERESTED PERSON
(a)
Name: _______________________________________________________________
_____________________________________________________________________
(b)
Nationality: __________________________________________________________
(c)
Address: _____________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
16
[(d) Date of publication of the application under section 11A:
__________________________]
2. STATEMENT IN CASE OF REQUEST FOR EXAMINATION MADE BY THE
APPLICANT(S)
I/we hereby request that my/our application for Patent No. ______________________
filed on ________________ for the invention titled _________________________________
________ shall be examined under section 12 and 13 of the Act.
or
I / We hereby make an express request that my / our application for Patent No.
_____________ filed on _________________ based on Patent Cooperation Treaty (PCT )
application No ______________________ dated ___________________________________
made in country _____________________ shall be examined under section 12 and 13 of
the Act, immediately without waiting for the expiry of 31 months as specified in rule 20
(4)(ii).
3. STATEMENT IN CASE OF REQUEST FOR EXAMINATION MADE BY ANY
OTHER INTERESTED PERSON
I/we the interested person request for the examination of the application
No. ________________ dated _______________________ filed by the applicant
_______________________________titled ________________________________________
_____________________________________ under section 12 and 13 of the Act.
As an evidence of my/our interest in the application for patent following documents
16
Inserted by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
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THE SECOND SCHEDULE
are submitted :(a)
____________________________________________________________
(b)
____________________________________________________________
(c)
____________________________________________________________
4. ADDRESS FOR SERVICE: ___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Dated this ______________________ day of ________________ 20 ___________
Signature____________________________________________________
(To be signed by the applicant(s) or by his authorized registered patent agent.)
Name of the signatory_____________________________________________
To,
[The Controller of Patents],
The Patent Office,
At ______________________________________
1217
Note:
Strike out the column which is / are not applicable
For fee: See First Schedule
17
Substituted by S.O. 657(E), dated 05.05.2006, for “The Controller of Patent” (w.e.f. 05.05.2006).
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[FORM 18A
THE PATENTS ACT,1970
AND THE PATENT RULES,2003
18
REQUEST FOR EXPEDITED EXAMINATION OF APPLICATION FOR
PATENT
[See section 11B and Rule 24C]
(FOR OFFICE USE ONLY)
RQ. No: _________________________________________________________
Filing Date: _____________________________________________________
Amount of Fee Paid: _____________________________________________
CBR No: ________________________________________________________
Signature: ______________________________________________________
1. APPLICANT(s)
(A)
NAME
(B)
NATIONALITY
(C)
ADDRESS
2. I/We ______________________________________hereby request that my/our
application for patent no._____________ filed on________________ for________________
the_____________________________ invention titled__________________________ shall
be examined under sections 12 and 13 of the Act.
or
I/We _______________________________ hereby request that my/our application
for patent no. _______________filed on _______________for __________________
the ______________ invention titled _______________________ based on Patent
Cooperation Treaty (PCT) application no. _________ dated _______ made in country
_________ shall be examined under section 12 and 13 of the Act, immediately without
waiting for the expiry of 31 months as specified in rule 20(4) (ii)
or
I/We hereby request that my/our request for examination bearing no. _________for
application for patent no.__________ filed on______________ for _______________the
________________________invention titled _______________________________ may be
converted to a request for expedited examination of patent application under rule
24C and the application shall be examined under sections 12 and 13 of the Act.
17a
[3.
The applicant(s) to indicate (by ticking the appropriate box) any of the grounds
applicable for request for expedited examination:
• that India has been indicated as the competent International Searching Authority
or elected as an
• International Preliminary Examining Authority in the corresponding
international application; or
• that the applicant is a startup; or
18
17a
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16. 05.2016.
Inserted vide G.S.R. 663(E), dated 17.09.2019, w.e.f. 17. 09.2019.
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THE SECOND SCHEDULE
•
•
that the applicant is a small entity; or
that the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then applicant or at least one of the applicants is a
female; or
• that the applicant is a department of the Government; or
• that the applicant is an institution established by a Central, Provincial or State
Act, which is owned or controlled by the Government; or
• that the applicant is a Government company as defined in clause (45) of section 2
of the Companies Act, 2013 (18 of 2013); or
• that the applicant is an institution wholly or substantially financed by the Government; or
• that the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of department of the Central
Government; or
• that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.
4. Documents to be mandatorily submitted as evidence of eligibility for availing
expedited examination on the grounds:
a. that India has been indicated as the competent International
Searching Authority
in
the
corresponding
international application:
- Relevant ISA number issued by ISA, India.
that India has been elected as an International Preliminary Examining
Authority in the corresponding international application:
- Relevant IPEA number issued by IPEA, India.
b. that the applicant is a startup:
A.
For an Indian applicant: The certificate of recognition as a startup from Department for Promotion of Industry
and Internal Trade.
B.
In case of a foreign entity: Any document as evidence of eligibility
c. that the applicant is a small entity:
A.
For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006).
B.
In case of a foreign entity: Any document as evidence of eligibility
d. that the applicant is a natural person or in the case of joint
applicants, all the applicants are natural persons, then applicant or at
least one of the applicants is a female:
A.
In case of Indian applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility.
B.
In case of a foreign applicant: Photo identity card of female applicant issued by competent authority as evidence of eligibility
e. Where the applicant is a department of the Government:
A.
In case of Indian applicant: Any document as evidence of eligibility.
B.
In case of a foreign applicant: Any document as evidence of eligibility.
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f. that the applicant is an institution established by a Central,
Provincial or State Act, which is owned or controlled by the Government:
A.
In case of Indian applicant: Any document as evidence of eligibility.
B.
In case of a foreign applicant: Any document as evidence of eligibility.
g. that the applicant is a Government company as defined in clause (45) of
section 2 of the Companies Act, 2013 (18 of 2013):
A.
In case of Indian applicant: Any document as evidence of eligibility.
B.
In case of a foreign applicant: Any document as evidence of eligibility.
h. that the applicant is an institution wholly or substantially financed by
the Government:
A.
In case of Indian applicant: Any document as evidence of eligibility.
B.
In case of a foreign applicant: Any document as evidence of eligibility.
i. that the application pertains to a sector which has been notified by the
Central Government, on the basis of a request from the head of a department of the Central Government:
Notification from the Central Government and documents as maybe required by the Controller.
j. that the applicant is eligible under an arrangement for processing a
patent application pursuant to an agreement between Indian Patent
Office and a foreign Patent Office:
Declarations and documents as maybe required by the Controller.]
ADDRESS FOR SERVICE INDIA:
_______________________________________________________________________
_______________________________________________________________________
_______________________________________________________________________
Dated this day of 20
Signature
Name of the signatory
To
The Controller of Patent
The Patent Office,
At _________________Note:
To be signed by the applicant(s) or by his/their authorized registered patent agent
“Strike out the column(s) which is/are not applicable”,
For fee: See First Schedule.]
www.lexcampus.in
193
THE SECOND SCHEDULE
FORM 19
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR REVOCATION OF A PATENT
FOR NON-WORKING
[See section 85(1) and rule 96]
I/We (Name, address and nationality of the applicant(s)). _______________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply for revocation of Patent No. __________________________ dated
_______________ granted to _______________________________________________________
_________________ for which the patentee / applicant for patent is ______________________
________________________________________________________________________________
________________________________________________________________________________
for the following reasons, namely:
(state the nature of the applicant’s interest, the facts on which he relies and the grounds
on which the application is made)
________________________________________________________________________________
________________________________________________________________________________
The details of documentary evidence in support of my/our interest and the reasons
stated above are given below: (certified copies of all the documents are to be enclosed in
duplicate)
(a)
_____________________________________________________________________
(b)
_____________________________________________________________________
(c)
_____________________________________________________________________
I/We declare that the facts and matters stated herein are true to the best of my / our
knowledge, information and belief.
My / Our address for service in India is: (complete address including postal index number/
code and state along with telephone and fax number(s))
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this __________________________ day of ________________________ 20 _______
Signature_________________________________________
(to be signed by the applicant(s) or his authorized registered patent agent)
(__________________________________________________________)
(name of the natural person who has signed)
www.lexcampus.in
194
THE SECOND SCHEDULE
To,
The Controller of Patents,
The Patent Office,
At __________________________________
Note:
(a)
(b)
For fee: see First Schedule
Strike out whichever is not applicable
www.lexcampus.in
195
THE SECOND SCHEDULE
FORM 20
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR REVISION OF TERMS AND CONDITIONS OF
LICENCE
[See sections 88(4) and rule 100]
I/We ( Name, address and nationality of the applicant(s)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby declare:(i)
that Patent No.___________________________ dated __________________ was
granted to ___________________________________________________________
_____________________________________________________________________
for which the patentee is ______________________________________________
_____________________________________________________________________
(ii)
that I/We am/are holding license under the patent, granted by the Controller
by an order dated ______________________________________.
(iii)
that the terms and conditions settled by the Controller have proved to
be more onerous than originally expected and we are unable to work the
invention.
(iv)
that the circumstances in which this application is made are set forth in the
accompanying statement in duplicate.
I/We request the Controller to revise the terms and conditions of the licence.
Dated this ______________________ day of ____________________ 20 _________
Signature__________________________________________________
(to be signed by the applicant or by his authorized registered patent agent)
(___________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At ___________________________________________
Note:
(a)
(b)
For fee: see First Schedule
Strike out whichever is not applicable
www.lexcampus.in
196
THE SECOND SCHEDULE
FORM 21
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
REQUEST FOR TERMINATION OF COMPULSORY LICENCE
[See section 94 and rule 102 (1)]
I/We ( Name, address and nationality of the applicant(s) _____________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
hereby apply for the termination of the compulsory licence granted to __________________
________________________________________________________________________________
by the order of the Controller dated ________________ under 19[Patent No.] _____________
dated ______________________ granted to ___________________________________________
____________________________ for which the patentee ________________________________
________________________________________________________________________________
I/we declare that I am /We are patentee for the above mentioned patent.
I/we declare that I/we derive title / interest in the patent.
I/We make the above mentioned request for termination on the following grounds, namely :
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
I/We declare that the facts and matters stated herein are true to the best of my/our
knowledge, information and belief.
The details of documentary evidence in support of my/our interest and the grounds
stated above are given below (certified copies of the documents are to be enclosed in
duplicate):(a)
_____________________________________________________________________
(b)
_____________________________________________________________________
(c)
_____________________________________________________________________
My/Our address for service in India is (complete address including postal code and state
along with telephone and fax number)
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this _________________________ day of _______________________ 20 _________
Signature_____________________________________________
(to be signed by the applicant or his authorized registered patent agent)
(________________________________________________________)
(name of the natural person who has signed)
19
Substituted by S.O. 657(E), dated 05.05.2006, for “Patent No./No.” (w.e.f. 05.05.2006).
www.lexcampus.in
197
THE SECOND SCHEDULE
To,
The Controller of Patents,
The Patent Office,
At _________________________________________
Note:
(a)
(b)
For fee: see First Schedule
Strike out whichever is not applicable
www.lexcampus.in
198
THE SECOND SCHEDULE
FORM 22
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR REGISTRATION OF PATENT AGENT
[See rules 109(1) and 112]
I beg to apply for registration as a patent agent under the Patents Act, 1970.
A certificate of character (Certificate testifying to the character of the applicant should
be from a person not related to and being a Gazetted Officer or any other person whom
the Controller thinks fit.) from ____________________________________________________
________________________________________________________________________________
________________________________________________________________________________
is enclosed herewith.
I hereby declare that I am not subject to any of the disqualifications specified in rule 114
of the Patents Rules 2003 and that the information given below is true to the best of my
knowledge and belief.
1. Name (Family of principal name in the beginning) _______________________________
2. Address/place of residence: ___________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
3. Principal place of business: ___________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
4. Address of the branch office, if any _____________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
5. Father’s Name _______________________________________________________________
6. Nationality _________________________________________________________________
7. Date and place of birth _______________________________________________________
_____________________________________________________________________________
8. Occupation __________________________________________________________________
9. Particulars of qualification for registration a patent agent (either original certificates
and other documents or copies thereof duly attested by the Gazetted Officer or any
other person whom the Controller thinks fit must be sent with the application )
(a) __________________________________________________________________________
(b) __________________________________________________________________________
(c) __________________________________________________________________________
Dated this ______________________ day of _________________________ 20 ____________
Signature________________________________________
(to be signed by the applicant)
(________________________________________________)
(name of the natural person who has signed)
www.lexcampus.in
199
THE SECOND SCHEDULE
To,
The Controller of Patents,
The Patent Office,
At _____________________________________________
Note:
(a)
(b)
(c)
For fee: see First Schedule
Attach two recent passport size photographs
Provide specimen signature in separate sheet
www.lexcampus.in
200 THE SECOND SCHEDULE
FORM 23
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR THE RESTORATION OF THE NAME
IN THE REGISTER OF PATENT AGENTS
[See section 130 (2) and rule 117(1)]
I _______________________________________________________________________________
hereby apply for the restoration of my name in the register of patent agent which was
removed on ________________________ under section 130 or rule 116.
My name was originally entered in the register on __________________ under _______
______________ No. ___________________________________
Dated this ______________________ day of _____________________ 20 ___________
Signature________________________________________
(to be signed by the applicant)
(_____________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At ___________________________________
Note:
For fee: See First Schedule
www.lexcampus.in
201
THE SECOND SCHEDULE
FORM 24
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
APPLICATION FOR REVIEW/SETTING ASIDE
CONTROLLER’S DECISION/ORDER
[See sections 77 (l)(f) & 77 (l)(g) and rules 130(1) & 130(2)]
In the matter of (state the number of patent or patent application number and
the relevant proceeding) ________________________________________________
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
___________________________________________
I/We (Name, address and nationality of the applicant(s)) ________________
____________________________________________________________________
____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
____________________________________________________________being the
applicant(s)/opponent/party in the above matter hereby apply for the review/
setting aside of the Controller’s decision/order dated the ___________________
_________________ in the above matter.
The grounds for making the application are set forth in the accompanying
statement submitted in duplicate.
Dated this ______________ day of ________________________ 20 _________
Signature_________________________________________
(to be signed by the applicant(s) or his authorized registered patent agent)
(___________________________________________________________)
(name of the natural person who has signed)
To,
The Controller of Patents,
The Patent Office,
At _________________________________________
Note:
For fee: See First Schedule
www.lexcampus.in
202 THE SECOND SCHEDULE
FORM 25
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
[***] REQUEST FOR PERMISSION FOR MAKING PATENT
APPLICATION OUTSIDE INDIA
20
[See section 39 and rule 71 (1)]
I am /We are in possession of an invention for (State the title of the invention.)
______________________________________________________________________
______________________________________________________________________
____________________
I/We have made an application for the grant of a patent for the said
invention, its number being No. ___________________________ of dated
____________________
or
I/We hereby attach the brief description of the invention.
I/We intend to make application(s) alone/jointly with (Name and address of
the person(s).)
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
________________________________________
for the same/substantially same invention for patent in the following country/
countries/
convention countries, namely:______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
_______________________________________
I/We declare that the rights in the application(s) has/have been assigned to
(Name and
address of the Assignee)
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
______________________________
I/We request that I/We may be granted permission to make application(s) for
the said invention in the said country/countries. The reasons for making this
application, are as follows:______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
20
The word “No Fee” omitted by S.O. 657(E), dated 05.05.2006 (w.e.f. 05.05.2006).
www.lexcampus.in
203 THE SECOND SCHEDULE
The facts and matters stated above are true to the best of my/our knowledge,
information and belief.
Dated this _____________________ day of _____________________ 20
__________
Signature__________________________________
(to be signed by the applicant(s) or authorized patent agent)
To,
The Controller of Patents,
The Patent Office,
At _______________________________
[Note:
(a)
Strike out whichever is not applicable
(b)
For fee: See First Schedule]
21
21
Substituted by S.O. 657(E), dated 05.05.2006, for Note (w.e.f. 05.05.2006). Prior to its
substitution, Note read as under:- “Note.– Strike out whichever is not applicable.”
www.lexcampus.in
204 THE SECOND SCHEDULE
FORM 26
THE PATENTS ACT, 1970
(39 of 1970) &
THE PATENTS RULES, 2003
FORM FOR AUTHORISATION OF A PATENT AGENT/OR ANY
PERSON IN A MATTER OR PROCEEDING UNDER THE ACT
[See sections 127 & 132 and rule 135]
I/We ( Insert name, address and nationality ) _____________________________
______________________________________________________________________
______________________________________________________________________
________________________________________
hereby authorise (Insert the name, address and nationality of the person(s)
to be authorised.)
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
________________________________________
To act on my/our behalf in connection with (State the particular matter or
proceeding for which the authorization is made)
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
____________________________
and request that all notices, requisitions and communication relating thereto
may be sent to such person at the above address unless otherwise specified.
I/We hereby revoke all previous authorisation, if any made, in respect of same
matter or proceeding.
I/We hereby assent to the action already taken by the said person in the
above-matter.
Dated this ______________ day of _______________________ 20 ___________
Signature______________________________________________
(to be signed by the person(s) making authorization)
(_______________________________________________________________)
(Name of the natural person who has signed along with designation and official
seal, if any)
To,
The Controller of Patents,
The Patent Office,
At _________________________________________
Note:
To be stamped under the Indian Stamp Act, 1899 (2 of 1899).
www.lexcampus.in
205 THE SECOND SCHEDULE
[FORM 27
THE PATENTS ACT, 1970
22
(39 of 1970) &
THE PATENTS RULES, 2003
No Fee
STATEMENT REGARDING THE WORKING OF THE
PATENTED INVENTION(S) ON A COMMERCIAL SCALE IN
INDIA
[See section 146 (2) and rule 131 (1)]
1. Insert name,
adress, nationality,
patent number(s).
I/ We, the Patentee(s)/ Licensee ……………, in respect of patent number(s) …………, furnish this statement, (Explanation:
One form may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate
revenue / value accrued from a particular patented invention
cannot be derived separately from the approximate revenue/
value accrued from related patents, and all such patents are
granted to the same patentee(s)).
2. State the financial
year to which the
statement relates
in respect of the financial year ………
3. Worked / not
worked. Please state
whether each patent
in respect of which
this form is being
filed is worked or not
worked.
Patent Number(s)
4. If worked.
(a) Approximate revenue / value accrued in India to the
patentee(s)/ licensee furnishing the statement from patent
number(s) where the working is through:
Worked [Tick () if
applicable]
(1) Manufacturing in India
…… (in INR)
Not worked [ Tick
() if applicable]
(2) Importing into India
………. (in INR)
(b) Brief in respect of (a) above (maximum 500 words)
5. If not worked.
Reasons for not working the patented invention(s) and steps
being taken for working of the invention(s).(maximum 500
words)
The facts and matters stated above are true to the best of my/
our knowledge, information and belief.
Dated this ......... day of ............. 20......
22
Substituted by G.S.R. 652(E), dated 19.10.2020 (w.e.f. 01.01.2021).
www.lexcampus.in
206 THE SECOND SCHEDULE
6. To be signed by
Signature(s) .................................
Patentee(s) / Licensee To
/ Authorised Agent
The Controller of Patents,
furnishing the
The Patent Office,
statement.
at ………………
Note: Every patentee and every licensee (exclusive or otherwise) is required
to file this Form; where a patent is granted to two or more persons, all such
patentees may file this Form jointly; however, each licensee shall file this
Form individually. ”.
www.lexcampus.in
207 THE SECOND SCHEDULE
[FORM 28
THE PATENTS ACT, 1970
23
(39 of 1970)
AND
THE PATENTS RULES, 2003
TO BE SUBMITTED BY A SMALL ENTITY /STARTUP/
EDUCATIONAL INSTITUTION
[See rules 2 (fa), 2(fb), 2(ca) and 7)
1 Insert name, address and I/We, ________________________________
nationality
________________________________
applicant/patentee in respect of the patent
application no......... or patent no..............hereby
declare that I/we am/are a small entity in
accordance with rule 2(fa) or a startup in accordance
with rule 2(fb) or an educational institution in
accordance with rule 2(ca) and submit the following
document(s) as proof:.
2 Documents to be submitted
i. For claiming the status of a small entity:
A. For an Indian applicant: Evidence of registration under the Micro, Small and
Medium Enterprises Act, 2006 (27 of 2006).
B. In case of a foreign: Any other document.
ii. For claiming the status of a startup
A. For an Indian applicant: any document as evidence of eligibility, as defined in
rule 2(fb)
B. In case of a foreign entity: Any other document.
iii. For claiming the status of an educational institution
A. For an Indian applicant: Any document as evidence of eligibility, as defined
in rule 2(ca).
B. In case of a foreign educational institution: Any other document.
3 To be signed by the applicant(s) The information provided herein is correct to the
/ patentee (s) / authorized best of my/our knowledge and belief.
registered patent agent.
Dated this__________ day of ________20__
4 Name of the natural person
who has signed. ]
23
Signature ________________
Substituted vide G.S.R. 646(E), dated 21.09.2021, w.e.f. 21.09.2021.
www.lexcampus.in
208 THE SECOND SCHEDULE
[FORM 29
THE PATENTS ACT, 1970
24
(39 of 1970)
AND
THE PATENTS RULES, 2003
REQUEST FOR WITHDRAWAL OF THE APPLICATION FOR
PATENT
[See Section 11B(4) and rules 7(4A), 26]
1. Name of the applicant
I/ We, ______________________________request that the application for
patent numbered___________________ dated ______________ Filed by me/
us, if applicable, having he request for examination / request for expedited
examination numbered___________________ dated _____________ be treated
as withdrawn under rule 7(4A) / 26.
2. To be signed by the applicant or his authorized registered patent agent
______________________________________________________________________
__________
______________________________________________________________________
__________
3. Name of the natural person who has signed ]
______________________________________________________________________
__________
______________________________________________________________________
__________
Dated________________ day of ______________
Signature
( ___________________________ )
(Name) ____________________
(Designation)________________
To
24
The Controller of Patents
Patent Office at_____________________
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16.05.2016.
www.lexcampus.in
209 THE SECOND SCHEDULE
[FORM 30
THE PATENTS ACT, 1970
25
(39 of 1970)
AND
THE PATENTS RULES, 2003
TO BE USED WHEN NO OTHER FORM IS PRESCRIBED
[See sub-rule (2) of Rule 8)
1. Name of the Applicant/ I/We, __________________________________________
Patentee/Other
_______________________
_______________________
2.
Complete
address
including postal index
number/code and State
along with e-mail ID,
telephone, mobile and fax
number.
House No.
Street
…
…
Te l e p h o n e …
No.
…
Mobile No.
City
State
Country
…
…
…
Fax No.
…
Pin code
…
E-mail ID
…
3. Application No./Patent
No.
4. Relevant section/rules
5. Purpose of request
6. Details of request
7. To be
applicant
signed
by Signature_______________
8. Name of the person
Who has signed along
with designation and
official seal, if any.]
( _________________________ )
To
The Controller of Patents,
The Patent Office,
At ____________________________
25
Inserted vide G.S.R. 523(E), dated 16.05.2016, w.e.f. 16. 05.2016.
www.lexcampus.in
210
THE THIRD SCHEDULE
THE THIRD
SCHEDULE
[THE THIRD SCHEDULE
26
FORM OF PATENT
[See rule 74]
GOVERNMENT OF INDIA
THE PATENT OFFICE
THE THIRD SCHEDULE
Patent No __________________________
Application No _____________________
Date of filing _______________________
Patentee _________________________________________________________
Inventor(s) (Where applicable) _______________________________________
It is hereby certified that a patent has been granted to the patentee for an
invention entitled ___________________________________________________ as
disclosed in the above mentioned application for the term of 20 years from the
_______________ day of ______________ 19/20 _________, in accordance with
the provisions of the Patents Act, 1970.
Date of Grant __________________ Patents
Controller
of
(Seal of the Office)
______________________________________________________________________
__________
Note: The fees for renewal of this patent, if it is to be maintained, will fall due
on ____________ day of ______________ 20 ________ and on the same day in
every year thereafter.]
26
Substituted by S.O. 657(E), dated 05.05.2006, for Third Schedule (w.e.f. 05.05.2006).
www.lexcampus.in
211
[THE FOURTH SCHEDULE
[THE FOURTH SCHEDULE
27
[See proviso to rule 136 (1)]
THE FOURTH SCHEDULE
No. of
entry
Matter in respect of which cost is to be awarded
Amount of fees (in rupees)
For natural
person(s)
For other than natural person(s)
either alone or jointly with
natural person(s)
For small
entity
27
For other except
small entity
1.
For notice of opposition; under sections 25,
57, 60, 63, 78, 87(2) or 88(4).
2400
6000
12000
2.
For application for compulsory licence: under
sections 84(1), 91(1) or 92(1).
1500
3000
6000
3.
For application for revision of terms and
conditions of licence under section 88(4).
2400
6000
12000
4.
For notice of intention to attend the hearing
under rule 62(2).
1500
3000
6000
5.
Stamp fee for power of attorney, where
a patent agent or other person has been
appointed or stamp fee in respect of relevant
affidavits.
The
amount
actually
paid
The
amount
actually
paid
The amount
actually paid
6.
For written statement under rule 57 or reply
statement under rule 58 or for each affidavit,
if relevant.
4000
4000
5000
7.
For each document or publication produced in 1600
the proceedings, if relevant.
1600
2000
8.
For each unnecessary or irrelevant affidavit
or citation.
1600
1600
2000
9.
For every day or part day of hearing before
the Controller.]
4000
4000
5000]
Substituted, by Patent (Amendment) Rules, 2014 Vide GSR 125(E ), dt. 28-2-2014, w.e.f. 282-2014.
www.lexcampus.in
212
THE FIFTH SCHEDULE
THE FIFTH
SCHEDULE
[THE FIFTH SCHEDULE
28
[Refer rules 19(2), 19A(1)(b), 19B(5), 19B(12), 19H, 19K(5)]
THE FIFTH SCHEDULE
Sl.
No.
On what payable (Relevant provision of
Patents Rules, 2003, if any)
Relevant Rule
of regulations
under the
Treaty
For Natural
Person
(In Rupees)
Other than Natural
Person either alone
or jointly with Natural
Person
(In Rupees)
1.
Search fee
Rule 16.1(a)
2,500
10,000
2.
Additional fee under rule 19B(5)
Rule 40.2
2,500
10,000
3.
Protest fee under rules 19B(5) and
19J(5)
Rules 40.2(e) 1,000
and 68.3(e)
4,000
4.
Preliminary examination fee
Rule 58.1
3,000
12,000
5.
Additional fee under rule 19J(5)
Rule 68.3
3,000
12,000
6.
Preliminary examination fee, if the
International Search Report was
prepared by the Indian International
Searching Authority
2,500
10,000
7.
Additional fee under rule 19J(5), if
the international Search Report was
prepared by the Indian International
Searching Authority
2,500
10,000
8.
Handling fee to be paid to the IB
Rule 57
As specified in the Schedule of fee
annexed to the regulations made
under the Treaty
9.
For every day or part day of hearing
before the Controller.]
Rule
13ter.1(C),
13ter.2,
12.3(e),
12.4(e)
1,000
10.
Late payment fee
Rule 58bis.2, In accordance with the regulations
16bis.2
made under the Treaty
11.
Copy of Results of Earlier Search and 12bis.1(c)
of Earlier Application
28
1,000
4,000
4000]
Inserted vide SO 1029(E), dt. 23.4.2013, w.e.f. 15.10.2013 vide SO 3101(E), dt. 14.10.2013.
www.lexcampus.in
THE INTELLECTUAL PROPERTY
APPELLATE BOARD (PATENTS
PROCEDURE) RULES, 2010
In exercise of the powers conferred by section 117 H of the Patents Act, 1970
(39 of 1970), the Appellate Board hereby makes the following rules, namely:1. Short title and commencement. (1)
These rules may be called the Intellectual Property Appellate
Board (Patent Procedure) Rules, 2010.
(2)
They shall come into force on the date of their publication in the
Official Gazette.
2. Definitions. - In these rules, unless the context otherwise requires,(a)
“Act” means the Patents Act, 1970 (39 of 1970);
(b)
“address for service” means the address furnished by an appellant
or applicant or respondent or his authorised agent or his legal
practitioner at which service of summons, notices or other
processes may be effected;
(c)
“agent” means a person duly authorised by an appellant or
applicant or respondent to present appeal, application, counterstatement, reply, rejoinder, evidence or any other document on
his behalf before the Appellate Board and shall include an agent
referred to in section 125 of the Act;
(d)
“appeal” means an appeal under section 117 A and includes
Original Appeal (O.A.) and Transferred Appeal (T.A.) pursuant to
section 117 G;
(e)
“appellant” means a person making an appeal to the Appellate
Board under section 117 A;
(f)
“application” means an application for rectification of register of
patents under section 71 or a petition for revocation of patents
under section 64;
(g)
“Deputy Registrar” means the Deputy Registrar of the Appellate
Board and includes any officer to whom the powers and functions
of the Deputy Registrar may be delegated;
(h)
“fee” means the fee prescribed under the Second Schedule of these
rules;
(i)
“form” means a form appended to these rules;
(j)
“legal practitioner” shall have the same meaning as -assigned to it
in the Advocates Act, 1961 (25 of 1961);
(k)
“legal representative” means a person who in law represents the
estate of the deceased person ;
(l)
“Miscellaneous Petition” means any petition or request in writing
made to the Appellate Board not being an application under
section 64 or section 71 or an appeal under section 117 A;
S. 125
S. 117A, S. 117G
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
(m)
“pleadings” includes appeals or applications, counter-statements,
rejoinders, and replies permitted to be filed before the Appellate
Board ;
(n)
“Registry” means the Registry of the Appellate Board;
(o)
“Schedule” means a Schedule to these rules;
(p)
“section” means a section of the Act;
(q)
“transferred appeal or application” means an appeal or an
application or other proceedings which has been transferred to
the Appellate Board under section 117 G;
(r)
words and expressions used and not defined in these rules but
defined in the Act or the Trade Marks Act, 1999 (47 of 1999) shall
have the meanings respectively assigned to them in the Act or the
Trade Marks Act, 1999.
3. Form of procedure of appeal or application. (1)
An appeal against a decision, order, or direction of the Controller
or Central Government, under section 117 A shall be filed in the
Form 1 annexed to the First Schedule to the Patents (Appeal and
Applications to the Intellectual Property Appellate Board) Rules,
2010;
(2)
An application for rectification or revocation of patents shall be
filed in the Form 2 annexed to the First Schedule to the Patents
(Appeal and Applications to the Intellectual Property Appellate
Board) Rules, 2010;
(3)
An appeal or application sent by post shall be deemed to have
been presented before the Registry on the day it was received in
the Registry.
4. Appeal or application to be in writing. (1)
Every appeal, application, counter-statement, rejoinder, reply or
other document filed before the Appellate Board shall be typed or
printed neatly on one side of the full scape sheet only.
(2)
The appeal or application under sub-rule (1) shall be presented in
two sets in a paper-book form along with an empty file size envelope
strong enough and sufficiently big to enable covering of the paper-book
bearing full address of the respondent and, in case the respondents
are more than one, then, sufficient number of extra paper-books
together with empty file size envelopes bearing full addresses of each
respondent shall be furnished by the appellant or applicant.
5. Documents to accompany appeal or application. (1)
Every application shall be accompanied by evidence relied upon in
support of the application in the form of affidavits with exhibits, if
any, annexed thereto in paper-book form.
(2)
Every appeal filed shall be accompanied by the copies of the order,
at least one of which shall be a certified copy, against which the
appeal is filed.
(3)
The document intended to be attached to an affidavit shall be
referred to as Exhibits and shall be marked in the same manner
as exhibits admitted by the Appellate Board.
(4)
Every appeal application, if filed by a person other than the
appellant or applicant, then an affidavit stating the competency of
S. 71, S. 117D
S. 117A(3)
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
6.
7.
8.
9.
the person shall be filed along with such appeal or application and
the affidavit shall state the name and address and sufficiently
describe the identity of the deponent and shall also state in what
capacity he is so doing and whether he is authorised and if so
by whom and by what instrument and a copy thereof shall be
annexed to the affidavit.
(5)
Where a party is represented by authorised representative, a copy
of the authorisation to act as the authorised representative shall
be appended to the appeal or application.
Fees. - The fees for filing counter-statement, petition for intervention
by third party, extension of time, adjournment of hearing and review
petition before the Appellate Board shall be as provided in the Second
Schedule, which shall be paid by way of a bank draft drawn in favour of
the Deputy Registrar, Intellectual Property Appellate Board, payable at
Chennai.
Authorisation. (1)
An appeal, application or petition shall be presented by the parties
or an advocate having a vakalat duly executed in his/her favour
and duly accepted by him/her or by a patent agent having valid
authorization.
(2)
All communications directed to be made to a person in respect of
any proceedings or matter may be addressed to such advocate or
agent and service on the advocate or agent shall be deemed to be
service upon the person so authorising him and all appearances
before the Appellate Board may be made by or through such
advocate or agent.
Verification of the appeal or application. - Every pleading shall be
verified at the foot by the party or by one of the parties pleading or by
some other person proved to the satisfaction of the Appellate Board to be
authorised to verify the appeal or application and the person verifying
shall specify that what he verifies is his own knowledge and what he
verifies upon information received to be true by reference to the numbered
photographs of the pleadings and shall be signed by the person making it
and shall state the date on which it was signed and the place where it was
signed.
Presentation and scrutiny of appeal or application. (1)
The Deputy Registrar shall endorse on every appeal or application
the date with his signature on which it is presented.
(2)
If, on scrutiny, the appeal or application is found to be in order,
it shall be duly registered and given a serial number and if any
defect is noticed, the appeal or application shall not be registered
until such defect is rectified.
(3)
If an appeal or application is found to be defective and the defect
noticed is formal in nature, the Deputy Registrar may allow the
appellant or applicant to rectify the same in his presence and, if
the said defect is not formal in nature, the Deputy Registrar may
allow the appellant or applicant fifteen days time to rectify the
defect as he may deem fit and if the appeal or application has
been sent by post and found to be defective, the Deputy Registrar
IPAB. Sch. 1,
IPAB. Sch. 2
S. 117A(3)
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
may communicate the defects to the appellant or applicant and
allow the appellant or applicant fifteen days time from the date of
receipt of the communication from the Deputy Registrar, to rectify
the defects.
(4)
If the appellant or applicant fails to rectify the defects within
the time allowed under sub-rule (3), the appeal or application
shall he deemed to have been abandoned, unless the time is
extended or the delay is condoned in rectifying the defect, in
either case not exceeding 30 days as the case may be, by the
Deputy Registrar.
10. Notices of appeal or application to the respondents. - A copy of the
appeal or application in paper-book form shall be served by the Registry
on the respondents as soon as the same is registered in the Registry.
11. Filing of counter statement to the appeal or application and
other documents by the respondent. - After receipt of the appeal or
application filed in the prescribed Form 1 or Form 2, as the case may be,
given in the First Schedule, the respondent may file two complete sets of
counter-statement in the prescribed Form 1 of the First Schedule along
with fees and documents including evidence in the form of affidavits, if
any, in paper-book form before the Registry within two months from the
date of the service of the notice on him of the filing of the application or
appeal and a copy of the counter-statement along with the documents
shall be served to the applicant or appellant by the respondent directly
under intimation to the Registry and the case shall then proceed for
hearing.
12. Affidavit and Exhibits. –
(1)
The affidavits shall be, headed in the matter or matters to which
they relate, drawn up in the first person, divided into paragraphs,
consecutively numbered; and each paragraph shall, as far as
practicable, be confined to one subject. Every affidavit shall state
the description and the true place of abode of the person making
the same, shall bear the name and address of the person filing it
and shall state on whose behalf it is filed.
(2)
Where two or more persons join in an affidavit, each of them shall
depose separately to such facts which are within his personal
knowledge and those facts shall be stated in separate paragraphs.
(3)
Affidavits shall be taken –
(a) In India, before any court or person having by law authority
to receive evidence, or before any officer empowered by such
court as aforesaid to administer oaths or to take affidavits;
(b) In any county or place outside India, before a diplomatic or
consular officer, within the meaning of the Diplomatic and
Consular Officers (Oaths and Fees) Act, 1948, or such country
or place, or before a notary public, or before a Judge or a
Magistrate, of the country or place.
(4)
The person before whom an affidavit is taken shall state the date
on which and the place where the same is taken and shall affix his
seal, if any, or the seal of the court to which he is attached thereto
and sign his name and designation at the end thereof.
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217
THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
(5)
13.
14.
15.
16.
17.
Any affidavit purporting to have been affixed, impressed or
subscribed thereto or thereon the seal and signature of any person
authorised by sub-rule (4) to take an affidavit, in testimony of the
affidavit having been taken before him, may be admitted by the
Deputy Registrar without proof of the genuineness of the seal or
signature or of the official character of that person.
(6)
Alterations and interlineations shall, before an affidavit is sworn
or affirmed, be authenticated by the initials of the person before
whom the affidavit is taken.
(7)
Where there are exhibits to affidavits, a copy each of such exhibits
shall be sent to the other party or parties and the originals shall
be produced whenever so required at the Registry for inspection
by the other party and shall be produced at the time of hearing
unless the Appellate Board otherwise directs.
Filing of reply by the appellant or applicant. - After receipt of
counter-statement, the appellant or applicant, may file his reply within
two months of the service of the counter-statement along with evidence in
the form of affidavits, if any, in duplicate in the Registry and a copy of the
reply shall be served on the respondent directly under intimation to the
Registry.
Filing of Additional documents in appeal. - No party shall, except
with the leave of the Appellate Board had and obtained by request made
in writing in the form of a petition, copy whereof, shall serve upon the
opposite parties, rely upon any document or file any such document in
the appeal paper book which have not been previously filed before the
Controller.
Translation of documents.- Where a document in a language other than
Hindi or English is referred to in any proceedings, an attested translated
copy thereof in Hindi or English duly verified by the person having the
authority to do so, shall be furnished in duplicate to the Appellate Board
and a copy thereof shall be served upon the other party or parties directly
under intimation to the Registry.
Extension of time. (1)
If the Appellate Board is satisfied, on a petition along with the
prescribed fee made to it in Form 2 that there is sufficient cause
for extending the time for doing any act prescribed under these
rules (not being a time expressly provided for in the Act), whether
the time so specified has expired or not, it may subject to such
conditions as it may deem fit to impose, extend the time and
inform the parties accordingly.
(2)
Nothing in sub-rule (1) shall be deemed to require the Appellate
Board to hear the parties before disposing of the petition for
extension of time.
Intervention by third parties. - Any person other than the patentee
alleging interest in a granted patent in respect of which an appeal has been
filed under section 117 A against the order or decision of the Controller or
in an application for the revocation of the patent or to rectify the Register
may apply in the prescribed Form 3 given in the First Schedule along
with prescribed fees for leave to implead/intervene, stating the nature
S. 117A
IPAB. F. 3, IPAB.
Sch. 1
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
18.
19.
20.
21.
22.
23.
24.
25.
26.
of his interest and the Appellate Board may refuse or grant such leave
after hearing, if so required, the parties concerned upon such terms and
conditions as it deems fit.
Date of hearing to be notified. – The Registry shall notify the parties
the date, time and place of hearing of the appeal or application in such
manner as the Chairman may by general or special order direct.
Hearing of appeal or application. (1)
On the day fixed or on any other day to which the hearing may be
adjourned, the parties shall be heard by a Bench of the Appellate
Board.
(2)
In case where the appellant, applicant or petitioner does not
appear at the hearing, the appeal or application or petition may
be treated as abandoned unless he seeks an adjournment under
rule 20.
Adjournment of hearing. - A party to the hearing may make a
petition in duplicate for adjournment of the hearing in Form 4 with the
prescribed fee fifteen days before the date of hearing after serving a
copy of the petition for the adjournment upon the other party and the
Appellate Board may consider the application and pass such orders as it
deems fit.
Award of costs by the Appellate Board. - The Appellate Board may
award such costs as it deems fit to the parties having regard to all the
circumstances of the case.
Language of the Appellate Board. (1)
The proceedings of the Appellate Board shall be conducted in
English or Hindi.
(2)
All decisions or orders of the Appellate Board shall be either in
English or Hindi.
Order to be signed and dated. (1)
Every order of the Appellate Board shall be signed and dated by
the Members of the Bench.
(2)
The order shall be pronounced in the sitting of the Bench.
Communication of orders. - A certified copy of every order passed by
the Bench shall be communicated to the appellant and respondents or
their authorised agents or their legal practitioners.
Publication of the orders. -The orders of the Bench as are deemed fit
for publication in any authoritative report or the press may be released
for such publication on such terms and conditions as the Chairman may
decide.
Review petitions. (1)
A petition in duplicate for review limited to procedural or clerical
errors of an order of the Appellate Board may be made to the
Registry in the prescribed Form 5 given in the First Schedule
along with the prescribed fees within two months from the date
on which the order is communicated accompanied by a statement
setting forth the grounds on which the review is sought and
where the order in question concerns more than one respondent,
sufficient extra copies of such petition and statement shall be
filed.
IPAB. R. 20
IPAB. F. 4
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THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
(2)
27.
28.
29.
30.
31.
The Registry shall forward the petition and statement to the
respondents to the review petition.
(3)
The respondents may file counter-statement in the prescribed
Form 4 given in the First Schedule within two months from the
date of receipt of the review petition and shall forward a copy of
the counter-statement to the petitioner directly under intimation
to the Registry.
(4)
The review petition shall be posted for hearing before a Bench by
the Registry.
Rectification of orders. – Notwithstanding anything contained in
rule 26, the Appellate Board or members constituting the Bench that
passed any judgment, order or direction may at any time either suo
moto or upon request in writing made by any party to the proceedings
rectify or correct any clerical errors in any such judgment, order or
direction.
Continuation of proceedings after the death of a party, merger,
assignment, acquisition or transmission.- On the death of a party by
devolution of the legal representative of the deceased or by amalgamation,
merger, assignment, acquisition, transmission or by operation of law if
a new party becomes entitled for continuation of the proceedings, the
proceeding shall be continued subject to filing a request in writing along
with evidence in support thereof.
Fee for inspection of records and obtaining copies thereof. (1)
A fee for every hour or part thereof shall be charged for inspecting
the records of a pending appeal or application or decided case, as
given in the Second Schedule.
(2)
A fee shall be charged for providing xerox copy of each page of the
record, as prescribed in the Second Schedule.
Functions of the Deputy Registrar. (1)
The Deputy Registrar shall discharge the functions under the
general superintendence of the Chairman and shall discharge
such other functions as are assigned to him under these rules or
by the Chairman by a separate order in writing.
(2)
The Deputy Registrar shall be the custodian of the records of the
Appellate Board.
(3)
The official seal of the Appellate Board shall be kept in the custody
of the Deputy Registrar.
(4)
Subject to any general or special directions of the Chairman, the
official seal of the Appellate Board shall not be affixed to any order,
summons or other process save under the authority in writing
from the Deputy Registrar.
(5)
The official seal of the Appellate Board shall not be affixed to
any certified copy issued by the Appellate Board save under the
authority in writing of the Deputy Registrar.
Additional functions and duties of the Deputy Registrar. -In
addition to the functions and duties assigned under rule 30, the Deputy
Registrar shall have the following functions and duties subject to any
general or special orders of the Chairman, namely:-
IPAB. Sch. 2
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220 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
(i)
to receive all appeals, applications, counter-statements, replies
and other documents;
(ii)
to decide all questions arising out of the scrutiny of the appeals
and applications before they are registered;
(iii)
to require any appeal, application, counter-statement, replies
presented to the Appellate Board to be amended in accordance
with the rules;
(iv)
subject to the directions of the Chairman, to fix date of hearing of
the appeals or applications or other proceedings and issue notices
therefor;
(v)
direct any formal amendment of records;
(vi)
to order supply of copies of documents to parties to the proceedings;
(vii)
to grant leave to inspect the record of the Appellate Board;
(viii) to requisition records from the custody of any court, Controller of
Patents or other authority ;
(ix)
to decide questions relating to extension of time in respect of filing
of counter-statement, reply, rejoinder, etc.
32. Dress code for the Chairman, Vice-Chairman, Technical Member of
the Appellate Board and for the representatives of the parties. –
(i)
The dress for the Chairman, Vice-Chairman and other Members
shall be white or black pant with black coat and black tie or a
buttoned-up black coat: Provided that if the officials are formerly
from the High Court Bench, then they shall be in their official
robes.
(ii)
The professionals who appear before the Appellate Board shall be
in their professional dress, if any, and in case of other authorised
representatives of the parties, it shall be the following:(a) In the case of male, a black coat with a black tie or buttonedup black coat over a white/black pant.
(b) In the case of female, a black coat over white or any other
sober coloured saree.
(c) All other persons appearing before the Appellate Board shall
be properly dressed.
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221 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
THE FIRST SCHEDULE
(See Rules 2 & 3)
FORMS FOR MAKING APPEALS AND APPLICATIONS
Serial
No.
1.
Rule of
the IPAB
Title
Rule 11 On filing counter statement.
Form
Number
Form 1
2.
Rule 16 On petition for extension of time.
Form 2
3.
Rule 17 On petition for leave to intervene in proceedings.
Form 3
4.
Rule 20 On petition for adjournment of hearing.
Form 4
5.
Rule 26 On petition to review of the order of the Appellate Board. Form 5
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
FORM 1
(See Rule 3 & 11)
FORM OF COUNTER STATEMENT
(To be filed in duplicate and accompanied by as many copies as there are
registered users /authorised users under the registration)
In the matter of O.R.A./O.A. No. __________
*A.B. (add description such as full name, nationality, address, registered
office ………….)
APPLICANT/APPELLANT
Vs.
C.D. (add description such as full name, nationality, address, registered
office and the residential or office address on which the service of notice is to
be affected on the respondent or respondents. The details of each respondent
are to be given in chronological order).
RESPONDENT
I/we [1] ..................................................the respondent or the patentee of
the patent No............................ hereby give notice that the following are the
grounds on which I/we rely for my/our application/patent:……………………….
……………………….
I/we admit the following allegations in the application/appeal:……………………….
……………………….
All communications relating to these proceedings may be sent to the
following address in India:.......................................
.......................................
State the name and address of the registered proprietor or registered user
of patent.
VERIFICATION
I............................................................... (name of the respondent/patentee)
age .............. of ................... nationality, resident of .......................................do
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222 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
hereby verify that the contents of paras............. to................... are true to my
personal knowledge and paras ..................... to .............. are believed to be true
on legal advice and that I have not suppressed any material fact.
Dated this ....................................................day of.....................
Place:
Signature of Advocate/Agent
To,
Signature of the Respondent/Patentee
(FULL NAME OF THE SIGNATORY)
The Deputy Registrar,
Intellectual Property Appellate Board,
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
FORM 2
(See Rule 16)
APPLICATION FOR EXTENSION OF TIME
(To be filed in duplicate )
In the matter of O.R.A./O.A. No. __________
*A.B. (add description such as full name, nationality, address, registered
office ………….)
APPLICANT/APPELLANT
Vs.
C.D. (add description such as full name, nationality, address, registered
office and the residential or office address on which the service of notice is to
be affected on the respondent or respondents. The details of each respondent
are to be given in chronological order).
RESPONDENT
In the matter of............................................................................ I/we ........
.................................................. being the ...................................... in the above
matter hereby apply for an extension of time for................................ on the
following grounds.
…………………………….
…………………………….
All communications relating to these proceedings may be sent to the
following address in India:.......................................
.......................................
Date:
Place:
ignature of Appellant/Applicant/
S
Respondent/Advocate/Agent
……………………………………….
(Full Name of the Signatory)
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223 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
To,
The Deputy Registrar,
Intellectual Property Appellate Board,
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
FORM 3
(See Rule 17)
APPLICATION FOR LEAVE TO INTERVENE IN PROCEEDINGS
RELATING TO THE RECTIFICATION OF THE REGISTER OR THE
REMOVAL OF PATENT FROM THE REGISTER OF PATENTS
(To be files in duplicate together with a statement of case in duplicate)
In the matter of O.R.A./O.A. No. __________
*A.B. (add description such as full name, nationality, address, registered
office ………….)
APPLICANT/APPELLANT
Vs.
C.D. (add description such as full name, nationality, address, registered
office and the residential or office address on which the service of notice is to
be affected on the respondent or respondents. The details of each respondent
are to be given in chronological order).
RESPONDENT
In the matter of Patent No. .........................................................................
granted in the name of.......................................................... on ........................
.........
I/we ………………………………………………..hereby apply for leave to
intervene in the proceedings relating to the rectification or removal of the
entry in the register in respect of the above mentioned patent.
My/our interest in the patent ……………………………..
…………………………………………………………….
All communications relating to this application may be sent to the
following address in India:
.......................................
.......................................
VERIFICATION
I............................................................... (name of the respondent/patentee)
age .............. of ................... nationality, resident of .......................................do
hereby verify that the contents of paras............. to................... are true to my
personal knowledge and paras ..................... to .............. are believed to be true
on legal advice and that I have not suppressed any material fact.
Dated this ....................................................day of.....................
Place:
ignature of Advocate/Agent
S
Signature of the Applicant
……………………………………….
(Full Name of the Signatory)
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224 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
To,
The Deputy Registrar,
Intellectual Property Appellate Board,
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
FORM 4
(See Rule 20)
PETITION FOR ADJOURNMENT OF HEARING
(To be filed in duplicate)
In the matter of O.R.A./O.A. No. __________
*A.B. (add description such as full name, nationality, address, registered
office ………….)
APPLICANT/APPELLANT
Vs.
C.D. (add description such as full name, nationality, address, registered
office and the residential or office address on which the service of notice is to
be affected on the respondent or respondents. The details of each respondent
are to be given in chronological order).
RESPONDENT
In the matter of................................................................................. I/We
................... .......................................... being the .................................... in the
above matter hereby apply for adjournment of the hearing fixed for ................
.......................... for................ month on the following grounds:………………………………………
………………………………………
………………………………………
All communication relating to these proceedings may be sent to the
following address in India:
.......................................
.......................................
Dated, this....................................................of....................................
Place:
Signature of Appellant/Applicant/
Respondent/Advocate/Agent
……………………………………….
(Full Name of the Signatory)
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225 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
To,
The Deputy Registrar,
Intellectual Property Appellate Board,
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
FORM 5
(See Rule 26)
PETITION FOR REVIEW OF THE ORDER OF THE APPELLATE
BOARD
(To be filed in duplicate and accompanied by as many copies as there are
registered users /authorised users under the registration)
In the matter of …………….
*A.B. (add description such as full name, nationality, address, registered
office ………….) represented by its Partner/Principal Officer/duly authorized
Power or Attorney
PETITIONER
C.D. (add description such as full name, nationality, address, registered
office and the residential or office address on which the service of notice is to
be affected on the respondent or respondents. The details of each respondent
are to be given in chronological order).
RESPONDENT
In the matter of...................................................... I/we.........................
being the ...........................................in the above matter hereby apply to the
Appellate Board for the review of their order dated the ....................................
.....day of .................................. in the above matter.
The grounds for making this application are set forth in the accompanying
statement.
VERIFICATION
I............................................................... (name of the respondent/patentee)
age .............. of ................... nationality, resident of .......................................do
hereby verify that the contents of paras............. to................... are true to my
personal knowledge and paras ..................... to .............. are believed to be true
on legal advice and that I have not suppressed any material fact.
Dated this ....................................................day of.....................
Place:
Signature of Advocate/Agent
Signature of the Applicant
………………………………….
(Full Name of the Signatory)
*For fee see second schedule.
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226 THE INTELLECTUAL PROPERTY APPELLATE BOARD (PATENTS PROCEDURE) RULES, 2010
To,
The Deputy Registrar,
Intellectual Property Appellate Board,
THE SECOND SCHEDULE
(See Rule 6)
FEE
Entry
No
On what payable
For natural person
(Amount in rupees)
For other than natural
person either along or
jointly with natural person
(Amount in rupees)
4000/-
Relevant
form
1
On filing counter
statement
2000/-
2
On petition for
extension of time
1000/- per month 2000/- per month or
or part thereof
part thereof
2
3
On petition for leave
to intervene
2000/-
3
4
On petition for
adjournment of
hearing
1000/- per month 2000/- per month
4
5
On petition for
review of the order
of the IPAB
3000/-
6000/-
5
6
Fee for inspection of
records of pending
order or appeal
or application of
decided case.
150/- per hour or
part thereof
300/- per hour or part
thereof
-
7
Fee for supplying
photocopies of the
documents
5/- per page
5/- per page
-
8
Filing of a petition
not otherwise
provided for
2000/-
4000/-
-
4000/-
1
[ F.No.7(9)/2007-IPR.I.(IPAB)]
V. BHASKAR Jt. Secy.
www.lexcampus.in
THE PATENTS (APPEALS
THE PATENTS AND APPLICATIONS TO THE
(APPEALS &
APP. TO THE
INTELLECTUAL PROPERTY
I.P. APPELLATE
BOARD)
BOARD) RULES, 2011
RULES,APPELLATE
2011
Whereas the draft of the Patents (Appeals and Applications to the Intellectual
Property Appellate Board) Rules, 2010 were published as required by
sub-section (3) of section 159 of the Patents Act, 1970 in Gazette of India,
Extraordinary, Part II, Section 3, Sub-section (i) dated 20th August 2010,
vide notification of the Government of India in the Ministry of Commerce
and Industry (Department of Industrial Policy and Promotion) under G. S. R.
690 (E), dated 18th August 2010, inviting objections and suggestions from all
persons likely to be affected thereby before the expiry of forty-five days from
the date on which the copies of the Gazette containing the notification were
made available to the public;
And whereas the copies of the Gazette containing the notification were
made available to the public on 27th August, 2010;
And whereas the objections and suggestions from the public have been
considered by the Central Government;
Now, therefore, in exercise of the powers conferred by Section 159 of the
Patents Act, 1970 (39 of 1970), the Central Government hereby makes the
following rules, namely:-
RULES
1. Short title and commencement. (1)
These rules may be called the Patents (Appeals and Applications
to the Intellectual Property Appellate Board) Rules, 2011.
(2)
They shall come into force on the date of their final publication in
the Official Gazette.
2. Appeals and Applications.- The manner of making appeals and
applications and the forms of appeals and applications to the Appellate
Board and the manner of verification thereof shall be provided in the First
Schedule.
3. Condonation of delay in filing appeal.- Subject to the rules, if any,
made in that behalf by the Appellate Board any appeal under section
117A of the Patents Act, 1970 may be admitted after the prescribed
period, if the Appellate Board is satisfied on a petition made to it in Form
3 that there is sufficient cause for not preferring the appeal with in the
prescribed period.
4. Fees. - The fees for filing appeals, applications petition for condonation of
delay before the Appellate Board shall be as provided in the Second Schedule
which shall be paid by way of a bank draft drawn in favour of the Deputy
Registrar, Intellectual Property Appellate Board, payable at Chennai.
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228 The Patents (Appeals & App. to the I.P. Appellate Board) Rules, 2011
THE FIRST SCHEDULE
(See Rules 2 & 3)
FORMS
Serial
No.
Title
Rule of the Patent
(Appeals and Applications
to the Intellectual Property
Appellate Board)
Rules, 2010
Form
Number
1.
Rule 2
An appeal under section 117A
from any decision order or
direction of the Controller or
Central Government.
Form 1
2.
Rule 2
Application under section 64
for revocation of a patent or
application for rectification of the
register under section 71 or both.
Form 2
3.
Rule 3
Application for condoning the
delay in filing appeal.
Form 3
1
[FORM 1
[See Rule 2]
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
APPLICATION FOR REVOCATION
ORA No.
(In the matter of _______________)
Date Seal
1. Name of Applicant
:
2. Address
:
3. Name of Counsel and address
:
4. Name(s) of Respondent (s) with address
:
[In case of foreign respondent(s), the address for service in India, if any, may
be furnished]
5. Relief claimed and relevant Sections
:
6. Particulars of parallel or collateral proceedings :
7. In application for revocation of Patent
:
(details of impugned patent -date of grant, title of patent complete specification)
8. Facts of case
:
(set out facts in brief along with the evidence and the documents relied on)
9. Grounds on which relief is Sought for (in brief)
:
10. Details of fees
:
11. Prayer :
12. Affidavit as below, in support thereof
:
Dated this _____________ Day of _____________
Place ____________
1
Signature of applicant
Substituted vide GSR 312(E), dated 16.05.2013, w.e.f. 16.05.2013
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229 The Patents (Appeals & App. to the I.P. Appellate Board) Rules, 2011
List of documents:
The proof affidavit along with the documents shall be filed.
[For example,
Annexure-1: Copy of Certificate/order obtained by the
respondent in respect of impugned patent.
Annexure-2 and so on:
Other documents]
AFFIDAVIT
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
Case No.
(In the matter of _______________)
Cause title:
Applicant
vs.
Respondent
Shri _______________ son of _______________ aged at _____________
residing at _______________ do solemnly affirm and declare as under:Xxx
Xxx
Deponent
Verification
I_______________ (name of deponent/of _______________ Nationality,
resident of _______________) do hereby verify that the contents of paras
_______________ to _______________ are true to my/our personal knowledge
and paras _______________ to _______________ are believed to be true on legal
advice and that
I/we have not suppressed any material fact.
Dated this ____________ day of ___________
Place ____________
2
Signature of the Deponent];
[FORM 2
[See Rule 2]
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
APPEAL
O.A. No.
(Appeal arising out of _______________)
2
Date Seal
Substituted vide GSR 312(E), dated 16.05.2013, w.e.f. 16.05.2013
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230 The Patents (Appeals & App. to the I.P. Appellate Board) Rules, 2011
Cause title:
Appellant/(rank of party before the Registry, if any)
vs.
Respondent/(rank of party before the Registry, if any)
The appellant above named, prefers the appeal under section 117A, against
the order dated…………… for the following among other grounds:
(a)
(b)
(c)
(d)
Limitation:For the above reasons, it is prayed __________
Affidavit, as below, in support thereof:
Dated this ____________ Day of ____________
Place ____________
Signature of the appellant
AFFIDAVIT
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
Case No.
(In the matter of _______________)
Cause title:
Appellant
vs.
Respondent
Shri _______________ son of _______________ aged at __________ residing at
_______________ do solemnly affirm and declare as under:Xxx
Xxx
Deponent
Verification
I _______________ (name of deponent/of _______________ Nationality, resident
of _______________) do hereby verify that the contents of paras ____________ to
____________ are true to my/our personal knowledge and paras ____________
to ____________ are believed to be true on legal advice and that I/we have not
suppressed any material fact.
Dated this __________ day of __________
Place
Signature of the Deponent];
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231 The Patents (Appeals & App. to the I.P. Appellate Board) Rules, 2011
3
[FORM 3
[See Rule 2]
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
(Application for condoning the delay in filing Appeal under Section
117A of the Patents Act, 1970)
M.P.No.
Date Seal
(In the matter of _______________)
1. Name of Petitioner/Appellant
:
2. Address
:
3. Name of Counsel and address
:
4. Name(s) of Respondent (s) with address
:
[In case of foreign respondent(s), the address for service in India, if any, may
be furnished]
5. Period of delay
:
6. Grounds. :
7. Prayer :
Affidavit, as below, in support thereof
Dated this____________ Day of ____________
Place ____________
Signature of the petitioner
AFFIDAVIT
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD
Case No.
(In the matter of _______________)
Cause title:
Appellant
vs.
Respondent
Shri _______________ son of _______________ aged at ____________ residing at
_______________ do solemnly affirm and declare as under:Xxx
Xxx
Deponent
Verification
I ___________________ (name of deponent/of _______________ Nationality,
resident of _______________) do hereby verify that the contents of paras
__________ to __________ are true to my/our personal knowledge and paras
3
Substituted vide GSR 312(E), dated 16.05.2013, w.e.f. 16.05.2013
www.lexcampus.in
232 The Patents (Appeals & App. to the I.P. Appellate Board) Rules, 2011
__________ to __________ are believed to be true on legal advice and that I/we
have not suppressed any material fact.
Dated this __________ day of __________
Place __________
Signature of the Deponent];
(b) For the Second Schedule, the following Schedule shall be substituted, namely:“
[THE SECOND SCHEDULE
4
[See Rule 4]
Fees
S.
No.
Description
Fees
For natural
person
Corresponding
Form Number
For other than natural
person either along
or jointly with natural
persons
1
Application for
revocation/rectification
Rs. 5000/-
Rs. 10000/-
Form-1
2
For filing Appeal
Rs. 5000/-
Rs. 10000/-
Form-2
3
Petition for condonation
of delay
Rs. 2500/per month or
part thereof
Rs. 5000/- per
month or part
thereof
Form-3]
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