IPMG Working Document

A detailed overview of the patent system of the

INDIA

Subject Matter Invention

• According to the Patents (Amendment ) Act, 2005, s. 1 : "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.

Exclusions from Patentable Subject-Matter:

• Frivolous invention which claims anything obviously contrary to well established natural laws
Patents Act 1970, s. 3 (a)

• Invention the primary or intended use or commercial exploitation of which would be contrary to
public order or morality or which causes serious prejudice to human, animal or plant life or health
or to the environment Patents (Amendment ) Act, 2002, s. 4 (a)

• Mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any
living thing or non-living substance occurring in nature. Patents Act 1970, s. 3 (c) & Patents
(Amendment ) Act, 2002, s. 4 (b)

• 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

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 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;". The Patents (Amendment) Act, 2005 , s. 3 (d)

• 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; Patents Act 1970, s. 3 (e)

• Mere arrangement or re-arrangement or duplication of known devices each functioning

independently of one another in a known way; Patents Act 1970, s. 3 (f)

• Methods of agriculture or horticulture; Patents Act 1970, s. 3 (h)

• Processes for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free of
disease or to increase their economic value or that of their products; Patents Act 1970, s. 3 (i) &
Patents (Amendment ) Act, 2002, s. 4 (d)

• 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 Patents (Amendment ) Act, 2002, s. 4 (e)

• Mathematical or business methods or a computer programme per se or algorithms Patents

(Amendment ) Act, 2002, s. 4 (e)

• Literary, dramatic, musical or artistic work or any other aesthetic creation including
cinematographic works and television productions Patents (Amendment ) Act, 2002, s. 4 (e)

• Mere scheme or rule or method of performing mental act or method of playing game; Patents
(Amendment ) Act, 2002, s. 4 (e)

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 • Presentation of information; Patents (Amendment ) Act, 2002, s. 4 (e)

• Topography of integrated circuit; Patents (Amendment ) Act, 2002, s. 4 (e)

• Inventions which are in effect traditional knowledge or an aggregation or duplication of known

properties of traditionally known component or components; Patents (Amendment ) Act, 2002, s. 4
(e)

• Inventions relating to atomic energy which in the opinion of the Central Government are useful for
or relate to the production, control, use or disposal of atomic energy or the prospecting, mining,
extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of
any prescribed substance or radioactive substance or the ensuring of safety in atomic energy
operations. Patents Act 1970, s. 4 & Atomic Energy Act s. 20(1)

• NOTE: Indian patent law has recently been amended with the enactment of the The Patents
(Amendment) Act, No. 15 of 2005. “The Amendment has deleted Section 5 of IPA 1970 that specified
that only methods or processes of manufacture are patentable for certain inventions, so as to allow
product patent protection in all fields of technology including areas of foods, medicines and drugs.
However the new uses of known substances are still non-patentable unlike in the case of patent laws in
many other Countries, which afford protection for new uses (Swiss type of claims). It would have been
appropriate if Utility Patents were allowed under the Indian Law, considering Indian strengths in this
area and its R&D capabilities” (Nair).

• DNA is patentable as of January 1, 2005.

Scope of Right Content

• S. 25 of the Patents (Amendment ) Act, 2002 direct that :
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

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 do not have his consent from the act of making, using, offering for sale, selling or importing for
those purposes the 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 obtain directly by that process in India.

• The Indian Judiciary accepts the “purposive construction” approach to claim interpretation as laid
down by the House of Lords in Catnic v Hill & Smith (1982) RPC 183. The purpose of the exercise
is to determine the true scope of the claims as they would be read by a person skilled in the art,
without knowledge of particular alleged infringing acts. More specifically, one must ask whether a
person with practical knowledge and experience of the kind of work in which the invention was
intended to be used would understand that strict compliance with a particular descriptive word or
phrase appearing in a claim was intended by the patentee to be an essential requirement of the
invention so that any variant would fall outside the monopoly claimed, even though it could have
no material effect upon the way the invention worked. (AIPPI, Indian Group. Report Q175 The
Role of equivalents and the prosecution history in defining the scope of patent protection)

Duration
• The term is 20 years for any patent that has not expired or ceased to have effect on May 20th 2003,
subject to the payment of the regulatory fees (Patents Amendment Act, 2002, s. 27).
Criteria Novelty
• In order to be novel the subject matter should satisfy the criteria of novelty as laid down under section
13 of the Patent Act with exceptions provided under the heading ‘Anticipation’ in chapter VI of the Act
(Office of the Controller General of Patents, Designs and Trade Marks, Manual of Patent Office,
Manual of Patent Practice and Procedure, 1.3.5)

13. Search for anticipation by previous publication and by prior claim (s. 30 Patent Act 1970)
(1) The examiner to whom an application for a patent is referred under section 12 shall make an
investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the
complete specification-

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(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 an investigation as the Controller may direct for the purpose of
ascertaining, whether the invention, so far as claimed in any claim of the complete specification, has been
anticipated by publication in India or elsewhere in any document other than those mentioned in sub-
section (1) before the date of filing of the applicant's complete specification.

(3) Where a complete specification is amended under the provisions of this Act before it has been accepted,
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.

Inventiveness
• The Patents (Amendment) Act, 2005 No. 15 of 2005, create a new definition of inventive step.
According to the Act, 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;

Industrial application (The test remains the same as the previous utility test, Srividhya Ragavan,
“Patent Amendments in India in the Wake of TRIPS”)
• To be patentable, an invention must be useful or have some utility. For the purpose of utility, the
element of commercial or pecuniary success has no relation to the question of utility in patent law.

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 However, where the improvement by reason of cheaper production, such a consideration is of the very
essence of the patent itself and the question is of thing claimed can not be considered an invention
unless that condition is fulfilled [4RPC 449 p. 462 (HL) per Lord Chancellor].

• An objection to a patent on the ground of usefulness should fail where the invention gives the result
stated in the specification. The usefulness of an invention depends not on whether by following the
directions in the complete specification all the results not necessary for commercial success can be
obtained, but on whether by such directions the effects that the application/patentee professed to
produce could be obtained. The meaning of usefulness is therefore: useful for the purpose indicated by
the applicant or patentee whether a non-commercial utility is involved. The usefulness of the invention
is to be judged by the reference to the state of things at the date of filing of the patent application, if the
invention was then useful, the fact that subsequent improvement have replaced the patented invention
render it obsolete and commercially of no value, does not invalidate the patent . (Office of the
Controller General of Patents, Designs and Trade Marks, Manual of Patent Office, Manual of Patent
Practice and Procedure, 1.3.6)
First-to-file
• The applicant must be the first person to file the patent (does not have to be the first person to have
invented).

Limits of patent Compulsory licenses

rights
Three years after the date of the sealing of a patent, a compulsory license might be granted if :
• The reasonable requirement of the public with respect to the patented invention have not been met.
• The patented invention is not available to the public at a reasonably affordable price.
• The patented invention is not worked in the territory of India.
(Patents Amendment Act, 2002, s. 84)

• Also s 92 (1) of the Patents Amendment Act, 2002 allows the Indian government to issue compulsory
licenses at any time in circumstances of national emergency, circumstances of extreme urgency or
in case of public non-commercial use.

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• Compulsory licenses for exportation of pharmaceutical : According to new provisions of the The
Patents (Amendment) Act, 2005 No. 15 of 2005 : Compulsory license shall also 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 license has been granted by such country or such country has, by
notification or otherwise, allowed importation of the patented pharmaceutical products from India.

General principles/considerations applicable to working of patented inventions (indication of when a

compulsory licence may be granted:
• Patents are granted to encourage invention and to secure that the inventions are worked in India on
a commercial scale to the fullest extent that is reasonably practicable without undue delay;
• Patents are not granted merely to enable patentees (an exclusive licensees) to enjoy a monopoly for
the importation of the patented article;
• 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;
• Patents granted do not impede protection of public health and nutrition and should act as
instruments to promote public interest specially in sectors of vital importance for socio-economic
and technological development in India;
• Patents granted do not in any way prohibit the Central Government from taking measures to
protect public health;
• Patent rights are not abused by the patentee or person deriving title or interest on patent from the
patentee, and they do not resort to practices which unreasonably restrain trade or adversely affect
the international transfer of technology;
• Patents are granted to make the patented invention available at reasonably affordable prices to the
public.
(Patents Amendment Act, 2002, s. 83)

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Secrecy of certain inventions (s. 35-42 Patents Act 1970)
35. Secrecy directions relating to inventions relevant for defense purposes
(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it
appears to the Controller that the invention is one of a class notified to him by the Central Government as
relevant for defense 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 to any person or class of persons specified in the directions.

(2) Where the Controller gives any such directions as are referred to in sub-section (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 defense 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 defense purposes, it may at any time before acceptance of the complete specification
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 of the directions issued by him.

37. Consequences of secrecy directions

“(1) So long as any directions under section 35 are in force in respect of an application-

(a) the Controller shall not pass an order refusing to accept the same; and

(b) notwithstanding anything contained in this Act, no appeal shall lie from any order of the Controller
passed in respect thereof:

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PROVIDED that the application may, subject to the directions, proceed up to the stage of the acceptance
of the complete specification, but the acceptance shall not be advertised nor the specification published,
and no patent shall be granted in pursuance of the application.

(2) Where a complete specification filed in pursuance of an application for a patent for an invention in
respect of which directions have been given under section 35 is accepted 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.”

Government Use (also see s. 47, Patents Act 1970)

• (s. 100 Patents Act 1970) Power 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

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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 of any person authorised by it under sub-section (1), at any
time after the acceptance of the complete specification in respect 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:

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.

(4) 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.

(5) Where an invention has been used by or with the authority of the Central Government for the purposes
of government under this section, then unless it appears to the government that it would be contrary to the
public interest to do so, 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 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.

(6) The right to make, use, exercise and vend an invention for the purposes of government under sub-
section (1) shall include the right to sell the goods which have been made in exercise of that right, and a

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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.

(7) Where in respect of a patent which has been the subject of an authorisation under this section, there is
an exclusive licensee as is referred to in sub-section (3) of 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 by way of minimum royalty), the notice directed to be given
under sub-section (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.”

Research exception & Regulatory Approval

• s. 47 Patents Act states that:

The grant of a patent under this Act shall be subject to the condition that any machine, apparatus or other
article in respect of which the patent is granted or any article made by the use of the process in respect of
which the patent is granted, may be made or used, and any process in respect of which the patent is
granted may be used, by any person, for the purpose merely of experiment or research including the
imparting of instructions to pupils.

• s. 44 Patents Amendment Act, 2002 states that:

[A]ny act of making, constructing, using or selling a patented invention sorely for uses reasonably relating
to the development and submission of information required under any law for the time being in force, in
India, or in a country other than India, that regulates the manufacture, construction, use or sale of any
product [s]hall not be considered as an infringement of patent rights.

Medicine or drug (s. 47 Patents Act)

The grant of a patent under this Act shall be subject to the condition that 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

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 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.

Procedure for Filing Application

Obtaining a
Patent • An application must be filed. The place of filing is determined according to the territorial limits where
the applicant or the first mentioned applicant (in case joint applicants for a patent) normally resides or
has domicile or has a place of business or the place from where the invention actually originated.
• If the applicant for the patent or party in a proceeding has no place of business or domicile in India, the
appropriate office will be according to the address of service in India given by the applicant or party in
proceeding. The appropriate office once decided in respect of any proceedings under the Act shall not
ordinarily be changed,
• An application may be accompanied by a “Provisional Specification” describing the invention. Such an
application would secure “provisional protection”, and thereby, enable the inventor to work out the
practical details of the invention and to file complete specification within 12/15 months with extension
from the date of filing of provisional specification.

Document required :
- Application form in duplicate
- Provisional or complete specification in duplicate
- Drawing in duplicate (if necessary)
- Abstract of the invention (in duplicate)
- Priority document
- Declaration of inventorship
- Power of attorney
- Fee

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Specification
• A complete specification with drawings must be attached to the application.
• A complete specification fully describes the invention with drawings (if required). It must disclose the
best method known to the applicant and end with claim/claims defining the scope of protection sought.
• Protection under the Patent Act depends upon the detailed disclosure of the invention as the subject of
its protection. The specification must be written in such a manner that a person of ordinary skill in the
relevant field to which the invention pertains, can understand the invention. (Office of the Controller
General of Patents, Designs and Trade Marks, General Information for Filing Patent Application in
India)

s. 10(1) Patent Act 1970

Every specification, whether provisional or complete, shall describe the invention and shall begin with a
title sufficiently indicating the subject-matter to which the invention relates.

s. 10(4) Patent Act 1970 and (Patents Amendment Act, 2002, s. 8)

Every complete specification shall-
a. fully and particularly describe the invention and its operation or use and the method by which it is
to be performed;
b. disclose the best method of performing the invention which is known to the applicant and for which
he is entitled to claim protection; and
c. end with a claim or claims defining the scope of the invention for which protection is claimed.
d. Be accompanied by an abstract to provide technical information on the invention, provided that :
[…] if the applicant mentions a biological material in the specification which may not be described in such
a way as to satisfy clause (a) or (b) and if such material is not available to the public, the application shall
be completed by depositing the material to an authorized depository institution as may be notified by the
Central government in the Official Gazette[…]

Claims
• The complete specification must have at least one claim. The first claim is the main claim which is
made as wide as possible. The subsidiary claims refer to the main claim or optional features. They may
also contain independent claims. Although the claim clauses consist of a number of claims, the totality

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 of the claims must relate to one invention only. It should be noted that a claim is a statement of
technical facts expressed in legal terms defining the scope of the invention to be protected. (Office of
the Controller General of Patents, Designs and Trade Marks, General Information for Filing Patent
Application in India)

Section 8 Patents Amendment Act, 2002

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.

Confidentiality
• Publication of all the applications for patents except the applications prejudicial to the defense of India
or abandoned due to non-filing of complete specification within the prescribed time-limit after
provisional or withdrawal of the application will be published in the Official Gazette after 18 months
from the date of filing of the application or the date of priority whichever is earlier. The publication
will include the particulars of the date of the application, application number, name and address of the
applicant along with the abstract. No [patent application] shall be opened for public inspection before
publication. After the date of publication of the application, as stated above, the complete specification
along with provisional and drawing, if any, and abstract may be inspected at the appropriate office by
making a written request to the Controller in the prescribed manner. (Office of the Controller General
of Patents, Designs and Trade Marks, General Information for Filing Patent Application in India)

Examination of Patent Applications

• Section 12 Patent Act 1970 outlines the examination procedure
(1) When the complete specification has been led in respect of an application for a patent, the application
and the specification relating thereto shall be referred by the Controller to an Examiner for making a
report to him in respect of the following matters, namely:
Whether the application and the specification relating thereto are in accordance with the requirements of
this Act and of any rules made thereunder;
whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the

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application; the result of investigations made under section 13; and any other matter which may be
prescribed.
(2) The Examiner to whom the application and the specification relating thereto are referred under sub-
section (1) shall ordinarily make the report to the Controller within a period of eighteen months from the
date of such reference.

• S. 13 of the Patent Act discusses the role of the examiner in searching for anticipation by previous
publication and by prior claim.

• S. 15 Patent Act sets out the power of Controller to refuse or require amended applications in certain
cases
(1) Where the Controller is satisfied that the application or any specification filed in pursuance thereof
does not comply with the requirements of this Act or of any rules made thereunder, the Controller may
either - refuse to proceed with the application; or require the application, specification or drawings to be
amended to his satisfaction before he proceeds with the application.
(2) If it appears to the Controller that the invention claimed in the specification is not an invention within
the meaning of, or is not patentable under, this Act, he shall refuse the application.
(3) If it appears to the Controller that any invention, in respect of which an application for a patent is
made, might be used in any manner contrary to law, he may refuse the application, unless the specification
is amended by the insertion of such disclaimer in respect of that use of the invention, or such other
reference to the illegality thereof, as the Controller thinks fit.

• S. 18 Patent Act 1970 states the power of Controller in cases of where the application is deemed
anticipated
(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 to accept the complete specification unless the applicant -
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

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

• If the application is not opposed or the opposition is decided in favoured of the applicant or is not
refused, the patent is granted or sealed on making a request in Form 9 along with sealing fee within 6
months from the date of notification of acceptance of the complete specification in the Gazette of India
at the appropriated office where the application was filed. However it is extendable by three months. If
the sealing fee is not paid within the prescribed period, it will be treated as “No patent”. There is no
provision in the Act to revive said patent. (Office of the Controller General of Patents, Designs and
Trade Marks, General Information for Filing Patent Application in India).
• The maximum allowable time between the filing of an application and grant will be 26 months (as of
Jan 1, 2005).

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 Re-examination
There is no provision for re-examination of a patent in Indian law.

Invalidity
Opposition procedure

• A patent application may be challenged through an opposition procedure (s. 25 Patent Act, 1970 & s.
18 Patents Amendment Act, 2002)

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 as 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:

- 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;
- That the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim 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 in India or
elsewhere, in any other document:
(…)
(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 sub-section (1) if no
patent has been granted in pursuance of the application mentioned in that clause; and for the purpose of
any inquiry under clause (d) or clause (e) of that sub-section, no account shall be taken of any personal
document or secret trial or secret use.

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Revocation (including on counter-claim to an infringement suit) (s. 64 Patent Act, 1970 &
s. 31 Patents Amendment Act, 2002)

• Anyone may ask for the revocation of a patent (including on the counter claim of an infringement suit)
on the following grounds:
- 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;
- that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person
under or through whom he claims;
- that the subject of any claim of the complete specification is not an invention within the meaning of
this Act;
- that the invention, so far as claimed in any claim of the complete specification, is not useful;
- 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 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;
- 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;
- that the patent was obtained on a false suggestion or representation;
- that the subject of any claim of the complete specification is not patentable under this Act;
- 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;
- 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;
- that the applicant contravened any direction for secrecy passed under section 35 or made or caused
to be made an application for the grant of a patent outside India in contravention of section 39;
- that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
- that the complete specification does not disclose or wrongly mentions the source or geographical
origin of the biological material used for the invention;

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 - 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
- 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 […]

Methods of Infringement Proceedings

enforcement
• Parallel Imports are considered as an infringement of patent rights, s. 44 The Patents Amendment Act,
2002. [I]mportation of patented products by any person from a person who is duly authorized by the
patentee to sell or distribute the product [s]hall not be considered as an infringement of patent rights.

Damages
• Infringement suit cannot be instituted in any court inferior to a district court having jurisdiction to
try the suit. s. 104 Patent Act, 1970
• A court may grant the following relief: either damages or an account of profits. The courts may also
direct 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. s. 108 Patent Act, 1970 & s. 45 Patents Amendment Act, 2002
• In order to be awarded damages or an account of profit, the infringement must have been
intentional (s.111 Patent Act, 1970).

Injunction
• A patent holder may obtain an injunction in any infringement proceeding (s. 108 Patent Act, 1970)
Regulatory
Mechanisms Competition law

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• In line with her commitments to WTO, India has now in force The Competition Act, 2002, described as
an improvement upon its predecessor — Monopolies and Restrictive Trade Practices Act — in terms of
defining terms such as cartel, consumer and predatory pricing and turnover, provision for entering
into arrangements with foreign agencies, deletion of unfair trade practices (UTPs), monopolistic trade
practices (MTPs), abuses from dominant position and so on.

Dealing with intellectual property rights and anti-competitive agreement, the Act says in Section 3(5):
Nothing contained in this section shall restrict - (i) the right of any person to restrain any infringement of,
or to impose reasonable conditions, as may be necessary for protecting any of the rights which have been
or may be conferred upon him under - (a) The Copyright Act, (b) the Patents Act (c) the Trade Marks Act
(d) the Geographical Indications Act (e) the Designs Act and (f) IC Lay-out Design Act; and

In essence, it appears that concerning anti-competitive agreement in India, the IP laws have over-riding
powers over those conferred through the Competition Act.

However, the following dispositions of the Act on abuse of dominant position do not include an exception
for intellectual property rights. Theoretically, these dispositions could be invoked against a patentee that
would abuse its position, however there are not yet any legal precedents on this in India.

(ii) the right of any person to export goods from India to the extent to which the agreement relates
exclusively to the production, supply, distribution or control of goods or provision or services for such
effort. On the Abuse of Dominant Position , which also will involve a significant IPR component, the Act
says the following:

(1) No enterprise shall abuse its dominant position.

(2) There shall be an abuse of dominant position, if an enterprise (a) directly or indirectly imposes unfair
or discriminatory conditions in purchase or sale of goods or services or price in purchase or sale of goods
or service (b) limits or restricts production of goods or provision of services or market therefore, or
technical or scientific development relating to goods or services to the prejudice of the consumers or
indulges in practice or practices resulting in denial of market access or uses dominant position in one
relevant market to enter into or protect other relevant market or makes conclusion of contracts subject to

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 acceptance of other parties of supplementary obligations which by their nature or according to
commercial usage have no connection with the subject of such contracts.

(A. D. Damoran, Competition policy & Intellectual Property Rights)

SOURCES:

Laws and Regulations

• Atomic Energy Act
• The Competition Act 2002/PAUSA 1924.
• The Patents Act 1970, 39/1970.
• The Patents (Amendment) Act 2002, 33004/2002.
• The Patents (Amendment) Act 1999, 33004/1998.
• The Patents (Amendment) Act, 2005 No. 15 of 2005
• The Patents Rules 2003/ vide S.O. (301) E.

Caselaw

• Bishwanath Prasad Radhy Shyman v. Hindustan Meta Industries, AIR 1982 SCC 144.

Recommendations, Guidelines and Normative Texts

• AIPPI, Indian Group. Report Q175 The Role of equivalents and the prosecution history in defining the scope of patent
protection (2003), online at: < http://www.aippi.org/reports/q175/q175_india.pdf > .

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 • Office of the Controller General of Patents, Designs and Trade Marks, General Information for Filing Patent Application in
India (Nagpur, 2003), online at: < http://www.patentoffice.nic.in/ipr/patent/patents_filing.pdf >.
• Office of the Controller General of Patents, Designs and Trade Marks, Manual of Patent Office, Manual of Patent Practice and
Procedure (Kolkata, 2001), online at: < http://www.patentoffice.nic.in/ipr/patent/manual.htm >.

Literature

• Aswath Damoradan, “Competition Policy & Intellectual Property rights” (January 2004) Patentmatics, online at: <
http://www.patentmatics.com/pub2004/pub1i.htm >.
• “Patents (Amendment) Act 2002 Notified” (2002) 4 India & the WTO 1.
• M. D. Nair, “Third Amendment To IPA (1970), Balancing TRIPS Obligations & Safeguarding Indian Interests” (July 2004)
Patentmatics, online at: <http://www.patentmatics.com/pub2004/pub3c.htm >
• K. G. Narendranath "Govt to push for early passage of Patents Bill" (10 December 2003) Economic Times, online at:
<http://www.laws4india.com/press-clipping.asp>
• Srividhya Ragavan, “Patent Amendments in India in the Wake of TRIPS” (Winter 2001) CASRIP Newsletter, online at:
<http://www.law.washington.edu/casrip/newsletter/newsv8i1Ragavan.pdf >.

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