MODULE-4 INTRODUCTION INTRODUCTIO N TO INTELLECTUAL PROPERTY (IP)
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IP is inte intern rnat atio iona nall lly y rec recog ogni nize zed d as as cov cover erin ing g: Patents
)
Industrial Designs
)
Copyright
)
Industrial Property
Trade Marks Know-how and Confidential Information -
Scop Scope e of IP deve develo lopi ping ng fast fast.. Ther Theref efor ore e they they seek seek prote protect ctio ion n under under the umbrella of IP rights
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The The sco scope pe of IP rela relate tes s to foll follow owin ing g topi topics cs : 1) Nature Nature of the the Prop Property erty 2) Mode Mode of its Acquis Acquisiti ition on 3) Nature Nature of Righ Rights ts confer conferred red 4) Commercial Commercial Exploit Exploitation ation of those those rights rights 5) Enforce Enforcemen mentt of those those rights rights 6) Remedies Remedies against against infringem infringement ent of those those rights rights
BASIC CONCEPTS OF IP LAW a)
Pate Patent nt Law - Nov Novel elty ty and and Inv Inven enti tive ve Step Step
b)
Desi Design gn Law - Nov Novel elty ty and and Ori Origi gina nali lity ty
c)
Trade Mark Mark Law - Distin Distincti ctiven veness ess and and Simil Similari arity ty of Marks Marks and good goods s
d)
Copyr Copyrig ight ht - Orig Origin inal ality ity and and Repr Reprod oduc ucti tion on
NATURE OF IP -
IP - Inta Intang ngib ible le Inc Incorp orpor orat ate e Prop Proper erty ty / Terri errito tori rial al in in natu nature re
A bundle of rights Eg. Eg.
a) Pate Patent nt -
Excl Exclus usiv ive e righ rightt to use use inven inventi tion on pate patent nted ed To grant Licenses to others To sell that right
b) Industrial -
Exclusive ri right to to ap apply design
Design c) Trade rade Mar Mark k - Excl Exclus usiv ive e righ rightt to use use mark mark in rel relat atio ion n to a product of service Prevents others from using it d) Copyright -
Right of of Re Reproduction
e) Know How How & -Rights exist exist until until it is secret secret Confid Confident ential ial
Action Action agains againstt unlawf unlawful ul use Inform Informati ation on
COMMERCIAL EXPLOITATION OF IP -
Patent - Industrialize
)
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Design - Give Licence to use
) Licence can also be
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Copyright - Reproductions
) granted
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Trade Mark - Use will earn Ro Royalty )
ENFORCEMENT INFRINGEMENT
OF
RIGHTS
AND
REMEDIES
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Enfo Enforc rcem emen entt thr throu ough gh Cour Courtt ari arise ses s on on inf infri ring ngem emen entt
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Paten atentt ) Inj Injunct unctiion - Dam Damages ages - Acco Accoun untt of prof profiits Design )
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Trade rade Mark Mark - Inju Injunc ncti tion on - Dam Damag ages es - Acco Accoun untt of prof profit its s-
AGAINST
Delivery of Articles - Imprisonment - Fine -
Copyright -
Civil à Injunction - Damages - Account of profits Criminal - Imprisonment, Fine - Seizure of copies
IP AND ECONOMIC DEVELOPMENT -
Very substantial Eg. Patent -
New and better products Technological Information
Industrial -
Encourages Creativity
Design -
Eg. Consumer products - Toys, Garments, Furniture
Trade Mark -Ensures Quality and identity of product Copyright - Printing, Publishing, Entertainment
INTERNATIONAL CHARACTER OF IP -
Globalization of Trade and Commerce has had its impact on IP
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IP travels effortlessly from Country to Country
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Piracy has acquired International character
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International conventions
SALIENT FEATURES OF THE PATENTS ACT, 1970 -
An Act to amend and consolidate the Law relating to Patents
1.
The Indian Patents and Designs Act, 1911
2.
Patents Enquiry Committee - Report in 1950 - Patents Bill, 1953 Lapsed with dissolution of 1st Lok Sabha - based on United Kingdom Patents Act, 1949
3.
The Patents Bill, 1965 - Sri. Justice N. Rajagopala Ayyangar Report, 1959 - Joint Committee of Parliament - Lapsed on dissolution of 3rd Lok Sabha
4.
The Patents Act, 1970 - from 20.04.1972
5.
1999 Amendment - To keep it in tune with trade related aspects of Intellectual Property rights (Trips) entered into by WTO and to provide for Public Interest, National Security, Bio-diversity, Traditional Knowledge, Procedure for grant of Patents
EXTANT - Extends to the whole of India
ENFORCEABILITY - 20.04.1972
DEFINITIONS 1.
Sec. 2(ab) - ‘ASSIGNEE’ includes as 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
2.
Sec. 2(ac) - ‘CAPABLE OF INDUSTRIAL APPLICATION’ in relation to an invention means that the invention is capable of being made or used in an Industry
3.
Sec. 2(c) - ‘CONVENTION APPLICATION’ means an application for Patent made by virtue of Sec. 135
4.
Sec. 2(d) - ‘CONVENTION COUNTRY’ means a country or a country which is member of a group of countries or an union of countries or an inter-governmental organisation notified as such under Sec. 133(1)
5.
Sec. 2(f) - ‘EXCLUSIVE LICENCE’ means a licence from a Patentee which confers on the Licensee, or on the Licensee and persons authorised by him, to the exclusion of all other persons (including the Patentee) any right in respect of the patented invention and ‘Exclusive Licensee’ shall be construed accordingly.
6.
Sec. 2(g) - ‘FOOD’ means any Article of Nourishment for human consumption and also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink
7.
Sec. 2(ia) - ‘INTERNATIONAL APPLICATION’ means an application for Patent made in accordance with the Patent Co-operation Treaty
8.
Sec. 2( j) - ‘INVENTION’ means a new product or process involving an inventive step and capable of industrial application
9.
Sec. 2( ja) - ‘INVENTIVE STEP’ means a feature that makes the invention so obvious to a person skilled in the Art
10. Sec. 2(l) - ‘MEDICINE OR DRUG’ includes i)
All medicines for internal or external use of human beings and animals
ii)
All substances intended to be used for or in the diagnosis, treatment, mitigation of diseases in human beings and animals
iii) All substances intended to be used for or in the maintenance of public health, or the prevention or control of any epidemic disease among human beings or animals iv) Insecticides, Germicides, Fungicides, Weedecides and all other substances intended to be used for the protection or preservation 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
11. Sec. 2(m) - ‘PATENT’ means patent granted under the Act
12. Sec. 2(n) - ‘PATENT AGENT’ means a person for the time being registered under the Act as Patent Agency
13. Sec. 2(o) - ‘PATENTED ARTICLE’ AND ‘PATENTED PROCESS’ means respectively an Article or Process in respect of which a Patent is in force
14. Sec. 2(oo) - ‘PATENT CO-OPERATION TREATY’ means the Patent Co-operation Treaty done at Washington on 19th June 1970 as amended and modified from time to time
15. Sec. 2(p) - ‘PATENTEE’ means a person for the time being entered on the register as the Grantee or Proprietor of the Patent
16. Sec. 2(q) - ‘PATENT OF ADDITION’ means a Patent granted in accordance with Sec. 54
17. Sec. 2(t) - ‘PERSON INTERESTED’ includes a person engaged in, or in promoting research in the same field as that to which the invention relates
18. Sec. 2(y) - ‘TRUE AND FIRST INVENTOR’ does not include either the First Importer of any invention into India, or to whom an invention is first communicated from outside India
INVENTIONS NOT PATENTABLE Sec. 3 - WHAT ARE NOT INVENTIONS 1.
Frivolous and contrary to laws of nature
2.
Commercial exploitation of which is contrary to public order or morality and causes prejudice
3.
Discovery of : Scientific principle / Formulation Living thing Non-living substance occurring in nature New property or new use of a known substance New use of known process, machine or appratus unless resulting in new product
4.
A substances obtained by admixture
5.
Mere arrangement or re-arrangement or duplication of known devices
6.
Method of agriculture and horticulture
7.
Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic treatment of human beings and animals to render them free of disease or which increases its economic value
8.
Plants and animals and its biological process for production or propagation
9.
Mathematical or business method or computer program
10. Literary, dramatic, musical or artistic work or aesthetic creation including cinematographic works and television productions 11. Scheme or role or method of performing mental act or method of playing game 12. Presentation of Information 13. Topography of integrated circuits 14. An invention involving traditional knowledge
Sec. 4 -
INVENTIONS relating to ATOMIC ENERGY PATENTABLE as per Atomic Energy Act, 1962
NOT
Sec. 5 -
INVENTIONS where only METHODS OR PROCESSES OF MANUFACTURE PATENTABLE
1.
Substances used in drugs or medicines
2.
Substances produced by Chemical processes. Eg. Alloys, Optical glass, Semi-Conductors and Inter-metallic compounds - But methods and processes of manufacture patentable
APPLICATION FOR PATENTS -
Every true and first inventor, his assignee (proof) and in case of death his legal representative (declaration) can file the application for grant of Patent (Sec. 6)
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To file application in prescribed form and to be accompanied by Provisional or Complete Specification - applies also to International Application under Patent Co-operation Treaty (Sec. 7)
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In case of Foreign Application along with application in India applicant to furnish all particulars and information regarding progress of Foreign Application to Indian Office (Sec. 8)
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Complete specification to be filed within 12 or 15 months of filing of Provisional Application (Sec. 9)
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CONTENTS OF SPECIFICATIONS : i)
Title
ii)
Description of Invention
iii) Drawings iv) Model or Sample for illustration v)
Method of Operation
vi) Use / Performance vii) Claims
viii) Abstract providing technical information ix) Deposit of material in case of biological material x)
Declaration regarding furnishing of invention within prescribed period
xi) Developments and subsequent additions (Sec. 10) -
Priority Date of Complete Specifications : i)
Date of its filing
ii)
Two Specifications - Latter date
iii) Relates to two inventions - date is of first disclosure iv) In case of two Priority Dates - earlier date v)
In case of Ante-Dating and Post-Dating the Ante-dated and Post-dated Dates (Sec. 11)
PUBLICATION AND EXAMINATION OF APPLICATIONS -
Applications for Patents to be published 18 months after Priority Date in Official Gazette and in case of secrecy direction after cessation of direction - Publication to contain date, number, name and address of Applicant and from date of publication to be open to public (Sec. 11-A)
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Request for Examination of Application to be within 48 months of application otherwise considered as withdrawn (Sec. 11-B)
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Application to be referred by Controller to Examiner and Examiner to submit Report within 18 months on following grounds : i)
in accordance with Act
ii)
lawful objection to Grant
iii) result of Search iv) any other matter (Sec. 12) -
Examiner to conduct Search by Anticipation by Previous Publication and by prior claim in India and outside (Sec. 13)
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On receipt of Report by Examiner Controller in case of Adversity and Amendment give Notice to Applicant and reasonable opportunity of being heard (Sec. 14)
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Powers of Controller in case of Applications : (Secs. 15 - 20) i)
To refuse or require amended Applications in case of non compliance with requirements of Act
ii)
To make orders respecting division of application if it relates to more than one invention and require fresh application and specification to be filed and to be dated from date of original application
iii) To postdate Application for a period not beyond 6 months iv) In cases of Anticipation
v)
a)
Refuse complete Satisfaction
b)
Insert reference regarding other Specifications
c)
Prove that this Application has earlier priority date
In case of potential infringement insert a reference regarding that Application
vi) To make Order regarding substitution of Applicant if subsequent one better entitled -
Applicant to comply with all additional requirements within 12 months of date of objections or extended time granted by Controller (Sec. 21)
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Complete Specification to be accepted after compliance with requirements (Sec. 22)
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After acceptance of Complete Specification, Notice to Applicant and Publication in Official Gazette and open to Public Inspection
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From date of acceptance of Complete Specification upto date of Sealing of Patent, Applicant to have all rights as Patentee except Right to sue for Infringement (Sec. 24)
EXCLUSIVE MARKETING RIGHTS
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Controller to refer for examination to Examiner Application for Patent of substances used in the course of manufacture of medicines including exclusive marketing rights in India (Sec. 24-A & B)
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And grant the same if it is invention that is Patentable
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Provisions relating to licences applicable (Sec. 24-C)
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In Public Interest Central Government can grant power to someone else to sell and distribute the same and give authority to fix price (Sec. 24-D)
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Infringement provisions to apply (Sec. 24-E)
OPPOSITION TO GRANT PATENT -
Controller to accept opposition to grant of Patent within 4 - 5 months of date of advertisement and acceptance of Complete Specification on following grounds : a)
Applicant has wrongfully obtained invention
b)
Invention has been published before Priority Date
c)
Invention part of another Complete Specification
d)
Invention publicly used in India before Priority Date
e)
Invention does not involve inventive step
f)
Not an invention or patentable under the Provisions of Act
g)
Complete Specification does not sufficiently and clearly describe invention
h)
Information not properly disclosed
i)
In case of convention not within prescribed time (12 months)
j) k)
Complete Specification does not disclose or wrongly mentions Geographical Origin or Biological Material used Invention has been anticipated
And notify Applicant and give opportunity to be heard (Sec. 25) -
In case of wrongful ‘obtaining’ of invention, name of opponent to be substituted and in case of part of invention, that part is to be
removed and made subject to another Application which will have a Priority Date as of earlier Application (Sec. 26) -
Controller may refuse grant of Patent if it comes to his knowledge that invention has been Anticipated before Priority Date unless Application suitable amended (Sec. 27)
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Any person having no grounds for opposition but the inventor is to submit Application within prescribed period of two months of advertisement of Complete Specification in prescribed manner for inclusion of name and Controller to carry out same after notice to Applicant and giving him opportunity of being hard (Sec. 28)
ANTICIPATION -
No Anticipation in following cases :
a)
Featured in Complete Specification and prior to Priority Date but has been obtained or derived from this Application (Sec. 29)
b)
Has been communicated to Government under its Authorisastion (Sec. 30)
c)
Has been publicly displayed in an exhibition or described in newspaper publication with consent of Applicant (Sec. 31)
d)
Publicly worked for reasonable trial by Applicant or with consent of Applicant (Sec. 32)
e)
Used and published after filing of Provisional Specification (Sec. 33)
-
The above grounds cannot be used by Controller to refuse, revoke or invalidate Patent (Sec. 34)
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS -
When Controller is of opinion that an Application if of a class notified by Central Government as relevant for defence purposes, Controller to give direction for its non-publication and inform Central Government, Central Government to revoke direction or direct if directions not given (Sec. 35)
-
The above direction to be periodically reviewed at 12 months intervals or on application of Applicant and Applicant to be informed of same (Sec. 36)
-
Consequences of Secrecy Directions : i)
Controller not to pass Orders
ii)
No Appeal to lie from direction of Controller
iii) Secs. 100 - 103 to apply iv) If hardship is caused to Applicant, Solatium to be paid by Central Government v)
If Patent is granted subsequently, no renewal fee during pendency of directions
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When revocation of Secrecy Directions has taken place Applicant to be given extension of time for doing what he has to carry out (Sec. 38)
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No Application can be preferred outside India for grant of Patent relating to defence purposes or atomic energy without written permission of Controller and prior consent of Central Government (Sec. 39)
-
Violation of Sec. 35 & 39 results in abandonment and revocation of Patent (Sec. 40)
-
Orders of Controller and Central Government - Final and cannot be questioned in Court (Sec. 41)
-
All disclosures by Controller to Central Government valid (Sec. 42)
GRANT AND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY -
On application by Applicant within prescribed time or such extended time after Advertisement and Acceptance of Complete Specification, Controller to seal the Patent and register the same if : a)
No opposition or time of filing Opposition has expired
b)
Opposition decided in favour of Applicant
c)
Application not refused by Controller
d)
Application not in contravention of Provisions of Act
-
In case of death of Applicant or non-existence of body corporate which has filed the Application before Sealing Controller to include name of person to whom Patent to be granted (Sec. 44)
-
Date of Patent entered in Register shall be Date of Application (Sec. 45)
-
Patent to be in prescribed form, to have effect throughout India and to be granted for one invention only (Sec. 46)
-
Grant of Patent subject to following conditions :
-
a)
Article or Process may be imported by Government for its use
b)
May be used by Government for its use
c)
May be used in experiment or research and imparting instruction to pupils
d)
If it is Patent of Medicine or Drugs may be imported by Government for its use (Sec. 47)
Rights of Patentees relating to : a)
Goods i) Make ii) Market / Import
b)
Process i) Use ii) Market / Import (Sec. 48)
-
Patent rights not infringed when used on foreign vessels, etc. temporarily or accidentally in India when required for its operation (Sec. 49)
-
Rights of Co-owners of Patents : i)
Each person entitled to equal undivided share of Patent
ii)
Each person entitled to rights without accounting to the other unless contract to contrary
iii) Licence to be granted by one of them with consent of other iv) Purchaser to treat sale as though by sole Patentee
v)
Rules of Law applicable to ownership and Devolution of moveable property applicable (Sec. 50)
-
One of the Co-owners to apply to Controller to give directions to other and Controller to do so after giving opportunity of being heard and if direction does not effect mutual rights (Sec. 51)
-
When grant of Patent has been given to true and first inventor where it has been obtained by another in fraud of him Controller to give Patent bearing same Date and Number as of Patent revoked (Sec. 52)
-
Term of Patent to be 20 years from Date of Application and can be renewed, if not renewed stands revoked and no protection against infringement during Interim period (Sec. 54)
PATENTS OF ADDITION -
Patent of Addition can be granted to any improvement in or modification of a Patent wherein a Complete Specification has been filed and the Complete Specification should have been filed on or later than Date of Specification in main invention (Sec. 54)
-
Patent of Addition shall exist for same period as Main Patent and if Main Patent is revoked before expiry of period, Patent of Addition to continue as Independent Patent (Sec. 55)
-
Patent of Addition cannot be revoked or invalidated on the ground that it does not involve : i)
Inventive step
ii)
Ought to be subject of Independent Patent
AMENDMENT OF APPLICATIONS AND SPECIFICATIONS -
Applicant of Patent or Patentee may file Application for Amendment of Application or Specification by giving full particulars to Controller and Controller to grant same and if it is substantive in nature, to be published, opposition accepted and hearing of Parties and then to decide and amendment may relate to Priority Date (Sec. 57)
-
When proceedings for revocation is pending before High Court, Application for Amendment can be filed before High Court after Notice to Controller and High Court to give directions and Direction of Amendment to be recorded by Controller (Sec. 58)
-
Amendment to be allowed only for following purposes : i)
A disclaimer
ii)
Correction or Explanation
iii) Incorporation of Actual fact iv) Within Scope of Specification And Amendment cannot be questioned except on ground of fraud (Sec. 59)
RESTORATION OF LAPSED PATENTS -
Application for Restoration of Lapsed Patent by Aggrieved Party can be filed giving the reasons for non payment of renewal fee within 18 months (Sec. 60)
-
Controller to advertise Application if he is satisfied that : a)
Failure to pay renewal fee was unintentional
b)
No undue delay in filing Application
Accept opposition on above ground and renew Patent After hearing Parties and collecting Renewal and Additional fee and enter the same in Register (Sec. 61) and Controller may impose conditions -
For the inbetween period i.e. Lapse and Restoration : a)
Compensation to aggrieved persons
b)
No Suits of Infringement (Sec. 62)
SURRENDER AND REVOCATION OF PATENTS
-
Patentee to notify in prescribed manner of surrender of Patent to Controller, Controller to advertise and notify Interested Person, consider opposition, hear Parties and revoke Patent (Sec. 63)
-
On Petition by Interested Person, Central Government or Counterclaim in Suit for Infringement High Court to revoke Patent on following grounds : i)
is subject to valid claim of earlier Priority Date
ii)
Applicant lacks capacity
iii) Patent wrongfully obtained iv) Not an invention v)
Not new
vi) Does not involve inventive step vii) Not useful viii) Complete Specification does not sufficiently and fairly describe invention ix) Scope not sufficiently and clearly defined x)
Patent obtained on false suggestion and representation
xi) Secretly used in India xii) Inadequate information and false information given xiii) Amendment obtained by Fraud xiv) Non-disclosure or wrongful disclosure of Geographical origin of Biological material used xv) Has been anticipated xvi) Non-Compliance with Central Government directions Notice to be given to all interested persons (Sec. 64) -
Central Government may direct Controller to refuse Application or revoke Patent relating to Atomic Energy and Controller to do same after Notice to Party (Sec. 65)
-
Central Government is of opinion Patent is mischievous to State or against Public Interest, give Notice, hear and Notify its Revocation (Sec. 66)
*****
REGISTER OF PATENTS (CHAP. XIII)
PATENT OFFICE AND ITS ESTABLISHMENT (CHAP. XIV)
POWERS OF CONTROLLER GENERALLY (CHAP. XV)
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION -
‘Patented Article’ includes Article made by Patented process ‘Patentee’ includes exclusive Licensee (Sec. 82)
-
Principles underlying Grant of Patent : a)
Encourage inventions, their Commercial Application without undue delay
b)
Not for Patentees to enjoy monopoly of Article
c)
Promotion of Technological Innovation
d)
Promote Public Interest
e)
Do not prohibit Central Government from taking measures to protect Public Health
f)
Patent Right not to be abused
g)
Benefit of Patented Invention to be available at reasonable prices
-
On expiry of 3 years from date of sealing, Party interested to apply to Controller for Grant of Compulsory Licence on the following grounds : a)
Reasonable requirements of Public not satisfied
b)
Patented Article not available to Public at affordable prices
c)
Patent not worked within Territory of India
And stating that person’s interest and to be granted by Controller if conditions fulfilled and taking into account following factors : a)
Nature of Invention
b)
Ability of Applicant to work invention to Public advantage
c)
Capacity of Applicant to take risk
d)
Whether Applicant has made reasonable attempts to obtain Licence
And reasonable requirements of Public shall be deemed not to have been satisfied : i)
ii)
a)
Existing Trade and Industry prejudiced
b)
Demand for Patented Article not met on reasonable terms
c)
Market for Export of Patented Article not developed
d)
Commercial Activities in India prejudiced
Manufacture of Patented Articles not protected
iii) Results in Coercive Package Licensing - Exclusive Grant back
iv) Not worked in Territory of India v) -
Working of Patented Article prevented (Sec. 84)
Central Government or Person interested may prefer Application on expiry of two years of Grant of Compulsory Licences for Revocation of Patent on following grounds : a)
Patented Invention not worked in Territory of India
b)
Reasonable requirements of Public not met
c)
Invention not available to Public at reasonably affordable prices
Also to be included prescribed particulars and Applicant’s interest and if Controller satisfied may revoke Patent and decision to be within one year of publication (Sec. 85) -
Controller has power to adjourn Application by one year under Sec. 84 & 85 if it feels time was not sufficient for implementation of working of Patent
-
Procedure applicable to Application under Sec. 84 & 85 : i)
Notification to Patentee and Interested Persons
ii)
Advertisement in Official Gazette
iii) Opposition -
à
Notice to relevant persons
Controller has power to give following directions if Application has been preferred under Section 84 due to unfavourable conditions put by Patentee while granting Licence : i)
Direct Grant of suitable Licences
ii)
Cancel or Amend Licence
iii) Grant Licence in other related Patents iv) Subsequently revise terms and conditions of Licence This Application cannot be entertained second time (Sec. 88) -
-
Grant of Compulsory Licence under Sec. 84 can be on following general grounds : i)
Patented Article to be commercially exploited on large scale in India
ii)
Other person working invention shall not be prejudicially effected
Terms and Conditions to be imposed by Controller while granting Licence under Sec. 84 except Import and this also with permission of Central Government : i)
Reasonable Royalty and Remuneration
ii)
Can be worked to fullest extant with reasonable profit
iii) Article made available to Public at reasonable price iv) Licence is not Non-Exclusive Licence v)
Right of Licence not assignable
vi) Licence is for balance period of Patent vii) If beneficial, Licence can be for Export -
Licencing of related Patents on reasonable terms and will contribute to Commercial activity in India on same conditions but not assignable
-
Controller to grant Compulsory Licence on satisfaction of Central Government in following exigencies : i)
National Emergency
ii)
Extreme Urgency
iii) Public Non-Commercial use iv) Public Health Crisis (Sec. 92) -
Order for Licence to operate as a Deed between Patentee and Licencee (Sec. 93)
-
On Application of Patentee and Interested Person Controller to cancel Compulsory Licence when conditions of its no longer exist and Licencee to be heard (Sec. 94)
USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT -
When Invention is used, exercised or vended for purposes of Central Government, State Government, or Government Undertaking it is used for purposes of Government (Sec. 99)
-
After filing of Application Central Government or Authorised Person to use Invention for Government purpose but not for Commercial purpose and Patentee to be paid adequate remuneration and Central Government to notify use of Patent to Patentee (Sec . 100)
-
Effect on Third Parties in respect of use of Invention for purposes of Government :
i)
Cannot regulate use by Government
ii)
Government to make necessary payments
iii) All Licences, Assignments and Agreements not to have effect (Sec. 101) -
Central Government may acquire Patents in Public Interest by Notification to that effect in Official Gazette and Patent to vest in Government and Government to make necessary payments (Sec. 102)
-
In case of disputes relating to Patent use by Central Government same may be referred to High Court (Sec. 103)
SUITS CONCERNING INFRINGEMENT OF PATENTS -
District Court to have jurisdiction concerning Suits for Infringement of Patents and in case of parallel Suit for revocation to be transferred to High Court (Sec. 104)
-
Burden of Proof : Plaintiff - Product identical to Patented product Defendant - Process and Product different (Sec. 105)
-
Court has power to declare a Product as Non-Infringing (Sec. 106)
-
In case of threats of Suits of Infringement Court may direct : a)
By Declaration of Threats as unjustifiable
b)
Grant Injunction against Threats
c)
Damages (Sec. 106)
-
All defenses available under Revocation available for in defense of Infringement (Sec. 107)
-
Following Acts not Infringement :
-
i)
Use as per Law
ii)
Import by Authorised Person (Sec. 107)
Relief in Suits for Injunction : i)
Injunction
ii)
Damages / an Account of Profits
iii) Goods may be seized, forfeited or destroyed (Sec. 108) -
Licencee has same Rights for Infringement of his Rights and in case of Infringement of Patent Suit by Licencee, Patentee is Plaintiff otherwise Defendant (Sec. 110)
-
In case of Infringement of Patent, Licencee (under Sec. 84) may request Patentee to file Suit of Infringement and if Patentee fails within two months, Licencee to file same and Patentee to be included as Defendant (Sec. 110)
-
Court not to grant damages under following circumstances : i)
Infringer was not aware of existence of Patent
ii)
Plaintiff has failed to pay Renewal Fee
iii) Amendment of Specification by way of Disclaimer not allowed And above not to effect Grant of Injunction (Sec. 111) -
High Court may grant Certificate of Validity of Suit for Infringement but the same not to effect Appeals (Sec. 113)
-
Court to grant Relief in case of Valid Claims (Sec. 114)
-
Court to take advise of Scientific Advisor on Application or Sou Motu (Sec. 115)
*****
APPEALS TO APPELLATE BOARD (CHAP. XIX)
PENALTIES (CHAP. XX)
*****
PATENT AGENTS -
Controller to maintain Register of Patent Agents and the same to contain name, addresses and other relevant particulars of persons qualified and the same can be retained in Electronic System (Sec. 125)
-
Qualifications for registration as Patent Agent : i)
Citizen of India
ii)
21 years
iii) Degree in Science, Engineering or Technology iv) An Advocate v)
Passed Qualifying Exam
vi) Functioned as Examiner for 10 years vii) Paid prescribed fee Already registered as Patent Agent prior to 2002 (Sec. 126) -
Rights of Patent Agent : i)
Practice before Controller
ii)
Prepare proceedings before Controller (Sec. 127)
-
All Applications and Communications (Verification) to Controller to be signed by Patent Agent and Concerned Person (Sec. 128)
-
One can practise as Patent Agent only if registered as such and means : i)
Applying for or obtaining Patents in India or elsewhere
ii)
Preparation of Documents and Specifications
iii) Advice (Sec. 129) -
Removal of name from Patent Register when i)
Name has been entered in error or on misrepresentation
ii)
Sentenced to imprisonment for Professional Misconduct
-
Restore name if sufficient cause shown (Sec. 130)
-
Controller has power to refuse to deal with certain Agents : i)
Name removed from Register
ii)
Convicted for Professional Misconduct
iii) Acting / Employed as Patent Agent of another iv) Controller does not recognize as Patent Agent - No residence or place of business in India (Sec. 131) -
No prohibition for i)
Applicant for Patent to draft Specification or appear before Controller
ii)
An Advocate (Sec. 132)
INTERNATIONAL ARRANGEMENTS -
Notification as Convention Country when another Country is given same Rights as Indians based on Treaty, Convention or Arrangement (Sec. 133)
-
Notification as to Countries not providing for Reciprocity then that National cannot : i)
Apply for Grant of Patent
ii)
Registered as Proprietor of Patent
iii) Apply and hold Licence (Sec. 134) -
Convention Application - Made in more than One Country (Sec. 135)
-
Special Provisions relating to Convention Application are : i)
Accompanied by Complete Specification
ii)
Specify Date and Countries where Application is submitted
iii) No Application prior to Date of receiving Authority
-
-
Patents of Additions Application
-
Convention Application cannot be Post-Dated (Sec. 136)
One Application sufficient in case Convention Application is made in more than One Country in respect of same Invention and Priority
Date is Date of First Application (Sec. 137) and disclosure to have taken place in First Application -
Supplementary Provisions as to Convention Application i)
To give information of all Applications
ii)
Translation if in Foreign language
iii) Date of Application as given by Head in that Country iv) Complete Specification in International Application can be used for purposes of this Act v)
Date of Filing to be Date of Filing under Patent Co-operation Treaty
vi) Amendment to be considered as made before Patent Office -
All other Provisions to apply to Convention Application (Sec. 139)
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MISCELLANEOUS (CHAP. XXIII)
