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REGISTERED NO. D. 221

The Gazette of India

EXTRAORDINARY

PART II—Section 2

PUBLISHED BY AUTHORITY

No. 42] NEW DELHI, TUESDAY, SEPTEMBER 21, 1965/BHADRA 30, 1887

Separate paging is given to this Part in order that it may be filed as a separate compilation

LOK SABHA

The following Bill was introduced in Lok Sabha on the 21st September, 1965: —

BILL NO. 62 OF 1965

A Bill to amend and consolidate the law relating to patents.

BE it enacted by Parliament in the Sixteenth Year of the Republic of India as follows: —

CHAPTER I

PRELIMINARY

1. (1) This Act may be called the Patents Act, 1965.

5

(2) It extends to the whole of India.

(3) It shall come into force on such date as the Central Govern-

ment may, by notification in the Official Gazette, appoint.

(871)

Short title, extent and com- mence- ment.

498 Gof I Ex—1

2. (1) In this Act, unless the context otherwise requires,—

Defini- tion* and interpre- tation.

5 (a) "assignee" includes the legal representative of a deceased assignee,, end references to the assignee of any person includ* references to the assignee of the legal representative or assignee of that person;

(b) "Controller" means the Controller General of Patents, Designs and Trade Marks referred to in section 73;

(c) "convention application" means an application for a patent made by virtue of section 135;

10 (d) "convention country" means a country notified as such under sub-section (1) of section 133;

(e) "district court" has the meaning assigned to that ex- pression by the Code of Civil Procedure, 1908;

5 of 1908,

ij (j) "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 (includ- ing the patentee), any right in respect of the patented invention, and "exclusive licensee" shall be construed accordingly;

3O (gf) "food" means any substance intended for the use of, or capable of being used by, babies, invalids or convalescents as an article of food or drink, which the Central Government may, by notification in the Official Gazette specify in this behalf;

(h) "Government undertaking" means any industrial undertaking carried on—

(i) by a department of the Government, or *3 (il) by a corporation established by a Central, Provin- cial or State Act, which is owned or controlled by the Gov- ernment, or

(Hi) by a Government company as denned in section 617 1 of 1958.

of the Companies Act, 1956,

30

and includes the Council of Scientific and Industrial Research, any University established by law in India and any other institution for scientific or technical education which is financed wholly or for the major part by the Government;

(1) "High Court" means—.

35 (i) in relation to the Union territory of Delhi and the Union territory of Himachal Pradesh, the High Court o" Punjab;

(ii) in relation to the Union territory of Manipur and the Union territory of Tripura, the High Court of Assam;

(Hi) in relation to the Union territory of the Andaman and Nicobar Islands, the High Court at Calcutta;

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(iv) in relation to the Union territory of the Laccadive, Minicoy and Amindivi Islands, the High Court of Kerala;

(v) in relation to the Union territory of Goa, Daman and Diu and the Union territory of Dadra and Nagar Haveli, the High Court of Bombay;

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(vi) In relation to the Union territory of Pondicherry, the High Court of Madras; and

(vii) in relation to any other State, the High Court for that State;

(j) "invention" means any new and useful—

(i) art, process, method or manner of manufacture;

lS

(ii) machine, apparatus or other article; or

(in) substance produced by manufacture,

and includes any new and useful improvement of any of them and an alleged invention;

20

(k) "legal representative" means a person who in law repre- sents the estate of a deceased person;

(?) "medicine or drug" includes—

(i) all medicines for internal or external use of human beings or animals,

25

(ii) all substances intended to be used for or in the diagnosis, treatment, mitigation or prevention of diseases in human beings or animals,

(Hi) all substances intended to be used for or in the maintenance of public health, or the prevention or control of any epidemic di sense among human beings or animals, 30

(iv) all chemical substances, to the extent to which they are used as intermediates in the preparation or manufacture of any of the medicines or substances above referred to,

35

but does not include insecticide, germicide, fungicide or any other substance intended to be used for the protection or preser- vation of plants;

(TO) "patent" means a patent granted under this Act;

(n) "patented article" and "patented process" mean respec- tively an article or process in respect of which a patent is In force;

5 (o) "patentee" means the person for the time being entered on the register as the grantee or proprietor of the patent;

(p) "patent agent" means a person for the time being regis- tered under this Act as a patent agent;

(q) "patent of addition" means a patent granted In accord-

10 ance with section 54;

(r) "patent office" means the patent office established under section 74;

(") "person" includes the Government;

15 (t) "person interested" includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;

(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;

(v) "prescribed manner" includes the payment of the pres- 20 cribed fee;

(w) "priority date" has the meaning assigned to It by section ii;

(x) "register" means the register of patents referred to in

25 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— 30

(a) to the Controller shall be construed as including a reference to any officer discharging the functions of the Con- troller in pursuance of sub-section (2) of section 73;

(b) to the patent office shall be construed as including a prftrence to any branch office of the patent office,

35

CHAPTER II

INVENTIONS NOT PATENTABLE

3. The following are not inventions within the meaning of this Act—

What are noi inven- tions.

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(a) an invention which is frivolous or which claims eny- thing obviously contrary to well established natural laws;

(b) an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;

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(c) the mere discovery of a scientific principle or the for- muletion of an abstract theory;

(d) the mere discovery of any new property or new use (or a known substance or of the mere new use of a known process, machine or apparatus;

15

(e) a claim to a substance obtained by a mere admixture resulting only in the aggregation of the properties of the compo- nents thereof or a process for producing such substance;

20

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

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(g) a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equip- ment or for the improvement or control of manufacture;

(h) a method of agriculture or horticulture;

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(1) any process for the medicinal, surgical, curative, prophy- lactic or other treatment of man or any process for e similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.

4. 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.

Inventions relating to atomic energy not patent- ee.

5. In the case of inventions—•

(a) claiming substances intended for use, or capable of be-

ing used, as food or as medicine or drug, or

5 (b) relating to substances prepared or produced by chemi- cal processes (including alloys, optical glass, semi-conductors and inter-metallic compounds),

Inven- tions where sub- stances are not patent- able but methods or processes may be.

no patent shall be granted in respect of claims for the substance* themselves, but claims for the methods or processes of manufacture shall be patentable,

10

CHAPTER III

APPLICATIONS FOR PATENTS

6. (1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—

15 Persons entitled to apply for patents.

(a) by any person claiming to be the true and first in-

ventor of the invention;

(b) by any person being the assignee of the person claim- ing to bo the true and first Inventor in respect of the right to make such an application;

30 (c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

25 (2) An application under sub-section (I) may be made by any of the persons referred to therein either alone or jointly with *ny other person.

Form of applica- tion.

7. (I) 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.

3o (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—

35 (a) an affidavit by the person claiming to be the true and first inventor or his legal representative stating that he assents to the making of the application; and

(b) an affidavit signed by the applicant setting out the

facts relied on to support the application. (3) Every application under this section shall state that the applicant is In possession of the invention and shall name the owner

claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the applica- tion shall contain a declaration that the applicant believes the person so named to be the true and first inventor.

(4) Every such, application shall be accompanied by a provision- 5

al or a complete specification.

10

8. (1) Where an applicant for a patent under this Act is pro- secuting either alone or jointly with any other person an appli- cation for a patent in any country outside India in respect of the same or substantially the same invention, or where to his know- ledge 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—

Informa- tion and under- taking regard- ing foreign applica- tion!.

15

(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

20

25

(fa) an undertaking that, up to the date of the acceptance of his complete specification filed in India, he would keep the Controller informed in writing, from time to time, of details of the nature referred to in clause (a) in respect of every other application relating to the same or substantially the same in- vention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within eight weeks from the date of the matter coming to his knowledge.

30

(2) The Controller may also require the applicant to furnish, as far as may be available to the applicant, details relating to the objections, if any, taken to any such application as is referred to In sub-section (2) on the ground that the invention is lacking in novelty or patentability, the amendments effected in the specifica- tions, the claims allowed in respect thereof and such other parti- culars as he may require.

35

9. (1) Where an application for a patent (not being a convention application) is accompanied by a provisional specification, fl 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:

Provi- sional and complete specifi- cation!.

4°

Provided that the complete specification may be filed at any time after twelve months but within fifteen months from the date aforesaid, if e request to that effect is made to the Controller and the prescribed fee is paid on or before the date on which the com- plete specification is filed.

5 (5) 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 specifica- tions.

10 (3) Where an application for a patent (not being a Convention application) is accompanied by a specification purporting to be a com- plete specification, the Controller may, if the applicant so requests at any time before the acceptance of the application, direct that such specification shall be treated for the purposes of this Act as a provi- sional specification and proceed with the application accordingly.

'5

20 (4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specifi- cation or by a specification treated by virtue of a direction under Bub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before the acceptance of the application, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

Contents of speci- flcationa.

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

²5

30 {d) bubject to any rules that may be made in tins 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 Control- ler otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.

35 (3) If in any particular case the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the acceptance of the application, 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; 40

(b) diacloae the best method of performing the Invention

which Is known to the applicant and for which he Is entitled

ta claim prvftMttan; and

(c) end with a claim or claims defining the scope of the invention for which protection is claimed.

(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.

5

(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.

10

15

(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.

11. (1) There shall be a priority dale for eacn claim of a complete specification.

(2) ^ach claim of a complete specification shall indicate the date which the applicant considers to be the priority date of that claim.

20

Priority dates of claims of a complete specifi- cation.

(3) Where a complete specification is filed in pursuance of a

single application accompanied b y-

fa) a provisional specification; or

25

(b) a specification which is treated by virtue of a direc- tion under sub-section (3) of section 9 as a provisional specifica- tion;

and the claim is fairly based on the matter disclosed in the specifica- tion referred to in clause (a) or clause (b), the priority date of that claim shall be the date of the filincf of ths rr-lfivnnt snpHflmt.ion 30

(4) 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 (3) and the claim is fairly based on the matter disclosed—

35

(a) in one of those specifications, the priority date of that claim shall be the date of 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 ac- companied by the specification of the later date.

498 G of I Ex—2.

5 (5) 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.

(6) 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. ¹⁰

(7) In any case to which sub-sections (3), (4), (5) and (6) 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.

*5 (8) 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 post-dating under sub-section (2) or sub-section (3) of section 16, be a reference to the date as so post-dated.

(9) A claim in a complete specification of a patent shall not be invalid by reason only of—

20 (o) the publication or use of the invention so far as claim- ed 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.

CHAPTER IV

35

EXAMINATION OF APPLICATIONS

Exami- nation of appli- cations.

30 12. When the complete specification has been filed 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: —

(a) whether the application and the specification relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;

35 (b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the appli- cation;

(c) the result of investigations made under section 13;

(d) whether the priority date of each claim as indicated by the applicant is the priority date of that claim as determined by this Act; and

(e) any other matter which may be prescribed.

5

13. (I) The examiner to whom an application for a patent is re- ferred 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—

10

Search for anti- cipation by pre- vious publica- tion and by prior claim.

(a) has been anticipated by publication before the date of filing of the applicant's complete specification in any specifica- tion filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912;

15

(b) is claimed in any claim or any other complete specifi- cation published on or after the dale 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.

10

(2) The examiner shall, in addition, make such investigation as the Controller may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specifi- cation, 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.

^5

(3) Where a complete specification is amended under the provi- sions of this Act before it has been accepted, the amended specifica- tion shall be examined and investigated in like manner as the origi- nal specification.

30

(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 con- noction with, any such examination or investigation or any report or other proceedings consequent thereon.

35

14. Where, in respect of an application for a patent, the report ol 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

Conside- ration of report of examiner by con- troller,

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.

5 15, (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—

10 (a) refuse to proceed with the application; or (b) require the application, specification or drawings to b© amended to his satisfaction before he proceeds with th© appli- cation.

Pow"i of Con- troller to refuse or require amend- ed applica- tions in certain cases.

(2) If it appears to the Controller that—

15 (a) the application claiming to be a convention application was filed in contravention of the provisions of Chapter XXII; or

(b) the invention claimed in the specification is not an In- vention within the meaning of, or is not patentable under, this Act;

ao he shall refuse the application.

(3) If it appears to the Controller that any invention in respect

25 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 dis-claimer in res- pect of that use of the invention, or such other reference to the ille- gality thereof, as the Controller thinks fit.

30 16. (1) A person who has made an application for a patent under this Act may, at any time before the acceptance of the complete specification, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the com- plete 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 mention- ed application.

Power of Con- troller to make orders respect- Ing divi- sion of applica- tion.

35 (2) The further application under sub-section (1) shall be ac- companied by a complete specification, but such complete specifica- tion 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.5

Eocplanation.—For the purposes of this Act, the further appli-

10

cation and the complete specification accompanying it shall be deem- ed to have been filed on the date on which the complete specifica- tion in pursuance of the first mentioned application had been filed, and the further application shall, subject to the determination of the priority date under sub-section (5) of section 11, be proceeded with as a substantive application.

15

17. (1) Subject to the provisions of section 9, at any time after thev filing of an application and before acceptance of the complete specification 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:

Power at Con- troller to make orders respect- ing dating of appli- cation.

ao

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.

25

(2) Where an application or specification (including drawings) Is amended in pursuance of the directions of the Controller under sub- section (1) of section 15; the application or specification 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 is returned to the applicant, on the date on which It is re-filed after complying with the requirement.

30

18. (1) Where it appears to the Controller that the Invention so far as claimed in any claim of the complete specification has been an- ticipated in the manner referred to in clause (a) of sub-section (I) or sub-section (2) of section 13, he may refuse to accept the com- plete (specification unless the applicant—

Powers of Con- troller In casei of anti- cipation.

(a) shows to the satisfaction of the Controller that the 35

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.

5 (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 provi- sions 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,—i

(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

10

(b) the complete specification is amended to the satisfaction of the Controller.

(3) If it appears to the Controller, es a result of an investigation under section 13 or otherwise,—

15 (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;

20

25 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 speci- fication 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 grantedJ

30

35 19. (1) If, in consequence of the investigations required by the foregoing provisions of this Act or of proceedings under section 25, 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 Powwi of Con- troller in case of potential infring*- mtnt.

the applicant's complete specification by way of notice to the public, unless within such time as may be prescribed—

5

(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.,

10

(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

15

(c) it is found, in proceedings before the court or the Con- troller, 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.

30

25

Powers of Con- troller to make orders regarding substitu- tion of appli- cant!, etc

30

20. (1) If the Controller is satisfied, on a claim made in the pres- cribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement in writing made by the appli- cant 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 namf. of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accord- ingly 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.

35

(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

(b) there Is produced to the Controller an acknowledgment 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 5 have been finally established by the decision, of a court; or

(d) the Controller gives directions for enabling the appli- cation to proceed or for regulating the manner in which it should be proceeded with under sub-section (5).

io (i) 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

20 (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.

*5

3O Time for putting applica- tion in order for accep- tance.

21. (1) An application for a patent shall be deemed to have been abandoned unless within fifteen months from the date on which the first statement of objections to the application or complete specification is forwarded by the Controller to the applicant or within such longer period as may be allowed under the following provisions of this section the applicant has complied with all the requirements Imposed on him by or under this Act, whether in con- nection with the complete specification or otherwise In relation to the application.

35 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 no1 be deemed to have complied with such requirements unless and until he has re-filed it.

5

(2) The period allowed by sub-section (7) shall be extended by ..the Controller to such period not exceeding eighteen months from the date on which the objections referred to in sub-section (1) are forwarded to the applicant, if the applicant makes an application in this behalf in the prescribed manner before tha expiration of tha period so specified.

10

(3) If, at the expiration of the period allowed under the fore- going provisions of this section, an appeal to the High Court is pending in respect of the application (or, in the case of an applica- tion for a patent of addition, either in respect of that application or in respect of the application for the patent¹ for the main inven- tion) or the prescribed time within which such an appeal could be filed in the High Court (apart from any future extension of time granted by the Court for filing the appeal) has not expired, then—

*5

20

(a) where such appeal is pending, or Is brought within the aforesaid period of fifteen or eighteen months, as the case may be, or before the expiration of any extension of that time grant- ed by the High Court (in the case of a first extension) on an application made within that time or (in the case of a subse- quent extension) on an application made before the expiration of the last previous extension, the said period of fifteen or eighteen months, as the case may be, for complying with the requirements of the Controller shall be extended until such date as the High Court may determine;

25

30

(b) where no such appeal is pending or is so brought, the said period of fifteen or eighteen months, as the case may be, for complying with the requirements of the Controller shall continue until the end of the time aforesaid or, if any exten- sion of that time is granted by the High Court as aforesaid, until the expiration of the extension or last extension so granted.

35

Accep- tance of complete specifica- tion.

22. Subject to the provisions of section 21, the complete speci- fication filed in pursuance of an application for a patent may be accepted by the Controller at any time after the applicant has com-' plied 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:

40

Provided that the applicant may make an application to the Con- troller in the prescribed manner requesting him to postpone accep- tance until such date (not being later than eighteen months from

498 G of I Ex—3

the date on which the objections referred to in sub-section (2) of section 21 are forwarded to the applicant) as may be specified in the application, and, if such application is made, the Controller mav postpone acceptance accordingly.

3 Advertise- ment of accep- tance of complete specifi- cation.

10 23. 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 specification has been accepted, and thereupon the application and the specification with the drawings (if any) filed in pursuance thereof shall be open to public inspection.

24. On and from the date of advertisement of the acceptance of a complete specification and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges and right* as if a patent for the invention had been sealed on the date of advertisement of acceptance of the complete specification:

15 Effect of accep- tance of complete npecifl- calion.

Provided that the applicant shall not be entitled to institute any

proceedings for infringement until the patent has been sealed.

CHAPTER V

OPPOSITION TO GHANT or PATENT

20 Opposi- tion to grant of patent

25 25. (I) At any time within four months from the date of advertise- ment 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 monthi aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds, namelv: —

30 (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 of whom he is the legal representative;

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date claimed—

35 (i) in any specification filed in pursuance of an appli- cation 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, not being a document of ths class described in sub-section (2) or sub-section (3) of section 29;

40

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete sped-

fication 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 S

complete specification was used in India before the priority date of that claim.

10

Explanation —For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deem- ed to have been used in India before the priority date of the cla'm if a product made by that process! had already been imported Into India before that date;

15

(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;

20

(f) "that the subiect of any claim of the complete specifica- tion is not an invention within the meaning of this Act. or is not patentable under this Act;

far) that the complete specification does not sufficiently and clearly describe the invention r,r thn method bv whlrh it is to be performed;

*5

(h) that the applicant has failed to disclose to the Control- ler the Information required by section 8 or has furnished the In- formation which in any material particular was false to hi? knowledge;

30

(i) that In the case of a convention application, the applica- tion was not made within twelve months from the date of the first application for protection for the invention made in a con- vention countrv bv the applicant nr a person from whom he derives title;

but on no other ground

35

(2) Where any such notice of opposition is dulv given, the Con- troller shall notify the applicant and shall efve to th*" applicant and the opponent an opportunity to be heard before deciding the case.

40

(3) The grant of a patent shall not be refused on the ground stated in clause (c) of sub-section (1) if no patont has be°n Fronted in pursuance of the annllcation mentioned In that CIIIKP- and *nv the purpose of any inquirv under clause (d) or clause (e) of that sub-section no account shall be taken of any secret use

26. (1) Where in any opposition proceeding under this Act—

5

10 In cases of "Obtain- ing" Con- troller may treat applica- tion as applica- tion of opponent.

(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 sub-section (1) of section 25 and refuses the application on that ground, he may, on request by such opponent made in the prescribed man- ner, direct that the application t,hall proceed in the name of the opponent as if the applicaiion and the specification had been filed by the opponent on the date on which they were actually filed;

i5

20

25 (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 Inven- tion so excluded from the applicant's specification, and the Con- troller mav treat such application and specification 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 purposes the application of 1hp opponent shall be proceeded with as an application for a patent under this Act.

30

35 (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^hich includes the whole or a part of the invention held to have been obtained from him and such application is pending, the Controller m"ay treat such application and specifica- tion 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 specifica- tion, 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.

40 27. If at any time after the acceptance of the complete specifica- tion 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 Refusal of patent without opposi- npa.

grant under section 25, that the invention, 30 far as claimed in any claim of the complete specification, has been published in India or any other country before the priority date of the claim—

5

(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 not being a document of the class described in sub-section (2) or sub- section (3) of section 29*

10 the Controller may refuse to grant the patent unless, within sych time as may be prescribed, the complete specification is amended to his satisfaction.

28, (1) It the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,—

15

Mention of in- ventor as such in patent.

(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 pa+ent has been made, or of a substantial part of that invention; and

(b) that the application for the patent is a direct conse- quence of his being the inventor;

20

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:

25 Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.

30

(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.

35

(3) If any person [other than a person in respect of whom a re- quest 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.

(4) A request or claim under the foregoing provisions of this section shall be made not later than two months after the date of ad- vertisement 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 ex- piration of the said period of two months and subject to the pay- ment of the prescribed fee, allow.

5 (5) No request or claim under the foregoing provisions of this section shall be entertained if it appeals to the Controller that the request or claim is based upon facts which, if proved in the ease 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. ro

15 (6) Subject to the provisions of sub-section (5), 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 interest- ed; 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.

20

25 (7) Where any person has been mentioned as inventor in pursu- ance of this section, any other person who alleges that he ought not to hive been so mentioned may at any time apuly 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.

CHAPTER VI

ANTICIPATION

30 Anticipa- tion by previous publica- tion.

29. (7) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the Inven- tion was published in a specification filed in pursuance of an appli- cation for a patent made in India and dated before the 1st day of January, 1912,

35 (2) Subiect as hereinafter provided, an invention claimed in a complete specification shill not be deemed to have been anticipated by reason only that the Invention was published before the priority

date oi the relevant claim oi the specification, if the patentee or tne applicant lor the patent proves—

5

(a) that the matter published was obtained from him, or (where he is not himseli 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

10

(b) where the patentee or the applicant for the patent or any person trom whom he derives title learned of the publica- tion before the date of the application for the patent, or, in the case of a convention application, before the date of the appli- cation for protection in a convention country, that the applica- tion or the application in the convention country, as the case may be, was made as soon as reasonably practicable there- after:

15

2O

Provided that this sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than lor 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 paten- tee or the applicant for the patent or any person from whom he derives title.

25

30

(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 Inven- tion by that applicant.

35

30. An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the communi- cation of the invention to the Government or to any person autho- rised 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.

Anticipa- tion by- previous communi- cation to Govern- ment.

31. An invention claimed in a complete specification shall not 40 be deemed to have been anticipated by reason only of

(a) the display of the invention with the consent oi the true and first inventor at an industrial or other exhibition to which

Anticipa- tion by public display, tta

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

5 (b) the publication of any description of the invention in consequence of the display or use of the invention at any guch exhibition as aforesaid: or

10 (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 irue and first inventor; or

(d) the description of the invention in a paper read by th" true and first inventor before a learned society or published with his consent in the transactions of such a society;

15 if the application for the patent is made by the true and first inven- tor or a person deriving title from him not later than six monthe after the opening of the exhibition or the reading or publication of the paper, as the case may be.

20 Anticipa- tion by public working.

32. 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 priority date of the relevant claim of the' specification, tho invention was publicly worked in India—

(a) by the patentee or applicant for tha patent or any

person from whom he derives title?; or

25

(b) by any other person with the consent of the patentee or applicant for the patent or any person from whom ho derives title;

1° 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 bo effected in public.

35 33. (1) Where a complete specification is filed or proceeded with in pursuance of an application which was accompanied by a provi- sional 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, not- withstanding anything contained in this Act, the Controller shall not refuse to grant the patent, and the patent shall not be revoked Anticipa* tlon by use and publica- tion after provd- sional specifica- tion.

or invalidated, by reason only that any matter described in the provisional specification or in the specification treated aa 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.5

10

(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, ana the patent shall not be revoked or invalidated, by reason only that any matter disclosed in any application for protection in a conven- tion 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.

15

34. Notwithstanding anything contained In this Act, the Control- ler shall not refuse to accept a complete specification for a patent or 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.

No anti- cipation If circum- stances are only aa des- cribed in sec- tion* 29, 30,31 and 32.

CHAPTER VII

ao

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

25

Secrecy directions relating to Inven- tions rele- vant for defence purposes.

35. (1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Con- troller that the invention is one of a class notified to him by the Central Government as relevant 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 to any person or class of persons specified in the directions.

30

35

(2) Where the Controller gives any such directions as are refer- red to in sub-section (1), he shall give notice of the application and of the directions to the Central Government, and the Central Gov- ernment 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 pub- lication of the invention would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoite the directions and notify the applicant accordingly.

498 G of I Ex—4.

5 (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 acceptance of the complete specification notify the Controller fo that effect, and thereupon the provisions of that sub-section &hall 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.

10 Secrecy directionj to be perio- dically re- viewed.

*5 36. The question whether an invention in respect of which direc- tions have been given under section 35 continues to be relevant for defence purposes shall be re-considered by the Central Government within nine months from the date of the filing of the application for the patent, and once at least during every subsequent year, and if, on such re-consideration 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 accor- dingly and the Controller shall thereupon revoke the directions pre- viously given by him.

20 37. (1) So long as any directions under section 35 are in force

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

the same; and

in respect of an application-—quences of secrecy di r a- tions.

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

30 Provided that the application may, subject to the directions, proceed up to the stage of the acceptance of the complete specifica- tion, but the acceptance shall not be advertised nor the specification published, and nb patent shall be granted in pursuance of the appli- cation.

(2) Where a complete specification filed in pursuance of an appli- cation 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—

35

(a) if any use of the invention is made during the continu- ance in force of the directions by or on behalf of or to the order ot the Government, the provisions ot sections 100, 101 and 103

shall apply in relation to that use as if the patent had been granted for the invention; and

5

10

(b) if it appears to the Central Government that the appli- cant 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 pur- pose for which It is designed, and to any other relevant circum- stances.

(3) Where a patent is granted in pursuance of an application in respect oJf 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.

i5

10

Revoca- tion of secrecy direc- tions and exten- sion of time 38. When any direction given under section 35 is revoked by the Controller, then, notwithstanding any provision of this Act .specify- ing the time within which any step should be taken or any act done in connection with an application for the pntcnt, the Controller may, subject to such conditions, if any, as he Ihinks 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

25

39. (1) No person resident in India shall, except under the autho- rity of a written permit granted by or on behalf, of the Controller, make or cause to be made any application outside Tndia for the grant of a patent for an invention unless- -

Residents not to apply lor patents ouisidc India with- out prior permi*- sitm.

(a) an application for a patent for the same invention has been made in India, not less than eipht weeks before 'he applica- tion outside India; and

30

(b) either no directions have b^en given under sub-section (I) of section 35 in relation to the application in India, or all such directions hnve beon revoked.

(2) The Controller shall not grant written permission to any pei- 5;on to make any application outside India without the prior con- sent of the Central Government.

35

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a countrv outside India by a person r^jdenf outside India,

5 Liability for con- traven- tion of section Z5 or section 30.

40. 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 or makes or causes to be made an application for 1 he 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.

10 41. 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.

Finality of orders of Control- ler and Central Govern. ment

15 Savings respect- ing dis- closure to Govern- ment

42. 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 Govern- ment or any department thereof, for the purpose of the application or specification being examined for considering whether an order under this section should be made, varied or revoked.

CHAPTER Vm

GRANT AND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY

20 43. (1) Where a complete specification in pursuance of an applica-

tion 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 Grant and sealing of patent

(b) the application has been opposed and the opposition has

been finally decided in favour of the applicant; or

25

(c) the application has not been refused by the Controller

by virtue of any power vested in him by this Act;

30 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.

35 (2) Subject to the provisions of sub-section (1) and of the provi- sions 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 advertise- ment of the acceptance of the complete specification:

Provided that—

5

(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pend- ing before the Controller or the High Court, the request may be made within the prescribed period after the final determination of that proceeding;

10

(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provi- sions of this sub-section the re'quest 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 mav allow.

i5

(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 ex- tended 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;

20

Provided that the first mentioned period shall not be extended under this sub-section by more than three months or such shorter period as may be prescribed.

25

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.

30

Amend- ment of patent granted to deceas- ed appli- cant.

44. Where at any time after a patent has been sealed 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 sealed, 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.

35

Date of patent 45. (I) 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.

(2) The date of every patent shall be entered in the register.

(3) Notwithstanding anything contained in this section, no pro- ceeding shall be taken in respect of an infringement committed be- fore the date of advertisement of the acceptance of the complete specification.

46. (1) Every patent shall be in the prescribed form and shall

5 have effect throughout India.

(2) A patent shall be granted for one invention only:

Form, extent and effect of patent.

Provided that it shall not be pompetent 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 then one invention. ¹⁰

Rights of patentees.

47. (1) Subject to the other provisions contained in this Act, a patent granted, whether before or after the commencement of thin Act, shall confer upon the patentee—

15 (a) where the patent is for an article or substance, the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute such article or substance in India:

(o) where

20 article or substance, the exclusive right by himself, his agents or licensees to use or exercise the process in India and of using or selling in India articles or substances made by such process and of authorising others so to do.

52. (1) Where a patent has been revoked 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 hs c7aims, or, where in a petition for revocation, the court, instead of revoking the patent, directs the complete specification to be amended by the ex- clusion of a claim or claims in consequence of a finding that the in- vention covered by such claim or claims had been oMa'ned from the petitioner, the court may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the. invention which the court finds has been wrongfully obtained by the patentee, in lieu of the patent so revoked or is excluded by amendmentj

(2) Where any such order Is passed, the Controller shall, on re- quest by the petitioner made in the prescribed manner grant to him—

15

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

30

(it) in cases where the court permits a part onlv 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 requ're the petitioner to file a new and complete specjfica+ion tn the satisfaction of the Controller describing and claiming that part of the invention for which the patent is to be granted.

35

(3) No suit shall be brought for any infringement of a trt=r>t

granted under this section committed before the actual date on which such patent was granted.

53. (I) Subject to the provisions of this Act, the term of every T—, of patent 30 patent granted after the commencement of this Act shall—

(a) in respect of an invention claiming the method or pro- cess of manufacture of a substance, where the substance is inten- ded for use, or is capable of he'ng used, as food or as a medicine or drug, be ten years from the date of the patent; and

(b) in respect of any other invention, be fourteen years from 33

the dote of the patent.

2 tf 191X.

43

(2) Notwithstanding anything contained in the Patents and Desi- gns Act, 1911, or in the patent granted thereunder, the term of every patent granted before the commencement of this Act in respect of an invention claiming a substance or the meihod or process of manu- facture in respect thereof, where the substance ii intended for use, or

498 G of I Ex—5,

is capable of being used, as food or as medicine or drug shall be ten years from the date of the patent:

5 Provided that where at the commencement of this Act any such patent is in force by reason of an extension granted under the Act aforesaid, the patent shall cease to have effect on the expiration of the period of such extension.

*5 (3) 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 pres- cribed period or within that period as extended under this section. 10 (4) The period prescribed for the payment of any renewal fee shall be extended to such period, not being more than three 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 end the prescribed additional fee paid before the expiration of the period so specified.

CHAPTER IX

PATENTS OF ADDITION

20 Patents •t addition.

25 54. (I) 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 in- vention') and the applicant also applies or has applied for a patent for that invention or Is the patentee in respect thereof, the Control- ler may, if the applicant so requests, grant the patent for the improve- ment or modification as a patent of addition.

30 (2) Subject to the provisions contained in this section, where an invention, being an improvement in or modification of another inven- tion, 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.

3f (3) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or later than the date of filing of the complete specification In respect ot the main invention.

40 (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 pf 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.

5

Ternari patents of addition.

55. (I) 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:

10

15

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.

20

(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (2), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

Validity "f patents *t additiaft.

35

56. (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—

(o) the main invention described in the complete specifica- tion relating thereto; or

30

(b) any Improvement in or modification of the main inven- tion described in the complete specification of a patent of addi- tion to 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.35

(2) For the removal of doubts it is hereby declared that in deter- mining the novelty of the invention claimed in the complete speci- fication 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 IB described.

AZ

CHAPTER X

AMENDMENT OF SPECIFICATIONS

Amend-

5 tnent uf specifica- tion before Controller.

57. (1) Subject to the provisions of section 59, the Controller may, upon application made under tnis section in the prescribed manner by an applicant ior a patent or by a patentee, allow the complete specification to be amended subject to such conditions, it any, as tne Controller thinks fit:

IO Provided that the Controller shall not pass any order allowing or refusing an application to amend a specification under this section wnne any suit belors a ccurt lor the lnlnngement ot the patent or any proceeding beloie the High Court tor the revocation oi tne patent is pending, wnether the suit or proceeding commenced before or after tne niing ot tne application to amena.

15 (2) Every application for leave to amend a specification under this section shall s.ate the nature ot the proposed amendment, and shall give lull particulars oi the reasons tor which the application is made.

(3) Every application for leave to amend a specification under this section made alter the acceptance ot the complete specilication and the nature ol the proposed amendment shall be advertised in the prescribed manner.

2O

25 (4) Where an application is advertised under sub-section (3), any person interested moy, with.n the prescribed period after the advertisement thereot, give notice to the Controller of opposition thereto; and where such a notice is given within the period aloresaid, the Controller shall notiiy the person by whom the application under this section is made and shall give to that person and to the oppo- nent 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.

30 (6) The provisions of this section shall be without preiudice to the right ot an applicant for a patent to amend his specification to comply with the directions of the Controller passed before the accept- ance of the complete specification and in the course of proceedings in opposition to the giant of a patent.

35 Amend- ment of specifica- tion before High Court.

40 58. (2) 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 proceed- ings 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 co the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

5

(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.

10

Supple- mentary provisions as 10 amend- ment of specifica- tion.

15

59. (1) No amendment of a complete specification shell be made except by way of disclaimer, correction or explana- tion, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be I'nat 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 specifica- tion before the amendment.

20

(2) Where after the date of advertisement of acceptance of a complete specification, aay ani'j'idment 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

25

(c) the right of the applicant or patentee to make amend- ment shall not be called in question except on the ground of fraud.

(3) In construing the specification as amended, reference may be

made to the specification as originally accepted.

CHAPTER XI

30

RESTORATION OF LAPSED PATENTS

35

Appllca- f.ons for restoration of lapsed patents.

60. (1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed p?riod or within that period as extended under sub-section (3) of section 53, and the Controller is satisfied, upon application made within three years from the date on which the patent ceased to have effect, that the failure was unintentional and that no undue delay has occurred in the mak- ing or prosecution of the application, he shall, by order, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.

40

(2) An application under this section may be made by the person who was the patentee or by his legal representative, and where the patent was held by two or more persons jointly, t he application may, w i th the leave of t he Controller, be made by one or more of t h em without joining the others.

5

10 (3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to t he failure to pay t he prescribed fee, and the Controller may require from the applicant such further evidence as he m ay think necessary.

15 Procedure for disposal of applica- tions for restoration of lapsed patents.

61. (I) If, after hearing the applicant under section 60 in cases where the applicant so desires or the Controller thinks fit, the Con- troller is satisfied that a prima facie case has been made out for an order under that section, he shall advertise 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 t he following grounds, that is to say,—

(a) that the failure to pay the renewal fee was not uninten-

tional; or

20 (fa) 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.

25 (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 auch additional fee as may be prescribed, make the order in accordance with the application.

30 (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.

35 Rights of patentees of lapsed patents which have been restored.

40 62. (i) 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 order restoring the patent under this Chapter.

(2) No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of " patent committed between the date on which the patent ceased to have effect and the date of the order restoring the patent.

5 CHAPTER XII

SURRENDER AND REVOCATION OP PATENTS

63. (1) A patentee may, at any time by giving notice in tne pres- Surrender of patents.

cribed manner to the Controller, offer to surrender his patent.

10

(2) Where such an offer is made, the Controller shall advertise the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.

15

(3) Any person interested may, within the prescribed period after such advertisement, 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 pro- perly be surrendered, he may accept the offer and, by order, revoke the patent.20

Revocation of patents.

64. (1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, on the petition of any person interested or of the Central Government, be revoked by r.he High Court on any of the following grounds, that is to say—25

(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;

30

(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:

35

Provided that a patent in force at the commencement of this Act 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;

(c) that the patent was obtained wrongfully in contrnven- tion of the rights of the petitioner or any person under or through whom ho claims;40

(d) that the subject of any claim of the complete specifi- cation is not an invention within the meaning of this Act;

5 (e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was known or 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;

10 (f) that the invention so far as claimed in any claim of the complete specification is obvious or does not Involve any inven- tive step, having regard to what was known or used in India or what was published In India or elsewhere before the priority date of the claim:

(g) that the invention, so far as claimed in any claim of the complete specification, Is not usefulj

15

20 (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 workinc of the inven+ion as con+a-ned 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;

25 (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;

30

(k) that the subject of any claim of the complete specifica- tion is not patentable under this Act;

35 (I) 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 (2), before the priority date of the claim;

40 (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 material particulars was false to his knowledge;

(n) that the applicant contravened any direction for secrecy passed under section 35 or 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 5

section 57 or section 58 was obtained by fraud.

(2) For the purposes of clauses (c) and (f) of sub-section {1),—

(a) no account shall be taken of secret use: and

10

(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 consti- tute knowledge or use in India of the invention on the date of the importation.

(3) For the purposes of clause (I) of sub-section (1), no account shall be taken of any use of the invention—

(o) for the purpose of reasonable trial or experiment only;

15

20

(b) 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 undertaking; or

²5

(c) by any other person, in consequence of the applicant for the patent or any person from whom he der'ves 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.

30

(4) Without pre-judiee to the provisions contained in

35 (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.

498 G of I Ex—6.

5 33 of 1962,

10 65. (i) Where at any time after acceptance of a complete speci- fication, 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, 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 oppor- tunity of being heard, may refuse to proceed further with the application or may revoke the patent.

Revocation of patent or amend- ment of complete specifica- tion on direc- tions from Central Govern- ment in cases relating to atomic energy.

15 (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.

20 Revoca- tion of patent in public interest.

66. 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 re- voked.

CHAPTER XIII

2J

REGISTER OF PATENTS 67. (1) There shall be kept at the patent office a register of

patents, wherein shall be entered—

Register of patents and parti- culars to be entered therein.

30 (a) the names and addresses of grantees of patents; (b) notifications of assignments and of transmissions of patents, of licences under patents, and of amendments, exten- sions, and revocations of patents; and

(c) particulars of such other matters affecting the validity

or proprietorship of patents as may be prescribed.

35 (2) No notice of any trust, whether express, implied or construc- tive, shall be entered in the register, and the Controller shall not be affected by any such notice.

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

4o (4) For the removal of doubts, it is hereby declared that the re- gister of patents existing at the commencement of this Act shall be incorporated in, and form part of, the register under this Act.

S

Assign, menta, etc. not t0 be valid unless in writing and re- gistered.

10

68.- An assignment of a patent or of a share in a patent, a mort- gage, licence or the creation of any othex 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 three months, or within such further period not exceeding three months m the aggregate as the Controller on application made in the pres- cribed manner allows, from the execution thereof:

Provided that the document shall, when registered, have effect

from the date of its execution.

15

6^. (I) Where any person becomes entitled by assignment, trans- mission 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 hi." interest in the register.

Registra- tion of assign- ments, trans- missions, etc.

2O

(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 becom- ing entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed man- ner by the assignor, mortgagor, licensor or other party to that in- strument, as the case may be-

25

(3) Where an application is made under this section for the regis- tration of the title of any person the Controller shall, upon proof of title to his satisfaction,—

30

(a) where that person is entitled to a patent or a share in a patent;, register him in the register as proprietor or co-pro- prietor 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 hi3 interest, with par- ticulars of the instrument, if any, creating it:

35

40

Provided that where the validity of the transaction or transmis- sion or of the mortgage, licence or other transaction referred to in sub-section (1) is in dispute between the parties, the Controller may refuse to register the transmission, mortgage, licence or other transaction until the rights of the parties have been determined by a competent court.

(4) There shall be supplied to the Controller in the prescribed

5 manner for being filed in the patent office copies of all agreements, licences and other 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:

io Provided that in the case of licences 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.

15 (5) Except for the purposes of an application under sub-sec- tion (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.

20 Power oi registered grantee or proprietor to deal with patent.

70. Subject to the provisions contained in this Act relating to co- ownership of patents and subject also to any rights vested in any other person oi 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:

25 Provided that any equities in respect of the patent may be en- forced in like manner as in respect of any other movable property-

71. (1) The High Court may, on the application of any person aggrieved—

(a) by the absence or omission from the register of any entry; or

Rectifica-

tion of

register

by High

Court,

3° (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;

35 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 High Court may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

40 (5) Notice of any application to the 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 ehall appear if so directed by the court,

5

(4) Any order of the High Court under this section rectifying the register shall direct that notice of the rectification shall be served upon the Controller in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

Register to be open for inspec- tion.

10

72. (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-

CHAPTER XIV

PATENT OFFICE AND ESTABLISHMENI

*5

Controller and other officers.

43 of 1008.

73. (1) The Controller General of Patents, Designs and Trade Marks appointed under sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958, shall be the Controller of Patents for the purposes of this Act-

20 (2) The Central Government may appoint as many examiners and other officers and with such designations as it thinks fit for the purpose of discharging, under the superintendence and directions of the Controller, such functions of the Controller under this Act as it may from time to time authorise them to discharge.

74 (1) For the purpose of this Act there shall be established an a5

office which shall be known as the patent office.

Patent office and its branches

30

(2) The head office of the patent office shall be at such place as the Central Government may specify, and for the purpose of facili- tating 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.

(3) There shall be a seal of the patent office.

35

75. All officers and employees of the patent office shall be in- capable, during the period for which they hold their appointments, to acquire or take, directly or indirectly, excep'. by inheritance or bequest, any right or interest In any patent issued by that office.

Restric- tions on employees of patent office as to right or Interest In patents.

76. An officer or employee in the patent office shall not, except when required or authorised by this Act or under a direction in writing of the Central Government or the Controller or by order of a court.—

5 Officers and employees not to furnish informa- tion, etc.

2 of ion (a) furnish information on a matter which is being or has been, dealt with under this Act or under the Tndian Patents and Designs Act, 1911; or

io 2 of 1911 (b) prepare ox assist in tht- preparation of a document re- quired or permitted by or under this Act or under the Indian Patents and Designs Act, 1911, 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

15

5 of 1908.

77. (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, in respect of the following matters, namely: —

Control'er to have certain powers of a civil court.

(a) summoning and enforcing the attendance of any person

30 and examining him on oath;

(b) requiring the discovery and production ot any docu-

ment;

(c) receiving evidence on affidavits;

(d) issuing commissions for the examination of witnesses

or documents;

25

(e) awarding costs;

(f) reviewing his own decision on application made in the

prescribed manner;

(g) setting aside orders passed ex pane; (h) any other matter which may be prescribed. 30

(2) Any order for costs awarded by the Controller in exercise of the powers conferred upon him under sub-section (1) shall be exe- cutable as a decree of a civil court-

35 78. (1) Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of complete specifications filed in pursuance of an application for a patent and subject to the provi- fiona of section 44, the Controller may, In accordance with tht Power of Coitfrollpr to correct clerical errors, rtw.

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 H entered in the register.

5 (2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accom- panied bv the prescribed fee, or without such a request.

10

(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 01 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.

IS

ao

(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 Con- troller that the correction would materially alter the meaning or scope of the document to which the request relates arH ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be advertised in the prescribed manner.

25

(5) Within the prescribed time after any such advertisement as aforesaid any person Interested may give notice to the Controller of opposition to the request, and, where such notice of opposition ia 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.

30

Evidence how to be given and powers of Controller in respect thereof.

79. 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 directions by the Controller to the con- trary, but in any case In which the Controller thinks it right so to do, he mav 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.

35

Exercise of discre- tionary powers by Controller.

40

80. 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 nmendment of a specification (if within the prescribed time the applicant BO requires) an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.

81. Where under the provisions of thig Act or the rules made there- under the Controller may extend the time for doing any ect, 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.

5 Disposal by Control ler of applica- tions for extension of time.

CHAPTER XVI

WORKING OF PATENTS, COMPULSORY LICENCES, LICENCES OF RIGHT AND

REVOCATION

82. In this Chapter,—

10 (a) "patented article" Includes any article made by a patent-

ed process; and

Definitions of "patent- ed articles" and "patentee".

(b) "patentee" includes an exclusive licensee.

83. Without prejudice to the other provisions contained In thla A.ct, In exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, npmely,—

15 General principles applicable \o working of patented Inventions.

(a) that patents are granted to encouia^e 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; and

(b) that they are not granted merely to enable patentees to 20

enjoy a monopoly for the Importation of the patented article.

Compul- sory licences.

25 84. (1) At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller alleging that the reasonable require- ments of the public with respect to the patented invention have not been satisfied and praying for the grant of a compulsory licence to work the patented Invention.

30 (2) An application under this section may be mode by any person notwithstanding that he is already the holder of a licence under th" patent and no person shall be estopped from alleging that the reason- able requirements of the public with respect to the patented inven- tion are not satisfied by reason of any admission made by him, whe- ther in such a licence or otherwise or by reason of his having accepted such a licence.

35 (3) Every application under sub-section (1) shall contain a state- ment setting out the nature of the applicant's interest together with such particulars as miay be prescribed and the facts upon which the application Is based.

(4) In considering the application filed under this section the Con-

troller shall take into account the matters 3et out in section 85.

5

(5) The Controller, if satisfied that the reasonable requirement!) of the public with respect to the patented invention have not b"e*" satisfied, may order the patentee to grant a licence upon such terms as he may deem fit.

(6) Where the Controller directs the patentee to grant a licence he may as incidental thereto exercise the powers set out in section 93J

I '

10 (7) The decision of the Controller shall be subject to appeal to

the Central Government.

85. In determining whether or not to make an order in pursuance of an application filed under section 84, the Controller shall take into account: —

*5

Matters to be taken into account in granting compulsory licences.

(i) the nature of the invention, the time which has elapsed] since the sealing of the patent and the measures already taken byi 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;

20

(55 of ]951.

(iii) where th;? invention relates to a scheduled industry within the meaning of the Industries (Development and Kegula- tion) Act, 1951, whether the applicant would be granted per- mission to work the invention, if a licence were granted;

25

(iv) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted;

but shall not be required to take into account matters subsequent to the making of the application.

86. (1) At any time after the expiration of three years from the-

^o date of the sealing of a patent, the Central Government may make an application to the Controller for an order that the patent may be endorsed with the words "Licences of right" on the ground that the reasonable requirements of the public with respect to the patented invention have not been satisfied.

Endorse- men t of patent with the words "Licences of right".

35 (2) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satis- fied, may make "n order that the patent be endorsed with the word* "Licences of right".

40

(3) Where a patent of addition is in force, any application made under this section for an endorsement either of the original patent or of the patent of addition shall be treated as an application for the

498 G of I Ex—7.

endorsement of bath patents, and where a patent of addition is grant"d in respect of a patent which is already endorsed under this section, the patent of addition shall also be so endorsed.

5 (4) All endorsements of patents made under this section shall be entered in the register and published in the Official Gazette and in such other manner as the Controller thinks desirable for bringing the endorsement to the notice of manufacturers.

87. (1) Notwithstanding anything contained in this Act,—

(a) every patent in force at the commencement of this Act

10 in respect of inventions relating to—

(i) substances used or capable of being used as food or

os medicine or drug ;

Certain patents deemed to bo endors- ed with the words "Licen- ces of right".

i5 (ii) the methods or processes for the manufacture or production of any such substance as is referred to in sub- clause (i);

20 (Hi) the methods or processes for the manufacture or production of chemical substances (including alloys, opti- cal glass, semi-conductors and inter-metallic compounds); and (b) every patent granted after the commencement of this Act in respect of any such invention as is referred to in sub- clauses (ii) and (Hi) of clause (a);

25 shall be deemed to be endorsed with the words "Licences of right", in the case of inventions referred to in clause (a), from the com- mencement of this Act, and, in the case of inventions referred to in clause (b). from the date of sealing of the patent.

(2) In respect of every patent which is deemed to be endorsed with the words "Licences of right" under this section, the provisions of section 88 shall apply.

30 88. (1) Where a patent has been endorsed with the words "Licences of right", any person who is interesi ed in working the patented inven- tion in India may require the patentee to grant him a licence for the purpose on such terms as may be mutually agreed upon.

35 Effect of endorse- ment of patent with the words "Licences of right".

(2) If the parties are unable to agree on the terms of the licence, either of them may apply in the prescribed manner to the Controller to settle the terms thereof.

(3) The Controller shall, after giving notice to the parties and hearing them and after making such enquiry as he may deem fit, decide the terras on which the licence shall be granted by the patentee,

5

{4) The Controller may at any time before the terms of the licence are mutually agreed upon or decided by the Controller, on application made to him in this behalf by any person who has made any such requisition as is referred to in sub-section (I), permit him to work the patented invention on such terms as the Controller may, pending agreement between the parties or decision by the Controller, think fit to impose.

10

*5

(5) In respect of every patent deemed to be endorsed with the words "Licences of right" under sub-clause (i) or sub-clause (ii) of clause (a) of sub-section (1) of section 87, whether the patent was granted before or after the commencement of this Act, the royalty and other remuneration reserved to the patentee under a licence granted to any person after such commencement 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.

(6) Save as otherwise provided in sub-section (5), the provisions

20

of sub-sections (1), (2), (4), (5) and (6) of section 93 (regarding the powers of the Controller) and of sections 94 and 95 shall apply to licences granted under this section as they apply to licences granted under section 84.

25

Revocation of patents by the Controller for non- working.

30

89. (1) Where, in respect of a patent, a compulsory licence has been granted or the endorsement "Licences of right" has been made or Is deemed to have been made, the Central Government or any per- son interested may, after the expiration of two years from the dete of the order granting the first compulsory licence or, as the case may be, the date of the endorsement, apply to the Controller for an order revoking the patent on the ground that the reasonable requirements of the public with respect to the patented invention have not been satisfied.

35

(2) Every application under sub-section (!) shall contain such particulars as may be prescribed and the facts upon which the appli- cation is based, end, 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, mav make an order revoking the r>"t.ent

+o 90. For the purposes of sections 84, 86 and 89, the reasonable re-

quirements of the public shall be deemed not to have been satisfied

(a) if, by reason of the default of the patentee to manufacture In India to an adequate extent and supply on reasonable terms the patented article or a part of the patented article which is neces-

When reasonable require- ments of the public deemed not satis- fied.

sary for its efficient working or if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms,—

5 (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 classes of per- sons trading or manufacturing in India is prejudiced; or

(") the demand for the patented article is not being met to an adequate extent or on reasonable terms from manufac- ture in India; or

10 (Hi) a market for the export of the patented article manufactured in India is not being supplied or developed or such market capable of being created is not being created; or

(iv) the establishment or development of commercial activities in India is preiudiced: or

!5

2O (b) if, by reason of conditions imposed by the patentee (whe- ther before or after the commencement of this Act) 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 development of any trade or industry in India, is prejudiced; , or

(c) it the patented invention is¹ not being worked in India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable; or

25 (d) if the demand for the patented article in India Is being met to a substantial extent by importation from abroad by— (i) the patentee or persons claiming under him; or

(ii) persons directly or indirectly purchasing from him;

or

30 (m) other persons egamst whom the patentee Is not tak- ing or has not taken proceedings for infringement; or

(e) if the working of tho patented invention in India on a commercial scale is being prevented or hindered by the importa- tion from abroad of the patented article by the patentee or the other persons referred to in the preceding ckuse.

35

40 t'ovi/er of Controller to adjourn applica- tions for compulsory licences,

91. (1) Where an application under section 84, section 86 or sec- tion 89, as the case may be, is made on the ground mentioned in clause (c) of section 90 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 work- ed to the fullest extent that is reasonably practicable, he may, by

etc., in certain cases.

order, adjourn the further hearing of the application for such period not exceeding twelve months in the aggregate es appears to him to be sufficient for the invention to be so worked.

5

(2) No adjournment under sub-section (1) shall be ordered unless the Controller is satisfied that the patentee has taken with prompti- tude adequate or reasonable steps to start the working of the inven- tion in India on a commercial scale and to an adequate extent.

10

15

(3) In computing the period of twelve months referred to in sub- section (1) in any case where the patentee establishes that the reason why a patented invention could not be worked or worked on a com- mercial scale to an adequate extent or worked to the fullest extent that is reasonably practicable 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 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, the period during which such Act, rule or regulation or order of Government preventing the working of the invention was in force shall be excluded.

2Q

²5

Procedure for dealing with appli- cations under sec- tions 84, 8fl and 89.

92. (1) Where the Controller is satisfied, upon consideration of an application under section 84, section 86 or section 89, 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 tho patent in respect of which the application is made, and shall advertise the application in the Official Gazette.

3°:

(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 set-

tine out the grounds on which the abdication is onnosed.

33 (4) Where any such notice of opposition is duly given, the Con- troller shall notify the applicant, and shall give to the applicant and the opponent an opportunity to be heard before deciding the case.

40

93. (I) Where the Controller is satisfied on 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

Powers of Controller in granting compulsory licences.

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.

5 (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 the grant of a licence to the applicant, order the existing licence to be amended.

10

(3) "Where on an application made under section 84 the Control- ler orders the grant of a licence, he may direct that the licence shell operate—

15 (a) to deprive the patentee of any right which he may have as patentee to make, use, exercise or vend the invention or to grant licences under the patent;

(b) to revoke all existing licences in respect of the inven- tion.

20

35 (4) Where two or more patents ere 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 jespect 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, 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.

30 (5) Where the terms and conditions of a licence have been settled by the Controller, an application may be made to the Controller by the licensee for the revision of the terms on the ground that the terms settled have proved to be more onerous than originally ex- pected and that in consequence thereof the licensee is unable to work the invention except at a loss:

Piovided that no such application shall be entertained,—

35

(a) unless the licensee has worked the invention on a com- mercial scale for a period of at least twelve months, or

(b) a second time.

(6) The decision of the Controller shall be subject to appeal to the Central Government.

40

94. 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) tlnat patented inventions are worked on a commercial¹

General purposes ior granting compulsory licences.

5 scale in India without undue delay and to the fullest extent that is reasonably practicable;

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

10 95. (1) In settling the terms and conditions of a licence under

section 84, the Controller shall endeavour to secure—

Terms and conditions of com- pulsory licences.

15

(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:

20

(h) that the patented invention is worked to the fullest ex- tent by the person to whom the licence is granted and with rea- sonable profit to him;

(in) that the patented articles are made available to the

public at reasonable prices-

25

(2) No licence granted by the Controller shall authorise the licensee to import the patented article or an article or nubatance made by a patented process from abroad where such Importation would, but for such authorisation, constitute an infringement of the rights of the patentee.

30

35

(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 relat- ing among other matters to 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.

96. (1) Notwithstanding anything contained in the other provi- Licensing of related patents.

sions 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 licensee thereof, exclu.*w-e or otherwise, may apply 40

to the Controller for the grant of a licence of the first mentioned patent on the ground that he is prevented or h'ndered without such licence from working the other invention efficiently or to the be"t advantage possible.

5 (3) No order under sub-section (1) shall be made unless the Con- troller is satisfied 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.

10 (3) When the Controller Is satisfied that the conditions mentioned in sub-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.

(4) The provisions of sections 92 and 110 shall apply to licences *5 granted under this section as they apply to licences granted under sec- ', tion 84.

(5) The decision of the Controller shall be subject to appeal to the Central Government.

20

5 97. (1) If the Central Government is satisfied in respect of any patent or class of patents in force that it is necessary or expedient in the public interest thet compulsory licences should be granted at any time after the sealing thereof to work the invention or Inven- tions, it may make a declaration to that effect in the Official Gazette, and thereupon the following provisions shall have effect, that is to say—

Special provision for com- pulsory licences on notifica- tion by Central Govern- ment.

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

30 (ii) in settling the terms of a licence granted under this sec- tion, the Controller shall endeavour to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reason- able advantage from their patent rights.

(2) The provisions of sections 92, 93, 94 and 95 shall apply in re-

35 lation to the grant of licences under this section as they epply in relation to the grant of licences under section 84.

(3) The decision of the Controller shall be subject to appeal to the Central Government.

98. 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.

Order for licence to ope- rate as a deed between parties concern- ed.

CHAPTER XVII

5

U SE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF

INVENTIONS BY CENTRAL GOVERNMENT

10

Meaning of uae of invention for pur- poses of Govern- ment.

99. (1) For the purposes of this Chapter, an invention is aaid 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 Gov- ernment or a Government undertaking or any other undertaking in a class or classes of industries which the Central Government, having regard to the interests of the general public may notify in this behalf in the Official Ga7et.tf.

J5

(2) Nothing contained in this Chapter shall apply in the case of any such use of an invention as is deemed not to constitute an in- fringement of the patentee's rights under section 48 and under which no royalty or other remuneration is payable to the patentee.

20

100. (1) Notwithstanding anything contained in thia 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 make, use, exercise or vend the invention for the purposes of Government in accordance with the provisions of this Chapter.

25

Power of Central Govern- ment to use inven- tions for purposes of Govern- ment.

30

(2) Where an invention has, before the priority date of the rele- vant 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 conspquence 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 for the purposes of Government may be made free of any royalty or other remuneration to the patentee.

35

(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 person authorised by it under sub-section (1), at any time after the acceptance of the complete specification in res- pect of the patent or in consequence of any such communication as aforesaid, shall be made upon terms as may be agreed upon either 498 G of 1—8.

before or after the use, between the Central Government or any person authorised under aub-aectlon (I) and the patentee, or, as may in default of agreement be determined by the High Court on a reference under section 103.

5

i" (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 inven- tion.

15

20 (5) Where an invention has been made, used, exercised or vended 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 so to do, the Government shall notify the patentee as soon as practicable after the use has begun and furnish him with such information as to the extent of the making, use, exercise or vending of the invention as he may, from time to time, reasonably require; and where the use of the Invention has been for the purposes of a Government undertaking or an undertaking in a class or classes of industries notified by the Central Government under section 99, the Central Government may call for such information as may be necessary for this purpose from such undertaking.

>²S

30 (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 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 (2) were ths patentee of the invention.

35

40 (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 101, or where "uch patent has been assigned to the patentee in consideration of royalties or other benefits determined by reference to the use of the Invention (Includ- ing 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.

101. (J) In relation to any use of a patented invention, or an In- vention In respect of which an application for a patent in pending; made for the purposes of Government—

(a) by the Central Government or any person authorised by th" Central Government under section 100; or

5

(b) by the patentee or applicant for the patent to the order made by the Central Government,

Right* of third parties In respect of U96*f invention for pur- poses of Govern- ment the provisions of any licence, assignment or agreement granted or made, whether before or after the commencement of this Act, bet-

ween the patentee or applicant ior me patent (or any person wno derives title from him or from whom he derives title) and any per- son other than the Central Government shall be of no effect so far as those provisions—

15

(i) restrict or regulate the use for the purposes of Govern- ment o£ the invention, or of any model, document or informa- tion relating thereto, or

20

(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 (Including pay- ments by way of minimum royalty);

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.

25

30

35

(2) Where the patent, or the right to apply for or obtain the patent, has been assigned to the patentee in consideration of royal- ties or other benefits determined by reference to the use of the in- vention (including payments by way of minimum royalty), then, in relation to any use of the invention made for the purposes of Gov- ernment by the patentee to the order of the Central Government, sub-section (3) of section 100 shall have effect as If that uao wer* made by virtue of an authority given under that section; and any use of the invention for the 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.

40

(3) Where by virtue of sub-section (3) of section 100, payment! are required to be made by th" Central Government or persons authorised under sub-section (1) of that section in respect of the use of an invention for the purposes of Government and where In

5 resp-ct of such patent there is an exclusive licensee authorised under his licence to use the invention lor 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 ihe High Court on a reference under section 103 to be just, having regard to any expen- diture incurred by the licensee—

(a) in developing the said invention, or

10 (b) in making payments to the patentees other than royal- ties or other benefits determined by reference to the use of Uie invention, including payments by way of minimum royalty in consideration of the licence.

15 Acquisi- tion of inventions and patents by the Central Govern- ment.

20 102. (1) The Central Government may, if satisfied that it i* 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 (ffect 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.

25

30 (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 ap- plicant, 01 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 in- curred 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 ex- clusive or otherwise) and other relevant factors.

35

40 103. (1) Any dispute as to the exercise by the Central Govern- ment or a person authorised by it of the powers conferred by sec- tion 100, or as to terms for trie use of an invention for the purpoaei 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 ol e^mpfn^aticn payable for the aquieition of an invention or a patent under section 102, may be Reference "o High Court ol dispute* as to use for pur- poses of Govern- ment.

referred to the High Court by either parly to the dispute in such manner as may be prescribed by the rules ot the High Court.

(2) In any proceedings under this section to which the Central Government is a party, the Central Government may—

5

(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

10

(b) whether a patentee is or is not a party to the proceed- ings, put in issue the validity of the patent without petitioning for its revocation.

15

(3) If in such proceedings as aforesaid eny question arises whe- ther 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.

20

25

•(4) In determining under this section any dispute between the Central Government and any person as to terms for the use uf 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, n ny have received, or may be entitled to receive, directly or indirectly in res.pcct of the use of the inven' on in question for the purposes of Government.

30

(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, commis- sioner or an arbitrator on such terms as the ITigh Court may direct, and references to the High Court in the foregoing provisions of this section shall be construed accordingly.

35

(6) Where the invention claimed in a patent was made by a per- son 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

5 of the Government undertaking, then, notwithstanding anything con- tained 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 Govern- ment shall give an opportunity to the patentee and such other partiM as it considers have an interest in the matter to be heard.

CHAPTER XVIH

SU1TB CONCERNING INTRINGKM1NT OF P A M NM

10 Jurisdic- tion.

104. No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be Instituted in any court inferior to a district court having jurisdiction to try the suit.

15 47 of 1063.

Power of court to mah* declara- tion as tonon- infrlngt- mant.

20 105. (1) Notwithstanding anything contained in section 34 of the Specific Relief Act, 1963, any person may institute a suit for a declara- tion 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 ahown—

(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written acknowledgment to the effect of the declaration claimed and has furnished him with full particulars in writing of the process or article in question; and

25 (b) that the patentee or licensee has refused or neglected to give such an acknowledgment.

(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. 30

(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.

35

(4) A suit for a declaration may be brought by virtue of this section at any time after the date of advertisement of acceptance of tn" complete specification of a patent, and r"ferences in thi" lection to the patentee •hall be construed accordingly.

5

106. (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 unjustifi-

Power of

Court to

grant

relief in

cases of

groundless

threats of

infringe-

ment pro-

ceedings.

able;

(b) an injunction against the continuance of the threats; and

10

(c) such damages, if any, as he has sustained thereby.

15

(2) Unless in such suit the defendant proves that the acts in res- pect 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 e 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.

Eocplanation.—A mere notification of the existence of a patent does not constitute a threat of proceeding within the meaning of this section.

20 107. 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.

25

108. The reliefs which a court may grant in any suit for In- fringement 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.

Defences

in suits

for in-

fringe-

ment.

Reliefs

in suits

for in-

fringe-

ment.

30

Right of

exclusive

licensee

to take

proceed-

ings

against

infringe-

ment

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

35

(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.

40

5 110. Any person to whom a licence has been granted under section 84 shall be entitled lu 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 defen- dant; but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes port in the proceed- ings.

night of license* under section 84 to take proceed- ings against infringe- ment.

10 111. (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.

15 Restric- tion on power of court to grant damagei or account of profits for in- fringe- ment.

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.

20 (2) In any suit for infringement of a patent the court may, if i⁴ 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.

25

30 (3) Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed under this Act after th>= 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 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.

35 Restric- tion on power ot court.

112. 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 licen- see If such a licence had been granted before the earliest infringe-

to grant injunc- tion in certain cases. ment.5

113. (1) If in any proceedings before a High Court for the revoca- tion of a patent under section 64 the validity of any claim of a speci- fication is contested and that claim is found by the court to be valid, ihe Court may certify that the validity of that claim was contested in those proceedings and was upheld.

10

Certificate of validity of speci- fication and coats of subsequent suits for infringe- ment thereof.

15

(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 rely- ing on the validity oi¹ the claim obtains a final order or judgment 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.

20

Provided that the costs as specified in this sub-sectron snail 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.

25

(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.

30 114. (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 respuct of any valid claim which is infringed:

Relief for infringe- ment of partially valid specifica- tion.

Provided that the court shall not grant relief except by way 01 35

injunction save in the circumstances mentioned in sub-section (2)

498 G of I Ex.—9.

5 (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 specifi- cation or permitting them to remain there.

SttlMLttta adviser*,

10 115. (1) In any suit for ingringement 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 or interpretation of law) as it may formulate for the pur- pose.

15

(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 ie-: for any day on which the scientific adviser may be required to atten 1 before the court, and such remuneration shall be defrayed out of moneys provided by Parliament by law for the purpose. 20

CHAPTER XIX

APPEALS

A*p~i.

²S 116. (J) No appeal shall lie from any decision, order or direc- tion made or issued under this Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.

(2) Save as otherwise expressly provided in sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that Is to say,

30

section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, sub-section (3) of sec- tion 69, section 78, section 86 and section 89.

35 (3) Every appeal under this section shall be in writing and shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller, or within such further time as the High Court may in accordance with the rules made by it under section 158 allow.

Procedure for hear- ing of appeals, 117. (1) Every appeal before a High Court under section 11G shall be by petition and shall be in such form and shall contain such particulars as may be prescribed by rules made by the High Court under section 158.

(2) Every such appeal shall be heard by a single Judge of the 5

High Court:

Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the proceeding to a Bench of the High Court,

(3) Where an appeal is heard by a single Judge, a further appeal

10 shall lie to a Bench of the High Court.

CHAPTER XX

PENALTIES

15

118, If any person fails to comply wilh any direction given under section 35 or makes or causes to b" madu ,rm application for the grant of a patent in contravention of section 39, he .shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

contraven- tion Qf secrrcy provisions relating to certain inventions

20

Falsifica- tion of entries in register, etc. 119. 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.

25

Unautho- rised claim of patent rights.

120. 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 five hundred rupees.

Explanation 1.—For the purposes of this section, a person shall be

deemed to represent—30

(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 im- plying that a patent for the article has boen obtained in India;

35

(b) 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 oLher words implying that an application for a patent for the article has been made in India.

5 Explanation 2.—The use of words "patent", "patented", "patent applied for", "patent pending" or other words expressing or imply- ing 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.

10 Wrongful use of words "patent office".

121. 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.

122. (1) If any person refuses or fai]s to furnish-—

(a) to the Central Government any information which he is J5 required to furnish under sub-section (5) of section 100,

Refusal or

failure to

supply

informa-

tion.

(b) to the Controller any Information or statement which he

is required to furnish under section 146,

20 he shall be punishable with fine which may extend to one thousand rupees.

25 (2) If any person, being required to niniish any such informa- tion as is referred to in sub-section (I), 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.

123. If any person contravenes the provisions of section 129, he

3O shall be punishable with fine which may extend to five hundred rupees in the case of a first offence and two thousand rupees in the case of a second or subsequent offence.

Practice by non- registered patent agents.

Offences by com- panies.

35 124. (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 che 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:

Provided that nothing contained in this sub-r-ection 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. 40

5

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a com- pany 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 negloct on the part oi any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to bo guilty of that offence and shall be liable to be proceeded against and punished accordingly.

10 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

15

PATENT AGENTS

Register of patent agents.

20

125. The Controller shall maintain a register to be called the regis- ter of patent agents in which shall be entered the names and addres- ses of all persons qualified to have their names so entered under section 126.

126. A person shall be qualified to have his name entered in the register of patent agents if he fulfils ihc follnwin^ conditions, namely,—

Qualifica- tions for registra- tion as patent agents.

²5

(a) he is a citizen of India: provided that this clause thai! not apply to a person not a citizen of India who possesses the qualifications specified in sub-clause (in) of clause (c);

(fa) he has completed the age of ?A years;

30

(c) he has obtained a degree in physical science or engi- neering from any University in the territory cf India or pos- sesses such other equivalent scientific or technical qualifica- tions as the Central Government may specify in this behalf, and, in addition,—

(i) is an advocate within the meaning of the Advocates Act, 1961; or

26 of 1961.

(ii) has passed the qualifying examination prescribed 35

for the purpose; or

40

(Hi) has been practising as a patent agent for a period of not less than five years before the commencement of this Act and has filed not less than twenty complete specifica- tions during that period; or

(iv) has served in the office of the Controller as an examiner of patents or in any higher capacity for a period of not less than seven years:

5 Provided that he had not exercised the functions of a hearing officer for a period exceeding twelve months In all during his tenure of office;

(d) he has paid such fee as may be prescribed.

Righto of patent agents.

10 127. bubject to the provisions contained in this Act and in any rules made thereunder, every patent nqent 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 dis- charge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

15 128. (I) Subject to the provisions contained in sub-section (2) and to any rules made under thds Act, all applications and com- munications to the Controller under this Act may be signed by a patent agent authorised in writing in this behalf by the person concerned.

Subscrip- tion and verifica- tion of certain documents by patent agents.

20 (2) The following documents, namely,—

(t) applications for patents;

(ii) applications for the restoration of lapsed patents;

(id) applications for the sealing of patents after the time allowed for that purpose by or under sub-section (2) of section 43 has expired;

25

(iv) applications for leave to amend;

(v) applications for compulsory licences or for revocation;

and

(vi) notices of surrender of patents

3° 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.

129. (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 regis- tered as a patent agent or, as the case may be, unless he end all his

Restric- tions on practice an patent agent*.

partners are so registered.S

(2) No company or other body corporate shall practise, 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, practise as e patent

10 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 pur-

poses of this Act or of the patent law of any other country;

(c) giving advice other than of a scientific or technical na-

15 ture as to the validity of patents or their infringement.

130. (1) The Central Government may remove the name of any person from the register when it is satisfied, after giving that person a reasonable opportunity of being heard and after such further in- quiry, if any, as it thinks fit to make—

(i) that his name has been entered in the register by error or 20

Removal from register of patent agents and resto- ration.

on account of misrepresentation ou suppression of material fact;

25

(") 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 Central Government renders him unfit to be kept in the register.

(2) The Central Government may, on application and on sufficient cause being shown, restore to the register the name of any person removed therefrom.

30

131. (!) Subject to any rules made in this behalf, the Controller may refuse to recognise as agent in respect of any business under this Act—

Power of Controller to refuse to deal with certain agents.

(a) any individual whose name has been removed from, end not restored to, the register, or who is for the time being sus- pended from acting as a patent agent;

(b) any person who has been convicted of an offence under section 123;

5 (c) any person, not being registered as a patent agent, who in the opinion of the Controller is engaged wholly or mainly 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;

10 (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 partner in the firm.

(2) The Controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor h;¹; a place of business in India.

132. Nothing in this Chapter shall ba deemed to prohibit—

15 (a) the applicant i'or a patent or any person, not being a patent agent, who is duly authorised by the applicant from draft- ing any specification or appearing or acting before the Controller; or

Savings in respect of other persons authorised to act as agents.

20 (b) an advocate, not being a patent agent, from taking part in any proceedings under this Act otherwise than by way of draft- ing any specification.

CHAPTER XXII

INTBRNATIONAL ARBANGEMKNTS

13.1. (1) With a view Lo the fulfilment of a treaty, convention or

25 Notifica- tion as to convention countries.

arrangement with any country outside India which affords to appli- cants 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 end the protection of patent rights, the Central Government may, by noti- fication in the Official Gazette, declare such country to be a conven- tion country for the purposes of this Act.

30

(2) A declaration under sub-section (1) may be made for the pur- poses 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. 35

134. Where any country specified by the Central Government m 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 Notifica- tion aa to countries not pro- viding for reciprocity.

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;

5

(b) to be registered as the assignee of the proprietor of a patent; or

(c) to apply for a licence or hold any licence under a patent in-anted under this Act.

10

Convention applica- tions.

15

135. (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 ap- plication 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.

Eacplanation.—Where applications have been made for similar

20

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-

25

(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 modifi- cation 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:

30

Provided that the fee payable on the making of any such appli- cation 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 "uch application, apply separately to the applications for protection in resnect of each of the said inventions,

35

136. (1) Every convention (application shall—

(a) be accompanied 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

Special provisions relating to convention applica- tions.

40

(c) state that no application for protection in respect of the invention had been made in a convention country before that

498 G of I—10.

date by the applicant or by any pereon from whom he derives title.

5 (2) Subject to the provisions contained in section 10, a complete specification filed with a convention applicatipn may include claims in respect of developments of, or additions to, the invention in res- pect of which the application for protection was made in a convention country, 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.

10 (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.

Multiple priorities.

15

20 137. (i) 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 1 ^ basic applications.

(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.

25

30 (3) For the purposes of this Act, a matter shall be deemed to have been disclosed in a basic application for protection in a con- vention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of a prior act) in that applica- tion, 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 un- less a copy of the document is filed at the patent office with the con- vention application or within such period as may be prescribed after the filing of "that application.

35 Supple- mentary provisions iis to con- vention applica- tions.

40 135. (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 applica- tion was made, certified by the official chief or head of the patent office of the convention country, or otherwise verified to the satis- faction of the Controller, along with the application or within three months thereafter, or within such further period as the Controller may on good cmuse allow.

(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 Control- ler, shall be annexed to the specification or document.

5 (3) For the purposes of this Act, the date on which an applica- tion was made in a convention country is such date as the Control- ler is satisfied, by certificate of the official chief or head of the patent office of the convention country or otherwise, is the date on which the application was made in that convention country.

10

139. 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.

Other pro- visions of Act to apply to convention applica- tions.

CHAPTER XXIII

MISCELLANEOUS

15

UO. (i) It shall not be lawful to insert—

Aveidani'i af certain restrictive conditions (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

(u) in a licence to manufacture or use a patented article; or

20

(Hi) in a licence to work any process protected by a patent,

a condition the effect of which may be -

25

(a) to require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor, or his nominees, or to pro- hibit 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

30

(b) tn 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 patent- ed process, which is not supplied by the vendor, lessor or licen- sor ov his nominee; or

35

(c) to prohibit the purchaser, lessee or licensee from using, or *o restrict in any manp"r or to any extent the right" of the

purchaser, lessee or licensee to use any process other than the patented process;

and any such condition shall be void.

S (2) 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 sub-section 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.

10 (3) In proceedings against any person for the infringement of a patent, it shall be a defence to prove that at the time of the in- fringement there was in force a contract relating to the patent and containing a condition declared unlawful by this section:

15 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.

(4) Nothing in this section shall—

20 (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:

²5 (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.

30 (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 three months from such commence- ment.

35 Determi- nation of certain contracts.

141. (1) Any contract for the sale or lease of a patented article or for licence to manufacture, use or work a patented article or process, or relating to any such sale, lease or licence, whether made before or after the commencement of this Act, may at any time after the patent or all the patents by which the article or process was

3

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 pur- chaser, 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.

Fees.

10

142. (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 prescrib- ed 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.

'5

(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.

20

(4) Where a principal patent is granted later than two years from the date of the application for patent, the fees which have become due in the meantime may be paid within a term of three months from the date of the recordal of the patent in the register.

25

Restric- tions upon publics, tion of specifica- tions.

143. 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 or be open to public inspection at any time before the date of advertisement of acceptance of the application in pursuance of section 23.

30

Reports of exa- miners to be confiden- tial.

144. The reports of examiners to the Controller under this Act shall not be open to public inspection or be published by the Con- troller; and such reports shall not be liable to production or inspec- tion in any legal proceeding unless the court certifies that the pro- duction or inspection is desirable in the interests of justice, and ought to be allowed:

35 Provided that the Controller may, on application made In the prescribed manner, by any person, disclose the result of any search made under section 13 in respect of any application for a patent, where the complete specification has been published,

145. The Controller shall issue periodically a publication of pat- ented inventions containing such information as the Central Gov- ernment may direct.

Publication of paten- ted inven- tions

5 Power of Controller lo call for jnforma- tion from patentees

io 146. 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, lo 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 work- ed in India as may be specified in the notice.

Evidence of entries, documents, etc.

147. (I) A certificate purpmiiiif 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 prlma facie evidence of the entry having been made and of the contents thereof and of the matter or thine having been done or omitted to be done. *5

20 (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, puiporting 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

25 (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 compel- lable 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 unde~ this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special causes.

Declara-

30 tion by- infant, lunatic, etc.

35 148. (1) If any person is, by reason of minority, lunacy or other disability, incapable of making any statement- or doing anything re- quiied or permitted by or under this Act, the lawful guardian, com- mittee 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 disabilitv.

40 (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.

149.- 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.

Service of notice!, etc., by post.

Security'^ for costs.

5

150. 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.

10

Transmis- sion of ordera of court" to Controller.

151. (1) Every order of the High Court on a petition for revoca- tion, Including orders granting certificates of validity of any claim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and reference thereto to be made in the register.

15

20

(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 con- tested 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 hi 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 are¹ preferred against decisions of the courts referred to in those sub-sections.

25

30

Transmis- sion of copies of specifica- tions, etc., and inspec- tion thereof.

152. 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.

35

Informa- tion relat- ing to patents.

153. A person making a request to the Controller in the prescrib- ed manner for information relating to any such matters as may be prescribed as respects any patent specified in the request or as res- pects any application for a patent so specified shall be entitled, sub- ject to the payment of the prescribed fee, to have information sup- plied to him accordingly.

40

Loss or destruction of patwit.

154. If a patent is lost or destroyed, or its non-production is ac- counted for to the satisfaction of the Controller, the Controller may at any time, on application m"d" in th" prescribed manner and on

payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.

5 155. The Central Government shall cause to be placed before both Houses of Parliament once a year a report respecting the exe- cution of this Act by or under the Controller.

Keports of Controller to be placed before Parlia- ment.

156. Subject to the other provisions contained in this Act, a patent shall have to all intents the like effect aa against Government as it has against any person.

Patent to bind Govern- ment.

10 Right of Govern- ment to sell or use for-

157. 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.

feited arti- cles.

158. 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.

*3 Power of High Courts to make rule".

159. (1) The Central Government may, by notification in the Official Gazette, make rules for carrying out the purposes of this Act. Power of Central Govern- ment to make rulea.

30 (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: —

({) the form and manner in which any application for a patent, any specifications or drawings and any other application or document mav be filed in the patent office:

25 (li) 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 advertised under this Act;

(Hi) the fees which may be payable under this Act and the

manner of payment of such fees;

(iv) the matters in respect of which the examiner may make

3o a report to the Controller;

(u) the form of request for the sealing of a patent;

(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

5

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;

10

(la:) the maintenance of the register of patents and the matters to be entered therein;

(x) the matters in respect of which the Controller shall have powers of a civil court;

*t

(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;

20

(xiii) the form and manner in which appeals from the orders, decisions or directions of the Controller may be preferred to the Central Government, the procedure to be followed in connection therewith and the manner in which such appeals may be heard and disposed of by the Central Government;

(xiv) • the manner in which any compensation for aeqtriil- *5

tion by Government of an invention may be paid;

30

(xv) the manner in which the register of patent agents may be maintained; the conduct of qualifying examination! for patent agents; and matters connected with their practice and conduct, including the taking of disciplinary proceedings against patent agents for misconduct;

(xvi) the 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;

3J

(xvii) any other matter which has to be or may b" proa- orlbed.

493 O of 1-11.

(3) The power to make rules under this section shall ba"subject t<5 the condition of the rules being made after previous publica- tion.

5 Rules to be placed before Parlia- ment

10 160. Every rule made under this Act shall be laid, as soon as nlay 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 m one session or in two successive sessions, and, if before the expiry of the session in which it is so laid or in the session immediately following, 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, ^s the case may be; so, however, that any such modification or an- nulment shall be without prejudice to the validity of anything pre- viously done under that rule.

"529 of 1948,

37 of 1962.

20 2 of 1911

25 Special provisions with respect to certain applica- tions deemed to have been refused under Act 2 of 1911.

161. (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 far 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 sub-section (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.

30 (2) The Controller may, before proceeding to act upon any such request as is referred to in sub-section (2), 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 direc- tions issued by it.

35 (3) Where in pursuance of any such application as is 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 other- wise to avail themselves of, the patented invention before the date of adyertisement of the acceptance of the complete specification. 40

(4) No suit or other proceeding shall be commenced or prosecuted In respect of an infringement of a patent committed before the date of advertisement of the acceptance of the complete specification.

5

1G2. (1) The Indian Patents and Designs Act, 1911, in so far 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.

10

Repeal of Act 2 of 1911 in so far as it relates to patents and saving* (2) Notwithstanding the repeal of the Indian Patents and Designs Act, 1911, in so far as it relates to patents, the provisions of section 21A of that Act 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.

(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 there- on and to any patent granted in pursuance thereof."

*5

10 at 1897.

(4) The mention of particular matters in this section shall not pre- judice the general application of the General Clauses Act, 1897, with respect to repeals.

20

Amend- ment of Act 43 of 1953.

2 of 1911.

163. In sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958, the words and figures "and the Controller of Patents and Deigns for the purposes of the Indian Patents and Designs Act, 1911" shall be omitted.

THE SCHEDULE

[See section 162]

AMENDMENTS TO THE INDIAN PATENTS AND DESIGNS ACT, 1911

1. Long title—Omit "Inventions and".

i 2. Preamble—Omit "inventions and".

3. Section 1—In sub-section (I) omit "Indian Patents and",

4- Section 2—

(a) omit clause (I); (b) in clause (2) omit "(as respects designs)";

IU (c) for clause (3), substitute—

43 of lOfla,

'(3) "Controller" means the Controller General of Patents, Designs and Trade Marks appointed under sub- section (1) of section 4 of the Trade and Merchandise Markj Act. 1958:":

15 (d) In clause (5) for "trade mark as defined in section 478", substitute "trade mark ag denned in clause (v) of sub- section (1) of section 2 of the Trade and Merchandise Marks Act, 1958";

43 of 1908.

(c) omit clause (6);

2O CO in clause (7), after sub-clause (e) insert—

"(f) in relation to the Union territories of Dadra and Nagar Haveli and Goa, Daman and Diu, the High Court of Bombay; '

(g) in relation to the Union territory of Pondicherry, the High Court of Madras:";

*5

(g) omit clauses (8), (10) and (II);

(h) for clause (12), substitute—

'(12) "Patent Office" mean3 the patent office establish- ed under the Patents Act. 1965.'.

fc Omit Part t

3°

6u For section 51B, substitute—

Design* to bind Gov- ernment.

"5 IB. A registered design shall have to all intents the like effect as against Government as it has against any person and the provisions of Chapter XVII of the Patents Act, 1965, shall apply to registered designs as they apply to patents.".

5

7. In section 54, for "The provisions of this Act", substitute "The

provisions of the Patents Act, 1965".

8. Omit sections 55 and 56.

9L Section 57—For sub-section (1), substitute—

10

"(i) There shall be paid in respect of the registration of de- signs and applications therefor and in respect ot other matters relating to designs under this Act such fees as may be prescribed by the Central Government".

10. Omit section 59A.

13 11. Section 61—Omit sub-section (I).

12- For section 62, substitute—

20

"62. The Controller may, on request in writing accompanied by the prescribed fee, correct any clerical error in the repre- sentation of a design or in the name or address of the pro- prietor of any design or in any other matter which is entered upon the register of designs.".

Power of Control- ler to correct clerical errors.

13. Section 63—

(a) In sub-section (1), omit "to a patent or" and "patent or"; (b) in sub-section (2), omit "patent or" and for "patents

or designs, as the case may be,", substitute "designs,";

*5

(c) in sub-section (3), omit "patent or" wherever that ex-

pression occurs;

(d) In sub-section (4), omit "to a patent or".

14 Section 64—

(a) in sub-section (1), omit "patents or" and omit "either" 3°

wherever that word occurs;

(b) in sub-section (5), omit clause (a).

15. Omit section 66.

16. Section 67—Omit "for a patent, or for amendment of an

application or of a specification, or".

35

17. Section 69—In sub-section (1), omit "to grant a patent for

an invention or".

18. Section 71A—Omit "or from patents, specifications and other"

19. Omit section 72.

20. Omit sections 74A and 75.

5

21. Section 76—

(a) in sub-section (1), omit "other";

(b) in sub-section (2), in clause (c), omit "opponent".

22. Section 77—

to (a) in sub-section (1) —

(i) in clauses (c) and (d), omit "specifications";

(ii) for clause (e), substitute—

"(e) providing for the inspection of documents in the patent office and for the manner in which they may be published;";

15

(fii) omit clause (eee);

(b) omit sub-section (2A).

23. Omit section 78.

24. For section 78A, substitute—

20

*5 "78A. (1) Any person who has applied for protection for any design in the United Kingdom or his legal representative or assignee shall, either alone or jointly with any other person, be entitled to claim that the registration of the said design under this Act shall be in priority to other applicants and shell have the same date as the date of the application In the United King- dom:

Provided that—

(a) the application is made within six months from the Keclpro- cal arrange- ment with United Kingdom and other Common- wealth countries.

application for protection in the United Kingdom; and

30 (b) nothing in this section shall entitle the proprietor of the design to recover damages for infringements happen- ing prior to the actual date on which the design is registered In India.

5

(2) The registration of a design shall not be invalidated by reason only of the exhibition or use of, or the publication of a description or representation of, the design in India during the period specified in this section as that within which the appli- cation may be made.

(3) The application for the registration of a design under this section must be made in the same manner as an ordinary application under this Act.

10

15

(4) Where it is made to appear to the Central Government that the legislature of any such Commonwealth country as may be notified by the Central Government in this behalf ha3 made satisfactory provision for the protection of designs registered in India, the Central Government may, by notification in the Official Gazette, direct that the provisions of this section, with such variations or additions, if any, as may be set out in such notification, shall apply for the protection of designs registered in that Commonwealth country.".

23. Omit the Schedule.

STATEMENT OF OBJECTS AND REASONS

The law relating to patents now on the statute book waa enacted In 1911 and since then there have been substantial changes in the political and economic conditions of the country. Although the Act has been in force for a very long period, it has not achieved its main purpose of stimulating inventions among Indians and encourag- ing the development and exploitation of new inventions for Indus* trial progress in this country. The need for a more comprehensive law so as to ensure that patent rights are not worked to the detri- ment of the consumer or to the prejudice of the trade or the Indus- trial development of the country was felt as early as 1948 and in that year the Government appointed a Committee known as the Patents Enquiry Committee to review the working of the patents law in India with a view to ensure that the patent system became more conducive to national Interests. An interim report of that Committe? made in 1949 suggested the immediate amendment of the Indian Patents and Designs Act, 1911, so as to counteract the misuse or abuse of patent monopoly in India by the enactment of provisions for compulsory licensing. The recommendations contained In that interim report were given effect to by the Indian Patents and Designs (Amendment) Act, 1950. The final report of the Committee was presented to Government in 1950, and based on the final report a Bill further to amend the Indian Patents and Designs Act, 1911, was introduced In the Lok Sabha on the 7th December, 1953. While the Bill was pending, a further examination of the law revealed that the Bill would need extensive amendments and consequently it was not proceeded with and was allowed to lapse on the dissolution of the First Lok Sabha.

2. In 1957, the Government of India requested Shri N. Raja- gopala Ayyangar, now a retired Judge of the Supreme Court, to examine afresh the law of patents in India and advise the Gov- ernment on the changes necessary. The present Bill which is based mainly on the recommendations contained in his comprehensive report, incorporates a few further changes In the light of further examination particularly with reference to patents for food, medi- cine? and drugs.

3. The Notes on Clauses explain in detail the various provisions contained in the Bill.

NEW DELHI;

T. N. SINGH.

The 1st September, 1965.

PRESIDENT'S RECOMMENDATION UNDER ARTICLE 117 OF THE CONSTITUTION OF INDIA

[Copy of letter No. 14(l)-T.M.P./64-P&D, dated the 7th Septem- ber, 1965 from Shri T. N. Singh, Minister of Industry in the Ministry of Industry and Supply to the Secretary, Lok Sabha.]

The President having been informed of the subject matter of the proposed Patents Bill, 1965, recommends consideration of the Bill in the Lok Sabha under article 117(3) of the Constitution of India.

498 G of I—is

Notes On clauses

Clause 2\—The definition of 'invention' in the existing Act has been modified so as to represent more accurately the existing posi- tion as denned by case-law. Several new definitions have also been included. For example, a definition of 'person' has been included in order to remove any doubt as to whether it includes the Govern- ment. A definition of 'Government undertaking' has become neces- sary in view of the occurrence of this expression in several places in the Bill. In the new definition of 'true and first inventor' it is made clear that it does not include the first importer of the invention and the first communicatee from abroad.

Clause 3.—In this clause are set out the several types of inven- tions or alleged inventions which are regarded universally or almost universally as not being patentable. In view of the non-availability of case-law on the subject in India, It would be advantageous to codify this part of the law as generally understood and applied-

Clause 4.-—For making this law self-contained, a reference to sec- tion 20 of the Atomic Energy Act, 1962, is included under which no patent can be granted for inventions relating to atomic energy.

Clause 5.—In the case of inventions relating to baby and invalid food, medicines and drugs it would not be in the Interests of an under- developed country like India to grant patents in respect of the subs- tances themselves. But there is no such objection in relation to the processes involved. This clause accordingly restricts patentability to the processes involved in the manufacture or production of such substances.

Clause 6-—This replaces sub-section (1) of section 3 of the exist- ing Act, but has been remodelled on the lines of section 34 of the Australian Patents Act, 1952 and section 1 of the U-K. Patents Act, 1949, by expressly including assignees, legal representatives, etc., among persons entitled to apply for patents.

Clause 7 dealing with the form of application seeks to make it clear that every application shall be for one invention only.

Clause 8.—As the majority of the applicants for patents in India are foreign nationals and as in several cases the application in India Is for the same or substantially the same invention as that for which a patent has already been applied for in a foreign country, this clause

seeks to ensure that all relevant information as respects such foreign invention is made available to the Controller for the purpose of dis- posing of questions relating to novelty of invention, patentability, etc.

Clause 9.—This clause replaces section 4A of the existing Act. The increase in the time limit, namely, fifteen months in all in sub- clause (1) should benefit Indian nationals to get the complete speci- fications in proper order for being filed.

Clause 10.—This clause dealing with contents of specifications corresponds to section 4 of the existing Act but has been amplified in the light of section 4 of the U.K. Patents Act, 1949.

Clause 11.—This clause seeks to make provision respecting the priority date for each claim of a complete"specification and is based on section 5 of the U.K. Patents Act, 1949, and sections 44 and 45 of the Australian Patents Act, 1952, but its scope is enlarged in order to provide for the various contingencies which may arise in the deter- mination of the priority date for each such claim.

Clauses 12 and 13.—The existing Act does not contain any specific provision requiring the Controller to make a compulsory search for ascertaining the novelty of an invention before its acceptance. These clauses make it obligatory for searches to be made by the patent office in respect of all patent applications. Anticipation by publica- tion is not to be confined to publication in India as at present and publication of an invention in India or any foreign country before the priority date claimed would constitute anticipation. Such a pro- vision will enhance the commercial value attached to Indian patents.

Clause 14.—This clause is intended to make it clear that the appli- cant should be given an opportunity of being heard before any objections raised by the examiner are upheld by the Controller.

Clause 15 deals with the cases or circumstances in which an application for patent may be refused by the Controller.

Clauses 16 to 20.—Apart from the power to refuse an application, these clauses deal with the powers of the Controller to pass other suitable orders.

Under clause 16, where an application and the claims based thereon relate to more than one invention, the Controller may allow the applicant to amend the complete specification by confining it to a single invention.

Clause 17 deals with the powers of the Controller for the purpose of post-dating applications.

Clause 18 deals with the powers of the Controller in cases of anticipation.

Clause 19 deals with the powers of the Controller in eases where an invention cannot be performed without risk of infringement of some claim of an earlier patent.

Clause 20 deals with cases where substitution in the names of applicants becomes necessary.

Clause 21.—This clause provides for the maximum limit of time within which an application or a complete specification should be accepted if the application is not to be regarded as abandoned. As the subject-matter in all these cases is the complete specification, time should commence to run from the date of the complete specifi- cation and not from the date of the application as under section 5(4) of the existing Act. It would also be necessary to provide for further extension of time where delay takes place In the office of the Controller by reason of the investigations to be made by the examiner. Sub-clause (2) contains the necessary provisions in this behalf.

Clause 22 makes provisions similar to those contained in section 38(1) of the U.K. Patents Act, 1049, as respects acceptance of com- plete specification.

Clause 23 deals with advertisement of acceptance of the com- plete specification and replaces section 6 of the existing Act.

Clause 24.—This corresponds to section 7 of the existing Act except that the rights and privileges of the applicant commence not from the date of the acceptance of the application as in the existing Act but from the date of the acceptance of the complete specification. Clause 25.—This clause purports to retain the existing procedure for opposition to the grant of patents as being necessary in the public Interest, at the same time enlarging the grounds for opposition men- tioned in section 9 of the existing Act.

Clause 26 deals with cases of 'obtaining¹ which are brought to light In opposition proceedings and seeks to authorise the Controller to deal suitably with the opponent's claim in such cases.

Clause 27.—This clause, modelled on section 15 of the U.K. Patents Act, 1949, would be useful where anticipatory publications are brought to the notice of the Controller with the informant filing a formal opposition to the grant,

Clause 28.—This clause seeks to give recognition to the right of the first inventor to be mentioned in the patent, if he so desires, although he may have parted with his proprietary interest therein.

Clauses 29 to 34 seek to afford guidance to the Controller in determining what constitutes anticipation under the other provi- sions of the law (for example, clause 13).

Clauses 35 to 42.—These clauses replace in a more comprehensive manner section 21A of the existing Act and are intended to secure that inventions relevant for defence purposes which are the subject matter of applications for patents are in the interests of national security kept secret. Any secrecy orders passed by the Controller in respect of such inventions are to be notified to the Central Gov- ernment and are to be periodi illy reviewed. Though applications which are subject to secrecy directions may proceed up to the stage of acceptance they may not be advertised and no patent shall be granted in respect thereof. It is also provided that no person resi- dent in India shall, except with the prior permission of the Control- ler apply for a patent outside India unless an application for patent for th*¹ same invention has been made in India not less than eight weeks before the application outside India and either no secrecy directions have been made in India or such directions have been revoked. Any contravention of secrecy directions will, apart from any criminal liability, render the applicant ineligible to proceed with the application. Payment by way of solatium is also provided for an applicant who may suffer hardship by reason of any secrecy directions.

Clause 43—This clause seeks to replace section 10 of the existing Act in a modified form. Incidentally it removes the overall time limit specified in section 10(2) for the sealing of a patent as being too short and unnecessary.

Clause 45.—This clause replaces section 11 of the existing Act and makes the date of filing of the complete specification the date of the patent and not the date of the application as in the existing Act. [Compare section 22(1) of the U.K. Patents Act, 1949 and section 67(1) of the Australian Patents Act, 1952].

Clause 46 replaces section 12 of the existing Act relating to the effect, extent and form of patent in a modified form.

Clause 47 seeks to define in clear terms the rights of a patentee, rights which have at present to be determined with reference to decided cases. In the case of a patent for a process it is sought to be made clear that the patentee has the exclusive right to the sale in India of articles made by the patented process. Such a provision Would be of advantage to Indian patentees.

Clause 48 is intended to clarify the rights of' research workers and the like to use the invention in the course of research as distinguished from use for commercial purposes. It also seeks to provide that import of medicines or drugs or medical equipment by- Government for its own purpose or the production of a patented article by Government for its own use shall not be regarded as an infringement of patent rights.

Clause 49 replaces section 42 of the existing Act and at the same time seeks to ensure reciprocity.

Clause 50.—This clause which is in modification of section 37 of the existing Act, seeks to define the rights inter se of joint patentees and follows section 54 of the U.K. Patents Act, 1949. In addition to cases where a patent has been granted to two or more persons, this clause also covers cases where registered ownership in a patent has arisen by assignment or devolution.

Clause 51 modelled on section 55 of the U.K. Patents Act, 1949, seeks to authorise the Controller to give directions to co-owners with respect to the exercise of their rights wherever necessary.

Clause 52 seeks to replace section 13(2) of the existing Act and provides for cases where patents have to be revoked In favour of the true and first inventor.

Clause 53 seeks to replace section 14 of the existing Act with suitable modifications. The term of every patent hereafter would be 14 years and not 16 years as hithertofore; but in the case of patents in the field of baby and invalid foods, medicines and drugs, where the process alone will hereafter be patentable, the term will be 10 years. The term of existing patents in this field would be limited to 10 years from the date of the patent.

Clauses 54, 55 and 56—Modelled on section 26 of the U.K. Patents Act, 1949, these clauses considerably modify section 15A of the existing Act dealing with the grant of patents of addition in res- pect of Improvements and modifications.

Clauses 57 to 59 deal with amendments of complete specifica- tions before the Controller and before the High Court and correspond to sections 29 to 31 of the U.K. Patents Act, 1949. The scope of per- missible amendments before and after acceptance of a complete specification is dealt with in clause 59. It is sought to be made clear that the scope of permissible amendments after acceptance of the complete specification cannot be wider or larger than that of an un- nmended specification.

Clauses 60 to 62 replace section 16 of the existing Act and seek to deal more elaborately with restoration in certain circumstances of lapsed patents and the procedure to be followed and. the conditions which may be imposed in connection with such restorations.

Clause 63 deals with voluntary surrender of patents. It is now provided that in addition to the offer of surrender being advertised all persons interested in the patent should be notified and their opposition, if any, considered before the surrender is accepted.

Clause 64 deals with revocation of patents and replaces section 26 of the existing Act. It is now proposed that proceedings for re- vocation should lie only in the High Court. The grounds for revoca- tion are now amplified in the light of experience gained and prevail- ing conditions. Under this clause it would be open to any person interested and also to the Central Government to apply for revoca- tion.

Clause 65 is new and seeks to empower the Controller to revoke a patent or to have the complete specification amended where the invention relates to atomic energy.

Clause 66.—This reproduces section 25 of, the existing Act with suitable safeguards and is a useful provision for the furtherance of the country's national economy.

Clause 67 seeks to provide for the maintenance of a patent register and the particulars to be entered therein.

Clause 68 seelsa to provide that every transaction relating, to patents which is registrable should be entered in the register as soon as possible after the transaction is entered into. At present while patent registers furnish complete information as regards pro- prietary interests, the same cannot be said of licences and other interests.

Clauses 69 and 70 deal with tne registration of proprietary in- terests in patents and the power of registered grantees or proprie- tors to deal with such patents.

Clause 71 seeks to provide for the rectification of registers by the High Court.

Clause 72 seeks to declare that the register shall be open to public inspection.

Clauses 73 to 76 deal with the establishment of Q patent office. Clause 75 which is new seeks to disqualify employees of the patent office from acquiring any Interest in patents except by way of inherl-

tance or bequest. Clause 76, which is also new, requires the emplo- yees of the patent office (upon pain of punishment) to observe secrecy in respect of confidential Information and documents to which they may heve access in the discharge of their duties.

Clauses 77 to 81 deal with the general powers of the Controller And their exercise. The powers Include a power to correct clerical errors in patents or in specifications or in other documents or in the register.

Clause 82 contains certain special definitions. For the purposes of Chapter XVI it has to be made clear that a patentee includes an ex- clusive licensee who has the sole right to grant a sub-licence.

Clause 83 seeks to emphasize as does clause 94 from another as- pect that the main purpose for which a patent is granted is to have the invention worked in this country to its advantage.

Clauses 84 and 85 deal with the grant of compulsory licences where a complaint is made that the patent has not been worked in such a manner as to satisfy the reasonable requirements of the pub- lic, and, are In amplification of the provisions contained in section 22 of the existing Act.

Clause 86 replaces sections 23A and 23B of the existing Act. As in the existing Act, the right to apply for endorsement of patents with the words "Licences of right" is confined to the Central Govern- ment as "persons interested" in working the invention might not desire that other persons besides themselves should also have the right to obtain licences.

Clause 87 is new and provides that patents in the field of drugs, medicines or baby and invalid foods and chemical inventions shall be deemed to be endorsed with the words "Licences of right". The royalty payable under any compulsory licence, if granted hereafter in respect of such substances other than chemical processes is sought to be regulated by clause 88. Suitable provisions are also being made to enable an applicant for a licence to work the invention pending determination of the royalty. These provisions are intend- ed to secure the proper development of the food, drug and chemical industries in the country.

Clause 89 seeks to vest a residuary power in the Controller to revoke a patent in the event of the invention not being worked to an adequate extent in the country, notwithstanding the compulsory licensing provision, etc. Such a provision will also have the indirect effect of inducing patentees to impart to licensees sufficient details as to the know-how for working inventions.

Clause 90 seeks to define what is meant by the expression "rea- sonable requirements of the public have not been satisfied" for the purposes of the preceding clauses in the context of an under-deve- loped country like India.

Clause 91 seeks to empower the Controller to ad]ourn any pro- ceeding under this Chapter for a period not exceeding 12 months so as to cover cases where it is sought to be shown that the time between the sealing of a patent and the application undeT this Chapter is not sufficient to enable the patentee to work the inven- tion to an adequate extent.

Clauses 92 and 93 deal with the procedure to be followed and the powers of the Controller in relation to the grant of compulsory licences.

Clause 94 seeks to formulate certain general principles for the guidance of the Controller in granting compulsory licences.

Clause 95 seeks to regulate the terms and conditions which may be imposed in respect of compulsory licences. Except where the Central Government has otherwise directed, the import of a patented article cannot be permitted under the guise of a compulsory licence.

Clause 96 is intended to prevent the abuse of patent monopolies for blocking purposes and to facilitate the working of related patents.

Clause 97 seeks to replace sub-section (4) of section 23CC of the existing Act.

Clause 99.—For governmental purposes, the use of a patent by a Government undertaking is really equivalent to governmental use. In addition, the powers sought to be conferred by this Chapter may have to be invoked in relation to certain classes of undertakings In the private sector which may be notified for this purpose by the Central Government. The expression use of invention for the pur- poses of Government is being suitably denned to cover all such cases.

Clauses 100 and 101 seek to regulate the use of inventions for the purposes of Government and the rights of third parties in relation thereto. The authority to authorise the use of any Invention would be the Central Government, but the purposes for which

Clause 102 would be useful to enable the Central Government to acquire an invention in certain circumstances, as for example, where it would be economical to acquire the patent Instead of obtaining compulsory licences in respect thereof.

498 G of 1—13.

Clause 103.^Jurisdiction Is sought to be vested in the High Court to decide disputes relating to the use of any invention for the pur- poses of Government.

Clause 104.—While suits for declarations, infringements, etc. may be brought before the district court as under section 29 of the exist- ing Act, jurisdiction to hear petitions for revocation of patents which will have effect beyond the patties to the proceedings is given only to the High Court under clause 64.

Clause 105 is patterned on section 66 of the U.K. Patents Act, 1949, and seeks to expressly authorise the court to grant declaratory decrees as to non-infringement even where the defendant has not denied the right of the plaintiff or has not asserted any adverse right in himself.

Clause 106 seeks to replace section 36 of the existing Act and provides for a remedy in case of groundless threat of legal proceed- ings.

Clause 107.—Based on section 32(4) of the U.K. Patents Act, 1949, this clause seeks to provide that the grounds on which a patent may be revoked would be available as grounds of defence to an action for infringement.

Clause 108 provides for reliefs which may be granted in a suit for infringement, the acts constituting infringement being deter- mined with reference to clause 47 and the terms of the patent.

Clauses 109 and 110 deal with the rights of exclusive licensees and licensees under section 84 to take proceedings against infringement.

Clauses 111 and 112 seek to replace section 30 of the existing Act and restrict the power of the court to grant damages, injunction, etc., In certain cases.

Clause 113 seeks to replace section 32 of the existing Act, but the power to grant certificates of validity is confined to petitions for revocation. Where any such certificate has been granted, this clause seeks to regulate the costs in suits for infringement. Where a matter is taken to an appellate court by the patentee, the attack on the validity of the claim cannot be said to be frivolous and therefore sub-clause (3) does not vest any such power as to costs In the appellate court.

Clause 114 modelled on section 62 of the U.K. Patents Act, 1949, seeics to replace section 35A of the existing Act relating to infringe- ment oi partially valid specifications.

Clause 115.—Section 35 of the existing Act provides for the hearing of suits under that Act with the aid of assessors. This clause seeks to set out in more precise terms the type of persons to be appointed, their functions, remuneration, etc.

Clause 116 seeks to provide for appeals from orders of the Con- troller. In this connection, it is desirable to provide expressly that no appeal shall lie from decisions and orders of the Central Govern- ment on the lines of section 109(1) of the Trade and Merchandise Marks Act, 1958.

Clause 117 seeks to lay down the procedure for the hearing of appeals. It is in modification of the provisions contained in section 23G of the existing Act and follows section 109(4) and (5) of the Trade and Merchandise Marks Act, 1958.

Clauses 118 to 124 seek to provide for the punishment of offences under the new law. The existing Act does not contain adequate nrovisions in this behalf, the only penalty provided therein (section 7R) being in respect of the wrongful use of the words "patent office".

Clauses 125 to 132.—The provisions contained in sections 75 and 75 of the existing Act on the subject of agency are insufficient to regulate appearances before the Controller by persons styling them- selves as patent agents. It is desirable, as in other countries, that patent agents should be properly qualified to do their work—a work which involves great skill and responsibility. These clauses, which are new, therefore provide for statutory control of patent agents. No person whose name is not entered in the register of patent agents will hereafter be permitted to describe himself as a patent agent, but nothing in this Chapter would compel an individual to resort to a patent agent for filing his application or prevent him from acting in the matter himself or through an authorised agent.

Clauses 133 to 139 seek to replace section 78A of the existing Act which is confined to reciprocal arrangements between India and the United Kingdom and other parts of Her Britannic Majesty's domi- nions by more comprehensive provisions. Apart from making due provision for the mutual protection of Inventions, a clause on the lines of section 132 of the Trade and Merchandise Marks Act, 1958, has also been included (clause 134) whereby nationals of countries which do not accord reciprocity to our citizens will be denied the right to apply for patents, etc, in India.

Clause 140 based on section 57 of the U.K. Patents Act, 1949, and section 112 of the Australian Patents Act, 1952, is new, and is intend- ed to ensure that patent rights are not made an instrument of a monopoly wider in scope or longer in duration than afforded under

the patents by the statute. Accordingly, conditions in contracts, leases or licences which tend to impose restrictions on the other party with regard to the purchase of articles or use of processes other than the patented article or patented process are rendered void as being restrictions on trade injurious to the public interest. This clause will also apply to contracts made before the commence- ment of this new law in so far as any such restrictions are allowed to continue after the expiration of three months from such com- mencement. The period of three months would enable the parties to have the contracts suitably altered, if they so choose.

Clause 141 is also new and Is designed to counter attempts by patentees to extend the duration of their patent monopolies beyond the period allowed by statute. This clause will enable the patentee, lessee or licensee to determine a contract containing any such res- trictions on giving three months' notice.

Claiises 143 and 144.—These clauses while placing restrictions upon the publication of reports of examiners, specifications, etc., seek to vest a discretion in the Controller as to the publication of the result of any search under clause 13. Such a provision would be of value to inventors who desire to know the extent of a prior invention.

Clause 146.—This provision which is confined to Information regarding the extent to which an invention is being commercially worked In India is necessary for the proper working of this law, apart from its statistical value.

Clause 147.—Sub-clauses (1) and (2) are based on sections 71 and 71A of the existing Act and sub-section (3) is based on section 116 of the Trade and Merchandise Marks Act, 1958.

Clause 151 seeks to replace section 33 of the existing Act by more elaborate provisions. While orders of High Courts regarding revocation of patents or certificates of validity of claims are to be entered in the register of patents, orders of other courts In suits for infringement, etc., are to be filed in a supplemental register as such orders affect only the parties thereto.

Clause 161.—This clause makes special provisions In respect of applications for patents which were referred from time to time to the Department of Atomic Energy for directions as they had references to atomic energy. These applications now stand lapsed, due to no fault of the applicants, on the ground that the maximum period of acceptance prescribed under sub-section (4) of section 5 of the Indian Patents and Designs Act, 1911, has expired.

FINANCIAL, MEMORANDUM

The Bill seeks to amend and consolidate the law relating to patents contained in the Indian Patents and Designs Act, 1911, with a view to stimulate Inventions among Indians and to encourage the development and exploitation of new inventions for industrial pro- gress in India and to ensure that patent rights are not abused, to the detriment of the national Interests. The Patent Office, which administers the Indian Patents and Designs Act, will have to keep a close watch over the commercial exploitation of patents and licen- sing and other proceedings under the Act. The steady increase in the number of applications for patents year after year, the proposal for extensive world-wide search for novelty, the expansion of the grounds of opposition, grounds for the grant of compulsory licences and the provisions for revocation for non-working, will involve additional functions on the Patent Office.

Clause 13 of the Bill envisages compulsory search for ascertain- ing 'novelty' of an invention and for determining 'anticipation', the scope of search extending to prior publication not only in India but elsewhere. Involving as it does much heavier work and responsi- bility than at present, it will necessitate an appreciable augmen- tation of the Examining and Supervisory officers of the Patent Office. Further, it will necessitate the setting up of a Special Abstracting Section at the Patent Office, Calcutta, which will engage itself on the collection of all -foreign patent specifications and other technical documents, classification of the same industry-wise, preparing abs- tracts of the same and printing or duplication of the abstracts, etc.

Clause 74(2) of the Bill provides for the establishment of branch offices of the Patent Office at different centres in the country in order to meet the growing requirements of the public and to facilitate registration of patents. To begin with, it is intended to have 3 branch offices of the Patent Office at Bombay, Delhi and Madras. This is on lines similar to the three branch offices of the Trade Marks Registry functioning at Calcutta, Delhi and Madras under the Trade and Merchandise Marks Act, 1958. The branch offices will be concerned with receiving of applications for patents, preliminary examination of the applications and amendments there-

to, taking hearings and attending to all further correspondence such as communication of orders and the like, except of course detailed search for anticipation which will be conducted at the Head Office, Calcutta.

Clause 115 of the Bill envisages the appointment of Scientific Advisers to assist the Court in any suit for infringement or In any proceeding before a Court under the Act.

The aforesaid measures will involve extra work and will neces- sitate employment of some additional staff. The expenditure on account of additional staff, together with incidental expenses on administration is estimated at about Rs. 4 lakhs including Rs. 20,000 non-recurring. The actual recruitment of staff will, however, be made as may be determined by careful work-study.

Requirement of personnel and finance:

1. Annual emoluments of

officers: —

(a) Asstt. Controllers,

2,57,000

(b) Examiners of

Rs.

Patents & Designs 27 J

2. Annual emoluments of

staff: —

(a) Senior Scientific Assistants.

98,700

Rs.

(b) Asstt. Supdts.

(c) U.D.Cs.

10 } 3 r ⁹ j

3. Incidental expenses.

44,300

Rs.

TOTAL: —Rs. 4,00,000

Taking the average of the past 3 years, the annual expenditure of the Patent Office is of the order of Rs. 95 lakhs, while the annual income by way of fees realised amounts to Rs. 13'2 lakhs. It is to be mentioned in this context that while a general increase in the revenues may be expected on account of the filing of larger number of applications for patents year after year and also on account of the enhanced rates of fees for applications and for renewals, yet the reduction of the term of patents from 14 years to 10 years and the

stopping of the grant of product patents in the fields of food, drugs and medicine, will probably offset to some extent the above. How- ever, on balance it may be expected that the present revenue is likely to be maintained. Apart from that, as so pertinently pointed out by Shri Justice Rajagopala Ayyangar in his report on the Revi- sion of Patents Law "The maintenance of a Patent Office should be considered a service rendered to the public, and this is how it is looked upon the U.K. & U.S.A. and other advanced countries and therefore if an increase in the cost should result in an increase in the efficiency of the service, the cost is always worthwhile."

MEMORANDUM REGARDING DELEGATED LEGISLATION

Clause 158 authorises the High Court to make rules as to the conduct of procedure in respect of proceedings before it under thi3 law.

Clause 159 authorises the Central Government to make rules for carrying out the purposes of this law. The rules are subject to the condition of previous publication. The matters set out in that clause Ln respect of which rules may be made are matters of a procedural nature and are merely ancillary to the proper implementation of this law.

The rule-making power sought to be conferred by the above two clauses is ox a normal character.

S. L. SHAKDHER,

Secretary.

PBJNTED IN INDIA BY THE GENERAL MANAGER, GOVERNMENT OP INDIA PRE33, MINTO

ROAD, NEW DELHI AND PUBLISHED BY THE MANAGER OP PUBUCATIONS, DELHI, 1 9 65