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REGISTERED No, D 221.

The Gazette of India

EXTRAORDINARY

PART II—Section 2

PUBLISHED BY AUTHORITY

No. 52] NEW DELHI, TUESDAY, NOVEMBER 1, 1966/KARHKA 10, 1888 (S)

Separate paging is given to this Part in order that it may be filed

as a separate compilation.

LOK SABHA

The following report of the Joint Committee on the Bill to amend and consolidate the law relating to patents was presented to Lok Sabha on the 1st November, 1966: —

Composition of the Committee

Shri S. V. Krishnamoorthy Rao—Chairman

MEMBERS

Lok Sabha

2. Seth Achal Singh

3. Shri Peter Alvares 4. Shri Ramehandra Vithal Bade 5. Shri Panna Lai Barupal 6. Shri Dinen Bhattacharya 7. Shri Bibhuti Mishra

(1013)

8. Shri P. C- Borooah

9. Sardar Daljit Singh

10. Shrl Basanta Kumar Das

11. Shrl V. B. Gandhi

12. Shrl H. K V. Gowdh

13. Shri Kashi Ram Gupta

14. Shri Prabhu Dayal Himatsingka

15. Shrl Madhavrao Laxmanrao Jadhav

16. Shri Mathew Maniyangadan

17. Shri M. R. Masani

18. Shri Braj Behari Mehrotra

19. Shri Bibudhendra Mishra

20. Shrimati Sharda Mukerjee

21. Shri P. S. Naskar

22. Shri Chhotubhai M. Patel

23. Shri Naval Prabhakar

24. Shri R. Ramanathan Chettiar

25. Shri Sham Lai Saraf

26. Shri A. T. Sarma

27. Dr. C. B. Singh

28. Dr. L. M. Singhvi

29. Shri P. Venkatasubbaiah

30. Shri K. K. Warior

31. Shri Balkrishna Wasnik

32. Shri Ram Sewak Yadav

Rajya Sabha

•33. Shri Arjun Arora

•34. Shri T. Chengalvaroyan

35. Shri Babubhai M. Chinai

36. Shri Vimalkumar M. Chordia

•37. Shri R. S. Doogar

38. Shri D. P. Karmarkar

39. Shri B. T. Kulkarni

40- Shri P. K. Kumaran

•41. Shri Shyamnandan Mishra

42. Shri Dahyabhai V. Patel

43. Shri Mulka Govinda Reddy

**44. Shri D. Sanjivayya

•45. Shri M. R. Shervani

46. Dr. M. M. S. Siddhu

•47. Shri Dalpat Singh

48. Shri R. P. Sinha.

LEGISLATIVE COUNSELS

1. Shri V. N. Bhatia, Joint Secretary, Legislative Department, Ministry of Law.

2. Shri R. V. S. Peri Sastri, Deputy Legislative Counsel, Legis- lative Department, Ministry of Law.

REPRESENTATIVES OF THE MINISTRY OP INDUSTRY

1. Shri K. V. Venkatachalam, O.S.D., (Patents).

2. Dr. A. Joga Rao, Controller General of Patents, Designs and Trade Marks.

3. Shri B. N. Atrishi, O.S.D.

4. Shri R. V. Pai, Joint Controller of Patents, Designs and Trade Marks.

REPRESENTATIVE OF THE MINISTRY OF HEALTH

Shri S. K. Borkar, Drug Controller of India.

SECRETARIAT

Shri M. C. Chawla—Deputy Secretary.

*Ceased to be Members of the Joint Committee with effect from 2nd April, i960 on their retirement from Rajya Sabha and were reappointed by Rajya Sabba on the 7th April* 1966 except Shn Dalpat Singh who was reappointed on the 13th May, 19M.

••Appointed on the 17th May, 1966 vice Shri T. N. Singh resigned.

REPORT OF THE JOINT COMMITTEE

1. the Chairman of the Joint Committee to which the Bill* to amend and consolidate the law relating to patents was referred, having been authorised to submit the report on their behalf, present their Report, with the Bill as amended by the Committee, annexed thereto.

2. The Bill was introduced in Lok Sabha on the 21st September, 1965- The motion for reference of the Bill to a Joint Committee was moved in Lok Sabha by Shri T. N. Singh, Minister of Heavy Engineering and Industry in the Ministry of Industry and Supply on the 22nd November, 1965. The motion was discussed and adopted on the 25th November, 1965.

3. Rajya Sabha discussed, and concurred in, the said motion on the 10th December, 1965.

4. The message from Rajya Sabha was published in the Lok Sabha Bulletin, Part II, dated the 13th December, 1965.

5. The Committee held thirty sittings in all.

6. The first sitting of the Committee was held on the 11th Decem- ber, 1965, to draw up a programme of work. The Committee, at this sitting, decided that a Press Communique be issued advising associations, public bodies and individuals who were desirous of pre- senting their suggestions or views or of giving evidence 'before the committee in respect of the Bill, to send written memoranda thereon by the 12th January, 1966.

7. Seventy memoranda/representations on the Bill were receiv- ed by the Committee from different associations/individuals.

8. At its seventh sitting, the Committee also decided to form Study Groups to visit some of the modern pharmaceutical units etc. with up-to-date laboratory facilities, in different regions of the coun- try, for an on-the-spot study of their working in so far as it had a bearing on the provisions of the Patents Bill.

9. The Committee divided itself into several groups and visited 30 Pharmaceutical Units, Research Institutes and Drug Farms etc.

•Published In the Gazette of India, Extraordinary, Part II, Section 2, dated the 1st September, 1965.

situated at Bombay, Baroda, Poona, Calcutta, Chandigarh, Lucknow and Jammu including the Patent Office at Calcutta. At these places, the members of the Study Groups of the Committee saw the work- ing of various Pharmaceutical Units and Research Institutes/Labo- ratories etc. The members elicited information regarding patents and the likely impact of the proposed Patents legislation on their working.

10. At their 2nd to 8th and 10th to 25th sittings held on the 27th to 29th and 31st January, 1st to 3rd February, 23rd April, 1st, 2nd, 4th to 8th and 11th to 15th July, 12th, 26th and 27th August, 1966, respectively, the Committee heard the evidence given by 43 Associa- tions/individuals.

11. The Committee have decided that the evidence given before them should be printed in two volumes and laid on the Tables of both the Houses.

12. The Report of the Committee was to be presented by the first day of second week of the Fourteenth Session of Lok Sabha. As this could not be done, the Committee requested for extension of time upto the 1st August, 1966, which was granted by the House on the 16th February, 1966. As the Report could not be presented on the extended date, the Committee again requested for further extension of time upto 1st November, 1966, which was granted by the House on the 28th July, 1966.

13. The Committee considered the Bill clause-by-clause at their 26th to 29th sittings held from the 5th to 8th October, 1966, respec- tively.

14. The Committee considered and adopted their Report on the 31st October, 1966.

15. The observations of the Committee with regard to the princi- pal changes proposed in the Bill are detailed in the succeeding para- graphs.

16. Clause 1 and Enacting formula.—This clause has been amend- ed to enable the Government to appoint different dates for the com- mencement of different provisions of the Act. This appears neces- sary, ar the Central Government in view of the additional responsi- bilities cast on the patent office under the Bill, may not bring all the provisions thereof into force at one and the same time and may bring them into force at different stages so as to enable the patent office to gear up its machinery for the additional functions.

Amendment to the enacting formula is of a drafting nature.

17. Clause 2: (i) Sub-clause (1) (g).—The definition of 'food' leaves it to be determined by notification as to what would be treated as 'food' for the purposes of the Act. The Committee feel that the definition should be self-contained and that it is not proper to confer such uncanalised powers on the Government. The definition has been amended accordingly.

(ii) Sub-clause (1) (I) (iv) .—This sub-clause has been amended to make the definition of 'medicine or drug' more practical. The re- tention of the words "to the extent to which they are used" would have made the implementation of the provisions of the legislation relating to medicine or drug extremely difficult as the extent to which a chemical is used as an intermediate for a drug or for other purposes, such as dyes or plastics, etc. is constantly changing.

(iii) Sub-clause (1) (m) —It is considered necessary that exist- ing patents should also be brought generally under the purview of the proposed legislation. Accordingly the definition of "patent" has been modified.

(iv) Sub-clause (1) (r).—The amendment made in this clause Is consequential to the amendments made in clause 74 which now seeks to recognise the existing Patent Office for the purposes of the new Act.

( ^ t

Other amendments made in clause 2 are of a consequential or drafting nature.

ing nature.

18. Clause 3 (e).—Amendment made in this clause is of a draft- (

19. Clause 5—It has been strongly represented to the Committee that it should be made clear in this clause that the substance or pro- duct manufactured by a patented process or method should be pro- tected under the proposed legislation. Although clause 47 (1) (b) seeks to give such protection to the Patentee doubts were expressed that clauses 5 and 47 (1) (b) may be held to be inconsistent with each other. In view of the Government policy that patent protec- tion should extend to the products made through the patented pro- cess the clause has been amended to make this position clear.

20. Clause 7: (i) Sub-clause (2) .—The clause has been amended in order to avoid the inconvenience which might be caused to the applicant making an application by virtue of an assignment of the right to apply for a patent in obtaining affidavit from the assignor

or his legal representative. It is felt that the existing practice of requiring proof of the right to make the application would be suffi- cient.

fii) Sub-clause 4.—The amendment is of a clarifying nature.

21. Clause 11, sub-clause (8).—The sub-clause has been amended so that post-dating of an application for a patent or of a complete specification under clause 9(4) and proviso to clause 17(1) and antedating of such application or complete specification under Ex- planation to clause 16(3) are taken into account for purposes of determining the priority date of each claim of a complete specifica- tion.

22. Clause 12, new sub-clause (2).—The Committee feel that some time-limit should be fixed in the Act itself within which the examiner must complete the investigation of the application and the specification relating thereto and submit his report thereon to the Controller General of Patents. In the opinion of the Committee, a period of eighteen months is ordinarily sufficient for the purpose. The clause has been amended accordingly by adding a new sub- clause thereto.

23- CZause 15, sub-clause (2).—This clause required the Control- ler to refuse an application claiming to be a convention application if it was filed in contravention of Chapter XXII which deals with the international arrangements providing for reciprocity as to patent protection. The Committee feel that refusal of such application under the aforesaid circumstances should not be obligatory and such applications should be treated as any other application for a patent. The sub-clause has been amended accordingly.

24. Clause 17.—Amendment of this clause is of a drafting nature.

25. Clause 21, sub-clauses (2) and (3).—A redraft of these two sub-clauses in simplified language has been incorporated in the clause.

26. Clause 22-—Amendment merely seeks to substitute the cor- rect cross-reference.

27. Clause 25: (i) sub-clause (1) (a).—The clause has been amended to enable the assignee of a person from whom an inven- tion is wrongfully obtained to contest an application for the grant of patent in respect of that invention or part thereof. Sub-clause (1) (a) has been amended accordingly.

(ii) Sub-clause (1) (d) Explanation.—The Committee feel that importation of a product into India for the purpose of reasonable trial or experiment should not be construed as amounting to know- ledge or use within the meaning of this sub-clause. The Explana- tion to the sub-clause has accordingly been modified.

Other amendments In the clause are of a consequential or draft- ing nature.

28. Clause 27.—Amendments made in this clause are of a drafting nature.

29. Clause 31—The Committee feel that the person who derives title from the true and first inventor should be put in the same posi- tion as the true and first inventor in regard to anticipation by public display etc. sought to be provided for in this m u s e. The clause has, therefore, been amended accordingly.

30. Clause 36.—The Committee feel that the period of nine months within which the first review of the secrecy directions in respect of an invention relevant for defence purposes, should be reckoned not from the date of the filing of the application for the patent but from the date of the issue of such directions; otherwise in certain cases the period of nine months from the date of application may expire by the time the directions are given and in many cases review may become necessary within a short period after the issue of the direc- tions. The clause has, therefore, been amended accordingly.

A new sub-clause (2) has also been added in order to make it obli- gatory on the part of the authorities concerned to communicate to the applicant the result of every reconsideration of the secrecy direc- tions.

31. Clause 37.—Amendment made in this clause is of a drafting nature.

32. Clause 39.—This clause lays down that a resident in India cannot apply for patents outside India unless a minimum period of eight weeks has expired after the application for a patent for the same invention has been made in India. The Committee feel that this period of eight weeks should be reduced to six weeks so that minimum time is lost in getting patents outside India. The clause has been amended accordingly.

33. Clause 42.—Amendments made in this clause are of a drafting nature.

34. Clause 43.—The clause has been amended in order to indicate clearly that the period within which a request for the sealing of a patent may be made under sub-clause (2) thereof shall not be ex- tended by more than three months in the aggregate.

35. Clause 45, sub-clause (3) .—The change is of a drafting nature.

36. Clause 48.—It was urged that under this clause, as it existed, the Government might exercise its power to notify dispensaries, hospitals and other medical institutions freely and thereby deprive the patent-holder of the vast majority of his customers in this country only to benefit private or commercial dispensaries, hospi- tals etc at the expense of the patent-holders.

The Committee feel that Government must have regard for pub- lic service being rendered by a dispensary, hospital or other medical institution before notifying it under the provisions of this clause. Keeping this in view the clause has accordingly been amended. Other amendment in this, clause is of a consequential nature.

37- Clause 50, sub-clause (3).—The amendment is of a drafting nature.

38. Clause 51, sub-clause (4),—The amendment made in this sub-clause is of a drafting nature.

39. Clause 53: (i) su'o-clause (2).—The Committee consider it rather harsh to reduce the period of validity of the patents in force on the commencement of the new Act, in the field of food, medicine or drug, to 10 years from the date of the patent under Act 2 of 1911. The Committee feel that it would be more appropriate to restrict the period of validity of such patents to the remaining period of their life or 10 years from the commencement of the new Act, whichever is shorter. The sub-clause has, been amended accordingly.

(ii) Sub-clause (4).—The sub-clause has been amended to pip- vide for extension of the grace period for payment of renewal fee upto the maximum period of six months instead of three months. This grace period of six months is also in. consonance with the cor- responding provisions of the Paris Convention for the protection of industrial property.

(iii) Other amendments in this clause are of a drafting or con- sequential nature.

40. Clauses 57 and 59.—Since the Bill contained no provision for the amendment of an application for patent as in section 17 of the

794 G of I Ex.—2.

existing Act 2 of 1911 and since the provisions of clause 78 are avail- able for correcting clerical errors only, the clauses have been amend- ed accordingly to provide for the amendment of an application for patent also. Other amendments in the clause are of a drafting nature.

41. Clause 60.—The Committee feel that an application for resto- ration of a patent which has lapsed due to failure to pay renewal fee must be made as early as possible. The Committee are of the opinion that a period of one year should be sufficient to enable a patentee or his legal representative to apply for restoration of his lapsed patents. The interested parties must be vigilant about thejr own interests and take action to protect them at the earliest oppor- tunity. The period of three years, as was provided for in this clause would result in uncertainty and would only put a premium on lethargy of the patentees. The clause has accordingly been amend- ed to reduce this period from three years to one year. The language used in the clause has also been recast to bring out more clearly the underlying intention.

42. Clause 61.—TJie amendments are of a drafting nature.

4b. Clause 62.—The Committee feel that protection to persons wno may have begun to avail themselves of patented inventions alter the lapse of the patent for non-payment of renewal fee should be made available only upto the date on which the application for restoration of the patent has been advertised and not for the use of such inventions after that date. The Clause has been amended accordingly,

44. Clause 64: (i) sub-clause (1).—The Bill does not contain any provision for making a counter claim for the revocation of a patent, by the defendant in a suit for infringement of a patent, as provided for in section 26(1) of the Indian Patents and Designs Act, 1911. In the absence of such a provision the defendant in an infringement suit will have to proceed separately for getting the patent revoked. This is likely to increase litigation and cause much harassment by the patentees. The clause has accordingly been amended on the lines of section 26(1) of the Act 2 of 1911.

(ii) Sub-clause (1) (e) and (f).—The Committee feel that it would be unfair to apply the ground of knowledge, use or publication in places other than India for purpose of revocation of patents grants ed under the Indian Patents and Designs Act, 1911. These provisions have been amended accordingly.

(iii) Sub-clause (1) (n).—This provision has been amended to bring it into conformity with clauses 39 and 118.

(iv) Sub-clause (2).—The Committee feel that the importation of a product into India for the purpose of reasonable trial or experi- ment should not be construed as amounting to knowledge or use within the meaning of sub-clause (1) (e) and (f). Sub-clause (2) has accordingly been amended.

(v) Other amendments made in the clause are of a drafting nature.

45. Clause 68.—The Committee feel that the period of three months plus three months extension of time for filing an applica- tion for registration of the deed of assignment of patent rights etc. would be too short a period having regard to the wide relationship which Indian Companies have with foreign patentees. A total period of twelve months from the date of execution of the date of assignment will be reasonable. The clause has been amended accor- dingly.

46. Clause 69, sub-clause (3).—The amendment is of a drafting nature.

47. Clause 74.—This amendment seeks to recognise the existing Patent Office established under Act 2 of 1911 for purposes of the new Act instead of providing for establishing the Office de novo. This will make for continuity in the working of the existing Patent Office

48. Clause 77.—The Committee feel that it is necessary to pro- vide for fixing of some time-limit within which applications for re- view of Controller's decisions or for setting aside orders passed ex- parte should be made. The clause has been amended accordingly.

49. Clause 82.—This amendment is of a drafting nature.

50. Clause 84: (i) Sub-clauses (1), (2) and (5).—The Committee feel that while considering applications for granting a compulsory iicence the Controller should also take into account the price at which a patented, article is sold in the country.

(ii) Sub-clause (7).—The Committee feel that appeals from the decisions of the Controller should lie to the High Court instead of the Central Government. Accordingly, sub-clause (7) has been omitted and necessary amendment has been made in clause 116(2).

51. Clause 85.—The omission of sub-clause (Hi) will ensure ex- peditious disposal of applications for compulsory licence, because If

each such application is to be referred to the Central Government it would delay mattera

52. Clause 86.—The amendments are of the same nature as the amendments to sub-clauses (1), (2) and (5) of Clause 84 above.

53. Clause 87.—The amendments are of a consequential nature and are intended to bring the clause into conformity with the provisions of clause 5 as amended,

54. Clause 88.—The Committee feel that there should be no bar on the holder of a licence from the patentee in applying to the Con- troller for the grant of a licence of right. This brings the clause in conformity with clause 84(2).

55. Clause 89.— (i) The Committee feel that application for re- vocation of patents for non-working should be disposed of expedi- tiously. For this purpose it is necessary to incorporate a new sub- clause [vide sub-clause (4)] stipulating that such application should be disposed of by the Controller ordinarily within one year.

(II) Other amendments to the Clause are similar to the amend- ments made in clause 84 (1), (2) and (5).

56. Clause 91.—This amendment is of a drafting nature.

57. Clause 93.—The Committee feel that the decisions of the Con- troller should be subject to appeal to the High Court and not to the Central Government, Sub-clause (6) has been amended according-

58. Clause 95.—This amendment is intended to clarify that the au- thorisation to import patented articles under the clause may, in appropriate cases, be made subject to a condition as to payment of royalty and other remunerations to the patentee.

59. Clause 96: (i) Sub-clause (2).—The Committee feel that the applicant for a licence under a related patent should show that his invention has made a substantial contribution to the establish- ment or development of commercial or industrial activities in India. The sub-clause has been amended accordingly.

(it) Su'b-clause (5).—The Committee feel that appeals from the decisions of the Controller under this clause should lie to the High Court instead of th* Central Government.. Accordingly, sub-clause

(5) has been omitted and necessary amendment has been made in clause 116(2).

60. Clause 91.—The Committee feel that appeals under this clause should lie to the High Court instead of the Central Government. Accordingly, sub-clause (3) has been omitted and the necessary amendment has been made in clause 116(2).

61. Clause 99.—This amendment is of a drafting nature as the words proposed to be deleted are superfluous.

62. Clause 100.—The proposed amendments are of drafting or clarifying nature.

63. Clause 104.—The Committee ieel that where a counterclaim for revocation is made by the defendant in a suit for infringement, then the suit along with the counterclaim should be transferred to the High Court for decision. The clause has been amended accord- ingly.

64. Clause 107.—A number of witnesses in their evidence given before the Committee had strongly stressed that provision should be made in the Bill to the effect that when a person, other than the patentee of a patented process, manufactured a product covered by the patented process or imported that product, the onus of proof that the product was manufactured by a process other than the patented process should be on that person. The proposed amend- ment is intended to secure this purpose.

65. Clause 116.—The original clause in the Bill provided that appeals from the decisions and orders of the Controller regarding grant of compulsory licences etc. should lie to the Central Govern- ment. The Committee feel, as mentioned earlier, that such appeals should lie to the High Court and the clause has been amended accordingly.

66. Clause 117.—The Committee feel that in the disposal of appeals much time should not be taken and are of the opinion that the appeals should be decided expeditiously. Keeping in view this objective a time limit of one year within which all appeals should ordinarily be disposed of, has been proposed.

67. Clause 126.—The Committee feel that the constitution of a body like the Chartered Institute of Patents in the U.K. should be considered. This may take some time. Meanwhile as a first step it would be sufficient to provide that the basic qualification for a

patent agent should be a degree of a University and the passing of a suitable teat. The Committee also feel that any person who has been practising as a patent agent on the 1st November, 1966 (i.e., the date of the presentation of the Report) should be permitted to enrol himself as a patent agent if he has filed five complete specifications before that date. The Committee also feel that n" special benefit should be conferred under this clause on a person who has served in the office of the Controller of Patents as Examiner of patents or in any higher capacity. The clause has been amended accordingly.

68. Clause 131,—The amendment is necessary because there is no provision for suspending a patent agent in the proposed legislation.

39. Clause 140.—The Committee feel that a period of three months is too short a period to permit negotiations with overseas patentees and regarding the collaboration agreements in India for bringing the existing contract in conformity with the provisions of this clause. It is, therefore, considered that a period of one year for this purpose would be reasonable.

70. Clause 159.—Sub-clause (2) (xiii) has been omitted as being unnecessary in view of the amendments made in clause 116.

71. Clause 161.—The Committee feel that in the case of a patent granted in pursuance of this Clause the period of the patent should be reckoned from the date on which an application Is made for revi- val of the application for such patent under the clause as the appli- cant is not responsible for the non-acceptance of the application for a patent within the time specified for the purpose in the Indian Patents and Designs Act, 1911.

72. Clause 162.—This amendment is intended to secure that the renewal fee payable in respect of patents, under the existing Act would continue to be governed by the provisions of the existing Act. It is also intended to ensure that the suits and proceedings instituted prior to the commencement of the new Act should be disposed of under th"; provisions of the old Act of 1911.

73. The Schedule.—The amendments made are of a formal or consequential nature.

74. The Joint Committee recommend that the Bill as amended be passed.

NEW DELHI; S. V. KRISHNAMOORTHY RAO,

The 31st October, 1966. Chairman,

Kartika 971888 (S).

Joint Committee,

MINUTES OF DISSENT

I

We are constrained to append this minute of dissent to the report of the Joint Committee on the Patents Bill, 1965, because we are strongly of the opinion that all foreign patents should be abrogated,

There is no doubt that the patent system as now prevailing in the country has failed miserably to stimulate Indian inventions or encourage the development and exploitation of new inventions fur industrial uses in India.

The law relating to patents now on the Statute Book was enacted in 1911 and it is a relic of the British system to exploit India and after independence since 1948 the need for a more purposive patent law was widely felt. The Government appointed the Committee known as Patents Inquiry Committee which gave its interim report in 1949 and suggested an immediate amendment of the Indian Patents and Designs Act of 1911 to counteract the abuse of patents by foreign firms. This was given effect to in 1950 by an amendment of the said Act. The final report of the said Committee came in 1950 but the bill to amend the patent law further was introduced only in 1953 and even that was allowed to lapse on the dissolution of the First Lok Sabha. The Government was so lethargic on this issue that instead of bringing the previous Bill again in the Second Lok Sabha; they appointed another Committee in 1957 known as Ayyangar's Committee and after a long delay this new Bill was introduced in Lok Sabha in 1965. This shows how the Government is proceeding in this vital matter at snail's pace and allowing foreign firms to abuse the use of patents for their own advantage.

A study of the subject would reveal that the majority of foreigners who have taken out patents do not manufacture their patented pro- ducts in this country. These patents are used by them only to prevent the Indian manufacturer from going into production of these products.

It is rightly remarked by Justice Ayyangar that "It would not be an exaggeration to say that the industrial progress of the country is considerably stimulated or retarded by its patent system according as to whether the system is suited to it or not" (Report on the

Revision of the Patents Law by Justice N. Rajagopala Ayyangar P. 9). And as Michel observes "patent systems are not created in the inte- rest of the inventor but in the interest of the national economy. The rules and regulations of the patent systems are not governed by civil or common law but by political economy". (Michel on Principal National Patent Systems, Vol. I, p. 15).

The object of granting patents for new inventions ought to be to benefit industry and commerce. For this purpose it should not only encourage inventions but promote industry and benefit the consumer. Our present law is an obstacle to our scientists and manufacturers alike. This is evident from the fact that all representatives of the foreign firms have opposed the main provisions of the proposed Bill and the Indian firms have welcomed it.

In abrogating the patents law there is only one danger that of profiteering by businessmen bringing cheap and sub-quality medi- cines in the market. But this can be checked by Drug Control Laws. If in the last eighteen years our patent laws had compelled the foreign firms to work their patents or suffer their revocation and to make maximum use of Indian raw materials and not merely import penultimate product for merely bottling or packing it here, our pharmaceutical industry would have made tremendous progress.

How and to what extent the existing patent law has proved dis- astrous for Indian research is evident from the Haffkine Institute case. This Institute was prevented by a foreign firm from manu- facturing sulpha-drug by its own patented process while that foreign firm enjoys the protection of importing penultimate product of the drug. What a loss of foreign exchange to our nation? There is also the case of Bengal Chemicals which is contested by foreign firms although the Bengal Chemicals were granted its patent by the Government of India on the process of CHLOPARO-PANUIDE. One witness before the Committee went so far as to say that he appre- hended that there would be economic and political pressure by foreign firms on the Government of India to abandon even the pre- sent modest Bill and if they succeeded it would spell disaster for India's Pharmaceutical industry. ,

Another strong argument for abolition of patents Is that mono- polies have been created by these foreign firms and the poor con- sumers of India are bled white by very high prices for their drugs. This is evident from the statements of the witnesses before the Committee wherein they have cited the vast difference of Interna- tional prices and Indian prices of imported drugs. A witness stated

that some lime ago Libenum—a tranquillizer—introduced in the Indian market by a Swiss firm, which was importing the same during the year 1963-64 at about Rs. 5555 per kilogram C.I.F.; but the same material is said to have been imported by a firm in Delhi at C.I.F. price at about Rs. 312 per kilogram. Another firm in India has been charging in this country for Vitamin B 12 Rs. 230 per gram whereas the international price at which it is available in other countries is between 90 to 100 per gram. Similarly another firm which holds the patent for DEXAMATHA-ZONE was charging Rs. 60,000 per kilogram. But when warned by the Import Controller It readily cut the price to Rs. 16000. The case of Talbutamide patented by Hoechst is one more example of exorbitant prices charged by foreign firms. It is sold in India at Rs. 187 per 100 Tablets while it is avail- able for Rs. 50 to 60 maximum elsewhere in the world. Chloramphni- col is sold here at high price. It was rightly remarked by Kefauver Committee of U.S.A. that India which does grant patents on drug products provides an interesting case example. The prices in India for the antibiotics, Auromytfn and Aeromysin are among the highest in the world. In drugs it is the highest priced nation.

Still another reason for abrogation of patents in India is that there is no reciprocity In the matter. In Appendix "A" on page 302 of the Ayyangar Committee's Report it is stated that the number of patents taken by foreigners In India during 1949 to 1958 was 21,177. The report is completely silent on the patents taken out by Indians In foreign countries. It means and can be presumed that no patents or hardly any patent were taken by Indians in foreign countries. It is thus only one way traffic. Instead of imitating the developed countries we should see what is more beneficial for an under deve- loped country like India.

As Edith Tiltor Penrose in her book The Economics of the Inter' national Patent System points out "No amount of talk about the economic unity of the world can hide the fact that some countries with little export trade in industrial goods and few if any inven- tions for sale, have nothing to gain from granting patents on inven- tions worked and patented abroad except the avoidance of unpleasant foreign retaliation in other directions." She wisely suggested "In view of the general desirability of facilitating the economic develop- ment of 'Backward' areas it would be good policy to permit a]l non- industrial countries freely to use all foreign originated inventions in industries producing for the domestic market.

We would even say that foreign inventors do not need these exploitative patent laws to go on making research. Mr. Edsel Ford of the world famous Ford Motor .Company was asked in 1939 in

794 G of I Ex.—3.

hearing before the U.S. Temporary National Economic Committee whether inventions would continue if there were no patents, Mr. Ford replied without a moment's hesitation "I feel quite definitely, it will be carried on". Eugene Schinder, managing partner of Crenzot Huge French Arms Industry once wrote "I am quite of the opinion that there would be very little difference in respect of rapid progress if patents were abolished. With an unrestricted system the progress might commence a little later but the progress would proceed all the faster. The inventing spirit follows his ideas not for gain but driven by an inner compulsion which will not let him rest."

To sum up in the interest of our people there should be no patent law in our country so that Indian Nationals may be free to make full use of what knowledge they have. Japan had no patent law up to World War-II. Now Japan stands in line with U.K. and U.S.A. Also in Italy the absence of patent law for food drugs and chemicals has enabled Italy to make striking progress. If we look to the history of drugs, medicines and other chemicals it would be clear that many European countries which are today highly developed had their patent law only after reaching a certain stage of development. Therefore the only sensible course for us is to abrogate the patent law completely till we develop to a high degree. No threats or pressure from any quarter should deter us from this goal. Only recently the Reserve Bank brought to light the fact that a sum of Rs. 3.86 crores was remitted abroad by 44 pharmaceutical companies in the form of dividends between the year 1956 to 1965. This is an alarming state of affairs and it must be ended.

When the Bill was discussed clause by clause in the Committee we disagreed on the following clauses with the view taken by majority.

Clause 11 (2) concerns the priority dates of claims of a complete specification. In the Notes on clauses at page 91 of the Bill clause 11 says "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 ", This enlarge- ment would create many difficulties and much ambiguity. In U.K. priority dates for individual claims are not required to be indicated. The priority date is required in some cases only and not in all cases. If this clause is read with clause 12 the Controller will refer to the examiner to see whether the priority date is correct or not. The language of clause 12 is uncertain and vague. If we study carefully this clause the Controller will ask the examiner whether \\ is accord-

ing to the requirements o± me Act ana wnemer mere is any lawim ground for objection. The word 'lawful' has no meaning. If there Is any objection it can be only on legal grounds. In the Civil Procedure Code and the Criminal Procedure Code a plaint or complaint is exa- mined and the grounds or points are specifically mentioned on which the plaint or complaint can be rejected.

Clause 48.—This clause provides that import of medicine or drug or medical equipment by the Government for its own use or the production of a patented article by the Government for its own purpose shall not be regarded as an infringement of patent rights. This gives Government vast powers and no right of appeal to the aggrieved parties is provided in the Bill. We agree that the Govern- ment should be empowered to import for its own use or for any Government dispensary but this provision may hamper local indus- try also. So there should be provision of appeal to High Court or relevant tribunal against the decision or order of the Government. Justice Ayyangar had recommended on page 23 of his report that some compensation might be given to the aggrieved party.

Clause 53.—Regarding the term of patents the Bill provides in this clause that in case of inventions of food medicines the period of the patent should be ten years and in case of other Inventions fourteen years. In our opinion this period of patents is not desirable for grounds already mentioned in our general remarks for abroga- tion of Patent law. The patentee should not be permitted to exploit the consumer for such a long period. Now the conditions have changed. The means of Transport and communications have increas- ed and also the number of qualified doctors is also fast increasing. India is such a big market that within short time the patentee will be sufficiently rewarded. Hence we strongly feel that in case of Drugs and medicines and food the period of patent should be seven years and in other cases it should be 10 years from the date of patent.

Clause 55.—This clause deals with opposition to grant of patents in certain cases. Under this clause the objection would be on the ground that the invention so far claimed in any claim of complete specification was used in India before the priority claim. So far so good. But the explanation provided to this is very detrimental to Indian inventions and beneficial to the foreign importers. The Bill provides for the patent of process only and not of product. But this explanation protects the imported product brought into India before the passing of this Bill. This is highly objectionable and strikes the very spirit of the Bill.

Clause 90.—Under this clause provision is made regarding reasona- ble requirements of the public deemed not satisfied. This clause is very important. It controls three clauses 84, 86 and 89 and further explains, what are reasonable requirements, of the public. "If the Government wishes the foreign patentee to come and work his patent but the latter is reluctant to do so, the Government can either use the method of compulsory working or method of compulsory licen- sing". (Para 263 of the Role of Patents in the Transfer of Techno- logy to Developing Countries—Report of the Secretary General United. Nations). The real issue at present in our country revolves round; the position of foreign patentee. "The foreign patentees in our country are mostly exploiting our poor consumers by artificially rais- ing prices and creating monopoly of patented articles. In revoking licences of such firms there should be no "Ifs and Buts". Hence this clause should begin with the following words "If the patentee fails to manufacture in India and supply the same on reasonable terms" etc. their patents are liable for revocation. The danger of keeping clause as it is, is that the defaulting patentee is likely to take advantage of the words "by reason of the default of the patentee" and would try to show by hair-splitting of words that there is no default on his part but that the reason of default lies in the laws of other countries in which he manufactures. We also wanted to add a new clause to the Bill and moved the amendment to the effect that a tribunal like the tribunal under Income Tax Law may be provided but we were unable to carry out our amendment. Our suggestion is that the Central Gov- ernment may by notification in the Official Gazette constitute a Tribu- nal consisting of as many members as it deems fit. The Members of the Tribunal shall be persons who have in the opinion of the Central Government adequate knowledge and experience of (a) Law (b) Accountancy (c) Administration (d) Knowledge of Company Law. Among the personnel there should be a Judge of the High Court. The first court of Appeal should be Tribunal and the decision of the Tribunal could be made appealable to the High Court.

Clause 116.—This clause as passed by the Committee bolts the doors of the High Court in respect of certain orders issued by the Government or by the Controller. This is undemocratic. The word in this clause "no" should be deleted and the wording of this should be that an appeal shall lie to the High Court from any decision, order or directive issued under this act by the Central Government and to the Tribunal from any act or order or decision or directive made under this Act by the Controller.

Above are the main clauses on which we are not in agreement with the majority view of the Committee. Regarding provision

of licenses of right and compulsory licenses we are definitely of the view that in the existing situation of monopoly prices of drugs and medicines and food, the provision of compulsory licensing and licences of right is no remedy at all. It is only a hapha- zard, ineffective, and inadequate provision which will prove power- less to root out the menace of these foreign importers ransacking our country on the strength of our patent laws, draining away our foreign exchange earnings. If the Government want that there should b& quicker industrial progress then our suggestion are:

(1) As India is in the early stages of industrial development we should abrogate the patent law for some short period and watch the results for our industry;

(2) Anybody should be allowed to start manufacturing, of a product on payment of royalty. This will increase the number of manufacturers and the patentee will be bene- fited by receipt of royalty;

(3) If there is dispute about infringement such cases should be decided within 12 months;

(4) All foreign firms should be compelled to manufacture a product in India from beginning to end with major portion of Indian Capital and using as far as possible indigenous raw-material.

Then and then only India would progress in research, the scien- tists will get incentive, the poor consumers would get medicines at fair price and our nation will be spared of the needless drain of foreign-exchange.

NHW Dura; RAMCHANDRA VITHAL BADE

October 31, 1966. VIMALKUMAR M. CHORDIA

n

We regret to find ourselves in disagreement with the majority of our colleagues In the Joint Select Committee on the Patents Bill.

It has been the practice in all countries for over a century to con- fer proprietary rights upon the inventor by law and to limit in cer- tain respects what is absolutely necessary in the public interest with- out allowing those rights to be eroded by various types of exceptions.

TIIL¹ justification for conferring these rights by way of letters patent has been that inventions involve huge expenditure and, therefore, unless the inventor can see some reward, such expenditure will not be undertaken. The inventor incurs a financial risk, namely, to make it worth while for a concern or a company not only to incur expenditure on research but also to bring the invented product to the stage of commercial utility. Only if the inventor is granted by way of a proprietary right a certain period of exclusivity to exploit the patent will he undertake this risk. Only at the end of this comes the recompense or the reward to the inventor and to those who take up the invention for industrial exploitation.

Out of numerous items that are undertaken for research only a few are patented. Many of them are abandoned because their com- mercial exploitation is not economically feasible. It follows, there- fore, that the cost of an invention which is eventually a commercial success is very high indeed and, therefore, the social and economic justification for granting patents for such inventions is abundantly clear.

We are at a loss to understand how one could hold the view that the existence of a strong patent law in underdeveloped countries dis- courages scientific research and development. In fact, in the United States, the faster rate of industrial and scientific development in re- lation to industry and applied science occurred as a result of a strong patent law. The free exchange of patents has done immense good to most countries and has resulted in a rapid rate of growth inter- nationally in the field of industrial, scientific and technical develop- ment.

Unfortunately, there is a kind of schizophrenia to be found in regard to the granting of adequate patent protection for inventions. On the one hand, many people want scientific and industrial develop- ment; on the other hand, they get obsessed with all kinds of claptrap about monopoly, pricing, social justice and making medicines and drugs available cheaply to everybody all over the country. Yet they know, as we all know, that a strong patent law has resulted in the greatest advance in the manufacture of medicines, drugs and foods.

We are at a stage at which we want industries to apply their maximum resources to research and development but, if the Bill Is passed in its present form, this purpose will not be achieved. We are of the opinion that the main purpose of the Bill, which is to stimulate inventions amongst the citizens of India and to encourage research and development for industrial and technological progress,

will not be served if the Bill is passed in the form in which it has been reported by the Committee. We feel that the Bill will not create a proper investment climate in India for the rapid growth of the industry, whether by Indian entrepreneurs or by import, where necessary, of foreign technology and investment.

A number of provisions of the Bill and in particular clauses 2 (h), 3 (d), 8, 48, 53, 87, 88, 93 (3), 95 (3), 99, 100 and 102 strike at some of the foundations of widely accepted principles in this field. In our view the basic validity of patents and their advantages are almost univer- sally accepted and any restrictions on such rights should be govern- ed by the principles that apply in regard to exproprietary legislation. This is in order to ensure that such measures are only taken in ex- ceptional and clearly denned circumstances, that there is provision for full compensation and that the right of appeal to the courts of law is guaranteed. It appears to us that several parts of the present Bill run counter to these principles, tend to violate the legitimate rights of the patentee and do disservice to the general economic advance- ment of the country.

One issue on which we feel constrained to part company with the majority of our colleagues is that we see no justification for differ- entiating between various industries. There does not appear to us to be any reason for discrimination between inventions in different fields of production or enterprise. Since it is generally agreed th't patent protection advances progress, we fail to understand why an important need of the consumer such as drugs and medicines should be denied the advantage of such protection and promotion.

We see no reason whatsoever why the term of sixteen years for all patents to be found in the existing law should be shortened. On the contrary, the world trend is in the opposite direction of prolong- ing the life of patents and, in the light of this, we are not prepared to accept any term shorter than sixteen years as the period of vali- dity of all patents in all fields. This, in our view, should be without prejudice to the normal provisions to be found in the current Act In regard to a further extension of time in cases where the patent has not been found sufficiently remunerative.

We do not deny that there is room for carefully devised restric- tions on property in patents in order to guard against a situation where an unrestricted operation of patents might, on balance, result in serious damage to the vital public interest. There is need to guard, however, against throwing the baby out with the bath water by a ready resort to measures of a kind which would deprive a whole cate- gory of patentees of their rights. What, in our view, is CEtUed for la

a process where there is an examination of each case on its merits and a careful demarcation of the limits of interference and of adequate compensation for the damage suffered by the patentee.

We have carefully examined the provisions of the Bill in the light of the evidence recorded, the weight of which undoubtedly was in favour of strong patent protection. In order to bring the Bil in line with the trend of expert evidence and the universally accepted prin- ciples referred to above, some clauses would require -deletion while many others require substantial modification. Unless this is done, we are of the view that the Bill as reported by the Committee should not be "nacted.

NEW DELHI; M. R. MASANI October 31, 1966. DAHYABHAI V. PATEL

m

Although the Joint Committee have done their best to submit, their Report as expeditiously as possible, I am not sure as to whether there will be time for the present Parliament to give its considera- tion and pass the Bill as reported by the Joint Committee, if it is treated in a routine manner. On the other hand, it is my feeling that this Bill is of great importance and time should be found to pass it in the winter Session of Parliament. Should for any reason this is not possible, I would earnestly urge that the new Parliament, after the general elections, should give this Bill highest priority.

I am confining my remarks in the following paragraphs to only a few important provisions of the Bill and I feel that such sugges- tions as I have to offer are necessary in the present stage of develop- ment of the Patent Law, These suggestions are in line with the main purpose of the Bill which is to stimulate inventions among citizens, of India and to encourage development and exploitation of new in- ventions for industrial progress in the country and the flow of tech- nology from abroad into India. I also wish to emphasise that our legislation must help achieve increased production, and such increas- ed production would be possible only by stimulating investment and greater use of technology, both foreign and Indian.

Clause 48:

This clause allows the Central Government to use a patented in- vention and/or to import a product covered by a patent without such use or importation constituting an infringement of the patent and without making any provision for payment of compensation to tha

patentee. The provision thus grants unlimited powers to Govarn- ment. It will enable the import of pirated goods in circumstances of grossly unfair competition with the home industry. In the field of drugs, I fear that the loss of patent production over a wide field by placing the Government in a privileged position is objectionable. Indiscriminate import of drugs and medicines will completely dis- locate the Indigenous industry. It will cut into the rights of the pat- entee and also obliterate one of the purposes of the patent and the .licencing provisions namely, to encourage the home Industry. Fur- ther our foreign exchange situation being what it is, one has to be eternally vigilant about the use of our meagre resources. I, there- fore, feel strongly that in such cases of use or importation, Govern- ment should in fairness compensate the patentee for any loss he may incur in this behalf.

Clause 53:

This clause provides that for inventions claiming a process for the manufacture of food, medicines and drugs, the term of a patent shall be ten years from the date of the patent and In respect of other clauses of inventions, the term shall be fourteen years from the date of the patent. The present Act provides for a term of sixteen years for all patents and also that the term can be extended by a further Period of five years and in exceptional cases even to ten years, if the Government is satisfied that the patentee has not been sufficiently remunerated. The proposal to reduce the term of a patent to ten years In the case of patents relating to drugs and medicines is not realistic because the holder of a patent cannot derive benefit from the Invention during a substantial portion of the term- When a new product is produced and patented, between the date of application for the patent and the introduction of the product in the Indian mar- ket, there is very considerable time lag because further tests, research and studies will be necessary to evaluate Its efficiency, utility and adverse effects, if any. Clinical trials and tests are very difficult to carry out and the facilities are also very meagre. Considerable time elapses between the discovery of a product and Its availability In the Indian market. Specific data In this behalf was furnished before the Joint Committee. The term of a patent should be such as to enable the inventor to obtain a reasonable return for the expenses Incurred by him on research, tests, clinical trials and commercial development. A relatively long term is justified in the case of developing countries. Mr. Justice Ayyangar had recommended that the term of every pat- ent shall be sixteen years from the date of the patent. I feel that wherever a patentee in able to make out a case that his patent has not

been sufficiently remunerative, there must be a provision for extend- ing the term of the patent by two periods of three years each.

Clauses 86 and 87:

Clauses 86 and 87 deal with the endorsement of a patent with the words "Licences of right". In the case of patents other than those in respect of food, medicines or drugs as well as methods or processes ior the manufacture or production of chemical substances, it Is only after the expiry of three years from the date of the sealing of a patent that the Central Government can make an application to the Control- ler for endorsement of the patent 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 or that the patented invention is not available to the public at a reasonable price. In the case, however, of patents relating to food, medicines or drugs as well as methods or processes for the manufacture or produc- tion of chemical substances including alloys, optical glass, semi con- ductors, intermetallic compounds at present in force and patents which may be granted under the new Act, in respect of any such invention as is referred to in section 5, the patents are deemed to be endorsed with the words 'Licences of right' from the commencement of the Act in the former case and from the date of sealing of the pat- ent in the latter case. There is, therefore, discrimination and the period of three years which is to lapse before Government can ap- ply for the endorsement of a patent with the words 'Licences of right' has been done away with in the case of inventions relating to food, medicines or drugs and the processes for the manufacture ot production of chemical substances. A patent is aimed at safeguard- ing the interest of the inventor against the unjustified encroachment of his rights by third persons. In the case of 'Licences of right', the advantages accrue neither to the Government nor to the general pul% lie nor to the inventor, but only to third parties, who will be enabled to make unjustified profits, though they have not contributed towards the costs of research and industrial development. Once the short period of a patent protection ends, the subject matter of the inven- tion becomes common property. If licences are issued indiscrimi- nately and as a matter of right to several applicants, no one will be willing to invest and risk capital in working the invention. I feel that the discrimination pointed out above should be done away with and ,as in the case of other inventions, inventions relating to food, medicines or drugs and the processes for the manufacture and pro- duction of chemical substances should be liable to endorsement with

the words 'Licences of right' on an application by the Central Gov- ernment, only after an initial period of three years from the date of sealing of the respective patents.

Clause 88:

This clause deals with the effect of a patent being endorsed with the words "Licences of right' under sub-clause (5) in respect of pat- ents In the field of food, medicines or drugs. It also provides that the royalty and other remuneration payable under a licence shall not exceed 4 per cent of the net ex-factory sale price in bulk of the pat- ented article exclusive of taxes and commissions determined in the prescribed manner. Under the present Act, royalty is to be deter- mined by the Controller who is directed to secure that food and medi^ cines shall be available to the public at the lowest price consistent with the patentee's deriving reasonable advantage from the patent rights. Mr. Justice Ayyangar has also stated in his Report that it Is not feasible to arrive at a uniform rate of royalty which would be reasonable for licences in respect of each and every Invention and that It is not desirable to fix statutorily the maximum rate of allow- able royalty. Royalty is Intended to cover the expenses of research expenditure involved in the invention and also as a reasonable com- pensation to the inventor. It is not possible to fix a royalty rate under the law which will reasonably cover all cases. The proposed royalty of 4 per cent in return for the use of valuable patent rights on which vast sums have been expended on research, will not enable the patentee to recover even a part of his outlay, particularly in the pharmaceutical industry which is research oriented, highly competi- tive and requires very heavy investment in equipment, men and mat"s rials. Royalty has to be fixed having regard to the various factors Including the nature of the invention and the expenditure Incurred by the patentee in making the invention and developing it. In order that invention in the fields mentioned, may be stimulated amongst Indians, I feel that royalty should be determined by the parties in each case and regulated by the Controller.

NEW DELHI; BABUBHAI M. CHINAI

October 31, 1966.

IV

In spite of the bulky evidence produced and the time consumed by the Joint Select Committee and in spite of strenuous efforts of

Members of the Committee, the Bill as it has emerged shows a very confused attitude on the part of the majority in the Committee towards the mass of evidence which had suggested specific changes in regard to very important clauses, such of them, as related to period of patents, compulsory licence, licence of rights, rate of royalty and powers of Government to use patent etc. The witnesses opposed the provisions of certain clauses, such as clauses 48, 53, 84, 85, 86, 87 and 88, in regard to which I shall deal in detail later on. However, there was unanimity between all the witnesses and the Members of the Joint Select Committee on clauses regarding appeals. Accordingly these clauses have been amended to provide for appeals to High- Court instead of to the Central Government. This is a welcome change brought about by the Committee, Certain other minor changes are also welcome.

An initial mistake has been committed by the Government, which has created more confusion and has resulted in stress having been laid on patents for food, drugs and medicines, while patents for machinery and other articles, have in importance, gone into the back- ground. When Government as a policy measure, had decided to differentiate between one category of articles and others in respect of period, compulsory licence, licences of right and royalties etc., the proper course would have been to bring forward two separate BHI3 for them. This means there should have been one Bill for foods, drugs and medicines and the other for machinery and such other articles. May be that both could have been entrusted to one and the same Joint Select Committee. This I write on the strength of evidence that has come forward and importance given to drugs and medicines by all concerned. In my opinion if a separate Bill for machinery etc. would have been there, evidence of quite a different nature and in a fairly good amount, if not equal to that produced by the drugs industry, would have come forward. Excepting one or two witnesses from Ahmedabad, nobody else came forward to give adequate evidence in respect of textile and other machinery. What- ever information could be gathered from those witnesses it has led me to the conclusion that we have not been fair to those industries, whose patent period is fixed for 14 years. It may be argued that invitation for giving evidence before the Joint Committee was equally extended to those industries also; but the psychological atmos- phere created had proved otherwise and hence my contention and argument should hold good. In the absence of sufficient evidence not having come forth, one may be inclined to believe that every-thing provided in the Bill suited those industries. At a later stage, it may come to be realised that this was not so.

I now come to the subject of patents relating to drugs, medicines and food. Ours is a developing country and as such our patents policy in respect of these should be governed by the following factors:

A. It should encourage research and inventions within the country.

B. It should stimulate a speedy growth of the patented drugs and medicines in the country both in the public and private sectors together with the growth in respect of un-patented medicines or of those whose patents have lapsed.

C. The standard of quality of the drugs and medicines be strictly maintained and availability of these be made easy and at reasonable prices.

In what manner the Patents Law of the country be formulated, keeping in view a period of next 20 or 25 years before us, to attain the above mentioned objective with due incentive to the industry, must be the concern and responsibility of all well-wishers of the country. To attain these objectives, I believe, the following steps are necessary: —

1. To create conditions and take steps where by Research Insti- tutes may be speedily developed on a large scale both in the private and public sectors.

2. To create conditions whereby foreign collaboration with know- how and patents crystallised on research carried in outside countries, be encouraged to come in on a fairly large scale, keeping in view the country's best interests in regard to availability of useful drugs and medicines with due incentive to the collaborators and patentees.

3. To create conditions for proper rewarding of our scientists.

From my point of view, the above quoted conditions can be creat- ed in the following ways: —

1. The period for patents based on research done within the country and of those which are outcome of outside research needs to be different. It should be longer in case of Indian research based patents, may be whether such patents are a result of research in pub- lic sector or private sector, with or without foreign collaboration. While determining the period of patent following main factors need to be taken into account:—>

A. In how much time the industry is expected to be developed as research^based Industry, and develop to a stage where research exr penditure can be expected to become part and parcel of the regular industrial production.

B. In public sector industry or in Government Research Institutes, research is to be confined to laboratory and pilot plant stage or it is to be taken up for full commercial exploitation mainly on Its own and commercial exploitation is to be or not to be handed over to any third party as holders of licences of rights. The same should apply to private-sector which may run its own research institutes on the same footing as those of public sector. India is far more backward in research establishment and can be expected to reach a competitive standard in this respect In next 20 or 25 years. Period of Patent should therefore be fixed keeping in view this main factor.

C. In case of patents, based on foreign research, the period should be judged and fixed having in view not the research expenditure side, as it forms part and parcel of a highly organised industry outside this country, but on the factors such as capital Investment, period required to put through the drugs in the market, after it has passed through formalities of clinical tests etc. and expected return on capital after the drug is put in the market, as also the extent which the drug is expected to be kept in use. The period should be sufficient to give a patentee place of operation in the market for atleast five years after the drug having been introduced In the market.

Keeping In view all the above considerations, I am of the empha- tic view that if patents are a result of research within the country, the period of ten years from the date of patent is insufficient, and to remedy this there should be a right of renewal for another four years after the ten year period is over.

2. As for other patents, whose inventions have been done outside the country, but which are granted for exploitation within our country ten years period is reasonably sufficient, as the main consideration is to put the drugs on economic footing in the market and this can be accomplished within this period. However, to accomplish all this, it is very essential that the industry In all its aspects is fully run by the patentees. But Government seema to have no faith In this way of running the industry. So also the majority view of the Committee seems to have developed the idea not to differentiate between the two types of patents as explained above, but to try to treat a lower period of patents as In the best Interests of the people.

The majority view has not remained satisfied mainly confining to the question of period, but they have maintained in their original forms clauses 87 & 89 of the Bill, which not only cut at the very root of the base of the Patent Law theory, but will from its very inception reduce the patentee (whether in public or private sector), to a mere agent of the holder of licences of rights created by clause 87 and that too according to clause 88 on a mere payment of royalty (never ex- ceeding 4 per cent of bulk sales) to the patentee. The matter does not end here and in the case of patents granted before the commence- ment of this Act this clause shall be applicable, from the date of commencement of the Act, while on future patents it shall be appli- cable from the date of sealing of the patent. It is further put in that the Controller has not to go into the financial and technical capability of the applicant for licences of rights.

To me it Is very clear that the majority view of the Committee Members has not been able to realise the serious consequences of clauses 87 & 88 as put In the Bill. When one goes a little deeper into the matter, one comes to the following conclusions: —

(1) That if these clauses are accepted as they are, our public stc- tor research based patents will never be possible to be worked on a commercial scale on their own within the country. The example oi Pimpri is there. The invention of Hamycine will not be able to be worked by them independently even for the shortest period after this Bill is passed into an Act. According to clause 87, any person can get a licence of right, on a royalty, which will be less than 4 per cent, payable to the Hindustan Antibiotics. Further their negotiations with America and other countries, by which they expect to get 7 per cent royalty from them is going to get serious set back. This ireans that the research based Industry will merely work as invention agent of holders of licences of rights, and under circumstances the scientists and other staff employed will not have fair chance of becoming ade- quately experienced and rewarded.

(2) No foreign collaborator will come forward to start research- based drug industry in the Country as he is not expected to risk huge amounts for such holders of licences of rights who will reduce the foreigner as mere collector of royalties on his research.

(3) Foreign patent holders, will not be coming forth enthusiasxi- cally for patents, which are results of inventions done outside India, as they have been uptil now, for securing patents for drugs which require huge investments, as from the very day of sealing of the

patent, they will be exposed to become mere agents of the holders of licences of right, and as such they will not be able to make any reasonable earning by entering into the market on their own. Their faith in Government which is very essential in matters of patents, as they are a reciprocal entity, will be badly shaken as the clauses as they are will affect old patents also. In this respect the Government has been so careless as not even to bring forth an explanatory note giving grounds on the basis of which they can justify such applica- tion on old patents. Unless It is proved that there are a very large number of patents the product of which is In heavy demand and there are persons capable of becoming holders of licences of rights possess- ing required know-how, putting in of such a clause will be grossly detrimental to the interests of the growth of the industry.

As a result of all this only such patents will be taken in future, the products of which may be expected to be produced with medium- sized capital investment and with easy marketing possibilities. Such patentees will be on the look out for an applicant of licences of rights who can along with royalty pay for know-how and on getting a good amount for this will not care to put the products from their own factories into the market. Under such conditions our country will have a set back and may remain a third rate country in the produc- tion of medicines.

(4) As licences of rights can be granted from the date of sealing of the patent, on practical grounds no applicant can come forward unless he has stolen the know-how while the patent was in process of being granted and he is fully in know of the process and its possibi- lities. The Controller too will be faced with serious difficulties. The assessment for possible sale of the drugs cannot be made unless it is put in the market for some time. As such no data will be available to the Controller regarding the parties on the basis of which rates of royalties can be fixed. The financial and technical capacity cannot be questioned by the Controller and as such this may result in creat- ing other problems of malpractices etc

Having all these factors in view, the only remedy is to amend clauses 87 & 88 suitably. In my opinion clause 87 should be amended as follows: —

A. It should not be applicable to old patents.

B. In case of new patents it should not apply to patents, which are result of research carried out in any research institute in India, otherwise we will never be able to put our research orr sound footing.

C. ,In case of i other patents, the right should not accrue from the date of sealing of the patent but after three years from the date.of sealing of the patent only as within this period everything will be clear to all parties concerned.

As for royalty the rate should be a maximum of 6 per cent and not 4 per cent as envisaged in the Bill. The reasons are that in ceitain cases there may be necessity for giving, higher rates, ilt. should .also be borne in mind that holder of licences of right is-a-sort of a-middle man with no risk or little risk while the patentee bears all initial risks. As a matter of fact more protection is needed to be given to •such patentees. Giving more -benefits to a middleman than to the .originator has'never b"en heard of. It is also totally forgotten that .•scientist Is the backbone of the original patentee and his chances of being rewarded adequately will go down if the concern Wherein he .works is reduced merely to a royalty collecting concern from the very day :the patent is-sealed "nd that too at * low rate 6f always less than <4 per cent.

There is another clause 48, which should either be deleted or suitably amended. Sub-clauses (a), (b) and (c) of this Clause empowar the Government to make use of patents for their own purposes without compensation. This raay.be applicable in-jcaseof emergency suchaS'declaration of war or epedemics but not otherwise. When our future policy is for expension of public sector, whose products we can always use in such situations and nvhen ior.out side invented patents we are providing for production by holders of licence^ of .rights, even in an emergency such a step is not-.expected .to be required. The clause as it stands will only.scar,e #wqy /the patentees with JIO real benefit to the Government.

Evidence had also been forthcoming for abrogation of patents in case of foods, drugs and medicines. But the plea put forward was mainly that prices will go down and there will be increased availabi- lity of drugs. But abrogation under present conditions* can* only lead -.to production of sub-standard drugs endangering the health of the people. As a matter of fact to relate prices of drugs with patents is a very wrong notion. Prices,have very little to do with patents. Un- patented standard quality drugs fetch more prices than even patented or low quality unpatented drugs. The example Of Sandoz Ltd., is there. They produce no patented drugs. Even their distilled water is of such high standard that it is taken for Defence requirements at higher prices. About 80 per cent of drugs produced in the country are unpatented or those whose patents have lapsed. Therefore prices have nothing to do with patents. Hence abrogation on this ground is

un-called for and will lead to malpractices and deterioration. Abro- gation can be proper only when highly developed research institutes come up and develop in the country on a fairly large scale. In that case research Institutes can mainly be taking the Inventions upto Pilot Projects and then hand over to large and medium sized, or small size institutions or firms as the case may be for commercial ex- ploitation. Such enterprises will be free from research expenditure side of it and can be made to work as other industries work. But such conditions are not there in the country at present and are not expected to be in the near future.

A section of the evidence had pleaded for a seven year patent only. As a matter of fact they were those who actually pleaded for abroga- tion in one breath and for seven years period in the other. They also pleaded for licences of rights from the very date of sealing even when the period is only seven years. If their view is accepted it will clearly amount to total negation of patent in the name of patent. The net result of it will be reversing the entire process of growth of the industry. Members of the Committee who agreed with such a view for seven years probably did so without going into the econo- mics of working of patents. Similarly foreign evidence pleaded for 16 to 20 years period for patents, which if accepted will create foreign monopolies, retarding growth and research in this country. Such a view is not suitable for a developing country like ours.

I now sum up my case as follows: —

Clauses 53, 87 & 88 as they stand at present are very detrimental to the growth of the drug industry in the country. The net result of these will be that research will be out of question in the private industry while research based public sector will work merely as in- vention agents for holders of licences of right. For outside patents progress will be confined to medium sized industries with very slow growth. To put things right my above quoted suggestions are sum- med up as follows: —

1. Indian research based patents must be for ten years from the date of patent with further right of renewal for another four years.

2. Patents for outside inventions and applied for working within India, should have a period of ten years only.

3. There should be no licence of right in case of Indian research- based patents. The patentee should be allowed to work it fully for the whole period of the patent.

4. In case of other patents licence of right should start only after three years from the date of sealing of such patents.

5. Royalty payable should be upto 6 per cent in place of 4 per cent.

6. The Controller should have the power to enquire into the finan- cial and technical capacity of applicant for licences of rights with power to refuse in case these are not found suitable. There should be set rules for guiding the controller in this respect.

7. Clause 48 (a), (b) & (c) should be applicable in case of emer- gencies like war and epidemics. In other cases compensation should be paid to patentee.

All the above suggestions from (1) to (7) require amendments of clauses 48, 53, 87 & 88.

I had moved amendments more or less on the above lines, but these were not accepted. I, however, would have been badly falling in my duties if I had not brought forward all my objections, views and suggestions in the form of this note of dissent. My proposals are aimed at development of the drug industry in the best interests of the people, without injuring the interests of the patentees and thereby safeguarding the required growth essential for the country. It should hf viewed from this angle only A very important factor which should also not bo ignored and should be given very heavy weight for consideration is that our Bill provides for process patents and products out of the patented process only are protected. There- fore even when a patent is for ten years with right of renewal for four years in case of research-based industries and merely ten years in other cases, there are always possibilities for holders of such patents to face competition in case a new process is evolved to pro- duce same type of products in another way. Thus the monopoly period, which is always disturbed by endorsing patent with licences of rights, will further be liable to be facing competition in other ways. As such proper safeguards as suggested by me are all the more essen- tial to place the industry on sound but reasonably competitive llnea with due safeguards for research possibilities etc. for a coming period of 20 to 25 years. This cannot be accomplished by passing the Bill in its present form particularly in regard to clauses 48, 53, 87 and 88 of the Bill.

NEW DELHI; KASHI RAM GUPTA October 31, 1966.

V

The law relating to patents has been in force in India for a very long period. But so far it has not achieved its main purpose of sti- mulating inventions among Indians and encouraging the develop- ment and exploitation of new inventions for industrial progress in

this country. On the other hand the patent law in India has only afforded protection for foreigners for establishing monopoly right for selling their products at fancy prices in India. If the total num- ber of patents granted in India since the introduction of this law is considered it will be found, that more than &0 per cent were granted to foreigners. In advanced countries, the position is quite the reverse; foreigners hold only a small percentage of the patents granted.

According to knowledgeable sources, the need for, as well as the aims and achievements of any law in any country, are decided by the social and economic conditions prevailing and the collective needs of the people therein. For the patent law to be advantageous to a country, there are three basic requisites: —

(a) the level of scientific and technological research should be such that inventions beneficial to the people can flow freely;

(b) the technological potential as well as current industrial activity should offer ample scope for developing the inven- tions into large scale- production of goods; and

(c) trie general economic and social conditions prevailing should be able to provide means for initiating new indus- tries and assure a popular demand for the goods produced.

other processes; will accelerate the development of India into an advanced country.

Even in America, the extensive development of chemical industries dates from the time, when, during World War I, the United States Government confiscated the German patents and allowed American manufacturers to use them.

In the conditions obtaining in India today, it is in our best interest, to take advantage of the collective experiences of the advanced countries, modifying them to suit our local conditions. In this effort, the patent law will only offer effective brakes and hence the neces- sity of doing away with patent law altogether. May be, after a decade or two, it may become necessary for us to enact a patent law; but not now.

The argument that patent protection affords incentive for indi- vidual inventors is rathar old and does not hold water in tha modem world, Modern scientist* work in laboratories owned by large- cor- porations- or by State and every invention is; the result of tha labourer* of a team or group. In India especially, all the fundamental research work is done in centres owned or financed by the government. So the question of compensating the individual inventor does- not arise at all.

Having faiiad in this* prime objective, it was stili open to- u", to provide that life saving drugs, foods and beverages,, pesticides and insffctisides, ba made non-patentable. The Bill fails In. this, respect also.

The drug prices in India are in many cases, the highest in the world while the living standard of the people is the lowest; as was established by the American Senate Inquiry headed by Senator Kefauoer. While trying to develop our own drug industry, we could have imported drugs from wherever we can get them at the cheapest rate and made them available to our people. And our own industry also would develop unhindered by foreign patent monopolies.

In India we are in the grip of a permanent food crisis. We import large' quantities of food from America at the cost of hard earned foreign exchange and much self respect. Development of agriculture is therefore an urgent necessity. In view of this pesticides and insecticides also should have been made non-patentable, so that they are available at cheap rates to the producers of our food crops.

fri these days when preparations like Ovaltine, Horlichs are used bv all people irrespective of whether they are babie3 or invalids or

old, food or beverages as a whole should have been taken out of the pale of patent law.

Although clause 5 stipulates that "the patent shall be granted only In respect of claims for the method or process of manufacture and In respect of claims for the substances when produced by such methods or process", yet in Clause 107 (2), it is stated that "any sub- stance of the Chemical composition or constitution as the first men- tioned substance shall be presumed, unless the contrary is proved, to have been made by the aforesaid patented method or process." Thus clause 107 almost concedes patent protection for substance and defeats one of the main objects of the Bill by putting the onus on the defendant to prove that his process is different.

The term of patents has been provided as ten years from the date of patent for drugs or food and 14 years frr other inventions.

The term of 10 years for drugs is too long. In modern times, many a new drug becomes obselete within three or four years and as patented drugs are sold at 17 to 20 times the cost of production, the period of 10 years is too long for drugs. This should be reduced at least to 7 years in the case of drugs and 10 yearR in the case of other inventions. The provision regarding the existing patents are also excessive.

Royalty payable to the original patentee in case when a license is granted for the use of patent should not, it is provided, exceed four percent. The tendency in our country is to make the ceiling rate the minimum. Hence the ceiling rate should be only 2 per cent.

More than 90 per cent of our patents are held by foreigners, and this royalty and other charges will be a huge drain on our foreign exchange.

According to Reserve Bank of India Bulletin (November, 1964) the foreign firms had since 1958 invested Rs. 5 crores and had by 1964 already taken out of the country Rs. 4.9 crores in foreign exchange in the form of royalties, charges of technical aid and profits.

Most of the leading scientists who are working in our national institutes have expressed views that arc similar or very near to those expressed above. But our government has been influenced more by the views of foreign monopolies and their Indian collabora- tors than by those of people who are interested in genuine develop- ment of our national industry. This is the tragic situation today.

NEW DELHI; October 31, 1969,

P. K. KUMARAN K" K' W A H I ⁰R

DINEN BHATTACHARYA

While appreciating that the Joint Select Committee had made some very valuable improvements in the Patents Bill, 3965, we regret we still have to record our minute of dissent and to recommend further amendments in the Bill incorporating certain fundamental changes. Before we refer to the specific clauses of the Bill on which we differ from the decisions of the Committee, we would like to deal with certain fundamental concepts of the patents system.

Patents are statutory grants which, in return for the disclosures of an invention, confer on the inventor for a limited time the ex- clusive privileges of working an invention and selling the invented product. The theory on which the patent system is based Is that the opportunity of acquiring exclusive rights in an invention stimu- lates research and technical progress. Further it induces an Inventor to disclose his discoveries instead of keeping them ag a trade secret and offers a regard for the expense of developing inventions to the stage at which they are commercially practicable. Lastly, it provides an inducement to invest capital in new lines of production. The his- tory of industrial development seems, on the whole, to have justified this theory. Patents are not created in the Interests of the Inventor but in the interest of the national economy.

It has been well established that patents are a form of industrial and intellectual property. Therefore, a grantee of a patent must be secured the enjoyment of his patent rights subject to reasonable restrictions. If his rights are expropriated, such expropriation must be done only in the public interest and must be subject to the paten- tee being granted adequate compensation.

It is recognised that there is need for a more comprehensive law due to changes in economic conditions within the country and the development of technology and patent laws throughout the world. However, the main purpose of the Bill, which is to stimulate inven- tions amongst citizens of India and to encourage development and exploitation of new inventions for industrial progress in the country and the flow of technology from abroad into India is not likely to be achieved if the Bill is passed in the form in which it has been report- ed by the majority decision of the Committee.

We have examined all the evidence, which has been recorded before the Committee, of industry organisations and experts, both legal and technical, from India and abroad. The field of activity most affected by this Bill is the pharmaceutical industry, and to a certain extent, the chemical industry. It is on record that the phar- maceutical industry has developed according to the targets laid down

in the Third Five Year Plan and it has programmes of expansion in the "Fourth Five Year Plan. We apprehend that'the growth of thia industry, particularly the inflow of foreign capital and technology, will be adversely affected unless some of the provisions of the Bill are deleted or suitably amended. We also .feel that the development d'f research, particularly basic research in the Industry, Is also likely to be adversely affected.

It has been urged that the price3 of pharmaceutical,products are very high in India and it has been suggested that the patents system te responsible for it. After hearing the evidence we feel that it WouKl'hdt'be-correct to say that the patent system,is responsible for the alleged high prices or high costs of pharmaceuticals In India. In (fact, the industry organisations as also foreign experts have submit- 't"S-statements 'before 'the Committee which have proved conclusively •Mffltt'the^pfiees-of drugs and Pharmaceuticals are lower in India thaa tn m'any other countries and those statements have not :been contro- verted. The* e are various other contributory iactors which have to "be taken irito account in ascertaining the costs of drugs and the prices. These factors have also been brought out in the .evidence on record arid In particular In the Report of the Development Council £or Drugs and Pharmaceuticals 1962-63. In any case, we feel that the Gaveornmftnt has enough powers to examine the coat structure and flxiprtces of

We wish to emphasise that our ultimate purpose is and should (be to achieve increaaedproductilm and "that the Patent Law should -bersUchttUj to be conducive to Increased prorlu'ctlOn, Inflow oltechno- .Iqgy, increbsed national wedlth anti inventive dbllrfcy "rid not to create a ; situation .which rretards development. 'For i increased pro- duction, there iano getting atway from the i act'thtft' we shall continue to need for some time inflow of foreign know-how, technology and investment. We cannot afford to -dany ourselves the 'benefit dffthe rapid developments that are taking place in the advanced countries 'ol the world in every Reid of industrial activity, includinE -the deve- lopment of new and Iffe*-savlng wonder drugs.

The amendments to the Bill which we have suggested will, while creating a proper investment climate in,India for the rapid growth of the pharmaceutical and chemical industries, both by Indian entre- preneurs and by import of foreign technology and investment where

necessary, also ensure that no monopolistic tendencies fir* 'allowed to be created. We consider that the provisions of the Bill tinder clauses 48, 53, 87, 88 and 102 should be suitably amended-. In the following paragraphs, we are dealing with each of theae^ dauses separately.

Clause 48—Patents not infringed when used by Government:

794 G of I Ex.—7,

We therefore feel that with the exception of sub-clause (d) of this clause which deals with the use of patent for purpose of experiment or research, sub-clauses (a), (b) and (c) of clause 48 should be deleted.

Clause 53—-The term of a patent:

This clause, as reported by the Committee, provides that for in- ventions claiming a process for the manufacture of food, medicines and drugs, the term of a patent shall be 10 years and in respect of both clauses of the inventions, the term shall be 14 years from the date of filing of the complete specifications. The existing Act provides that the term of all patents shall be 16 years and also that the term of all patents can be extended to a further period of 5 years and in exceptional cases even to 10 years if the Government is satisfied that the patent has not been sufficiently remunerative.

The term of a patent must be looked at from various points of view. Tt is felt that the period of 10 years is not sufficient either to encourage the inflow of technical know-how or to encourage Indian scientists or entrepreneurs to undertake research, particularly basic research. The climate, it appears, is now ripe for inflow of foreign technical know-how on sufficiently large scale. The 10 years period will be a deterrent to that flow. It is recognised in all quarters that basic research must be encouraged in India. The factors which have to be taken into account are the following:

(a) Basic Research involves large capital outlays and large recurring expenditure and a long time to develop to fruition.

(b) The clinical tests and trials in India are very difficult to carry out and the facilities very meagre. Therefore, they take a longer time. Dr. Govindachari has stated in his evidence that they take even 6 to 8 years. This view was supported by Dr. Chipalkatti of the Shri Ram Institute.

(c) The availability of finance, particularly Indian finance is difficult and it takes time to attract Indian finance to exploit a patent commercially.

(d) The time taken for converting the invention from the stage of pilot plant production to commercial production takes a much longer time in India because of many restrictions and also due to non-availability of various resources and facilities.

It is also on record that there is a considerable time-lag between the discovery of a product and its availability in the local market. Specific data in support of this statement has been furnished before the Committee. Hindustan Antibiotics of Poona took several years to discover Hamycin and Dermostatin and to manufacture just a few kilos of the product. „ There is no technical field where the time necessary for introducing new inventions is as long as in the pharmaceutical industry and it would therefore, be logical that in this risky and difficult domain the duration of patent should be even longer if not the same as in the field of other classes of invention. The term of a patent should be such as to enable the Inventor to obtain a reasonable return for the expenses incurred on research, tests, clinical trials, and commercial development.

Reduction in the term of a patent to 10 years as decided by the Committee will surely put India out of step with the general trend of patent legislation in other countries. It is on record that out of a total number of about 80 countries, only 2 countries (Libya and U.A.R.) make a distinction between different classes of inven- tions in so far as the term of a patent is concerned. Further, out of 81 countries of the world, which have a patent law, only Libya and U.A.R. provide for a term of 10 years in respect of patents for Pharmaceuticals but the patent laws of these two countries have provisions for renewing the term of the patent by a further period of five years.

A relatively longer term of protection is justified in the case of developing countries where the owner of the patent will generally need more time for studying the possibilities of working the paten- ted invention in the country and for making the preparations for its working. If, after these studies and preparations, the remain- ing term of protection of the patent is short or inadequate for lucra- tive exploitation, this circumstance might substantially diminish the attractiveness which a patent should have for industrial invest- ment in the country. The general trend throughout the world in respect of the period of a patent is 16 to 18 years. Justice Ayyangax in his report has recommended that the term of patent shall be 18 years and he did not make any distinction in the term of a patent between different classes of inventions.

The proposal to reduce the term of a patent is, in our opinion, unrealistic particularly in the case of drugs and medicines. We feel that the barest minimum period should be such as will give reason- able reward to the inventor. We therefore, strongly recommend that whenever the patentee is able to make out a case that his

patent has not been sufficiently remunerative, the term of a patent should be extended by two periods of two years each.

Lastly we are of the view that this clause should not be made retrospective in operation. This will affect vested rights. In any case, we feel that such a step is unfair. Companies which have made investments and calculations while considering the 16 years' duration of the patents in question will incur losses if the duration is shortened]

Clause 87 and 88: Licences of Rights—Ceiling on Royalties:

Clause 87 provides that every patent in force as well aq every patent granted after the commencement of the Act relating to articles of food and medicines and the processes for their manu- facture shall be deemed tp be endorsed with the worjds "Licence of Rights",; ,

end the country's economy will surfer. Can we afford this,in ffie, , present state of our economy? The Controller has no authority to look into the technical and financial capacity 1'of )*he"apptKiirantpdT neither is he 1 Obligeditto ascertain, ^wheth^rf the¹ ^rJpli^amfeirf-vBckildi srrrit obtain an industrial licence landed the Ihdustrie"iF(i)eveldPMent"JSiyiH lo Regulation) Act. Indeed;/ small-e^tpftpreneimi cHbul^ puftl utp sptfaiioo oV\ units for .which, nd DindastnJ^rilic^Mces-^Ee^etjtiiredto Eaanaoil gnibiegoJI • " ' (• f ji " ! • " :, o r iT

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will affect the investment climate, production, indigenous research •nd above all, the quality of production.

The provisions of the clauses 87 and 88 introduce for the first time in the history of patent legislation a new concept of "Licences of Right" which is unheard of in the history of patent legislation. No country in the world has in Its patent law such a provision. Regarding licences of right, Justice Ayyangar was of the opinion that It would be sufficient and desirable that the right to apply for endorsement "Licence of Right" should be restricted only to the Central Government as hitherto. He further observed that as inventions in the fields of drugs and medicines touch public health, it was very necessary that there should be a guarantee that persons who are permitted to work the inventions are those who are quali- fied to work them honestly and efficiently. We are in respectful agreement with the opinion of Justice Ayyangar.

It is often said that if the licensing provisions contemplated in clauses 87 and 88 are enacted, there will be increased production, greater competition and the prices of medicines will come down. This is totally unwarranted assumption from the economic point of view. If, for example, one person can produce large quantities of a product, he can achieve lower cost of production than if 20 persons are allowed to manufacture the same product each in a small quantity. Besides, it is also doubtful whether the grant of indiscriminate licences of right to several persons in respect of one patented pharmaceutical will result in the manufacture of drugs and medicines of standard quality. The drugs Controller does not have adequate machinery to check the manufacture of sub-standard drugs and it is feared that if Clauses 87 and 88 are enacted, sub- standard drugs of doubtful potency may appear in the market.

Take for example the case of Hamyein discovered by the Hin- dustan Antibiotics Limited after several years of research and considerable research expenditure. The processes to manufacture these products are patented in India and abroad. If Clauses 87 and 88 as reported by the Committee are enacted, any person in India can apply for a compulsory licence, as of right, under the patents of Hindustan Antibiotics Ltd. Will this not affect the re- search work of Hindustan Antibiotics Limited adversely? Will they obtain adequate compensation for the entire research expen- diture incurred if they are granted the maximum royalty of 4 per cent as proposed in Clause 88? What is more significant to note is that Hindustan Antibiotics Limited has been instructed to nego- tiate for the exploitation of their patents in other countries with

foreign firms and have demanded royalty of about 7-J per cent— What is sauce for goose is sauce for the gander.

Since 1965, the country has passed through an economic crisis, the major indicator of which has been the rising trend of prices. The official index of wholesale prices computed by the Economic Advisor shows a rise of nearly 50 per cent between 1963 and 1964. The pharmaceutical industry has been successful in holding the price line during these years.

Clauses 87 and 88, if enacted will erode industrial property rights and strike directly and crucially at the industry and its capacity and incentive for the discovery of new and improved medicines, They will adversely affect firms with expensive research laborato- ries because frequent experimental failures and the risks of obso- lesence can be supported only if an invention promising commer- cial success is adequately protected. No one will take the risk of research and discovery unless so protected. These firms who will continue to do research work will tend to by-pass the patent system altogether and resort to secrecy.

As regards the ceiling on royalties, our submission is that in any event, royalty payments have been strictly regulated by the Gov- ernment of India administratively from time to time and that for the last 4 years royalty has not been allowed to exceed 5 per cent. Further payment of royalties to the Patent holders within India can also be regulated by the Controller and by the appeal provisions ensured that It is not unreasonably high.

The framers of the Model BIRPI law have stated that a compul- sory licence should only be granted subject to payment of adequate royalties compensation commensurate with the extent to which the invention is worked. They have further stated that as it is practi- cally impossible to predict at the time of the grant of licence, of what economic value it will be to the licencee, a lump sum compen- sation would be haphazard and arbitrary. Justice Ayyangar has also stated In his Report that it is not feasible to arrive at a uniform rate of royalty which would be reasonable for licencee in respect of each and every invention and that it is not desirable to fix statu- torily the maximum rate of allowable royalty.

One cannot dispute the fact that at present the country does not possess sufficient know-how to manufacture a majority of the com- mon and important drugs in use at present. Now, know-how is connected with patent protection, In that, It is only after the in- ventor has been assured that his invention has adequate protec-

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ttjgnfJihatThe,^^ walcie.effpr^ ilot plant production and from pilot plant production to a commercial iieasitdliihypi

Clause 102—Acquisition of inventions:

This clause gives powers to the Central Government to acquire the invention for a public purpose by notifying its intention in that behalf. It is significant to note that this clause recognises the principle that a patent is a species of intangible property and hence provides for compensation if such property is acquired for a public purpose.

We are firmly of the opinion that such complete expropriation of patent rights is undesirable in the present economic conditions of the country and there is no legitimate reason to do so. In view of the ample means provided for in the Bill under clauses 99 and 100 which enable the Government to make use of a patented invention we feel that this clause is unnecessary and should be deleted.

NEW DELHI; P. D. HIMATSTNGKA

November 1, 1966. Dr. L. M. SINGHVI

V. B. GANDHI DR. C B. SINGH SHAM LAL SARAF P. C. BOROOAH.

794 G of I Ex.—6,

THE PATENTS BILL, 1965

(AS REPORTED BY THE JOINT COMMITTEE)

ARRANGEMENT OF CLAUSES

CLAUSES

CHAPTER I

PRELIMINARY

1. Short title, extent and commencement.

2. Definitions and interpretation,

CHAPTER II

INVENTIONS NOT PATENTABLE

3. What are not inventions.

4. Inventions relating to atomic energy not patentable.

5. Inventions where only methods or processes of manufacture and substances when produced by such methods or pro- cesses patentable.

CHAPTER III

APPLICATIONS FOR PATENTS

6. Persons entitled to apply for patents.

7. Form of application.

8. Information and undertaking regarding foreign applications.

9. Provisional and complete specifications.

10. Contents of specifications.

11. Priority dates of claims of a complete specification.

CHAPTER IV

EXAMINATION OF APPLICATIONS

12. Examination of application.

13. Search for anticipation by previous publication and by prior claim.

CLAUSES

14. Consideration of report of examiner by Controller.

15. Power of Controller to refuse or require amended applica- tions in certain cases.

16. Power of Controller to make orders respecting division ot application,

17. Power of Controller to make orders respecting dating of application.

18. Powers of Controller in cases of anticipation.

19. Powers of Controller in case of potential infringement.

20. Powers of Controller to make orders regarding substitution of applicants, etc.

21. Time for putting application in order for acceptance.

22. Acceptance of complete specification.

23. Advertisement of acceptance of complete specification.

24. Effect of acceptance of complete specification.

CHAPTER V

OPPOSITION TO GRANT OF PATENT

25. Opposition to grant of patent.

26. In cases of "Obtaining" Controller may treat application as application of opponent.

27. Refusal of patent without opposition.

28. Mention of inventor as such in patent.

CHAPTER VI

ANTICrpATION

29. Anticipation by previous publication.

30. Anticipation by previous communication to Government.

31. Anticipation by public display, etc.

32. Anticipation by public working.

33. Anticipation by use and publication after provisional speci- fication.

34. No anticipation if circumstances are only as described in sections 29, 30, 31 and 32.

CLAUSES

CHAPTER Vn

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

35. Secrecy directions relating to inventions relevant for defence purposes.

36. Secrecy directions to be periodically reviewed.

37. Consequences of secrecy directions.

38. Revocation of secrecy directions and extension of time.

39. Residents not to apply for patents outside India without prior permission.

40. Liability for contravention of section 35 or section 39.

41. Finality of orders of Controller and Central Government 42. Savings respecting disclosure to Government.

CHAPTER VIII

GRANT AND SEALING OP PATENTS AND RIGHTS CONFERRED THEREBY

43. Grant and sealing of patent.

44. Amendment of patent granted to deceased applicant.

45- Date of patent.

46. Form, extent and effect of patent.

47. Rights of patentees.

48. Patent rights not infringed when used for certain purposes.

49. Patent rights not Infringed when used on foreign vessels, etc., temporarily or accidentally in India.

50. Rights of co-owners of patents.

51. Power of Controller to give directions to co-owners.

52. Grant of patent to true and first inventor where It has been obtained by another in fraud of him.

53. Term of patent.

CLAUSES

CHAPTER IX

PATENTS OF ADDITION

54. Patents of addition.

55. Term of patents of addition.

56. Validity of patents of addition.

CHAPTER X

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

57. Amendment of application and specification before Con- troller.

58. Amendment of specification before High Court.

59. Supplementary provisions as to amendment of application or specification.

CHAPTER XI

RESTORATION OF LAPSED PATENTS

60. Applications ±or restoration of lapsed patents.

61. Procedure for disposal of applications for restoration of lapsed patents.

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

CHAPTER XII

SURRENDER AND REVOCATION OF PATENTS

63. Surrender of patents.

64. Revocation of patents.

65. Revocation of patent or amendment of complete speci- fication on direction from Central Government in cases relating to atomic energy.

66. Revocation of patent in public interest.

CHAPTER XIII

REGISTER OF PATENTS

67. Register of patents and particulars to be entered therein.

68. Assignments, etc. not to be valid unless in writing ana registered.

69. Registration of assignment, transmissions, etc.

70. Power of registered grantee or proprietor to deal with patent.

CLAUSES

71. Rectification of register by High Court.

72. Register to be open for inspection.

CHAPTER XIV

PATENT OFFICE AND ESTABLISHMENT

73- Controller and other officers.

74. Patent office and its branches.

75. Restrictions on employees of patent office as to right or

interest in patents.

76. Officers and employees not to furnish information, etc.

CHAPTER XV

POWERS OF CONTROLLER GENERALLY

77. Controller to have certain powers of a civil court.

78. Power of Controller to correct clerical errors, etc.

79. Evidence how to be given and powers of Controller in

respect thereof.

80. Exercise of discretionary powers by Controller.

81. Disposal by Controller of applications for extension of time.

CHAPTER XVI

WORKINGI or PATENTS, COMPULSORY LICENCES, LICENCES OF RIGHT AND

REVOCATION

82. Definitions of "patented articles" and "patentee".

83. General principles applicable to working of patented inven-

tion*.

84. Compulsory licences.

85. Matters to be taken into account in granting compulsory

licences.

86. Endorsement of patent with the words "Licences of right".

87. Certain patents deemed to be endorsed with the words

"Licences of right".

CLAUSES

88. Effect of endorsement of patent with the words "Licences of right".

89. Revocation of patents by the Controller for non-working.

DO. When reasonable requirements of the public deemed not satisfied.

91. Power of Controller to adjourn applications for compulsory licences, etc., in certain cases.

92. Procedure for dealing with applications under sections 84, 86 and 89.

93. Powers of Controller in granting compulsory licences.

94. General purposes for granting compulsory licences.

95. Terms and conditions of compulsory licences.

96. Licensing of related patents.

97. Special provision for compulsory licences on notification by Central Government.

98. Order for licence to operate as a deed between parties con- cerned.

CHAPTER XVII

USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

99. Meaning of use of invention for purposes of Government. 100. Power of Central Government to use invention* for pur- poses of Government.

101. Rights of third parties in respect of use of invention for purposes of Government.

102. Acquisition of inventions and patents by the Central Government.

103. Reference to High Court of disputes as to use for purposfts of Government.

CHAPTER XVIII

SUITS CONCERNING INFRINGEMENT OF PATENTS

104. Jurisdiction.

105. Power of court to make declaration as to non-infringement,

CLAUSES

1.06. Power of Court to grant relief in cases of groundless threats of infringement proceedings.

107. Defences, etc., in suits for infringement.

108. Reliefs In suits for infringement

109. Right of exclusive licensee to take proceedings against infringement.

110. Right of licensee under section 84 to take proceedings against infringement.

111. Restriction on power of court to grant damages or account of profits for infringement.

112. Restriction on power of court to grant Injunction in certain cases.

113. Certificate of validity of specification and costs of subse- quent suits for infringement thereof.

114. Relief for infringement of partially valid specification.

115. Scientific advisers.

CHAPTER XIX

APPEALS

116. Appeals

117. Procedure for hearing of appeals.

CHAPTER XX

PENALTIES

118. Contravention of secrecy provisions relating to certain inventions.

119. Falsification of entries in register, etc.

120. Unauthorised claim of patent rights.

121. Wrongful use of words "patent office".

122. Refusal or failure to supply Information.

123. Practice by non-registered patent agents

124. Offences by companies.

CLAUSES

CHAPTER XXI

PATENT AGENTS

125. Register of patent agents.

126. Qualifications for registration as patent agents.

127. Rights of patent agents.

128. Subscription and verification of certain documents by patent agents.

129. Restrictions on practice as patent agents.

130. Removal from register of patent agents and restoration.

131. Power of Controller to refuse to deal with certain agents.

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

CHAPTER X Xn

INTERNATIONAL ARRANGEMENTS

133. Notification as to convention countries.

134. Notification as to countries not providing for reciprocity.

135. Convention applications. 136. Special provisions relating to convention applications.

137. Multiple priorities.

138. Supplementary provisions as to convention applications.

139. Other provisions of Act to apply to convention applications.

CHAPTER XXIII

MISCELLANEOUS

140. Avoidance of certain restictive conditions.

141. Determination of certain contracts.

142. Fees.

143. Restrictions upon publication of specifications.

144. Reports of examiners to be confidential.

145. Publication of patented inventions.

7Q4 G of I Ex.—8.

CLAUSES

146. Power of Controller to call information from patented.

147. Evidence of entries, documents, etc.

148. Declaration by infant, lunatic, etc.

149. Service of notices, etc., by post.

150. Security for costs.

151. Transmission of orders of courts to Controller.

152. Transmission of copies of specifications, etc., and inspection thereof.

153. Information relating to patents.

154. Loss or destruction of patent.

155. Reports of Controller to be placed before Parliament.

156. Patent to bind Government.

157. Right of Government to sell or use forfeited articles

158. Power of High Courts to make rules.

159. Power of Central Government to make rule*.

160. Rules to be placed before Parliament.

161. Special provisions with respect to certain application deemed to have been refused under Act 2 of 1911.

162. Repeal of Act 2 of 1911 in so far as it relates to patents and savings.

163. Amendment of Act 43 of 1958.

THE SCHEDULE.

Bill No. tfaB of iota

THE PATENTS BILL, 1965

[ As REPOHTED BY THE JOINT COMMITTEE]

[Words side-lined or underlined indicate the amendments suggested

by the Committee; asterisks indicate omissions,]

A

BILL

to amend and consolidate the law relating to patents.

BE it enacted by Parliament in the Seventeenth Year of the

Republic of India as follows:— . ^ ^ _ _ ^ ^_

CHAPTER I

PRELIMINARY

5 1. (7) This Act may be called the Patents Act, 1966.

(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:

Short title, Vtitmat •nd com, mence- ment.

Provided that different dates may be appointed for different r provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference ™ the coming into force of that provision.

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

Definitions and inter- pretation.

(a) "assignee" includes the legal representative of a deceased assignee, end references to the assignee of any person include 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;

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

5 of 1908.

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

(f) "exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persona 15 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;

(g) "food" means any substance intended for the use of * * * babies, invalids or convalescents as an article of food or 20 drink; • ••

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

(i) by a department of the Government, or

(U) by a corporation established by a Central, Provin- 25 cial or State Act, which is owned or controlled by the Gov- ernment, or

(Hi) by a Government company as defined in section 617

1 of 1939, of the Companies Act, 1956,

and includes the Council of Scientific and Industrial Research, 30 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;

(i) "High Court" means—

(i) in relation to the Union territory of Delhi and the 35 Union territory of Himachal Pradesh, the High Court of 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; 5 (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;

10 (vl) 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—

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

(ii) machine, apparatus or other article; or

(Hi) 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;

(I) "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 30 of any epidemic disease among human beings or animals,

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

but does not include insecticide, germicide, fungicide or any 35 other substance intended to be used for the protection or preser- vation of plants;

(m) "patent" means a patent granted under this Act and

2 of 1911.

Includes for the purposes of sections 44, 49, 30, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154, and 156 and Chapters XVI, XVII and XVIII, a patent granted under the Indian Patents and Designs Act, 1911; 5 (n) "patented article" and "patented process" mean respec- tively an article or process in respect of which a patent is in force;

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

(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 fruited i" accord- ance with section 54;

(r) "patent office" means the patent office referred to in 15

section 74;

(s) "person" includes the Government;

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

20

(") "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- cribed fee;

25

(w) "priority date" has the meaning assigned to it by section 11;

(x) "register" means the register of patents referred to in section 67;

(y) "true and first inventor" does not include either the first 30 Importer of an invention into India, or a person to whom an invention is first communicated from outside India.

(2) In this Act, unless the context otherwise requires, any reference—

(a) to the Controller shall be construed as including a 35 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 reference to any branch office of the patent Office.

CHAPTER n

INVENTIONS NOT rATENTABLE

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

What are not inven- tions.

5 (a) an invention which is frivolous or which claims any- ' 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;

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

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

15 (e) ** a substance obtained by a mere admixture resul- ting only in the aggregation of the properties of the components thereof or a process for producing such substance;

(/) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another 20 In a known way;

(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 TMtoration of the existing machine, apparatus or other equip- 25 ment or for the improvement or control of manufacture;

(h) a method of agriculture or horticulture;

(i) 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 30 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- able.

5. In the case of inventions—

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

Ing used, as food or as medicine or drug, or

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

the patent shall be granted only in respect of claims for the method

or process of manufacture and in respect of claims for the sub-

stances when produced by such method or process.

Inventions where only methods or pro- cesses of manufac- ture and substances when pro- duced by- such methods or pro- cesses paten- table.

CHAPTER III

I0

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,—

Personi entitled to apply for patent*.

(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 be the true and first inventor in respect of the right to make such an application;

(c) by the legal representative of any deceased person 2Q

who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any

other person.

2~

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.

(2) Where the application is made by virtue ef an assignment of the right to apply for a patent for the Invention, there shall be _0 furnished with the application or within such period as may be prescribed after the filing of the application, proof of the right to make the application.

(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 (not being a convention application)

shall be accompanied by a provisional or a complete specification.

8. (I) 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- tions.

(a) a statement setting out the name of the country where the application is being prosecuted, the serial number 15 and date of filing of the application- and iuch other particulars as may be prescribed; and

(b) 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 ZJ 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 25 knowledge.

(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 (i) on the ground that the invention Is lacking In 3° 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.

9. (1) Where an application for a patent (not being a convention application) is accompanied by a provisional specification, a complete 35 specification shall be filed within twelve months from the date of

Provi- sional and complete specifi- cations.

filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned:

Provided that the complete specification may be filed at any time after twelve months but within fifteen months from the date ⁴⁰ 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 corn- plete specification is filed.

794 Q of I Ex.—".

(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate ox 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 5 properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifica- tions.

(3) Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a com- 10 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.

(4) Where a complete specification has been filed in pursuance 15 of an application for a patent accompanied by a provisional specifi- cation or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before the acceptance of the application, cancel the provisional specification and post-date 2o the application to the date of filing of the complete specification-

Contents ol specifica- tions.

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.

(2) Subject to any rules that may be made in this behalf under 25 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 30 accordingly.

(3) If in any particular case the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished 35 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) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

\C) ena wixn a claim or claims uemuug me stupe ui uio

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 5 based on the matter disclosed in the specification.

(6) A declaration as to the inventorship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.

io (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 15 the provisions of section 6 to make a separate application for a patent.

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

(2) Each claim of a complete specification shall indicate the date 20 which the applicant considers to be the priority date of that claim.

(3) Where a complete specification is filed in pursuance of a single application accompanied by—

Priority dates of claims of a complete specifi- cation.

(a) a provisional specification; or

(b) a specification which is treated by virtue of a direc- 25 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 tha: claim shall be the date of the filing of the relevant specification. 30 (⁴) Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by cuch specifications as are mentioned in sub-section (3) and the claim is fairly based on the matter disclosed—

(a) in one of those specifications, the priority date of that ^ claim shall be the date of filing of the application accompanied by that specification;

(b) partly in one and partly in another, the priority date of that claim shall be the date of the filing of the application accompanied by the specification of the later date

(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 at 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 ⁵ 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. IO

(7) In any case to which sub-section (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.

(8) The reference to the date of the filing of the application or of the complete specification in this section shall, in cases where 15 there has been a post-dating under section 9 or section 17 or, as the case may be, an ante-dating under section 16, be a reference to the date as so post-dated or ante-dated.

(9) A claim in a complete specification of a patent shall not be

20 invalid by reason only of—

(a) 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

(fe) 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.

25

CHAPTER IV

EXAMINATION OF APPLICATIONS

Exami-

nation

of appli-

cation.

12. (1) 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 30 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 anv lawful ground of objection to the grant of the patent under this Act in pursuance of the appli^ cation;

(c) the rpsult 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

5 (e) any other matter which may be prescribed.

(2) The examiner to whom the application and the specification relating thereto are referred under sub-section (/) shall ordinarily make the report to the Controller within a period of eighteen months from the date of such reference,

10 13. (1) 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—

(a) has been anticipated by publication before the date of

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

15 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;

(b) is claimed in any claim of any other omplol ? specifi- cation published on or afier the date of filing of the applicant's 20 complete specification, heinp a specification filed in pursuance of an application Cor a ^ateut made in India and dated before or claiming the priority date earlier than that date.

(2) The examiner shall, in addition, make such investigation as the Controller may direct for the purpose of ascertaining whether 25 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 (?) before the date of filing of the applicant's complete specification,

(3) Where a complete specification is amended under the provi- 30 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.

(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the 35 validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in con- nection with, any such examination or investigation or any report or other proceedings consequent thereon.

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

14. Where, in respect of an application for a patent, the report of the examiner received by the Controller Is adverse to the applicant or requires any amendment of the application or of the specification to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the 5 application in accordance with the provisions hereinafter appearing, shall communicate the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed time, give him an opportunity of being heard.

15. (1) Where the Controller is satisfied that the application or I⁰

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—

(a) refuse to proceed with the application; or

(b) require the application, specification or drawings to b" *5 Power of Con- troller to refuse or require amend- ed applica- tions In certain easel.

amended to his satisfaction before he proceeds with the appli- cation.

(2) If it appears to the Controller that the invention claimed in the specification is not an invention within the meaning of, or is not patentable under, this Act, he shall refuse the application. 20

(3) If it appears to the Controller that any invention in respect nf 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- 25 gality thereof, as the Controller thinks fit.

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- 30 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- Bion of applica- tion.

(2) The further application under sub-section (7) shall be ac- 35

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 5 the other.

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

17. (1) Subject to the provisions of section 9, at any time after the filing of an application and before acceptance of the complete 15 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 of Con- troller to make orders respect- ing dating of appli- cation.

Provided that no application shall be post-dated under this sub- 20 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.

(2) Where an application or specification (including drawings) is required to be amended under clause (b) of sub-section (7) of 25 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 specifica- tion is returned to the applicant, on the date on which it is re-filed after complying with the requirement.

-0 18. (7) 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 {1) or sub-section (2) of section 13, he may refuse to accept the com- plete specification unless the applicant—

Powers of Con- troller in cases of anti- cipation.

35 (a) shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or

(b) amends his complete specification to the satisfaction of the Controller.

(2) If it appears to the Controller that the invention ia 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 5 applicant's complete specification unless within such time as may be prescribed,—

(a) the applicant shows to the satisfaction of the Controller that the priority date of his claim is not later than the priority date of the claim of the said other specification; or i°

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

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

(a) that the invention so far as claimed in any claim of the J5 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; ²O

30

Povmers of Con- troller in case of potential Infringe- ment.

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

(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or

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

(2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under sub- 10 section (I) —

(a) that other patent is revoked or otherwise ceases to be in force; or j

(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.

Powers of Con- troUar to maka order* regard- ing substi- tution of appli- cants, etc. 20 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 ohare of the patent or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accord- 30 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.

?< (3) No such direction as aforesaid shall be given by virtue o! any assignment or agreement for the assignment of the benefit of an invention unless—

(a) the invention is indentified thimin by reference to¹ the number of the application for tho pstmtt or

794 G of 1 Ex.—id.

(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).

(4) Where one of two or more joint applicants for a patent dies 10 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.

15

(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 20 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, aa the case may require,

21. (I) An application for a patent shall be deemed to have been 25 Time for putting applica- tion. In order for accept- ance.

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 30 requirements imposed on him by or under this Act, whether in con- nection with the complete specification or otherwise In relation to the application-

Explanation,—Where the application or any specification or, in the case of a convention application, any document filed as part of 35 the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have compiled with s>uch requirements unless and until he has re-filed It.

(2) The period of fifteen months specified in sub-section (1) shall, on request made by the applicant in the prescribed manner and before the expiration of the period so specified, be extended for a further period so requested (hereafter in this section referred to as 5 the extended period), so, however, that the total period for complying with the requirements of the Controller does not exceed eighteen months from the date on which the objections referred to in sub- section (1) are forwarded to the applicant.

(3) If at the expiration of the period of fifteen months specified Io in sub-section (/) or the extended period—

(a) an appeal to the High Court is pending in respect of the application for the patent for the main invention, or

(b) in the case of an application for a patent of addition, an appeal to the High Court is pending in respect of either that !5 application or the application for the main invention,

the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the said period of fifteen months or the extended period, as the case may be, be extended until such date as the 20 High Court may determine.

(4) If the time within which the appeal mentioned in sub- section (3) may be Instituted has not expired, the Controller may extend the period of fifteen months, or as the case may be, the ex- tended period, until the expiration of such further period as he may 25 determine:

Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then, the re- quirements may be complied with within the time granted by tne 30 Court.

Accep- tance of complete specifica- tion. t2. 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 35 section, and, if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter:

Provided that the applicant may make an application to the Con- troller in the prescribed manner requesting him to postpone accep- 4° tance until such date (not being later than eighteen months from the date on which the objections referred to in sub-section (1) of section 21 are forwarded to the applicant) as may be specified

in the application, and, if such application is made, the Controller may postpone acceptance accordingly.

Advertise

ment of

accep-

tance of

complete

specifi-

cation.

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 acceptad, ⁵ and thereupon the application and the specification with the drawings (If any) filed in pursuance thereof shall be open to public inspection.

Kffect

of accep-

tance of

complete

•pedfl-

cation.

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 I⁰ respect thereof, the applicant shall have the like privileges and rights M If a patent for the invention had been sealed on the date of advertisement of acceptance t>t the complete specification:

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 OF PATENT

Opposi-

tion to

grant of

patient.

25. (1) 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 ³O aggregate as the Controller may allow on application made to him In the prescribed manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following jp(rounds, namely: —

(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;

(b) that the invention so far as claimed in any claim of the 30 complete specification has been published before the priority flfate of the claim—

(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

35

(U) In India or elsewhere, in any other document:

Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not Constitute an anticipation of the invention by virtue of sub-section (2) or sub- section (5) of section 29;

4°

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

specification published on or after the priority date of the appli- cant'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;

5 (d) that the Invention so far as claimed in any claim of the complete specification was known or used in India before the priority date of that claim.

Explanation.—For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deem- 10 ed to have been known or used in India before the priority date of the claim if a product made by that process had already been imported Into India before that date except where such importa- tion has been for the purpose of reasonable trial or experiment only;

!5 (c) 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 subject of any claim of the complete Spedflcta- tion is not an Invention within the meaning of this Act, or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it Is to 25 be performed;

(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 his knowledge;

3° (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 country by the applicant or a person from whom he derives title;

35 but on no other ground.

(2) Where any such notice of opposition is duly given, the Con- holler shall notify the applicant and shall give to the applicant and *^le opponent an opportunity to be heard before deciding the case.

(3) The grant of a patent shall not be refused on the ground stated in clause (c) of sub-section (1) if no patent has been granted In pursuance of the application mentioned in that clause; and for

the purpose of any Inquiry under clause (d) or clause (c) of that sub-section, no account shall be taken of any secret use.

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

Incases 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 5 the opponent in the manner set out in clause (a) of sutHjection (1) of section 25 and refuses the application on that ground, ho may, on request by such opponent made in the prescribed man- ner, direct that the application shall proceed in the nemo of the opponent as if the application and the specification had been Io filed by the opponent on the date on which they were actually filed;

(b) the Controller finds that a part of an invention described in the complete specification was so obtained from the opponent and passes an order requiring that the specification be amended T5 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- ²⁰ troller may 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 25 the application of the opponent shall be proceeded with as an application for a patent under this Act.

(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 3° a patent for an invention which includes the whole or a part of the Invention held to have been obtained from him and such" application is pending, the Controller mey 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 ³^ 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- tion.

grant under section 25, that the invention, so far as claimed in any claim of the complete specification, has been published * * before the priority date of the claim—

(a) in any specification filed in pursuance of an application 5 for a patent made in India and dated on or after the 1st day of January, 1912; l

(b) in any other document in India or elsewhere, * *

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

Provided that the Controller shall not refuse to grant the patent on the ground specified in clause (b) if such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29.

15 28. (i) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,—

Mention of in- ventor Ai 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 patent has been made, or of a substantial part 20 of that invention; and

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

the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance 25 of the application in the complete specification and in the register of patents:

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

,0 (2) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.

(3) If any person [other than a person in respect of whom a re- 35 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- 40 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) No request or claim under the foregoing provisions of this 5 section shall be entertained if it appears to the] Controller that the request or claim is based upon facts which, if proved in the case of an opposition under the provisions of clause (a) of sub-section (1) of section 25 by the person in respect of or by whom the request or claim ia made, would have entitled him to relief under that section. I⁰

(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- *5 section (2) or sub-section (3), the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.

(7) Where any person has been mentioned as inventor in pursu- 20 amce of thia section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a certificate to that effect, and the Controller may, after hearing, if required, any person whom he may consider to be interested, issue such a certificate, and if he does so, he shall rectifv the specification 25 and the register accordingly.

CHAPTER VI

ANTICIPATION

Anticipa- tion by previous publica- tion.

29. (2) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the inven- 30 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.

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

date of the relevant claim of the specification, if the patentee or tht applicant for the patent proves—

(a) that the matter published was obtained from him, oi (where he is not himself the true and first inventor) from any 5 person from whom he derives title, and was published withoul his consent or the consent of any such person; and

(b) where the patentee or the applicant for the patent 01 any person from whom he derives title learned of the publica- tion before the date of the application for the patent, or, in the 10 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:

j5 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 for the purpose of reasonable trial, either by the patentee or the applicant for the patent or any person from whom he derives title or by any other person with the consent of the 20 patentee or the applicant for the patent or any person from whom he derives title.

(3) Where a complete specification is filed in pursuance of an application for a patent made by a person being the true and first Inventor or deriving title from him, an invention claimed in that 25 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 30 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.

30. An invention claimed in a complete specification .shall not Anticipa- tion by previous communi cation to Govern- ment.

be deemed to have been anticipated by reason only of the communi- 35 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.

31. An invention claimed in a complete specification shall not .

40 be deemed to have been anticipated by reason only of—

Anticipa- tion by public display, etc. (a) the display of the invention with the consent of the true ( and first Inventor or a person deriving title from him at an <

794 G o ll E x . — 1 1.

5 industrial or other exhibition to which the, provisions of this section have been extended by the Central Government by notification in the Official Gazette, or the use thereof with his consent for the 'purpose of such an exhibition in the place where it Is held; or

(b) the publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid; or

(c) the use of the invention, after it has been • displayed or used at any such exhibition as aforesaid and during the 10 period of the exhibition, by any person without the consent of the true and first inventor or a person deriving title from him; or

(d) the description of the invention in a paper read by the true and first inventor before a learned society or published 15 with his consent in the transactions of such a society;

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 months after the opening of the exhibition or the reading or publication of the paper, as the case may be.

20

32. An invention claimed in a complete specification shall not Anticipa- tion by public working.

be deemed td have been anticipated by reason only that at any time within one year before the priority date of the relevant claim of the specification, the invention was publicly worked in India—

25

(a) by the patentee or applicant for the patent or any person from whom he derives title; or

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

3©

if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public.

33. (1) Where a complete specification is filed or proceeded with 35 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 40 not refuse to grant the patent, and the patent shall not be revoked Anticipa- tion by use and publica- tion aftei prcrol- sional gpeciflca- tton.

or invalidated, by reason only

5 specification.

(2) Where a complete specification is filed in pursuance of a convention application, then, notwithstanding anything contained in this Act, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated, by reason only that 10 *ay 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-

34. Notwithstanding anything contained in this Act, the Control- ; ^5 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 antici- pation of the invention claimed in the specification.

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

20 CHAPTER Vn

PROVISIONS FOR SECURITY OF CERTAIN INVENTIONS

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

1 38. (1) Where, in respect of an application made before or afteri the commencement of this Act for a patent, it appears to the Con-| trailer that the invention is one< of a class notified to him by the 25 Oenttral 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!

30 directions.

(2) Where the Controller gives any such directions as are refer- red to in sub-section (I), 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 25 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 revoke the directions and notify the applicant accordingly.

(3) Without prejudice to the provisions contained in sub-section (1), where the Central Government is of opinion that an invention In respect of which the Controller has not given any directions under sub-section (1), is relevant for defence purposes, it may at any time before acceptance of the complete specification notify the Controller •> to that effect, and thereupon the provisions of that sub-section shall apply as if the invention were one of the class notified by the Central Government, and accordingly the Controller shall give notice to the Central Government of the directions issued by him.

36. (1) The question whether an invention in respect of which I⁰ Secrecy directions to be perio- dically re- viewed.

directions have been given under section 35 continues to be relevant for defence purposes shall be re-considered by the Central Govern- ment within nine months from the date of issue of such directions and thereafter at intervals not exceeding twelve months, and if, on such re-consideration it appears to the Central Government that the *5 publication of the invention! would no longer be prejudicial to the defence of India it shall forthwith give notice to the Controller ac- cordingly and the Controller shall thereupon revoke the directions previously given by him.

(2) The result of every re-consideration under sub-section (1) ²⁰

shall be communicated to the applicant within such time and in such

manner as many be prescribed.

37. (1) So long as any directions under section 35 are in force in respect of an application—

(a) the Controller shall not pass an order refusing to accept ²5 the same; and

Conse- quences of secrecy direc- tions.

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

Provided that the application may, subject to the directions, 3° 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 no patent shall be granted in pursuance of the appli- cation.

(2) Where a complete specification filed in pursuance of an appli- 35 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—

(a) if, during the continuance in force of the directions any

use of the invention is made by or on behalf of, or i;o the order 4°

of the Government, the provisions of sections 100, 101 and 103

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

(b) if it appears to the Central Government that the 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 thej novelty and utility of the invention and the pur- pose for which it is designed, and to any other relevant circum-

I0 stances.

(3) Where a patent is granted in pursuance of an application in respect of which directions have been given under section 35, no renewal fee shall be payable in respect of any period during which those directions were in force.

Revoca- tion, of secrecy direc- tions and exten- sion of time.

i< 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 patent, the Controller may, subject to such conditions, if any, as he thinks fit to impose, extend 20 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.

39. (i) No person resident in India shall, except under the autho- rity of a written permit granted) by or on behalf, of the Controller, ²5 make or cause to be made any application outside India for the grant

of a patent for an invention unless—

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

Residents not to apply for patents outside India with- out prior permis- sion.

30 (b) either no directions have been given under sub-section (2) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall not grant written permission to any per- sion to make any application! outside India without the prior con-

35 sent of the Central Government.

(3) This section shall not apply in relation to an invention foi which an application for protection has first been filed in a country outside India by a person resident outside India.

Liability for con- traven- tion of section 35 or section 39.

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 the grant of a patent outside India in contravention of section 39, the application for patent 5 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. 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 10 ground whatsoever.

Finality of orders of Con- troller and Central Govern- ment.

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 • *, for the purpose of the application or specification being 15 examined for considering whether an order under this Chapter should be made or whether an order so made should be revoked.

CHAPTER VIE

GRANT AND SEALING OF PATENTS AND BIGHTS CONFERRED THEREBY

43. (i) Where a complete specification In pursuance of an applica- 20

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;

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 30 be sealed with the seal of the) patent office and the date on which the patent is sealed shall be entered in the register.

(2) Subject to the provisions of sub-section (1) and of the 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—

(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 5 made within the prescribed period after the final determination of that proceeding;

(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provi- sions of this sub-section the request could otherwise be made, ¹⁰ the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.

(3) The period within which under sub-section (2) a request for the sealing of a patent may be made may, from time to time, be ex- J5 tended by the Controller to such longer period as! may be specified in an application made to him in that behalf, if the application ia made and the prescribed fee paid within that longer period:

Provided that the first mentioned period shall not be extended under this sub-section by more than three months in the aggregate.

Eocplanation.—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.

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, 3° 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.

Date of patent.

45. (1) Subject to the other provisions contained in this Act, 35 every patent shall be dated as of the date on which the complste specification was filed.

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

(3) Notwithstanding anything contained in this section, no suit of

other proceeding shall be commenced or prosecuted in respect of an

infringement committed before the date of advertisement of the

acceptance of the complete specification,

46. (1) Every patent shall be ini the prescribed form and shall 5 have effect throughout India.

Form, extent and effect of patent.

(2) A patent shall be granted for one invention only: Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.

I0 Rights of patentees.

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

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

(b) where a patent is for a process of manufacturing an article or substance, the exclusive right by himself, his agents or licenees to use or exercise the process in India and of using or selling in India articles or substances made by such process 20 and of authorising others so to do. (2) The rights conferred on the patentee by this section shall be exercisable only subject to the provisions of any other law for the time being in force.

48. Notwithstanding anything contained in this Act,—' 25 (a) the importation by or on behalf of the Government of any patented machine, apparatus or other article for the pur- pose merely of its own use, or

Patent rights not in- fringed when used for certain purposes.

(b) the importation by or on behalf of the Government of any patented medicine or drug for the purpose merely of its own 3° use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Govern- ment or any other dispensary, hospital or other medical Insti- tution which, the Central Government may, having regard to the public service that such dispensary, hospital or medical Institu- 35 tlon renders, specify in this behalf by notification in the Official Gazette, or

(c) the making of a patented machine, apparatus or other article or the use of a patented process or the making of an article by the use of the patented process by or on behalf of the Gov- 40 ernment for the purpose merely of its own use or by persons on its behalf who may be specially authorised for the purpose, or

(d) the making or use of a patented machine or apparatui or other article or the use of a patented process or the use of ai article made by the use of the patented process, machine o] apparatus for the purpose merely of experiment or research 5 including the imparting of instructions to pupils,

shall not be deemed to constitute an infringement of the rights con. ferred on the patentee by this Act in respect of a patent granfect whether before or after the commencement of this Act.

' Patent 1 rights not infringed when used I on foreign ' vessels, 40. (1) Where a vessel or aircraft registered In a foreign countrj io or a land vehicle owned by a person ordinarily resident in suet country comes into India (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a pateni for an invention shall not be deemed to be infringed by the use oi the invention—

15 (a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

etc., tempora- rily or accident- ally in India.

(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof;

20 as the case may be.

(2) This section shall not extend to vessels, aircraft or land vehicles owned by persona ordinarily resident in a foreign country the laws of which do not confer corresponding rights with respect to the use of inventions in vessels, aircraft or land vehicles owned 2c by persons ordinarily resident in India while In the ports or within thp territorial waters of that foreign country or otherwise within 1he jurisdiction of its courts.

50. (/) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is In 30 force, be entitled to an equal undivided share in the patent,

co-owners jf patents.

(2) Subject to the provisions contained In this section and In section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary Is in force, each of those persons shall be entitled, by himself or his 35 agents, to make, use, exercise and sell the patented Invention for his own benefit "without accounting to the other person or persons. (3) Subject to the provisions contained In this section and in sec- tion 51 and to any agreement for the time being in force, where two nr more persons are registered as grantee or proprietor of a patent, 40 thon, a licence under the patent shall not be granted and a share in the patent shall not be assigned by one of such persons except with the consent of the other person or persona.

794 G of I Ex.—12.

(4) Where a patented article is sold by one of two or more per- sons registered as grantee or proprietor of a patent, the purchaser and any person claiming through him shall he entitled to deal with the article in the same manner as if the article had been sold by a sole patentee.

,

(5) Subject to the provisions contained in this section, the rules of lew applicable to the ownership and devolution of movable pro- perty generally shall apply in relation to patents; and nothing con- tained in sub-section (1) or sub-section (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a io deceased person or their rights or obligations as such.

(6) Nothing in this section shall affect the rights of the assignees of a partial Interest in a patent created before the commencement of this Act.

51. (1) Where two or more persons are registered as grantee or 15 Power of Controller to give directions toco-

owners,

proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions In accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licences under the patent, or the exercise of any right under section 50 in relation 20 thereto, as he thinks fit.

(2) If any person registered as grantee or proprietor of a patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of 25 the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.

(3) Before giving any directions in pursuance of an application 3° under this section, the Controller shall give an opportunity to be heard—

(a) in the case of an application under sub-section (1), to the other person or persons registered as grantee or proprietor of the patent;

35

(b) in the case of an application under sub-section (2), to the person in default.

(4) No direction shall be given under this section so as to afreet the mutual rights or obligations of trustees or of the legal represen- tatives of a deceased person or of their rights or obligations as such, 40 or which is inconsistent with the terms of any agreement between persons registered as grantee or proprietor of the patent.

Grant of patent to true and first inventor where it has been obtained by another in fraud of him.

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 he claims, or, where In a petition for revocation, the court, instead of revoking the 5 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 obtained from the petitioner, the court may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the JO invention which the court finds has been wrongfully obtained by the patentee, in lieu of the patent so revoked or is excluded by amendment.!

j

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

J5 (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;

(ii) in cases where the court permits a part only of the patent to be granted, a new patent for such part bearing the same 20 date as the patent revoked and numbered in such manner as may be prescribed:

Provided that the Controller may as a condition of such grant require the petitioner to file a new and complete specification to the satisfaction of the Controller describing and claiming that 25 part of the invention for which the patent is to be granted.

(3) No suit shall be brought for any infringement of a patent granted under this section committed before the actual date on which such patent was granted.

53. (1) Subject to the provisions of this Act, the term of every Term of paient 30 patent granted under this Act shall—

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

35 (b) in respect of any other invention, be fourteen years from the date of the patent.

2 of 1911.

(2) Notwithstanding anything contained in the Indian Patents and Designs Act, 1911, or in the patent granted thereunder, the term of every patent granted under that Act in respect of an invention

40 claiming a substance or the method or process of manufacture in

respect thereof, where the substance is intended for use, or is cap- able of being used as food or as medicine or drug shall be—

of 1911.

(a) ten years from the commencement of this Act, or (b) sixteen years from the date as of which the patent was sealed under the Indian Patents and Designs Act, 1911, 5 ²' whichever is less:

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.

I0 (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, ii that fee is not paid within the pres- cribed period or within that period as extended under this section.

(4) The period prescribed for the payment of any renewal fee shall 15 be extended to such period, not being more than six months longer than the prescribed period, as may be specified in a request made to the Controller if the request is made and the renewal fee end the prescribed additional fee paid before the expiration of the period so specified.

20

CHAPTER IX

PATENTS OF ADDITION

Patents of addition.

i 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 25 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.

(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, 35 by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.

(3) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or 40 later than the date of filing of the complete specification In respect of the main invention.

(4) A patent of addition shall not be sealed before the sealing of the pattnt for the main invention; and if the perjpd within which,

but for the provisions of this sub-section, a request for the sealing of a patent of addition could be made under section 43 expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of , the patent of addition may be made at any time within the last mentioned period.

Term of patents of addition.

55. (1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or Io until the previous cesser of the patent for the main invention and no longer:

Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may „ order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.

(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

Validity of patents of addition.

56. (i) The grant of a patent of addition shall not be refused, and 2e a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—

(a) the main invention described in the complete speciflca- ,0 tion relating thereto; or

(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;

35 and the validity of a patent of addiLion shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

(2) For the removal of doubts it is hereby declared that in deter- mining the novelty of the invention claimed in the complete speci- 40 flcation filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.

CHAPTER X

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

57. (1) Subject to the provisions of section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application 5 for the patent or the complete specification to be amended subject to a such conditions, if any, as the Controller thinks fit:

Amend- ment of applica- tion and •peciflca- tion before Controller. Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification under this section while any suit before a court for the io infringement of the patent or any proceeding before the High Court for the revocation of the patent is pending, whether the suit or pro- ceeding commenced before or after the filing of the application to amend.

(2) Every application for leave to amend an application for a J5 patent or a specification under this section shall state the nature oi the proposed amendment, and shall give full particulars of the rea- sons for which the application is made.

(3) Every application for leave to amend an application for a patent or a specification under this section made after the acceptance 20 of the complete specification and the nature of the proposed amend- ment shall be advertised in the prescribed manner.

(4) Where an application is advertised under sub-section (3), any person interested may, within the prescribed period after the advertisement thereof, give notice to the Controller of opposition ²' thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the oppo- nent an opportunity to be heard before he decides the case.

(5) An amendment under this section of a complete specification 30 may be, or include, an amendment of the priority date of a claim.

(6) The provisions of this section shall be without prejudice to the right of an applicant for a patent to amend his specification to comply with the directions of the Controller issued before the accept- ance of the complete specification or in the course of proceedings in 35 opposition to the grant of a p a t e n t"

Amend- ment of specifica- tion before

Court.

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 40 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 pf revoking the patent.

(2) Where an application for an order under this section is made to the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

(3) Copies of all orders of the High Court allowing the patentee to amend the specification shall be transmitted by the High Court to the Controller who shall on receipt thereof cause an entry thereof and reference thereto to be made in the register.

Supple, mentary provisions as to amend- ment of application or specifica- tion.

59. (/) No amendment of an application for a patent or a complete specification shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, and no amendment of a complete specification shall be allowed the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specifica- tion before the amendment.

(2) Where after the date of advertisement of acceptance of a 20 complete specification, any amendment of the specification is allowed

by the Controller or by the High Court,—

(a) the amendment shall for all purposes be deemed to form part of the specification;

(b) the fact that the specification has been amended shall be

25 advertised In the Official Gazette; and

(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

30 made to the specification as originally accepted.

CHAPTER XI

RESTORATION OF LAPSED PATENTS

60. (7) Where a patent has ceased to have effect by reason of '

Applica- tions for restoration of lapsed patents.

failure to pay any renewal fee within the prescribed period or within ¹ 35 that period as extended under sub-section (4) of section 53, the ( patentee or his legal representative, and where the patent was held j by two or more perrons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within one year from the date on which the patent ceased to have effect, make an

40 application for the restoration of the patent.

2 of 1911.

(2) The provisions of sub-section (/) shall also apply to patents granted before the commencement of this Act, subject to the modifi- cation that for the reference to the prescribed period or to sub-section (4) of section 53, there shall be substituted a reference to the period prescribed therefor under the Indian Patents and Designs Act, 1911 5 or to sub-section (2) of section 14 of that Act-

(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may I0 think necessary.

Procedure for

disposal at applications for restoration of lapsed patents.

61. (I) It, after hearing the applicant in cases where the appli- cant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was uninten- tional and that there has been no undue delay in the making of the 15 application, he shall advertise the application in the prescribed man- ner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—

(a) that the failure to pay the renewal fee was not uninten- 20 tional; or

(b) that there has been undue delay in the making of the application. (2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and 25 to the opponent an opportunity to be heard before he decides the case. (3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal lee and such additional fee as may be prescribed, 30 restore the patent and any patent of addition specified in the applica- tion which has ceased to have effect on the cesser of that patent.

(4) The Controller may, if he thinks fit as a condition of restoring

the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to 35 be entered in the register but which has not been so entered.

Rights at patentees of lapsed patents which have been restored.

62. (1) Where a patent is restored, the rights of the patentee shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves 40 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 advertisement of the application for restoration of the patent under this. Chapter.

(2) No suit or other proceeding shall be commenced or prosecuted In respect of an Infringement of e patent committed between the date on which the patent ceased to have effect and the date of the advertisement of the application for restoration of the patent.

5 CHAPTER XII

SURRENDER AKD REVOCATION OF PATENTS

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

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

(2) Where such an offer is made, the Controller shall advertise the 10 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.

(3) Any person interested may, within the prescribed period after such advertisement, give notice to the Controller of opposition to the 15 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 20 the patent.

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 or on a counter-claim in a suit for infringement of the

25 patent, be revoked by the High Court on any of the following

grounds, that is to say—

(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;

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

t of 1911.

Provided that a patent granted under the Indian Patents and Designs Act, 1911 shall not be revoked on the ground that thu applicant was the communicatee or the importer of the inven- tion 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 contraven- tlon of the rights of the petitioner or any person under or through whom he claims:

794 G of I Ex.—13.

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

(c) 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:

Provided that in relation to patents granted under the Indian

2 of 1911.

Patents and Designs Act, 1911, this clause shall have effect as if the words "or elsewhere" had been omitted;

(j) 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:

Provided that in relation to patents granted under the

2 of 1"11.

Indian Patents and Designs Act, 1911, this clause shall have '

effect as if the words "or elsewhere" had been omitted;

(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;

(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that 1B to say, that the description of the method or the instructions for the working of the invention es contained in the complete specification are not by themselves sufficient to 25 •nable 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 paxent and for which he was entitled to claim protection; 30

({) 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 33 representation;

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

(1) that the Invention so far as claimed In any claim of the complete specification was secretly used in India, otherwise 4c than as mentioned in sub-section (2), before the priority date of tha claim;

(m) that the applicant for the patent has failed to dlicloM to the Controller the information required by section 8 or has furnished information which in any material particular was fals* to his knowledge; """"~

5 (n) that th" applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an appli- cation for the grant of a patent outside India in contravention of section 39;

(o) that leave to amend the complete specification under io section 57 or aection 58 was obtained by fraud.

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

(a) no account shall be taken of secret use; and (b) where the patent is for a process or for a product as made by a process described or claimed, the importation Into X5 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, except where such importation has been for the purpose of reasonable trial or experiment only. (3) For the purposes of clause (I) of sub-section (1), no account 20 shall be taken of any use of the Invention—

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

or

(b) by the Government or by any person authorised by the Government or by a Government undertaking, in consequence 25 of the applicant for the patent or any person from whom h" 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

(c) by any other person, in consequence of the Applicant 30 for the patent or any person from whom he derives title having communicated or disclosed the invention, and without tht consent or acquiescence of the applicant or of any person from whom he derlvea title. (4) Without prejudice to the provisions contained in sub-spction 35 0 ). a patent may be revoked by the High Court on the pet of the Central Government, if the High Court Is satisfied thai the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercit* th" patented invention for the purposes of Government within the 4° meaning of section 99 upon reasonable terms.

(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to

be proprietors of that patent or to have shares or Interests therein and it shall not be necessary to serve a notice on any other person.

33 of 1982.

65. (1) 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 5 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 io 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 at complete ipeeiflca- tion on direc- tions from Central Govern- ment in cases relating to atomic •nergy.

(2) In any proceedings under sub-section (1), the Controller 15

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

06. Where the Central Government is of opinion that a patent 20 Revoca- tion of patent in public Interest.

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.

25

CHAPTER XIII

REGISTER OF PATENTS

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

patents, wherein shall be entered—

(a) the names and addresses of grantees of patents; 30 Register of patents and partl- eulars to b" entered therein

(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 the Central Government, the register shall be kept under the control and 40 management of the Controller.

(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.

Assign* menta, etc., not to bo valid unless In writing and re- gistered.

88. An assignment of a patent or of a share in a patent, a mort- 5 gage, licence or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and the application for registration of such document 10 is filed in the prescribed manner with the Controller within six months from the execution thereof or within such further period noi exceeding six months in the aggregate as the Controller on applica- tion made in the prescribed manner allows: * *

Provided that the document shall, when registered, have effect 15 from the date of its execution.

69. (1) 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 2° manner to the Controller for the registration of his title or, as the

Regiatra. tionaf assign- ments, trans- mission*, etc. case may be, of notice of his interest in the register. '

(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becom- ²5 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.

(3) Where an application is made under this section for the regis- 30 tration of the title of any person the Controller shall, upon proof of title to his satisfaction,—

(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-pro- prietor of the patent, and enter in the register particulars of the 35 instrument or event by which he derives title; or

(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with par- ticulars of the instrument, if any, creating it:

Provided that if there is any dispute between the parties whether 40 the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be

under clause (b), until the rights, of the parties have been determine"-) by a competent court.

(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any 5 licence thereunder authenticated in the prescribed manner and also such other documents as may be prescribed relevant to the subject- matter:

Provided that in the case of licences granted tinder a patent, the Controller shall, if so requested by the patentee or licensee, tak" 10 steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.

(5) Except for the purposes of an application under sub-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 15 subjection (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, f6r reasons to be recorded in writing, otherwise directs.

70. Subject to the provisions contained in this Act relating to co- 20 Power of registered grantee or Pro- prietor to deal with patent.

ownership of patents and subject also to any rights vested in any other person of which notice is entered in the register, the person or persons registered as grantee or proprietor of a patent shall have power to assign, grant licences under, or otherwise deal with, the patent and to give effectual receipts for any consideration for any 35 such assignment, licence or dealing:

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

(a) by the absence or omission from the register of any 3° Rectifica- tion of register by High Court.

entry; or

(b) by any entry made In the register without sufficient cause; or

(c) by any entry wrongly remaining on the register; or

(d) by any error or defect in any fentry 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 4°

(3) Notice 01 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 shall 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.

72. (7) Subject to the provisions contained in this Act and any ] !O rules made thereunder, the register shall at all convenient times be t 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 15 required or authorised by or under this Act to be entered therein.

CHAPTER XIV

PATENT OFFICE AND ESTABLISHMENT

Controller and other officers 73. (1) The Controller General of Patents, Designs and Trade Marks appointed under sub-section (1) of section 4 of the Trade and ,ft2o Merchandise Marks Act, 1958, shall be the Controller of Patents for 43 of 195f

the purposes of this Act.

(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 25 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 purposes of this Act, there shall be an office which

shall be known as the patent office.

(2) The patent office provided by the Central Government under

Patent office and its branches.

L. 30 the Indian Patents and Designs Act, 1911, shall be the patent office 2 of 1011.

under this Act.

(3) 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 33 other places as the Central Government may think fit, branch offices of the patent office.

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

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, except by inheritance or bequest, any right or interest in any patent issued by that office.

Restric- tion on employees of patent office as to right or interest In patents.

76. An officer or employee in the patent office shall not, except 5

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,—

(a) furnish information on a matter which is being, or has Officers and employeei not to furnish informa- tion, etc.

been, dealt with under this Act or under the Indian Patents and io Designs Act, 1911; or

2 of lftil.

2 of 1911.

(b) prepare or assist in the 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

15

(c) conduct a search in the records of the patent office.

CHAPTER XV

POWERS OF CONTROLLER GENERALLY

5 of 1908.

77. (2) Subject to any rules made in this behalf, the Controller in any proceedings before him under this Act shall have the powers 20 of a civil court while trying a suit under the Code of Civil Procedure, 1908, in respect of the following matters, namely: —

Controller to have certain powers of a civil court.

(a) summoning and enforcing the attendance of any person

and examining him on oath;

(b) requiring the discovery and production of any docu- 25

ment;

(c) receiving evidence on affidavits;

(d) issuing commissions for the examination of witnesses

or documents;

(e) awarding costs;

30

(f) reviewing his own decision on application made within

the prescribed time and in the prescribed manner;

(g) setting aside an order passed ex parte on application

made within the prescribed time and in the prescribed manner;

(h) any other matter which may be prescribed". a

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

Power of Controller to correct clerical errors, etc. 78. (1) Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications or complete specifi- cations and subject to the provisions of section 44, the Controller may, in accordance with the provisions of this section, correct any ^ clerical error in any patent or in any specification or other docu- ment filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register.

(2) A correction may be made in pursuance of this section either io upon a request in writing made by any person interested and accom- panied by the prescribed fee, or without such a request. ;; (3) Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or t5 the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.

(4) Where a request is made under this section for the correction of any error in a patent or application for a patent or any document 20 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 and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be advertised in ²5 the prescribed manner.

(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 is given, the Controller shall give notice thereof to the person by whom 30 the request was made, and shall give to him and to the opponent an opportunity to be heard before he decides the case.

79. Subject to any rules made in, this behalf, in any proceeding Evidence how to be given and powers of Controller in respect thereof.

under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the con- 35 trary, but in any case in which the Controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be cross-examined on the contents of his affidavit.

Exercise of discre- tionary powers by- Controller.

80. Without prejudice to any provision contained in this 40 Act requiring the Controller to hear any party to the proceedings thereunder or to give any such party an opportunity to be heard, the Controller shall give to any applicant for a patent, or for amendment of a specification (if within the prescribed time the applicant so

794 G of I Ex,—14.

requires) an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.

Disposal by Control-

81. Where under the provisions of this Act or the rules made there- under the Controller may extend the time for doing any ect, nothing 5 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.

CHAPTER XVI

ler of applica- tions for extension oi¹ time.

WORKING OF PATENTSJ COMPULSORY LICENCES, LICENCES OF RIGHT AND IO

REVOCATION

82. In this Chapter, unless the context otherwise requires,—

(a) "patented article" includes any article made by a patent-

ed process; and

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

(fe) "patentee" includes an exclusive licensee. x,

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

General ] principle! j applicable j lo working I of patented inventions.

(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial 20 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

enjoy a monopoly for the importation of the patented article.

84. (1) At any time after the expiration of three years from the 25 Compul- sory licenceea.

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 or that the patented invention is not available to the public at a reasonable price and praying for the grant of a compul- 3° sory licence to work the patented invention.

(2) An application under this section may be mtade by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be estopped from alleging that the reason- able requirements of the public with respect to the patented inven- 3 tion are not satisfied or that the patented invention is not available to the public at a reasonable price by reason of any admission made

by him, whether in such a licence or otherwise or by reason of his having accepted such a licence.

(3) Every application under sub-section (1) shall contain a state- 4°

ment setting out the nature of the applicant's interest together with

such particulars as mey 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 set out in section 85.

5 (5) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may order the patentee to grant a licence upon such terms as, he may deem fit,

to (6) Where the Controller directs the patentee to grant a licence he may as incidental thereto exercise the powers set out in section 03.

• • • * *

85. In determining whether or not to make an order in pursuance [5 of an application filed under section 84, the Controller shall take into account: —

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 by the patentee or any licensee to make full use of the invention;

²⁰ (ii) the ability of the applicant to work the invention to the public advantage;

* * * * *

(Hi) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application

2 were granted;

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

Endorse- ment of patent with the words "Licences of right." 86. (1) At any time after the expiration of three years from the 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 or that the patented invention is not available to the public at a reasonable price.

55 (2) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satis- fied or that the patented invention is not available to the public at a reasonable price, may make an order that the patent be endorsed

with the words "Licences of right".

(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

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

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

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

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

I0 in respect of inventions relating to—

(i) substances used or capable of being used as food or as medicine or drug ;

Certain

patents

deemed to

be endors-

ed with thi

words

"Licen-

ces of

right".

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

(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 (fa) every patent granted after the commencement of this ²⁰ Act in respect of any such invention as is referred to in section

£;

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 ²5 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.

88. (1) Where a patent has been endorsed with the words "Licences 3° of right", any person who is interested 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, notwith- standing that he is already the holder of a licence under the patent.

(2) If the parties are unable to agree on the terms of the licence, 35 Effect of endorse- ment of patent with the words "Licences of right".

Hther 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 terms on which the licence shall be granted by the patentee. 4°

(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 (1), permit him 5 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.

(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 I<; 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 of sub-sections (7), (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,

Revocation of patents by the Controller for non- working.

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 date of the order granting the first compulsory licence or, as the case may be, the date of the grant of the first licence under section 88, 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 or that the patented invention is not available to the public at a reasonable price.

(2) Every application under sub-section (I) 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*!! interest.

(3) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been 40 satisfied or that the patented invention is not available to the public at a reasonable price, may make an order revoking the patent.

(4) Every application under sub-section (1) shall ordinarily be

decided within one year of its being presented to the Controller.

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

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

(i) an existing trade or industry or the development thereof or the establishment of any new trade or industry in India or the trade or industry of any person or classes of per- I⁰ sons trading or manufacturing in India is preiudiced; or

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

(in) a market for the export of the patented article *5 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 prejudiced; or

(b) If, by reason of conditions imposed by the patentee (whe- 20 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; ²5 or

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

(d) if the demand for the patented article in India is being 3° mot 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

(Hi) other persons against whom the patentee is not tak- 35 ing or has not taken proceedings for infringement; or

(c) if the working of the patented invention in India on a commercial scale is being prevented or hindered by the importa- tion fvenn abroad of the patented article by the patentee or the other persons referred to in the proceeding clause, 40

Power of Controllei to adjourn, applica- tions for compulsory licences, etc, in certain cases.

91. (I) Where an application under section "4, section 06 or sec- J 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 1 5 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 thai is reasonably practicable, he may, by J order, adjourn the further hearing of the application for such period , not exceeding twelve months in the aggregate es appears to him to

Jo be sufficient for the invention to be so worked:

Provided that in any case where the patentee establishes that the reason why a patented invention could not be worked as aforesaid before the date of the application was due to any State or Central Act or any rule or regulation made thereunder or any order of the ¹5 Government imposed otherwise than, by way of a condition for the working of the invention in Tndia or for the disposal of the patented articles or of the articles made by the process or by the use of the patented plant, machinery, or apparatus, then, the period of adjourn- ment ordered under this sub-section shall be reckoned from the date 20 on which the period during which the working of the invention was prevented by such Act, rule or regulation or order of Government as computed from the date of the application, expires.

(2) No adjournment under sub-section (1) shall be ordered unless the Controller is satisfied that the patentee has taken with prompti- 25 tude adequate or reasonable steps to start the working of the inven- tion in India on a commercial scale and to an adequate extent.

• * * • *

Procedure for dealing with appli- cations under sec- tions 84, 86 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 30 facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the patentee and any other person appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the Official Gazette.

35 (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.

4° (3) Any such notice of opposition shall contain a statement set- ting out the grounds on which the application is opposed.

(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.

Powers of Controller in granting compulsory licenses,

93. (7) Where the Controller is satisfied on application made under section 84 that the manufacture, use or sale of materials not 'f protected by the patent is prejudiced by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, he may, -* subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.

(2) Where an application under section 84 is made by a person being the holder of a licence under the patent, the Controller may, io 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,

(3) Where on an application made under section 84, the Control- 15 ler orders the grant of a licence, he may direct that the licence shall operate—

(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;

20

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

(4) Where two or more patents are held by the same patentee and an applicant for a compulsory licence establishes that the reasonable requirements of the public have not been satisfied with respect to 2< 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 30 work the patent or patents in regard to which a licence is granted under section 84.

(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 35 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:

Provided that no such application shall be entertained,—

(a) unless the licensee has worked the invention on a com- 40 mercial scale for a period of at least twelve months, or

(b) a socond time.

(6) The decision of the Controller shall be subject to appeal to the High Court.

94. The powers of the Controller upon an application made under section 84 shall be exercised with a view to securing the following 5 general purposes, that is to say,—

General purposes for granting compulsorj licences, (a) that patented inventions are worked on a commercial 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 10 working or developing an invention in India under the protec- tion of a patent are not unfairly prejudiced.

95. (1) In settling the terms and conditions of a licence under section 84, the Controller shall endeavour to secure—

Terms anu conditions of com- pulsory- licences.

(i) that the royalty and other remuneration, if any, reserved ¹5 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 (ij) 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;

(Hi) that the patented a/ticles 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 substance made by a patented process from abroad where such importation would, but for such authorisation, constitute an infringement of the rights of the patentee.

30 (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 ft considers necessary to impose relat- ing among other matters to the royalty and other remuneration, if any, payable to the patentee, the quantum of Import, the sale price of the imported article, and the period of importation), and thereupon the Controller shall give effect to the directions.

Licensing of related patents.

96. (1) Notwithstanding anything contained in the other provi- 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 794 G of I Ex.—15.

as patentee or as licensee thereof, exclusive or otherwise, may apply to the Controller for the grant of a licence of the first mentioned patent on the ground that he is prevented or hindered without such licence from working the other invention efficiently or to the befit advantage possible.

5

(2) No order under sub-section (1) shall be made unless' the

Controller is satisfied—

(i) that the applicant is able and willing to grant, or pro-

cure the grant to the patentee and his licensees if they so desire,^ of, a licence in respect of the other Invention on reasonable JQ terms; and

(ii) that the other invention has made a substantial contri-¹ bution to the establishment or development of commercial or In- dustrial activities In India. (3) When the Controller is satisfied that the conditions mentioned I5

20 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 licence!

granted under this section as they apply to licences granted under sec- tion 84.

• * • * *

97. (1) If the Central Government is satisfied in respect of any 25 patent or class of patents in force that it is necessary or expedient in the public interest that 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 ^0 say—

Special provision for com- pulsory licences, on notifi- cation by Central Govern- ment.

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

(ii) in settling the terms of a licence granted under this sec- 35 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- 40 lation to the grant of licences under this section as they apply in relation to the grant of licences under section 84,

• • • • •

98. Any order for the grant of a licence under this Chapter shall '

operate as if it were a deed granting a licenee executed by the patentee and all other necessary parties embodying the terms and conditions, if any, settled by the Controller.

3rder for licence to ope- rate aa a deed between parties concern- ed.

5 CHAPTER XVH

USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF

INVENTIONS BY CENTRAL GOVERNMENT

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

99. (1) For the purposes of this Chapter, an invention is said to be used for the purposes of Government if it is made, used, exercised ¹⁰ 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 Gazette.

T5 (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 gection 48. * *

100. (I) Notwithstanding anything contained in this Act, at any time after an application for a patent has been filed at the patent 20 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.

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

(2) Where an invention has, before the priority date of the rele- 25 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 consequence of the communication of the invention directly or indirectly by the patentee or by a person from whom he derives title, any use of the invention 30 by the Central Government or any person authorised in writing by it for the purposes of Government may be made free of any royalty or other remuneration to the patentee.

(3) If and so far as the invention has not been so recorded or tried or tested as aforesaid, any use of the invention made by the Central a- 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 aa aforesaid, shall be made upon terms as may be agreed upon either

before or after the use, between the Central Government or any person authorised under sub-section (1) and the patentee, or, as may in default of agreement be determined by the High Court on a reference under section 103.

(4) The authorisation by the Central Government in respect of an 5 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- io tion.

(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, *5 the Government shall notify the patentee as scon as practicable of the fact 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 invention has been made, used, exercised or vended for the purposes of a Govern- 20 ment undertaking or an undertaking in a class or classes of indus- tries notified by the Central Government under section 99, the Cen- tral Government may call for such information as may be necessary for this purpose from such undertaking.

(6) The right to make, use, exercise and vend an invention for the 25 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 (1) were the patentee of 30 the invention.

(7) Where in respect of a patent which has been the subject of an authorisation under this section, there is an exclusive licensee as is referred to In sub-section (3) of section 101, or where such patent has been assigned to the patentee in consideration of royalties or other 35 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 40 such assignor or exclusive licensee.

101. (I) In relation to eny use of a patented Invention, or an in- vention in respect of which an application for a patent is pending, made for the purposes of Government—

(a) by the Central Government or any person authorised by 5 the Central Government under section 100; or

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

Rights of third parties in respect of use of 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- I0 ween the patentee or applicant for the patent (or any person who 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—

(i) restrict or regulate the use for the purposes of Govern- !5 ment of the invention, or of any model, document or informa- tion relating thereto, or

(ii) provide for the making of payments in respect of any use of the invention or of the model, document or information relating thereto for the purposes of Government (Including pay- 20 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 (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- 30 ernment by the patentee to the order of the Central Government, sub-section (3) of section 100 shall have effect as if that use were made by virtue of an authority given under that section; and any use of the invention for the purposes of Government by virtue of sub-section (3) of that section shall have effect as if the reference 35 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 at 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, payments are required to be made by the 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

respect of such patent there is an exclusive licensee authorised under his licence to use the invention for the purposes of Government, such sum shall be shared by the patentee and such licensee in such proportions, If any, as may be agreed upon between them or as may in default of agreement be determined by the High Court on a 5 reference under section 103 to be just, having regard to any expen- diture incurred by the licensee—

(a) in developing the said invention; or

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

102. (7) The Central Government may, if satisfied that it is necessary that an invention which is the subject of an application s for a patent or a patent should be acquired from the applicant or 15 Acquisi- tion of inventions and patents by the Central Govern- ment.

the patentee for a public purpose, publish a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in respect of the invention or patent shall, by force of this section, stand transferred to and be vested Jn the Central Government.

²o

(2) Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the patentee and other persons, if any, appearing in the register as having an interest in the patent-

(3) The Central Government shall pay to the applicant, or, as the case may be, the patentee and other persons appearing on the 25 register as having an interest in the patent such compensation as may be agreed upon between the Central Government and the ap- plicant, or the patentee and other persons; or, as may, in default of agreement, be determined by the High Court on a reference under section 103 to be just having regard to the expenditure In- 30 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

, 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 the use of an invention for the purpoaef of Government thereunder or as to the right of any person to receive any part of a payment made in pursuance of sub-section 4° (3) of that section or as to the amount of compensation payable for the acquisition of an invention or a patent under section 102, may be Reference to High Court of disputes as to use for pur- poses of Govern- ment.

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

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

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

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

(3) If in such proceedings as aforesaid any 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 15 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 (4) In determining under this section any dispute between the Central Government and any person as to terms for the use of an invention for the purposes of Government, the High Court shall have regard to any benefit or compensation which that person or any person from whom he derives title, may have received, or may ²5 be entitled to receive, directly or indirectly in respect of the use of the invention in question for the purposes of Government.

(5) In any proceedings under this section, the High Court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to an official referee, commis- 3° sioner or an arbitrator on such terms as the High Court may direct, and references to the High Court in the foregoing provisions of this section shall be construed accordingly.

(6) Where the invention claimed In a patent was made by a per- son who at the time it was made was in the service of the Central 35 Government or of a State Government or was an employee of a Government undertaking and the subject-matter of the invention is certified by the relevant Government or the principal officer of the Government undertaking to be connected with the work done in the course of the normal duties of the Government servant or employee

of the Government undertaking, then, notwithstanding anything 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 parties as it considers have an interest in the matter to be heard.

CHAPTER XVIII

SUITS CONCEHNING INFRINGEMENT OP PATENTS

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 I⁰ in any court inferior to a district court having jurisdiction to try the suit:

Provided that where a counter-claim for revocation of the patent

is made by the defendant, the suit, along with the counter-claim,

shall be transferred to the High Court for decision.

47 of 1966.

Power of court to makft declara- tion as to non- iniringe- mont.

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 ²⁰ exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or the licensee, if it is shown—

(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written 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

(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.

(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-

ed) A suit for a declaration may be brought by virtue of this section at any time after the date of advertisement of acceptance of the complete specification of a patent, and references in this section 4° to the patentee shall be construed accordingly.

106. (1) Where any person (whether entitled to or interested in J

a patent or an application for a patent or not) threatens any other person by circulars or advertisements or by communications, oral or 1 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— ]

able;

Power of Court to grant relief in cases of groundless threats of infringe- (a) a declaration to the effect that the threats are unjustifi- , ment proceed- ] ings.

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

¹⁰ (c) such damages, if any, as he has sustained thereby.

(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 a complete specification in respect of a claim of *5 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. (7) In any suit for infringement of a patent, every ground on ] which it may be revoked under section 64 shall be available as a f ground for defence.

Defences, etc., in suits for In- fringe- ment.

(2) In a suit for infringement of a patent granted In respect of a method or process of manufacture of a substance referred to in sec- ²5 tion 5, any substance of the same chemical composition or constitution as the first mentioned substance shall be presumed, unless the con- trary is proved, to have been made by the aforesaid patented method or process.

108- The reliefs which a court may grant in any suit for in- 30 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.

Reliefs in suits for in- fringe- ment.

Right of exclusive licensee to take proceed- ings P gainst 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 35 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 4° .as it constitutes an infringement of the rights of the exclusive

licensee as such.

794 G of I Ex.—16.

(2) In any uuit for infringement of a patent by the holder of a" 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. 5

Right of licensee under section I to take proceed- ings against infringe- ment.

110. Any person to whom a licence has been granted under section 84 shall be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent, and, if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were the patentee, making the patentee a defen- dant; but a patentee so added ag defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceed- ings.

111. (1) In a suit for infringement of a patent damages or an 15

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.

Restric- tion on power of court to grant damages 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 Relieving that a patent exists 20 by reason only of the application to an article of the word 'Patent', 'Patented' or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.

(2) In any suit for infringement of a patent the court may, if it 25

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.

C?) Where an amendment of a specification by way of disclaimer, 3O

correction or explanation has been allowed under this Act after the publication of the specification, no damages or account of profits shall be granted in any proceeding in respect of the use of the invention before the date of the decision allowing the amendment, unless the court is satisfied that the specification as originally published was 35 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.

Restric- tion on power of court

112. If in proceedings for the infringement of a patent endorsed or deemed to be endorsed with the words "Licences of right" (otherwise 4O than by the importation of the patented article from other countries) the infringing defendant is ready and willing to take a licence upon

to grant injunc- tion in certain cases.

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- 5 see if such a licence had been granted before the earliest infringe-

ment.

113. (2) 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, 10 the Court may certify that the validity of that claim was contested

In those proceedings and was upheld.

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

(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 15 in so far as it relates to that claim, the patentee or other person rely- ing on the vaHdity of the claim obtains a final order or judgment In his favour, he shall be entitled to an order for the payment of hia full costs, charges and expenses of and incidental to any such suit or proceeding properly incurred so far as they concern the claim in 20 respect of which the certificate was granted, unless the court trying

the suit or proceeding otherwise directs:

Provided that the costs as specified in this sub-section shall not be ordered when the party disputing the validity of the claim satisfies the court that he was not aware of the grant of the certificate when 25 he raised the dispute and withdrew forthwith such defence when he

became aware of such a certificate.

(5) 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

gO on the scale referred to therein.

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 respect of any valid claim which is

35 infringed:

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

Provided that the court shall not grant relief except by way of Injunction save in the circumstances mentioned in sub-section (2).

(2) Where the plaintiff proves that the invalid claim was framed in good, faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the court as to costs and as to the date from which damages or an account of profits should be reckoned, and in 5 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-

Scientific advisers.

115. (1) In any suit for infringement or in any proceeding before a court under this Act, the court may at any time, and whether or not I0 an application has been made by any party for that purpose, appoint an independent scientific adviser to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the pur- pose.

I5

(2) The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by Parliament by law for the purpose. 20

CHAPTER XIX

APPEALS

Appeals. 116. (1) 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 25 effect to any such decision, order or direction.

(2) Save as otherwise expressly provided In sub-section (l)i 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 section 69, section 78, section 84, section 86, section 89, section 93, section 96 and

section 87.

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 puch further time as the High Court may in accordance with the rules made by it under section 158 allow. ^0

Procedure for hear- ing of appeals.

117. (1) Every appeal before a High Court under section 116 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.

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

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) Every such appeal shall be heard as expeditiously as possi- 10 ble and endeavour shall be made to decide the appeal within a

period of twelve months from the date on which it is filed.

CHAPTER XX

PENALTIES

^ 118. If any person fails to comply with any direction given under 15 section 35 or makes or causes to be made an application for the grant of a patent in contravention of section 39, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

Contra- vention of secrecy provisions relating to certain Inventions.

119. If any person makes, or causes to be made, a false entry in 20 any register kept under this Act, or a writing falsely purporting to

Falsifica- tion of entries in register, etc. be a copy of an entry in such a register, or produces or tenders, 01 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

25 fine, or with both.

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.

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

deemed to represent—

(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise applied to, the article the word "patent" or "patented" or some other word expressing or im-

33 plying that a patent for the article has been obtained in India;

(b) that an article is the subject of an application for t patent in India, if there are stamped, engraved or impressed on or otherwise applied to, the article the words "patent applied for", "patent pending", or some other words implying that an 40 application for a patent for the article has been made in India

Explanation 2.—The use of words "patent", "patented", "patent applied for", "patent pending" or other words expressing or 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 5 an accompanying indication that the patent has been obtained or applied for in any country outside India.

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 JO 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 fails to furnish—

(a) to the Central Government any information which he is Zj 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,

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

20

(2) If any person, being required to furnish any such informa- tion as Is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with Imprisonment which may extend to six months, 25 or with fine, or with both.

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

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

30 Practice by non- registered patent agents.

Offences by com- panlei.

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 the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and 35 punished accordingly:

Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence. .Q

(2) Notwithstanding anything contained in sub-section ( I ), 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 3 attributable to any neglect on the part of any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

to 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.

[5 CHAPTER XXI

PATENT AGENTS

Register of patent agents.

125. The Controller shall maintain a register to be called the regia- : ter of patent agents in which shall be entered the names and address- ' es of all persons qualified to have their names so entered under ' i⁰ section 126.

126. (1) A person shall be qualified to have his name entered in the register of patent agents if he fulfils the following conditions, ] namely,—

^

Qualifica- tions for registra- tion as patent acenta.

(a) he is a citizen of India; **

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

(c) he has obtained a degree ** from any University in the territory of India or possesses such other equivalent ** qualifica- tions as the Central Government may specify in this behalf, and, in addition,—

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

J2B of 1961

(M) has passed the qualifying examination prescribed for the purpose; •*

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

(2) Notwithstanding anything contained in sub-section {1), a person who has been practising as a patent agent before the 1st day of November, 1966 and has filed not less than five complete specifi- cations before the said day, shall, on payment of prescribed fee, be 5 qualified to have his name entered in the register of patent agents.

Rights Oi patent

agents.

127. Subject to the provisions contained in this Act and in any rules made thereunder, every patent agent whose name is entered In the register shall be entitled—

(a) to practise before the Controller; and

io

(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.

128. (1) Subject to the provisions contained in sub-section (2) and to any rules made under this Act, all applications and com- 15 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.

(2) The following documents, namely,—

(i) applications for patents;

20

({{) applications for the restoration of lapsed patents;

(in) applications for the sealing of patents after the time allowed for that purpose by or under sub-section (2), Or aub- section (3) of section 43 has expired;

(iv) applications for leave to amend; 25

(v) applications for compulsory licences or for revocation;

and

(ui) notices of surrender of patents;

shall be signed and verified in the manner prescribed by the person ^ making such applications or giving such notices:

Provided that if such person is absent from India, they may be signed and verified on his behalf by a patent agent authorised by him in writing in that behalf.

izy. (,1) INO person, eitner alone or in partnersnip with any otner 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 hla

Restric- tions on practice as patent agents.

5 partners are so registered.

(2) No company or other bod> 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

I0 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 Centra] 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—

Removal from register or patent agents and resto- ration.

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

on account of misrepresentation or suppression of material fact;

(ii) that he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct In his professional capacity which in the opinion of the Central

25 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.

131. (1) Subject to any rules made in this behalf, the Controller 30 may refuse to recognise as agent In respect of any business under this

Act—

Power of Controller to refuse to deal with (a) any individual whose name has been removed from, end

not restored to, the register; ••*

certain agents.

794 G of I Ex.—17.

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

section 123;

(c) any person, not being registered as a patent agent, who In the opinion of the Controller Is engaged wholly or mainly In acting as agent in applying for patents in India or elsewhere in 5 the name or for the benefit of the person by whom he la employed;

(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.

io

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

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

(o) the applicant for a patent or any person, not bedng a *5

patent agent, who is duly authorised¹ 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.

(b) an advocate, not being a patent agent, from taking part

in any proceedings under this Act otherwise than by way of draft- 20 ing any specification.

CHAPTER XXII

INTERNATIONAL ARRANGEMENTS

Notifica- tion as to convention countries.

133. (1) With a view to the fulfilment of a treaty, convention or arrangement with any country outside India which affords to appll- 25 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 in this behalf by notification in the Official Gazette does not accord to citizens of India the same rights in respect of the grant of patents and the protection of patent rights as it accords to its own nationals, no Notifica- tion as 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 granted under this Act.

Conven- tion appli- cations.

135. (1) Without prejudice to the provisions contained in section ¹⁰ 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- X5 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.

Explanation.—Where applications have been made for similar protection in respect of an invention in two or more convention ²⁰ countries, the period of twelve months referred to in this sub-section shall be reckoned from the date on which the earlier or earliest of the said applications was made.

(2) Where applications for protection have been made in one or more convention countries in respect of two or more inventions ²5 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 such application, apply separately to the applications for protection 35 in respect of each of the said inventions,

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,

Special provision! relating to convention applica- tions, 4° the first of such applications was made; and

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

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

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

(3) A convention application shall not be post-dated under sub- io 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 prioritits.

137. (1) Where two or more applications for patents in respect of inventions have been made in one or more convention countries and those inventions are so related as to constitute one invention, 15 one application may be made by any or all of the persons referred to in sub-section (1) of section 135 within twelve months from the date on which the earlier or earliest of those applications was made, in respect of the inventions disclosed in the specifications which accompanied the basic applications.

20

(2) The priority date of a claim of the complete specification, being a claim based on matters disclosed in one or more¹ of the basic applications, is the date on which that matter was first so disclosed.

(3) For the purposes of this Act, a matter shall be deemed to 25 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 end 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.

138. (1) Where a convention application is made in accordance 35 Supple- mentary provisiom as to conven- tion applica- tions.

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 40 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 cause 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 conven- tion applica- tions.

CHAPTER XXIII

15 MISCELLANEOUS

140. (1) It shall not be lawful to insert^-

(i) in any contract for or in relation to the sale or lease of a patented article or an article made by a patented process; or

Avoidance of certain restrictive conditions.

(ii) 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—

(a) to require thr> 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 25 extent his right to acquire from any person or to prohibit him from acquiring except from the vendor, lessor, or licensor or his nominees, any article other than the patented article or an article other than that made by the patented process; or

(b) to prohibit the purchaser, lessee or licensee from using, 30 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 or his nominee; or

35 (c) to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the

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

and any such condition shall be void.

(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 5 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.

(3) In proceedings against any person for the Infringement of I⁰ 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:

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 15 court that the restrictive condition was inserted in the contract without hia knowledge and consent, express or implied.

(4) Nothing in this section shall—

(o) affect a condition in a contract by which a person is prohibited from selling goods other than those of a particular 20 person;

(b) validate a contract which, but for this section, would be Invalid;

(c) affect a condition In a contract for the lease of, or licence to use, a patented article, by which the lessor or licensor 25 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.

(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 3° restrictive conditions declared unlawful by this section continue in force after the expiration of one year from such commencement.

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 35 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

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 5 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.

142. (1) There shall be paid in respect of the grant of patents Jo 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 ¹S been paid.

(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.

(4) Where a principal patent is granted later than two years 20 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.

Restric- tions upon publica- 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 ²5 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.

Reports of exami- ners to be confi- dential.

144. The reports of examiners to the Controller under this Act 30 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.

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

Publlcatio of paten- ted inven- tions.

146. The Controller may, at any time during the continuance of Power of Controller to call for informa- tion from patentees.

I0 the patent, by notice in writing, require a patentee or a licensee, 5 exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially work- ed in India as may be specified in the notice.

Evidence of entries, documents, etc.

147. (1) A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorised by this Act ¹ or any rules made thereunder to make or do, shall be prima fade evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or omitted to be done. J5

(2) A copy of any entry in any register or of any document kept in the patent office or of any patent, or an extract from any such register or document, purporting to be certified by the Controller and sealed with the seal of the patent office shall be admitted in evidence in all courts, and in all proceedings without further proof ²⁰ or production of the original.

(3) The Controller or any other officer of the patent office shall not, in any legal proceedings to which he is not a party, be 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 25 copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special causes.

Declara- tion by infant, lunatic, etc.

148. (1) If any person is, by reason cxf minority, lunacy or other disability, incapable of making any statement or doing anything re- 30 quired 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, 35 and do such thing in the name and on behalf of the person subject to the disability.

149. Any notice required or authorised to be given by or unde; this Act, and any application or other document so authorised o: required to be made or filed, may be given, made or filed by post

Servic*

of noticw,

etc., by-

post.

Security

for coats.

150. If any party by whom notice of any opposition is given undei 5 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

Transmii- "ion of orderi of court! to Controller.

i0 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.

l5 (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 ao entry in relation to such proceeding to be made in the prescribed manner in a supplemental record.

(3) The provisions of sub-sections (1) and (2) shall also apply to the court to which appeals are preferred against decisions of the courts referred to in those sub-sections.

Tranamii-

sion of

copies of

specifica-

tions, etc.,

and inspec-

tion

thereof.

2, 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 30 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.

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 35 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.

Loss or

destruction

of patents,

154. If a patent Is lost or destroyed, or Its non-production Is ac- 40 counted for to the satisfaction of the Controller, the Controller may at any time, on application made in th" prescribed manner and on 794 O of I Ex.—19.

payment of the prescribed tee, cause a duplicate thereof to be sealed

and delivered to the applicant.

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.

Report* of Controller to be placed before Parlia- ment

Patent to bind Govern-

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

157. Nothing in this Act shall affect the power of the Government or of any person deriving title directly or indirectly from the i° Government to sell or use any articles forfeited under any law for the time being In force.

Right of Govern- ment to lell or use for- feited arti- cles.

138. 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.

IJ Power of High Courts to mak" rules.

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 rules,

(2) Without prejudice to the generality of the foregoing power, thf; Central Government may make rules to provide for all or any of the following matters, namely:—

20

(i) the form and manner in which any application for a patent, any specifications or drawings and any other application or document may be filed in the patent office;

(if) the time within which any act or thing may be done under this Act, Including the manner in which and the time 25 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

" report to the Controller;

30

(v) 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, jo including its branch offices;

(ix) 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;

15 (oci) 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 manner in which any compensation for acquisi- tion by Government of an invention may be paid;

(ajitJ) the manner in which the register of patent agents may- be maintained; the conduct of qualifying examinations for 25 patent agents; and matters connected with their practice and conduct, including the taking of disciplinary proceedings against patent agents for misconduct;

(xv) the regulation of the making, printing, publishing and selling of indexes to, and abridgments of, specifications and other 30 documents in the patent office; and the inspection of indexes and abridgments and other documents;

(TO) any other matter which has to be or may be pres- cribed,

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

Rulea to

be pltccd before Parlia- ment.

180. Every rule made under this Act shall be laid, as soon as may- be after it is made, before each House of Parliament while It is in 5 session for a total period of thirty days which may be comprised in 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 lo thereafter have effect only in such modified form or be of no effect, as the case may be; so, however, that any such modification or an- nulment shall be without prejudice to the validity of anything pre- viously done under that rule.

161. (7) Where, aa a result of action taken by the Controller IS

20 of 1948.

>7 of 1W2.

1 Of 1011.

Special provisions with respect to certain applica- tions deemed to have been refused under Act 2 of 1011.

under section 12 of the Atomic Energy Act, 1948, or under section 20 of the Atomic Energy Act, 1962, an application for a patent made before the commencement of this Act could not be accepted within the time specified for the purpose in the Indian Patents and Designs Act, 1911 (hereafter in this section referred to as the repealed ²⁰ 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 ²S and shall be disposed of a3 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 (5) of section 162.

(2) The Controller may, before proceeding to act upon any such request as is referred to in sub-section (7), refer the matter to the 30 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.

(3) Where in pursuance of any such application as is referred to In sub-section (7) a patent is granted, the rights of the patentee shall 35 N>. subject to such conditions as the Controller thinks fit to Impose for the protection or compensation of persons who may have begun to svail themselves of, or have taken definite steps by contract or other- Wise to avail themselves of, the patented invention before the date of advertlsem"* of the acceptance of the complete specification 40

(4) A patent granted in pursuance of any such application as is

referred to in sub-section (/) shall be dated as of the date on which

the request for reviving such application was made under sub-

section (/).

162. (/) 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,

(2) Notwithstanding the repeal of the Indian Patents and Designs

Act, 1911, in so far as it relates to patents—

Repeal of Act 2 of 1911 in so far as it relates to patents and , savings.

IO (a) 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 pursu-

ance of that section, and

(b) the renewal fee in respect of a patent granted under

15 that Act shall be as fixed thereunder.

(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.

30 (4) The mention of particular matters in this section shall not f. prejudice the general application of the General Clauses Act, 1897, lftof 18"7.

with respect to repeals.

(5) Notwithstanding anything contained in this Act, any suit for

infringement of a patent or any proceeding for revocation of a

25 patent, pending in any court at the commencement of thia Act, may

be continued and disposed of, as if this Act had not been passed.

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 Designs for the purposes of the Indian Patents and

Amend- ment of Act 43 of 1958.

2 of 1911. j0 Designs Act, 1911" shall be omitted.

THE SCHEDULE

[See section 182]

AMENDMENTS TO THE INDIAN PATENTS AND DESIGNS ACT, 1911

1. Long title—Omit "Inventions and".

2. Preamble—Omit "inventions and". 5

3. Section 1—In sub-section (7) omit "Indian Patents and".

4. Section 2—

(a) omit clause (7) ;

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

(c) for clause (3), substitute—

io

43 of 1958.

'(3) "Controller" means the Controller General of Patents, Designs and Trade Marks appointed under sub-section (7) of section 4 of the Trade and Merchandise Marks Act, 1958;';

43 of 19S8.

(d) in clause (5) for "trade mark as defined in section 478", substitute "trade mark as denned in clause (v) of sub- 15 section (7) of section 2 of the Trade and Merchandise Marks Act, 1958";

(e) omit clause (6);

(f) in clause (7), after sub-clause (e) insert—

" (f) in relation to the Union territories of Dadra and 20 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;";

(g) omit clauses (8), (70) and (11);

2j (h) for clause (72), substitute—

' (72) "Patent Office" means the patent office referred to in section 74 of the Patents Act, 1966.'

5. Omit Part I.

6. For section 51B, substitute—

"51B. 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, 1966, shall

Designs to bind Govern- ment.

3 apply to registered designs as they apply to patents.".

7. In section 54, for "The provisions of this Act", substitute "The provisions of the Patents Act, 1966".

8. Omit sections 55 and 56.

9. Section 57—For sub-section (7), substitute—

l0 "(7) There shall be paid in respect of the registration of de- signs and applications therefor and in respect of other matters relating to designs under this Act such fees as may be prescribed by the Central Government.".

10. Omit section 59A.

15 11. Section 61—Omit sub-section (7).

12. For section 62, substitute—

"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 proprietor 20 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 (7), omit "to a patent or" and "patent or";

(b) in sub-section (2), omit "patent or" and for "patents 25 or designs, as the case may be/', substitute "designs,";

(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—

3O (a) in sub-section ( 7 ), o m it " p a t e n ts o r" a nd o m it " e i t h e r" 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 appli- 35 cation or of a specification, or".

17. Section 69—In sub-section (7), omit "to grant a patent for an invention or".

18. Section 71A-^0mit "or from patents, ipeciflcations and oth"r/\

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 clauia (c), omit "opponent".

22. Section 77—

Io (a) in sub-section {/)—

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

(li) for clause (e), substitute—

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

r5

(Hi) omit clause (eee);

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

23. Omit section 78.

24. For section 78A, substitute—

"78A. (7) Any person who has applied for protection for ²O Recipro- cal arrange- ment with United Kingdom and other Common- wealth countries.

(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 appll- 5 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.

(4) Where it is made to appear to the Central Government 10 that the legislature of any such Commonwealth country as may be notified by the Central Government in this behalf has 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 *5 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.".

25. Omit the Schedule.

S. L. SHAKDHER,

Secretary.

FRINTED IN INDIA BY THE GENERAL MAN'VGER, GOVERNMENT OF INDIA P K E S\ MINTO K O \ P. NEW DELHI AND PUBLISHED BY THE MANAGER OF PUBLICATIONS, DFCLHI. 1 96S