The Patents Act, 1970

Table of Contents
1. Meaning of patent
2. Patent law in India
3. Objects of the Patents Act
4. Salient features of the Patents Act
5. Inventions which are not patentable
6. Term of patent; procedure for grant and sealing
7. Submission of application for patent (Sections 6-11)
8. Publication and examination of the application
9. Acceptance of application for grant of patent
10. Opposition to grant of patent
11. Grant of patents and rights conferred
12. Surrender and revocation of patents
13. Grounds of revocation (high level)
14. Assignment of and registration of interest in patents (Sections 68-69)
15. Licences in patents
16. Suits concerning infringement of patents
17. Patent agents
18. Conclusion
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Meaning of patent

• A patent is an exclusive right granted to the inventor of an invention. It allows the patentee to prevent others from making, using, selling or importing the patented invention without consent.
• The word patent is derived from the Latin word patere which means "to be open". A patent is granted in return for full public disclosure of the invention so that the knowledge becomes available to society once the monopoly period ends.

Patent law in India 

• The earliest statutory recognition of patents in India dates to the enactment known as Act 6 of 1856 which granted exclusive privileges to inventors.
• This was modified by the Patent Act of 1859 which allowed British patent holders to register privileges in India.
• A consolidated statute, the Indian Patents and Designs Act, 1911, governed patents until the modern statute was enacted.
• Following committee reports and legislative attempts, the Patents Act, 1970 was passed by Parliament and received Presidential assent on 19 September 1970.
• Important administrative and reform steps followed through amendments; notable ones took place in 2002 and 2005, culminating in the present framework including product patents for pharmaceuticals and agro-chemicals subject to specific provisions.
• A committee under Justice Bakshi Tek Chand reported in 1950; earlier patent bills (for example the bill introduced on 21 September 1965) were reintroduced and ultimately led to the 1970 Act coming into force.

Objects of the Patents Act

The Act balances two principal objectives:

• Protection of the individual interest of the patentee - by granting exclusive rights that permit the patentee to exploit, assign or licence the invention and obtain commercial benefit.
• Protection of the public interest - by encouraging inventors to disclose inventions rather than keep them secret, thereby promoting dissemination of technology and eventual public access once the patent term ends.

The Act also aims to promote technological innovation, safeguard public health and ensure that patented inventions are worked in India so that benefits reach the society.

Salient features of the Patents Act

• Grant of patents to new and useful inventions: Patents are granted only for inventions that are new, involving inventive step, and capable of industrial application. The Act defines "invention" and related terms.
• Patent Office and Controller: A central Patent Office administers filings, examination, grant, sealing and registration of patents. The Controller of Patents exercises statutory powers under the Act.
• Limited term: Patents are granted for a definite period. As amended, a patent term is generally 20 years from the date of filing of the application.
• Surrender and revocation: Patents may be surrendered by the patentee or revoked by the Controller, the High Court, or the Central Government on specified grounds.
• Licences: The Act recognises voluntary licences and provides for compulsory licences in the public interest under defined conditions.
• Remedies for infringement: The Act provides civil remedies such as injunctions, damages or account of profits for infringement of patent rights.
• Government use and acquisition: The statute permits use of patented inventions for government or public purposes in specified circumstances.
• Patent agents: The Act recognises registered patent agents who may act before the Controller and prepare documents for proceedings.
• International arrangements: Provision is made for co-operation with foreign countries and adherence to international conventions.
• Key statutory definitions: Section 2(1)(m) defines "patent" as a patent granted under the Act and includes certain earlier patents; Section 2(1)(j) defines "invention"to include any new and useful:
  • art, process, method or manner of manufacture;
  • machine or other article;
  • substance produced by manufacture;
  • and any new and useful improvement of any of them, including an alleged invention.

Inventions which are not patentable

• The Act excludes certain subject-matter from patentability. Section 3 lists categories of matter that are not considered inventions for the purpose of the Act. Section 4 excludes inventions relating to atomic energy.
• Section 3 examples (non-exhaustive):
• Frivolous inventions or those contrary to public order, morality or injurious to public health.
• Discovery of a scientific principle, abstract theory, or a mere discovery of a natural substance.
• Discovery of a new property or new use of a known substance without enhanced efficacy.
• Mere arrangement or duplication of known devices, or an admixture that results only in aggregation of properties of components.
• Methods of agriculture or horticulture.
• Methods of treatment of humans or animals by surgery, therapy or diagnostic methods (these are excluded from patentability).
• Plants and animals (other than micro-organisms), including seeds, varieties and species, and essentially biological processes for their production or propagation.
• Mathematical methods, business methods, computer programmes per se, and algorithms as such.
• Literary, dramatic, musical or artistic works and other aesthetic creations (including cinematographic works) - these are protected under copyright, not patent law.
• Mere schemes, rules for mental acts or methods of playing games; presentations of information; topography of integrated circuits.
• Inventions which are essentially traditional knowledge or mere aggregation of known properties of traditionally known components.
• Section 3(d) - Important pharmaceutical provision: The mere discovery of a new form of a known substance is not patentable unless it results in a significant enhancement of the known efficacy of that substance. This provision has been applied to prevent "evergreening" of pharmaceutical patents and was affirmed by the Supreme Court in later jurisprudence.
• Section 4 - Inventions related to atomic energy are not patentable; the Central Government may give directions in matters touching atomic energy and patents.

Term of patent; procedure for grant and sealing

• Term: A patent is granted for a limited period - presently 20 years from the date of filing of the patent application. Historically, earlier statutes provided different terms (for example, earlier terms of 14 years existed under prior law).
• Overview of the grant process: The main stages are filing an application, specification (provisional or complete), publication, examination, acceptance, advertisement and sealing.

Submission of application for patent (Sections 6-11)

(a) Who can apply

• Any person claiming to be the true and first inventor may apply.
• An assignee of the true and first inventor may apply.
• The legal representative of a deceased person who immediately before death was entitled to make the application may apply.
• Applications may be made singly or jointly by two or more persons.

(b) Form and contents of application (Section 7)

• An application should relate to one invention only and must state the title of the invention.
• If filed by an assignee, documentary proof of assignment must accompany the application.
• The applicant must state that they are in possession of the invention and give the true name of the first inventor.
• The application must be accompanied by a specification - either a provisional or a complete specification (or a provisional followed by a complete specification within the statutory time limit).

(c) Specification of the invention (Sections 9 & 10)

• The specification describes the invention and the manner in which it is to be performed so that a person skilled in the art can work it. It is essential for determining the scope of protection claimed.
• A provisional specification may be filed first to secure a filing date; the complete specification must be filed within the prescribed period (normally within 12 months of the provisional filing unless extended as per rules).

(d) Amendment of application and specification

• Amendments to the application, complete specification or documents accompanying the application may be made by the applicant, or ordered by the Controller or by a court (for example, the High Court) under statutory provisions.

Publication and examination of the application

• Publication (Section 11-A): Applications are ordinarily published in the Official Gazette after a prescribed period. Publication puts the application and basic details into the public domain.
• Examination (Sections 11-B, 12, 13): Examination of the application is carried out by an Examiner when the application is requested for examination or referred by the Controller. The Examiner checks compliance with formal and substantive requirements, prior art, novelty and patentability and reports to the Controller.
• Report of the Examiner (Section 14): The Examiner submits a report and search results to the Controller. If objections exist, the Controller communicates them to the applicant and permits opportunity to respond.
• Powers of the Controller (Sections 15-20): The Controller may refuse or require amendment of the application, divide an application, date applications, accept or refuse complete specifications in case of anticipation, or allow substitution of application where appropriate.

Acceptance of application for grant of patent

• Application for acceptance (Section 21): After examination, if the Controller raises objections, the applicant must comply with requirements within the prescribed time (amendments extended some periods; for example periods were changed by the 2002 amendment). Failure to comply may lead to abandonment of the application.
• Acceptance of complete specification (Section 22): If the applicant complies with the Controller's requirements, the Controller may accept the application and the complete specification.
• Advertisement of acceptance (Section 23): On acceptance, the Controller advertises acceptance in the Official Gazette and the application, complete specification and drawings (if any) become open to public inspection.
• Effect of acceptance (Section 24): From the date of advertisement of acceptance until the patent is sealed, the applicant enjoys similar privileges and rights as if the patent were sealed on the advertisement date.

Opposition to grant of patent

• A person interested may oppose grant of a patent within the statutory period (for example within four months from the date of advertisement of acceptance) by serving a notice of opposition on the Controller.
• The Controller hears the opponent and the applicant and decides the opposition.
• Grounds of opposition (Section 25): include wrongful obtainment of the invention by the applicant, prior publication, prior public knowledge in India, subject-matter not being an invention or not patentable under the Act, insufficient disclosure, and failure to provide required information to the Controller.

Grant of patents and rights conferred

• Grant (Section 43 onwards): Where the Controller does not refuse and the application complies with the Act, a patent is granted, the grant is sealed by the Patent Office and the grant date is entered in the Register. The grant is notified publicly.
• Date of patent and sealing: The term "date of patent" relates to the filing date of the complete specification; the date of sealing is when the patent is entered in the Register and sealed by the Controller.
• Form, extent and effect (Section 46): Each patent is granted in a prescribed form and has effect throughout India.
• Conditions (Section 47): Patents are granted subject to conditions specified in the Act (e.g., working requirements, compliance with statutory obligations).
• Rights of patentee (Section 48): The patentee has the exclusive right to make, use, exercise, sell or distribute the patented article or substance in India, and may do so by himself, his agent or licensees. The patentee may also assign the patent or licence it in whole or in part for consideration.
• Grant to the true and first inventor: If a patent was obtained wrongfully, the true and first inventor may seek revocation or reassignment through the appropriate proceedings (for example before the Appellate Board or courts under statutory provisions).

Surrender and revocation of patents

• Patents may be surrendered or revoked under prescribed procedures and on specified grounds. Revocation may occur by order of the Controller, by the High Court, or by the Central Government.

Revocation by the Controller

• The Controller may revoke a patent when the patentee offers to surrender it, on application by the Central Government or any person interested for reasons including non-working of the patent, or on directions from Government (for example, in atomic energy matters).
• Offer to surrender (Section 63): A patentee may offer to surrender a patent. The Controller advertises the offer and hears any opposition before deciding whether to accept the surrender and revoke the patent.
• Revocation for non-working (Section 85): The Controller may revoke a patent on grounds such as failure to work the invention in India, failure to satisfy reasonable public requirements, or inability to make the patented invention available at a reasonably affordable price.
• Government direction in atomic energy cases: If the Central Government is satisfied that a granted patent relates to atomic energy for which no patent can be granted, it may direct the Controller to revoke the patent.

Revocation by the High Court (Section 64)

• The High Court may revoke a patent on petition by any person interested or by the Central Government, or on a counter-claim in infringement proceedings, on any ground specified in Section 64 (for example, lack of novelty, non-patentable subject matter, insufficiency of disclosure, wrongful obtainment, false representation, failure to disclose required information under Section 8).
• Case law has emphasised that grant of a patent does not guarantee its absolute validity; validity can be challenged in court proceedings.

Revocation by the Central Government (Section 66)

• The Central Government may revoke a patent in the public interest by publishing a declaration in the Official Gazette after giving the patentee an opportunity to be heard. Revocation may be on grounds that the patent or its exercise is mischievous to the State or generally prejudicial to the public.

Grounds of revocation (high level)

• Patents may be revoked where, among other grounds:
  • the subject-matter claimed was already claimed in a valid claim of an earlier patent with an earlier priority date;
  • the patent was obtained by a person not entitled to apply;
  • the patent was obtained wrongfully in contravention of the petitioner's rights;
  • the subject-matter is not an invention as defined in the Act or is not new or not useful;
  • the specification does not sufficiently or fairly describe the invention, or the claims are not fairly based on the specification;
  • the patent was obtained by false suggestion or representation;
  • the invention was secretly used in India before the priority date; or
  • the applicant failed to disclose required information under Section 8 or furnished information false to his knowledge.

Assignment of and registration of interest in patents (Sections 68-69)

• Assignment: A patent, or any share or interest in a patent, may be assigned, mortgaged or otherwise dealt with by contract. Under amendments introduced by later Acts, assignment documents must be in writing, duly executed and, for validity as against third parties, registered.
• Registration (Section 69): A person who acquires a patent or an interest in a patent by assignment or by operation of law may apply to the Controller to have the entitlement entered in the Register. Similarly, mortgages, licences and other interests can be notified to the Controller for public record.

Licences in patents

• Licences allow others to work the patented invention. The Act recognises different types of licences and provides procedures and criteria for compulsory licences intended to protect public interest.

Types of licences

• Voluntary licence: Granted by the patentee to another person by written agreement setting out terms and conditions. The agreement is usually filed with the Controller. A voluntary licence is a commercial contract and must comply with statutory formalities to be effective.
• Compulsory licence: The Controller may grant a compulsory licence in specified circumstances to ensure the patented invention is worked in India and available to the public on reasonable terms.
• Licences of related patents: Where effective working of one patented invention requires use of a related patent, an applicant may seek a licence in the related patent to enable practical working. The Controller may grant such licence if satisfied that the applicant can work the invention and that the applicant's invention contributes substantially to industrial or commercial activity in India.

Compulsory licence - procedure and grounds (Sections 83-85, 84)

• General considerations (Section 83): While deciding compulsory licence applications, the Controller considers public interest, encouraging invention, ensuring inventions are worked in India on a commercial scale, promoting socio-economic and technological development, protecting public health, preventing abuse of patent rights, avoiding unjustified import monopoly, and ensuring availability at reasonably affordable prices.
• Application by any person interested (Section 84): Any person interested may apply for a compulsory licence after the expiry of three years from the date of grant of the patent. The applicant must show the nature of his interest and facts on which the application is based. The Controller may grant a compulsory licence if satisfied that reasonable public requirements are not being met, the invention is not available at an affordable price, or the invention is not being worked in India.
• Revocation by Controller for non-working (Section 85): The Controller may revoke a patent for non-working on grounds similar to those listed for compulsory licences: not worked in India, public requirements not satisfied, or not available at reasonably affordable price.
• Compulsory licence on Government notification: The Central Government may, by notification in the Official Gazette, declare that compulsory licences should be grantable in respect of a particular patent; applications may then be made to the Controller under the prescribed procedure.

Suits concerning infringement of patents

• Declaratory reliefs and groundless threats (Sections 105-106): The courts may grant declarations as to non-infringement and remedies for groundless threats of infringement proceedings. If a person is wrongfully threatened with infringement proceedings (by oral or written communication) the person threatened may seek relief in court.
• Non-infringement actions: A person may seek a declaration that their activities do not infringe a patent claim and obtain legal certainty.
• Jurisdiction (Section 104): Suits under the relevant sections may be instituted in a court not inferior to a District Court that has jurisdiction to try the suit.
• Burden of proof (Section 104-A): Certain statutory provisions govern evidential burdens in suits; amendments have clarified aspects of proof in infringement matters.
• Acts not to be considered infringement (Section 107-A):Limited acts are expressly excluded from being treated as infringement, notably:
  • Acts done for obtaining regulatory approval, such as making or importing patented products for purposes reasonably related to development and submission of information required under any law that regulates manufacture, construction, use or sale of the product (safe harbour for regulatory test and trial);
  • Importation of the product from a person who is duly authorised to produce, sell or distribute it.
• Remedies: Courts may award injunctions, damages or an account of profits for infringement. Section 112 restricts the power of courts to grant injunctions in certain specified cases.

Patent agents

• Definition (Section 2(1)(m)): A patent agent is a person registered under the Act as a patent agent by the Controller of Patents.
• Rights of a patent agent: A registered patent agent has the right to practise before the Controller of Patents and to prepare documents and transact business connected with proceedings before the Controller.
• Statutory provisions (Sections 125-132): These sections govern registration, qualifications, rights and duties, verification of documents, restrictions, removal from the register, Controller's power to deal with agents and savings relating to other authorised persons.
• Registration (Section 125): The Controller maintains the Register of Patent Agents and registers persons qualified to act as patent agents.
• Qualifications (Section 26): To be registered a person ordinarily must be a citizen of India, at least 21 years old, possess a degree in science, engineering or technology (or other prescribed qualifications), pass the prescribed qualifying examination, or have relevant official experience (for example, functioning as an Examiner or Controller for a specified period), and pay prescribed fees.
• Documents verified by the agent (Section 128): A patent agent may sign and verify applications and communications to the Controller when authorised in writing by the person concerned.
• Restrictions (Section 129): A patent agent cannot practice in partnership with persons who are not registered agents, and corporate entities cannot hold themselves out as patent agents.
• Removal from the register (Section 130): The Controller may remove an agent's name from the Register for misrepresentation, conviction of offences leading to imprisonment, misconduct in professional capacity, or other specified causes.
• Controller's power (Section 131): The Controller may refuse to recognise a person as agent in respect of any business if the person has been removed from the Register or convicted of offences or is otherwise disqualified.
• Savings (Section 132): Certain persons authorised under prior provisions may continue to act as agents subject to transitional safeguards.

Conclusion 

• The Patents Act, 1970 creates an exclusive, time-limited right for inventors in exchange for public disclosure, while carefully balancing private incentives with public interest through exclusions, working requirements, compulsory licences and revocation provisions.
• For practitioners and students of law, the principal statutory touchpoints are the definitions (Sections 2, 3 and 4), filing and specification requirements (Sections 6-11), examination and acceptance (Sections 11-A to 24), opposition and revocation (Sections 25, 63-66, 64), rights and remedies (Sections 43-53, 104-112), and the provisions dealing with licences, assignments and agents (Sections 68-69, 83-85, 125-132).
• Understanding the interplay between patent rights and public interest - especially in areas such as pharmaceuticals and public health - is central to applying the Act in practice.