INTELLECTUAL PROPERTY RIGHTS

UNIT – II

PATENTS

PROCEDURE FOR OBTAINING A PATENT:

Following steps are involved in obtaining a Patent:

 Submission of Application
 Examination of Application
 Advertisement of acceptance of complete specification
 Opposition to grant of patent
 Hearing of the parties
 Grant and sealing of Patent

The above steps are detailed as under.

1. Submission of Application:

 Persons entitled to apply for Patent: As per Section 6, following are entitled to make
an application:
 Any person claiming to be true / first inventor of the invention.
 Any person who is an assignee of the true / first inventor and has been given
the right to submit such application.
 Legal representative of a deceased person, who prior to his / her death was
entitled to make such application.
Application can be submitted by one person alone or jointly with others, as the case
may be.

 Form of the application (Sec. 7)

 Only one application per invention, in the prescribed form available in the
Patent office; to be filed in the Patent office.
 In case the assignee is applying on behalf of the original inventor, a supporting
document for proof of such assignment has to be enclosed with the
application.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

  An application made by Indian citizen has to be accompanied by provisional /
complete specification.
 Special provisions under Section 8 for foreign applications. Information regarding the
name of their country, etc. need to be furnished.
 As per Section 9, if provisional specification is submitted, it has to be followed by
complete specification within 12 months. It can be extended to 15 months by a
requisition to Controller.

2. Examination of Application:
The submitted application is examined by the Examiner of Patents. It is examined to
see if the application complies with all the requirements of the Act, whether there
exists any grounds for objections and also whether the invention has already been
claimed or published by any other person.
The examiner searches through publications, specifications of prior applications,
specifications of patents already existing, in order to check whether the same
invention has already been published or claimed or is the subject matter of any
existing or expired patent.

3. Advertisement of acceptance of Complete Specification:

The purpose of such an advertisement is to let the general public know about the
claims of the applicant to be the true and first inventor. Through this, any valid
opposition for the claims of the applicant are invited.

4. Opposition:
Any opposition for the claims of the applicant has to be filed with the Controller of
Patents within 3 months of the date of notification. An extension of one month is
possible by the Controller.

5. Hearing of the Parties:

An opportunity is given to both the applicant as well as the one who files opposition,
to deliberate about the opposition. The applicant should substantiate his invention
against the oppositions to save his application.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 6. Grant and Sealing of Patent:
If the application is not opposed or the opposition is decided in favour of the applicant
or is not refused the patent is granted or sealed on payment of sealing fee within 6
months from the date of advertisement.

KINDS OF SPECIFICATIONS:

1. Provisional Specifications
2. Complete Specifications

Provisional Specification:

Provisional Specification is a document which can be submitted even before the invention is
finalized. It is not the complete / specific description of the invention, but only gives a
general description of invention and anticipated results.

Provisional specification is often filed to book a priority date for the Patent. By submitting
provisional specification, the inventor can secure his / her invention against a similar claim
for Patent being applied by another inventor. Normally, the priority date is the date of filing
of provisional specification, provided the claims are based on the matter described in the
provisional specification.

However, the provisional specification has to be followed by a complete specification within

12 months of filing of the former. This can be extended to 15 months by placing a request to
the controller of Patents. Failing to submit complete specification will cause the application
to be abandoned.

Complete Specification:

Complete specification is the full description of the invention containing all the claims over
which applicant is seeking a monopoly. The contents of Complete specification are:

• Title of the invention.

• Field to which the invention belongs.

• Background of the invention including prior art, giving drawbacks of the known
inventions & practices.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 • Complete description of the invention along with experimental results.

• Drawings etc. essential for understanding the invention.

• Claims, which are statements, related to the invention on which legal proprietorship is
being sought. Therefore the claims have to be drafted very carefully.

CLAIMS

Claim is a document which consists of all possible equivalent variations of the invention to
safe guard against infringement. Claims constitute most important part of the specification;
since the validity of a Patent is often attacked (Opposition / Infringement proceedings) is
attacked on grounds of errors in claims.

Types of Claims:

 Main Claim: describes the invention in its broadest sense

 Sub ordinate Claim: refer to additional features of the invention
 Omnibus Claim: relates to any arrangement in description /drawing. This protects the
applicant from infringement of invention through creation of alternatives.

Claim defines the legal limits of the rights from patent. Anything not claimed here, cannot be
enjoyed by the applicant later. Language of the claim should be clear and unambiguous.
Subjective opinion of the patentee is immaterial in understanding the claims.

AMENDMENTS TO COMPLETE SPECIFICATION:

Types of amendments are:

Before Acceptance

After Acceptance but before sealing of patent

After Sealing of Patent

a) Amendment before acceptance:

In case of objections raised by the Controller, specifications have to be amended to
rectify the objections, failing in which the application will be abandoned. The
amendment can be sought by the applicant himself. If such an amendment does not
add a new dimension to the original specification, then the date of application remains

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 the same. Meaning, in spite of such amendment, the priority date of the application
remains the same. On the other hand, if the sought amendment bring / adds a new
matter to the original specification, then the date of application will be changed to the
date of amendment. Such an application is again advertised for any opposition.

b) Amendment after Acceptance but before sealing of Patent:

In case of oppositions subsequent to the advertisement of application in the Official
Gazette, Controller directs applicant to amend the specification. In such a case, the
survival of application stands on the amendments alone.

c) Amendment after sealing of Patent:

After the sealing of Patent, anybody other than the Patentee can apply for revocation
of the Patent before High Court. In such a case, Court gives an opportunity to the
Patentee to save his Patent and preserve his rights, by making amendment to the
specification, instead of directly revoking the Patent.

CONDITIONS FOR AMENDMENTS:

Any amendment can be made only in the following ways:

 Disclaimer

 Correction

 Explanation

Disclaimer:

It is a statement by the applicant denying a Claim. This Clause reduces the scope of
monopoly by restricting the spread of the Claim.

Correction:

This amendment is to correct an obvious mistake in the specification (ex: typographical

errors) that may have occurred while preparing the specification. Such a correction should not
alter the specification or affect invention. Scope of the specification must not be widened by
this amendment. If the mistake is apparent on the face of the specification, the Controller

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

himself may direct the applicant to correct it. In case the mistake if not very apparent, then
the applicant must furnish relevant evidence to prove the mistake and also need for
correction, in order to amend the same. Also, the amendment has to clearly confine itself to
the matter described in the earlier specification.

Explanation:

An explanation is a mere clarification or better explanation of certain matters in the

specifications. It should not change the meaning / context of earlier document. Such an
amendment can be allowed by the Controller or the High Court.

RIGHTS CONFERRED ON A PATENTEE:

 Right to exploit Patent

 Right to License Patent to another
 Right to assign Patent to another
 Right to surrender Patent
 Right to sue for infringement

The above rights are conferred based on the following conditions as under Sec 47;

 Manufacture / import of invention can be made by Government for its own use.

 Any patented process / product may be used for the purpose of research /
experimentation / imparting knowledge to students.

1. Right to exploit the Patent: Section 48 confers the right on the Patentee / licensee /
assignee to exploit the Patent. The right granted has to be maintained throughout the
term of the patent by paying the prescribed renewal fee from time to time. No
payment of fee will result in lapse of the Patent.

2. Right to license: Under Sec 70 of the Act, the Patentee can grant a license to others
for use / manufacture of the invention. A legal, registered agreement has to exist
between the licensor and the licensee.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 3. Right to Assign: Sec 70 confers a right on the Patentee to partially / fully assign his
patent to another person. Like license, a legal agreement should be drawn between the
assignee and the Patentee.

4. Right to surrender the Patent: Patentee is not obligated to retain the patent
throughout the term of the patent. Sec 63 provides that the Patentee can surrender the
Patent by notifying the Controller. The Controller advertises such an offer to
surrender in order to entertain any opposition for the surrender.

5. Right to sue for Infringement: The Statute confers a right on the Patentee to take
legal action for protection of his exclusive Patent rights. Patentee, his assignee or
licensee can institute a civil / legal suite in a Court not less than District Court against
infringement of Patent.

EXCEPTIONS AND LIMITATIONS:

Though the Act confers the above exclusive rights on the Patentee, they are subjected to
certain exceptions and limitation on the same. They are as follows:

1. Government use of Patent: Sec 99 and Sec 100 provide that anytime after the filing
of the patent / grant of the patent the Central Govt. can use the patent for Govt. use.
Govt. is liable to pay suitable compensation the patentee, an amount mutually agreed
upon. If no such agreement exists, then the compensation payable is decided by the
High Court. If the Govt. makes use of the invention before the priority date of the
relevant claim, then the Govt. is not obligated to pay any compensation the Patentee.
Acquisition of the invention / patent by the Govt.: As per Sec. 102, if the Central Govt.
is satisfied that a particular invention (either applied for patent or already granted)
should be acquired for public use, a notification is published in the official Gazette,
upon which the whole invention, all the rights stand transferred to the Central
Government. The applicant or the patentee in such a case is paid a suitable
compensation by the Central Govt., which is mutually agreed upon. In case of no
agreement, the compensation is decided by the High Court.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 2. Compulsory licenses / licenses of rights: Sec 86 of the Act lays down that any time
after the 3 years from the date of sealing of the patent, Central Govt. can make an
application to the Controller seeking 'License of Rights'. It can be made on the
following grounds:
 reasonable requirements of the public have not been satisfied
 patented invention is not available for general public use at reasonable price.

If the Controller is satisfied, he may make an order that the patent may be
endorsed with the words 'Licenses of Right'.

When a patent is endorsed with above condition, any person other than the
patentee, who is interested in working on the patented invention, can have a grant
of license to him by the patentee, subject to mutually agreed terms and conditions.
The Controller decides if the license can be issued, after hearing the parties.

3. Use of inventions for defence purposes:

When the Controller finds that the application before him for patent belongs to a class
notified to him by Central Govt. as an invention relevant for defence purposes of the
country, he may give directions for restricting / prohibiting the publication of details
of such invention. Further, the Controller notifies the Central Govt., upon which
Central Govt. may place a notification that the invention in question is prejudiced in
terms of defence of India. Then the Controller may either revoke the application /
Patent or Govt. may purchase the invention itself. In the latter case, suitable
compensation may be paid to the applicant depending on the magnitude of efforts
vested upon the invention.
All the above orders are treated as final and shall not be called in question in any
Court on any ground whatsoever.

4. Revocation of non – working patents:

The patent may be revoked by High Court on a petition by anybody / Central Govt. on
the following grounds:
 The current invention has been already claimed / been a part of claim of
complete specification of an application with an earlier priority date, or in the
complete specification of an already granted Patent.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

  Patent was granted on an application from a person who is not entitled to
apply for patent.
 Patent was obtained wrongfully.
 Claim of the complete specification is not an invention within the meaning of
the Act.
 The invention, as claimed, is not new to public or has been in use in India.
 Invention is obvious and does not involve any inventive step.
 Invention is not useful.
 Complete specification does not sufficiently / completely describe the
invention / method.
 Scope of the Claim of the complete specification is not sufficiently / clearly
defined.
 Patent was obtained on a false representation.
 Invention was secretly used in India.
 Claimed invention failed to disclose the requisite information and undertaking
pertaining to foreign application.
 Leave to amend the specification was obtained by fraud.

Sec. 53(2) lays down that Patent ceases if the renewal fee is not paid within the prescribed /
extended period.

5. Limitation on restored patents:

The Controller may impose conditions for protection of those who may have started
to use the invention during that period when the patent was not effective due to a
lapse. In such a case, the Patentee loses his right to sue for infringement of the patent,
committed between the date of lapse of the Patent and the date of restoration of the
same.

DUTIES OF A PATENTEE:

The Patentee is bound to ensure that the monopoly rights granted on the Patent are not used
unfairly or prejudicial to the public interest. It is the responsibility of the Patentee to use the
invention in India in such a way that it is available in market for public at appropriate
quantities and reasonable prices. A failure on the part of Patentee in discharging his duty may
result in denial of his exclusive rights in the form of grant of Compulsory rights by the Govt.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

Sec. 122 says that refusal / failure in furnishing information sought by Central Govt. /
Controller is punishable with a fine.

TRANSFER OF PATENT:

Like any other property, a Patent is a transferable property too. It can be transferred from the
Patentee to anybody in the following forms. In case of 2 or more co – Patentees, transfer
cannot be made by one person without the consent of other/s.

Forms of transfer of Patent:

 Assignment
 License
 Transmission of Patent by Operation of Law
 Assignment:

Assignment:

Assignment means transfer of all the rights / interests of the property to somebody through a
legal agreement. Assignee is the person in whose favour the rights have been transferred by
the assignor (Patentee himself or his agent or legal representative).

Kinds of Assignment:

1. Legal Assignment
2. Equitable Assignment
3. Mortgage

Legal Assignment: This is an assignment of an existing Patent through a duly registered

agreement. The legal assignee has a right to enter his name in the register on patents
maintained in the Controller's office as a proprietor and thereafter exercise all the rights
transferred to him.

Equitable Assignment: An equitable assignment is a document like letter, which is duly

registered with the Controller, in which the Patentee agrees to give certain defined rights to

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

another person with an immediate effect. In this case the assignee cannot have his name
entered as proprietor in the register of patents.

Mortgage: It is a document which facilitates transfer of patent rights partially / fully to the
mortgagee with a view to secure the payment of a specified amount of money. the Mortgagor
(Patentee) can have his rights re-transferred back to him upon the refund of money to the
mortgagee. Mortgagee is not entitled to have his name as proprietor in the register, but can
have his name entered as a mortgagee.

License:

A Patentee can transfer his rights to a licensee by a license agreement to permit the licensee
to make / sell / use the invention. Kinds of license are:

1. Voluntary license
2. Statutory license
3. Exclusive / limited license
4. Express / implied license

Voluntary license: It is a written authority granted by the owner of the Patent to another
person/s empowering the latter to make, use, sell the patented article in the manner and on
terms and conditions provided in the license agreement. Controller or Govt. has no role in the
matter of grant of license, hence it is termed as voluntary license in which the terms and
conditions are settled between the patentee and the licensee directly.

Statutory License: In this kind of licensing, Controller and Govt. play an important role in
the grant of license and the terms and conditions do not depend on the will of parties, unlike
voluntary license. (Eg. Compulsory right, licenses of right)

Exclusive / limited license: Exclusive license confers all the exclusive rights to make, sell,
use, etc., on the licensee, excluding all others from it.

Ex: A Patentee X confers exclusive license to person Y for an invention in India. X does not
confer that license to any other person. Only Y enjoys all the exclusive rights.

A limited license imposes certain limitations on the rights of the licensee. Limitations may
relate to persons, time, place of manufacture, use, sale, etc.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

Express / Implied License: In an express license, permission is given to use the invention in
express (written) terms, whereas in an implied license is not given in express terms but is
implied through circumstances.

RIGHTS CONFERRED ON A LICENSEE

 A license which is valid and registered confers certain rights on the licensee, to make,
use or exercise the patented invention.
 In case of exclusive license, subject to terms and conditions of the license, the
licensee will have the authority to initiate any proceedings against infringement.
 In case of non – exclusive license, the infringement proceedings can be instituted by
the Patentee. It can also be initiated by the licensee, if the terms in the license
authorise the licensee to do so.

TRANSMISSION OF PATENT BY THE OPERATION OF LAW

When a Patentee dies, his interests in Patent are passed on to his legal representative. A
Patent can also be acquired by the Govt. in case the public interests are not met.

INFRINGEMENT OF PATENTS

A Patent confers exclusive right on the Patentee to make, sell, use the invention. Infringement
is violation of any of these exclusive rights.

The exercise of such rights which are transferred to a licensee / assignee would not constitute
infringement.

In case of product patent, rights of the patentee are infringed when somebody makes and sells
those products commercially without the permission of the patentee. Similarly, in process
patent, use of the method by anyone other than patentee constitutes infringement.

CONSTRUCTION OF CLAIMS AND INFRINGEMENT

Claim gains importance since in most of the infringement cases, the defendant builds up the
argument on the grounds of claims. Further, claim would also define the scope of monopoly
rights of the invention. For instance, if a patent has several essential features and patentee
claims only few of them, then the infringer can take advantage of those unclaimed features.
This would have not been possible if claim was constructed properly with all the features
claimed.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

WHAT HOLDS TO BE INFRINGEMENT?

 Colourable imitation of an invention / immaterial variation: Here infringer makes a

slight modification in the process or product but in fact takes in the essential features
of the patented invention.
 Infringement by mechanical equivalents: It occurs when infringer merely substitutes
for few features but the result would be the same, for the same purpose, as obtained
by the patentee.
 Use of chemical equivalents: When a chemical equivalent is used by the infringer and
that equivalent was known at the time of filing of specification by the patentee, then it
amounts to infringement. However, if the chemical equivalent was not then known, it
does not lead to infringement.
 Combination claims: When an invention is a combination of number of parts acting
upon each other, then if it is proved that the infringer's selection of those parts and
also the arrangement of those parts is substantially same as that of the patentee, then it
constitutes an infringement.

Doctrine of Pith and Marrow: Courts apply Doctrine of Pith and Marrow, in which the
Court is not to detect the similarities between two things but only to see whether the pith
and marrow of the invention is taken, which is an infringement.

PATENTS NOT HELD TO BE INFRINGED

 Claims construed to be for a combination not infringed by the defendant

 Claim construed to be for particular combination not taken by the defendant
 Claim construed to be for particular combination not infringed by the defendant
 Claim for a particular combination held to be not infringed by the defendant
 Infringement not found
 Patent held to be valid but not infringed, claim was not followed

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

ACTION FOR INFRINGEMENT

Whenever the monopoly rights of the patentee are violated, his rights are secured
again by the Act through judicial intervention. The patentee has a right to institute a
suit for infringement.
The reliefs which may be awarded in such a suit, if the infringement is proved, are:
1. Interlocutory / Interim Injunction
2. Damages or account of profits
3. Permanent Injunction

Injunction: An injunction is an order of a Court prohibiting someone from doing some

specified act or commanding someone to undo some wrong or injury.

Generally it is a preventive and protective remedy aimed at preventing future wrongs.

Injunction is of 2 kinds:

1. Temporary/Interlocutory Injunction: It can be granted at any time during the proceedings

of the suit.

2. Final injunction: such injunction is granted at the termination of the trial.

In particular to an infringement of Patent, Injunction would stop the infringer from

committing further infringement, or further use of the exclusive rights of the patentee.

Damages or account of profits: In this type of relief, the infringer has to pay a monetary
compensation to the patentee. In certain cases, however, damages or account of profits cannot
be granted. Such exceptions are:

 When the infringement was innocent, i.e., the defendant was not aware that the patent
existed at the first place.
 The infringement was committed after the failure to pay renewal fee within the
prescribed time and before any extension of the period. The Patent would not have
been in force during this period.
 Where the specification has been amended and the infringement was committed
before the date of such amendment. The plaintiff may be entitled to damages or
account of profits in such a case if it is established by him that the original

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

 specification had been framed in good faith and with reasonable skill and knowledge.
(Plaintiff - Patentee)

Objective of awarding damages:

The damages are awarded to compensate for the loss or injury suffered by the plaintiff due to
the action of the defendant. (Defendant – Infringer)

Manner of assessment of Damages:

The assessment of damages takes into account the following factors:

 Where the patentee manufactures the patented product himself and does not grant
licence, the measure of damages will be the profit which he would have earned if the
sales of the infringing articles which had substituted his articles were not made and
instead only the patented goods were sold.
 Where a patentee grants licences for working the invention for payment of royalty, the
measure of damages awarded would be the sum payable as royalty, had the infringer
been the licensee of the patent.
 The assessment of damages would include the pecuniary equivalent of the loss
resulting from the natural consequences of the acts done by the defendants.

Account of Profits: The Account of Profits is determined on basis of actuals use of the
patentee's invention by the infringer during the period of commission of the act of
infringement. Account of profits is the part of profits which can be attributed to the use of the
patented invention by the infringer.

WHERE AND HOW A SUIT IS TO BE INSTITUTED?

 Action of infringement is to be instituted in a District Court and the defendants make

a counter claim for revocation of the patent.
 Procedure followed in suit: Procedure followed in suit for infringement is given and
governed by the provisions of Code of Civil Procedures.
 A suit for infringement can be instituted only after the patent has been sealed, when a
specification has been accepted and published during the opposition has been called
and is being decided.
 Period of limitation for instituting a suit: 3 years from the date of infringement.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

WHETHER A NOTICE OF THE SUIT TO BE SERVED ON THE DEFENDANT?

The plaintiff (person who makes a plaint i.e., institutes a suit >> Patentee) is not obliged to
give notice to the defendant (infringer) before instituting a suit; Court shall issue a notice.

WHO IS ENTITLED TO SUE?

1. The Patentee
2. The exclusive Licensee if the licence is registered
3. A compulsory licensee when the patentee refuses or neglects to institute proceedings
4. A licensee other than the above two licensees can bring an action for infringement
depending upon the terms of the contract between the licensor and licensee.
5. Assignee: he can sue only after the application for registration of the assignment in his
favour has been filed. If a patent is assigned after the commencement of action, the
assignee is to be joined as co-plaintiff. An assignee cannot sue for infringement which
occurred prior to the assignment
6. Co-owners of patent – Co-plaintiff and Co-defendant

WHO CAN BE SUED?

1. Person who infringes the patent that violates the monopoly right of patentee can be
sued for infringement
2. When two or more persons have jointly infringed the patent, both of them have to be
sued as co - defendants.
3. Agents and servants of a principal who is responsible for the infringement can also be
sued either individually or collectively along with their employer/principal.
4. The consignees of an infringing article can be made a party to the proceedings in an
infringement suit.

ACTS NOT TO BE CONSIDERED AS INFRINGEMENT:

 Any act of making, constructing , using, selling or importing a patented invention

solely for uses reasonably related to the development and submission of information
required under any Law for the time being in force in India, or in country other than
India, that regulates the manufacture , construction ,use, sale or importation of any
product.

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE

  Importation of patented products by any person from a person who is duly authorised
under the Law to produce and sell or distribute the product.

Defence which may be set up by the Defendant:

1. That the plaintiff is not entitled to sue for infringement

2. That there has been no infringement or any threat or intention to infringe
3. That there was leave or licence, express or implied, to use the invention
4. Estoppel or res judicata(individual is barred from denying or alleging a certain fact or
state of act )

The Claims alleged to be infringed are invalid on grounds:

 That the invention as far as claimed was subject matter of valid claim of earlier
priority date or a prior grant
 That the patent was granted on the application of a person not entitled to apply
 That the patent was obtained wrongfully
 That the subject of any claim of the complete specification is not an invention
within the meaning of this act
 That the invention so far as claimed in any claim is not new since it was publicly
known or publicly used in India before the priority date of the claim
 At the time of infringement there existed a contract relating to the patent
containing a condition which is unlawful under the provisions
 Act complained of falls within the scope of innocent infringement, that is, the
defendant was unaware of the existence of the patent when the alleged act of
infringement occurred or was done after failure to pay renewal fee or was done
before the date of amendment of specification
 Govt.'s use and use for research purpose.

***

Ambika. G. Dath, Assistant Professor, Dept. of EEE, BMSCE