Indian Bare Acts

Search Alphabatically :

THE PATENTS ACT, 1970

Title : THE PATENTS ACT, 1970

Year : 1970



(1) If, in consequence of the investigations required1*[under this Act], it appears to the Controller that an invention in respect of which an application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in 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-section (1)-

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

(b) The specification of that other patent is amended by the deletion of the relevant claim; or

(c) It is found, in proceedings before the court or the Controller, 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.

--------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents Amendment Act (15 of 2005) for the words: by the foregoing provisions of this Act or of proceedings under section 25.

--------------------------------------------------------------------------------------------------------------------------------------------------------



(1) If the Controller is satisfied, on a claim made in the prescribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for the patent or by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accordingly 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 of any assignment or agreement for the assignment of the benefit of an invention unless-

(a) The invention is identified therein by reference to the number of the application for the patent; or

(b) There is produced to the Controller an acknowledgement 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 have been finally established by the decision of a court; or

(d) The Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under subsection (5).

(4) Where one of two or more joint applicants for a patent dies at any time before the paten has been granted, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

(5) If any dispute arises between joint applicant for a patent whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.




1*[(1) An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.

Explanation.-Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.

(2) If at the expiration of the period as prescribed under sub-section (1),-

(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 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 period as prescribed under sub-section (1), be extended until such date as the High Court may determine.

(3) If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may 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 requirements may be complied with within the time granted by the Court.].

-------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents Amendment Act (15 of 2005) for the words:

(1) An application for a patent shall be deemed to have been abandoned unless within * [twelve months from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller] the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection 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 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 complied with such requirements unless and until he has re-filed it.

** [***]

(3) If at the expiration of the period of *** [twelve months]-

(a) An appeal to the **** [Appellate Board] 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 **** [Appellate Board] is pending in respect of either that 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 ***** [twelve months], as the case may be, be extended until such date as the **** [Appellate Board] 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 ****** [twelve months to] such further period as he may determine:

Provided that if an appeal has been filed during the said further period, and the **** [Appellate Board] has granted any extension of time for complying with, the requirements of the Controller then the requirements may be complied with within the time granted by the ******* [Board].

* Substituted by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003. Prior to substitution it read as under:

"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"
** Sub-Section (2) omitted by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003. Prior to omission it reads as under:

"(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 (hereinafter in this section referred to as 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 (I) are forwarded to the applicant."

***Substituted for "fifteen months specified in sub-section (1) or the extended period" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

****Substituted for "High Court" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

*****Substituted for "fifteen months or as the case may be, the extended period,until the expiration of" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

******Substituted for "fifteen months, or the extended period" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

*******Substituted for "Court" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

---------------------------------------------------------------------------------------------------------------------------------------------------------



1*[Omitted]

--------------------------------------------------------------------------------------------------------------------------------------------------------

1. Omitted by Patent Amendment Act (15 of 2005). Previous to omission:

Acceptance of complete specification.-Subject to the provisions of section 21, the complete specification filed in pursuance of an application for a patent may be accepted by the Controller at any time after the applicant has complied with the requirements mentioned in sub-section (1) of that section and, if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter:

Provided
that the applicant may make an application to the Controller in the prescribed manner requesting him to postpone acceptance until such date [not being later than * [twelve months] from the date on which the objections referred to in subsection (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.

*Substituted for "eighteen months" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.
 
----------------------------------------------------------------------------------------------------------------------------------------------------



1*[Omitted]

----------------------------------------------------------------------------------------------------------------------------------------------------------

1. Omitted by Patent Amendment Act (15 of 2005). Previous to omission:

23. Advertisement of acceptance of complete specification.-On the acceptance of a complete specification, the Controller shall give notice thereof to the applicant and shall advertise in the Official Gazette the fact that the specification has been accepted, and thereupon the application and the specification with the drawings (if any) * [as accepted by the Controller along with other documents filed by the applicant in pursuance thereof] shall be open 10 public inspection.

**Substituted for "filed in pursuance thereof" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

----------------------------------------------------------------------------------------------------------------------------------------------------------



1*[Omitted]

---------------------------------------------------------------------------------------------------------------------------------------------------

1.Omitted by Patent Amendment Act (15 of 2005). Previous to omission:

24. Effect of acceptance of complete specification.-

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

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.

---------------------------------------------------------------------------------------------------------------------------------------------------------

24A. Application for grant of exclusive rights.-

(1) Notwithstanding anything contained in sub-section (1) of section 12, the Controller shall not, under that subsection, refer an application in respect of a claim for a patent covered under sub-section (2) of section 5 to an examiner for making a report till the 31st day of December, 2004 and shall, where an application for grant of exclusive right to sell or distribute the article or substance in India has been made in the prescribed form and manner and on payment of prescribed fee, refer the application for patent, to an examiner for making a report to him as to whether the invention is not an invention within the meaning of this Act in terms of section 3 or the invention is an invention for which no patent can be granted in terms of section 4.

(2) Where the Controller, on receipt of a report under sub-section (1) and after such other investigation as he may deem necessary, is satisfied that the invention is no! an invention within the meaning of this Act in terms of section 3 or the invention is an invention for which no patent can be granted in terms of section 4, he shall reject the application for exclusive right to sell or distribute the article or substance.

(3) In a case where an application for exclusive right to sell or distribute an article or a substance is not rejected by the Controller on receipt of a report under subsection (1) and after such other investigation, if any, made by him, he may proceed to grant.
exclusive right to sell or distribute the article or substance in the manner provided in section 24B.

Explanation.-It is hereby clarified that for the purposes of this section, the exclusive right to sell or distribute any article or substance under this section shall not include an article or substance based on the system of Indian medicine as defined in clause (e) of sub-section (1) of section 2 of the Indian Medicine Central Council Act, 1970 (48 of 1970) and such article or substance is already in the public domain.

24B. Grant of exclusive rights.-

(1) Where a claim for patent covered under subsection (2) of section 5 has been made and the applicant has,-

(a) Where an invention has been made whether in India or in a country other than India and before filing such a claim, filed an application for the same invention claiming identical article or substance in a convention country on or after the 1st day of January, 1995 and the patent and the approval to sell or distribute the article or substance on the basis of appropriate tests conducted on or after the 1st day of January, 1995, in that country has been granted on or after the date of making a claim for patent covered under sub-section (2) of section 5; or

(b) Where an invention has been made in India and before filing such a claim, made a claim for patent on or after the 1st day of January, 1995 for method or process of manufacture for that invention relating to identical article or substance and has been granted in India the patent therefor on or after the date of making a claim for patent covered under sub-section (2) of section 5,
and has been received the approval to sell or distribute the article or substance from the authority specified in this behalf by the Central Government, then, he shall have the exclusive right by himself, his agents or licensees to sell or distribute in India the article or the substance on and from the date of approval granted by the Controller in this behalf till a period of five years or till the date of grant of patent or the date of rejection of application for the grant of patent, whichever is earlier.

(2) Where, the specifications of an invention relatable to an article or a substance covered under sub-section (2) of section 5 have been recorded in a document or the invention has been tried or used, or, the article or the substance has been sold, by a person, before a claim for a patent of that invention is made in India or in a convention country, then, the sale or distribution of the article or substance by such person, after the claim referred to above is made, shall not be deemed to be an infringement of exclusive right to sell or distribute under sub-section (1):

Provided that nothing in this sub-section shall apply in a case where a person makes or uses an article or a substance with a view to sell or distribute the same, the details of invention relatable thereto were, given by a person who was holding an exclusive right to sell or distribute the article or substance.

24C. Compulsory licences.-

The provisions in relation to compulsory licences in Chapter XVI shall, subject to the necessary modifications, apply in relation to an exclusive right to sell or distribute under section 24B as they apply to, and in relation to, a right under a patent to sell or distribute and for that purpose the following modifications shall be deemed to have been made to the provisions of that Chapter and all their grammatical variations and cognate expressions shall be construed accordingly, namely:-

(a) Throughout Chapter XVI,-

(i) Working of the invention shall be deemed to be selling or distributing of the article or substance;

(ii) References to "patents" shall be deemed to be references to "right to sell or distribute";

(iii) References to "patented article" shall be deemed to be references to "an article for which exclusive right to sell or distribute has been granted";

(b) Three years from the date of sealing of a patent in section 84 shall be deemed to be two years from the date of approval by the Controller for exclusive right to sell or distribute under section 24B;

(c) The time which has elapsed since the sealing of a patent under ** [section 84] shall be deemed to be the time which has elapsed since the approval by the Controller for exclusive right to sell or distribute under section 24B;

*** [(d) clause(e)of sub-section (7) of section 84 shall be omitted]

24D. Special provision for selling or distribution.-

(1) Without prejudice to the provisions of any other law for the time being in force, where, at any time after an exclusive right to sell or distribute any article or substance has been granted under subsection (1) of section 24B, the Central Government is satisfied that it is necessary or expedient in public interest to sell or distribute the article or substance by a person other than a person to whom exclusive right has been granted under sub-section (1) of section 24, it may, by itself or through any person authorised in writing by it in this behalf, sell or distribute the article or substance.

(2) The Central Government may, by notification in the Official Gazette and at any time after an exclusive right to sell or distribute an article or a substance has been granted, direct, in the public interest and for reasons to be stated, that the said article or substance shall be sold at a price determined by an authority specified by it in this behalf.

24E. Suits relating to infringements.-

All suits relating to infringement of a right under section 24B shall be dealt with in the same manner as if they are suits concerning infringement of patents under Chapter XVIII.

24F. Central Government and its officers not to be liable.-

The examination and investigations required under this Chapter shall not be deemed in any way to warrant the validity of any grant of exclusive right to sell or distribute, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.]



(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground-

(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 complete specification has been published before the priority date of the claim-

(i) In any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:

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 (3) of section 29;

(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 applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;

(d) That the invention so far as claimed in any claim of the complete specification was publicly known or publicly used ion 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 deemed to have been publicly known or publicly 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 importation has been for the purpose of reasonable trial or experiment only;

(e) That the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;

(f) That the subject of any claim of the complete specification 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 be performed;

(h) That the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(i) That in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;

(j) That the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;

(k) That the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground,'and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:-

(a) That the patentee 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 complete specification has been published before the priority date of the claim-

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

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

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 (3) of section 29;

(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 claim of the patentee 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 claim of the patentee;

(d) That the invention so far as claimed in any claim of the complete specification was publicly known or publicly 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 granted shall be deemed to have been publicly known or publicly 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 importation has been for the purpose of reasonable trial or experiment only;

(e) That the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;

(f) That the subject of any claim of the complete specification 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 be performed;

(h) That the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(i) That in the case of a patent granted on convention application, the application for patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India by the patentee or a person from whom he derives title;

(j) That the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention;

(k) That the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,
but on no other ground.

(3) (a) Where any such notice of opposition is duly given under sub- section (3), the Controller shall notify the patentee.

(b) On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to the Board for examination and submission of its recommendations to the Controller.

(c) Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed.

(4) On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.

(5) While passing an order under sub-section (5) in respect of the ground mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall not take into account any personal document or secret trial or secret use.

(6) In case the Controller issues an order under sub-section (5) that the patent shall be maintained subject to amendment of the specification or any other document, the patent shall stand amended accordingly.]

--------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents (Amdt) Act, 2005 for the words:

25. Opposition to grant of patent-

(1) At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act (or within such further period not exceeding one month in the aggregate as the Controller may allow on application made to him in the prescribed manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds, 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 complete specification has been published before the priority date of the claim-

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

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

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 (3) of section 29;

(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 applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;

(c) That the invention so far as claimed in any claim of the complete specification was publicly known or publicly 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 deemed to have been publicly known or publicly 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 importation has been for the purpose of reasonable trial or experiment only.

(e) That the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;

(f) That the subject of any claim of the complete specification 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 be performed;

(h) That the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(i) That in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title, but on no other ground.

* [(j) That the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;

(k) That the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere;]

(2) Where any such notice of opposition is duly given, the Controller shall notify the applicant and ** [may, if so desired, give] to the applicant and the 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 (e) of that sub-section, no account shall be taken of any * [personal document or secret trial or] secret use.

* Inserted by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

** Substituted for "shall give" by Patents (Amdt) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

----------------------------------------------------------------------------------------------------------------------------------------------------------



(1) Where in any opposition proceeding under this Act the Controller finds that-

(a) The invention, so far as claimed in any claim of the complete specification, was obtained from the opponent in the manner set out in clause (a) of sub-section (2) of section 25 and revokes the patent on that ground, he may, on request by such opponent made in the prescribed manner, direct that the patent shall stand amended in the name of the opponent;

(b) A part of an invention described in the complete specification was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part of the invention.

(2) Where an opponent has, before the date of the order of the Controller requiring the amendment of a complete specification referred to in clause (b) of sub-section (1), filed an application for a patent for an invention which included the whole or a part of the invention held to have been obtained from him and such application is pending, the Controller may treat such application and specification in so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of this Act relating to the priority dates of claims of the complete specification, on the date on which the corresponding document was or was deemed to have been filed by the patentee in the earlier application but for all other purposes the application of the opponent shall be proceeded with as an application for a patent under this Act.].

-----------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents (Amdt) Act, 2005 for the words:
 
26. In cases of "obtaining" Controller may treat application as application of opponent.-(1) Where in any opposition under this Act-

(a) The Controller finds that the invention, so far as claimed in any claim of the complete specification, was obtained from the opponent in the manner set out in clause (a) of sub-section (1) of section 25 and refuses the application on that ground, he may, on request by such opponent made in the prescribed manner, direct that the application shall proceed in the name of the opponent as if the application and the specification had been 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 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 invention so excluded from the applicant's specification, and the Controller 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 correspondence 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.

(2) Where an opponent has, before the date of the order of the Controller requiring the amendment of a complete specification referred to in clause (b) of sub-section (1), filed an application for a patent for an invention which includes the whole or a part of the invention held to have been obtained from him and such application is pending, the Controller may treat such application and specification in so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of this Act relating to the priority dates of claims of the complete specification, on the date on which the corresponding document was or was deemed to have been filed by the earlier applicant, but for all other purposes the application of the opponent shall be proceeded with as an application for a patent under this Act.

------------------------------------------------------------------------------------------------------------------------------------------------------------



1*Omitted

---------------------------------------------------------------------------------------------------------------------------------------------------------

1. Omitted by Patents (Amdt) Act, 2005. Previous to omission:

27. Refusal of patent without opposition.-

If at any time after the acceptance of the complete specification 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 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 pursuance of an application for a patent made in India and dated on or after the 1st day of January 1912;

(b) In any other document in India or elsewhere.
the Controller may refuse to grant the patent unless, within such time as may be prescribed, the complete specification is amended to 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 application of the invention by virtue of sub-section (2) or sub-section (3) of section 29.

---------------------------------------------------------------------------------------------------------------------------------------------------------


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

(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 of that invention; and

(b) That the application for the patent is a direct consequence 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 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.

(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 request 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) 1 [A request or claim under the foregoing provisions of this section shall be made before the grant of patent]

(5) 2* [Omitted].

(6) (sic) [Where], where a claim is made under subsection (3), the Controller shall give notice of claim to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested; and before deciding upon any request or claim made under sub-section (2), or sub-section (3), the Controller shall,if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.

(7) Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not to have been so mentioned may at anytime 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 rectify the specification and the register accordingly.

----------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents (Amdt) Act, 2005 for the words:
A request or claim under the foregoing provisions of this section shall be made not later than two months after the date of advertisement 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 expiration of the said period of two months and subject to the payment of the prescribed fee, allow.

2. Omitted by Patents (Amdt) Act, 2005.Previous to omission:
No request or claim under the foregoing provisions of this 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(d) of subsection (1) of section 25 by the person in respect of or by whom the request or claim is made, would have entitled him to relief under that section.


-------------------------------------------------------------------------------------------------------------------------------------------------------



(1) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in a specification filed in pursuance of an application 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 by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or the applicant for the patent proves-

(a) That the matter published was obtained from him, or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such person; and

(b) Where the patentee or the applicant for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent, or, in the case of a convention application, before the date of the application for protection in a convention country, that the application or the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter:

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 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 specification shall not be deemed to have been anticipated by reason only of any other application for a patent in respect of the same invention made in contravention of the rights of that person, or by reason only that after the date of filing of that other application the invention was used or published, without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of any invention by that applicant.



An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the communication of the invention to the Government or to any person authorised 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.



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

(a) The display of the invention with the consent of the true and first inventor or a person deriving title from him at an 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 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 with his consent in the transactions of such a society.

if the application for the patent is made by the true and first inventor or a person deriving title from him1*[not later than twelve months] after the opening of the exhibition or the reading or publication of the paper, as the case may be.

--------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents (Amdt) Act, 2005 for the words: Subject to the provisions of sub-section (5), where

--------------------------------------------------------------------------------------------------------------------------------------------------------



An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that at any time within one year before the priority date of the relevant claim of the specification, the invention was publicly worked in India-

(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 for whom he derives title,
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.



(1) Where a complete specification is filed or proceeded with in pursuance of an application which was accompanied by a provisional specification or where a complete specification filed along with an application is treated by virtue of a direction under subsection (3) of section 9 as a provisional specification, 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 any matter described in the provisional specification or in the specification treated as aforesaid as a provisional specification was used in India or published in India or elsewhere at any time after the date of the filing of that specification.

(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 invalidate, by reason only that any matter disclosed in any application for protection in a convention 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.



Notwithstanding anything contained in this Act, the Controller shall not refuse1*[Omitted] to grant a patent, and a patent shall not be revoked or invalidated by reason only of any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do not constitute an anticipation of the invention claimed in the specification.

-------------------------------------------------------------------------------------------------------------------------------------------------------

1. Substituted by Patents (Amdt) Act, 2005 for the words: not later than six months.

----------------------------------------------------------------------------------------------------------------------------------------------------------



(1) Where, in respect of an application made before or after the commencement of this Act for a patent, it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information1[***]

(2) Where the Controller gives any such directions as are referred to in sub-section (1), he shall give notice of the application and of the directions to the Central Government, and the Central Government shall, upon receipt of such notice, consider whether the publication of the invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it that the publication 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 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 before2*[grant of patent] notify the Controller to that effect, and thereupon the provisions of that sub-section shall apply as if the invention where 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.

---------------------------------------------------------------------------------------------------------------------------------------------------------

1. Words "to any person or class of person specified in the directions." Omitted by Patents (Amdt) Act, 2002. dated 25.06.2002 w.e.f 20.05.2003.

2. Substitued by Patents (Amdt) Act, 2005.for the words: to accept complete specification for a patent or

---------------------------------------------------------------------------------------------------------------------------------------------------------



Last updated on July, 2016

Find a Lawyer

Legal Hall of Fame

The current Legal Luminaries of India, the credible names in the legal circle along with those who would be the leading stars of the next decade. These are some of the reliable names in field of law. Nominate the Legal Stars of tomorrow

More

Recent Judgment


Sudha Mishra vs. Surya Chandra Mishra( R.F.A 299 of 2014

The Hon'ble High Court of Delhi in Sudha Mishra vs. Surya Chandra Mishra (R.F.A 299 of 2014)has ruled that a woman has a right over the property of her husband but she cannot claim a right to live in the house of her parents-in-law

More

Bare Acts

Helpline Law provides a user friendly compendium of Indian Law & Bare Acts. Get a complete list & detail of Indian Bare Acts, with amendments and repeals. It comes with easy-to-use features like Search by bare acts & by year. You can even email the information to yourself!

More

Have a Legal Matter ?
Need a Lawyer?

Have a Legal Matter ?

Need a Lawyer?

Male
Female