Law relating to Patents: formula sheet

Key formulas

Invention (Section 2(1)(j))

Invention = new product or process + inventive step + capable of industrial application

Quote this definition first in every answer. All three elements are needed.

New invention (Section 2(1)(l))

Not anticipated by publication or use, in India or anywhere in the world, before the filing date with complete specification

Novelty is judged worldwide and as on the filing date of the complete specification.

Inventive step (Section 2(1)(ja))

Technical advance, or economic significance, or both + not obvious to a person skilled in the art

Technical advance or economic significance is enough; both are not required.

Capable of industrial application (Section 2(1)(ac))

Capable of being made or used in an industry

The test is capability, not actual commercial use.

Atomic energy bar (Section 4)

No patent for an invention relating to atomic energy falling within Section 20(1) of the Atomic Energy Act, 1962

The bar covers only inventions falling within that provision.

True and first inventor (Section 2(1)(y))

Excludes the first importer into India and a person to whom the invention is first communicated from outside India

Importing a foreign invention does not make you its true and first inventor.

Section 3(a) and 3(b)

Frivolous or obviously contrary to natural laws = not an invention; primary or intended use contrary to public order or morality, or seriously prejudicial to human, animal or plant life or health or the environment = not an invention

Test the intended use or commercial exploitation, not just the product.

Section 3(c)

Mere discovery of a scientific principle, abstract theory, or discovery of any living or non-living substance occurring in nature = not an invention

Discovering something already in nature is not inventing it.

Section 3(d)

New form of known substance + no enhanced known efficacy = not an invention

Derivatives are the same substance unless they differ significantly in properties with regard to efficacy. Mere new use or new property is also excluded. A known process is excluded unless it gives a new product or uses at least one new reactant.

Section 3(e) and 3(f)

Mere admixture (aggregation of properties) = not an invention; mere arrangement, re-arrangement or duplication of known devices working independently in a known way = not an invention

Look for whether the parts work together to give a new combined effect.

Section 3(h), (i), (j)

Method of agriculture or horticulture; treatment processes for humans or animals; plants and animals in whole or part (other than micro-organisms), including seeds, varieties, species and essentially biological processes = not inventions

Micro-organisms are not excluded by clause (j).

Section 3(k) to (p)

Mathematical or business method, computer programme per se, algorithms; literary, dramatic, musical, artistic works; mere scheme, rule or method of mental act or playing a game; presentation of information; topography of integrated circuits; traditional knowledge or aggregation or duplication of known properties of traditionally known components = not inventions

Remember the words per se in clause (k).

Section 4

Invention relating to atomic energy under section 20(1), Atomic Energy Act, 1962 = no patent

Section 65 allows revocation after grant; section 157A protects the security of India.

Complete specification after provisional

Complete specification due within 12 months from date of filing the application (Section 9(1))

If not filed in time, the application is deemed abandoned. Convention and PCT applications designating India are excluded from this rule.

Treating a complete specification as provisional

Request within 12 months from filing; Controller may direct it be treated as provisional (Section 9(3))

Same exclusion for convention and PCT applications. If the Controller gives the direction, the specification is treated as a provisional specification for the purposes of the Act and the application proceeds accordingly.

Cognate provisional applications

Two or more provisionals, same applicant, cognate or one a modification of another: one complete specification allowed; 12 months run from the earliest provisional (Section 9(2))

The Controller must be of opinion that the inventions form a single invention.

Post-dating

Before grant, applicant may request cancellation of the provisional and post-dating to the date of filing the complete specification (Section 9(4))

Used when the provisional does not support the claims well.

Priority date of a claim

Claim fairly based on provisional = date of provisional (Section 11(2)); where Section 11(2), (3), (3A), (4) and (5) do not apply = date of filing complete specification (Section 11(6))

Each claim has its own priority date. Section 11(6) is a residual rule: use it only when the other sub-sections do not apply. If a claim would have two or more dates, the earliest applies (Section 11(5)).

Priority from earlier Indian application

Complete specification within 12 months of earlier Indian application, claim fairly based on it: priority = date of earlier application (Section 11(3A))

The date is that of the earlier application in which the matter was first disclosed.

Protection against intervening use or publication

Use or publication after the provisional filing date does not by itself justify refusal or revocation (Section 33(1)). Convention applications get similar protection for use or publication after the date of the convention-country application (Section 33(2))

Section 33(1) applies to matter described in the provisional specification. Section 33(2) applies to matter disclosed in the convention-country application.

Opposition windows

Pre-grant (Section 25(1)): after publication, before grant. Post-grant (Section 25(2)): after grant, within 1 year from publication of grant

Pre-grant opposition can be made by any person. Post-grant opposition is by any person interested. Both are made to the Controller.

Equal share (s. 50(1))

Patent granted to 2 or more persons → equal undivided shares, unless agreement to the contrary

The agreement can change the shares. Without one, shares are equal, not in proportion to contribution.

Working the patent (s. 50(2))

Each registered co-owner may, by himself or his agents, exercise the s. 48 rights for his own benefit without accounting to the others

Subject to s. 50 and s. 51, and unless an agreement says otherwise.

Licence or assignment (s. 50(3))

Licence not granted and share not assigned by one co-owner except with consent of the other(s)

Subject to any agreement in force. This is the most tested point.

Sale of patented article (s. 50(4))

Purchaser from one co-owner deals with the article as if bought from a sole patentee

The buyer need not check the other co-owners' consent.

Rights of patentee (s. 48)

Product: prevent making, using, offering for sale, selling, importing. Process: prevent using the process, and using, offering for sale, selling, importing the product directly obtained

Exclusive right to prevent third parties without consent, in India.

Term (s. 53(1))

20 years from date of filing of the application (PCT: from international filing date)

The term runs from filing, not from grant.

Patent of addition (s. 55)

Term = term of main patent, or the unexpired part; no renewal fees

If the main patent is revoked, the court or Controller may on request make it an independent patent for the remaining term, and then renewal fees become payable.

Time bar for Section 84 application

Application allowed only after 3 years from the date of grant of the patent

The time runs from grant, not from filing. Section 84(1). This bar does not apply to Section 92 licences.

Grounds under Section 84(1)

(a) public requirements not satisfied; (b) not available at a reasonably affordable price; (c) not worked in India

Any one ground is enough. The applicant may even be an existing licensee.

Prior effort to get a voluntary licence

Reasonable period ordinarily not more than 6 months

Section 84(6)(iv). It is not required in national emergency, extreme urgency, public non-commercial use, or anti-competitive practices by the patentee.

Section 92 trigger

Central Government notification + Controller grants licence on application

Triggers: national emergency, extreme urgency, public non-commercial use. Section 87 procedure is not applied under Section 92(3), and the patentee is informed.

Terms of licence (Section 90)

Reasonable royalty; affordable price; non-exclusive; non-assignable; balance term of patent

A shorter term is allowed if consistent with public interest. The licence is for predominantly Indian market supply.

Revision of terms (Section 88(4))

Licensee may apply after working on a commercial scale for at least 12 months

Only if the terms prove more onerous than expected and the licensee can work only at a loss. No second application will be entertained.

Revocation for non-working (Section 85)

Application after 2 years from the order granting the first compulsory licence; ordinarily decided within 1 year

Made to the Controller by the Central Government or any person interested.

Court for infringement suit (s.104)

Not lower than a District Court; with a revocation counter-claim, the suit goes to the High Court

The counter-claim and the suit are decided together by the High Court.

Reliefs (s.108)

Injunction + (damages OR account of profits) + seizure, forfeiture or destruction of infringing goods

Damages and account of profits are alternatives at the plaintiff's option. Seizure or destruction is without compensation.

Defences (s.107)

Any s.64 revocation ground + s.47 conditions (for the listed acts)

Section 47 conditions apply to making, using or importing machines, apparatus or articles, using processes, and importing, using or distributing medicines or drugs.

Burden of proof in process patents (s.104A)

Patentee first proves the product is identical to the product directly obtained by the patented process; then the court may direct the defendant to prove a different process

Applies if the patent is for a process for a new product, or there is a substantial likelihood of the identical product being made by the process and the patentee could not find the process used despite reasonable efforts. The court will not require disclosure of trade secrets if that would be unreasonable.

Groundless threats (s.106)

Declaration that threats are unjustifiable + injunction + damages

A mere notification of the existence of a patent is not a threat.

Exclusive licensee (s.109)

Exclusive licensee may sue for infringement after the date of the licence; the patentee is added as defendant unless joined as plaintiff

A patentee added as defendant bears no costs unless he enters appearance and takes part.

Appeal against Controller (s.117A)

Within 3 months from the date of the decision, order or direction, or such further time as allowed

Appeal lies only against decisions under the listed sections. The appeal is to the forum substituted for the Appellate Board (the High Court) following the 2021 amendment.

Qualifications for registration (s 126(1))

Indian citizen + age 21 completed + science/engineering/technology degree from a University established under law in India (or equivalent specified by Central Government) + (passed the qualifying examination OR 10 years as examiner/Controller functions under s 73, now ceased) + prescribed fee paid

All of (a), (b), (c) and (d) must be met. Within (c), the exam route and the ten-year route are alternatives.

Saving for old agents (s 126(2))

Registered before the Patents (Amendment) Act, 2005 → may continue or be re-registered on paying the prescribed fee

Applies despite sub-section (1).

Restriction on practice (s 129)

Individual/partnership: must be registered (all partners registered). Company or body corporate: cannot practise or hold itself out as patent agents.

Practise includes applying for patents, preparing specifications or documents, and non-technical advice on validity or infringement.

Penalty (s 123)

Contravention of s 129 → fine up to ₹1,00,000 (first offence); up to ₹5,00,000 (second or later offence)

The section provides for a fine only, not imprisonment.

Rights of registered agent (s 127)

Practise before the Controller + prepare documents and transact business in proceedings before the Controller

Subject to the Act and rules. Under s 128, applications and communications may be signed by an agent authorised in writing.

Controller may refuse recognition (s 131(1))

May refuse: removed and not restored; convicted under s 123; unregistered person mainly acting as agent for his employer's applications; company or firm with such a person as director, manager or partner

Under s 131(2) the Controller shall refuse a person who neither resides nor has a place of business in India.

Information (s 153)

Request to Controller in prescribed manner + prescribed fee → entitled to information on prescribed matters about a specified patent or application

Both the manner and the matters are prescribed by rules.

Convention priority period

Indian application within 12 months of basic application → priority date = date of basic application

Section 135(1). With several convention countries, count from the earliest application. Priority applies to claims based on matter disclosed in the basic application.

Who may file in India

Person who made basic application, or legal representative, or assignee

Section 135(1).

Single application for cognate inventions

Cognate or modified inventions → one convention application within 12 months of the earliest

Section 135(2), subject to section 10. Fee is as if separate applications were made.

PCT filing date

Filing date in India = international filing date under PCT

Sections 7(1B) and 138(5).

PCT specification

Title + description + claims + abstract + drawings (if any) = complete specification

Section 138(4).

Term on PCT application

Term = 20 years from international filing date

Explanation to section 53(1). For ordinary applications the term is 20 years from the date of filing.

Proof of convention date

Convention-country filing date = date the Controller accepts on certificate of head of that patent office or otherwise

Section 138(3).

Provisional and complete specification (non-convention, non-PCT)

Complete specification within 12 months of filing, else application deemed abandoned

Section 9(1). It does not apply to convention or PCT applications.

Quick revision

• A patent is a time-limited exclusive right granted in exchange for disclosure of the invention.
• Section 3 lists what are not inventions, for example a frivolous invention or one that claims something obviously contrary to natural laws.
• Section 3(b) excludes inventions whose primary or intended use would be contrary to public order or morality, or seriously prejudice life, health or the environment.
• Under Section 3(d), a new form of a known substance is not an invention unless it enhances known efficacy.
• A mathematical or business method, or a computer programme per se, or algorithms, is not an invention under Section 3(k).
• Plants and animals in whole or in part, other than micro-organisms, are excluded under Section 3(j).
• Section 4: no patent for an invention relating to atomic energy falling within Section 20(1) of the Atomic Energy Act, 1962.
• Section 50: co-owners hold equal undivided shares unless there is an agreement to the contrary.
• A co-owner cannot grant a licence or assign a share without the consent of the other co-owners, subject to any agreement.
• Section 51: the Controller may give directions to co-owners, after hearing the others, but not against their agreement.
• Section 92: the Central Government may notify national emergency, extreme urgency or public non-commercial use, and then the Controller grants compulsory licences.
• Section 157A lets the Central Government withhold information and take action, including revocation, in the interest of the security of India.

Common mistakes

• Treating novelty as local, checking only whether the invention was known in India. Fix: Remember Section 2(1)(l) says used in the country or elsewhere in the world, and published in any document. Novelty is worldwide.
• Saying novelty is judged on the date of invention. Fix: The text refers to the date of filing of the application with complete specification. Use that date.
• Saying a new form of a known drug is patentable because it is new. Fix: State that derivatives are the same substance unless they differ significantly in properties with regard to efficacy. Then test the facts.
• Saying all computer programmes are unpatentable. Fix: Write "computer programme per se". The exclusion does not automatically cover everything involving software.
• Saying the complete specification must be filed within 18 months of the provisional. Fix: Remember: complete specification is due within twelve months from the filing date (Section 9(1)). Publication timing is a separate step.
• Applying the 12-month provisional rule to convention or PCT applications. Fix: State that Section 9(1) applies to applications other than convention applications and PCT applications designating India.
• Saying a co-owner can license the patent alone because he owns a share. Fix: Remember: working for own benefit is free; licence or assignment needs consent under section 50(3).
• Saying a co-owner must share profits from his own working of the patent. Fix: Section 50(2) says he need not account to the others, unless an agreement says otherwise.
• Counting the three years from the date of filing the patent application. Fix: Section 84(1) counts from the date of grant of the patent. Read the facts for the grant date.
• Applying the three-year bar and the six-month negotiation rule to Section 92 licences. Fix: Section 92 works on a Central Government notification of national emergency, extreme urgency or public non-commercial use. Section 84(6)(iv) negotiation is not required in those circumstances.

Exam tips

• Begin every answer with the Section 2(1)(j) definition. It earns marks even in short notes.
• Cite the sub-clause numbers, such as 2(1)(l), 2(1)(ja) and 2(1)(ac), when explaining each test.
• In problems, show each test separately and then conclude. Do not skip a test even if one fails; briefly mention the others.
• Mention Section 4 (atomic energy) and link to Section 3 to show you know patentability has exclusions.
• Use the exact words: state of the art, person skilled in the art, complete specification.
• Learn section 3(d) with its Explanation. It is the most likely clause for a long answer.
• Memorise clause letters with keywords, but cite section 3 plus the clause in your answer.
• Write the qualifiers: mere, per se, unless, other than micro-organisms. Marks are often tied to them.