Indian Patent Law and its Developments: formula sheet

Key formulas

Repeal of the 1911 Act

Patents Act, 1970 → repeals Indian Patents and Designs Act, 1911, in so far as it relates to patents (s. 162(1))

Only the patent part is repealed. Say 'in so far as it relates to patents'.

Saving of pending proceedings

Pending suit for infringement or proceeding for revocation at commencement → may continue as if the 1970 Act had not been passed (s. 162(5))

This is the savings rule. It protects cases already in court.

Term of patent

Term = 20 years from the date of filing (s. 53(1))

For PCT applications designating India, count from the international filing date.

Lapse for non-payment

Patent ceases to have effect if renewal fee is not paid within the prescribed or extended period (s. 53(2))

After lapse or expiry, the subject matter gets no protection (s. 53(4)).

Amendment timeline

1911 Act → 1970 Act → Amendments of 1999, 2002 (w.e.f. 20-5-2003), 2005 (w.e.f. 1-1-2005)

Use this as the skeleton of every history answer.

Commencement dates of the 1970 Act

20-4-1972 for most provisions; 1-4-1978 for s. 12(2), s. 13(2), s. 28, s. 68 and ss. 125 to 132

Section 1(3) allows different dates for different provisions.

Invention (Section 2(1)(j))

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

All three elements must be present. Missing any one means no patentable invention.

Novelty (Section 2(1)(l))

Not anticipated by publication in any document or use in India or elsewhere before the filing date with complete specification

The subject matter must not be part of the state of the art or in the public domain.

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

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

Both limbs matter: the advance and the non-obviousness.

Industrial application (Section 2(1)(ac))

Capable of being made or used in an industry

The test is capability, not actual commercial use.

Section 3(d) explanation

Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of a known substance = same substance, unless they differ significantly in properties with regard to efficacy

A new form of a known substance needs enhanced known efficacy to qualify.

Section 4

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

An absolute bar, separate from Section 3.

Complete specification after a provisional (s. 9(1))

Complete specification due within 12 months from the date of filing; otherwise the application is deemed abandoned

Applies to an application that is not a convention application or a PCT application designating India.

Converting a complete specification to provisional (s. 9(3))

Request within 12 months from the date of filing; the Controller may direct it be treated as provisional

Gives the applicant time to improve the invention before filing a fresh complete specification.

Cognate applications (s. 9(2))

One complete specification for two or more provisional applications of the same applicant; 12 months run from the earliest provisional

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

Post-dating (s. 9(4))

Request before grant of patent: cancel provisional specification and post-date application to the date of filing the complete specification

Available only after a complete specification has been filed. The priority date then moves to the later date.

Priority date, single provisional (s. 11(2))

Claim fairly based on the provisional specification: priority date = date of filing of that specification

The claim must be fairly based on the matter disclosed.

Priority date, earlier Indian application (s. 11(3A))

Complete specification within 12 months of the earlier Indian application and claim fairly based on it: priority date = date of the earlier application

Each claim has its own priority date (s. 11(1)).

Priority date, two or more applications (s. 11(3))

Claim based on one specification: date of that application. Claim based partly on one and partly on another: date of the later one

Then s. 11(5): if a claim would have two or more priority dates, the earlier or earliest applies. Read s. 11(3)(b) and s. 11(5) together and note the conditions.

Default priority date (s. 11(6))

Where none of the above applies: date of filing of the complete specification

Subject to section 137.

Protection from later publication or use (s. 33(1))

Use or publication after the date of filing the provisional specification does not by itself justify refusal, revocation or invalidation

Covers matter described in the provisional specification.

Time limit for a convention application

Indian application date ≤ date of basic application + 12 months

Section 135(1). If similar applications exist in two or more convention countries, count from the earliest one.

Priority date rule

Priority date of a claim = date of the basic application (only for claims based on matter disclosed in it)

Section 135(1). Claims for new matter do not get that date.

Contents of a convention application (s.136(1))

(a) complete specification + (b) date and convention country of the first application + (c) statement of no earlier application in a convention country

All three are mandatory.

Developments and additions

Claims allowed, subject to section 10, if section 6 would entitle a separate application

Section 136(2). No foreign priority for the new matter.

Post-dating bar

Convention application cannot be post-dated under s.17(1) beyond the date it could have been made under the Act

Section 136(3).

Cognate inventions

One convention application for cognate or modified inventions, within 12 months of the earliest application

Section 135(2). Fee is as for separate applications for each invention.

Proof of the foreign date

Date = date the Controller accepts by certificate of the head of the foreign patent office or otherwise

Section 138(3). Under section 138(1) and (2), the Controller can call for copies of the foreign documents and English translations.

Restriction on individuals (s.129(1))

No practice or holding out as patent agent unless registered; in a partnership, all partners must be registered

Covers both practising and describing oneself as a patent agent.

Restriction on bodies corporate (s.129(2))

No company or other body corporate may practise or hold itself out as patent agents

There is no registration route for a company.

Meaning of practise (Explanation to s.129)

(a) applying for or obtaining patents in India or elsewhere; (b) preparing specifications or other documents under this Act or foreign patent law; (c) advice, other than scientific or technical, on validity or infringement

The list is introduced by "includes", so it is not exhaustive.

Qualifications (s.126(1))

Citizen of India + age 21 completed + science, engineering or technology degree from a University established under law in India (or equivalent specified by Central Government) + passed qualifying examination, or ten years as examiner/Controller functions under s.73 + prescribed fee

The examination route and the ten-year route are alternatives. Ten years of service must be a total, and the person must have ceased to hold that capacity when applying.

Penalty (s.123)

Fine up to ₹1,00,000 for first offence; up to ₹5,00,000 for second or subsequent offence

Fine only; no imprisonment is stated in section 123.

Register (s.125)

Controller maintains the register of patent agents; it may be kept in electronic form

Names, addresses and prescribed particulars are entered.

Rights of registered agent (s.127)

Practise before the Controller; prepare documents, transact business and discharge prescribed functions in proceedings before the Controller

Subject to the Act and rules.

Repeal (Section 162(1))

1911 Act repealed only in so far as it relates to patents, by amendment per the Schedule

As worded, the designs part of the 1911 Act falls outside this sub-section. This is an inference from the words 'in so far as it relates to patents'.

Savings of pending litigation (Section 162(5))

Pending infringement suit or revocation proceeding in any court at commencement → may be continued and disposed of as if the 1970 Act had not been passed

It covers only suits for infringement and proceedings for revocation, pending in a court. Do not extend it to other matters.

General Clauses Act (Section 162(4))

Particular matters mentioned ⇏ prejudice to General Clauses Act, 1897 on repeals

The specific list does not displace the general law on repeals.

Omitted provisions

Section 162(2) and (3): omitted w.e.f. 20-5-2003; Section 161: omitted w.e.f. 20-5-2003

Section 161 was omitted by the Patents (Amendment) Act, 2002 (38 of 2002). Do not cite the old content of any of these as current.

Commencement (Section 1(3))

Act in force on date notified; different dates for different provisions

Fixes what 'commencement' means for the savings rule.

Patentee's power to deal (s. 70)

Registered grantee or proprietor can assign, license or otherwise deal with the patent and give effectual receipts

Subject to co-ownership provisions and to rights of others of which notice is entered in the register. Equities can be enforced as for movable property.

Compulsory licence timing (s. 84(1))

Application possible after three years from the date of grant of the patent

Any person interested can apply. Even an existing licensee can apply (s. 84(2)).

Grounds under s. 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. Section 84(7) lists when public requirements are deemed unmet.

Factors the Controller weighs (s. 84(6))

Nature of invention and time elapsed and measures taken; applicant's ability to work it; applicant's capacity to bear capital risk; efforts to get a voluntary licence

Efforts to obtain a voluntary licence must have failed within a reasonable period, ordinarily not exceeding six months. This is not needed in national emergency, extreme urgency, public non-commercial use or proven anti-competitive practice.

Related patents licence (s. 91)

Applicant who works another patent can seek a licence if prevented or hindered from working it efficiently or to best advantage

The Controller must be satisfied that (i) the applicant can grant a licence on reasonable terms on the other invention, and (ii) that invention has substantially contributed to commercial or industrial activity in India. The licence is non-assignable except with the respective patents.

Emergency licence (s. 92)

Central Government notification (national emergency, extreme urgency, public non-commercial use), then application to the Controller

The Controller aims for the lowest prices consistent with a reasonable advantage to the patentee. For these cases, including public health crises such as HIV, TB and malaria, the s. 87 procedure is not applied, but the patentee is informed as soon as practicable.

Revocation for non-working (s. 85)

Application after two years from the first compulsory licence order; ordinarily decided within one year

Applicant: Central Government or any person interested. Grounds: not worked in India, public requirements unmet, or not reasonably affordable.

Revision of terms (s. 88(4))

Licensee may seek revision after working on a commercial scale for at least twelve months

Ground: terms proved more onerous than expected and the licensee can work only at a loss. No second application is entertained.

Quick revision

• Section 135: the priority date of a claim based on matter disclosed in the basic application is the basic application date, where the applicant, or their legal representative or assignee, files in India within twelve months of it.
• Where several convention countries are involved, the twelve months run from the earliest application.
• Section 135(2): one convention application may cover cognate inventions or modifications within twelve months of the earliest application.
• Section 136(1): a convention application needs a complete specification, the date and country of the first application, and a statement of no earlier application.
• Section 136(3): a convention application cannot be post-dated under section 17(1) beyond the date it could have been made.
• Section 126: a patent agent must be an Indian citizen, at least 21, with a science, engineering or technology degree or equivalent, and must pay the fee. In addition, the person must either pass the qualifying examination or have served a total of at least ten years as an examiner or discharging the Controller's functions under section 73, having ceased to hold that capacity when applying.
• Section 127: a registered agent may practise before the Controller and prepare documents for proceedings.
• Section 129: only a registered person may practise as a patent agent. A company or body corporate cannot.
• Section 123: fine up to ₹1,00,000 for a first offence and up to ₹5,00,000 for a second or later offence.
• Section 132: an applicant may draft a specification and act before the Controller, and an advocate may take part in hearings.
• Section 162(5): suits for infringement and revocation proceedings pending at commencement of the Act may continue as if the Act had not been passed.
• Section 90: the Controller shall endeavour to secure that a compulsory licence is non-exclusive, that the licensee's right is non-assignable, and that the licence is for the balance term of the patent unless a shorter term is consistent with public interest. Section 92 applies on a government notification.

Common mistakes

• Saying the 1970 Act repealed the whole of the 1911 Act. Fix: The 1911 Act was a patents and designs law. Section 162(1) repeals it only in so far as it relates to patents, and this is done by amending it as specified in the Schedule.
• Writing a patent term other than twenty years from the date of filing as the present law. Fix: Under section 53(1) as it stands, the term is twenty years from the date of filing (for PCT applications designating India, from the international filing date). Use only this for the present law.
• Treating any new idea as a patentable invention. Fix: Always apply all three tests of Section 2(1)(j). Novelty alone is not enough.
• Saying all software is unpatentable. Fix: Quote the exact words: a mathematical or business method or a computer programme per se or algorithms. Discuss whether the claim is only the programme itself.
• Saying the complete specification is due 12 months after the provisional specification is filed, in every case. Fix: State that the rule applies to applications other than convention and PCT applications, and that for cognate applications the period runs from the earliest provisional.
• Giving one priority date for the whole patent. Fix: Say that section 11(1) gives a priority date for each claim, and decide claim by claim.
• Treating the Indian filing date as the priority date for all claims. Fix: Apply section 135(1) claim by claim: only claims based on matter in the basic application take the foreign date.
• Counting twelve months from the latest foreign application. Fix: The Explanation to section 135(1) says to count from the earlier or earliest application.
• Saying a company can be registered as a patent agent if its directors are registered. Fix: Quote section 129(2): no company or body corporate may practise or hold itself out as patent agents. A firm of registered partners is the permitted form.
• Treating section 129 as barring only actual work and ignoring holding out. Fix: Remember the three verbs: practise, describe, hold out. Merely calling yourself a patent agent without registration is an offence.

Exam tips

• Always open history answers with a dated timeline. Examiners reward chronological order.
• Write the effective dates of the 2002 and 2005 amendments (20 May 2003 and 1 January 2005), not only the years.
• Link every amendment to TRIPS in one sentence, then give one concrete change from the Act's text.
• In case-based questions, check the dates and whether a proceeding was pending, then apply section 162(5).
• Give a section number only when you are sure. A correct description with no number is safer than a wrong number.
• Begin every answer with the Section 2(1)(j) definition and then the three tests. Examiners look for this structure first.
• Quote key phrases such as per se, mere discovery and known efficacy. Marks follow the exact wording of the Act.
• In case-based questions, discuss the facts against each clause and give a clear conclusion. Do not just list Section 3.