LAW RELATING TO PATENTS IN INDIA

Rights and Obligations of Patentee

PAPER - II

Presented by
Geeta Saha
Roll No. 33
LLM – 1st Year, Semester - II
PATENTEE-RIGHTS UNDER INDIAN
INTELLECTUAL PROPERTY RIGHTS REGIME

Introduction
Anything made by human intervention requires intellectual efforts
and all human made things are a result of intellectual creation.
However, individual persons do not own most of these creations or
organizations but human race as a whole is the collective owner of
these creations. Some specific creations made by
individuals/organizations are owned by them subject to the
conditions laid down by certain laws for recognizing and rewarding
the intellectual activity of the creator and therefore, basic object of
granting a patent is the consideration to them who have made
anything with there own intellect. Logic of granting patent is the
encouragement and the development of new technology and
industry. The basic aim of conferring an Intellectual Property Rights
(IPR) upon the person owning the same is to give a social gratitude
to its holder. This social gratitude may further bring economic and
commercial benefits to its holders. It is just and appropriate to
award a person an IPR in the form of ‘limited monopolistic rights’
for his/her labour and efforts. As per Ayyangar’s report (1959) which
explain reasons for granting patent to any individual.

The theory upon which the patent system is based is that the
opportunity of acquiring exclusive rights in an invention stimulates
technical progress in our ways;
(1) that it encourages research and invention;
(2) that it induces the inventor to disclose his discoveries instead
of keeping them a trade secret;
(3) that it offers a reward for the expenses of developing
inventions to the stage at which they are commercially
practicable; and
(4) that it provides an inducement to invest capital in new lines of
production which might not appear profitable if many
competing producers embarked on them simultaneously.

In the same manner, there are many other arguments which

support grant of patent. Therefore, internationally as well as at the
national level, efforts have been made to recognize the need of
granting exclusive rights under the patent law.

Ever since the inception of the patent rights, a number of different

justifications have been given in support of the patent system. The
proponents of patent system have emphasised the natural rights of
inventors to the products of 2 Ayyangar’s report (1959) para 17
quoted from Swan Committee’s Report 3 their mental labour. While
some have argued that inventors’ contributions must be recognised

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by the grant of a reward the most common theory put forth has
been relating to the public benefits that flow from the grant of
patent monopoly. These theories have been dominating discussion
on the function of the patent system since 19 century. In particular,
it is believed that the patents act as incentives to individuals and
organizations to disclose information that would in turn constitute a
substantive database of technical information, which may have
otherwise remained a secret.

This important function of patent system was reaffirmed by UK

Patents Act, 1977 and the European Patent Convention (EPC) which
emphasised the need for the invention to be disclosed so that it may
be utilised in public interest. Kitch emphasised the way in which the
grant of patents may/ might be analogised to the grant of mineral
rights, giving the grantee an incentive to invest in the exploitation
of the ‘prospect’

Further, the role that the patent system plays in encouraging

creation of inventions and implementation of the new industrial
practices, is realised since time immemorial. Due to this reason, the
different countries have signed many international conventions.
Some of the important conventions are as follows:

(1) the European Patent Convention (1973);

(2) the Community Patent Convention (1975);
(3) the Patent Cooperation Treaty (1970) - came into force in 1978;
(4) the Trade Related Intellectual Property Rights Agreement, 1994;
and
(5) the Rio Convention on Biological Diversity (1992).

To enforce the international conventions, countries have made their

own domestic laws on the basis of these international standard
requirements.

HISTORY OF PATENT LAWS IN INDIA

In India, first enactment relating to patent rights was passed in
1856, which granted certain exclusive privileges to inventors of new
manufacture for a period of 14 years. This enactment was re-
enacted with modifications in 1859. The provisions of this
enactment were modeled basis of the English Patent Act, 1852
wherein patent monopolies were termed as ‘exclusive privileges’.
In 1872, the Patterns and Design Protection Act, 1972 was passed
followed by Invention and Designs Act, 1888.

Subsequently, Indian Patents and Designs Act, was passed replacing

all previous Acts. During the period from 1911 to 1970, various
amendments were made to this enactment. Later on, based on the
interim report submitted by a committee headed by Dr. Bakshi
Tekchand, amendments were made to this enactment by the Act 32

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of 1950. Subsequently, in 1959 Ayyangar’s report was submitted
containing recommendations for effecting radical changes to the
patent law prevailing in India. Eventually, The Patents Act, 1970 was
passed and it came into force on 20 April 1972.

Among the salient features of the Patent Act, 1970 and Patent Rules
1970 framed thereunder are:

• a more elaborate definition of invention,

• declaration of certain inventions as non-patentable,
• abolition of product patents for drugs and medicines,
• stringent requirements regarding description of the invention,
• extension of grounds for opposing the grant of a patent, etc.

On 26 March 1999, Patents (Amendment) Act 1999 came into force

from 1 January 1995. According to this amendment, it is now
possible to make an application for patent claiming for a substance
itself intended for use or capable of being used as medicine or drug
excepting the intermediate for a preparation of drug. Exclusive
marketing rights would be valid for a period of five years or till the
date of grant of patent or date of rejection of the application for the
grant of patent whichever is earlier.

Recently, the Patents (Amendment) Act 2002 came into force from
20 May 2003, interalia, making the term of every patent which is in
force including a patent restorable under Patents Act, 1970, Section
16 as on 20 May 2003 to 20 (twenty) years from the date of filing.
As per this amendment, ‘process’ defined under Patents Act, 1970,
Section 3(1) in case of plants, are now patentable while a process
which is diagnostic and therapeutic has now been considered as non
patentable. By virtue of this amendment, a new definition of
‘invention’ has now come into force, that is, a new product or
process involving inventive step and capable of industrial
application.

After this amendment, a method or process of testing during the

process of manufacture is now patentable, etc.

India is a signatory to many international treaties, which are as

follows:

(1) the Convention establishing World Intellectual Property

Organization (WIPO);
(2) the TRIPS Agreement under the World Trade Organization;
(3) the Paris Convention for the protection of Industrial Property
with effect from Dec. 7, 1998; and
(4) the Patent Cooperation Treaty (PCT) with effective from Dec.
7, 1998.

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DIFFERENT RIGHTS PROVIDED UNDER THE PATENTS ACT

Rights of Patentee
As per 1970 enactment, Section 48, a patent grant gives the
patentee the exclusive right to make or use the patented article or
use the patented process. He may prevent all others from making or
using the patented process. A patentee has also the right to assign
the patent, grant licenses under, or otherwise deal with it for any
consideration. These rights created by statute are circumscribed by
various conditions and limitations.

Current Situation
Although 1970 enactment, confers certain rights on the patentee
through the grant of a patent, the validity of a patent is not
guaranteed by its grant as per Patents Act, 1970, Section 13(4) and
so interpreted in various Indian judgments as indicated by the
following paragraph borrowed from Standipack Private Limited and
Ors vs. Oswal Trading Company Limited and Ors decided on 26 May
1999 by the Delhi High Court:

It has been held in a series of judgments that no presumption of

validity attaches to a Patent granted by the controller under the Act
notwithstanding examination and investigation made under Sections
12 and 13. In this connection reference may be made to a decision
in Bishwanath Prasad Vs. Hindustan Metal Industries; reported in
1979(2) [s1] SCC page 511 at p. 521, Hindustan Lever Ltd. Vs.
Godrej Soaps Ltd. AIR 1996 Calcutta 367 at 381 and M/s. Niky Tasha
India Pvt. Ltd. Vs. M/s. Faridabad Gas Gadgets Pvt. Ltd. AIR 1985
Delhi 136 at 138. In Surendra Lal Mahendra Vs. M/s. Jain Glazers and
Others, ILR 1981(1) Delhi 257, the Delhi High Court relying upon the
judgment in Smith Vs. Grigg Ld., 41 RPC 149(1) held that despite all
the safeguards and circumspection contemplated in various
provisions of the Act against grant of patent in respect of a spurious,
purloined or fake invention, the Legislature minced no words in
clarifying its intendment that no presumption of validity would
attach to a patent granted by the controller under the 1970
enactment, notwithstanding examination and investigation made
under Sections 12 and 13 thereof.

Reasons for not guaranteeing the validity of patent are quite

obvious. As per the definition of the ‘patent’ under the 1970
enactment, which reads as a ‘patent’ means a patent for any
invention granted under this 1970 enactment. It’s self-explanatory
which means that patent is granted for any invention.

Now as the definition of ‘invention’, which states as ‘invention’

means a new product or process involving inventive step and
capable of industrial application. Therefore under 1970 enactment,

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if section 2(m) read with section 2(j) means that patent is granted to
any new product or process which must involve inventive step and it
must be useful for the industrial purpose.

Now as the definition makes the essential criteria that product must
be ‘new’. As explained in definition of ‘new invention’ means any
invention or technology which has not been anticipated by
publication in any document or used in the country or elsewhere in
the world before the date of filing of patent application with
complete specification, that is the subject matter has not fallen in
public domain or that it does not form part of the state of the art;
and it must be useful for the industrial purpose.

From the above discussion three essentials required for grant of a

patent are

1) novelty,
2) inventive step and
3) industrial application.

Now as per the definition of ‘new invention’ which states that:

“…not been anticipated by publication in any document or used in

the country or elsewhere in the world……”

Procedure provided under 1970 enactment, which includes

• the examination and objections,
• advertisement and opposition, and
• grant and sealing of patent.

If the Patent Officer is satisfied that all the steps followed as per the
1970 enactment, then in that situation patent has to be granted to
the patentee as per 1970 enactment, Section 43.

PATENTS ACT, 1970, Section 43- GRANT OF PATENTS

(1) where an application for a patent has been found to be in

order for grant of the patent and either-

(a) The application has not been refused by the controller

by virtue of any power vested in him by this enactment;
or
(b) The application has not been found to be in
contravention of any of the provisions of this
enactment, the patent will be granted as expeditiously
as possible to the applicant ……’

Therefore as the enactment provides that patent officer has to grant

patent as soon as possible.

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Generally patents are granted with little novelty search. Searching
for worldwide novelty is an impossible task considering that all the
documents patented or not, in all the languages form the prior art
as per 1970 enactment, Section 13(2). A patent officer would search
for the already granted patents in India or some other developed
and developing countries. He will take all of these factors in
consideration, which are follows. His duty is to

(1) make search and investigate for anticipation by previous

publication and by prior claim;
(2) consider the report of the examiners;
(3) receive, hear and dispose of representation by way of
opposition against the grant of patent;
(4) receive notice of opposition before the expiry of a period of
one year from the date of publication of grant of a patent;
(5) consider the recommendation of the opposition board, hear
the opponent and to make orders to maintain, amend or
revoke the patent;
(6) grant patent; and
(7) upon grant, publish the fact that the patent has been granted
and the application, specification and other documents related
thereto are open for public inspection.

After taking care of all the provisions of the 1970 enactment, a

patent would be granted to the patentee. But even after this, there
would be many hurdles, which make patent officer’s job difficult.
Some of these are as follows-

due to vastness of the world, where there is population of more than

6.6 billion and where more than 6100 languages exists, it become
physically impossible for the patent officer to search for all the
patent registered in each and every country; and even patented
documents in all languages pose a formidable challenge to search
for prior art. In that situation search for the matter existing in public
realm would be impossible.

In these circumstances, it becomes physically impossible for the

patent officer to know whether or not a particular product or the
process exists anywhere in the world. Therefore, patent granted by
the patent officer is not given complete protection under the 1970
enactment and its validity may be challenged. In this kind of
situation, patent officer has been given protection under 1970
enactment, Section 13(4).

According to 1970 enactment, Section 13(4) ‘the examination and

investigations required under 1970 enactment, Section 12 and this
section will not be deemed in any way to warrant the validity of any
patent, and no liability will be incurred by the Central Government

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or any officer thereof by reason of………………’ and due to this
reason patent granted to the patentee may be revoked at any time
as condition laid down in 1970 enactment, Section 64. Now in this
situation patent of patentee may be easily challenged in the court of
law. It turns to be mere formality where patentees only may show
his intention to have rights over a particular patent. Validity of the
patent has to be established in the court of law. Therefore if no
person challenges patent in to the court of law then patentee will
get economic benefit over his product but when any person
challenges it in a court, then patentee has to establish from
evidence in the court of law. This causes great hardship to patentee,
because in this situation he has to establish all the things with
evidence in the court of law. He has to prove to the court that on
the date of application, his invention met the three requirements
and in so proving, he would have to go to greater depth of the
patent than the patent office might have gone before the grant of
the patent. In this situation patentee once again has to go through
the complete process in the court of law, which he has already gone
through in the patent office.

When law is not giving full security to the claims of the patentee,
regarding patent, there would be constant fear to get challenged
regarding validity of patent would be there. In spite of the
examination of patent applications during prosecution, no patent
system guarantees the validity of a granted patent. Now in this
situation if any claim made against the infringer for patent
enforcement, then, a defendant will usually add to any defense of
non-infringement a further defense, often in the form of a
counterclaim, that the patent is invalid and hence not enforceable
even if infringed. In some jurisdictions, the issues of infringement
and validity are heard together. In others, a different court hears the
question of validity separately or it may be referred to Intellectual
Property Appellate Board (IPAB) and if once litigation starts then
patent granted to him usually stands revoked as long as patentee
would not be able to establish his claim in the court of law. Once if
patent has been challenged in the court of law, burden of proof shift
on the patentee and as long as he is not able to prima-facie in his
favor patent would be considered to be invalid. Because of the
principle that no invalid patent must be enforceable, the defendant
in a patent action is usually allowed to bring in evidence of invalidity
at any stage of the proceedings, and in some jurisdictions even
during the trial itself. As a result, the position of the patentee during
patent enforcement proceedings tends to deteriorate as a
defendant makes searches and often finds evidence, which is
relevant to validity.

LITIGATION AGAINST INFRINGEMENT

If the defendant has committed any infringement then action of
defendant may be challenged in the court under the 1970

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enactment, Section 104. Under the patent laws in India there are
three remedies available18 interlocutory injunction, permanent
injunction and payment of adequate damages or share in profit.

INTERLOCUTORY INJUNCTION
In case of infringement may move for an interim injunction under
Code of Civil Procedure (CPC), 1908, Section 94 to restrain the
defendant from committing the acts complained of until the hearing
of the action or further action. The court has discretion in granting
interlocutory injunction. Normally for granting interim injunction
court would look at all the essentials as given in CPC, 1908, Order
39, Rule (1) and (2), that is,
(1) prima facie evidence;
(2) balance of convenience; and
(3) irreparable injury.

However, court may exercise its discretionary jurisdiction under

CPC, 1908, Section 151 therefore CPC, 1908, Order 39 Rule (1) and
(2) cannot restrict court to grant or not to grant injunction to meet
end of the justice. It’s comparatively easy for defendant to show the
sufficient grounds for not to granting interim injunction. In a patent
action the onus of showing a prima facie case justifying the grant of
an injunction lies on the plaintiff is a heavy one and that it is a
comparatively easy for the defendant to establish a defence
sufficient to prevent the grant of such injunction.

Lord Denning and Megaw opinioned in Hubbard and another vs.

Vosper and another that balance has to be established and
therefore even if some time plaintiff has sufficient reasons but
injunction has not to be granted to him. They had given an instance
of the Frazer v Eveans and said ‘although the plaintiff had the
copyright, we did not grant an injunction, because the defendant
might have a defence fair dealing.

The remedy by interlocutory injunction is so useful that it must be

kept flexible and discretionary.’

As per Kerr if plaintiff is able to establish infringement with help of

prima-facie facts and following point than normally injunction would
be granted.
(1) validity of the patent has been established in previous suits;
and
(2) when patent is sufficiently old standing and the enjoyment
has been uninterrupted.

When validity of the patent is not in question or defendant has

impliedly accepted the validity of the patent. In one of the leading
judgments for granting interim injunction that is American
Cyanamid Company vs. Ethicons Limited where Lord Diplock gave

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his decision, summarised by Brain C Reid in his book A Practical
Guide to Patent Law.

(1) does Plaintiff have an arguable case? If answer is ‘No’ P fails in

limine. If ‘Yes’ than proceed to step two;
(2) whether he may be adequately compensated? If ‘yes’ there
would be no injunction, if ‘no’ than proceed to next step;
(3) assuming conversely that the Defendant (D was to win at the
trail may D be adequately compensated for his interim
exclusion form the market by the P’s cross undertaking in
damages? If answer is ‘no’ interim injunction would not be
granted But if the answer is ‘yes’ than interim injunction may
be granted. But this conclusion cannot (Corp. in India v DIC
Mills, AIR 1980 Del 132 25 2Ed.,at P. 113) be accepted to the
findings that injunction must be granted since other reason for
refusal, may still exits. On the basis of evidence and measures
under point two or three exists then proceed to fourth step;
(4) balance of convenience determined. If it’s in neither way than
proceed to step five;
(5) where the status qualifies? As far as possible it would be
preserved; and
(6) even than it may be decided than the party who is looking
stronger in his claim, decision would be given adequately.

It would be wrong to claim injunction as a protection for irreparable

loss. It would not be granted for too remote loss. But this decision
was considered as too much favorable for the patentee and it was
later refuted in Vermon and Company (Pulp Product) Limited vs.
United Pulp Containers Limited. It was said in the decision that
cynamid case cannot be considered as a charter for success. It said
that there may be situation where the rich patentee is able to make
a situation in court of law that a ‘serious question has to be
considered.’ And if the defendant is poor and they are not
precarious state than grant of injunction become the reason for
insolvency. And Brain Reid supported the same view in his book. In
India, same point was considered in Hindustan Lever vs. Godrej
Soaps Limited. In Bilcare Limited vs. M/S The Supreme Industries
Limited, it was specifically mentioned that American Cyanamid
would not be applicable to the Indian courts. It would be more
specifically useful for the typical mechanical or technical points
involved in the case and not for the general cases, where matter
may be understood with the limited knowledge about the matter
involved. Therefore generally in India it’s difficult for the patentee to
get injunction for his patent.

Case : Peaudouse v Kimberly-Klark [1996] FSR 680.

SOME ALLIED FACTORS REGARDING GRANTING INTERIM

INJUNCTION

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If the patent is new and its validity has not been established, and
endeavoured to be shown that it ought to have been granted, the
court will not interfere. When patent is of recent date, the court
would require the most overwhelming prima facie evidence of
validity before it might grant an interlocutory injunction. In such
cases where there was no time to challenge, as a general rule,
provided that there is no special circumstance exists, monopoly
rights has to be established before granting injunction. It would not
be granted even if defendant refuses to maintain account.

As it was held by the Honourable Delhi Court ‘it is also a rule of

practice that if a patent is a new one, a mere challenge at the bar
would be quite sufficient for a refusal of a temporary injunction but
if the patent is sufficiently old and has been worked the court would
for the purpose of temporary injunction, presume the patent to be
valid one. If the patent is more than six years old and there has
been actual user it would be safe for the court to proceed upon this
presumption’. Same ratio was followed in V. Maniloka Thevar vs.
Star Plough Works, Melur. There must be proof of actual use in India
for more than six years. M/s National Research Development
Corporation of India, New Delhi vs. M/s The Delhi Cloth and General
Mills Co. Ltd. and others, AIR 1980 Delhi 132.

Further it was referred by the Delhi High Court in Bilcare Limited vs.
M/S The Supreme Industries Limited ‘the patent in question is new
one. It was registered in the year 2004. The appellants filed the suit
in the year 2006 that is after the lapse of two years only. By no
stretch of imagination it may be said to be sufficiently old. There are
no conflictions on the point that the patent is less than six years
old.’ In this matter Delhi High Court has specifically remarked that;
‘49 ……In particular, the court will not allow the American cyanamid
approach (which in principle is quite favourable to the patentee) to
become by over-rigid application an engine of oppression. This is
highlighted by the decision of the court of appeal in Brupat vs.
Sandfod Maston Products (1983 RPC 61) where a defendant of
extremely modest financial standing (normally a good reason for
grant of relief since it gives rise to doubt as to their eventual
capacity to pay damages if infringement is found at the trial) was
allowed to continue provided that he pay in the interim into an
escrow account a reasonably royalty’.

Now to establish his patent, patentee has to adopt other way round
where as per CPC, 1908, Section 113 when once the High Court or
Appellate Board gives decision and upheld validity if the patent for
the matter related with 1970 enactment, Sections 64 or 104 then in
that situation, certification of validation may be issued by the
relevant court. Once certificate of validity is granted and if the
decision of the court in patentees favour than court may ask to pay
all the costs related to the particular case.

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If the patent relied upon would expire before the action may be
heard the balance of convenience may be considered against the
granting of as interlocutory injunction. If there is uncertainty in the
parties the respective rights of the parties, the court would be
reluctant to issue injunction the effect of which is to settle the
(Fomento (Sterling Area) v Refill Improvements [1963] RPC 163
(CA)) parties rights once for all. Normally interlocutory injunction
would not be granted where damage may be adequately
compensated for. Furthermore, court will not grant interlocutory
injunction unless it is satisfied that there is real probability of the
plaintiff to succeed at the trial. Niky Tosha v Faridaad Gas AIR 1985
Del 136 Del (DB)

In the situation where it is not clear at outset that whether plaintiff

has reasonable claim than in that situation status quo would be
maintained. Delay on the part of plaintiff to apply to the court will
bar his right for interlocutory injunction for the case of infringement
although it may not be bar in the right to injunction at the trial. P.
Naraynan 4th Edi., Eastern Book Company. In assessing damages
the sole question is what is the loss suffered by the patentee by the
reason of unlawful sale of the defendant’s goods. The basic principle
behind the granting of compensation to the petitioner is to provide
remedy for loss suffered by him. The loss must be natural and direct
consequence of the defendant’s act. Espee v Themis (1979)1 MLJ
213.

The basic problem in this principle is that the court would grant
compensation to the extent to which plaintiff have suffered and
would be putting the plaintiff in a situation where he has not
suffered loss at all, but at the same time they are not punishing the
defendant. In this way they are encouraging the infringements,
where infringements would be committed frequently.

Now there are two ways in which plaintiff may get his remedy.
(1) damages; or
(2) account of profit.

If plaintiff chooses to have share in profit, then court would come on

a
figure after considering many factors like –

(1) how much of his invention was actually appropriated, in order

to determine what proportion of the net profit realised by the
infringer was attributable to his use;
(2) but this situation would be altogether different when patentee
and the infringer both are having the same market and the
patent has been infringed. Now in this situation calculation of
profit is very difficult. In this situation typical arithmetic would

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 not apply and only lump sum amount is given. This lump-sum
amount paid by the court would be based on rough
calculation, which need not be satisfactory for the plaintiff.

Now there may be different kinds of situation where the damage

has to be paid.
Amount of payment would always depend on the capacity of the
defendant and the plaintiff.
(1) when the manufacturer and the inventor is the same person
and if his patent has been infringed by any person then in that
situation profit made by the defendant would be diverted to
the petitioner.

(2) other situation is when the license is normally granted by the

patentee to the manufacturer then the damage would be paid
equivalent to the royalty of license. The damages would be
paid after taking care of all the other factors in to the
consideration.

But when both conditions have not been established neither the
profit nor the licence, then in that situation plaintiff has to prove
extent of loss and on the basis of that damages would be granted.
Now as per situation (3) the burden of proof is on the plaintiff to
establish the extent of loss. In this situation it’s very easy for the
defendant to oppose plaintiff. Irony is here that first plaintiff has to
establish his claim than he has to prove the extent of loss and the
lump sum amount would be paid. Complete burden is on plaintiff so
he has to take care of all the matters. This is discouraging in nature
for the patentee to go to court and challenge it.

Second problem arises where a defendant would intentionally

commit infringement and he knows that
(1) in case where licence has been issued by the patentee for use
of patent defendant would intentionally commit breach and
normally court would grant damages equivalent to the rate of
royalty and initial burden of proof is on the patentee.
Therefore if patentee fails to establish his claim then
defendant need not pay license royalty and even if patentee
has been able to establish then even defendant has to pay
damages equivalent to license royalty; and
(2) where patentee doesn’t want to share his patentee to any
other person due to any reason like he wants to retain his
monopoly rights to him only or he don’t wants to share it with
the person where he has professional rivalry in that situation
the other person get this technology by infringing right of the
patentee and after this even that person is granted
compensation but it would not place him at the same place
and that would be irreparable injury to the patentee.

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One of the important conditions for getting compensation is to
establish that ‘direct and natural’ loss must have occurred. Now
in this situation both these terms are very vague. Normally it’s very
easy for the defendant to refuse some transaction but it’s very
difficult for the plaintiff to establish and make link with each and
every transaction. No person may make profit out of his own wrong.
And therefores plaintiff must be allowed to make his lump sum
claim and burden to defend the claim must be shifted on the
defendant.

OTHER PROBLEMS
One of the most significant impediments to the effective
enforcement of patent rights in India is the acute lack of awareness
of patent basics in the judiciary and even the legal fraternity. A
patent infringement is first to be filed in a district court. With a
counter-claim of invalidation, the suit moves to the high court.
Unlike in advanced patent litigation countries like USA, Europe or
Japan, the awareness and understanding of grounds of infringement,
exceptions to infringements etc are also poor and vague in India.
Another important aspect is that no timeframe is prescribed for
legal recourse, unlike in EU and US judicial delays mean that the
cases may take upto ten years to reach resolution and payment of
damages on patent infringements.

The pendency of patent cases, especially of the main suit, is likely

to remain a deterrent for enforcement.

There are some other inbuilt problems in the 1970 enactment,

which are discouraging in nature. As

(1) to start with let us look at the fate of those innovators who
had put their applications for product patents in the mail-box
created under the first amendment to the Indian Patent Act in
1999, effective from 1 January 1995. With product patent law
in place under the amended enactment of 2005, the patent
office has opened the mail-box and taken up scrutiny of
applications filed before 1 January 2005. However, it has
decided not to process those applications on which the word
‘WTO’ is not marked. The patent office has taken the view that
at the time of their filing, the product patent law was not in
place [1970 enactment, Section 5(1)], prohibited grant of
product patent on agrochemicals, pharmaceuticals,
biotechnology, etc.). The argument is useless because patent
officer itself may do it. Due to one rule, which was introduced
after submitting application, would be against the natural
justice. The prohibition was applicable only for the period
when the product patent law was not in force. Now, when, the
law is in place, following the third amendment to the Patents
Act (2005), there is no basis for disallowing certain

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 applications on an artificial pretext. The patent office’s refusal
to grant mail-box status to applications not marked ‘WTO’ will
severely penalise the applicants simply because the receiving
officer in the patent office did not write ‘WTO’ on their
applications;

(2) even for pre-grant opposition the amended enactment 2005

allows of a patent application. The person opposing the
application need not even be a stakeholder. Further, he is a
party to the opposition proceedings. This means that he may
go ahead and prevent the grant of even a genuinely valid
patent;
(3) the enactment provides for increasing the time limit for filing
a pregrant opposition request to six months from date of
publication. Besides, grounds for such opposition have been
increased from two to 11. These changes will inordinately
delay the grant of patent and may lead to frivolous opposition;
(4) ironically, the applicant cannot appeal against the decision of
the controller of patents if the latter allows the pre-grant
opposition application. Thus, the former would have forfeited
his right to get a patent even before the application is
subjected to detailed examination;
(5) even for mail-box applications, the amended enactment
allows patent rights to commence from the date of patent
grant only. This results in a substantial reduction in the
protection period. Thus, for an application filed in 1995,
assuming three years for patent grant, this would only be
seven years. Of the 20-year term of a patent, the applicant
loses ten years because the date of putting the application in
the mail-box is taken as the filing date. A filing date prior to
the date on which the product patent law came into force has
no meaning. And, yet, by doing so, all the mail-box applicants
have been penalised;
(6) it is understood that only 10 per cent of the total applications
filed has been processed for grant of patent. At this pace,
grant of patents for the majority of applications will be
inordinately delayed. The more the delay, the less the
protection period;
(7) the amended enactment allows generic manufacturers who
were producing and marketing products of a mail-box
patentee before 1 January 2005 to continue doing so on
payment of a ‘reasonable’ royalty (term ‘reasonable’ is not
defined). This means that even after patent grant, the rights
of the patentee are seriously compromised;
(8) the Patents (Amendment) Act, 2002 had introduced the Bolar
provision to allow for using and selling the patented product
during the term of the patent, for obtaining regulatory
approvals. The amended enactment 2005 has revised this to
include the act of importing as well. The provision has been

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 selectively transposed from the US law. In the US, under the
Bolar provision (applicable only to pharmaceuticals), even as
enabling measures are provided to ensure the entry of
generics just at the time of expiration of the patent term, it
also gives relief to the patent-holder by allowing a suitable
increase in the patent term to compensate for the time lost in
getting regulatory approval. That strikes a balance between
the interest of the generics and those of the patentees.
However, under the amended enactment 2005, due to the
selective transposition of Bolar, even as the generics may gain
entry immediately on expiration of the patent term, the
patent-holders of, say, crop protection products (CPP) are at a
considerable disadvantage because of the inevitable delay in
getting regulatory approvals;
(9) in case of application to be made in foreign country – as per
1970 enactment, Section 39 no person may file any
application to any foreign country without written person of
the controller unless applicant have made application six
weeks prior in India than to other country and no direction has
been given regarding secrecy of the patent under 1970
enactment, Section 35. If is not able to do it, application would
be considered as abandoned. Now in essence it’s a loss to the
Indian inventor because now in the era of advanced
technology its quite possible that the invention may be leaked
to some other person and he may try to get it registered by
his claim and due to this procedural burden invention made by
the person suffer loss and as per 1970 enactment, Section
118, if he makes an attempt to save his invention then he
may be given imprisonment for two years or fine or both;
(10) as per Patent Rules 2003, Section 8, Form 3, in case where
patent application is filed outside India at any place plaintiff
has to inform plaintiff at every time, which is quite
burdensome. He has to provide information that in which
country he has applied and what is the status of application in
other country;
(11) enactment 1970, Section 11A (7) confers certain rights to
patentee as patentee may exploit his product to the market or he
may share it in to the market. In this situation there would be
constant fear where. If the invention to be patented were disclosed
before the date of filing, its novelty would be lost as per the
definition of invention;
(i) many times the inventors would want to discuss their
inventions with other persons who are not part of their
organisations or research teams. Such disclosure in
most cases would be fatal to getting a patent granted.
And as per proviso to 1970 enactment, Section 11A(7)
specifically provides that ‘..the applicant will not be able
to institute any proceedings for patent until the patent
has been granted:’. Usually grant of patent is delayed

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 by its lengthy procedure and due to this, in these kinds
of circumstance patentee would never be able to enjoy
his own product safely before the grant of the patent;
and
(ii) scope of this 1970 enactment, Section 11(3) is further
expended against the interest of the patentee by 1970
enactment, Section 45(3) which specifically provided
that ‘Notwithstanding anything contained in this section,
no suit or other proceeding shall be commenced or
prosecuted in respect of an infringement committed
before the date of publication of the application.’ In this
situation even plaintiff may aware about the
infringement, but due provision like 1970 enactment,
Section 45(3) make him complete helpless and he may
not even approach to the court on the grounds like
equity or natural justice for the intentional infringement
committed by the infringer in the time-period from
application for patent to grant of patent by the patent
office.

(12) There are many other procedural burdens are there which has
to be borne by the as Form No. 27 as necessitated under 1970
enactment, Section 146(2) and rule 131(1). In 1970
enactment, Section 146, power has been conferred to the
controller that he may ask for any information as required and
which has to be filed within two months from the date of
issuance. And as per rule 131(1) read with 1970 enactment,
Section 2 and Section 146(2), which make compulsory to file
report every year that whether his product is commercially
utilised not. And the patentee fails to give information
regarding this thing he may penalised with the fine which may
extend to ten lakh rupees46. This in nature is burden some
duties which are rather than encouragement, retribution in
nature.

Moreover, there is no criminal remedy available for infringement of

patents, as opposed to that of copyrights etc. This often leads to
insufficient remedy in the infringement suits. Also, the lack of
criminal remedies fails to deter potential infringers from committing
such acts in future.

Apart from these legislative and judicial shortcomings, the patent

regime also suffers from certain serious administrative problems.
Though improved, the speed at which a patent application is
granted still remains largely slow. The Indian patent office is faced
with a growing backlog of approximately 40,000 unexamined patent
applications.

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Subsequent to these amendments, India may boast of one of the
best patent law regimes in the world. The problem, however, is also
aggravated due to the inadequacy of the enforcement machinery
and the slow judicial process.

CONCLUSION
Though India has improved its patent regime in some respects, it
remains weak in many areas largely due to inadequate laws and
ineffective enforcement. Despite the amendments made in the laws,
a lot is desired still in order to achieve its object as provided in the
preamble of the 1970 enactment. Therefore interpretation of the
enactment must be done in the manner that it may better protect
rights of the patentee. Patentee must be given edge over the
infringer. The provision above discussed, need to be taken in to
account, to protect interests of the patentee. The amendments
without doubt usher a welcome improvement in the enforcement
area. In particular, the reversal of burden of proof provision enables
higher rate of success to the patent holder and acts as a deterrent
to potential infringers.

With the introduction of this provision, many corporate in India are

now opting for defensive patents. Such corporate would prefer not
to push on infringement related enforcement actions.

Improving IPR protection will be an important element to increasing

and making the climate in India more attractive to private
investment.

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