MODULE 1[D]: SURRENDER AND

REVOCATION OF PATENTS; POWERS

OF THE GOVERNMENT UNDER THE
PATENTS ACT
1. SURRENDER AND REVOCATION OF PATENTS-
[Section 62,63,64,66]

I. INTRODUCTION

A patentee is endowed with the exclusive right of making, using or selling away the
invention. The validity of the patent is not guaranteed by the government itself, but by the
grant as given under Section 13(4) of the Act. This is the basis of patent law as accepted all
over and in England. The reason for the same is that as patent is a limited monopoly granted
to the true and first inventor as a reward for creating something new and useful which is of
ultimate benefit to the public. Nevertheless, the public is granted an opportunity to challenge
the validity of the patent if it does not fall within the conditions stated in the Act for the
endowment of grant.1

Similarly a patent can be voluntarily be surrendered at any time by giving a notice to the
controller in a specified manner. The notice or application shall contain an offer to surrender
the patent. It can also be opposed by any person within 3 months. On an alike note, the patent
can be revoked on any of the grounds mentioned in the Act.

Provisions Applicable For Surrendering And Revocation Of A Patent

- Section 63. Surrender of patents

- Section 64. Revocation of patents
- Section 65. Revocation of patent or amendment of complete specification on
directions from Government in cases relating to atomic energy
- Section 66. Revocation of patent in public interest

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P.S Narayan, Intellectual Property Rights, Gogia Law Agency, Hyderabad, First Edition, 2001, P No.10
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 - Section 62-Rights of patentees of lapsed patents which have been restored

II. ANALYSIS
Surrender of Parties

A patent can be surrendered by the patentee under the following provisions:

- It can be made at any time.

- A notice pertaining to surrender can be made by the patentee in a prescribed manner,
inclusive of a condition or a point after surrendering of the patent - Section 63 (1).
- The notice of the surrender may be given to the controller :
i. the notice shall be published by him in the Official Journal.
ii. Every other required person apart from the patentee whose name appears in
the Patent Register as having an interest in the patent shall be notified by the
Controller- Section 63 (2)
- Any interested person may within the duration of 3 months from the date of the
publication of the notice, oppose the surrender of a patent- Section 63 (3).
- A notice may be rendered by the opposition to the Controller in FORM-14 in
duplicate form under Rule 87.
- The Controller upon receiving the notice of opposition shall notify the patentee under
Rule 87
- Furthermore, the process which is relevant for opposition is applicable for Surrender
of Patent as well under Rule 57 to 63.The process includes:
a) Filing Writing statement
b) Reply to WS.
c) Leaving evidence.
d) Hearing & costs.
- Upon the satisfaction of the Controller that the patent may be surrendered, the offer
may be accepted by him and further revoke the patent.
- Upon revocation of the patent, the patentee may be directed by the Controller to
return the patent, and after receiving such a patent, the Controller shall publish the
revocation.

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Revocation of Patents

A patent can be revoked anytime granted before or after the commencement of the Patent
Act, 1970 by the following persons, judicial and quasi-judicial authorities:

- Any person interested’

- Central Government;
- By the Appellate Board
- Or in a counter-claim filed in a suit for infringement.
- It can be revoked by the High Court on the following grounds:- Section 64 (1)
a) The patent so claimed in the complete specification was so claimed in another
valid complete specification at an earlier priority date of another patent
granted in India.
b) The patent was granted to a person on application made by him, who was not
entitled to under the provisions of the Patent Act.
c) The patent was wrongfully obtained by infringing upon the rights of the
petitioner or anyone who claims under him.
d) The subject of a claim of complete specification is not an invention within the
meaning of this Act.2
e) The invention so claimed is not new or is in public domain and it is publicly
known.
f) The invention claimed in complete specification is obvious, or does not
involve any inventive step, in regards to what was publicly known in India,
before the priority date, or as to what has already been published in India.
g) That the invention claimed is not of any use or benefit.
h) That the complete specification does not in entirety properly describe the
invention or the process to carry that out, or the process is unclearly
mentioned.
i) That scope of the claim has not been adequately or lucidly described, or that
the claim of the specification is not clearly based on the matters as mentioned
in the complete specification.

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M/S MYLAN LABORATORIES LTD. revocation proceedings (No.29 of 2016)
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 j) That the patent has been obtained on false information or misrepresentation.
k) The subject of any part of the claim cannot be patented under the Act.
l) That the patent, in respect of the claim as claimed in part of the complete
specification was used secretly in India before the priority date.
m) That the applicant has failed to disclose any material information as required
under Section 8, or has furnished any false information.
n) That the applicant has violated any direction of secrecy as provided for under
Section 35, or has filed for a patent outside India in contravention of Section
39 of the Act.
o) Furthermore, that the permission for amending the complete specification was
obtained by fraud under Section 57 or 58 of the Act.
p) That the complete specification does not disclose in complete, or wrongfully
mentions about geographical origin, or source of biological material used in
the invention.
q) That the claim of any part of the complete specification had regards to the
knowledge, oral or otherwise, within the limits of a local community located
in India or anywhere else.-

- EXCEPTIONS

However, the personal document, secret trail or secret use shall not be taken into
consideration. Furthermore, where the patent is for a process or for a product for a
process as claimed or described, the importation into India of that product or process,
shall constitute as use or knowledge in India on the date of its importation, save as in case
of experiment or trial use only, the patent which has been obtained by a Government
official for Government use only, or the use by any person who as a consequence of the
applicant of the patent or any other person from whom he derives a title having
communicated or disclosed the invention, and without the necessary consent of the person
from whom her derives the title- Section 64 (2)& (3)

Furthermore, the High Court can on the application of the Central Government revoke
the patent on the ground that the patentee refuses or fails to make, use or exercise the

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 patent in accordance with the reasonable terms of the directions of the Central
Government in compliance of Section 99.- Section 64 (4)
- It is also required to serve a notice of the petition under Section 64 (5) to all those
persons appearing to be the proprietors of the patent or having interest or shares in the
patent, and it is not required to be served on any other person.

Revocation of Patents and Amendments to Patents in accordance with the guidelines

of the Central Government

When it appears to the Central Government that after the grant of a patent, that the patent
so granted is in relation to atomic energy in case of which no patent shall be granted
under Section 20 (1) of the Atomic Energy Act, 1962, the Controller may be directed by
the Central Government in that case to revoke the patent, and give notice thereby in such
regards to the patentee and every other person who has an interest in the patent and whose
name has been entered in the register. The interested persons shall be given due and equal
opportunity of being heard before the revocation.- Section 65 (1).

Alternatively, the Controller can also ask the patentee to amend the complete
specification in such a manner as he deems to be necessary for revocation of patents.-
section 65 (2) .

Revocation of patents in public interest

Where it appears to the Central Government after due examination that a patent or the
mode in which it is exercised is mischievous to the State or generally against public
interest, then in that case it shall revoke the patentee by publication in the Official
Gazette, provided before which an equal opportunity of being heard is provided to the
patentee- Section 66.

Rights of the Patentee in case of Restoration of Lapsed Patent

If a Patent is restored, the rights of the patentee shall be subject to such provisions as are
provided for under the Act, or such other provisions that may be prescribed from time to
time by the Controller, as it deems to be necessary and fit to protect and compensate the

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 persons, who may have begun to avail themselves of , or have taken concrete steps by
way of contract or by other means and methods to the patented invention, between the
date when the patented invention ceased to have an effect and on the date when the
application for restoration was published- Section 62 (1)

Additionally, no suit or proceeding shall be commenced or prosecuted in respect of a

patent from the date it ceases to have effect till the date of publication of application of
restoration of patent- Section 62 (2).

In the Monsanto3 case the Hon’ble court in an attempt to harmonize the provisions of the
Competition Act, 2002 and the Patents Act, 1970 the court opined that Section 62 did no
whittle down the scope of any other law, and that the effect of Section 60 would be
subject to most vast possible conduct of the rigors of the Competition Act.

III. CONCLUSION

The process for revocation, surrendering and restoration of lapsed patent is quite in detail
under the Act, providing the Controller of Patent with vast set of powers.

Additionally, the questions such as: what is the effect of surrender proceedings on the
opposition/revocation proceedings, could they be referred to each other as Section 63 and
64 cannot be applicable to each other, remain yet to be answered lucidly. It is of
significance to take into consideration that both the proceedings can be commenced at
any time after the endowment of the Patent. The provision of Section 64 can be started
by any person interested, central government or by the alleged infringer in counter-claim.
“Section 63 can be initiated by Patentee and can be opposed by any person interested.
Section 63 is one of those provisions of the Indian Patent Act, 1970 that is not much
utilized. Unfortunately, even case laws have not been able to provide the much needed
clarity on the provisions of section 63.”

2. WORKING OF PATENTS, COMPULSORY LICENCE

AND REVOCATION [SECTION 83, 84, 85, 90 AND 94]

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Monsanto Holdings Pvt ltd &Ors v Competition Commission of India order dated 10.02.016 in Reference
Case No. 01 of 2016;
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Chapter XVI of Indian Patent Act of 1970 deals with Working of Patents, Compulsory
Licence and Revocation. Section 82- 94 form part of this Part of Act of 1970, out of these
Section 84-94 deal with compulsory licence.

Section 83 lays down general principles which are applicable to working of patented
inventions. A historical requirement by many countries as patent law evolved was that patents
that are granted should be worked locally, also known as the local working requirement. The
objective of a country granting a patent is not to give an exclusivity or monopoly to the
patentee rather objective of granting is that the patentee will work the invention, technology
in the country and the country will get some advantage or some benefit by the working of the
patent. So, patents are granted with the objective that the technology will be put in effect and
the benefit of the technology will reach the citizen or people living in the country. With this
objective, countries which grant the patent initially had this requirement of local working of
the patent.

Section 83 of the Indian Patent Act, 1970 states that the grant of Patent is to encourage
invention and ensure that patented invention work in India or simply they have commercial
usage in India to fullest extent which is reasonably practical without undue delay. The
Patentee are required/obligated to work their patented inventions in India against the
monopoly of 20 years being ranted to them. Thus, the Indian Act is not solely focused on
granting monopoly but on encouraging social and economic welfare by means of employing
technological advancements as would be advantageous to both the classes (producers and
consumers). Also, it is provided through this section that patent should not hinder the
protection of public heath and nutrition but rather act as a means to promote public interest.
Availability of Patented novation to public at large at fair price is a must for these
innovations.

Section 83 encompasses principle which was introduced in the 1970 act. Because they are
principle, in exercising the power under this chapter of Act, due regard should be given to
these principles. They are:

a. Patents are granted to encourage inventions and to secure the inventions are worked in
India on a commercial scale and to the fullest extent that is reasonably practicable
without undue delay.

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 b. that they are not granted merely to enable patentees to enjoy a monopoly for the
importation of the patented article;
c. that the protection and enforcement of patent rights contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the
mutual advantage of producers and users of technological knowledge and in a manner
conducive to social and economic welfare, and to a balance of rights and obligations;
d. that patents granted do not impede protection of public health and nutrition and
should act as instrument to promote public interest specially in sectors of vital
importance for socio-economic and technological development of India;
e. that patents granted do not in any way prohibit Central Government in taking
measures to protect public health;
f. that the patent right is not abused by the patentee or person deriving title or interest on
patent from the patentee, and the patentee or a person deriving title or interest on
patent from the patentee does not resort to practices which unreasonably restrain trade
or adversely affect the international transfer of technology; and
g. that patents are granted to make the benefit of the patented invention available at
reasonably affordable prices to the public.4

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Section 83 (a) to (g), The Patent Act, 1970
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 Section 83 at Complete specification priorly disclosed while filing patent.
glance :
Object and This disclosure though doesn't enable others to produce.
meaning
The patentee has monopoly over the invention for a period of 20 years, thus
though others have know-how of invention they do not have authority which
patentee holds.

Patented invention is protected exclusively and third party can't use it though
they can't use it and have to wait for expiry of period of patent.

If patentee chooses not to work the invention then the country that grants the
patent will not get the benefit of Patent grant so the provision of 'working of
patent' is added requirement of enabling disclosure.

Object of Section 83 is that the technology that is encompassed in the

manufacture will eventually get transferred to the country.

Public health and nutition should not be impeded and for patent granted to
act as a means of public interest.

Patentee should not abuse his right. He should not engage in unfair,
unreasonable means of trade just because he holds a right.

Patented invention be available to public at a reasonably afforable price.

The section recognises importance of technology in development of a nation.

India is a member and signatory to World Trade Organisation (WTO) and General
Agreement on Trade and Tariff respectively. Trade-Related Aspects of Intellectual Property
Rights (TRIPs) is a Multilateral agreement on Intellectual Property Rights and hold great
importance in IP world. India has pledged to adhere to TRIPs agreement.

The ‘Local working requirement’ of patented inventions has been a debatable cause amongst
the WTO member states for some time. The cause of this dispute arises because ‘failure to
work’ of patented inventions in the territory of issuing country raises base for compulsory
licensing.

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Compulsory licenses are authorisations given by government to third parties to make, use or
sell a particular patented invention (be it product or process), the permission or consent of
patentee (the one who holds patent) is not required.

It is well established principle that the benefits of patented invention be available to public at
large at a reasonable affordable cost. Thereby making public welfare major object working
behind the provision. But there may be conditions where the patented invention is not being
used for such purposes or it may so happen that the society is not getting benefit out of the
said invention. Not anyone & everyone can practice the invention as it would lead to patent
infringement, even with licence there may case that one doesn’t hold be terms and conditions
that are conducive for working the invention in manner to benefit the society. In such
conditions, the controller forces the patentee to grant licence to such applicants who may
have applied raising objections to non-fulfilment of said patent. This compulsory licensing,
the term itself suggests a grant that is mandatory whereby the patent owner has no choice as
authorities have authorised the licence compulsorily to third party.

As per Section 84 any person interested can submit an application requesting for grant of
compulsory licence of an invention by proving that the society is not being able to be
benefitted by the invention.

Concerned question raised herein would be how to proof that the society is not able to get
benefitted by this invention. In general, it would be sufficient to prove that a reasonable
requirement of public is not met or patented invention is not available to public at affordable
price or the patented invention is not worked in India.

Once such an application is submitted to the controller, he overviews the application follows
a set of procedure then either rejects the application or grants the compulsory licence. Once
the licence is being granted terms and conditions need to be defined. There are certain
parameters to be taken into account while defining terms and conditions.

Though once granted there is no certain way one can ensure that the earlier non-fulfilment so
contested is now being fulfilled. The controller of Patents may take certain diligent actions to
ensure that the compulsory licence is being granted to such person who can ensure
compliance of principles. Following are measures of checks taken by controller:

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 a. Controller checks the time that has lapsed since the grant of patent and measures
taken by the patentee for working the inventions. This is to ensure that the contention
so raised is not with regards to such patent that may require more time to work the
invention, as then there may be delay in that conditions.
b. It is considered prudent by the controller to check the ability of the applicant to
practice the invention.
c. The capability of applicant in terms of his ability to take risk in putting investment for
working the invention. Because capital is quintessential requirement for working of
any invention.
d. Controller also checks whether there has been communication between the Patentee
and the applicant, or simply has the applicant approached the patentee before
approaching the controller as by supposed standard patent owner is to be approached
first for getting a licence on reasonable terms & conditions. Failure to negotiate or
being provided the same over a period of time leads the applicant to approach the
controller. This period of time is defined as 6 months. So, they should ideally be
engaged for a period of 6 months negotiating the terms and conditions or chasing each
other for finalising the licence. Failure on doing so one approaches controller
requesting Compulsory licence.

At this stage either the licence is granted or application is rejected. So herein anyone
interested proactively wanted to get a compulsory licence granted by the controller.

There could be other circumstances such as national emergency, extreme urgency or non-
commercial use of patents, in certain situations the central government by itself proactively may
believe that the compulsory licence be issued to help the situation, so there is no interested person
but here the central government has by themselves come out with a notification stating that a
compulsory licence would be granted for said invention.
Once such notification is issued any interested person can request the controller and he may grant
the compulsory licence to such applicant subject to conditions that may apply for his candidature.

Section 84(7) provides for conditions where the reasonable requirement of public shall be
deemed to not be satisfied or met with. It can be studied broadly under three sub-conditions

a. Where the patentee didn’t issue licence

b. Where the patentee issued licence

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 c. Where the patentee did not work the invention in India

a.Where the patentee didn’t issue licence

(restricting access to patented invention due
to lack of supply, etc.)

Conditions where reasonable a.Where the patentee issued licence (terms

requirement of public not and conditions attached with license are
deemed to be satisfied restricting and unreasonable)

a.Where the patentee did not work the

invention in India (Supply met due to
importation, him not objecting infringment of
his right)

Where the patentee was not willing to issue licences, which could negatively impact and
prove to be hindrance to trade and industry not only during their normal operations but also
for any development they were looking for. Suppose the trade or industry was depending or
depends on this technology which was patented and the patentee is unwilling to give out
licences and others thus can’t use it because of risk of patent infringement. This is directly
affecting their operations which suffer because they aren’t able to carry out their operations
efficiently and satisfactorily. This indicate that reasonable requirement of public is not met.
This lack of licencing can sufficiently raise the chance that the patented invention is not
adequately available to public to a reasonable extent, directly indication non-compliance of
reasonable requirement. Similarly, exports may be affected due to such lacuna. So, simply we
can say that any commercial activity which is getting impacted (negatively) or not being
developed gives clear indication of the reasonable requirement of public not being met.

Another condition is where though the licences were issued, there existed terms & conditions
that proved to be hurdles to people who had obtained the licence. Examples of such terms and
conditions could be Restraining the person who obtained the licence or the person who
purchase the product from selling or manufacturing or using any other product which is not
even protected by patent, thereby affecting business of another product making it an

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unreasonable restrain; asking for exclusive grant back; coercive licencing package (asking to
be licensee to get license of another product if he wants license of what he requested, as in
them being package deal); another example could be restraining the licensee from objecting
against the said patented object in future (refraining him from post-grant opposition), etc. So,
such and other likewise unreasonable terms and conditions are also indicative that the
reasonable requirement are not being met with.

Apart from these, there could be another condition with regards to working of invention in
India on commercial scale to the reasonable fullest extent possible as required by Section 83
of the Act. This condition has to be scrutinised carefully, there could be conditions that
prevent or simply factors that enable the patentee to avoid working of patent in India. If the
patentee is depending on importing of patented article to India, this import could be by him or
any other person who’s purchasing product from patentee or any other third person who is
importing the patented product but the patentee is not restricted him or even instigating any
infringement suit against him. Because the article is being imported, the supply is met with
that. This conditions also instigate that the reasonable requirement of public is not met.

These prove to be the ground that may be raised in an application for grant of compulsory
licence to the controller.

Adding onto the above conditions there are certain Terms and Conditions as given in Section
90 of the 1970 act that are to be ensured while granting a licence under Section 84. These
conditions are to ensure that the patentee and licensee reap some benefits along with adding
obligations onto the applicant or simply limits to licensee. They are:

 Patentee should get benefited in terms of royalties and remuneration. A due

consideration is given to nature of invention, potential market of the invention, the
expenditure that was incurred by patentee for developing the invention, expenditure
for filing the patent and for maintaining the patent and various other factors can be
kept in mind when estimation of royalty and remuneration is to be regarded. This is
for the benefit of the patentee. But the royalty and remuneration so acquired can’t be
compared to what one may get at times of voluntary licence.
 The applicant wanted the license because the reasonable requirement was not met
with. The terms and conditions for an applicant are obligatory and clearly define that
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 the invention should be worked in India in manner so that reasonable requirement of
public is met (the quantity, affordable pricing, etc) along with ensuring that the
licensee too earns profit or benefit out of such agreement.
 The licence is non-transferable and non-assignable. One can’t sub licence it.
 The licence is not an exclusive licence, any person can come forth requesting claim
for compulsory licencing. There can be multiple players to whom the compulsory
license is granted.
 The predominant purpose of giving license is to cater the domestic (Indian) market,
but during cases as in Section 84(7) where export market was not supplied 5, in such
cases import of patented article is allowed so as to help the export market.
 The term of patent is generally for the remainder of term of patent but a shorter term
is acceptable if it is consistent with public interest.
 The invention has to be worked in India, acquiring a compulsory license doesn’t
grant one right to import the patented article, doing so (importing) would be
considered to be unauthorised use of patented invention which would lead to patent
infringement. Having a compulsory licence would not help escape such liability.
There may also be conditions such as national emergency, circumstances of extreme
emergency where working of invention is not sufficient or helping the cause, then the
central government may by notification can instruct or direct the controller to allow
the licensee import the invention. But in such condition the Controller has to and can
revisit terms & condition, specifically that if an enhanced remuneration has to be paid
to patentee, further specifications as to quantity, time (for how long he’ll import), sale
price of article, etc. are accounted for and thereafter the controller give effects to the
given directions.

There always remains uncertainty as to whether the said compulsory licencing will solve the
problem for which it was granted. Suppose it too was unable to fulfil what was required, the
concern here would be raised that would there be another compulsory licencing or should we
do away with the patent itself.

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Section 84(7)(a)(iii) of The Patent Act, 1970
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Section 85 provides a solution to the raised concern. The provision provides for the
revocation of the patent, it provides an option for any person interested to revoke the
application on grounds that even after compulsory licence as well the requirement of public is
not met implying that all previously raised issues have not yet improved. Within 2 years from
the date from when compulsory licence was granted or awarded, if licensee is not able to
meet the public requirement so one can’t keep going on various rounds of compulsory
licencing or one may be able to do so, but this will prove to be nothing but the patent being
hindrance to growth & development of a nation. So, request to revoke patent can be made,
making it another ground of revocation. But this is only applicable when at first instance
compulsory licence has been granted. Any person interested or the central government can be
applicant who may send request to revoke the patent.

A patentee under Section 94 of the act has right to raise objections as he may be left
wondering after grant of licence under Section 84 that would the licence be for the whole
remainder term of patent. Under Section 94 a patentee may request for termination of
compulsory licence provided that he establishes opposite ground for which the licence was
granted meaning there by he has to establish that he has fulfilled the previous lacuna that led
to the applicant to request for the licence and that the said ground won’t recur. He has to
prove that the conditions that led to grant of such licence no longer prevail (& have actually
improved) and he has to submit an application/request opposing the compulsory licence
requesting the termination of compulsory licence.

Controller would take in account the compulsory licence holder, other licence holder and the
patentee in this regard for giving out a decision with regards to improvement (or not) of the
conditions and accordingly the compulsory licence would be terminated or be sustained.

3. GOVERNMENT’S POWER TO USE PATENTED

INVENTION FOR SOVEREIGN PURPOSES

2.1. Section 100-

This section allows the government or any person authorized by it to use the patented
invention for government purposes. This makes the right provided under section 48 of the act
conditional in nature. This section is different from section 47 as this section gives a wider
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scope to the word “government” than in section 47 of the act. This was further elaborated by
the Bombay high court in the case of Garware Wall Ropes Ltd v A. I. Chopra and Konkan
Railway Corp. Ltd6. The Bombay High Court said that even third parties can use the
patented invention under section 100(1) after paying a royalty to the patentee under section
100(3).

It was concluded that section 47 doesn’t require the government to pay any royalties to the
patentee. Whereas royalties must be paid under section 100. In the case of Chemutra
Corporation v Union of India and ors.,7 the Delhi High court opined that the Ministry of
Railways qualified as Government under section 47 and therefore could freely use the
patented invention without the risk of infringement.

2.2. Section 102-

This section deals with acquisition of inventions and patents by the Central government. It
has 3 sub-clauses.

The first sub clause says that if the central government is satisfied and feels that its necessary
to acquire a particular patented invention, it must publish in the official gazette about it and
the patent and all right in respect of the invention will get transferred to the government by
force of this section.

The second subclause says that the notice of the acquisition should be given to the applicant
or anyone in appearing in the register who might have interest in the same.

The central government under sub-clause 3 of this section should pay the patentee or the
people interested, compensation as agreed upon between the parties. 8

2.3. Section 103 –

6
Garware Wall Ropes Ltd v A. I. Chopra and Konkan Railway Corp. Ltd, 2009 (111) Bom LR 479
7
Chemutra Corporation v Union of India and ors, CS (OS) No. 930 of 2009
8
JeevanJyoti Health & Welfare Society v. Union of India and Ors. (2008) ILR 1Delhi 1088

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According to sec 102, a patent might be taken by the central government if it deems fit. Sec
103 refers to the disputes to the High court against the government acquiring the patent.
There are 6 subsections –

1) Talks about the fact that if there is any dispute with the central government or any
agent of the government who has taken the patent, the patentee can approach the High
court for its renumeration and the High court will direct the parties in case of such a
dispute.
2) If the central government is part of the proceedings then it can –
a) The government can, with accordance to sec 64 may file a counter claim petition
for the revocation of the patentee’s claim
b) The government can put an issue regarding the validity of the petition with a
petition. This does not include revocation.
3) If there has been a trial and a test of the invention which has been recorded under sec
100 and if the government deems it important to public interest, then the central
government may confidentially disclose the report to the opposing lawyer or any
independent party mutually agreed upon by the two parties.
4) This section is relevant with respect to the usage of the invention by the government.
The High Court shall have regard to any benefit or entitlement that the patentee has
received from the government, or is yet to receive either directly or indirectly. The
renumeration which the patentee or a title holder may receive from the government is
of consideration to the High Court
5) At any time, the High Court may assign the case to an official referee such as an
arbitrator, commissioner or an officer. Therefore, if that is done, any reference to the
High Court shall be construed according to the assignment of the case.
6) This sub section deals with a scenario where the invention was made by the patentee
when he was in employment of the central government or in any office under the
ambit of the central government. If the invention was made in relation to normal
course of events with respect to the duties of the central government, then any
disputes in accordance with subsection (1) may be disposed off towards the central
government. However, before doing that the central government must give a chance
to the patentee or those deriving some benefit to be heard.

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The case of Genentech and Ors .vs . Drugs Controller General of India and Ors 9 talks about
this section and gives the explanation and the rationale behind this section

2.4. Section 104A

Sec 104A talks about the burden of roof in the cases of infringement. It levies the pre-
requisite burden of proof upon the parties in case of a suit resulting because of the
infringement.

According to subsection 1 –

In case where the subject matter of the patent is a process for obtaining the product and it is
similar to the patented process, the courts can ask the defendant to show that the process used
by him is different from the used in the patent. This can be done if –

a) If the subject matter of the patent obtains a new product

b) That there is a reasonable chance that the identical product is made by the process and
the patentee has been unable to determine the process used.
It also needs to be proved by the patentee that the product is identical to the product
derived from the patented process.

There are various acts which would constitute an act of infringement if done without the
consent of the patentee such as – making, using, offering for sale, using of the patented
process, offering to sell any product derived from the patented process.

The courts in accordance with TRIPS have reversed the burden of proof on the defendants.
There are two categories –

1) Literal infringement – each and every element cited in the claim has an identical
correspondence in the allegedly infringing device. This would mean that there is a
direct infringement of the patent.
2) Doctrine of Equivalents – it is a legal rule which allows the court to uphold the
allegations regarding the infringement if there is a substantial infringement or if the
part infringed substantially has the same work.

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Genentech and Ors.v. Respondent: Drugs Controller General of India and Ors. MANU/ DE/ 0670/ 2020

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However, this right isn’t without restrains. The patentee can only claim the doctrine of
equivalents till the time – the doctrine of prosecution of history estoppel and prior art is
applicable

The judgement of the Delhi high court in the recent case of Shogun Organics Ltd. v. Gaur
HariGuchhait and Ors.deals with the same10

2.5. Section 107A

The sec talks about what acts would not be construed as an infringement. The sec talks about:

Any act involving making, constructing a patented innovation which is reasonably related to
the development and submission and of information required under any law that is in force in
India, that regulates manufacture or construction.

Sec 107 talks about the defences in suits of infringement and hence all grounds given under
sec 64 shall be held as defences for grounds of revoking a patent.

Similarly using or importation of any machine or any other apparatus or importing for the
usage of distribution of a medicine or drug shall be held as a defence in a suit of infringement
if they are in accordance with sec 47.

Hence there will be no infringement if it has been used for developmental processes.
Furthermore, export of international pharmaceuticals shall be held valid global agreement on
TRIPS and Article 19(1)(g).

It was also held that even if the patented products were sold outside India, it would still fall in
the scope of sec 107A as it will still lead to distribution of medicine and further development.
With respect to the Burden of Proof, the curt has held that the Burden of proof must be
shifted to the patentee instead of the defendant so that the patentee must prove that the
infringement shall not lead to any development.

Sec 107 is also called as the Bolar exemption having originated from the Hatch-Waxman Act.
The act provided for defences of patent infringement on the grounds that it is reasonably

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Shogun Organics Ltd. v. Gaur Hari Guchhait and Ors.2020IAD(Delhi)413
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related to development and is dealt with in the case of Bayer Corporation and Ors. v. Union
of India and Ors.11

2.6. Section 158

This section talks about the High court’s power to make rules – the court can make rules
regarding the conduct and procedure with this respect to the Act. One of the landmark cases
include the supreme court judgement in J. Mitra and Co. Pvt. Ltd. v. Asst. Controller of
Patents and Desig. And Ors.12 The ratio decidendi of the case was that “An Act cannot be
said to commence or to be in force unless it is brought into operation by legislative enactment
or by the exercise of authority by a delegate empowered to bring it into operation."

11
Bayer Corporation and Ors. vs. Union of India and Ors. 2019(78)PTC521(Del)

12
J. Mitra and Co. Pvt. Ltd. vs. Asst. Controller of Patents and Desig. and Ors, AIR 2009 SC 405
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