MODULE 1

Patent is a legal document granted by the government giving an inventor the exclusive
right to make, use, and sell an invention for a specified number of years. They are also
available for significant improvements on previously invented items. Patent law centers
round the concept of novelty and inventive step (or lack of obviousness). In India, the law
of patents is governed by the Patent Act of 1970.

The Patent rights can be enforced only after securing the patent. Patent restricts others to
make, use, offer for sale, sale or import the patented product. Patent right locks the
functionality aspect and restricts the rights to the patent owner. Patent is a time limited
monopoly which is granted from the date of first filing for twenty years. Patent rights are
territorial in nature and governed by domestic patent laws. It means that a patent holder
in India has rights only in the territories of India. For securing the same rights, one needs to
redo the patent rights securing process in each country of the business interest from the
prospective of commercialization of the invention.

The object of granting patents is to encourage research and development and innovation.
The Supreme Court in the case of Bishwanath Prasad Radhey Shyam v Hindustan Metal
Industries where it was enumerated that the subject of patent law is to encourage
scientific, research, new technology and industrial progress. Granting of exclusive
privileges to own, use or sell the method or the product patented for limited period,
stimulates new inventions of commercial utility.

Evolution of Patents

The first patent law was passed in Venice in 1474. It protected the interests of inventors by
assuring them the right to their inventions and prohibiting unauthorized copying. In 1624,
the Statute of Monopolies was enacted in England. This allowed patents to be granted for a
limited period to the true and first inventor. The increasing number of national patent laws
led in 1833 to the conclusion of the Paris Convention, providing a guarantee of equal
treatment for patent applicants in all its member states. Most of the nations have signed
several treaties dealing with patent issues during the 20 th century. For example, more than
120 countries have signed the 1994 TRIPS agreement. This treaty strengthened legal
protection for patents worldwide. Despite the early development of patent law in the USA,
there was no central administrative office to determine the validity of US patents until the
PTO was established in 1836. Since then the PTO has examined all applications for patents
to decide whether they meet the requirements of the patent laws. The Patent Act, 1970
came into force in 1972 replacing Indian Patents and Designs Act, 1911. The Patents Act,
1970 has far more reaching effect in some areas such as food, drug and medicines where all
the patents granted under this category and deemed to be endorsed with the words
License of Right. India has become a member of the Paris convention and by virtue of this,
the Head Office of Patent Office & its branch offices have become receiving offices for the
purpose of international applications filed under PCT.

Paris Convention and Patents

IPRs have traditionally been governed by several conventions, most prominently the Paris
Convention for the protection of Patents, Trademarks and Industrial Designs. The Paris
Convention for the Protection of Industrial Property is an early international intellectual
property treaty. The Convention is now adhered to by the majority of the world which have
any form of patent protection and since the convention also deals with trademarks and
designs even by some countries which have no patents protection.

Before the existence of any international convention in the field of industrial property, it
was difficult to obtain protection for intellectual property in various countries of the world
because of the diversity of their laws. Moreover an inventor had to file patent applications
approximately at the same time in all countries where the protection is desired, in order to
avoid publication in one country destroying the novelty of an invention in the other
countries.

As international trade and cultural exchanges grew in the eighteenth and nineteenth
centuries, it became evident that protecting only national creations and inventions would
lead to unjust results. To avoid this, countries started entering in to bilateral agreements
mutually granting national treatment to the nationals of partner countries. This “bilateral
phase” can be considered the first phase in the development of international intellectual
property norms. With time these agreements started to take a relatively standard form, but
their proliferation created a gigantic spider web of treaties. While bilateral treaties granted
mutual patent protection they did not create uniformity in patent law across countries. If
an inventor wished to file a patent application in different countries, he was usually with
radically different procedural and substantive requirements to obtain patent protection.

The Paris Convention is based on three main principles, national Treatment, right of
priority and independence of patents. The principles of national treatment seeks to
ensure in each country provides the same protection to its citizens and citizens from other
countries, which are parties to the Paris Union. The same national treatment most be
granted to nationals of countries, which are not party to the Paris Convention if they are
domiciled in a member country of if they have a “real and effective” industrial and
commercial establishment in such a country. The national treatment rule guarantees not
only that foreigners will be protected, but also they will not the discriminated against in
any way, without this, it would frequently very difficult and some times even impossible to
obtain adequate protection in foreign country for inventions. Another important provision
of the convention is the right of priority. The right of priority means that, on the basis of
regular application for and industrial property right field by a given applicant in one of the
member countries, the same applicant may within a specified period of time20 apply for
the protection in all other member countries. These later applications will then be regarded
as if they had been filed on the same day as the earliest application.21 They also enjoy a
priority status with respect to all acts accomplished after that date which would normally
be opt to destroy the rights of the applicant or the patentability of his invention.

Patent Co-operation Treaty (PCT)

The Patent Co-operation Treaty is an agreement for international co-operation in the field
of patents. It is, however, largely a treaty for rationalization and co-operation with regard
to filing, searching and examination of patent applications. The principle objective of PCT is
to simplify and to render more effective and more economical patent system. The PCT does
not grant “international patents” the task of and responsibility for granting patents remain
exclusively in the hands of patent offices of the respective countries where patent is sought.
The PCT establishes an international system which enables the filing with a single patent
office of a single application in one language having effect in each of the countries party to
the PCT which the applicant names in his application.

Advantages of PCT

The principal objective of the PCT is to facilitate rationalization and cooperation with
regard to the filing, searching and examination of patent applications which saves both
time and money for the applicant and national industrial property offices, where patent is
sought for the same invention in different member countries.

The saving of effort for the applicant consists in allowing the filing of a single international
application in each of the countries in which protection is sought. The applicant has to
comply only with a single set of formalities, which provides a cost saving, particularly as
drawings will not have to be redrawn for each designed country. At the end of the
international phase, the applicant will be in a position to know whether it is worth
pursuing applications through the national phase. The saving of effort for the national
offices is in the area of examination where they can take advantage of international search
reports and preliminary examination reports. This is of particular importance in the
developing countries, where otherwise the establishment and maintenance of search
facilities and the requirement of examiners, would otherwise involve a signification
commitment of resources. The high standard of international search and preliminary
examination reports results in stronger patents. Another objective of the PCT is to facilitate
and accelerate access by the public to the technical information contained in patent
documents. The PCT provides both for the publication of the international search report
and of an abstract of the application.

TRIPS Provisions relating to Patents

TRIPs agreement incorporates substantive provisions from the Paris Convention. As a

result it also adopts the same basic criteria for patentability, namely novelty, non-
obviousness and industrial applicability. The TRIPs agreement also requires patentability
in all fields of technology for processes and products.

General principles concerning the scope of patentability establish the widest possible
scope. Some optional exceptions have, however, been introduced, allowing member states
to take measures at the national level to retract patentability in certain specific fields. On
specific, exclusion concerns the patentability to exclude diagnostic, therapeutic and
surgical methods for the treatment of humans and animals. These exceptions are qualified
by two conditions. Firstly, member states can only apply such restrictions to patentability
where it is established that the commercial exploitation of the invention must be
prohibited. Secondly, the exclusion from patentability must not be based solely on a
general provision prohibiting the exploitation of the product.

The TRIPs agreement also includes number of provisions concerning the rights
conferred to patent holders. The patent holder has exclusive rights to prevent third parties
from making, using, offering for sale, selling or importing for these purposes the patented
product without the consent of owner. Where the patent is for a process, the rights granted
extend to the use of the process and also to the use, sale and import of products that are
directly obtained through the protected process. These exclusive rights, which amount to
virtual monopoly, are granted for a period of 20 years minimum.

Article 30 of the TRIPs provides that; limited exception to the exclusive rights conferred by
a
patent provides that such exceptions do not unreasonably conflict with a normal
exploitation of the patent and do not unreasonably prejudice the legitimate interest of the
patent owner, taking account of the legitimate interests of third parties.

There exists another set measure that can be taken to limit the rights of patent holders.
This is what TRIPs agreement calls use without authorization otherwise known as
compulsory licensing. Compulsory licensing was introduced as an instrument allowing
governments to sanction a patent holder who does not respect certain conditions of the
patent without going to the extreme step of revoking the patent.
One of the interesting features of the compulsory licensing regime under TRIPs is that
there is no limitation of the purpose for which compulsory licenses can be granted. This can
be read as gain for developing countries since the United States wanted to restrict the
grounds for compulsory licenses. Further states are also free to determine what constitutes
a national emergency.

Patent Law Treaty

It was adopted by WIPO in the year 2000 and it came into force in 2005. The PLT is a
product of several years of multilateral negotiations on harmonizing global patent systems.
The PLT harmonizes certain patent application procedures in order to reduce or eliminate
formalities and the potential for loss of rights. The PLT doesn’t harmonize substantive
patent law, that is, the laws of each country that set forth the conditions that must be met in
order to receive a patent for an invention in that country.
The PLT will make it easier for patent applicants and patent owners to obtain and maintain
patents throughout the world by simplifying and, to a large degree, merging national and
international formal requirements associated with patent applications and patents.

The PLT:
● simplifies and minimizes patent application requirements to obtain a filing date;
● imposes a limit on the formal requirements that Contracting Parties may impose;
● eases representation requirements for formal matters;
● provides a basis for the electronic filing of applications;
● provides relief with respect to time limits that may be imposed by the Office of a
Contracting Party and reinstatement of rights where an applicant or owner has failed to
comply with a time limit and that failure has the direct consequence of causing a loss of
rights; and
 ● provides for correction or addition of priority claims and restoration of priority rights.

MODULE 2

Novelty Requirement – In order for an invention to be patentable, the invention must be

considered to be new or novel. The novelty requirement states that an invention cannot be
patented if certain public disclosures of the invention have been made. The most important
rule however that is an invention will not normally be patentable if:
● the invention was known to public before the applicant filed for patent protection;
● the invention was described in a printed publication before the applicant filed for patent
protection; or
● the invention was described in a published patent application or issued patent that was
filed before the applicant filed for patent protection.

In order to prove that the patented invention consists of novelty it is utmost necessary to
prove that it does not fall under the "state of the art". The Indian Patent Act however, does
not define "state of the art" but as illustrated from various case laws state of the art means
if the prior inventor's publication contains a clear description of, or clear instructions to do
or make, something that would infringe the patentee's claim if carried out after the grant of
the patentee's patent, the patentee's claim will have been shown to lack the necessary
novelty, that is to say, it will have been anticipated. In simple layman terms the invention
should not be copied from anything earlier known to the public, it should be genuine which
would give a clear idea about the invention. There should be no prior use of the invention
or mere discovery of the known invention.

Inventive Step Requirement

This requirement is the most subjective and complex of all patentability requirements.
Under the Indian Patents Act, the assessment of inventive step includes two aspects,
technical advance or economic significance; and non-obviousness. Section 2(ja) of the
Patents Act defines inventive step as a means of future of an invention that involves
technical advance as compared to the existing knowledge or having economic significance
or both and that makes the invention not obvious to a person skilled in the art.
To satisfy the requirement, an invention has to:
1. Have technical advance over existing knowledge; or
2. Have economic significance; and
3. Must not be obvious to a person skilled in the art.
All prior art references constitute the knowledge for assessing technical advance as well as
non-obviousness. Prior art references may be selected, combined and integrated for
making inventive step determination. Obviousness is seen through the eyes of a person
with ordinary skill in the art to which the invention belongs. Once the person with ordinary
skill with respect to an invention is determined, the prior art references available to the
said person on the priority date of the invention are identified and combined. Based on the
prior art references on hand, if the person with ordinary skill would have found the
invention obvious on the priority date, the invention is considered as obvious and will not
meet the inventive step requirement.

Industrial Applicability Requirement

Industrial applicability requirement checks if an invention is capable of being made or used

in an industry (Section 2(1) (ac)). If a product can be manufactured repeatedly and has at
least one use in an industry, it will be considered as industrially applicable. A process must
be capable of being used in an industry to satisfy this requirement. Uncertain, vague,
futuristic or non-specific use is not considered as valid use. The same is the case with
insubstantial or non-credible use of a product or process.

In a case between Cipla and Roche, the Delhi High Court reviewed some Indian and foreign
cases relating to the utility or industrial applicability requirement and observed that an
invention must be commercially viable. It must have a commercial use, and commercial
success need not be proved. At a basic level, the invention must have a practical use and
has to be useful for the purpose claimed in the patent specification. Nothing more will be
required to prove utility of an invention for patentability.
In another case between MSD and Glenmark, the Delhi High Court applied principles for
industrial applicability laid down by the UK Court of Appeals to arrive at the conclusion
that Sitagliptin, a pharmaceutical compound, is industrially applicable. The principles cited
by the Court are as follows:

” i) The patent must disclose “a practical application” and “some profitable use” for the
claimed substance, so that the ensuing monopoly “can be expected [to lead to] some …
commercial benefit”;

ii) A “concrete benefit”, namely the invention’s “use … in industrial practice” must be
“derivable directly from the description”, coupled with common general knowledge;

iii) A merely “speculative” use will not suffice, so “a vague and speculative indication of
possible objectives that might or might not be achievable” will not do;

iv) The patent and common general knowledge must enable the skilled person “to
reproduce” or “exploit” the claimed invention without “undue burden”, or having to carry
out “a research programme”; …”

By applying the aforestated principles, the Court concluded that Sitagliptin is industrially
applicable even if it cannot be put to practical use due to an ineffective carrier.

Patentable and Non patentable subject matter

Many countries having established Patent laws denied the natural laws as patentable
subject matter. In Indian Patent laws, sub clause (a) of section 3 clearly states that the
invention which claims anything obviously contrary to well established natural laws is not
patentable. There are some products and processes which are not patentable in India. They
are classified into two categories in the patent act.
a) Those which are not inventions (section 3) – An invention which is frivolous or which
anything obvious contrary to well established natural laws. In the case of Indian Vaccum
 Brake C. Ltd vs Laurd, it was held that merely making in one piece, articles made in two
or more pieces is frivolous. Mere usefulness is not sufficient.
b) Inventions relating to atomic energy (section 4) – No patent shall be granted in respect of
an invention relating to atomic energy falling within subsection (1) of section 20 of the
Atomic Energy Act, 1962. No patent shall be granted for the invention which in the
opinion of the Central Government is useful for or related to the production, control, use
or disposal of atomic energy or prospecting mining extractions, productions, physical and
chemical treatment fabrications, enrichment or use of any prescribed substance or
radioactive substance or the insuring of safety in atomic energy operation.

Knowledge/Skill standards of a Person skilled in Art (PSITA)

Whenever there is a failure to find some person in real life who can objectively assess the
facts of a given situation, law does not hesitate to create and define fictitious persons.
Interestingly, one realizes that the sole purpose behind creation of these legal fictitious
characters was to actually get the correct level of rational and unbiased intellect for an
accurate assessment of the case at hand. Likewise, creation of such a hypothetical person as
a legal requirement under Intellectual Property Law, was equally important and interesting
where such a person was created to get the correct level of intellect either to create or test
infringement of such intellectual property. Some examples are an ‘Average Consumer’
under Trademark Law, an ‘Informed User’ for Design Law and a ‘Person Skilled in the Art’
(PSITA) for Patent Law.

The role of PSITA assumes great relevance while dealing with the novelty, nonobviousness
and disclosure criterions. Novelty requires that the invention must be totally new, meaning
thereby its absence from prior art.Furthermore, anticipation requires an ‘enabling
disclosure’ such that the prior art enables a PSITA to put the invention into effect. So, it’s
none other than PSITA who would analyze the prior art before reaching the result of
whether the prior art disclosure is enough to destroy novelty of the invention.Also, the
disclosure of the invention in the application should be such as to allow PSITA to carry out
the invention. When the question of interpretation of claims comes before a court of law,
it’s this PSITA who uses his common knowledge to perform the task. It is through the eyes
of PSITA (in light of his common general knowledge) that the claims are read and
interpreted, and the correct scope and extent of monopoly or patent right is determined.
PSITA has always remained in the limelight in the judicial encounter on patent law. PSITA
standards ensure the achievement of a correct bar or threshold for patentability. Most
legislatures do not clearly define PSITA or provide for an exhaustive guide to determine
who he could be. But, judicial pronouncements do leave clues here and there to lead us to
who PSITA is or could be. According to TRIPS, it is only while analyzing disclosure of the
invention in the application that a PSITA role comes into play. This is, however, unlike what
the domestic laws of most of the countries generally lay down. PSITA also plays the role of
an analyst of prior art during non-obviousness examination along with analyzing
disclosures in applications.
The PCT requires PSITA for disclosure as well as non-obviousness examination, and TRIPS
refers to him only in relation to disclosure in an application. But the problem is still the
same, even the PCT did not further elaborate upon PSITA skill standards.

Person having ordinary skill in the art (PHOSITA)

A patent cannot issue on an invention that would have been obvious to a ‘person having
ordinary skill in the art’ (PHOSITA). It is a central concept throughout the lifetime of a
patent; it not only helps to determine whether a patent can issue but also defines the scope
of claims during the patent term and impacts the infringement analysis. This fictional
person is considered to have the normal skills & knowledge in the field of patents, without
being a genius. He or she mainly serves as a reference for determining, or at least
evaluating, whether an invention is non-obvious or not (in U.S. patent law), or involves an
inventive step or not (in European patent laws). If it would have been obvious for this
fictional person to come up with the invention while starting from the prior art, then the
particular invention is considered not patentable. The PHOSITA also possesses the level of
creativity typical of persons in the relevant art and of the relevant skill
level, a presumption intended to prevent common sense inventions from slipping through
the patentability screen due to overly technical notions of what constitutes relevant prior
art. The PHOSITA standard is thus a useful fiction that serves as a doctrinal lens through
which the court may decide whether an invention should or should not be patentable.

In the case of KSR v Teleflex 2007, the Supreme Court defined the capabilities of PHOSITA
as "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
Although the Court's opinion acknowledged other Federal Circuit cases that described a
PHOSITA as having "common sense" and who could find motivation "implicitly in the prior
art," Kennedy emphasized that his opinion was directed at correcting the "errors of law
made by the Court of Appeals in this case" and does not necessarily overturn all other
Federal Circuit precedent.

One critical dimension of the PHOSITA’s perspective is the activity in which PHOSITA is
presumed to be ordinarily skilled has remained largely unexamined despite being
fundamentally important to patent law’s animating purposes. This aspect of the PHOSITA’s
art involves more than a mere inquiry as to field or skill level. Traditionally, the PHOSITA
has been presumed to
be skilled, within a given field, at repetitive processes that produce expected results.

The non-obviousness requirement prevents the patenting of slight variations of known

inventions. As with the novelty requirement, the non-obviousness requirement is intended
to prevent the withdrawal of inventions from the public domain, since those inventions
that are literally novel but which would have been obvious to the PHOSITA are already
within reach of the public. Due to its critical role as a gatekeeper of unpatentable
inventions, the non-obviousness requirement has been dubbed the “ultimate condition of
patentability,” and perhaps no concept in patent law has inspired more vigorous discussion
and debate over so long a period of time.
The concept of the PHOSITA standard can therefore be viewed as a collar on the
obviousness standard that both: (1) prevents the patentability of trivial inventions and (2)
preserves the patentability of meritorious ones.
Product and Process Patent

A product patent protects a product. It offers high protection to the original inventor to
reduce the competition for the same product. Whereas, a process patent protects the
process through which one manufactures the product and not the product. It reduces the
element of monopoly in the market. As India is a part of the TRIPS agreement, the
agreement requires all its members to shift their patent regime from process to product
patent.

Product Patent – Under this regime, the patent is granted to the original inventor of the
product. The characteristic features of a product patent are:
a) The grant of a product patent implies that no other person other than the inventor can
manufacture the same product using the same process or any other process.
b) Product patent provides a ‘true monopoly’ right to the inventor.
c) Product patents are considered to be a higher level of protection compared to process
patents.

Process Patent – It is granted only to a particular process and not to the end product that is
a result of such a process.
● The protection is seen as a limited parent. This is because any other manufacturer or
inventor can create the same product using a different process.
● A process patent gives a low range of protection to the inventor. Hence, the chances of
competitors reverse engineering the product are high.
● Also, there can be multiple process patents for a single product.

Utility Models

Utility model is a generic term which refers to subject-matter that hinges precariously
between that protectable under patent law and sui generis design law. The definition of
Utility Model is not specific and it varies from country to country. Since the requirements
for obtaining utility model protection are less stringent as compared to getting patents, it is
often referred to as petty patents, short-term patents, innovation patents and second-tier
patents. The purpose of utility model system is to safeguard innovations speedily and
inexpensively. In India, such protection is not granted. Utility model protection, if granted,
will be beneficial in developing countries like India, taking the pace with which startups
and SMEs are emerging and establishing into consideration. Therefore it will be very
encouraging for SMEs and individual innovators. Adoption of utility model protection
system is important not only to promote further the development of intellectual property
rights creation and protection but also to stimulate more research activities and
innovations by SMEs.
Subject of Differentiation Utility Patent Utility Model Patent
Requirements of obtaining patent High degree of worldwide novelty, Novelty, low degree of non-
industrial application, non obviousness or inventiveness
obviousness
Examination of application Strictly done Not examined prior to
registration. Only procedural and
no substantive examination
Duration of registration Very High Less
Cost Involved Very expensive Inexpensive
Term of protection 20 years 6-15 years

Advantages of granting utility model protection

The practical and economic benefits of granting utility model protection in developing
countries are as follows:

● It will promote local industrial growth by offering rapid and inexpensive intellectual
property protection in certain specific circumstances.
● It would provide protection against massive substantial copying and imitation.
● It will encourage local innovation so that local industries produce increase their
efficiency to produce more goods.
● It can further protect valuable inventions which are not protected under the standard
patent law or other intellectual property laws.
● This type of protection prevents free-riding of inventions by other predatory firms which
expend no R&D costs or investment.
 ● Utility model law can provide revenue to governments in the form of registration, search,
publication, etc. fees.
● Registered utility model rights can act as a source of valuable information via published
specifications.

MODULE 3: PATENT PROSECUTION

Application for Patent

The eligibility to file a patent application in India is that the person should be the true and
first inventor of the inventions or a legal representative or assignee of the true and first
inventor. Section 6 of the Act provides for eligibility criteria for filing Patent Application in
India.

What is Proof of Right?

Proof of Right is an important requirement for filing a patent application in India. In order
to file the patent application in India, the requirement mentioned under Section 7 of the Act
which is to submit the “Proof of Right” document should be duly met by the assignee of the
true and first inventor. Also, the declaration mentioning the name of the inventor claiming
to be the true and first inventor of the invention should be submitted. Both Sections 6 and 7
of Patents Act, 1970 states that the person entitled to apply for a patent shall be considered
the true and first inventor of the invention.

First filing of the Patent Application

If two genuine inventors working independently and totally unaware of each other’s work
and invent on the same concept, involving same technical advancements, proceeds with
filing a patent application in India, where afterwards one of the inventors chooses to file a
provisional patent application in India after the scope of invention is ascertainable and the
other chooses to wait for some detailed results and files a patent application for a later date
with complete specification and claims, then in such a scenario both the inventors are true
and first inventor, nevertheless, one of them would be considered as the “first filer”.
The “first filer” would get an earlier priority over the subsequent filer. As stated in Section
13 of the Patents Act, 1970, the patent application filed first on the same invention concept
gets the priority over the application filed thereafter. In other words, when two inventors
file their respective patent applications on the same inventive concept, as per Section 13 of
the Act, the application filed first will get the priority and the subsequently filed application
will be considered as anticipated even if the first filed application is not published by the
Patent Office at the time of filing of the subsequent application.

Publication & Examination

A patent publication is a published utility patent application. A patent publication is not a

patent. While a published patent application may eventually issue into a patent, the patent
publication consists of only the application itself, namely, the drawings and written
specification. The patent publication does not provide information about events
subsequent to the publication date, e.g., whether the application was approved.

Difference between a Patent and Patent Publication

A published patent application serves a few purposes. First, patent publications serve as
prior art against later-filed patent applications. This prior art effect applies worldwide.
Even if the published application never gets allowed, the publication still serves as prior art
against subsequently filed patent applications. It would be futile to argue that a published
application should not count as prior art because it was never granted. It is the disclosure
of the published application, and not the claims, that serves as prior art.

Second, published patent applications are accessible to the public as of the publication date.
Third parties can monitor the progress of a published utility application, including Office
Actions and the applicant’s responses.

Another difference between published applications and issued patents is the potential for
infringement. You cannot infringe a pending application, but you can certainly infringe an
issued patent. If a published application’s claims raise concerns about possible
infringement, then it would be prudent to investigate the prosecution history to track the
progress of application. Claim amendments made during the prosecution of the utility
application may significantly change the scope of claims which would then affect the risk of
future infringement. Amended claims in a published utility application may also shed light
on possible design-arounds.

Patent Examination

The normal Requests for Patent Examination can be filed within a period of 48 months
from the priority date (date of first filing of the invention, can be provisional patent or
complete patent / non-provisional patent) or date of filing of the patent application
whichever is earlier. If the patent examination request is not filed within the specified time
limit the patent application shall be treated as withdrawn by the Indian Patent Office. It is
mandatory under Indian Patent Act 1970, to file a request for patent examination as per the
prescribed timeline.

As per the Patent Act 1970, only after submission of such request a formal patent
examination process shall commence.

An express request for examination before expiry of 31 months can be made with respect
of the applications filed under Patent Cooperation Treaty (PCT) known as National Phase
applications by payment of the official fee. There is another provision of expedited
examination, in which the patent applications which requested for expedited examination
will be put in a queue separate from the patent applications for ordinary examination.
Ordinarily, within one month from the date of a request for examination, the Controller is
required to refer the application to an examiner. Further, the examiner is then required to
prepare the Examination Report within one month, but not exceeding three months from
the date of reference for such examination by the Controller. On the other hand, upon a
request for an expedited examination, the examiner will be required to give the
Examination Report within one month, but not exceeding two months from the date of
reference for examination by the Controller.

Why to file request for patent examination in India?

The Process of examination starts with filing a request for examination. Unlike publication,
this is not an automatic process. Only after receiving the Request for Examination (RFE) the
controller transfers the patent application to the patent examiner. The request for
examination has to be made within 48 months from the date of priority or filing whichever
is earlier.

The patent examiner examines the patent application, and prepares the examination report
on the basis of various patentability criteria like:

● Patentable subject matter;

● Novelty;
● Inventive Step;
● Industrial Application; and
● Specification Enablement

Other responsibilities of the patent examiner for examination of a patent application

include:

● To conduct comprehensive investigation of an application and prepare a report under

section 12;
● To conduct an inter-office search covering all four patent offices;
● To raise objections rather than comment on missing forms; and
● The examiner’s report will: Be a permanent part of the file’s note sheet and non-editable
at the Controller’s end; Include a draft summary/ gist of objections – this gist editable at
Controller’s end; Include any amendments to the complete specification

First Examination Report (FER) under the Patent Act

Once the patent application is examined, the Patent office issues an examination report to
the patent applicant which is generally known as First Examination Report (FER). The
examiner submits this to the controller. It usually contains prior arts similar to claimed
invention. Prior art here means existing documents before the date of filing, similar to
claimed invention. It need not be commercially available. It is just evidence which proves
that the claimed invention is already known
The Applicant should reply the objections (if any) and place the application in order for
grant within 12 months from the date of issue of the FER (First Examination Report). In
this case too, if the reply to the examination report is not made within prescribed time
limit, which is 12 months, the application is deemed to be abandoned.

In case, the patent application is found to be in order for grant, the patent is granted, if
there is no pre-grant opposition filed or pending by a third party.

Prior art search for anticipation by prior publications and claims

Section 13 of the Indian Patents Act (The Patents Act, 1970) specifically provides that the
examiner shall make an investigation for the purpose of ascertaining whether the invention
so far as claimed in any claim of the complete specification is claimed in any claim of any
other complete specification published on or after the date of filing of the applicant’s
complete specification, being a specification filed in pursuance of an application for a
patent made in India and dated before or claiming the priority date earlier than that date.

Simply put, where the invention as claimed in a complete specification (A) filed in India has
already been CLAIMED in the complete specification (B) BUT where (B) has been filed in
INDIA before the priority date of (A) but (B) is published on or after the filing of (A), then in
such a case the relevant claims of (B) will anticipate the claims of (A) by PRIOR CLAIM.

Prior claiming is not limited only to Examination but may be raised by ANY PERSON in a
pre-grant opposition under Section 25(1) or by a PERSON INTERESTED in a post-grant
opposition under Section 25(2) i.e.

Clause (c) of sub-Section (1) of Section 25 provides –

That the invention so far as claimed in any claim of the complete specification is claimed in
a claim of a complete specification published on or after the priority date of the applicant’s
claim and filed in pursuance of an application for a patent in India, being a claim of which
the priority date is earlier than that of the applicant’s claim.

Clause (c) of sub-Section (1) of Section 25 provides –

That the invention so far as claimed in any claim of the complete specification is claimed in
a claim of a complete specification published on or after the priority date of the claim of the
patentee and filed in pursuance of an application for a patent in India, being a claim of
which the priority date is earlier than that of the claim of the patentee.

Thus for the purpose of examination and for oppositions, it is not necessary that the claim
of the earlier complete specification which anticipates by prior claim be only that in a
granted patent in India but can even include a publication.

Only in case of seek Revocation of a Patent under Section 64 i.e. in an application for
revocation filed before the Intellectual Property Appellate Board or in a counter-claim
against a suit for infringement before a Court, does the claim of the earlier complete
specification which anticipates by prior claim have to be a valid claim in a complete
specification of a patent granted in India.

Freedom to Operate Search

A Freedom to Operate (FTO) analysis invariably begins by searching patent literature for
issued for pending patents, and obtaining a legal opinion as to whether a product, process
or service may be considered to infringe any patent(s) owned by others.

In September 2003, three pharmaceutical companies, Cambridge Antibody Technology,

Micromet AG and Enzon Pharmaceuticals, announced that they had signed a non-exclusive
cross-license agreement. In the agreement, all three parties obtained substantial "freedom
to operate" authorizing each other to use some of their respective patented technology.
This enabled them to conduct research and develop a defined number of therapeutic and
diagnostic antibody-based products.

Agreements of this kind have become common practice in certain sectors, as companies
seek to ensure that their products, processes and services do not infringe on patent rights
of others. Patent litigation can be an expensive, uncertain and risky affair and, as the saying
goes, prevention is better than cure. This article explores different strategies which
businesses can consider as a means of reducing such risks and maximizing their freedom to
operate.
Whenever a company is planning to develop and launch a new product, a major risk,
particularly in technology sectors where there is extensive patenting, is that
commercialization may be blocked by a competitor who holds a patent for a technology
incorporated within that product. This is why many companies, at an early stage, seek to
secure their “freedom to operate,” i.e. to ensure that the commercial production, marketing
and use of their new product, process or service does not infringe the IP rights of others.

Freedom to Operate Search is also known as Infringement Analysis or Clearance Search. To

check whether any product or process utilized or carried out by an entity is not infringing
on any live patent’s claim. Simply, it is used to ascertain whether there is freedom to
operate and invention in a particular jurisdiction from a legal point of view. If an FTO is
found to be negative (i.e. live patent with claims covering the invention to be operated is
located), the entity aiming to operate the invention may:

● Not proceed to operate the invention

● Invalidate or oppose the relevant patent
● Apply for a license or buy the relevant patent

Difference between Patentability Search and FTO Search

HEADING PATENTABILITY SEARCH FTO SEARCH

Scope All publications (prior art & NPL) Granted patents only (and pending
patent applications in some cases)
Cost Usually faster and not as Usually more complicated, time-
expensive consuming, and expensive

Specification: Provisional & Complete

In order to obtain a patent, an applicant must fully and particularly describe the invention
therein claimed in a complete specification. The disclosure of the invention in a complete
specification must be such that a person skilled in the art may be able to perform the
invention. This is possible only when an applicant discloses the invention fully and
particularly including the best method of performing the invention. The Specification is a
techno-legal document containing full scientific details of the invention and claims to the
patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is
mandatory on the part of an applicant to disclose fully and particularly various features
constituting the invention.

Section 9 & 10 of the Patents Act deal with the provisional and complete specification
respectively.

The Specification may be filed either as a provisional or as a complete specification. The

specification (provisional or complete) is to be submitted in Form-2 along with the
Application in Form-1 and other documents, in duplicate, along with the prescribed fee as
given in the First Schedule of the Patents Act, 1970. The requirement for an adequate
disclosure of the invention in the specification ensures that the public receives knowledge,
know-how and research in return for the exclusionary or monopolistic rights that will be
granted to the inventor/applicant in an application for patent.

The patent will be published right after 18 months from the date of filing. If the person
wants to get the patent published before 18 months, he will have to pay the statutory fee
for the publication. A requisite form can be filled or a fee can be paid for the same. The rule
of jurisdiction has to be followed and the application will be filed accordingly, as per the
jurisdiction. The second step for publication is that the request for examination shall be in
48 months. The third step is the examination and it’s not automatic unlike the publication
and the applicant will have to fill the requisite form for the publication. Anyone can file it
on behalf of the applicant. Timeline is 48 months for filing of the application from the
priority date. The patent examiner will be according to the patent orientation. The patent
examiner will check the patent database and other credentials on the three important
criteria for the patent. The examiner will check the applicability under sections 3 and 4
respectively. The examiner will check the clerical mistakes as well. The drawing sheets and
formatting guidelines are to be followed as well. The first examination report will be
created after the patent is being ensured as authentic by the examiner. A reply shall be
given within the 6 months of the first examination report by the applicant. After the reply
given for the examination, if the examiner needs further clarification for the invention, he
shall have the applicant present physically or via video conference.
The relevance or say importance of the specification can be seen in the landmark
judgement of the Supreme Court in the case of Biswanath Prasad Radhey Shyam v.
Hindustan Metal Industries, where the court had made reference to Arnold v. Bradbury,
to arrive at the principle that the proper way to construe a specification is not to read the
claims first and then see what the full description of the invention is, accordingly the
description of the invention needs to be read first, in order for the reader's mind may be
prepared for what it is, that the invention is to be claimed and also for the patentee that he
cannot claim more that he desires to patent. From the above discussed case, it is well
understood that the specification is the important aspect of an invention. When the
meaning of a term in a claim is not clear, the description will be relied upon to understand
the term in context of what is described in the specification. A complete specification in
whole is important for an invention.

Contents of Specification

Section 10 of the Patent Act, 1970, clearly defines the various contents of specification:

● Title of the patent invention – The title should give a fair indication of the art or
industry to which the invention relates. It should be brief, free from fancy expressions,
free from ambiguity and as precise and definite as possible but it need not go into the
details of the invention itself and should be normally within 15 words. It should verbally
agree with the title stated in application.
● Background of the invention – It contains references related to specific documents
which are related to the invention. The improvements needed by the invention should be
discussed in the background of the invention. Prior patent applications are identified and
written in the background section of the patent document.
● Summary of the invention/ Object of the invention – The nature of the invention and
technology domain is written in the summary of the invention. It also includes main
points of the detailed description of the process, machine, manufacture or composition of
matter. The advantages of the invention are discussed in the summary too. The summary
represents the general idea of the invention in a summarized form. The problems which
 existed previously and were identified in the background of the invention are pointed out
in the summary with their solutions.
● Explanation if any of the patent drawings – A number of figures with numeral
labelling are described and specified in patent drawings. These descriptions and
specifications point out the patent claims of the invention. The invention is described
visually with the help of patent drawings. Drawings are made using structures – chemical
or mechanical and charts and graphs depending upon the technology. While submitting
the drawing sheet, at the right and left top corners of the sheet shall include name of an
applicant and total number of drawing. Whereas, every drawing sheet ends with a
signature either of an applicant or the agent authorizes by the applicant at the right
bottom corner.
● Description of the invention – The description of an invention is required to be
furnished in sufficient detail so that a complete picture of the invention can be obtained
easily. Further, the nature of improvements or modifications effected with respect to the
prior art should be clearly and sufficiently described. The details of invention described
here should be sufficient for a person skilled in the art to perform the invention by
developing necessary technical know-how by himself. It can include examples / drawings
or both for clearly describing and ascertaining the nature of invention. Sufficient number
of examples must be included in the description especially related to the chemical
inventions.
● Patent claims – The most important part of the patent applications are patent claims. The
subject matter of the invention which distinguishes the invention from what is old is
written in the claims. Patentability of an invention is judged by the patent claims as it
defines the scope of the invention. The major function of the patent claim or independent
patent claims is to clearly define the scope of protection granted. The patent claims must
be supported by the invention disclosed in the descriptive part of the patent drafting. The
patent claims should be drafted from a new page and each patent claim should be written
in a new sentence. A reference numeral is followed to mention the patent claim and to
illustrate the patent drawings. However, the patent claims of a patent specification must
relate to the same invention.
 ● Patent abstract of the disclosure – Every complete specification shall be accompanied
by an abstract to provide technical information on the invention. The abstract shall
commence with the title of the invention. The abstract shall be so drafted that it
constitutes an efficient instrument for the purposes of searching in the particular technical
field, in particular by making it possible to assess whether there is a need to consult the
specification itself. The abstract shall contain a concise summary of the matter contained
in the specification. The summary shall indicate clearly the technical field to which the
invention belongs, technical problem to which the invention relates and the solution to
the problem through the invention and principal use or uses of the invention. Where
necessary, the abstract shall contain the chemical formula, which characterizes the
invention.
● Sequence listing, if any

Objection & Opposition: Pre-grant and Post-grant opposition

A patent objection is not a rejection of the invention, but rather a denial based on
technicalities of your application. Objections can be the result of filling out the forms
incorrectly, labelling drawings incorrectly, not numbering paragraphs or including
headlines, or any other number of application errors.

Opposition

Patent Application is published after 18 months of filing. India requires a request of

examination to be filed within 48 months of the priority date for the patent application to
be taken up for examination.

There are two kinds of opposition, viz. pre-grant opposition and post-grant opposition
which are filed at the patent office. Rectification of a patent is filed either before the civil
court or before the Intellectual Property Appellate Board.

Pre-grant Opposition

After publication of the patent application, it is open for pre-grant opposition. A pre-grant
opposition can be filed any time till the grant of the patent. It can be filed by any person
under Section 25 (1) of the Patents Act on the grounds stated in this section along with
evidence.

The Patent office will notify the patent applicant about the pre-grant opposition. The
applicant can file a response in support of the patent application. The pre-grant opposition
is taken up for hearing and a detailed order passed by the Controller of Patents.

Post-grant Opposition

Another opposition is a post grant opposition which can be filed anytime from the date of
grant until the expiry of one year of grant. Unlike pre-grant opposition, a post-grant
opposition can be filed only by an interested person. The grounds for opposition are under
Section 25 (2) of the Patents Act.

The Patent office will notify the patent applicant about the post-grant opposition. The
applicant can file a response in support of the patent application along with evidence. The
post-grant opposition is taken up for hearing and a detailed order passed by the Controller
of Patents. The proceedings before the Controller are like that of a civil court. The parties
are entitled to cross examine the deponent of the evidence affidavits; summon witnesses
amongst others. However, in practise, the statements made in the affidavits are accepted
as true unless some contraction or error is apparent.

A party is entitled to file additional evidence with the leave of the Controller of Patents. It
will have to be shown why the additional evidence was not filed at the first instance. An
order passed in post-grant opposition is appealable. On the other hand, an order passed in
pre-grant opposition is appealable only in the event of rejection of the patent application.
Rejection of a pre-grant opposition is not appealable. Whether a writ petition is
maintainable against rejection of a pre-grant opposition is to be considered.

Withdrawal and Abandonment of Application

When can an applicant withdraw his patent application?

In India, a patent application can be withdrawn in the following ways:

● A request for the withdrawal of the application can be filed within 15 months of the date
of filing or date of priority, whichever is earlier and accordingly the application will not
be published and be treated as ―withdrawn.
● An applicant can withdraw the application before the issuance of the First Examination
Report. However, on withdrawal of the application, applicant can claim a refund of up to
90% of examination fees.
● An applicant can withdraw the application any time after its filing but before the grant of
patent by making a request. There is no fee for withdrawing the application. And also
there is no refund of examination fee.

Abandonment of Application

Section 21 of the Patent Act, 1970 (the Act) provides for time for putting application in
order for grant. A patent application is deemed to be abandoned unless within the
prescribed period the applicant has complied with all the requirements as mandated by the
statute. This particular provision was called for interpretation in the writ petition
Telefonaktiebolaget LM Ericsson vs. Union of India & Ors [WP (C) 9126 of 2009] filed
by Ericsson stressing the grievance that despite replying to the objections raised in both
first and second examination reports the Patent Office thought it fit to have the application
"deemed to be abandoned" under section 21 of the Act instead of giving an order rejecting
the application under section 15 of the Act so as to enable the same to be eligible to appeal.
The present order under section 21(1) of the Act is not appealable under 117A of the Act.
The second part of the grievance was that the order of the Patent Office abandoning the
application does not deal with the detailed replies to the objections raised in the
examination report hence a request for an early hearing under section 14 of the Act was
pleaded.
Priority Date of Claim

Priority date is imperative to claims of a patent application because knowledge or

information available in the public domain before the priority date is taken into
consideration while determining whether the claim(s) are entitled to be granted or
rejected. Delay in securing the priority date may lead to addition of more information or
knowledge to the public domain, which may adversely affect possibility of a patent grant.

A complete patent application may include one or more claims, and each and every claim of
the patent application is assigned a priority date. In other words, different claims in a
patent application can have different priority date. In case a complete patent application is
claiming priority from a previously filed provisional patent application, and if a claim of the
complete patent application based on the subject matter disclosed in the provisional patent
application, then the priority date of the claim will be the filing date of the provisional
patent application.

The law in India allows an application filed as a complete patent application to be

considered as a provisional patent application, if a request is made within 12 months of
filing the above referred complete patent application. A subsequent complete patent
application that is filed by claiming priority from such a provisional patent application can
have a claim based on the subject matter disclosed in above referred provisional patent
application. In such as scenario the claim’s priority date will be the filing date of the
provisional patent application (which was filed as a complete patent application earlier).

A complete patent application may be filed by claiming priority from two or more
provisional applications. In case a claim in such a complete patent application is based on
the subject matter disclosed in one of those provisional patent applications, then the
priority date of the claim will be the filing date of the provisional patent application in
which the subject matter is disclosed.

On the other hand, if a claim in such a complete patent application is based on the subject
matter disclosed in parts in multiple provisional patent applications, then the priority date
of the claim will be the filing date of the provisional patent application that was last filed.
A complete patent application may be filed within 12 months of a previously filed
application in India, and claim priority from the same. In case a claim in such a complete
patent application is based on the subject matter of the previously filed application, then
the priority date of the claim will be the filing date of the previously filed application.

Priority date of a claim has a bearing on what can be considered as prior art to a claim in a
patent application. The points discussed above provide an overview of how priority date is
determined in different scenarios. Hence, claims should be drafted in such a way that an
earliest priority date is established, while also considering the scope of protection desired,
especially when a complete patent application claims priority from multiple patent
applications.

Patents of Addition

After arriving at an invention and obtaining patent on it, there remains a scope of
improvement or modification of such invention. The improvements or modifications may
take place as an ordinary process of improving an invention, or as a result of feedback
received from the market or from the industry. In such a scenario, where the invention is
already protected by a patent, the improvement or modification over the original patented
product or process may be protected by a “Patent of Addition” in India. It is here when the
Patent of Addition comes into picture for protecting the novel, industrial applicability and
non-inventive improvements or modifications to an already filed or granted patent
application.

An innovation which is built upon existing knowledge with the modern technological
changes is higher in competence with the existing products. Patent of Addition can be
converted into a standard patent if the improvement or modification is inventive in its own
right. This provision of Patent of Addition in India, New Zealand and Australia is in
conformity with that of continuous-in-part application under the American Patent System.

A Patent of Addition enables the applicant to apply for an improvement or modifications

made on the invention disclosed in the complete specification. The improvement must be
something more than a mere workshop improvement. The term for a Patent of Addition
shall not exceed the term of a regular patent, and shall not be granted prior to the date of
grant of a patent for the main invention. A Patent of Addition cannot be questioned on the
ground that the invention ought to have been the subject of an independent patent.

As per the Indian Patents Act, 1970, Sections 54, 55, 56 deals with the Patent of Addition,
filing and prosecution related thereto. Patent of Addition is an added advantage to the
applicant in order to secure new modification in the invention or improvement. In the
course of working of patent, new inventions or improvement or modifications in the
invention can be claimed and rights can be acquired over the same via filing of Patent of
Addition; however, the subject matter in the Patent of Addition must disclose over and
above the main application or parent patent application and not merely claim over the
same specification as of parent application. Mere claiming in Patent of Addition over main
application from different aspect does not fulfil the purpose of Section 54 of Indian Patents
Act. Henceforth, if the claims do not suitably cover the invention, the same cannot be
corrected by filing a Patent of Addition.

Secrecy Provisions for certain inventions

The Patent Act, 1970 contains many chapters and many sections under these chapters. The
Act contains chapter VII which starts from Section 35 to Section 42. This section of the
legislation deals with the provisions for the secrecy of certain inventions. Secrecy
provisions apply to any of the inventions which the authorities feel important for the
defence. The duration when the secrecy directions are applicable, the patent may not be
granted and the details of the invention are also not disclosed to the public. Section 35 of
the Patents Act, 1970: This section of the Act deals with the secrecy provisions or
directions relating to the inventions which are relevant for the defence purposes.

The Act states that any resident of India is not allowed to apply for granting of a patent for
any invention for which he/she has not got the written permission of the controller of
patents. The controller of patents needs to obtain consent from the central government
before granting such permission for an invention related to defence purpose or atomic
energy. If the permission is not received from the Central Government, the controller of
grants if he feels that the information is so relevant to them (related to defence) than he
can give directions for prohibiting or restricting the publication of information with the
respect to the invention or communication of such defence information.

Section 36 of the Patent Act 1970: Secrecy directions to be periodically reviewed

The section says that the question whether an invention, related to which the directions
have been given under Section 35, it continues to be relevant for defence purposes, then it
shall be reconsidered by the central government in every six months or it should be
reconsidered when the applicant makes the request, and the controller finds the request
reasonable and if by such reconsideration the central government feels that the publication
of the invention is no longer harmful or prejudicial to the defence of India and if the
application is filed by a foreign applicant and it is found that the invention is published
outside India, the notice shall be given to the controller to revoke the direction and
controller also revokes the direction which is given by them previously.

Section 37 deals with the consequences of Secrecy directions.

The section states that as long as any directions which are under section 35 are in force
with respect to an application:

● The controller shall not pass an order of refusing to grant the same
● No appeal shall lie from any order of the controller

Although it has been provided that application may be subject to the directions which is
proceeding to the stage of granting patent but the application and specification which is
found in order of granting the patent shall not be published and no Patent shall be granted
in respect to that application.

As per this section, a patent application under secrecy directions may not be refused by the
Controller. Although the patent application may reach the stage, the patent is neither
granted nor shall the order of the grant of a patent be published. If the application of the
grant of patent is found when the secrecy directions are in force then the central
government or any third party that has been authorised by the central government may
use the invention which is covered under Patent Application for the use or purpose of
Central Government (considering that application of patent is a granted patent). And if the
Central Government finds that the applicant of the patent has been suffered due to the
Secrecy directions and not because of the patent application then the Government pays an
applicant a suitable amount of compensation which usually depends upon:

● The novelty of the invention

● The utility of the invention
● Purpose of the invention

Also, the decision to place secrecy directions may not be appealable to the Controller or to
any Court.

Section 38: Revocation of secrecy directions and extension of time

Any direction which is given under section 35 of the Patent Act is revoked by the controller
then, notwithstanding any provision of the act which specifies the time for any step which
should be taken within that time frame, the controller may subject to such condition, if the
controller thinks fit to impose or extends to the time limit for doing anything which is
required.

True and First Inventor

Inventor has been given a special emphasis and privileges in patent law. This makes it
important for the right person to be called as inventor to file patent application. That’s why
the term True and first inventor has been used in the act. True and first inventor, under
section 2 of Indian Patents Act 1970 is a person who invents an invention for the first time
himself and is an inventor in real sense. “True and first inventor” does not include either
the first importer of an invention into India, or a person to whom an invention is first
communicated from outside India.

In V.B. Mohd Ibrahim v. Alfred Schafrank, it was held that a person, such as a financial
partner, who has not contributed any skill or technical knowledge towards the invention
cannot be said to have any capacity to invent, and hence cannot be said to be the inventor.
Rules regarding employee invention

The general rule is that, in the absence of an agreement to the contrary, an employer is
entitled to a nonexclusive license to use an invention devised by an employee while he or
she was working for the employer. In the context of patents, the foregoing rule is referred
to as the "shopright doctrine."

Although the employer is afforded a nonexclusive license to use the invention without
paying royalties to the employee, the invention actually is owned by the employee. This
employee has the right to exploit it commercially, typically by selling or licensing it to other
users. Even where the employee works on the invention on his own time, this rule usually
applies if the employer's resources are used to any significant extent.

A wholly different situation is presented, however, where the employee is engaged by the
employer to develop and work on the invention that later becomes the subject of a patent.
For example, an employee is engaged by his employer to work on a device that later
becomes the subject of the employee's patent. The employer seeks to obtain an assignment
and transfer of the patent, arguing that the employee had invented the device in question
while employed precisely to work on the device that became the subject of the patent.

A court would conclude that while the employment relationship itself does not preclude an
employee from making improvements to his employer's processes and obtaining patents
for those improvements, if an employee's job involves inventing or devising such
improvements, any resulting patents belong to the employer. Basically, the employee is
merely doing what he or she was hired to do.

Nature of Patent Rights

Patent rights are territorial in nature and governed by the domestic patent laws. It means
that a patent right holder in the India has rights only in the Indian territories. For securing
the same rights, one needs to redo the patent rights securing process in each country of the
business interest from the prospective of commercialization of the invention.
The exact nature of the right conferred must be carefully distinguished, and the key is in
the words "right to exclude" in the phrase just quoted. The patent does not grant the right
to make, use, offer for sale or sell or import the invention but only grants the exclusive
nature of the right. Any person is ordinarily free to make, use, offer for sale or sell or import
anything he/she pleases, and a grant from the government is not necessary. The patent
only grants the right to exclude others from making, using, offering for sale or selling or
importing the invention. Since the patent does not grant the right to make, use, offer for
sale, or sell, or import the invention, the patentee's own right to do so is dependent upon
the rights of others and whatever general laws might be applicable.

Chose in action

Most forms of intellectual property are ‘chose in action’, rights that can be enforced only by
legal action as opposed to possessory rights. In the case of Torkington v Magee:

“Chose in action is a known legal expression used to describe all personal rights which can
only be enforced by action, and not by taking physical possession”

Rights & Obligations of a Patentee

The Registration of Patent provides certain Rights to the Patentee, which is mandatory to
be followed by the Patentee. With the Rights also come certain restrictions or obligations
which are required to be followed by the Patentee. Hence, the Patent Act, 1970, provides
certain Rights and Obligations of Patentee that he/she is required to follow. Additionally,
the Controller of Patent also awards some Rights and Obligations of Patentee to be followed
by the Patentee in order to comply with the provisions of the Patent Act, 1970.

The rights of a patentee are as follows:

a) Right to exploit the patent – When the new invention is a product, the Patentee has the
exclusive rights to use, make, import, or sell for these purposes related to an invention in
India. On the other hand, when the invention of the inventor is a procedure or process of
 manufacturing of any article or substance, the right to exploit means the exclusive right
exercise or use the procedure or method in the territory of India.
b) Right to grant license – The Patentee of a Patent is given the right to grant license or
transfer rights or enter into some arrangement for some consideration. The assignment or
license to be valid and legitimate it is required to be in writing and should be registered
with the Controller of Patent. Unless a document of assignment of a Patent is not
registered, it is not admitted as evidence of title of the Patent, and such a rule is
applicable to the assignee, not the assignor. (As per Section 69(5) of the Patent Act,
1970)
c) Right to Surrender – By giving notice in the prescribed manner, the Patentee of a Patent
has the right to surrender a Patent at any time and at his/her own discretion. The
advertisement for such an offer of surrender is required to be done in the Journal. The
publication is done to give an opportunity to the people to oppose the offer of surrender
of the Patentee. This is done when the Patentee apprehends his/her non-performance of
the Patent in the future and upon which he/she decides to surrender the Patent.
d) Right to sue for infringement – The Patentee has the right to sue for Infringement of
Patent in District Court has the jurisdiction to try the suit.
e) Right to use and enjoy payment – The Patentee of the Patent has the exclusive right to
exercise, make, utilize, convey or offer or the patented substance or article in India or to
practice or utilize or the process or techniques associated with the invention. Such rights
can be exercised either by the Patentee himself/herself or by his/her licensees or agents.

Obligations of a Patentee as per the Patent Act, 1970

Once a patent is granted to a patentee, there are certain rights & obligations of the
patentee. The obligations are as follows:

a) Duty to Disclose – Sec 8 of the Patent Act, 1970, accomplishes the obligation to
disclose of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has
an obligation to disclose all required data related to the remote uses of comparative or
same invention documented by him/her or through him/her or through someone by
him/her at the time of applying or within 6 months of applying.
The Patentee of a Patent is required to record an announcement of all the listed
 particulars viewing the applications and, in addition to the above, an endeavor to disclose
all the points of interest of any subsequent applications that might be documented at the
future stages. Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to
provide all the data required by the Controller of Patent with regards to the relating of any
remote applications at whatever point demand is made by the Controller of Patents within
a time period of 6 months of such a demand by the Controller of Patent. The first part of
the obligation of Patentee begins when a man records an application of Patent. On the
other hand, the second part begins after a demand is made by the Controller of Patents
under the Patents Act, 1970.
b) Duty to request for examination – Not like other Intellectual Property Rights, the
Registration process of Registration of Patent does not accommodate any kind of
programmed examination of the grant of Patent application. In the procedure above
mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is
thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the
growth or development connected for Patent.
c) Duty to respond to objections – The Controller of Patent before accepting the
examination request passes it to the analyst who looks at the growth and gives a report to
the Controller of Patent known as the First Examination Report (FER). On certain cases
there may be some protests which will be brought up in the First Examination Report, it
is the right of Patentee to reply to such opposition complaints and consent to the
corresponding within a time period of a year of the issuance of the First Examination
Report (FER) falling which the application of the Patentee will be considered to be
surrendered by the Controller of Patent.
d) Duty to clear all objections – It is the obligation of the owner of the Patent to respond to
the raised objections as well as to clear and remove each one of the raised objections and,
in addition, certain oppositions raised against his/her invention. In the event that the
Controller of Patent has not fulfilled he/she, it may also require a meeting also.
Furthermore, it is the obligation of the owner of Patent to go for a consultation and clear
all the objections and, in addition, oppositions, if are raised any, against the invention of
the inventor.
 e) Duty to pay statutory fees – The Patentee has an obligation to pay all the statutory
expenses required to get a grant of a Patent in the process of Registration without failure
generally, his/her application for the grant of Patent won’t be managed. Sec 142 of the
Patent Act, 1970, accomplishes the provisions recognized with payment of charges and,
in addition, the consequences for non-payment of such prescribed fees.
After this process is imitated to and the Patentee of Patent clears every one of the
restrictions and protests raised against his/her invention, if the Controller of Patent is
fulfilled, he/she will grant a Patent to the invention and publishes it in the Journal, or
generally, the Controller rejects such a Patent.

Rights of co-owners of patents

Section 50 of the Indian Patent Act, 1970 talks about the rights of co-owners of patents –

1) Where a patent is granted to two or more persons, each of those persons shall, unless an
agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
2) Subject to the provisions contained in this section and in section 51, where two or more
persons are registered as grantee or proprietor of a patent, then, unless an agreement to
the contrary is in force, each of those persons shall be entitled, by himself or his agents,
to rights conferred by section 48 for his own benefit without accounting to the other
person or persons.
3) Subject to the provisions contained in this section and in section 51 and to any agreement
for the time being in force, where two or more persons are registered as grantee or
proprietor of a patent, then, a licence under the patent shall not be granted and share in
the patent shall not be assigned by one of such persons except with the consent of the
other person or persons.
4) Where a patented article is sold by one of two or more persons registered as grantee or
proprietor of a patent, the purchaser and any person claiming through him shall be
 entitled to deal with the article in the same manner as if the article had been sold by a sole
patentee.
5) Subject to the provisions contained in this section, the rules of law applicable to the
ownership and devolution of movable property generally shall apply in relation to
patents; and nothing contained in sub-section (1) or subsection (2) shall affect the mutual
rights or obligations of trustees or of the legal representatives of a deceased person or
their rights or obligations as such.
6) Nothing in this section shall affect the rights of the assignees of a partial interest in a
patent created before the commencement of this Act.

In India, when a patent is owned jointly by more than one owner, each co-owner has the
right to make, use, offer for sale, sell or import anything that would otherwise be a patent
infringement. However, joint owners may not, unless an appropriate direction has been
given by the controller, grant any license under the patent or assign its share in the patent
without the consent of the other co-owner or co-owners.9 In cases where one co-owner
wishes to grant a license or assign its share in the patent but has not been able to obtain
consent from the other co-owner or co-owners, it may request the Controller to issue a
direction to the other party or parties to do so. Before issuing any such direction, the
Controller must give the other parties the opportunity of a hearing to explain why such a
direction should not be made.

Module 4: Compulsory licenses, Revocation and Surrender of Patents

Abuse of Patent Rights

At times, patent owner wrongfully uses the patent surpassing its legitimate scope. Patent
misuse is the unjustified use of the acquired patent rights. Examples of patent misuse
include illegal tying of products and services to the patented invention, price fixing,
fraudulently making the customers pay royalties on items the patent of which has expired,
and the like.
The concept of patent misuse first surfaced in the case of Adams v Burke, decided by the
US Supreme Court in 1873. The court held that after the first authorized sale of a patent
product by the patentee, the product becomes the complete property of the purchaser,
rendering the patentee devoid of his monopoly rights over the product. Subsequent
purchasers acquire the same rights over the product as the seller had, and may use it in the
same way the owner could have used. This came to be known as the exhaustion doctrine.

However, in the 19th century, not many facets of patent misuse were acknowledged by the
judges. In the famous case of Henry v. A.B. Dick Co, the United States Supreme Court
upheld the validity of licensing the use of tied or other related products along with the
originally patented product. Usually known as the Inherency doctrine, this theory states
that it was the inherent right of a patent owner, in lieu of his having exclusive rights over
his product, to exercise the right to license the product on any terms and conditions he
chose.

In 1917, the United States Supreme Court overruled the A.B. Dick case in Motion Picture
Patents Co. v. Universal Film Mfg. Co. In this case the Supreme Court held that ‘the scope
of every patent is limited to the invention described in the claims. The patentee can claim
nothing beyond them.’ It condemned the licensing of materials which formed no part of the
patented invention and were merely necessary for its operation.

In Brulotte v. Thys Co. (1964), the United States Supreme Court held that a patent
holder’s attempt to collect royalties beyond the term of the patent constitutes misuse of the
patent.

An essential condition for using patent misuse defence is that it must hamper the
competition in the market.

When a company accuses a patent owner of misuse, then the allegation must fulfil 2
conditions:

● The valid patent was used as a way to change business outcomes

● The anti-competitive effects extended outside of the patent’s scope
 ● The patent misuse doctrine requires that the alleged infringer show that the patentee has
impermissibly broadened the ‘physical or temporal scope’ of the patent grant with
anticompetitive effect. Patent misuse does not affect a patent’s validity.

Compulsory Licenses

Compulsory licenses are authorizations given to a third-party by the Controller General to

make, use or sell a particular product or use a particular process which has been patented,
without the need of the permission of the patent owner. This concept is recognised at both
national as well as international levels, with express mention in both (Indian) Patent Act,
1970 and TRIPS Agreement. There are certain pre-requisite conditions, given under
sections 84-92, which need to be fulfilled if a compulsory license is to be granted in favour
of someone.

As per Section 84, any person, regardless of whether he is the holder of the license of that
Patent, can make a request to the Controller for grant of compulsory license on expiry of
three years, when any of the following conditions is fulfilled –

1. The reasonable requirements of the public with respect to the patented invention have not
been satisfied
2. The patented invention is not available to the public at a reasonably affordable price
3. The patented invention is not worked in the territory of India.

Further, compulsory licenses can also be issued suo motu by the Controller under
section 92, pursuant to a notification issued by the Central Government if there is either
a “national emergency” or “extreme urgency” or in cases of “public non-commercial
use”.

The Controller takes into account some more factors like the nature of the invention, the
capability of the applicant to use the product for public benefit and the reasonability, but
the ultimate discretion lies with him to grant the compulsory license. Even after a
compulsory license is granted to a third party, the patent owner still has rights over the
patent, including a right to be paid for copies of the products made under the compulsory
licence.
India's first ever compulsory license was granted by the Patent Office on March 9, 2012, to
Natco Pharma for the generic production of Bayer Corporation's Nexavar, a life saving
medicine used for treating Liver and Kidney Cancer. Bayers sold this drug at exorbitant
rates, with one month's worth of dosage costing around Rs 2.8 Lakh. Natco Pharma offered
to sell it around for Rs 9000, making it affordable for people belonging to every stratum. All
the 3 conditions of section 84 were fulfilled and the decision was taken for the benefit of
general public.

The provision of compulsory licensing must be used judiciously as it is an exception and

flexibility to the general rule of patent. The provision falls mid-way; neither full patent
protection is granted, nor is it denied altogether it directly affects innovation funding and
unfettered use of this provision may result in global pharmaceutical companies being
hesitant to introduce new medicines in other countries. Hence the companies have to fix
the cost of their patented module according to the economic status of the country if they
want to protect their product from compulsory licensing. Compulsory licensing has now
become the hope for financially challenged patients in underdeveloped countries. India
needs this provision owing to the economic condition of the majority population. But the
challenge is that on one hand, it has to comply with the international standards of patent
protection and on the other, it has to safeguard public health.

Grounds for granting compulsory license

Section 84(1) of the Patents Act, 1970 prescribes the conditions for grant of compulsory
license. After 3 years have elapsed from the date of grant of the patent, an application can
be made to the Controller by any person interested for the grant of compulsory license on
the following grounds:

● The reasonable requirements of the public with respect to the patented invention have not
been satisfied; or
● The patented invention is not available to the public at a reasonably affordable price; or
● The patented invention has not been operational in the territory of India.
An application for the grant of a compulsory licence can be made to the Controller by any
person interested and even he who is already the holder of a licence under the patent,
when the aforesaid conditions are satisfied. The application must describe the nature of the
applicant’s interest and the facts which form the basis of the application. If the Controller is
satisfied that any of the above-mentioned grounds subsists, he may grant a licence upon
such terms as he deems fit.

The Controller should take the following aspects into account while considering an
application:4

● The nature of the invention;

● The time which has elapsed since the sealing of the patent;
● The measures that are taken by the patentee or licensee to make full use of the invention;
● The ability of the applicant to work the invention to the public advantage;
● Where the application is granted, the capacity of the applicant to undertake the risk in
providing capital and working the invention;
● Whether a licence has been obtained by the applicant from the patentee on reasonable
terms and conditions and the efforts to obtain a licence has been made within a
reasonable period, as the Controller may deem fit. The ‘reasonable period’ shall not
exceed a period of 6 months.

However, the Controller shall not take the aforementioned details of the application into
account under the following situations:

● In case of national emergency; or

● In circumstances of extreme urgency; or
● In case of public non-commercial use; or
● On the adoption of anti-competitive practices by the patentee.

Matters to be considered before granting compulsory license

Section 85 of the Act talks about matters to be considered before granting compulsory
license –In determining whether or not to make an order in pursuance of an application
filed under section 84, the Controller shall take into account-
 i. The nature of the invention, the time which has elapsed since the sealing of the patent and
the measures already taken by the patentee or any licensee to make full use of the
invention;
ii. The ability of the applicant to work the invention to the public advantage;
iii. The capacity of the applicant to undertake the risk in providing capital and working the
invention, if the application were granted, but shall not be required to take into account
matters subsequent to the making of the application.

Revocation of Patent

The term “Revocation” means Cancellation of the patent rights acquired to patentee. The
revocation of patent can be applied by making a petition by any person interested or it can
be also applied by the Central Government. In most of the cases revocation are filed on a
counter claim against patent infringement suits in High Court or in IPAB (the Intellectual
Property Appellate Board). The provision for Revocation of patents is mentioned under
section 104.

Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be
approached for revocation as no suit of infringement can be brought before a court inferior
to the District Court having jurisdiction.

Grounds for revocation of patent

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that
warrant the revocation of patents. These grounds are following:

● Invention is obvious, lacks an inventive step or utility

● Invention isn’t new and, has been publicly used or published in India before the priority
date or it is foreseen in light of the knowledge available within any local or native
community in India or elsewhere.
● Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t
amount to invention
● The scope of patent specifications is incomplete or the specifications have either been
already claimed in a patent that is granted
 ● The patent was wrongfully obtained in violation of another party’s rights, such as through
incorrect or false representation, or leave to modify specifications was obtained through
fraudulent means
● The information that has been disclosed under Section 8 is known to be false by the
Applicant or he has been unable to furnish the required details
● Complete specification omits or erroneously attributes geographical origin or biological
matter used in the invention
● The invention was either secretly used before the date or claim or the Applicant
contravened secrecy instructions under Section 35
● The complete specification neither describes the invention and method sufficiently nor
does it disclose the best method of performing it which was known and entitled
protection.

Other provisions for revocation of patent

A revocation petition can be filed under section 65 if the patent granted relates to atomic
energy.

If the Central Government find the facts that a granted patent has been exercising by wrong
means and it is mischievous to the State or prejudicial to the public, the central government
has rights in the case to revoke the concerned patent and such decision is also published in
official journal of patents.

Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme
Court in the Enercon (India) Ltd and Ors. v. Enercon Gmbh, that post grant opposition
proceedings and petitions or counter-claims of revocation against the same patent, cannot
be simultaneously instituted. Frivolous litigation shouldn’t be encouraged as it is viewed as
a tool for cash-rich litigants with dishonest interests.

Revocation of Patent under Section 85 of the Act

An application for revocation of patent can be filed after 2 years of grant of compulsory
license. The grounds for revocation of a patent are same which are covered under Section
85 which mainly deal with following:-
 ● Reasonable price,
● Availability in the territory of India, and
● Requirements of the public not met.

Section 85 reveals provision in the benefit of public. In these cases where the patentee does
not take necessary actions that may help in better distribution of the product to the public
and more profound availability at reasonable prices. Such revocations of patent are really
useful to public.

Surrender of Patents

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee
can offer to surrender his patent by giving notice to the Controller. The offer to surrender
the patent should be published by the Controller, and every person interested in the patent
must also be notified of the same.

After the publication, any interested person can oppose the surrender, by giving notice to
the Controller which should be notified by the Controller to the patentee. If the patentee or
the opponent wants to be heard, the Controller, on being satisfied that the patent may be
surrendered and after the hearing, may accept the offer and revoke the patent by order.

The notice of opposition must be given to the Controller within a period of 3 months from
the date of publication of the notice to surrender the patent. If the patentee’s offer to
surrender the patent is accepted by the Controller, he may:

● Direct the patentee to return the patent;

● On receiving the patent revoke it by order; and
● Publish the revocation of the patent

Restoration of Lapsed Patents

The Patents Act provides certain safeguards for restoring a lapsed patent. Accordingly a
patent that is ceased to have effect because of failure to pay the prescribed fees within the
prescribed period under Section 53 of the Act or within such period, allowed under Section
142 of the Act.
The patentee of his legal representative, may, make an application in the prescribed
manner for the restoration of the lapsed patent. In the case where the patent was held by
two or more persons jointly then with the leave of the Controller one or more of them
without joining others may submit the application for restoration within eighteen months
from the date on which the patent is ceased to have effect. Though the renewal fees can be
paid by any person, the application for the restoration of a lapsed patent, the application
has to be made by the patentee or his legal representative.

If the patentee fails to pay the renewal fee within the prescribed period and also within the
extendable period of six months by requesting extension of time, the patent ceases to have
effect or lapses from the date of expiration. Patent lapsed, due to non-payment of
renewal/maintenance fee can be restored within eighteen months from the date of lapse.

Within one year of an application for restoration of patent that lapsed should be made. If an
overdue annuity is not paid within the extension period, the one year period for seeking
restoration commences from the date of recordal.

Essential requirements to restore a patent

1. Under section 60 of the Act, an application for restoration of lapsed patent should be
made by the patentee or his legal representative
2. Prescribed fee on Form 15
3. Proof to support that failure of the renewal/ maintenance was unintentional

Although, there is no additional fee for Patent of Addition, but the patent holder or the
patentee has to submit each form individually for each additional patent with that of the
patent restoration application.

Rights of Patentee of lapsed patent which has been restored under section 62

● On the restoration of a patent, the rights of the patentee shall be subject to such provision
as may be prescribed by the Controller in his order and to such other provisions as he
thinks fit to impose for the protection of compensation of persons who might have began
to avail them of, Or the patented invention between the date when the patent ceased to
 have effect and the date of publication of the application for the restoration of patent
Section 62(1),
● On the lapsing of the patent due to non payment of the renewal fees, the patentee loses
his right in the patent and the invention becomes public property. The provision
contained in section 62 of The Act is to safeguard the interests of those persons who after
ascertain from the Register of Patents that the patent has lapsed due to non payment of
the renewal fees and become public property had started commercially using the
invention.

MODULE 5: PATENT ENFORCEMENT AND DEFENCES

Infringement: Meaning and Scope

A patent granted under the Indian Patents Act 1970, confers exclusive rights to the
patentee to prevent third parties from making, using, offering for sale, selling or importing
the patented invention for the purpose of using, selling and offering for sale in India
without the consent of the patentee until the expiry of the said patent

1. This prevents third parties from commercially exploiting the patented invention till the
time the said patent is in force. Any use of the patented invention without the appropriate
consent of patentee shall be considered as an act of infringement. The act of infringement
can lead the infringer to trouble as the infringer can be sued by the patentee for
infringement with demands for monetary compensation.

It is evident that the research conducted for inventions is based on prior work carried out
in the particular field of art. In the conditions when the carried out prior work is patented,
the researcher cannot wait until the patent is in force for the carried prior work as it can
have detrimental implications on the research and development in the particular field of
art.

Patents are territorial, and infringement is only possible in a country where a patent is in
force. For example, if a patent is granted in India, then anyone in India is prohibited from
making, using, selling or importing the patented item, while people in other countries may
be free to exploit the patented invention in their country. The scope of protection may vary
from country to country, because the patent is examined -or in some countries not
substantively examined- by the patent office in each country or region and may be subject
to different patentability requirements.

Burden of Proof

The burden of proof is defined in section 101 of the Indian Evidence Act, 1872. Accordingly,
the onus of adducing evidence to prove the facts on which allegations are based lies on the
plaintiff. Similarly, the burden of proof in patent infringement litigation lies on the patentee
or plaintiff to adduce factual evidence that the patent has been infringed. However, if the
subject matter of a patent is a process, and the patentee or person deriving title or interest
is able to prove that the infringed product is identical to the product directly obtained by
the patented process the burden of proof may shift to the defendant to prove that the
process used by him is different from the patented process.

In Farbewerke Hoechst etc v Unichem Laboratories and ors, the Bombay High Court
held that the burden of proof in the process patent is based on section 106 of the act which
provides that “when any fact is especially within the knowledge of any person, the burden
of proving that fact is upon him”. Therefore, if the process by which the product is obtained
is especially within the knowledge of the infringer or defendant it is impossible for the
plaintiffs to know exactly how the product has been obtained by the defendants. Thus, the
burden of proving the process used by the defendant to make the infringing product lies on
him.

The burden of proof in case of process patent is also dealt with in section 104A of the
Patents Act, 1970. In Communications Component Antenna Inc v ACE Technologies
Corp and ors, the Delhi High Court recently held that if the defendant withholds its best
and easily obtainable evidence, an adverse inference can be drawn against it. The court
stated that “in a patent infringement action, once the plaintiff, prima facie establishes
infringement, the onus shifts on the defendants, to disprove the same. The complete silence
by the defendants shows that there is, in fact, withholding of relevant and crucial
information from the court”.

In another recent case, Shogun Organics Ltd v Gaur Hari Guchhait and ors, the same
court further ruled on the burden of proof. Shogun Organics, a company engaged in the
research, manufacture, and sale of mosquito repellent applied for a permanent injunction
restraining the defendants from infringing its process patent. The patent related to the
manufacture of an insecticide. The plaintiffs purchased base material from the defendants
but established that, after the grant of the patent the defendants sold their product with the
addition of various compounds and content specific to the plaintiff’s patented process. The
onus therefore shifted to the defendants to prove that the process adopted by them was
different from the patented process.

Modes of Infringement

Direct Infringement – It is the most apparent and common type of infringement. This
infringement includes marketing, sale or commercial use of a similar patented item or
invention that performs substantially identical functions. Direct infringement is of two
types - literal and non-literal. Literal infringement occurs when every component in the
patent specification has been used in the alleged infringing product/ device or process.
Non-literal infringement occurs when the infringing device or process may be similar or
equivalent to the claimed invention (performs substantially the same function, in
substantially the same way and to achieve substantially the same result.

Literal Infringement – When the accused product/process falls in the scope of patent
claims then the infringement is known as literal infringement. One of such case is Polaroid
Corp v. Eastman Kodak Co., where patent infringement by Eastman Kodak of Polaroid's
"Instant camera technology" was considered a case of literal infringement.

Doctrine of Equivalence – It is also known as non-literal infringement. The infringement

is known as doctrine of equivalence when the component or device has same function to
obtain similar or same results. This infringement provides a patentee with added and fair
protection for their patents. The doctrine was adopted into the Indian legal system during a
recent Indian case of Ravi Kamal Bali v. Kala Tech. In said case, it was alleged that the
defendants infringed a patent on a tamper proof lock/seal for containers. The defence was
that the product differed in material particulars from the patented product, but the court
found the changes to be inconsequential and thereby, applied the doctrine.

Indirect Infringement – It is where the infringement has happened, however the

infringement is facilitated by someone else. Indirect infringements are of two types:

● Inducted Infringement – Where one actively induces the other person to infringe a
patent by encouraging, assisting, aiding, and inducing him/her to do so. Patent
infringement by inducement typically means that the inducer willingly and knowingly
aided in the infringement but may or may not have specifically intended to violate a
patent infringement.
● Contributory Infringement – Where there is an intentional participation/assistance by
one party in an act of infringement to the other party making them vicariously liable for
the acts of the infringer.
It is a type of indirect infringement, where a person or corporation is held liable for
infringement even if they have not actively participated in infringing activities.
Therefore, it happens when a party sells a product which they know is used in the
infringing product. In usual cases, this product will have no commercial standing out of
its use in the infringing product.
Contributory infringement is triggered when a seller provides a part or component that,
while not it infringing any patent has a particular use as part of some other machine or
composition that is covered by a patent.

Wilful Infringement – This infringement involves someone showing a serious disregard

for the existence of a patent. For example, if you sued Acme for infringing on your anvil
patent and found during discovery that they had it in their possession and used it to make
their anvils, you will likely prevail in showing that their violation was wilful. Those found
guilty of wilful infringement pay higher penalties, attorney fees, and court costs.
Case – Symed Labs v Glenmark Pharmaceuticals

In this case Symed Labs Ltd. had sued Glenmark Pharmaceuticals Laboratories before the
Delhi High Court for allegedly infringing two of its patents. First patent was granted for
“Novel intermediates for Linezolid and related compounds” while the second patent was
granted for “A novel process for the preparation of Linezolid and related compounds”.

In the case judgement declared in the year 2015, the judge was convinced that the plaintiff
had good prima facie case in favour of Symed. He further decided that protection to the
patent processes ought to be granted to the plaintiff as damages will not be an efficacious
remedy. There was an irreparable loss and injury because of the long uninterrupted use of
patents, and the balance of convenience also lay in favour of the plaintiff. Thus, the judge
granted an ad interim injunction restraining Glenmark from manufacturing, selling,
offering for sale, advertising or directly or indirectly dealing in the production of Linezolid
manufactured in a manner so as to result in infringement of the plaintiff's registered
patents.

Doctrine of Colourable variation

A colourable variation or immaterial variation amounting to infringement is where an

infringer makes slight modification in the process or product but in fact takes in substance
the essential features of the patentee’s invention.

In Lektophone Corporation v. The Rola Company, 282 U.S. 168 (1930), a patent
holder’s patents were of sound-reproducing instruments for phonographs. According to
the patent application, size and dimensions of the invention were the essence of the patent.
The patent holder claimed that a radio loud speaker manufactured by the defendant
(manufacturer) infringed the patents. The manufacturer’s devise also had a central paper
cone, but the cone was smaller than that of the patented devise and that constituted
colorable alteration. The court held that because colorable alterations of the
manufacturer’s devise, it would not accomplish the object specified in the patent claims and
hence did not infringe upon the patent holder’s claims.

Doctrine of Pith and Marrow

The doctrine of ‘pith and marrow’ defined the scope of patent protection by the substance
of the invention. According to the doctrine, an infringement could be established if the
defendant’s device or process included all the essential elements of the patent. In contrast
to the US practice, which typically permitted a range of equivalents to every element of the
claim, only inessential elements were entitled to a range of equivalents in the United
Kingdom, and the general rule was that every element was essential.

Until the 1960s, an act could be considered infringing either if it fell within the literal
wording of the claim (“textual infringement”), or was something that the courts considered
to be a "mechanical equivalent". That wording was found to cause problems in some cases,
and gradually the courts built up a complex body of case law whereby an act that was not a
textual infringement could nevertheless be caught if the alleged infringer had taken what
the courts came to call the "pith and marrow" of the invention.

The “pith and marrow” doctrine should not be applied so as to extend the scope of a
carefully worded claim, and should in the future apply only to cases of “colourable evasion
of patent claims”.

Defences in suits of infringement of Patents

● Patent is not valid: For instance the defendant may allege that the invention embodied in
the patent was not novel or that the patent was obtained wrongfully. The defendant may
also argue that the invention was publicly known or publicly used in India, that the
invention is not useful or that the specification does not sufficiently and fairly describe
the invention and the method by which it is to be performed etc.
● Patent claims are not relevant: Under this defense, the accused may argue that the
claims of the patent do not read on the features of the product in question.
● Legal concessions or excuses: Patent law allows for use of an invention for research or
experimentation purposes. The accused may argue that the exploitation of the invention
was only to the extent allowed by the law.
● Indemnification: The accused may also use the defense that any violation is indemnified
by another party through a relevant contract. In such scenario, the liability for
infringement falls on the party that promised to indemnify.
Other defences are:

● Plaintiff not entitled to sue for infringement,

● Denial of infringement or of any threat or intention to infringe,,
● Leave or license express or implied to use the invention,
● Estoppels or res judicata,
● The acts complied are in accordance with the conditions specified in s.47(Government
use, experiment, research and education),
● Claims alleged to be infringed are invalid on certain grounds( Revocation of Patents)
● For Patent in respect of Medicine or drug, for its own use of Govt. of India, for
distribution in Govt. Dispensary and hospitals or by gazette notifications to other
dispensaries, hospitals and medical institutions.
● Alleged infringement not novel or is obvious
● "Gillette" defence. Indian courts recognise the Gillette defence as a valid defence in an
infringement action. The defendant can prove that the act complained of was merely what
was disclosed in a prior publication (which can also be relied on against the validity of
the patent), without any substantial or patentable variation made (Hindusthan Lever Ltd
v Godrej Soaps Ltd [1996] AIR Cal 367; Raviraj Gupta v Acme Glass Mosaic
Industries (1994) 56 DLT 673). Therefore, either the defendant does not infringe or the
patent is invalid, if the patent covers prior art.

Certain acts not to be considered as Infringement

Section 107A in the Act incorporates bolar provision and provision for parallel
imports. Section 107A states that the following acts do not constitute infringement:

● Any act of making, constructing, using, selling or importing a patented invention solely
for uses reasonably related to the development and submission of information required
under any Indian law, or law of a country other than India, that regulates the manufacture,
construction, use, sale or import of any product;
● The importation of patented products by any person from a person who is duly authorized
by the patentee under the law to produce and sell or distribute the products.
Bolar provision allows manufacturers to begin the research and development process in
time to ensure that affordable equivalent generic medicines can be brought to market
immediately upon the expiry of the product patent.

Parallel import provisions are provided in section 107A (b) of the Patents Act, which says
that importation of patented products by any person authorized by the Patentee will not be
considered as an infringement. Therefore it is possible to import the patented products
from the licensee of the patentee in any country without the permission of the Patentee.
The purpose of Parallel import is to check the abuse of patent rights and meant to control
the price of patented product.

Grounds of Infringement

Section 48 of the Patents Act, 1970 grants the following rights to the patentee:

● In case of a product patent, the following sections would amount to infringement –

making, using, offering for sale, selling or importing for these purposes, the product in
India without the permission of the patentee.
● In case of a process patent, the following would amount to infringement – using, offering
for sale, selling or importing for these purposes the product obtained directly by that
process in India without the permission of the patentee.

Any person who, without the consent of the patentee performs the above activities,
infringes the patent.

Remedies for infringement of patent

Section 108 (1) of the Patents Act, 1970 provides for the Reliefs in suit for infringement.
It states that – “The reliefs which a court may grant in any suit for infringement includes an
injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the
plaintiff, either damages or an account of profits.”

The reliefs that are available to a patentee in suit for patent infringement against an
infringer are:-
 ● Permanent injunction;
● Temporary / Interlocutory injunction;
● Ex-parte injunction;
● Damages or an account of profits;
● Seizure, forfeiture or destruction of infringing products / goods and / or materials and
implements predominantly used in the creation of the infringing products / goods

Permanent Injunction – They are granted post trial of the patent infringement suit. Once
the interim injunction is issued, the lawsuit continues as normal. If the plaintiff wins at the
trial, the preliminary injunction usually becomes permanent. If the defendant wins, the
preliminary injunction is dissolved, and the defendant can seek recovery against the bond
as discussed.

The US Supreme Court in eBay, Inc. v. Merc Exchange L.L.C. has set a four-factor test
which a plaintiff must demonstrate in order to seek a permanent injunctive relief from the
court.

‘A plaintiff must demonstrate –

● That it has suffered an irreparable injury,

● That remedies available at law, such as monetary damages, are inadequate to compensate
for that injury,
● That, considering the balance of hardships between the plaintiff and defendant, a remedy
in equity is warranted,
● That the public interest would not be disserved by a permanent injunction

Temporary Injunction/ Interlocutory Injunction

For grant of temporary injunction in a suit for infringement, the court should consider that-

● There is a prima facie case that the patent is valid and infringed;
● The balance of convenience is in favour of injunction being granted;
● The plaintiff will suffer irreparable loss.
It is a rule of practice that if a patent is new one, an interim injunction will readily be
granted. If the patent is sufficiently old and has been worked, the court may well presume
the patent to be valid and grant injunction.

Damages

Once the suit is decided in favour of the plaintiff, the Court can either award damages or
direct the defendant to render an account of profits. The two remedies are alternative and
not concurrent in nature.

In a suit for infringement of patent, damages shall not be granted against the defendant
who proves that at the date of infringement he was unaware and had no reasonable
grounds for believing that the patent existed or where an amendment of a specification had
been allowed after the publication of the specification, and the infringement action is in
respect of the specification before the date of publication unless the Court is satisfied
original specification was made in god faith and with reasonable skill and knowledge.

When actual damages cannot be proved, or are not sought for reasons of proof, trial
strategy or otherwise, the patent owner is entitled to not less than a reasonable royalty as
damages. The purpose of the royalty alternative is not to direct the form of compensation,
but to set a floor below which damage awards may not fall. Reasonable royalty was
defined in Panduit Corp. v. Stahlin Bros. Fibre Works as “an amount which a person
desiring to manufacture and sell a patented article, as a business proposition, would be
willing to pay as a royalty and yet be able to make and sell the patented article in the
market at a reasonable profit.

Groundless threat of legal proceedings

Groundless threat, also connoted to as unjustified/wrongful threat is a threat whereby the

owner or any person (depending on the statute) threatens another with legal proceedings
without basing the threat on any reasonable basis. IP laws provide protection to the victims
of unjustified threats, by preventing the person(s) making the threats from doing the same.
Examples of such provisions in IP statutes include Section 60 of the Copyright Act, 1957,
Section 142 of the Trademark Act, 1999 and Section 106 of the Indian Patents Act, 1970.
LG Electronics India Pvt. Ltd. v. Bharat Bhogilal Patel & Others

In this case the plaintiff approached the Hon’ble Delhi High Court on the premise that
complaint preferred by Defendant No. 1, Bharat Bhogilal Patel, against the Plaintiff before
Defendant No.2, Customs Office, on the basis of which said Customs department is acting
upon and interdicting the goods imported by the plaintiff without approaching the Court in
accordance with Patents Act, 1970 amounts to groundless threats. The defendant claimed
to have obtained a patent in respect of “Process of manufacturing engraved design articles
on metals or non-metals”.

Upon receiving show cause notice from defendant no. 2 Customs department, the plaintiff
requested for the documents pertaining to the impugned patent and on perusing the same,
found that the claims of CS(OS) No.2982/2011 Page No.3 of 10 the impugned patent
allegedly lacked novelty as well as any inventive step. Accordingly, plaintiff filed revocation
petition before the Intellectual Property Appellate Board (IPAB) challenging validity of the
impugned patent. The Customs department continued interdicting the consignments of the
plaintiff despite having been informed of the pendency of revocation proceedings.
Subsequently, the case came up for hearing and the Court passed interim order in favour of
plaintiff, staying the operation of complaint of Defendant No. 2 the Customs office.

Relief in case of groundless threats

Section 106 of the Indian Patents Act 1970 grants power to the court to grant relief in case
of groundless threats of infringement proceedings. In such an action the plaintiff can pray
for a declaration to the effect that the threats are unjustified; he can ask for an injunction
against the continuance of the threats and also damages if any, he may have sustained
thereby.

In such a suit, unless the defendant proves that there is, in fact a threat of infringement of
his patent or any other right arising from the publication of the complete specification in
respect of the patent the court may not grant relief to the plaintiff. Under the common law,
the main remedy available against such unfair acts is by action for the tort of trade libel.
Trade libel is defined as the publication of a false statement of fact that is an intentional
disparagement of the quality of the services or products of the plaintiff’s business and that
result in pecuniary damages to the plaintiff.

Royal Baking Powder Co. v Wright, Crossley & Co.

● That the statements complained of were untrue;

● That they were made maliciously, i.e. without just cause and excuse; and
● That the plaintiffs have suffered special damage thereby.

Patent troll

A patent troll is a derogatory term used to describe a company that uses patent
infringement claims to win court judgments for profit or to stifle competition. The term
may be used to describe a number of business activities that utilize patents and the court
system to earn money.

While the practice of patent trolling is not illegal, a company that acts as a patent troll files
patent claims without any intention of ever developing a product or service. The end result
is bad faith infringement threats and licensing demands that require companies to spend a
significant amount of money to settle these claims without any addition to the public good.
A patent troll may also be called a “patent shark,” “dealer,” “marketer,” or “pirate.” A patent
troll operation may be called a “patent assertion company,” “entity,” or a “non-
manufacturing patentee.”

How does a Patent Troll Work?

A patent troll may use a variety of methods and exploit legal loopholes to generate revenue
without producing any material benefits and without any intention to use the patent in
question. One analogy for a patent troll's actions would be earning the right to charge tolls
on a toll road without performing any kind of improvements to the roadway.
Hypothetically, the patent troll would earn money from charging huge fees for the use of
the roadway or from imposing severe penalties for anyone who uses the road without
knowing the terms of use.
Patent trolls are more common in the U.S. because patent trolls can take advantage of
existing structural issues within the U.S. patent and court systems.

Patent trolls are less prevalent in Europe because many European countries stipulate that
losers in patent claim court cases pay the legal expenses of both parties. This has effectively
eliminated a majority of frivolous lawsuits.

Common Practices of Patent Trolls

Patent trolls may employ one or more the following practices, though understanding the
full breadth of patent troll practices would be difficult because of the many methods they
use:

● Enforcing a patent without any intent of manufacturing a product or providing a service

based on that patent, or without using it to conduct research, or otherwise utilizing it for
the greater good
● Pursuing patent infringement claims that are baseless with the intent of stifling
competition (These claims are ultimately easier and cheaper for competing companies to
settle than to litigate.)
● Buying a patent (usually from a bankrupt company at auction) with the intent of suing a
competing company by claiming that it has a product that infringes upon the newly
purchased patent
● Any utilization of a patent to enforce patent rights only