THE PATENTS ACT, 1970- AN OVERVIEW

CHAPTER I: PRELIMINARY
 SUMMARY:
This chapter of The Patents Act, 1970 communicates the basic
definitions and interpretations of the terms used in this act. This
includes the definition of the basic terms like new invention,
patent, patent agent etc, and advanced terms such as exclusive
license, budapest treaty. This chapter also talks about the existence
of this act, that this act shall come into force on such date as the
central government may appoint. It talks about the ‘patent’
definition, it means a patent for any invention granted under this
act.

CHAPTER II: INVENTIONS NOT PATENTABLE

 SUMMARY:
This chapter talks about, what is not an invention, inventions which
are not patentable and inventions which are partly patentable. It
discuss that , invention contrary to natural laws and public order or
morality, discovery of any living or non living substance, new
method of agriculture or horticulture, new medical process of
treating humans or animals are not inventions. It has been specified
in section 4 that inventions related to atomic energy is not
patentable. section 5 has been omitted by 2005 amendment act as
it stated that for substances intended for use or capable of being
used as food or as medicine or drug are not patentable. For these
drugs or medicine this section provided only for a “product by
process” claim.
 CHAPTER III: APPLICATIONS FOR PATENTS
 SUMMARY
This is the very important chapter of the section as it contains the
details such as who can apply for the patent, form of application,
information regarding foreign applications. By examining this
chapter we can find that person claiming to be the true and first
inventor, and even the legal representative of the deceased person,
can apply for the patents. According to this chapter person who
wishes to file patent, must file patent application with the indian
patent office. The application must contain the complete
specification of the invention. Once the application has been filed,
the Patent Office will examine it to ensure that it meets the
requirements of the Act. If the application is found to be in order, it
will be published in the Patent Office journal. If there are no
objections to the application, the patent will be granted. The Act
provides for a number of conditions that must be met in order for a
patent to be granted. For example, the invention must be novel,
non-obvious, and useful. The invention must also not fall within
any of the excluded categories of subject matter set out in the Act.
The Act also provides for a number of rights that are conferred
upon the patentee, including the exclusive right to make, use, and
sell the invention for a period of 20 years from the date of filing of
the application. The Act also provides for a number of remedies
that are available to the patentee in the event that their patent rights
are infringed. Overall, Chapter 3 of the Patents Act, 1970, sets out
the process for filing and obtaining a patent in India and provides
for the rights and remedies that are available to the patentee.
 CHAPTER V: OPPOSITION PROCEEDINGS TO
GRANT OF PATENTS
 SUMMARY

Chapter 5 of the Patents Act 1970 of India outlines the process of

obtaining a patent in India. The chapter describes the steps that an
applicant must take to file a patent application, the requirements for
the form and content of the application, and the examination
process carried out by the Patent Office. The chapter specifies that
the applicant must provide a description of the invention, including
claims and any related specifications or drawings, when filing a
patent application. The Patent Office examines the application to
ensure that it meets all the statutory requirements for the grant of a
patent. Once the Patent Office is satisfied that the application meets
all the requirements, it issues a patent to the applicant, which is
valid for 20 years from the date of filing the application. The
chapter also describes the rights and privileges that are conferred
upon the patentee, including the exclusive right to make, use, sell,
or distribute the patented invention in India, and the right to
prevent others from doing so without their permission. Overall,
Chapter 5 of the Patents Act 1970 sets out the process for obtaining
a patent in India, including the filing of the application,
examination by the Patent Office, and the rights and privileges
conferred upon the patentee.

CHAPTER VII: PROVISIONS FOR SECRECY OF

CERTAIN INVENTIONS
 SUMMARY

Chapter 7 of the Patents Act 1970 of India deals with the issue of
patent infringement. The chapter outlines the rights of the patentee
and the remedies available to them in case of infringement of their
patent. The chapter starts by specifying that the patentee has the
exclusive right to make, use, sell, or distribute the patented
invention in India, and can prevent others from doing so without
their permission. In case someone uses the patented invention
without the permission of the patentee, it constitutes infringement
of the patent. The chapter then goes on to describe the remedies
available to the patentee in case of infringement. The patentee can
file a suit for infringement of their patent and seek an injunction to
prevent further infringement. They can also claim damages for any
loss suffered as a result of the infringement. The chapter further
specifies that in case of infringement of a process patent, the
burden of proof lies on the defendant to prove that they are not
infringing the patent. This is because it can be difficult for the
patentee to prove that the defendant is using their patented process.
Overall, Chapter 7 of the Patents Act 1970 outlines the rights of the
patentee and the remedies available to them in case of infringement
of their patent rights. The chapter highlights the seriousness of
patent infringement and provides the patentee with the legal tools
necessary to protect their intellectual property rights.

CHAPTER VIII: GRANTS OF PATENTS AND RIGHTS

CONFERRED THEREBY
 SUMMARY

Chapter 8 of the Patents Act 1970 of India outlines the process for
revocation of a patent. The chapter describes the grounds for
revocation, the procedure for filing a petition for revocation, and
the role of the Intellectual Property Appellate Board (IPAB) in
hearing and deciding such petitions. The chapter specifies that a
patent can be revoked on certain grounds, including anticipation,
obviousness, lack of patentability, insufficient or unclear
description of the invention, or non-disclosure or furnishing of
false information during prosecution. Any person interested can
file a petition for revocation of a patent before the IPAB. The
petition must be accompanied by a statement setting out the nature
of the applicant's interest, the facts upon which the case for
revocation is based, and the relief sought. The IPAB has the power
to revoke the patent either wholly or partially. The chapter also
outlines the factors that the IPAB may consider when deciding
whether to revoke a patent, including the public interest and the
extent to which the invention has been commercially exploited.
Overall, Chapter 8 of the Patents Act 1970 sets out the grounds and
procedure for revocation of a patent, and the role of the IPAB in
hearing and deciding petitions for revocation. The chapter
emphasizes the importance of ensuring that patents are valid and
that they do not hinder public interest.

CHAPTER X: AMENDMENT OF APPLICATIONS

AND SPECIFICATIONS
 SUMMARY

Chapter 10 outlines the circumstances under which an application

or specification can be amended and the procedure for making such
amendments. Section 57 of the Act specifies that an application for
a patent can be amended before the grant of the patent, provided
that the amendment does not result in the disclosure of any matter
not previously disclosed in the application. The amendment can
also be made to limit the scope of the claims in the application. The
chapter further outlines the procedure for making amendments to
an application or specification. The patentee must file a request for
amendment along with a statement setting out the nature of the
proposed amendment and the reasons for the amendment. The
Controller of Patents has the power to allow or reject the
amendment. The chapter also specifies that amendments made after
the grant of the patent can only be made to correct clerical errors or
obvious mistakes. Such amendments must be made within six
months from the date of the grant of the patent. Overall, Chapter 10
of the Patents Act 1970 emphasizes the importance of ensuring that
applications and specifications are accurate and complete. The
chapter provides the patentee with the ability to make amendments
to their application or specification, subject to certain restrictions
and procedures.

CHAPTER XII: SURRENDER AND REVOCATION OF

PATENTS
 SUMMARY
This chapter outlines the circumstances under which a patentee
may surrender their patent by filing a request with the Controller of
Patents. The request for surrender must be made in writing, and the
patentee must satisfy the Controller that they have a bona fide
reason for surrendering the patent. The chapter also specifies the
grounds on which a patent can be revoked, including non-
compliance with the requirements of the Patents Act, lack of
novelty or inventive step, and insufficient disclosure of the
invention. The revocation can be initiated by any person interested
in the patent by filing a petition with the appropriate authority. The
chapter outlines the procedure for revocation proceedings, which
includes giving notice to the patentee and providing them with an
opportunity to respond. The Controller of Patents has the power to
decide whether to revoke the patent, and their decision is subject to
appeal before the IPAB. Overall, Chapter 12 of the Patents Act
1970 emphasizes the importance of ensuring that patents are
granted and maintained in accordance with the requirements of the
law. The chapter provides the patentee with the ability to surrender
their patent if they have a bona fide reason for doing so, and also
outlines the grounds and procedure for revocation of a patent by
interested parties.

CHAPTER XIV: PATENT OFFICE AND ITS

ESTABLISHMENT

 SUMMARY:
 The chapter outlines the establishment and jurisdiction of Patent
Offices in India, which are responsible for granting and
administering patents under the Patents Act. The Patent Offices are
established under the control and supervision of the Controller
General of Patents, Designs and Trade Marks, who is appointed by
the Central Government. The chapter specifies the functions of the
Patent Offices, which include receiving and examining patent
applications, conducting searches and examinations, and granting
patents to eligible applicants. The Patent Offices are also
responsible for maintaining the register of patents and publishing
information related to patents. The chapter also outlines the
procedure for filing patent applications, which must be done in the
specified manner and within the prescribed time limit. The Patent
Offices have the power to examine and reject applications that do
not meet the requirements of the Patents Act, and to grant patents
to eligible applicants. Overall, Chapter 14 of the Patents Act 1970
emphasizes the importance of establishing and maintaining Patent
Offices in India to facilitate the grant and administration of patents.
The chapter outlines the functions and jurisdiction of the Patent
Offices, as well as the procedure for filing patent applications and
the powers of the Patent Offices to examine and grant patents.

CHAPTER XVI: WORKING OF PATIENTS,

COMPULSORY LICENCES AND REVOCATION

 SUMMARY
The purpose of the chapter is to ensure that patented inventions are
put to effective use for the benefit of society. The chapter outlines
the requirement for a patentee to work their patented invention in
India, either by manufacturing the invention in India or by
importing the invention into India. If the patented invention is not
worked in India within a period of three years from the date of
grant of the patent, or if the demand for the patented invention in
India is not being met on reasonable terms, any interested person
can apply to the Controller of Patents for a compulsory license to
work the invention. The chapter also specifies the grounds on
which a compulsory license can be granted, including national
emergency, public non-commercial use, and failure of the patentee
to work the patented invention in India. The compulsory license
can be granted by the Controller of Patents after following the
prescribed procedure, and the patentee is entitled to receive
reasonable royalty for the use of their patented invention. The
chapter also outlines the procedure for revocation of a patent on the
grounds of non-working of the patented invention in India. If the
patented invention is not being worked in India to a reasonable
extent within three years of the grant of the patent, any interested
person can apply to the Controller of Patents for revocation of the
patent. The revocation can be granted by the Controller of Patents
after following the prescribed procedure. Overall, Chapter 16 of the
Patents Act 1970 emphasizes the importance of ensuring that
patented inventions are put to effective use for the benefit of
society. The chapter outlines the requirement for a patentee to work
their patented invention in India, and provides for the grant of
compulsory licenses and the revocation of patents on the grounds
of non-working of the patented invention in India.
 CHAPTER XXI: PATENT AGENT

 SUMMARY

The chapter outlines the requirements for practicing as a patent

agent in India and the procedure for registration as a patent agent.
The chapter specifies that only registered patent agents are
authorized to practice before the Controller of Patents, which
includes filing and prosecuting patent applications, representing
clients in patent-related matters, and providing advice on patent
law and practice. The chapter also outlines the qualifications
required for registration as a patent agent, which includes a degree
in science or engineering, or a recognized equivalent qualification,
and passing the prescribed examination. The chapter further
outlines the procedure for registration as a patent agent, which
includes submitting an application to the Controller of Patents,
passing the prescribed examination, and fulfilling any other
requirements specified by the Controller. The registration is valid
for a period of five years, after which it can be renewed for further
periods of five years. The chapter also specifies the grounds on
which a registered patent agent can be removed from the Register
of Patent Agents, which includes fraud, misconduct, and
contravention of the provisions of the Patents Act or any rules
made thereunder. Overall, Chapter XXI of the Patents Act 1970
emphasizes the importance of regulating the practice of patent
agents to ensure that only qualified and competent professionals
are authorized to provide patent-related services in India. The
chapter outlines the qualifications required for registration as a
 patent agent, the procedure for registration, and the grounds for
removal from the Register of Patent Agents.

PATENTS OF ADDITION

 Section 54 defines, When an application of patent is made for an

improvement in or modification of the invention which is already
patented is known as patents of addition.
 The purpose of a patent of addition is to allow an inventor to protect
an improvement or modification to their original invention without
having to file a completely new patent application. By doing so, the
inventor can ensure that their improvement or modification is not
used by others without their permission.
 Patent of addition cannot be granted before the grant of main
invention.
 A patent o addition can’t be denied on the ground that improvement
doesn't include any inventive step.
 If a patent of addition is granted, it is usually linked to the original
patent and expires at the same time as the original patent. However, it
may also be granted as a separate patent, in which case it will have its
own term of protection.
 Overall, a patent of addition is a useful tool for inventors who want to
protect their improvements or modifications to an already patented
invention.

REGISTER OF PATENTS
 A register of patents is a database or record-keeping system that
contains information about patents that have been granted by a
government patent office.
 The register typically includes information such as the patent
number, the date of grant, the name and contact information of the
patent owner, the title of the invention, and a brief summary of the
invention.
 The register of patents is an important resource for individuals and
companies who want to research the patents that have been granted in
a particular field or industry. It can help inventors and businesses to
avoid infringing on existing patents and to develop new products and
technologies that are not already protected by existing patents.

POWER OF CONTROLLER

 A Controller refers to a government official who has the power to

grant or refuse patent applications, as well as to revoke or amend
existing patents. The Controller is typically a high-ranking official
within the government patent office.
 The Controller has a number of powers and responsibilities related to
patents. Some of the key powers of a Controller include:

1. Examination of Patent Applications: The Controller is

responsible for examining patent applications to determine
whether they meet the criteria for patentability, such as
novelty, non-obviousness, and usefulness.
 2. Grant of Patents: If the Controller determines that a patent
application meets the criteria for patentability, they have the
power to grant the patent and issue a patent certificate.
3. Refusal of Patents: If the Controller determines that a patent
application does not meet the criteria for patentability, they
have the power to refuse the application and provide reasons
for the refusal.
4. Revocation of Patents: The Controller may revoke a patent if it
is found to be invalid or if the patent owner has not complied
with certain requirements, such as paying maintenance fees.
5. Amendment of Patents: The Controller may allow the patent
owner to amend the patent in certain circumstances, such as to
correct errors or to limit the scope of the patent.
 In addition to these powers, the Controller may also have a role in
resolving disputes related to patents, such as disputes between patent
owners or between patent owners and alleged infringers. They may
also have a role in setting fees for patent applications and maintaining
a register of patents.
 Overall, the powers of a Controller are essential to the functioning of
the patent system, as they help to ensure that only truly innovative
and useful inventions are granted patents, and that patent owners are
held accountable for maintaining their patents and respecting the
rights of others.

COMPULSORY LICENSE AND REVOCATION OF

PATENTS
 Compulsory licensing and revocation of patents are two mechanisms
that can be used to limit the rights of patent holders in certain
circumstances. While both involve the government stepping in to
override the exclusive rights of patent holders, there are some
important differences between the two.
 Compulsory licensing is a legal mechanism that allows a government
to grant someone else the right to produce or use a patented invention
without the permission of the patent owner. This mechanism is
typically used in situations where the patented invention is deemed to
be of vital importance to public health, safety, or welfare, and where
the patent owner is unwilling or unable to license the invention on
reasonable terms.
 Under a compulsory licensing regime, the government may set the
terms of the license, such as the price that must be paid to the patent
owner, the quantity of the product that may be produced, and the
period of time for which the license will be valid. While this
mechanism limits the exclusive rights of the patent holder, it does not
invalidate the patent itself, and the patent holder is entitled to receive
compensation for the use of their invention.
 In contrast, revocation of a patent involves the complete cancellation
of the patent, and the removal of all exclusive rights that were granted
to the patent holder. A patent may be revoked if it is found to be
invalid, for example, if it does not meet the criteria for patentability,
or if it was granted based on false or misleading information.
 Revocation may also occur if the patent holder fails to meet certain
requirements, such as paying maintenance fees, or if they engage in
certain activities that are deemed to be contrary to public policy, such
as engaging in anti-competitive practices.
 While compulsory licensing and revocation of patents both involve
the government overriding the exclusive rights of patent holders, they
differ in terms of the extent to which those rights are limited.
Compulsory licensing is a more limited mechanism that allows for the
use of patented inventions in certain circumstances, while revocation
involves the complete cancellation of the patent and the removal of all
exclusive rights associated with it.

ACQUISITION OF INVENTIONS BY CENTRAL

GOVERNMENT

1. The government has the power to acquire inventions for the public
good, and this power is typically enshrined in patent laws and other
legal frameworks. The acquisition of inventions by the central
government can take several forms, including:

a) Voluntary Acquisition: In some cases, inventors may voluntarily

sell or license their inventions to the government, either because
they believe it is in the public interest, or because they stand to
benefit financially from the arrangement.

b) Compulsory Acquisition: The government may also have the

power to acquire inventions compulsorily, without the consent of
the inventor, in certain circumstances. For example, if the
invention is deemed to be of critical importance to national
security, public health, or other public interest, the government
may be able to compel the inventor to sell or license the invention
to the government, typically in exchange for fair compensation.
 c) Use of Patents for Government Purposes: Many patent laws also
contain provisions that allow the government to use patented
inventions for its own purposes, without the consent of the patent
owner. This may include using the invention in the production of
government goods and services, or allowing government
contractors to use the invention in the course of their work.

2. In many cases, the government's acquisition of inventions is

motivated by a desire to promote innovation and technological
progress, as well as to ensure that critical technologies and inventions
are available to the public when they are needed. However, the
government's power to acquire inventions can also raise concerns
about the protection of intellectual property rights, and the need to
provide fair compensation to inventors whose work is being acquired.
3. Overall, the acquisition of inventions by the central government is an
important mechanism for promoting the public interest and ensuring
that critical technologies and inventions are available to the public
when they are needed. However, it is important that these
mechanisms are balanced against the need to protect intellectual
property rights, and that inventors are provided with fair
compensation for their work.

SUITS CONCERNNG INFRINGEMENT OF

PATENTS

 Suits concerning infringement of patents are legal actions that are

taken by a patent holder against an alleged infringer, who is accused
 of making, using, selling, or importing a product or process that
infringes on the patent holder's exclusive rights. These legal actions
are typically brought in a court of law, and may involve a range of
legal remedies and damages.
 The process of filing a suit for patent infringement typically begins
with the patent holder filing a complaint in a court of law, in which
they allege that the defendant has infringed on one or more of their
patents. The complaint will typically include a description of the
patented invention, a claim of infringement, and a request for relief,
such as an injunction against further infringement, damages for past
infringement, and/or an order for the defendant to stop using or
selling the infringing product.
 The defendant will then have an opportunity to respond to the
complaint, and may file counterclaims or other legal arguments in
their defense. The case will then proceed to discovery, in which both
sides will have an opportunity to gather and present evidence in
support of their case.
 If the case goes to trial, the patent holder will need to prove that the
defendant has infringed on their patent, and that they are entitled to
the requested relief. This may involve presenting expert testimony,
demonstrating the technical details of the invention and the alleged
infringement, and providing evidence of the damages suffered as a
result of the infringement.
 If the court finds that the defendant has infringed on the patent, it may
grant the patent holder an injunction against further infringement,
order the defendant to pay damages for past infringement, and/or
order the defendant to stop using or selling the infringing product. In
some cases, the court may also award attorney's fees and other costs
to the prevailing party.
 Overall, suits concerning infringement of patents are an important
legal mechanism for enforcing the exclusive rights of patent holders
and protecting their intellectual property. However, they can also be
complex and expensive legal actions, and may require a significant
investment of time, money, and resources to pursue.

INTERNATIONAL ARRANGEMENTS

 International arrangements related to patents are agreements between

countries or regions that establish common standards for the
protection and enforcement of patents. Some of the most important
international arrangements related to patents include:
1. Paris Convention for the Protection of Industrial Property: The
Paris Convention is an international treaty that provides a
framework for the protection of intellectual property, including
patents, trademarks, and industrial designs. The treaty sets out
minimum standards for patent protection and enforcement, and
establishes a system for recognizing and enforcing patent rights
across different countries.

2. Patent Cooperation Treaty (PCT): The PCT is an international

treaty that provides a unified procedure for filing patent
applications in multiple countries. Under the PCT, inventors can
file a single international patent application, which is then
processed by a central authority and submitted for examination in
individual countries.
 3. Trade-Related Aspects of Intellectual Property Rights (TRIPS):
TRIPS is an agreement administered by the World Trade
Organization (WTO) that sets out minimum standards for the
protection and enforcement of intellectual property rights,
including patents. The agreement requires member countries to
provide a minimum level of patent protection and enforcement,
and establishes a system for resolving disputes related to patent
infringement and other intellectual property issues.

4. European Patent Convention (EPC): The EPC is an international

treaty that provides a unified system for the grant and enforcement
of patents in Europe. The treaty established the European Patent
Office (EPO), which is responsible for examining and granting
European patents that are valid in multiple countries.

5. Madrid Protocol: The Madrid Protocol is an international treaty

that provides a system for the registration and management of
trademarks in multiple countries. Although not specifically related
to patents, the Madrid Protocol is an important international
agreement that helps to facilitate the protection and enforcement
of intellectual property rights on a global scale.

LANDMARK JUDGEMENTS

1. Novartis AG v. Union of India (2013): This case was heard by the

Supreme Court of India and involved a challenge to the validity of
Section 3(d) of the Patent Act, which sets out criteria for determining
whether an invention is eligible for patent protection. The Supreme Court
upheld the constitutionality of Section 3(d) and ruled that Novartis'
cancer drug Glivec did not meet the requirements for patentability under
the law.
2. Merck Sharp and Dohme Corp. v. Glenmark Pharmaceuticals Ltd.
(2015): This case was heard by the High Court of Mumbai and involved a
dispute over the patent infringement of a drug used to treat diabetes. The
court held that Glenmark had infringed on Merck's patent and ordered
Glenmark to pay damages.
3. Bayer Corporation v. Union of India (2014): This case was heard by
the High Court of Mumbai and involved a challenge to the validity of
Section 84 of the Patent Act, which allows for the grant of compulsory
licenses in certain circumstances. The court held that Bayer's cancer drug
Nexavar was not available to the public at a reasonable price and granted
a compulsory license to an Indian pharmaceutical company.
4. F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2015): This case was heard
by the Delhi High Court and involved a patent infringement dispute
between two pharmaceutical companies over a drug used to treat cancer.
The court ruled in favor of Roche and held that Cipla had infringed on
Roche's patent.
5. Glenmark Pharmaceuticals Ltd. v. Galpha Laboratories Ltd. (2017):
This case was heard by the High Court of Mumbai and involved a patent
infringement dispute between two pharmaceutical companies over a drug
used to treat respiratory diseases. The court ruled in favor of Glenmark
and held that Galpha Laboratories had infringed on Glenmark's patent.
6. Ajanta Pharma Ltd. v. Theon Pharmaceuticals Ltd. (2016): This case
was heard by the High Court of Mumbai and involved a dispute over the
patent infringement of a drug used to treat erectile dysfunction. The court
ruled in favor of Ajanta Pharma and held that Theon Pharmaceuticals had
infringed on Ajanta Pharma's patent.
7. Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2018): This case
was heard by the Delhi High Court and involved a dispute over the
patentability of genetically modified cotton seeds. The court ruled in
favor of Monsanto and held that its patent on Bt cotton seeds was valid
under Indian law. However, the decision was later overturned by the
Supreme Court of India.
8. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2008): This case was heard by
the Delhi High Court and involved a patent infringement dispute between
two pharmaceutical companies over a drug used to treat respiratory
diseases. The court ruled in favor of Roche and held that Cipla had
infringed on Roche's patent. However, the decision was later overturned
by the Supreme Court of India.
9. Pfizer Products Inc. v. Rajesh Chopra and Others (2006): This case
was heard by the Delhi High Court and involved a dispute over the patent
infringement of a drug used to treat impotence. The court ruled in favor
of Pfizer and held that Rajesh Chopra and his company had infringed on
Pfizer's patent.
10. Bristol-Myers Squibb Holdings Ireland v. Delhi Network of Positive
People (2013): This case was heard by the Delhi High Court and involved
a challenge to the validity of a patent on a drug used to treat HIV/AIDS.
The court ruled in favor of Bristol-Myers Squibb and held that its patent
was valid under Indian law. However, the decision was later overturned
by the Supreme Court of India.

SUBMITTED BY: ANSH MISHRA

DESIGNATION: 1ST YEAR BA LLB STUDENT AND INTERN FOR
THE MONTH OF MAY.