Enforcing a patent ensures the protection of the inventor’s intellectual property rights. It gives the owner of the patent the sole authority over the manufacture and sale of the patented items. The patent grants the patentee complete ownership of the innovation. The inventor has authority over who can use the invention, how it can be used, and how much with this right. To protect his rights, an inventor must apply for the issuance of a patent to his invention. After formal considerations and procedures are finished, the inventor will be given exclusive rights.
In this article, the author has outlined all the rights and obligations of a patentee in India, a brief explanation of what is the meaning of patent in India, laws that govern patent, and a few landmark cases.
What is a patent as per Indian laws?
The term “patent”, as used under the Indian Patent Act of 1970, refers to a patent granted for a unique technique or product, including an inventive step and suitable for industrial application.
The government offers the patentee exclusive statutory protection for a specific period of time in exchange for full exposure to innovation. No one else is allowed to use, produce, and offer for sale, sell, or import the patented items since they grant the patent holder a monopoly.
If simply said, a patent in India is a legal document that identifies an invention and grants the holder the only authority to prevent anyone from creating, marketing, or disseminating it. The grant of a patent is valid for 20 years. It is given in order to foster innovation, creativity, and technological advancement.
An international patent application can be submitted by a single patent application in a number of different nations thanks to the Patent Cooperation Treaty (PCT). However, until the application is filed, the PCT of a patent is up to the individual patent office’s discretion.
The Indian Patents Act of 1970 is the main piece of legislation governing patent laws in India. It outlines three criteria upon which patents are granted:
- The product ought to serve some purpose.
- It must be a novel invention.
- The innovation must not be evident.
Patent in India is only given for brand-new innovations that have the potential to address technological issues, not only for ideas. Examples of things for which a patent may be granted include processes, systems, methods, equipment, formulations, products, uses, etc. The Indian Patents Act, of 1970 defines a number of things that cannot be patented in sections 3 and 4. These include mathematical equations, scientific ideas, elements found in nature, and surgical techniques. Patents limit the following:
- Ensure exclusivity;
- Help in commercialisation; and
- Add brand and money value to the invention.
Extracts from the Patent Act?
Following are few of the key aspects related to the Patent Act in India:
- The Indian Patents and Designs Act of 1911, which established the foundation for Indian patent law, was passed in 1911.
- The law that now oversees patents in India is the Patents Act of 1970. In 1972, it initially became operative.
- The Office of the Controller General of Patents, Designs, and Trade Marks also known as CGPDTM, administers the Indian Patent Act.
- The Patents Act has been modified numerous times. The act has been modified in the year 1999, 2002, 2005, 2006. India is the signatory member of TRIPS (also known as Trade-Related Aspects of Intellectual Property) therefore these changes were necessary to bring the Patents Act into compliance with TRIPS.
- Amendment in 2005, brought in major changes it expanded parent products to cover all areas of technology, including food, medicines, chemicals, and microorganisms, the Patent Act underwent a significant revision.
- Likewise the Patents Rules have been amendment in 2012, 2013, 2014 and 2021
Who is a Patent Holder?
The patent owner is entitled to a number of privileges, including the ability to grant licences to third parties so that they may produce and market the patented item. These rights are subject to a number of restrictions and limits and are not absolute. The steps below must be taken in order to obtain a patent for your innovation and become a legitimate patent holder.
- Invention disclosure
- Patentability search
- The applicant has to make the decision to apply for a patent
- Draft patent application
- Filing the patent application
- Request for examination
- Responding to objections
- Grant of patent
- Renewal of your patent
What are the benefits conferred upon the Patentee of a Patent?
- In India, the Patent law identifies the exclusive Rights and Obligations of Patentee to gain certain commercial advantages out of the invention invented by him/her. Such Rights and Obligations of Patentee are provided to boost the inventor to invest in the new innovative offices, and should also realize that the developments done by them will be ensured and protected by the law and hence no other person has the capacity to make a duplicate of their inventions or creations.
- Such protection is provided for a certain time period (for the most part, 20 years) amongst which the inventor will have certain selective Rights and Obligations of Patentee as per the Patent Act, 1970. When a patent comes in all reality, certain exploitative Rights and Obligations of Patentee are presented as an incentive for the revelation of the creation or invention of the Patentee to people at large.
- These controlling Rights and Obligations of Patentee are, generally, for a time period of 20 years and are also assignable, thus enabling the Patentee of the Patent to get a license for the invention and maximize the profit associated with such an invention.
As per Article 284 of the TRIPS (Trade-Related Aspects of Intellectual Property Rights), Agreement provides the following Rights and Obligations of Patentee:
- A registered Patent should confer the following exclusive Rights on its owner:
- where the Patent’s subject matter is a product, to prevent any third parties, which is also not having the consent of the owner, from the following acts of using, making, offering for selling, sale, or importing for these purposes such product of the owner;
- where the Patent’s subject matter is a process, to prevent any third parties, which is also not having the consent of the owner, from the following acts of using, making, offering for selling, sale, or importing for these purposes at least the product that is obtained directly by such a process.
- The owner of the Patent should also have the right to transfer by succession or assign the Patent and to conclude the licensing contracts.
What are the Rights of Patentee as per the Patent Act, 1970?
A grant of Patent in India gives the Patentee the exclusive model to utilize or make the patented invention or utilize the patented procedure related to the invention. Certain Rights and Obligations of Patentee are enshrined under the Patent Act, 1970. The various kinds of Rights of Patentee are as follows:
- When a product is the subject of the patent, to prevent third parties without the owner’s consent from making, using, offering for sale, selling, or importing that product for these purposes;
- When a process is the subject of the patent, to prevent third parties without the owner’s consent from using the process and from using, offering for sale, selling, or importing it for these purposes.
- Additionally, patent owners will be permitted to licence their patents and to assign their patents or transfer them by succession.
As per Indian laws, the owner of a patent in India has the following exclusive rights:
The elaborated Rights of Patentee in India are as follows:
Right to exploit the patent
In India, the patent holder is granted the right to use, market, create, and distribute the protected goods. If the invention relates to a manufacturing process, the patent holder retains the right to teach the method to a third party. Furthermore, the patent holder’s attorney is authorised to enforce this claim.
If a new innovation is a commodity, the patent holder is awarded exclusive rights in India to produce, market, and use the innovation for specified purposes. If, on the other hand, innovation relates to the production of a substance or an object, the right to exploit includes the exclusive right to employ the manufacturing method or system within India’s borders.
Indian patent law takes into account a patentee’s exclusive ability to pursue commercial profits from the innovation. It encourages creators to pursue their creative activities because they know their ideas will be legally protected and that no one else will be able to reproduce them for a fixed period of time (usually 20 years).
This right can be enforced by the patent holder’s agent.
Right to assign and license
The owner of a patent may delegate or grant licences to third parties for the purpose of producing and distributing the protected goods. When there are many patent holders for a patented product, all patent holders must agree to grant a licence to a third party as a group. The licence is deemed to be issued only once the administrator has correctly authorised the request. To be valid and lawful, the assignment or licence must be in writing and lodged with the Patent Authority.
Right to surrender the patent
The patent holder has the power to abandon the patent after appropriately asking for authorisation from the controllers. The Controller then publishes this relinquishing in line with the provisions of the Indian Patent Act. Parties interested in acquiring patent ownership may contact the Controller directly. The Controller then evaluates the claims of the parties and transfers ownership. The transfer occurs only if the patent holder is willing to relinquish the patent.
The patentee has the ability to surrender a patent at any time and at their own discretion by submitting notification in a specific manner. This entails publishing advertisements in publications requesting that the patent be surrendered.
Right before sealing
Accord Section 24 of the Indian Patents Act, a patent is protected from the date of the notification for approval to the date of the notification’s adoption. The patentee’s entitlement is relevant following the presentation of the notification for acceptance.
Right to apply for the patent of addition
.Sections 54 through 56 of the Patents Act of 1970 contain this clause. The provision allows for modifications to the existing invention. In these circumstances, the patent holder is granted the right to the enhanced innovation as soon as the notification of approval is made public. Upon presentation of the notification, the owner is accorded the same rights as those of the earlier patent.
Right in case of infringement
The term “patent infringement” refers to any breach of a patent holder’s rights. To have any rights violations rectified, a patentee may submit a case to either a lower or higher court. If the defendant is found guilty of infringing, the Court may order compensation or a long-term order.
Patentees have obligations after the patent and associated rights are issued. In the next part, we will go through all of the conditions that any patent holder in India must meet.
Read our article:Specification of Patent in India: A Complete Outlook
Limitation of Patent Rights
Following points covers all the limitation that are imposed on patent holder in India:
Restriction on private and non-commercial use
The patent holder is prohibited from using the innovation for personal gain or claiming a monopoly over commercial activities under this restriction. If the government believes that the patent holder is not profiting from the patented invention, it may award a forced licence to a third party. Sections 84 and 92 of the Patents Act talk about compulsory licencing. It can be used when the patented object is not reasonably priced for the general public. This is commonly done in the case of pharmaceutical medications. Section 85 of the Patents Act has another provision dealing with the limitations on private and commercial use. It allows the Controller to revoke patents if they are not used.
Exception of experimental/scientific use
Sub-section 3 of Section 47 of the legislation specifies this restriction.
This exception states that the patented process/product may be utilised by anybody for the purpose of conducting scientific experiments or conducting research. This provision was necessary to protect people doing ‘legitimate’ research and experiments. It allows third parties to do research on patented material without fear of being accused of infringing on the patent holder’s rights.
While granting patent rights to patentees encourages new inventions, it also leads to monopolies and private use of protected products. Section 107 A was added to the Indian Patents Amendment Act of 2005, in response to this fear. This provision exempts generic drug producers from using the patented product to extract information, allowing them to seek marketing permission outside the country. This is often referred to as bolar provision. However, producers can only use, manufacture, and sell the goods after the patented product’s expiry date, which is 14 years from the date of submitting the patent application.
Exhaustion of patent rights
This provision states that once the patented product is sold in the market, the inventor’s patent rights are exhausted. Under this constraint, the patent holder loses control of the product after the invention’s first unrestricted sale. The justification for enacting this restriction was that once the patent holder sold his innovation in the market, the objective of issuing a patent for the specific product would be negated. This indicates that the patent holder has granted another person the right to make, use, and sell the patented invention, so forfeiting his own exclusive rights.
Symed Labs v. Glenmark Pharmaceuticals
Symed Labs filed this complaint against Glenmark Pharmaceuticals for patent infringement on two of its patents. In this instance, the Court determined that there was prima facie evidence against Glenmark of misusing Symed’s patented items for manufacturing and market sale. Symed has suffered irreparable loss as a result of this usage. As a result, the Court issued an interim injunction prohibiting Glenmark from selling the patented goods. The Court also determined that in this case, paying damages would not be sufficient to compensate the plaintiff for his loss. As a result, protecting the patented procedure was unavoidable in order to secure Symed’s patent rights.
Vringo v. ZTE case
Vringo filed this complaint in the Delhi High Court against ZTE for allegedly infringing on its patent rights. The Court issued an injunction prohibiting ZTE from manufacturing and using the patented product. ZTE, for its part, questioned the patentability and inventiveness of Vringo’s product patent. As a result, the Court established a committee to investigate the product’s patentability. This case demonstrated that the patentability of a product can be called into question even after the patent has been issued. This also meant that simply granting a patent did not release the patent holder from liabilities. Once the patent is enforced, its validity can be called into doubt.
Bayer Corporation v. Union of India
Natco Pharma Ltd. received India’s first compulsory licence in the public interest from the Indian Patent Office. The licence was awarded for the manufacture of Nexavar, a medicine initially manufactured by Bayer Corporation. Certain restrictions were imposed on the drug’s production. The product could only be manufactured within Natco Pharma Ltd.’s premises, and it could not be exported. Bayer Corporation appealed to the Court. The Court found in this case that the issue of the obligatory licence was legitimate since it was necessary for the public interest and was made available at a low cost.
Maj. Sukesh Behl and Anr. v Kononklijke Philips case
Sukesh Behl filed a counterclaim for revoking the complaint against Kononklijke under Section 64(1)(m) of the Indian Patents Act. In the initial case, Koninklijke sued Sukesh Behl for patent infringement and sought a permanent injunction against Koninklijke Philips. Finally, the Court determined that Kononklijke had failed to comply with the standards outlined in Section 8 of the Indian Patents Act and would thus be held accountable under Section 64(1)(m) of the Act.
What are the Obligations of Patentee as per the Patent Act, 1970?
Once a Patent is granted to a Patentee, there are certain Rights and Obligations of Patentee. The Obligations of Patentee are as follows:
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.
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.
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.
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.
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.
Patent in India can give people and businesses with significant value and higher returns on their investment in developing innovative technologies. Patenting should be done with an educated strategy that connects company interests with a wide variety of possibilities in the search for how, where, and when to patent.
In order to preserve and market their invention, the patent holder is granted several rights. However, this does not prevent the criminal from infringing on patents. In India, there have been numerous court proceedings on copyright and trademark breaches that are more than just patency litigations. Patent infringement can only be reduced if new rights rules are enacted and old ones are modified to reflect changing circumstances. Patentees have the sole right to pursue cases against all types of infringements, which encourages creativity and production.
Frequently Asked Questions
The Patents Act of 1970 provided relatively limited protection, with the main criteria of innovation being new, useful, and method of manufacture. In relation to an invention, the Act defines ‘capable of industrial application’ as something capable of being created or used in industry.
Utility patents, design patents, and plant patents are the three different sorts of patents. Utility patents safeguard a composition’s, machines, or process’s functionality.
A patentee is an individual who creates a new product, an enhancement to an existing product, or a brand-new method of manufacturing an existing product.
This can be done by diligently paying the 20-year patent renewal payments during the entire 20-year patent period. The renewal fees are paid to the Indian Patent Office prior to the expiration of the corresponding year. However, no patent is truly permanent and eventually expires.
The (Indian) Patents Act, of 1970 states that the only type of legal action that may be filed in a court of law is a civil one. A lawsuit for infringement may also be denied for a variety of reasons, including those that bar India from granting patents, and the patent may therefore be cancelled as a result.
Unlike innovations of new techniques, which are protected by patents, with the exception of design patents, original works of literature, music, art, technology, and dance are all protected by copyright.
In accordance with the law, the patentee’s rights are described in Section 48 of the Indian Patents Act. If the subject matter of the patent is a product, the clause gives the patentee the sole right to impose restrictions on the production, use, sale, and import of that product.
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