PARLIAMENT OF INDIA
RAJYA SABHA THE PATENTS (SECOND AMENDMENT) BILL, 1999
REPORT OF THE JOINT COMMITTEE (PRESENTED TO THE RAJYA SABHA ON THE 19TH DECEMBER, 2001)
(LAID ON THE TABLE OF THE LOK SABHA ON THE 19TH DECEMBER, 2001)
RAJYA SABHA SECRETARYIAT, NEW DELHI
DECEMBER, 2001 / AGRAHAYANA, 1923 (SAKA) I. COMPOSITION OF THE JOINT COMMITTEE List of Members of the Joint Committee on Patents (Second Amendment) Bill, 1999
(As constituted on 22.12.99) 1. Shri T. N. Chaturvedi, Chairman Rajya Sabha
2. Dr. L. M. Singhvi
3. Shri Suresh A. Keswani
4. Dr. M. N. Das
5. Dr. Biplab Dasgupta
6. Shri. C. P. Thirunavukkarasu
7. Shri J. Chitharanjan
8. Shri. K. Kalavenkata Rao
9. Shri .Satish Pradhan
10. Shri. Fali S. Nariman Lok Sabha
11. Shri Mani Shankar Aiyar
12. Smt. Krishna Bose
13. Shri T. T. V. Dhinakaraan
14. Smt .Sheela Gautam
15. Shri Trilochan Kanungo
16. Shri Brahmanand Mandal
17. Shri Subodh Mohite
18. Shri Rupchand Pal
19. Shri S. S. Palanimanickam
20. Shri Shriniwas Patil
21. Shri Bolla Bulli Ramaiah
22. Shri Ram Sajivan
23. Shri S. Jaipal Reddy
24. Shri Rajiv Pratap Rudi
25. Shri. Shyama Charan Shukla
26. Shri Shivraj Singh Chauhan
27. Shri Kirit Somaiya
28. Shri Kharabela Swain
29. Shri Ravi Prakash Verma
30. Shri Murasoli Maran II. COMPOSITION OF THE GROUP OF THE JOINT COMMITTEE List of Group of the Joint Committee on Patent (Second Amendment) Bill, 1999 1. Shri Kirit Somaiya --- Convenor Rajya Sabha
2. Dr. l. M. Singhavi
3. Shri Suresh A. Keswani
4. Dr. Biplap Dasgupta
5. Shri J. Chitharanjan
6. Shri Fali S. Nariman Lok Sabha
7. Shri Mani Shankar Aiyar
8. Shri Subodh Mohite
9 Shri Rupchand Pal
10 Shri S. Jaipal Reddy
11. Shri Shyama Charan Shukla
12. Shri Kharabela Swain
13. Shri Ravi Prakash Verma
14. Shri Trilochan Kanungo III. REPORT OF THE JOINT COMMITTEE REPORT OF THE JOINT COMMITTEE I, the Chairman of the Joint Committee on the Patents (Second Amendment) Bill, 1999, to which the 'Bill further to amend the Patents Act, 1970 was referred, having been authorised by the Joint Committee to submit the Report on its behalf, present this Report of the Committee with the Bill, as amended by the Committee, annexed thereto. 2. The Bill was introduced in the Rajya Sabha on the 20th December, 1999. The Motion for reference of the Bill to a Joint Committee of the Houses was moved in the Rajya Sabha by Dr, Raman, Minister of State in the Ministry of Commerce and Industry, on the 21st December, 1999 and was adopted by the House on the same day. (Appendix) 3. The Motion was transmitted to the Lok Sabha on the 22nd December, 1999- The Lok Sabha concurred with the Motion on the same day and the message from the Lok Sabha was reported to the Rajya Sabha on the 22nd December, 1999 (Appendix--). 4. The Committee held 39 meeting, of these 33 were held at New Delhi and three each at Mumbai (on 22nd to 24th May, 2000) and at Calcutta (on 15th to 17th June, 2000), with the permission of the Chairman, Rajya Sabha. The Committee also held discussions with some experts in the field. 5. At its first meeting held on the 27th January, 2000, the Committee decided to issue a Press communiqué inviting memoranda from various individuals, organisations and institutions interested in the subjected matter of the Bill by the 15th February, 2000. A Press Communiqué was accordingly issued on the 28th January, 200. Later the date was extended by the Committee upto the 29th February, 2000, through another Press Communiqué (Appendices-------). 6. 41 memoranda containing views, comments and suggestions on the provisions and various aspects of the Bill were received by the Committee from various individuals, organisations and institutions (Appendix-------). 7. The Chairman requested Members of the Committee to suggest the name of individuals, organisations and institutions to be invited to give oral evidence before the Committee. 8. The Committee authorised the Chairman to decide, after going through the Memoranda to be received, about the individuals, organisations and institutions to be invited for tendering oral evidence before the Committee. 9. The Committee heard the oral evidence tendered by 43 witnesses (Appendix--) Besides, 19 individuals/organisations etc. also made submissions before the Committee. 10. The Committee also visited Patents Offices at Mumbai and Calcutta. 11. The Committee was to present its Report to the Houses by the 1st day of the last week of the Hundred and Eighty-Ninth Session of the Rajya Sabha. The Committee was, however, granted six extensions of time i.e., up to the last day of the Hundred and Ninety-Fourth Session; up to last day of the first week of the Hundred Ninetieth Session; up to the last day of the first week of Hundred and Ninety First Sessions; up to the first day of the Second phase of the Budget Session, i.e., Hundred Ninety Second Session; up to the last week of the 193rd Session; up to the last day of the second week of the Hundred Ninety Fourth Session; and by the last day of the Hundred Ninety Fourth Session of Rajya Sabha. 12. The Committee undertook preliminary consideration of various clauses of the Bill. At its meeting held on September 26, 2001, the Committee decided to constitute a Group (Appendix----) to go into certain issues related to the Bill. The Group held eight meetings, wherein it held extensive deliberations and also heard crucial evidence on the subject. The suggestions made by the Group were considered by the Committee during formal clause-by-clause consideration of the Bill. 13. The Committee decided that a set each of the evidence recorded and the memoranda received from various individuals, organisations and institutions be placed in the Parliament Library, after the Report was presented to the House, for reference by Members of Parliament. 14. The committee considered the draft Report as its meetings held on the 27th November and 14th December, 2001, and adopted the same as its meeting held on the 14th December, 2001, with some changes. 15. The changes suggested by the Committee in the Bill and the reasons therefor the set out in the succeeding paragraphs of this Report. Clause 3 This clause seeks to amend section 2 of the Patent Act, 1970 relating to definitions and interpretations. Clause 3(ac) seeks to add a new definitions of "capable of industrial application". Member were of the view that the words "in any kind of industry" may be substituted by "in an industry", being more appropriate from the drafting point of view.
Clause (oa) has been made more specific by deletion of some words which had become superfluous. Clause 4 This clause seeks to amend section 3 of the principal Act which relates to inventions not patentable. It proposes to modify some of the provisions in respect of non-patentable subject matter and to include some additional matters as non-patentable under the category of non-patentable subject matter.
In sub-clause 4(a), the word "law" has been substituted by the word "public order". This amendment has been proposed because certain commodities like cigarettes, etc. are sometimes prohibited for use and/or sale, but in the manufacture is not stopped. To serve the purpose of their manufacture, future use, etc., subject to patent right, the grant of patent is necessary. Hence, the amendment.
In sub-clause (e), the word "other than micro organisms" have been proposed to be sifted to make the draft more clear and unequivocal.
In the new proposed clause (k) the words "per se" have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose.
A new clause (p) has been added to protect the country's traditional knowledge from being patented. Clause 6 This clause seeks to insert a new provision in section 7 of the principal Act which relates to form of application. It proposes that an international application, when filed designating India, shall be treated as an application under the Act. The amendment in this clause had been made to provide for a procedural requirement so that he Controller in India may be aware of the content's of an application for patent, filed at international level, to facilitate further proceeding for processing of applications for patent in India. Clause 7 By sub-clause (b), sub-section (2) of the section 8 is proposed to be substituted by a provision for receiving information relating to processing of corresponding application outside India from the applicant, within one month, under the direction of Controller or within such period as the Controller may permit. The amendment in this sub-clause has been made in view of the fact that details of applications sometimes vary from case to case. It may not be possible to comprehend all the details in the legislation. It is, therefore, intended to leave it on the executive to prescribe the details by framing rules. Clause 8 By this clause some new provisions are proposed to be included under section 10, which relate to contents of application, to make furnishing of abstract of invention as mandatory for making deposit of biological material mentioned in the specifications, with the authorized depository institution, and for disclosing the source and geographical origin of the biological material used in the invention.
The amendment in sub-clause (a) has been with a view to keep the national and foreign applicants for patent on equal footing. The other amendment is correction of a grammatical error.
The other amendment is correction of a grammatical error. Clause 9 This clause seeks to include a system of publication of applications after 18 months of the priority date and a system of examination on request only. The amendment in this clause has been to make the provision more comprehensive. Further, a new sub-section 2(b) of section 11(B) has been inserted in view of the mail box applications for parents, which cannot be taken up for examination under the existing provisions. It is, therefore, necessary to provide for a time limit, whenever they are taken up for examination. The other amendments are of drafting nature only. Clause 10 This clause proposes to amend section 12 of the Act, relating to examination of an application, to the effect that the application is to be referred by the Controller to an examiner for examination only after a request for such examination is received. This clause has been amended by insertion of the word 'specification', since specification is an important document to be examined, for grant of patent. Clause 13 This clause proposes to amend section 17 as consequential to introduction of the new provision of section 15 by clause 12. The amendment in this clause has been made to include the term "any other document", in sub-section (2) of section 17 of the principal Act, and the section has been re-worded. This change is consequential to amendment of clause 10. Clause 14 This clause proposes to amend section 21 of the Act, relating to the time for putting application in order for acceptance. By this clause the time limit for putting up an application for patent in order for acceptance has been proposed to be reduced to twelve months (with no further extension).
The amendments in this clause are consequential to clause 10 and are of drafting nature, respectively. Clause 17 This clause seeks to amend section 25 of the Act, to incorporate two additional grounds for opposition to grant of a patent. The amendments to this clause are drafting improvements. New Clause 20 Members were of the view that the provisions contained in section 39 of the principal Act, which were deleted by the Patents (Amendment) Act, 1999, may be reintroduced, so as to prevent flow of sensitive information relating to country's security, outside India. New Clause 21 This clause incorporates amendment to Section 40 of the principal Act. This change is consequential to insertion of a new clause 20. Clause 22
(Re-numbered as Clause 24) This clause seeks to substitute section 48 of the principal Act, making a provision to the effect that the right of a patentee on product patent is extended to prevent importation and in respect of process patent, the right is extended to sell and import the product directly obtained by the process, provided that the product itself is patentable.
The amendments to this clause have been made to provide protection to the existing patents and by inserting a more appropriate word. Clause 24
(Re-numbered as Clause 26) This clause seeks to amend section 53 of the principal Act, relating to the term of patent, laying down a uniform term of 20 years for every patent granted under the Act, from the date of filing of application for such patent.
The amendment to this clause has been made to provide the same protection to the patent, existing as on a particular date. Clause 25
(Re-numbered as Clause 27) This clause proposes amendment of section 57 of the Act, relating to amendment of application and specification, to incorporate provision for amendment of other documents related therewith. The amendment to this clause has been made to provide the requisite discretion to the Controller to advertise, in the Official Gazette, the amendment proposed and the nature of such amendment, after acceptance of the complete specification by him. Clause 26
(Re-numbered as Clause 28) This clause seeks to amend section 59 of the Act, which provide supplementary provisions for amendment of application and specification, so as to allow amendment for incorporation of actual facts also, to be included in the said supplementary provision. This amendment is consequential to amendment of clause 10. Clause 27
(Re-numbered as Clause 29) This clause proposes to amend section 60 of the principal Act, relating to restoration of lapsed patent. The amendment to this clause is correction of typographical error. Clause 28
(Re-numbered as Clause 30) This clause proposes to amend section 64of the principal Act which relates to revocation of patents and proposes to incorporate two additional grounds for revocation of patents. The Amendment to this clause is consequential to insertion of a new clause 20. The other amendment is a drafting improvement. Clause 30
(Re-numbered as Clause 32) This clause seeks to amend section 68 of the principal Act, relating to registration of the documents like assignments, etc. to do away with the rigidity to make registration within a maximum period of one year from the date of execution of the documents. Status quo ante has been retained with the omission of the words which are not relevant. Clause 31
(Re-named as Clause 33) This clause proposes to amend section 72 of the principal Act, relating to register of patent to be open for public inspection. The amendment to this clause is correction of a typographical error. New Clause 34 This new clause has been inserted in view of replacement of the Trade and Merchandise Marks Act, 1958 by the Trade Marks Act, 1999. Clause 35 to 46 These clauses have been omitted and a new clause 38, substituting the Chapter-XVI has been inserted. This amendments has been made to make provisions relating to working of patents, compulsory licences, etc., more conducive so as to take care of the country's public health requirements. Clause 47
(Re-numbered as Clause 39) This clause proposes to omit sub-section (2) of section 99 relating to the Patents granted under the Patents and Designs Act, 1911, which has become redundant. The Amendment to this clause is correction of a typographical error. Clause 48
(Re-numbered as Clause 40) This clause proposes amendment of section 100 of the Act, relating to power of Central Government to use invention for the purpose of Government. Sub-clause (a) has been amended so as to retain the proviso to sub-section (3) of section 100 of the principal Act, by rewording the same, so as to provide for greater flexibility in the payment of remuneration in cases of Government use of patented inventions. Clause 50
(Re-numbered as Clause 42) This clause seeks to insert a new section 104A in the Act, relating to burden of proof in case of infringement suits, proposing that in the case of infringement of process patent, the burden of proof in proving that the patent is not infringed shall, in the specified circumstances, be on the alleged infringer. The clause has been amended, so as to provide that in a given circumstance, the burden of proof shall be on the alleged infringer, when the courts so desire. Clause 51
(Re-numbered as Clause 43) This clause seeks to insert a new section 107-A in the principal Act, relating to certain acts which are not to be considered as infringement. This provision has been made to ensure prompt availability of products, particularly generic drugs, immediately after expiry of the term of the patent. The amendment in this clause has been made to make a provision in consonance with the Bolar provisions at the global level. The other amendment in this clause is correction of a typographical error. Clause 52
(Re-numbered as Clause 44) This clause proposes to amend section 108 of the principal Act, relating to reliefs in suits for infringement by giving powers to courts for destruction of infringing goods and implements used for production of the said goods. Members were of the view that it may not always be just and equitable to destroy the patented articles or the national assests to serve this purpose. Hence, this clause has been reworded. Clause 52
(Re-numbered as Clause 46) This clause seeks to substitute Chapter XIX of the Act with a new chapter with the heading "Appeals to the Appeallate Board". Sub-section (2) of the new section 117 A of the principal Act has been amended, consequent upon insertion of new Chapter-XVI.
Sub-section (4) of the same section has been amended so as to make the decisions of the Central Government appealable.
The amendment in the new section 117C is correction of a typographical error. The Amendment in sub-section (2) of the new section 117E has been made to confer upon the Controller the discretion when, instead of personal appearance before the Appeallate Board, he chooses to submit a statement, to decide which particulars relating to the manner in issue would be necessary to be given in the statement. New Clause 47 A provision has been made vide new section 117H, giving powers to the Appeallate Board to make rules in respect of all proceedings before it.
A provision has also made vide new clause 47 incorporating amendment to Section 118 of the principal Act. This change is consequential to insertion of new clause 20. Clause 59
(Re-numbered as Clause 52) This clause proposes amendment of section 126 of the principal Act, relating to qualification for registration as a patent agent. The amendment to this clause is formal in nature, consequential to amendment of clause 1. Clause 69
(Re-numbered as Clause 62) This clause proposes amendment of section 157A of the principal Act, relating to protection of the security of India, by proposing that the Central Government can take any section, including revocation of a patent in the interest of the security of India under clause (6) of this section, by issuing a notification in Official Gazette. This clause has been amended to widen the ambit of the security of India. Clause 70
(Re-numbered as Clauses 63) This clause seeks to amend sub-section (2() of the section 159 of the principal Act, relating to rule making powers of the Central Government, by enumerating some additional matters in respect of rule making powers, consequential to other amendments proposed in the Act. The amendment to this clause is consequential to amendment of section 8 of the principal Act by clause 7. Enacting Formula and Clause I Amendment made in enacting Formula and Clause I are of formal nature necessitated due to passage of time.
16. All the other modifications not enumerated in the foregoing paragraphs are either of consequential or of drafting nature. 17. The Committee, at all stages of its consideration of the Bill, has been motivated by an abiding concern to balance and calibrate intellectual property protection with national and public interest requirements/concerns. Accordingly, the Committee has provided for effective flexibilities in the proposed legislation to enable an appropriate, timely and efficient response to national and public interest requirements/concerns, especially those relating to public health and nutrition. The Committee recommend that Government should accord similarly high priority to such concerns in all its IP-related policies and strategies. The development of a fully modernized and efficient IP administration of international standards should also form a part of such initiatives. 18. The Committee recommended that the Bill, as amended, be passed. NEW DELHI T. N. Charuvedi
December 14, 2001 Chairman
Joint Committee on Patents
(Second Amendment) Bill,1999. ------------------- IV. BILL AS REPORTED BY THE JOINT COMMITTEE THE PATENTS (SECOND AMENDMENT) BILL, 1999 REPORT OF THE JOINT COMMITTEE
(AS REPORTED BY THE JOINT COMMITTEE) A BILL
further to amend the Patents Act, 1970. BE it enacted by Parliament in the Fifty-second Year of the Republic of India as follows :- 1. (1) This Act may be called the Patents (Amendment) Act, 2001. (Short title and commencement) (2) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint; and different dates may be appointed for different provisions of this Act and any reference in any such provisions to the commencement of this Act shall be construed as a reference to the coming into force of that provision. 2. In the Patents Act, 1970 (hereinafter referred to as the principal Act), for the words "High Court" wherever they occur in sections 21, 43 and 71 and the word "Court" occurring in sections 21 and 71, the words "Appellate Board" and "Board" shall respectively be substituted.
(Substitution of certain words for the words "High Court" and "Court") (39 of 1970) 3. In section 2 of the principal Act, in sub-section (I),-(Amendment of section 2.) (a) for clause (a), the following clauses shall be substituted, namely:-
"(a) "Appellate Board" means the Appellate Board referred to in section 116;
(ab) "assignee" includes an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person;
(ac) "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry; (b) for clause (d), the following clause shall be substituted, namely:-
'(d) "convention country" means a country or a country which is member of a group of countries or a union of countries or an Inter government organisation notified as such under sub-section (I) of section 133; (c) for clause (g), the following clause shall be substituted, namely:-
'(g) "food" means any article of nourishment for human consumption and also includes any substance intended for the use of infants, invalid or convalescents as an article of food or drink'; (d) in clause (i),-
(i) in sub-clause (i), for the words "Union territory of Delhi", the words "National Capital Territory of Delhi" shall be substituted, namely:-
(ii) for sub-clause (ii), the following sub-clause shall be substituted, namely:-
"(ii) in relation to the State of Arunachal Pradesh and the State of Mizoram, the Gauhati High Court (the High Court of Assam, Nagaland, Meghalaya, Munipur, Tripura, Mizoram and Arunachal Pradesh);";
(iii) in sub-clause (v), for the words, "Union territory of Goa, Daman and Diu", the words "State of Goa, the Union territory of Daman and Diu" shall be substituted; (e) after clause (i), the following clause shall be inserted, namely
"(2) At any time after an application for patient is filed in India and till the grant of patent or refusal to grant of patent is made thereon, the Controller may also require the applicant to furnish details as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish information available to him to the Controller within thirty days from the date of receipt of the communication requiring such furnishing of information or within such further period as the Controller may, for good and sufficient reasons, allow". 8. In section 10 of the principal Act,- (a) in sub-section (4), after clause (c), the following clause shall be inserted, namely:-
"(d) be a accompanied by an abstract to provide technical information on the invention:
Provided that-
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an authorised depository institution as may be notified by the Central Government in the Official Gazette and by fulfilling the following conditions, namely:-
(A) the deposit of the material shall be made not later than the date of the patent application in India***;
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application for patent in India or if a priority is claimed after the date of the priority;
(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention."; (b) after sub-section (4), the following sub-section shall be inserted, namely:-
:4(A) In case of an international application designating India,-
(i) the title, description, drawing, abstracts and claims filed with the application shall be taken as the complete specification for the purposes of this Act; and
(ii) the filing date of the application and its complete specification, proposed by the patent office as designated office or elected office, shall be the international filing date accorded under the Patent Cooperation Treaty."; (c) for sub-section (5), the following sub-section shall be substituted, namely:-
"(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions, linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.". 9. In Chapter IV of the principal Act,-
(Amendment of Chapter IV)
(a) for the Chapter heading "EXAMINATION OF APPLICATIONS", the following Chapter heading shall be substituted, namely:-
"PUBLICATION AND EXAMINATION OF APPLICATIONS";
(b) before section 12, of the following sections shall be inserted namely:-
"11A. (1) Applications for patents shall not be open to the public for a period of eighteen months *** from the date of filing or date of priority, whichever is earlier.
(Publication of applications.)
(2) Except when a secrecy direction is given under section 35, every application for a patent shall, on the expiry of the period as specified in sub-section (I), be published.
(3) The publication of every application for a patent shall be notified in the Official Gazette.
(4) In case a secrecy direction has been given in respect of an application under section 35, then, it shall be published after the expiry of the period of eighteen months or when the secrecy direction has ceased to operate, whichever is later.
(5) The publication of every application under this section shall include the particulars of the date of application, number of application, name and address of the applicant identifying the application and an abstract.
(6) Upon publication of an application for a patent under this section-
(a) the depository institution shall make the biological material mentioned in the specification available to the public;
(b) the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public; 11B. (1) No application for a patent shall be required to be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within forty-eight months from the date of filing of the application for patent.
(Request for examination)
(2) In case of an application field before the commencement of the patents (Amendment) Act, 2001, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from the date of such commencement or within forty-eight months from the date of the application, whichever is later.
(3) in case of an application in respect of a claim for a patent covered under sub-section (2) of section 5, a request in the prescribed manner for examination shall be made by the applicant or any other interested person within a period of twelve months from 31st day of December, 2004 or within forty-eight months from the date of the application, whichever is later.
(4) In case the applicant or any interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (2) or sub-section (3), the application shall be treated as withdrawn by the applicant: Provided that-
(i) the applicant may, at any time after the filing of the application but before the grant of the patent, withdraw the application made by him; and
(ii) in a case where a secrecy direction has been issued under section 35, the request for examination may be made within forty-eight months from the date of revocation of the secrecy direction.". 10. In section 12 of the principal Act,-
(Amendment of section 12)
(a) in sub-section (1),-
(i) for the words "When the complete specification has been filed in respect of an application for a patent, the application and specification relating thereto", the words, brackets, figures and letter "When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub-section (2) or sub-section (3) of section 11B, the application and specification and other documents related thereto" shall be substituted;
(ii) in clause (a), for the words "specification relating thereto", the words "specification and other documents related thereto" shall be substituted. 11. In section 13 of the principal Act, in sub-section (2), the words "as the Controller may direct" shall be omitted.
(Amendment of section 13) 12. For section 15 of the principal Act, the following section shall be substituted, namely:-
(Substitution of new section for section 15) "15. Where the Controller is satisfied that the application or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may require the application specification or other document, as the case may be amended to his satisfaction before he proceeds with the application of refuse the application on failure to do so.".
(Power off Controller to refuse or require amended applications in certain cases.) 13. In section 17 of principal Act, for sub-section (2), the following sub-section shall be substituted, namely:-
(Amendment of section 17.)
"(2) Where an application or specification (including drawings) or any other document is required to be amended under section 15, the application or specification or other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant, on the date on which it is refilled after complying with the requirement.". 14. In section 21 of the principal Act,-
(Amendment of section 21)
(a) in sub-section (1) for the portion beginning with the words "fifteen months" and ending with the words "of this section", the words "twelve months from the date on which the first statement of objections to the application or complete specification or other document related thereto is forwarded to the applicant by the Controller," shall be substituted;
(b) sub-section (2) shall be omitted;
(c) in sub-section (3),-
(i) for the words brackets and figure "fifteen months specified in sub-section (1) or the extended period***", the words "twelve months" shall be substituted;
(ii) for the words :fifteen months or the extended period, as the case may be", the words "twelve months" shall be substituted. 15. In section 22 of the principal Act, in the proviso, for the words "eighteen months", the words "twelve months", the words "twelve months" shall be substituted.
(Amendment of section 22) 16. In section 23 of the principal Act, for the words "filed in pursuance thereof", the words "as accepted by the Controller along with other documents filed by the applicant in pursuance thereof" shall be substituted.
(Amendment of section 23.) 17. In section 25 of the principal Act,-
(Amendment of section 25.)
(a) in sub-section (1), after clause (i), the following clauses shall be inserted, namely:-
"(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere;";
(b) in sub-section (2), for the words "shall give", the words "may, if so desired, give" shall be substituted;
(c) sub-section (3), after the words "shall be taken of any", the words "personal document or secret trial or" shall be inserted. 18. In section 35 of the principal Act, in sub-section (1), the words "to any person or class of persons specified in the directions" shall be omitted
(Amendment of section 35.) 19. In section 36 of the principal Act, in sub-section (1), the following sub-section shall be substituted, namely:-
(Amendment of section 36.)
"(1) The question whether an invention in respect of which directions have been given under section 35 continuous to be relevant for defence purposes shall be reconsidered by the Central Government at intervals of twelve months or on a request made by the applicant which is found to be reasonably by the Controller and if, on such reconsideration it appears to the Central Government that the publication of the invention would no longer be prejudicial to the defence of India or in case of an application filed by a foreign applicant it is found that the invention is published outside India it shall forthwith give notice to the Controller to revoke the direction and the Controller shall thereupon revoke the directions previously given by him.". 20. After section 38 of the principal Act, the following section shall be inserted, namely:-
(Insertion of new section 39.)
"39. (1) No person shall, except under the authority of a written permit granted by or on behalf the Controller, make or cause to be made any application outside India for the grant of a patent for an invention relevant for defence purposes or related to atomic energy unless-
(Prohibition to apply, under certain circumstances, for patents relevant for defence purposes, etc.)
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) either no direction has been given under sub-section (1) of the section 35 in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall not grant written permission to any person to make any application outside India without the prior consent of the Central Government
(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.".
21. In section 40 of the principal Act, after the words and figures "under section 35", the words and figures "or makes or causes to be made an application for grant of a patent outside India in contravention of section 39" shall be inserted.
(Amendment of section 40.) 22. In section 43 of the principal Act, in sub-section (1),--
(Amendment of section 43.)
(a) in clause (c), the word "or" shall be inserted at end;
(b) after clause (c), the following clause shall be inserted, namely:-
"(d) the application has not been found to be in contravention of any of the provisions of this Act,". 23. In section 45 of the principal Act, for sub-section (1), the following sub-section shall be substituted, namely:-
(Amendment of section 45.)
"(1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.". 24. For section 48 of the principal Act, the following section shall be substitute, namely:-
(Substitution of new section for section 48)
"48. Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted*** under this Act shall confer upon the patentee.
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India:
(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Provided that the product obtained is not a product in respect of which no patent shall be granted under this Act.". 25. In section 50 of the principal Act, in sub-section (2), for the words "make, use, exercise and sell the patented invention", the words and figures "the right conferred by section 48" shall be substituted.
(Amendment of section 50.) 26. In section 53 of the principal Act,-
(Amendment of section 53.)
(a) for sub-section (1), the following sub-section shall be substituted, namely:-
"(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2001, and the term of every patent which has not expired and ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.";
(b) after sub-section (3), the following sub-section shall be inserted, namely:-
"(4) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent, right due to non-payment of renewal fee or on expiry of the term of patent shall be entitled to any protection.". 27. In section 57 of the principal Act,-
(Amendment of section 57.)
(a) in sub-section (1), after the word "specification" occuring at both the places, the words "or any document related thereto" shall be inserted;
(b) in sub-section (2), for the words "or a specification", the words "or a complete specification or any document related thereto" shall be substituted;
(c) for sub-section (3), the following sub-section shall be substituted, namely:-
"(3) Any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the acceptance of the complete specification and the nature of the proposed amendment may be advertised in the Official Gazette if the amendment, in the opinion of the Controller, is substantive.";
(d) in sub-section (6),-
(i) after the words "amend his specification", the words "or any document related thereto" shall be inserted;
(ii) after the word "acceptance of the complete specification", the words "along with other documents filed by the applicant" shall be inserted. 28. In section 59 of the principal Act,***-
(Amendment of section 59)
(i) for sub-section (1) the following sub-section shall be substituted namely:-
"(I) No amendment of an application for a patent or a complete specification or any document related thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.";
(ii) in sub-section (2),-
(a) for the words "complete specification, any amendment of the specification", the words "complete specification along with other documents related thereto, any amendment of the specification or any other document related thereto" shall be substituted;
(b) in clause (a), for the word "specification", the words "specification along with other documents related thereto" shall be substituted;
(c) in clause (b), for the word "specification", the words "specification or any other document related thereto" shall be substituted. 29. In section 60 of the principal Act,-
(Amendment of section 60.)
(a) in sub-section (1), for the words "one year", the words "eighteen months" shall be substituted;
(b) sub-section (2) shall be omitted. 30. In section 64 of the principal Act,-
(Amendment of section 64.)
(a) in sub-section (1),-
(i) the proviso to clause (b) shall be omitted;
(ii) the proviso to clause (e) shall be omitted;
(ii) the proviso to clause (f) shall be omitted;
(iv) in clause (n), after the words and figures "under section 35", the words and figures" or made or caused to be made an application for the grant of a patent outside India in contravention of section 39" shall be inserted;
(v) after clause (o), the following clauses shall be inserted, namely:-
"(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.";
(b) in sub-section (2), in clause (a), for the words "secret use", the words "personal document or secret trial or secret use" shall be substituted. 31. In section 67 of the principal Act, for sub-section (4), the following sub-sections shall be substituted, namely:-
"(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patents or any part thereof in computer floppies, diskettes or any electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872, a copy of, or extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other electronic form,-
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed to include references to the keeping of record of those particulars comprising the register or part of the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references to the rectification of the record of particulars kept in computer floppies, diskettes or any other electronic form and comprising the register or part of the register.". 32. In section 68 of the principal Act, for the words "the Controller within six months from the commencement of this Act or the execution of the document, whichever is later or within such further period***", the words "the Controller within six months from the execution of the document or within such further period" shall be substituted.
(Amendment of section 68.) 33. In section 72 of the principal Act, after sub-section (2), the following sub-section shall be inserted, namely:-
"(3) If the record or particulars is kept in computer floppies or diskettes or in any other electronic form, sub-section (1) and (2) shall be deemed to have been complied with if the public is given access to such computer floppies, diskettes or any electronic form or printouts of such record of particulars for inspection.". 34. In section 73 of the principal Act, in sub-section (1) for the words and figures "section 4 of the Trade and Merchandise Marks Act, 1958", the words and figures "section 3 of the Trade Marks Act, 1999" shall be substituted.
(Amendment of section 73.) (43 of 1958.) (47 of 1999.) 35. In section 76 of the principal Act;
(Amendment of 76.)
(a) for the words "Central Government", the words "Central Government or Appetite Board" shall substituted;
(b) in clauses (a) and (b), the words and figures "or under the Indian Patents and Designs Act, 1911" shall respectively be omitted.
(2 of 1911.) 36. In section 78 of the principal Act, in sub-section (1), after the words "complete specifications", the words "or other documents related thereto" shall be inserted
(Amendment of section 78.) 37. In section 80 of the principal Act, the following proviso shall be inserted at the end, namely:
(Amendment of section 80.)
"Provided that the party desiring a hearing makes the request for such hearing to the Controller at least ten days in advance of the expiry of the time limit specified in respect of the proceeding.". 38. For Chapter XVI of the principal Act, the following Chapter shall be substituted, namely :-
(Substitution of new Chapter for Chapter XVI.) 'CHAPTER XVI
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION 82. In this Chapter, unless the context otherwise requires,-
(Definition of "patented articles" and "patentee".
(a) "patented article" includes any article made by patented process; and
(b) "patentee" includes an exclusive licensee. 83. Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely:-
(Genera principles applicable to working of patented inventions.)
(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article;
(c) that the protection and enforcement of patent rights contribute to the promotion of technical innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations;
(d) that patents granted do not impede protection of public health and nutrition and should act as instrument to promote public interest specially in sectors or vital importance for socio-economic and technological development of India;
(e) that patents granted do not in any way prohibit Central Government in taking measures to protect public health;
(f) that the patent right is not abused by the patentee or person deriving title or interest on patent from the patentee, and the patentee or a person deriving title or interest on patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and
(g) that patent are granted to make the benefit of the patented invention available at reasonably affordable prices to the public. 84. (1) At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely :-
(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
(b) that the patented invention is not available to the public at a reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
(2) An application under this section may be made by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price by reason of any admission made by him, whether in such a licence or otherwise or by reason of his having accepted such a licence.
(3) Every application under sub-section (1) shall contain a statement setting out the nature of the applicant's interest together with such particulars as may be prescribed and the facts upon which the application is base.
(4) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not worked in the territory of India or that the patented inventions is not available to the public at a reasonably affordable price, any order the patentee to grant a licence upon such terms as he may deem fir.
(5) Where the Controller directs the patentee to grant a licence he may as incidental thereto exercise the powers set out in section 88.
(6) In considering the application filed under this section, the Controller shall take into accounts,-
(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;
(iv) as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit:
Provided that this clause shall not be applicable in case of national emergency or other circumstances of extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-competitive practices adopted by the patentee,
(7) For the purposes of this Chapter, the reasonable requirement of the public shall be deemed not to have been satisfied-
(i) an existing trade or industry or the development thereof or the establishment of any new trade or industry in India or the trade or industry in India or the trade or industry of any person or class of persons trading or manufacturing in India is prejudiced; or
(ii) the demand for the patented article has not been met to an adequate extent or on reasonable terms; or
(iii) a market for export of the patented article manufactured in India is not being supplied or developed; or
(iv) the establishment or development of commercial activities in India is prejudiced; or
(b) if, by reason of conditions imposed by the patentee upon the grant of licences under the patent or upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of materials not protected by the patent, or the establishment or development of any trade or industry in India, is prejudiced; or
(c) if the patentee imposes a condition upon the grant of licences under the patent to provide exclusive grant back, prevention to challenges to the validity of patent or coercive package licensing, or
(d) if the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable, or
(e) if the working of the patent invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by-
(i) the patentee or persons claiming under him; or
(ii) persons directly or indirectly purchasing from him; or
(iii) other persons against whom the patentee is not taking or has not taken proceedings for infringement. 85. (1) Where, in respect of a patent, a compulsory licence has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order revoking the patent on the ground that the patented invention has not been worked in the territory of India or that reasonable requirements of the public with respect to the patented invention has not been satisfied or that the patented invention is not available to the public at a reasonably affordable price.
(Revocation of patents by the Controller for non-working)
(2) Every application under sub-section (1) shall contain such particulars as may be prescribed, the facts upon which the application is based, and, in the case of an application other than by the Central Government, shall also be set out the nature of the applicant's interest.
(3) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that patented invention has not been worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price, may make an order revoking the patent.
(4) Every application under sub-section (1) shall ordinarily be decided within one year of its being presented to the Controller. 86. (1) Where an application under section 84 or section 85, as the case may be, is made on the grounds that the patented invention has not been worked in the territory of India or on the ground mentioned in clause (d) of sub-section (7) of section 84 and the Controller is satisfied that the time which has elapsed since the sealing of the patent has for any reason been insufficient to enable the invention to be worked on a commercial scale to an adequate extent or to enable the invention to be so worked to the fullest extent that is reasonably practicable, he may, be order, adjourn the further hearing of the application for such period not exceeding twelve months in the aggregate as appear to him to be sufficient for the invention to be so worked:
(Power of Controller to adjourn applications for compulsory licences, etc, in certain cases.)
Provided that in any case where the patentee establishes that the reason why a patented invention could not be worked as aforesaid before the date of the application was due to any State or Central Act or any rule or regulation made thereunder or any order of the Government imposed otherwise than by way of a condition for the working of the invention in the territory of India or for the disposal of the patented articles or of the articles made by the process or by the use of the patented plant, machinery, or apparatus, then, the period of adjournment ordered under this sub-section shall be reckoned from the date on which the period during which the working of the invention was prevented by such Act, rule or regulation or order of Government as computed from the date of the application, expires.
(2) No adjournment under sub-section (1) shall be ordered unless the Controller is satisfied that the patentee has taken with promptitude adequate or reasonable steps to start the working of the invention in the territory of India on a commercial scale and to an adequate extent. 87. (1) Where the Controller is satisfied, upon consideration of an application under section 84, or section 85, that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the patentee and any other person appearing from the register to be interested in the patient in respect of which the application in the Official Gazette.
(Procedure for dealing with application under section 84 and 85.)
(2) The patentee or any other person desiring to oppose the application may, within such time as may be prescribed or within such further time as the Controller may on application (made either before or after the expiration of the prescribed time) allow, give to the Controller notice of opposition.
(3) Any such notice of opposition shall contain a statement setting out the ground on which the application is opposed.
(4) Where any such notice of opposition is duly given, the Controller shall notify the applicant, and shall give to the applicant and the opponent an opportunity to be heard before deciding the case. 88. (1) Where the Controller is satisfied on application made under section 84 that the manufacture, use or sale of materials not protected by the patent is prejudiced by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, he may, subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.
(Power of Controller in granting compulsory licences.)
(2) When an application under section 84 is made by a person being the holder of a licence under the patent, the Controller may, if he makes an order for the grant of a licence to the applicant, order the existing licence to be cancelled, or may, if he thinks fit, instead of making an order for the grant of a licence to the applicant, order the existing licence to be amended.
(3) Where two or more patents are held by the same patentee and an applicant for a compulsory licence establishes that the requirements of the public have not been satisfied that the applicant cannot efficiently or satisfactorily work the licence granted to him under those patents without infringing the other patents held by the patentee and if those patents involve important technical advancement of consideration economic significance in relation to the other patents, he may, be order, direct the grant of a licence in respect of the other patents also to enable the licencee to work the patent or patents in regard to which a licence is granted under section 84.
(4) Where the terms and conditions of a licence have been settled by the Controller, the licencee may, at any time after he has worked the invention on a commercial scale for a period of not less than twelve months, make an application to the Controller for the revision of the terms and conditions on the ground that the terms and conditions on the ground that the terms and conditions settled have proved to be more onerous than originally expected and that in consequence thereof the licence is unable to work the invention except at a loss:
Provided that no such application shall be entertained a second time. 89. The powers of the Controller upon an application made under section 84d shall be exercised with a view to securing the following general purposes, that is to say,-
(General purposes for granting compulsory licences.)
(a) that patented inventions are worked on a commercial scale in the territory of India without undue delay and to the fullest extent that is to say,-
(b) that the interests of any terms persons for the being working or developing an invention in the territory of India under the protection of a patent are not unfairly prejudiced. 90. (1) In settling the terms and conditions of a licence under section 84, the Controller shall endeavor to secure-
(Terms and conditions of compulsory licences.)
(i) that the royalty and other remuneration, if any, reserved to the patentee or other person beneficially entitled to the patent, is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant factors;
(ii) that the patented invention is worked to the fullest extent by the person to whom the licence is granted and with reasonably profit to him;
(iii) that the patented articles are made available to the public at reasonably affordable prices;
(iv) that the licence granted is a non-exclusive licence;
(v) that the right of the licencee is non-assignable;
(vi) that the licence is for the balance term of the patent unless a shorter term is consistent with public interest;
(vii) that the licence is granted with a predominant purpose of supplying in Indian market an din the case of semi-conductor technology, the licence granted is to work the invention for public non-commercial use and in the case, the licence granted to remedy a practice determined after judicial or administrative process to be anti-competitive, licencee shall be permitted to export the patented product.
(2) No licence granted by the Controller shall authorise the licencee to import the patented article or an substance made by a patented process from abroad where such important would, but for such authorisation, constitute an infringement of the rights of the patentee.
(3) Notwithstanding anything contained in sub-section (2), the Central Government may, if in its opinion it is necessary so to do in the public interest, direct the Controller at any time to authorise any licensee in respect of a patent to import the patented article or an article or substance made by a patented process from abroad (subject to such conditions as it considers necessary to impose relating among other matters to the royalty and other remuneration, if any, payable to the patentee, the quantum of import, the sale price of the imported article and the period of importation), and thereupon the Controller shall give effect to the directions. 91.(1) Notwithstanding anything contained in the other provisions of this Chapter, at any time after the sealing of a patent invention either as patentee or as licensee thereof, exclusive or otherwise, may apply to the Controller for the grant of a license of the first mentioned patent on the ground that he is prevented or hindered without such licence from working the other invention efficiently or to the best advantage possible.
(Licensing of related patents.)
(2) No order under sub-section (1) shall be made unless the Controller is satisfied-
(i) that the applicant is able and willing to grant, or procure the grant to the patentee and his licensees if they so desire, of a licence in respect of the other invention on reasonably terms; and
(ii) that the other invention is made a substantial contribution to the establishment or development of commercial or industrial activities in the territory of India.
(3) When the Controller is satisfied that the conditions mentioned in sub-section (1) have been establishment by the applicant, he may make an order on such terms as he thinks fit granting a licence. under the first mentioned patent and a similar order under the other patent if so request by the proprietor of the first mentioned patent or his licensee:
Provided that the licence granted by the Controller shall be non-assignment of the respective patents.
(4) The provisions of section 87, 88, 89 and 90 shall apply to licences granted under this section as they apply to licences granted under section 84. 92.(1) If the Central Government is satisfied, in respect of any patent in force in circumstances of national emergency, or in circumstances of extreme urgency or in case of public non-commercial use, that it is necessary that compulsory licences should be granted at any time after the sealing thereof to work the invention, it may make a declaration to that effect, by notification in the Official Gazette, and thereupon the following provisions shall have effect, that is to say
(Special provision for compulsory licences on notifications by Central Government)
(i) the Controller shall on application made at any time after the notification by any person interested grant to the applicant a licence under the patent on such terms and conditions as he think fit;
(ii) in setting the terms and conditions of a licences granted under this section; the Controller shall endeavour to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights.
(2) The provisions of sections 87, 88, 89 and 90 shall apply in relation to the grant of licences under this section as they apply in relation to the grant of licences under section 84. 93. Any order for the grant of a licence under this Chapter shall operate as if it were a deed granting a licence executed by the patentee and all other necessary parties embodying the terms and conditions, if any, settled by the Controller.
(Order for licence to operate as a deed between parties concerned.) 94. (1) On an application made by the patentee or any other person deriving title or interested in the patent, a compulsory licence granted under section 84 may be terminated by the Controller, if and when the circumstances that gave rise to the grant thereof no longer exist an such circumstances are unlikely to recur:
(Termination of compulsory licence.)
Provided that the holder of the compulsory licence shall have the right to object to such termination. 39. In section 99 of the principal Act sub-section (2) shall be omitted.
(Amendment of section 99.) 40. In section 100 of the principal Act,-
(Amendment of section 100.)
(a) in sub-section (3), for the proviso, the following proviso shall be substituted, namely:-
-"Provided that in case of any such use of any patent, the patentee shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the use of the patent.";
(b) in sub-section (5), for the words "unless it appears to the Government that it would be contrary to the public interests so to do", the words "except in case of national emergency or other circumstances of extreme urgency or for non-commercial use" shall be substituted;
(c) in sub-section (6), for the words "right to sell the goods", the words "right to sell, on non-commercial basis, the goods" shall be substituted. 41. In section 101 of the principal Act,-
(Amendment of section 101.)
(a) in sub-section (1),-
(i) the words, "whether before or after the commencement of this Act" shall be omitted;
(ii) the brackets and works "(including payments by way of minimum royalty)" shall be omitted.
(b) in sub-section (2), the brackets and works "(including payments by way of minimum royalty)" shall be omitted.
(c) in sub-section (3),in clause (b), the words "including payments by way of minimum royalty" shall be omitted. 42. After section 104 of the principal Act, the following section shall be inserted, namely:-
(Insertion of new section 104A.)
"104A. (1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to improve that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if,
(Burden of proof in case of suits concerning infringement.)
(a) the subject matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent form him has been unable through reasonable efforts to determine the process actually used;
Provided that the patentee or a person deriving title or interest in the patent from him, first proves that the product is identical to the product directly obtained by the patented process
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (I), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.". 43. After section 107 of the principal Act, the following section will be inserted, namely:-
(Insertion of new section 107A.)
"107A. For the purposes of this Act,-
(Certain acts not to be considered as infringement.)
(a) any act of making, constructing, using or selling a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use or sale of any product;
(b) importation of patented products by any person from a person who is duly authorised by the patentee to sell or distribute the product.
shall not be considered as an infringement of patent rights.". 44. Section 108 of the principal Act, shall be renumbered as sub-section (I) thereof, and after sub-section (I), so as to renumbered, the following sub-section shall be inserted, namely:-
(Amendment of section 108.)
"(2) The court may also order that the goods which are found to be infringing and materials and implement, the predominant use of which is in the creation of infringing good shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case, without payment of any compensation.". 45. Section 112 of the principal Act shall be omitted.
(Omission of section 112.) 46. For Chapter XIX of the principal Act, the following Chapter shall be substituted, namely:-
(Substitution of new Chapter for Chapter XIX.) CHAPTER XIX
APPEAL TO THE APPELLATE BOARD 116. (i) Subject to the provisions of this Act, the Appellate Board establishment under section 83 of the Trade Marks Act, 1999 shall be Appellate Board for the purposes of this Act and the said Appellate Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act:
(Appellate Board.)
(47 of 1999.)
Provided that the Technical Member of the Appellate Board for the purposes of this Act shall have the qualifications specified in sub-section (2).
(2) A person shall not be qualified for appointment as a Technical Member for the purposes of this Act unless he-
(a) has at least five years held the post of Controller under this Act or has exercise the functions of the Controller under this Act for at least five years; or
(b) has been for at least ten years functioned as a Registered Patent Agent and possesses a degree in engineering or technology or a masters degree in science from any University established under law for the time being in force or equivalent; or
(c) has, for at least ten years, been an advocate of a proven specialised experience in practising law relating to patent and designs.
117. (1) The Central Government shall determine the nature and categories of the officers and other employees required to assist the Appellate Board in the discharge of its functions under this Act and provide the Appellate Board with such officers and other employees at it may think fit.
(Staff of Appellate Board.)
(2) The salaries and allowances and conditions of service of the officers and other employees of the Appellate Board shall be such as may be prescribed
(3) The officers and other employees of the Appellate Board shall discharge their functions under the general superintendence of the Chairman of the Appellate Board in the manner as may be prescribed.
117A. (1) Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government, or any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.
(Appeals to Appellate Board.)
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-section (1) to (5) of section 84, section 85, section 88, section 91, section 92, and section 94.
(3) Every appeal under this section shall be in the prescribed form and shall be verified in such manner as may be prescribed and shall be accompanied by a copy of the decision, order or direction appeal against and by such fees as may be prescribed
(4) Every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government, or within such further time as the Appellate Board may, in accordance with the rules made by it allow.
117B. The provisions of sub-sections (2) to (6) of section 84, section 87, section 92, section 95, and section 96 of the Trade Marks Act, 1999 shall apply to the Appellate Board in the discharge of its functions under this Act as they apply to it in the discharge of its functions under the Trade Marks Act, 1999.
(Procedure and powers of Appellate Board)
(47 of 1999.)
117C. No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (2() of section 117A or section 117D.
(Bars of jurisdiction of courts, etc.)
117D. (1) An application for rectification of the register made to the Appellate Board under section 71 shall be in such form as may be prescribed.
(Procedure for application for rectification etc, before Appellate Board.)
(2) A certified copy of every order or judgment of the Appellate Board relating to a patent under this Act shall be communicated to the Controller by the Board and the Controller shall give effect to the Board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order. 117E. (1) The Controller shall have the right to appear and be heard-
(Appearance of Controller in legal proceedings.)
(a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration rectification of the register or in which any question relating to the practice office is raised
(b) in any appeal to the Appellate Board from an order of the Controller on an application for grant of a patent-
(i) which is not opposed, and the application is either refused by the Controller or is accepted by him subject to any amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Controller considers that his appearance is necessary in the public interest,
and the Controller shall appearance in any case if so directed by the Appellate Board.
(2) Unless the Appellate Board otherwise directs, the controller may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision given by him or of the practice of the patent office in like cases, or of other matters relevant to the issues and within his knowledge as the Controller may deem it necessary, and such statement shall be evidence in the proceeding. 117F. In all proceeding under this Act before the Appellate Board, the costs of the Controller shall be in the discretion of the Board, but the Controller shall not be ordered to pay the costs of any of the parties.
(Costs of Controller in proceedings before Appellate Board.) 117G. All cases of appeals against any order or decision of the Controller and all cases pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.
(Transfer of pending proceedings to Appellate Board.) 117H. The Appellate Board may make rules consistent with this Act so as to the conduct and procedure in respect of all proceedings before it under this Act."
(Powers if Appellate Board to make rules.) 47. In section 118 of the principal Act, after the words and figures "under section 35", the words and figures "or makes or causes to be made an application for the grant of a patent in contravention of section 39" shall be inserted.
(Amendment of section 118.) 48. In section 120 of the principal Act, for the words "five hundred rupees", the words "ten thousand rupees", shall be substituted.
(Amendment of section 120.) 49. In section 122 of the principal Act, in sub-section (1), for the words "one thousand rupees", the words "twenty thousand rupees", shall be substituted.
(Amendment of section 122.) 50. In section 123 of the principal Act,-
(Amendment of section 123.)
(a) for the words "five hundred rupees", the words "ten thousand rupees" shall be substituted.
(b) for the words "two thousand rupees", the words "forty thousand rupees" shall be substituted. 51. For section 125 of the principal Act, the following section shall be substituted, namely:-
(substitution of new section for section 125.)
"125. (1) The Controller shall maintain a register to be called the register of patent agents in which shall be entered the names, addresses and other relevant particulars, as may be prescribed, off all persons qualified to have their names so entered under section 126.
(Registered of patent agents.)
(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller to keep the register of patent agents in computer floppies, diskettes or any other electronic form subject to such safeguards as may be prescribed." 52. In section 126 of the principal Act,-
(Amendment of section 126.)
(a) in sub-section (1),-
(i) in clause (c),-
(A) for the words "degree from any University", the words "degree in science, engineering or technology from any University established under law for the time being in force" shall be substituted;
(B) in sub-clause (ii), the word "or" shall be inserted at the end;
(ii) after sub-clause (ii), the following sub-clause shall be inserted, namely:-
"(iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;";
(b) for sub-section (2), the following sub-section shall be substituted, namely:-
"(2) Notwithstanding anything contained in sub-section (1), a person who has been registered as a patent agent before the commencement of the Patents (Amendment) Act, 2001 shall be entitled to continue to be, or when require to be re-registered, as a patent agent, on payment of the fee as may be prescribed.". 53. In section 128 of the principal Act,-
(Amendment of section 128.)
(a) in sub-section (1), the words "Subject to the provisions contained in contained in sub-section (2) and to any rules made under this Act" shall be omitted;
(b) sub-section (2) shall be omitted. 54. In section 130 of the principal Act,-
(Amendment of section 130.)
(a) for the words "Central Government" wherever they occur, the word "Controller" shall be substituted;
(b) in sub-section (1), for the words "it", the word "he" shall be substituted. 55. In section 132 of the principal Act,-
(Amendment of section 132.)
(a) in clause (a), the words "or any person, not being a patent agent, who is duly authorised by the applicant" shall be omitted;
(b) in clause (b), for the words "proceedings under this Act otherwise than by way of drafting any specification", the words "hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act" shall be substituted. 56. In section 133 of the principal Act, the following explanation shall be inserted at the end, namely:-
(Amendment of section 133.)
'Explanation-For the purposes of this Chapter "country" includes a group or union of countries or Inter-government organisation.'. 57. In section 138 of the principal Act,-
(Amendment of section 138.)
(a) in sub-section (1), after the words "shall furnish", the words "when required by the Controller," shall be inserted;
(b) in sub-section (2), for the words "annexed to the specification or document", the words "furnished when required by the Controller" shall be substituted;
(c) after sub-section (3), the following sub-section shall be inserted, namely:-
"(4) An international application filed under the Patent Cooperation Treaty designating India shall have effect of filling an application for patent under section 7, section 54 and section 135, as the case may be, and the title, description, claim and abstract and drawings, if any, filed in the international application shall be taken as complete specification for the purposes of this Act.
(5) The filing date of an application for patent and its complete specification processed by the patent office as designated office shall be the international filing date accorded under the Patent cooperation Treaty.
(6) Amendment, if any, proposed by the applicant for an international application designing India or designating and electing India before international searching authority or preliminary examination authority shall, if the applicant so desires, be taken as an amendment made before the patent office.". 58. In section 140 of the principal Act,-
(Amendment of section 140.)
(a) in sub-section (1), in clause (iii), after sub-clause (c), the following sub-clause shall be inserted, namely:-
"(d) to provide exclusive grant back, prevention to challenges to validity of patent and coercive package licensing,";
(b) sub-section (5) shall be omitted. 59. In section 141 of the principal Act, in sub-section (1), the words "whether made before or after the commencement of this Act," shall be omitted.
(Amendment of section 141.) 60. In section 142 of the principal Act,
(Amendment of section 142.)
(a) for sub-section (3), the following sub-section shall be substituted, namely:-
"(3) Where a fee is payable in respect of the filing of a document at the patent office, the fee shall be paid along with the document or within the personal time and the document shall be deemed not to have been filed at the office if the fee has not been paid within such time.";
(b) in sub-section (4), the words "or within the extended period not later that nine months from the date of recording" shall be inserted at the end. 61. In section 143 of the principal Act, for the words "or be open to public inspection at any time before the date of advertisement of acceptance of the application", the words "before eighteen months from the date of application or the priority date of the application or before the same is opened to public inspection" shall be substituted.
(Amendment of section 143.) 62. In section 143 of the principal Act, the following section shall be substituted, namely:-
(Substitution of new section for section 157A.)
'157A. Notwithstanding anything contained in this Act, the Central Government shall-
(Protection of security of India.)
(a) not disclose any information relating to any patentable invention or any application relating to the grant of patent under this Act, which at consider prejudicial to the interest of the security of India;
(b) take any action including the revocation of any patent which it considers necessary in the interest of the security of India by issue of a notification in the Official Gazette to that effect.
Explanation- For the purposes of this section, the expression "security of India" includes any section necessary for the security of India which-
(i) relates to fissionable materials or the materials from which they are derived; or
(ii) relates to the traffic in arms, ammunition an implements of war and to such traffic in other goods and materials as is carried on directly or indirectly for the purposed of supplying ja military establishment; or
(iii) is taken in time of war or other emergency in international relations.". 63. In section 159 of the principal Act, in sub-section (2),-
(Amendment of section 159.)
(a) after clause (i), the following clauses shall be inserted, namely:-
"(ia) the details to be furnished by the applicant under sub-section (2) of section 8;
(ib) the manner of making the request for examination of an application for patent under sub-section (1) of section 11B;";
(b) in clause (iii), after the word "manner", the words "and time" shall be inserted;
(c) in clause (ix), after the words "patents", the word "and the safeguards to be observed in the maintenances of such register in computer floppies, diskettes or any other electronic form" shall be inserted;
(d) after clause (xii), the following clause shall be inserted, namely:-
"(xiia) the salaries and allowances and other conditions of service of the officers and other employees of the Appellate Board under sub-section (2) and the manner in which the officers and other employees of the Appellate Board shall discharge their functions under sub-section (3) of section 117;
(xiib) the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of section 117A;
(xiic) the form in which, and the particulars to be included in, the application to the Appellate Board under sub-section (1) of section 117D;";
(e) in clause (xiv), after the word "maintained", the words, brackets and figures "under sub-section (1) of section 125 and the safeguards to be observed in the maintenance of such register of patent agent on computer floppies, diskettes or any other electronic form under sub-section (2) of that section" shall be inserted. 64. Section 161 of the principal Act shall be omitted. (Omission of section 161.) 65. In section 162 of the principal Act, sub-section (2) and (3) shall be omitted. (Amendment of section 162.) |