Definition of Patent under the Patents Act, 1970

Section 2(l) of the Patents Act, 1970 defines a patent as:

“Patent means the grant of exclusive rights to an invention, for a specified
period, by the Government to the patentee, which allows him to prevent others
from making, using, offering for sale, selling, or importing the invention
without his consent in India.”
Key Features:
1. Exclusive rights to the inventor.
2. Time-limited protection (20 years from filing, Section 53).
3. Territorial protection (valid only in India).
4. Requires full disclosure of the invention.
Purpose:
 Encourage innovation.
 Protect the inventor’s commercial interest.
 Disseminate technical knowledge to the public.
Examples of Patents in India:
1. Pharmaceuticals: Novartis’ Glivec – patented as a cancer drug (later
rejected in India for minor modifications, preventing “evergreening”).
2. Technology: Infosys’ online banking software methods patented.
3. Agriculture: Bt Cotton seeds – patented genetically modified seeds.
4. Mechanical devices: Cochlear implants patented for hearing
improvement.

2. Development of Patent Laws in India

A. Pre-Independence (Before 1947)
 Act: Indian Patents and Designs Act, 1911.
 Features:
o Product patents recognized for chemicals, machinery, and drugs.
 o Mainly benefited foreign companies.
 Example: Foreign companies like Bayer had patents on drugs during this
period.

B. Post-Independence – Patents Act, 1970

 Objective: Encourage domestic innovation; balance public interest.
 Features:
o Focused on process patents for drugs and pharmaceuticals.
o Limited foreign monopoly.
 Examples:
o Indian companies like Cipla manufactured generic drugs using
alternative processes for HIV/AIDS and cancer treatment.
 Impact: Affordable medicines and promotion of local R&D.

C. Amendments under TRIPS (1995 onwards)

 India signed the TRIPS Agreement under WTO.
 Amendments: 1999, 2002, 2005
o Allowed product patents in pharmaceuticals and chemicals from
2005.
o Stricter criteria to prevent “evergreening.”
 Examples:
o Novartis AG v. Union of India (2013) – Glivec patent rejected for
lack of inventive step.
o Bayer v. Natco Pharma (2012) – compulsory license granted to
Natco for cancer drug Nexavar to make it affordable.

. Patentable Inventions under the Patents Act, 1970

Definition of Invention
 Section 2(1)(j) of Patents Act, 1970:
“Invention means a new product or process involving an inventive step and
capable of industrial application.”
Key Criteria for Patentability (Section 2(1)(j), 3, 4):
1. Novelty (Newness):
o The invention must not have been published, used, or known
anywhere in the world before the date of filing.
o Section 2(1)(l): Defines “new invention.”
o Example: A new type of solar panel design not known in prior art.
2. Inventive Step (Non-Obviousness):
o The invention must not be obvious to a person skilled in the field.
o Must involve a technical advancement.
o Example: Modified chemical synthesis process improving yield
significantly.
3. Industrial Applicability (Usefulness):
o Must be capable of being made or used in some industry.
o Example: A machine or device that can be manufactured and used
commercially.

2. Classification of Patents
Patents can be classified based on what they protect:
A. Product Patent
 Protects a new product itself.
 Exclusive right to make, use, sell, or import the product.
 Section 48: Patentee can prevent others from making, using, selling, or
importing the product.
  Example: Pharmaceutical drugs like Glivec.
B. Process Patent
 Protects the method or process of making a product.
 Others cannot use the process to make the product without permission.
 Example: Alternative process to manufacture a drug like Cipla’s generic
process for HIV drugs.
C. Use or Improvement Patents
 Protects new use of a known product or improvement of an existing
invention.
 Must meet novelty and inventive step criteria.
 Example: Improved method of applying an existing pesticide more
effectively.
D. Design Patents / Utility Models (Related)
 In India, designs are covered under Designs Act, 2000.
 Protects aesthetic or functional aspects, not the underlying invention.
 Example: New shape of a vehicle dashboard or smartphone casing.

Non-Patentable Inventions under Section 3 & 4 of the Patents Act, 1970

Not all inventions are patentable in India. Sections 3 and 4 clearly define what
cannot be patented.

Section 3: What are not inventions

3(a) – Frivolous inventions
1. Inventions that are contrary to natural laws are not patentable.
o Example: A machine claiming to work without energy.
 2. Such claims are scientifically impossible and offer no industrial
application.
Case Law:
 Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979,
SC)
o Facts: Patent claim for a cooking utensil with alleged special
properties.
o Judgment: Court held the device lacked inventive step and was
obvious.
o Principle: Frivolous inventions without novelty are not patentable.

3(b) – Inventions contrary to public order or morality

1. If invention encourages illegal, immoral, or harmful activities, it cannot
be patented.
2. Excludes inventions causing harm to humans, animals, plants, or
environment.
Case Law:
 Dimminaco AG v. Controller of Patents (2002, Cal HC)
o Facts: Patent sought for a process of preparing live vaccine for
poultry.
o Controller rejected saying living organisms in product made it
immoral.
o Judgment: High Court allowed the patent, holding that morality
should be narrowly interpreted.
o Principle: Morality/public order bar applies only when invention
causes real harm, not when it benefits public health.

3(c) – Mere discovery of scientific principle or abstract theory

 1. Discovering a natural phenomenon, principle, or abstract theory is not an
invention.
2. Patent law requires technical application, not mere discovery.
Case Law:
 Funk Brothers Seed Co. v. Kalo Inoculant Co. (US, 1948 – persuasive)
o Facts: Mixture of naturally occurring bacteria discovered.
o Judgment: US Supreme Court rejected patent, saying natural
discoveries are not inventions.
o Principle: Discovery without human technical intervention is not
patentable.

3(d) – New form of known substance without enhanced efficacy

1. Prevents evergreening of patents (minor modifications of old drugs).
2. Patent allowed only if new form shows enhanced therapeutic efficacy.
Case Law:
 Novartis AG v. Union of India (2013, SC)
o Facts: Patent claim for Glivec (beta crystalline form of imatinib
mesylate).
o Judgment: Supreme Court rejected, as modification did not show
improved therapeutic efficacy.
o Principle: Section 3(d) is a safeguard against evergreening in
pharma sector.

3(e) – Mere admixture

1. Mixing known substances without synergistic effect is not patentable.
2. Admixture must create a new functionality.
Case Law:
 Hindustan Lever Ltd.’s Application (1996, Bombay HC)
 o Facts: Application for detergent mix rejected.
o Judgment: Held as mere admixture without synergy.
o Principle: Only synergistic combinations are patentable.

3(f) – Mere arrangement/duplication of devices

1. Simple arrangement of known devices is not an invention.
2. Unless combination produces a new working result, it is not patentable.
Example: A fan with a lamp is only an arrangement, not invention.

3(g) – Method of agriculture or horticulture

1. Methods of cultivation, farming, irrigation are excluded.
2. Protects farmers’ rights and prevents monopolies in agriculture.
Case Law:
 Nuziveedu Seeds Ltd. v. Monsanto (2018, SC)
o Facts: Monsanto claimed patent on Bt cotton seeds.
o Judgment: Court held that plant varieties/seeds fall under non-
patentable subject matter.
o Principle: Biological processes for producing plants are not
patentable.

3(h) – Processes for medical, surgical, therapeutic treatment

1. Medical methods of treating humans or animals cannot be patented.
2. However, medical devices and medicines themselves can be patented.
Case Law (Illustrative):
 State of Maharashtra v. Dr. Praful Desai (2003, SC)
o Clarified scope of “treatment” (telemedicine issue).
 o Reinforces distinction between processes (non-patentable) and
products (patentable).

3(i) – Plants and animals in whole or part (except micro-organisms)

1. Higher life forms cannot be patented in India.
2. Only micro-organisms are patentable subject matter.
Case Law:
 Diamond v. Chakrabarty (1980, US SC – persuasive)
o Facts: Bacterium genetically modified to break down crude oil.
o Judgment: Held patentable as “human-made” microorganism.
o Principle: In India, only microorganisms allowed under Sec 3(i).

3(j) – Mathematical/business methods, computer programs per se,

algorithms
1. Pure software, algorithms, business methods are not patentable.
2. Patent allowed only when software has technical effect or industrial
application.
Case Law:
 Ferid Allani v. Union of India (2019, Delhi HC)
o Facts: Application for method enabling internet access on devices.
o Judgment: Court held computer-related inventions with technical
effect may be patentable.
o Principle: Not all software barred; only those without technical
effect.

3(k) – Literary, dramatic, musical, artistic works, cinematographic works

1. Creative works are protected under Copyright Act, 1957, not Patents.
2. Patents cover technical inventions, not aesthetic creations.
3(l) – Mere scheme, rule or method of performing mental act or playing
game
1. Intellectual or mental activities are not patentable.
2. Example: New method of teaching, new rules of chess.

3(m) – Presentation of information

1. Presenting data, diagrams, or instructions is not an invention.
2. Covered under copyright, not patents.

3(n) – Topography of integrated circuits

1. Protected separately under Semiconductor Integrated Circuits Layout-
Design Act, 2000.
2. Not patentable under Patents Act.

3(p) – Traditional knowledge

1. Anything based on traditional knowledge is not patentable.
2. Prevents biopiracy and unjust monopolies.
Case Laws:
 Turmeric Patent (US, 1997)
o Facts: US patent granted for wound healing properties of turmeric.
o Revoked after CSIR proved prior traditional use in India.
o Principle: Traditional knowledge is public domain.
 Neem Patent (EPO, 2000)
o Facts: European patent on neem-based pesticide.
o Revoked due to lack of novelty (already used in India).
o Principle: Traditional remedies cannot be patented.
Section 4 – Inventions relating to Atomic Energy
1. Absolute prohibition: No patent for inventions relating to atomic energy.
2. Controlled by Atomic Energy Act, 1962 (Sec 20(1)).
 Rationale: National security & public interest

Patent Procedure in India (Patents Act, 1970 – with timelines & sections)
The Indian patent system is governed by the Patents Act, 1970 (as amended)
and the Patents Rules, 2003 (latest amendments in 2024). The process involves
filing → publication → examination → opposition (if any) → grant →
maintenance.

1. Filing of Application
 Section 6 & 7 – Who can apply: true and first inventor, assignee, or legal
representative.
 Section 10 – Every application must be accompanied by a specification
(provisional or complete).
 Forms:
o Form 1 – Application.
o Form 2 – Specification (provisional or complete).
o Form 3 – Statement & undertaking of foreign applications (Section
8).
o Form 5 – Declaration of inventorship.

Provisional specification (Sec. 9): used if invention is incomplete. A

Complete specification must be filed within 12 months, otherwise application
is deemed abandoned.
2. Publication of Application
 Section 11A – Application is automatically published after 18 months
from the filing/priority date.
 Form 9 – Early publication request → publication usually within 1 week.
 Benefits: once published, the applicant enjoys provisional rights (can
claim damages after grant).

3. Request for Examination (RFE)

 Section 11B – Application is not examined automatically; applicant must
request.
 Form 18 – Request for examination.
 Form 18A – Expedited examination (for start-ups, small entities, govt.
use, etc.).
 Timeline (as per Patents (Amendment) Rules, 2024):
o For applications filed on or after 15 March 2024 → RFE must be
filed within 31 months from earliest filing/priority date.
o For earlier applications → old deadline of 48 months applies.

If RFE is not filed in time → application deemed withdrawn.

4. Examination by Controller
 Section 12 & 13 – Examiner checks for compliance:
o Novelty, inventive step, industrial application.
o Whether excluded under Section 3 or 4.
o Formalities (forms, drawings, etc.).
 First Examination Report (FER) issued under Rule 24B with
objections.

Applicant must reply within 6 months (extendable by 3 months). If not →

application deemed abandoned (Section 21).
5. Pre-Grant Opposition
 Section 25(1) – Any person may oppose after publication but before
grant.
 Grounds include: lack of novelty, obviousness, wrongful obtainment,
insufficient disclosure, Section 3/4 bar, etc.
 Procedure under Rule 55.

Controller hears both parties before deciding.

6. Grant of Patent
 Section 43 – When requirements are satisfied and no opposition
succeeds, Controller grants patent, publishes it in the Patent Journal, and
enters it in the Register.
 Section 53 – Patent term = 20 years from filing/priority date.

7. Post-Grant Opposition
 Section 25(2) – Within 12 months of grant publication, an interested
person may file opposition.
 Heard by Opposition Board → Controller’s decision.

8. Appeals
 Section 117A (earlier IPAB) → After abolition of IPAB (2021), appeals
now go to High Courts.

9. Maintenance of Patent
 Section 53 & Rule 80 – Renewal fees must be paid every year starting
from 3rd year onwards.
 If fee is not paid → patent lapses.
  Grace period: 6 months for late payment with additional fee.
 Section 60 – Restoration possible within 18 months of lapse.

Updated Points (Post-2024 Amendments)

RFE deadline reduced → 31 months (earlier 48 months).

Form 3 (foreign applications) → must now be filed early (with filing or
within 6 months) and updated within 3 months of FER.
Grace period introduced (Rule 29A) → disclosure within 12 months
before filing can still be patentable if disclosed in permitted ways (requires
Form 31).
Opposition timelines tightened → strict deadlines for filing reply &
evidence.
Appeals → handled by High Courts (no longer IPAB).

In short (exam-friendly timeline)

1. Filing (Sec. 6–10, Forms 1,2,3,5).
2. Publication → 18 months (Sec. 11A; Form 9 for early).
3. Examination request → Form 18/18A; 31 months deadline (new) (Sec.
11B).
4. Examination & FER → respond in 6 months (+3). (Sec. 12, 13, 21).
5. Pre-grant opposition (Sec. 25(1)).
6. Grant (Sec. 43, 53).
7. Post-grant opposition → within 12 months (Sec. 25(2)).
8. Maintenance → annual renewal from year 3 (Sec. 53, Rule 80)
Statutory Definition
 According to Section 2(1)(p) of the Patents Act, 1970:
“Patentee” means the person for the time being entered on the register of
patents as the grantee or proprietor of the patent.”

Explanation
1. A patentee is the lawful owner of a patent, whose name is entered in the
official Register of Patents maintained by the Controller General of
Patents, Designs and Trademarks.
 2. The patentee enjoys exclusive rights to exploit the invention, such as
making, using, selling, or licensing it, for the duration of the patent
(generally 20 years from the date of filing).
3. The patentee may be:
o The original inventor who applied for the patent, or
o An assignee, legal heir, or successor who has legally obtained the
rights.

Illustrations
 If A invents a new water purification device and registers it, his name is
entered in the patent register, making him the patentee.
 If A assigns the patent to Company B, and B’s name is entered in the
register, then B becomes the patentee.

Case Law
 Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979):
The Supreme Court emphasized that a patentee enjoys exclusive rights
but such rights are subject to the conditions of novelty, inventive step, and
public interest.
 Cipla Ltd. v. F. Hoffmann-La Roche Ltd. (2012): Reinforced that only the
patentee (or his licensee/assignee with authorization) can sue for
infringement.

In short: A patentee is the person whose name appears in the patent

register as the rightful owner of the patent, whether he is the original inventor
or a transferee of rights.

Rights and Duties of a Patentee under the Patents Act, 1970

The Patents Act, 1970 provides exclusive rights to a patentee but also imposes
duties to ensure public interest is not harmed. A patentee is the person
registered as the proprietor of the patent (Section 2(1)(p)).

I. Rights of a Patentee
1. Right to Exclusive Exploitation (Section 48)
A patentee has the exclusive right to make, use, sell, and distribute the patented
invention in India, and also prevent others from importing it without consent.
This right enables the patentee to enjoy monopoly over his invention during the
patent term.
Illustration: If A patents a solar panel design, company B cannot manufacture
or import the same design without A’s authorization.
Case Law: Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries
(1979) – exclusive rights exist only when invention is new and inventive.

2. Right to Assign, License, or Transmit (Section 68)

The patentee may assign the patent to another person or grant licenses for its
use. Such transfers must be in writing and registered with the Controller to be
valid. This ensures that the patent can generate income through royalties or sale.
Illustration: A patentee of a pharmaceutical process licenses his invention to
three Indian companies to manufacture medicine for royalty fees.
Case Law: Cipla Ltd. v. F. Hoffmann-La Roche Ltd. (2012) – patentees may
enforce rights even against licensees who exceed agreed terms.

3. Right to Surrender the Patent (Section 63)

A patentee can voluntarily surrender his patent by notifying the Controller, who
publishes the offer to allow opposition. This gives patentees an exit option when
the invention is not commercially viable.
Illustration: An inventor surrenders his patent for a machine that became
obsolete after newer technology emerged, saving further renewal costs.

4. Right to Seek Relief in Case of Infringement (Sections 104–114)

If a third party infringes the patent, the patentee can approach civil courts for
remedies such as injunctions, damages, or account of profits. The courts may
also grant interim injunctions to prevent ongoing harm.
Illustration: A drug company holding a patent sues another company that
begins selling the same drug without license.
Case Law: TVS Motor Co. Ltd. v. Bajaj Auto Ltd. (2009) – injunction granted to
Bajaj against TVS for infringing its patented DTSi engine technology.

5. Right to Term of Patent (Section 53)

A patent is granted for 20 years from the filing date, during which the patentee
enjoys exclusive rights if renewal fees are paid. This time-limited monopoly
incentivizes innovation while eventually releasing knowledge to the public.
Illustration: A biotech firm patents a vaccine in 2015, and its monopoly lasts
until 2035, after which the vaccine enters public domain.

6. Right to Compensation in Case of Government Use (Sections 99–103)

The government may use a patent for public purposes such as defense, health,
or emergencies, but the patentee is entitled to reasonable compensation. This
balances state necessity with private rights.
Illustration: During COVID-19, the government may authorize local firms to
manufacture a patented ventilator, but must pay the patentee a fair royalty.

II. Duties of a Patentee

1. Duty to Disclose and Work the Patent (Sections 8, 146; Rule 131)
The patentee must disclose foreign patent applications and submit annual
statements (Form 27) showing whether the invention is being worked in India.
This ensures inventions are not hoarded but serve public needs.
Illustration: A pharma company must disclose if its patented cancer drug is
being sold in India and whether it is available at reasonable prices.
Case Law: Natco Pharma v. Bayer Corporation (2012) – compulsory license
was granted because Bayer’s drug Nexavar was not made reasonably affordable
in India.
2. Duty to Pay Renewal Fees (Section 53(2))
A patentee must pay annual renewal fees to maintain the validity of the patent.
Failure to pay results in lapse and the invention entering the public domain.
Illustration: If a patentee does not pay fees after 10 years, his patent lapses, and
other companies can freely use the invention without permission.

3. Duty Not to Abuse Monopoly (Section 83)

The patentee must not misuse his monopoly rights by charging unreasonable
prices or refusing licenses. Patents are meant to promote technology transfer
and public benefit, not unjustified profiteering.
Illustration: If a company charges ₹3 lakh per dose for a life-saving drug and
refuses to license it, the Controller may issue a compulsory license.

4. Duty to Mark the Product as “Patented” (Section 111)

Patented products must be marked as “Patented” to notify the public. Failure to
mark may restrict the damages a patentee can claim in infringement suits.
Illustration: If a company sells patented agricultural tools without marking
them, it cannot recover full damages from infringers who unknowingly copied
them.

5. Duty to Allow Government Use (Sections 99–103)

The patentee is obliged to permit government use of the patent for public
purposes such as national security or public health. Although the patentee
cannot refuse, he may claim compensation.
Illustration: During a pandemic, the government can authorize production of a
patented vaccine without consent, though the patentee is entitled to royalty.

6. Duty to Accept Revocation or Surrender (Section 64)

If a patent is wrongly granted, lacks novelty, or is obtained by fraud, the
patentee must accept revocation. This prevents wrongful monopolies over prior
art or public knowledge.
Illustration: If someone patents a machine that is already known in prior
publications, the court may revoke the patent and the patentee must comply.

Conclusion
The rights of a patentee under the Patents Act, 1970 provide exclusivity,
licensing, enforcement, and compensation. However, these rights are balanced
by duties like disclosure, renewal, fair use, marking, and government access.
Indian case laws such as Bishwanath Prasad Radhey Shyam and Bayer v. Natco
illustrate that patents are not absolute monopolies but tools to encourage
innovation while ensuring public welfare.