THE PATENTS (AMENDMENT) ACT, 2002
ACT NO. 38 OF 2002
[25th June, 2002.]
An Act further to amend the Patents Act, 1970.
BE it enacted by Parliament in the Fifty-third Year of the Republic of
India as follows:-
1.
Short title and commencement.
1. Short title and commencement.-(1) This Act may be called the
Patents (Amendment) Act, 2002.
(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 provision to the commencem nt of this Act shall
be construed as a reference to the coming into force of that
provision.
2.
Substitution of certain words for the words "High Court" and "Court".
2. Substitution of certain words for the words "High Court" and
"Court".-In the Patents Act, 1970 (39 of 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" o curring in
sections 21 and 71, the words "Appellate Board" and "Board" shall
respectively be substituted.
3.
Amendment of section 2.
3. Amendment of section 2.-In section 2 of the principal Act, in
sub-section (1),-
(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-governmental organisation notified as such under sub-section (1)
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, invalids
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;
(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, Manipur, 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:-
'(ia) "international application" means an application for patent made
in accordance with the Patent Cooperation Treaty;';
(f) for clause (j), the following clauses shall be substituted,
namely:-
'(j) "invention" means a new product or process involving an inventive
step and capable of industrial application;
(ja) "inventive step" means a feature that makes the invention not
obvious to a person skilled in the art;';
(g) for clause (m), the following clause shall be substituted,
namely:-
'(m) "patent" means a patent granted under this Act;';
(h) after clause (o), the following clause shall be inserted, namely:-
'(oa) "Patent Cooperation Treaty" means the Patent Cooperation Treaty
done at Washington on the 19th day of June, 1970 as amended and
modified from time to time ; ' ;
(i) for clause (u), the following clause shall be substituted,
namely:-
'(u) "prescribed" means,-
(A) in relation to proceedings before a High Court, prescribed by
rules made by the High Court;
(B) in relation to proceedings before the Appellate Board, prescribed
by rules made by the Appellate Board; and
(C) in other cases, prescribed by rules made under this Act.'.
4.
Amendment of section 3.
4. Amendment of section 3.-In section 3 of the principal Act,-
(a) for clause (b), the following clause shall be substituted,
namely:-
''(b) an invention the primary or intended use or commercial
exploitation of which would be contrary to public order or morality or
which causes serious prejudice to human, animal or plant life or
health or to the environment;";
(b) in clause (c), after the words "an abstract theory", the words "or
discovery of any living thing or non-living substance occurring in
nature" shall be inserted;
(c) clause (g) shall be omitted;
(d) in clause (i),-
(i) after the word "prophylactic", the words "diagnostic, therapeutic"
shall be inserted;
(ii) the words "or plants" shall be omitted;
(e) after clause (i), the following clauses shall be inserted,
namely:-
"(j) plants and animals in whole or any part thereof other than
micro-organisms but including seeds, varieties and species and
essentially biological processes for production or propagation of
plants and animals;
(k) a mathematical or business method or a computer programme per se
or algorithms;
(l) a literary, dramatic, musical or artistic work or any other
aesthetic creation whatsoever including cinematographic works and
television productions;
(m) a mere scheme or rule or method of performing mental act or method
of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which, in effect, is traditional knowledge or which
is an aggregation or duplication of known properties of traditionally
known component or components.".
5.
Amendment of section 5.
5. Amendment of section 5.-In section 5 of the principal Act, after
sub-section (2), the following Explanation shall be inserted, namely:-
'Explanation.-For the purposes of this section, "chemical processes"
includes biochemical, biotechnological and microbiological
processes.'.
6.
Amendment of section 7.
6. Amendment of section 7.-In section 7 of the principal Act, after
sub-section (1), the following sub-section shall be inserted, namely:-
"(1A) Every international application under the Patent Cooperation
Treaty for a patent, as may be filed designating India, shall be
deemed to be an application under this Act, if a corresponding
application has also been filed before the Controller in I dia.".
7.
Amendment of section 8.
7. Amendment of section 8.-In section 8 of the principal Act,-
(a) in sub-section (1),-
(i) in the opening portion, after the words "he shall file along with
his application", the words "or subsequently within such period as the
Controller may, for good and sufficient reasons, allow" shall be
inserted;
(ii) for clause (a), the following clause shall be substituted,
namely:-
"(a) a statement setting out detailed particulars of such application;
and";
(iii) in clause (b), for the words "details of the nature referred to
in", the words "detailed particulars as required under" shall be
substituted;
(b) for sub-section (2), the following sub-section shall be
substituted, namely:-
"(2) At any time after an application for patent 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 proces ing 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 w thin such further period
as the Controller may, for good and sufficient reasons, allow.".
8.
Amendment of section 10.
8. Amendment of section 10.-In section 10 of the principal Act,-
(a) in sub-section (4), after clause (c), the following clause shall
be inserted, namely:-
"(d) be 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 t e 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 materi l 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:-
"(4A) In case of an international application designating India,-
(i) the title, description, drawings, abstract 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, processed 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 spe ification.".
9.
Amendment of Chapter IV.
9. Amendment of Chapter IV.-In Chapter IV of the principal Act,-
(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, the following sections shall be inserted,
namely:-
"11A. Publication of applications.-(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.
(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 (1), 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. Request for examination.-(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 fi ing of the
application for patent.
(2) In case of an application filed before the commencement of the
Patents (Amendment) Act, 2002, 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 d te 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 the
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 other 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 treate 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.
Amendment of section 12.
10. Amendment of section 12.-In section 12 of the principal Act,-
(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 res ect 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 relating thereto"
shall be substituted;
(ii) in clause (a), for the words "specification relating thereto",
the words "specification and other documents relating thereto" shall
be substituted;
(b) in sub-section (2), for the words "specification relating
thereto", the words "specification and other documents relating
thereto" shall be substituted.
11.
Amendment of section 13.
11. Amendment of section 13.-In section 13 of the principal Act, in
sub-section (2), the words "as the Controller may direct" shall be
omitted.
12.
Substitution of new section for section 15.
12. Substitution of new section for section 15.-For section 15 of the
principal Act, the following section shall be substituted, namely:-
"15. Power of Controller to refuse or require amended applications,
etc., in certain cases.-Where the Controller is satisfied that the
application or any specification 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, to
be amended to his satisfaction before he proceeds with the application
or refuse the application on failure o do so.".
13.
Amendment of section 17.
13. Amendment of section 17.-In section 17 of the principal Act, for
sub-section (2), the following sub-section shall be substituted,
namely:-
"(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 d te 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 refiled after complying with the requirement.".
14.
Amendment of section 21.
14. Amendment of section 21.-In section 21 of the principal Act,-
(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 specificati n or other
documents relating 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;
(d) in sub-section (4), for the words "fifteen months, or as the case
may be, the extended period, until the expiration of", the words
"twelve months to" shall be substituted.
15.
Amendment of section 22.
15. Amendment of section 22.-In section 22 of the principal Act, in
the proviso, for the words "eighteen months", the words "twelve
months" shall be substituted.
16.
Amendment of section 23.
16. Amendment of section 23.-In section 23 of the prinicpal 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.
17.
Amendment of section 24C.
17. Amendment of section 24C.-In section 24C of the principal Act,-
(a) in clause (c), for the word and figures "section 85", the word and
figures "section 84" shall be substituted;
(b) for clause (d), the following clause shall be substituted,
namely:-
"(d) clause (e) of sub-section (7) of section 84 shall be omitted.".
18.
Amendment of section 25.
18. Amendment of section 25.-In section 25 of the principal Act,-
(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) in sub-section (3), after the words "shall be taken of any", the
words "personal document or secret trial or" shall be inserted.
19.
Amendment of section 35.
19. Amendment of section 35.-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.
20.
Amendment of section 36.
20. Amendment of section 36.-In section 36 of the principal Act, for
sub-section (1), the following sub-section shall be substituted,
namely:-
"(1) The question whether an invention in respect of which directions
have been given under section 35 continues 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 reasonable 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 fi ed 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.".
21.
Insertion of new section 39.
21. Insertion of new section 39.-After section 38 of the principal
Act, the following section shall be inserted, namely:-
"39. Prohibition to apply, under certain circumstances, for patents
relevant for defence purposes, etc.-(1) No person shall, except under
the authority of a written permit granted by or on behalf of the
Controller, make or cause to be made any applicatio outside India for
the grant of a patent for an invention relevant for defence purposes
or related to atomic energy unless-
(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
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.".
22.
Amendment of section 40.
22. Amendment of section 40.-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.
23.
Amendment of section 43.
23. Amendment of section 43.-In section 43 of the principal Act, in
sub-section (1),-
(a) in clause (c), the word "or" shall be inserted at the 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 the Act,".
24.
Amendment of section 45.
24. Amendment of section 45.-In section 45 of the principal Act, for
sub-section (1), the following sub-section shall be substituted,
namely:-
''(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.''.
25.
Substitution of new section for section 48.
25. Substitution of new section for section 48.-For section 48 of the
principal Act, the following section shall be substituted, namely:-
"48. Rights of patentees.-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 he 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.".
26.
Amendment of section 50.
26. Amendment of section 50.-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 rights conferred by
section 48'' shall be substituted.
27.
Amendment of section 53.
27. Amendment of section 53.-In section 53 of the principal Act,-
(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, 2002,
and the term of every patent which has not expired and has not ceased
to have effect, on the date of such commence ent, 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 the expiry of the term of patent, the subject matter
covered by the said patent shall not be en itled to any protection.''.
28.
Amendment of section 57.
28. Amendment of section 57.-In section 57 of the principal Act,-
(a) in sub-section (1), after the word "specification" at both the
places where it occurs, the words "or any document relating thereto"
shall be inserted;
(b) in sub-section (2), for the words "or a specification", the
words"or a complete specification or any document relating 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 relating thereto under this
section made after the acceptance of the complete specification and
the nature of the proposed amendment may be adve tised 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 relating thereto" shall be inserted;
(ii) after the words "acceptance of the complete specification", the
words "along with other documents filed by the applicant" shall be
inserted.
29.
Amendment of section 59.
29. Amendment of section 59.-In section 59 of the principal Act,-
(i) for sub-section (1), the following sub-section shall be
substituted, namely:-
"(1) No amendment of an application for a patent or a complete
specification or any document relating thereto shall be made except by
way of disclaimer, correction or explanation, and no amendment thereof
shall be allowed, except for the purpose of incor oration 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 amend ent, 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 relating thereto, any amendment of the specification or any
other document relating thereto" shall be substituted
(b) in clause (a), for the word "specification", the words
"specification along with other documents relating thereto" shall be
substituted;
(c) in clause (b), for the word "specification", the words
"specification or any other document relating thereto" shall be
substituted.
30.
Amendment of section 60.
30. Amendment of section 60.-In section 60 of the principal Act,-
(a) in sub-section (1), for the words "one year", the words "eighteen
months" shall be substituted;
(b) sub-section (2) shall be omitted.
31.
Amendment of section 64.
31. Amendment of section 64.-In section 64 of the principal Act,-
(a) in sub-section (1),-
(i) the proviso to clause (b) shall be omitted;
(ii) the proviso to clause (e) shall be omitted;
(iii) 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.
32.
Amendment of section 67.
32. Amendment of section 67.-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 other electronic
form subject to such safeguards as may be prescr bed.
(5) Notwithstanding anything contained in the Indian Evidence Act,
1872 (1 of 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 th s 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 a y 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.".
33.
Amendment of section 68.
33. Amendment of section 68.-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 Control er within six
months from the execution of the document or within such further
period" shall be substituted.
34.
Amendment of section 72.
34. Amendment of section 72.-In section 72 of the principal Act,
after sub-section (2), the following sub-section shall be inserted,
namely:-
"(3) If the record of particulars is kept in computer floppies or
diskettes or in any other electronic form, sub-sections (1) and (2)
shall be deemed to have been complied with if the public is given
access to such computer floppies, diskettes or any oth r electronic
form or printouts of such record of particulars for inspection.".
35.
Amendment of section 73.
35. Amendment of section 73.-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 (43 of 1958)", the words and figures
"section 3 of the Trade Marks Act, 1999 (47 of 199 )" shall be
substituted.
36.
Amendment of section 76.
36. Amendment of section 76.-In section 76 of the principal Act,-
(a) for the words "Central Government", the words "Central Government
or Appellate Board" shall be substituted;
(b) in clauses (a) and (b), the words and figures "or under the Indian
Patents and Designs Act, 1911 (2 of 1911)" shall respectively be
omitted.
37.
Amendment of section 78.
37. Amendment of section 78.-In section 78 of the principal Act, in
sub-section (1), after the words "complete specifications", the words
"or other documents relating thereto" shall be inserted.
38.
Amendment of section 80.
38. Amendment of section 80.-In section 80 of the principal Act, the
following proviso shall be inserted at the end, namely:-
"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.".
39.
Substitution of new Chapter for Chapter XVI.
39. Substitution of new Chapter for Chapter XVI.-For Chapter XVI of
the principal Act, the following Chapter shall be substituted,
namely:-
'CHAPTER XVI
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION
82. Definitions of "patented articles" and "patentee".-In this
Chapter, unless the context otherwise requires,-
(a) "patented article" includes any article made by a patented
process; and
(b) "patentee" includes an exclusive licensee.
83. General principles applicable to working of patented
inventions.-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:
(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 technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and
users of technological knowledge and in a manne 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 of 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 estrain trade
or adversely affect the international transfer of technology; and
(g) that patents are granted to make the benefit of the patented
invention available at reasonably affordable prices to the public.
84. Compulsory licences.-(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 groun s, 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 estopped from alleging that the
reasonable requirements of the public with respect to the p tented
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 su h 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 based.
(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 invention is not av ilable to
the public at a reasonably affordable price, may grant a licence upon
such terms as he may deem fit.
(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 account,-
(i) the nature of the invention, the time which has elapsed since the
sealing of the patent and the measures already taken by the patentee
or any licensee to make full use of the invention;
(ii) the ability of the applicant to work the invention to the public
advantage;
(iii) the capacity of the applicant to undertake the risk in providing
capital and working the invention, if the application were granted;
(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,
but shall not be required to take into account matters subsequent to
the making of the application.
(7) For the purposes of this Chapter, the reasonable requirements of
the public shall be deemed not to have been satisfied-
(a) if, by reason of the refusal of the patentee to grant a licence or
licences on reasonable terms,-
(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 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 establ shment 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 patented 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. Revocation of patents by the Controller for non-working.-(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 grant ng the first
compulsory licence, apply to the Controller for an 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 i vention has not been satisfied
or that the patented invention is not available to the public at a
reasonably affordable price.
(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 set out the nature of the pplicant'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 vailable 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. Power of Controller to adjourn applications for compulsory
licences, etc., in certain cases.-(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 te ritory 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 orked 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, by order,
adjourn the further hearing of the application for such period not
exceeding twelve month in the aggregate as appears to him to be
sufficient for the invention to be so worked:
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 worki
g 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 hall 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 a d to an adequate
extent.
87. Procedure for dealing with applications under sections 84 and
85.-(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 s all 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
patent in respect of which the application is made, and shall
advertise the application in the Official Gazette.
(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 grounds 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. Powers of Controller in granting compulsory licences.-(1) Where
the Controller is satisfied on an application made under section 84
that the manufacture, use or sale of materials not protected by the
patent is prejudiced by reason of conditions impos d 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 pplicant as he thinks fit as well as
to the applicant.
(2) Where 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 hinks 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 reasonable
requirements of the public have not been satisfied with respect to
some only of the said patents, then, if the Controlle is 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 considerab e economic significance
in relation to the other patents, he may, by order, direct the grant
of a licence in respect of the other patents also to enable the
licensee 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 licensee 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 or the revision of 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 licensee is unable to work the
invention except at a loss: Provided that no such application shall
be entertained a second time.
89. General purposes for granting compulsory licences.-The powers of
the Controller upon an application made under section 84 shall be
exercised with a view to securing the following general purposes, that
is to say,-
(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 reasonably practicable;
(b) that the interests of any person for the time being working or
developing an invention in the territory of India under the protection
of a patent are not unfairly prejudiced.
90. Terms and conditions of compulsory licences.-(1) In settling the
terms and conditions of a licence under section 84, the Controller
shall endeavour to secure-
(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 inventi n 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 reasonable 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 licensee 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 and in 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 re edy a
practice determined after judicial or administrative process to be
anti-competitive, licensee shall be permitted to export the patented
product.
(2) No licence granted by the Controller shall authorise the licensee
to import the patented article or an article or susbtance made by a
patented process from abroad where such importation 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 pa ented 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 quant m 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. Licensing of related patents.-(1) Notwithstanding anything
contained in the other provisions of this Chapter, at any time after
the sealing of a patent, any person who has the right to work any
other patented invention either as patentee or as licens e thereof,
exclusive or otherwise, may apply to the Controller for the grant of a
licence 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 advant ge possible.
(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 reasonable terms; and
(ii) that the other invention has 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 established 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 unde the other patent if so
requested by the proprietor of the first-mentioned patent or his
licensee:
Provided that the licence granted by the Controller shall be
non-assignable except with the assignment of the respective patents.
(4) The provisions of sections 87, 88, 89 and 90 shall apply to
licences granted under this section as they apply to licences granted
under section 84.
92. Special provision for compulsory licences on notifications by
Central Government.-(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 o 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 ollowing provisions shall
have effect, that is to say,-
(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 thinks
fit;
(ii) in settling the terms and conditions of a licence 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 patentee deriving a
reasonable advantage from their patent rights.
(2) The provisions of sections 83, 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.
(3) Notwithstanding anything contained in sub-section (2), where the
Controller is satisfied on consideration of the application referred
to in clause (i) of sub-section (1) that it is necessary in-
(i) a circumstance of national emergency; or
(ii) a circumstance of extreme urgency; or
(iii) a case of public non-commercial use, which may arise or is
required, as the case may be, including public health crises, relating
to Acquired Immune Deficiency Syndrome, human immunodeficiency virus,
tuberculosis, malaria or other epidemics, he shall not apply any
procedure specified in sec ion 87 in relation to that application for
grant of licence under this section:
Provided that the Controller shall, as soon as may be practicable,
inform the patentee of the patent relating to the application for such
non-application of section 87.
93. Order for licence to operate as a deed between parties
concerned.-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 ter s and
conditions, if any, settled by the Controller.
94. Termination of compulsory licence.-(1) On an application made by
the patentee or any other person deriving title or interest in the
patent, a compulsory licence granted under section 84 may be
terminated by the Controller, if and when the circumstanc s that gave
rise to the grant thereof no longer exist and such circumstances are
unlikely to recur:
Provided that the holder of the compulsory licence shall have the
right to object to such termination.
(2) While considering an application under sub-section (1), the
Controller shall take into account that the interest of the person who
had previously been granted the licence is not unduly prejudiced.".
40.
Amendment of section 99.
40. Amendment of section 99.-In section 99 of the principal Act,
sub-section (2) shall be omitted.
41.
Amendment of section 100.
41. Amendment of section 100.-In section 100 of the principal Act,-
(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 not more than 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 interest so to do",
the words "except in case of national emergency or other circumstances
of extreme urgency or for non-commercial use" sh ll 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.
42.
Amendment of section 101.
42. Amendment of section 101.-In section 101 of the principal Act,-
(a) in sub-section (1),-
(i) the words ", whether before or after the commencement of this
Act," shall be omitted;
(ii) the brackets and words "(including payments by way of minimum
royalty)" shall be omitted;
(b) in sub-section (2), the brackets and words "(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.
43.
Insertion of new section 104A.
43. Insertion of new section 104A.-After section 104 of the principal
Act, the following section shall be inserted, namely:-
"104A. Burden of proof in case of suits concerning infringement.-(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 prove that the process used by h m to obtain the product,
identical to the product of the patented process, is different from
the patented process if,-
(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 from 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 (1), 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.".
44.
Insertion of new section 107A.
44. Insertion of new section 107A.-After section 107 of the principal
Act, the following section shall be inserted, namely:-
"107A. Certain acts not to be considered as infringement.-For the
purposes of this Act,-
(a) any act of making, constructing, using or selling a patented
invention solely for uses reasonably relating 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.".
45.
Amendment of section 108.
45. Amendment of section 108.-Section 108 of the principal Act shall
be numbered as sub-section (1) thereof, and after sub-section (1) as
so numbered, the following sub-section shall be inserted, namely:-
"(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 goods shall be seized, forfeited or
destroyed, as the court deems fit under the circu stances of the case
without payment of any compensation.".
46.
Omission of section 112.
46. Omission of section 112.-Section 112 of the principal Act shall
be omitted.
47.
Substitution of new Chapter for Chapter XIX.
47. Substitution of new Chapter for Chapter XIX.-For Chapter XIX of
the principal Act, the following Chapter shall be substituted,
namely:-
''CHAPTER XIX
APPEALS TO THE APPELLATE BOARD
116. Appellate Board.-(1) Subject to the provisions of this Act, the
Appellate Board established under section 83 of the Trade Marks Act,
1999 (47 of 1999) shall be the Appellate Board for the purposes of
this Act and the said Appellate Board shall exerc se the jurisdiction,
power and authority conferred on it by or under this Act:
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 exercised the functions of the Controller under this Act
for at least five years; or
(b) has, 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 patents and
designs.
117. Staff of Appellate Board.-(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 Boar with such
officers and other employees as it may think fit.
(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. Appeals to Appellate Board.-(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 from any act or order of the Controller f r the purpose
of giving effect to any such decision, order or direction.
(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, sec ion 54,
section 57, section 60, section 61, section 63, section 66,
sub-section (3) of section 69, section 78, sub-sections (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 appealed
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 mad by it,
allow.
117B. Procedure and powers of Appellate Board.-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 (47 of 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.
117C. Bar of jurisdiction of courts, etc.-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.
117D. Procedure for application for rectification, etc., before
Appellate Board.-(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.
(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
order of the Board and shall, when so directed, am nd the entries in,
or rectify, the register in accordance with such order.
117E. Appearance of Controller in legal proceedings.-(1) The
Controller shall have the right to appear and be heard-
(a) in any legal proceedings before the Appellate Board in which the
relief sought includes alteration or rectification of the register or
in which any question relating to the practice of the patent 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 appear 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 g ounds 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. Costs of Controller in proceedings before Appellate Board.-In
all proceedings 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 o any of the parties.
117G. Transfer of pending proceedings to Appellate Board.-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 Boa d 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.
117H. Power of Appellate Board to make rules.-The Appellate Board may
make rules consistent with this Act as to the conduct and procedure in
respect of all proceedings before it under this Act.".
48.
Amendment of section 118.
48. Amendment of section 118.-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
nserted.
49.
Amendment of section 120.
49. Amendment of section 120.-In section 120 of the principal Act,
for the words ''five hundred rupees'', the words ''ten thousand
rupees'' shall be substituted.
50.
Amendment of section 122.
50. Amendment of section 122.-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.
51.
Amendment of section 123.
51. Amendment of section 123.-In section 123 of the principal Act,-
(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.
52.
Substitution of new section for section 125.
52. Substitution of new section for section 125.-For section 125 of
the principal Act, the following section shall be substituted,
namely:-
"125. Register of patent agents.-(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, of all persons qualified to have their names so entered
under section 126.
(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.''.
53.
Amendment of section 126.
53. Amendment of section 126.-In section 126 of the principal Act,-
(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 registratio ;'';
(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, 2002 shall be entitled to continue to be,
or when required to be re-registered, as a p tent agent, on payment of
the fees as may be prescribed.''.
54.
Amendment of section 128.
54. Amendment of section 128.-In section 128 of the principal Act,-
(a) in sub-section (1), the words ''Subject to the provisions
contained in sub-section (2) and to any rules made under this Act,''
shall be omitted;
(b) sub-section (2) shall be omitted.
55.
Amendment of section 130.
55. Amendment of section 130.-In section 130 of the principal Act,-
(a) for the words ''Central Government'' wherever they occur, the word
''Controller'' shall be substituted;
(b) in sub-section (1), for the word ''it'' at both the places where
it occurs, the word ''he'' shall be substituted.
56.
Amendment of section 132.
56. Amendment of section 132.-In section 132 of the principal Act,-
(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 substitute .
57.
Amendment of section 133.
57. Amendment of section 133.-In section 133 of the principal Act,
the following Explanation shall be inserted at the end, namely:-
'Explanation.-For the purposes of this Chapter ''country'' includes a
group or union of countries or Inter-governmental organisation.'.
58.
Amendment of section 138.
58. Amendment of section 138.-In section 138 of the principal Act,-
(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-sections shall be
inserted, namely:-
''(4) An international application filed under the Patent Cooperation
Treaty designating India shall have effect of filing an application
for patent under section 7, section 54 and section 135, as the case
may be, and the title, description, claim and ab tract 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 designating India or designating and electing India before
international searching authority or preliminary examination authority
shall, if the applicant so desires, be tak n as an amendment made
before the patent office.''.
59.
Amendment of section 140.
59. Amendment of section 140.-In section 140 of the principal Act,-
(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.
60.
Amendment of section 141.
60. Amendment of section 141.-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.
61.
Amendment of section 142.
61. Amendment of section 142.-In section 142 of the principal Act,-
(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 prescribed 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 than nine months from the date of recording'' shall be inserted
at the end.
62.
Amendment of section 143.
62. Amendment of section 143.-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 applicati n or the priority
date of the application or before the same is open to public
inspection" shall be substituted.
63.
Substitution of new section for section 157A.
63. Substitution of new section for section 157A.-For section 157A of
the principal Act, the following section shall be substituted,
namely:-
'157A. Protection of security of India.-Notwithstanding anything
contained in this Act, the Central Government shall-
(a) not disclose any information relating to any patentable invention
or any application relating to the grant of patent under this Act,
which it considers 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 action 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 and implements of war
and to such traffic in other goods and materials as is carried on
directly or indirectly for the purpose of supplying a military
establishment; or
(iii) is taken in time of war or other emergency in international
relations.'.
64.
Amendment of section 159.
64. Amendment of section 159.-In section 159 of the principal Act, in
sub-section (2),-
(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-sections (1), (2) and (3) of section
11B;";
(b) in clause (iii), after the word "manner", the words "and time"
shall be inserted;
(c) in clause (ix), after the word "patents", the words "and the
safeguards to be observed in the maintenance of such register in
computer floppies, diskettes or any other electronic form" shall be
inserted;
(d) after clause (xii), the following clauses 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 fu ctions under
sub-section (3), of section 117;
(xiib) the form of making an appeal, the manner of verification and
the fees 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 agents on
computer floppies, diskettes or any other el ctronic form under
sub-section (2) of that section" shall be inserted.
65.
Omission of section 161.
65. Omission of section 161.-Section 161 of the principal Act shall
be omitted.
66.
Amendment of section 162.
66. Amendment of section 162.-In section 162 of the principal Act,
sub-sections (2) and (3) shall be omitted.
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SUBHASH C. JAIN,
Secy. to the Govt. of India.
