IPR RELATING TO PATENTS
Concepts
of Invention and discovery, Comparison (S2 (j)), Concept of Patents, General
principles applicable to working of patented inventions, Term of Patent. Infringement
of Patent Rights& Remedies. (Ss. 104-115)
Concepts of Invention and discovery
Discovery
Discovery means disclosure of a
thing and/or a scientific theory, which was already in existence but had
remained in the darkness, without the prior knowledge of the people.
-
Solar system
-
Theory of gravity
An invention
means creation of a thing in any field such as
-
mechanical instruments,
-
antibiotics
-
drug delivery system
-
genetic engineering process
-
digital mobile telephones
-
consumer electronic goods
-
medical devices
-
textile technology
-
civil engineering
Reynolds v. Herbert Smith & Co
Discovery – lifting veil
Invention – new
Comparison
BASIS FOR COMPARISON
|
DISCOVERY
|
INVENTION
|
Meaning
|
Discovery
refers to the act of finding or exploring something which already existed but
not perceived before.
|
Invention
is creation or designing of an item or a process which has never been existed
before, with own ideas and developments.
|
What is
it?
|
Coming
upon something, which is not yet acknowledged.
|
Developing
something original and advanced.
|
Represents
|
Natural occurrences
|
Scientific
or human-made artifacts, devices, processes
|
Involves
|
Exploration
|
Experimentation
|
Subject
|
Discovered
on purposely or accidentally.
|
Conceived
on purposely.
|
Existence
|
Pre-existent
|
Non-existent
|
Patent
|
No, it
cannot be patented.
|
Can be
patented.
|
CONCEPT
2(m) "patent" means a patent for any invention granted under this Act;
2(m) "patent" means a patent for any invention granted under this Act;
General principles applicable to working of patented inventions
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) Encourage Inventions
The 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) Not merely to enjoy Monopoly
The patents are not granted merely
to enable patentees to enjoy a monopoly for
the importation of the patented article;
(c) Social and Economic welfare
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 manner conducive to social and economic welfare, and to a
balance of rights and obligations;
(d) Protection of Public Health
The 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) Central Government – Protect Public Health
The patents granted do not in any
way prohibit Central Government in taking measures to protect public health;
(f) Unreasonably Restrain of Trade
That the patent right is not abused by the patentee or person
deriving title or interest on patent from the patentee, and the patentee or a
person deriving title or interest on patent from the patentee does not resort
to practices which unreasonably restrain
trade or adversely affect the international transfer of technology; and
(g) Reasonably Affordable Prices to the Public
The patents are granted to make the
benefit of the patented invention available at reasonably affordable prices to the public.
Term of Patent
53. Term of patent.—
(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 commencement,
under this Act, shall be twenty years
from the date of filing of the application for the patent.
International applications :
Explanation.—For the purposes of
this sub-section, the term of patent in case of International applications
filed under the Patent Cooperation Treaty designating India, shall be twenty
years from the international filing date accorded under the Patent Cooperation
Treaty. THE PATENTS ACT, 1970 Page 43
(2) Payment of Renewal Fee
A patent shall cease to have effect
notwithstanding anything therein or in this Act on the expiration of the period
prescribed for the payment of any
renewal fee, if that fee is not paid within the prescribed period or within
such extended period as may be prescribed.
(3) [Omitted by the Patents
(Amendment) Act, 2005]
(4) Not be Entitled to Protection
Notwithstanding anything contained
in any other law for the time being in force, on cessation of the patent right
due to non-payment of renewal fee or on expiry of the term of patent, the
subject matter covered by the said patent shall not be entitled to any
protection.
Infringement of Patent Rights
CHAPTER
XVIII
SUITS
CONCERNING INFRINGEMENT OF PATENTS
104. Jurisdiction.—
No suit for a declaration under
section 105 or for any relief under section 106 or for infringement of a patent
shall be instituted in any court inferior to a district court having jurisdiction to try the suit: Provided that
where a counter-claim for revocation of the patent is made by the defendant,
the suit, along with the counter-claim, shall be transferred to the High Court
for decision.
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 him 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 subsection (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.
105. Power of court to make declaration as to non-infringement.—
(1) Notwithstanding anything
contained in section 34 of the Specific Relief Act, 1963 (47 of 1963), any person may institute a suit for a
declaration that the use by him of any process, or the making, use or sale of
any article by him does not, or would not, constitute an infringement of a
claim of a patent against the patentee or the holder of an exclusive licence
under the patent, notwithstanding that no assertion to the contrary has been
made by the patentee or the licensee,if it is shown— (a) that the plaintiff
has applied in writing to the patentee or exclusive licensee for a' written
acknowledgements to the effect of the declaration claimed and has furnished him
with full particulars in writing of the process or article in question; and (b)
that the patentee or licensee has refused or neglected to give such an
acknowledgement. (2) The costs of all parties in a suit for a declaration
brought by virtue of this section shall, unless for special reasons the court
thinks fit to order otherwise, be paid by the plaintiff. (3) The validity of a
claim of the specification of a patent shall not be called in question in a
suit for a declaration brought by virtue of this section, and accordingly the
making or refusal of such a declaration in the case of a patent shall not be
deemed to imply that the patent is valid or invalid. (4) A suit for a declaration
may be brought by virtue of this section at any time after the publication of
grant of a patent, and references in this section to the patentee shall be
construed accordingly.
106. Power of court to grant relief
in cases of groundless threats of
infringement proceedings.—
(1) Where any person (whether entitled to or interested in a patent or an
application for patent or not) threatens any other person by circulars or
advertisements or by communications, oral or in writing addressed to that or
any other person, with proceedings for infringement of a patent, any person
aggrieved thereby may bring a suit against him praying for the following
reliefs, that is to say— (a) a declaration to the effect that the threats
are unjustifiable; (b) an injunction against the continuance of the threats;
and (c) such damages, if any, as he has sustained thereby. (2) Unless in such
suit the defendant proves that the acts in respect of which the proceedings
were threatened constitute or, if done, would constitute, an infringement of a
patent or of rights arising from the publication of a complete specification in
respect of a claim of the specification not shown by the plaintiff to be
invalid the court may grant to the plaintiff all or any of the reliefs prayed
for. Explanation.—A mere notification of the existence of a patent does not
constitute a threat of proceeding within the meaning of this section. THE
PATENTS ACT, 1970
107. Defences, etc., in suits for infringement.—
(1) In any suit for infringement of
a patent every ground on which it may be
revoked under section 64 shall be available as a ground for defence. (2) In
any suit for infringement of a patent by the making, using or importation of
any machine, apparatus of other article or by the using of any process or by
the importation, use or distribution or any medicine or drug, it shall be a
ground for defence that such making, using, importation or distribution is in
accordance with any one or more of the conditions specified in section 47.
107A. Certain acts not to be considered as infringement.—
For the purposes of this Act,— (a)
any act of making, constructing, using, selling or importing a patented
invention solely for uses reasonably related to the development and submission of information required under any law for
the time being in force, in India, or in a country other than India, that
regulates the manufacture, construction, use, sale or import of any product;
(b) importation of patented products by any person from a person who is duly
authorised under the law to produce and sell or distribute the product, shall
not be considered as a infringement of patent rights.
108. Reliefs in suit for
infringement.—(1) The reliefs which a court may grant in any suit for
infringement include an injunction (subject to such terms, if any, as the court
thinks fit) and, at the option of the plaintiff, either damages or an account of
profits. (2) The court may also order that the goods which are found to be
infringing and materials and implements, 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 circumstances of the case
without payment of any compensation.
109. Right of exclusive licensee to take proceedings against infringement.—
(1)The holder of an exclusive licence shall have the like right as the patentee to
institute a suit in respect of any infringement of the patent committed after
the date of the licence, and in awarding damages or an account of profits or
granting any other relief in any such suit the court shall take into
consideration any loss suffered or likely to be suffered by the exclusive
licensee as such or, as the case may be, the profits earned by means of the
infringement so far as it constitutes an infringement of the rights of the
exclusive licensee as such. (2) In any suit for infringement of a patent by the
holder of an exclusive licence under subsection (1), the patentee shall, unless
he has joined as a plaintiff in the suit, be added as a defendant, but a patentee
so added as defendant shall not be liable for any costs unless he enters an
appearance and takes part in the proceedings.
110. Right of licensee under section 84 to take proceedings against
infringement.—
Any person to whom a licence has been granted under section
84 shall be entitled to call upon the patentee to take proceedings to prevent
any infringement of the patent, and, if the patentee refuses or neglects to do
so within two months after being so called upon, the licensee may institute
proceedings for the infringement in his own name as though he were the
patentee, making the patentee a defendant; but a patentee so added as defendant
shall not be liable for any costs unless he enters an appearance and takes part
in the proceedings.
111. Restriction on power of court
to grant damages or account of profits for infringement.— (1) In a suit for
infringement of patent, damages or an account of profits shall not be granted
against the defendant who proves
that at the date of the infringement he was not aware and had no
reasonable grounds for believing that the patent existed. Explanation.—A
person shall not be deemed to have been aware or to have had reasonable grounds
for believing that a patent exists by reason only of the application to an
article of the word "patent", "patented" or any word or
words expressing or implying that a patent has been obtained for the article,
unless the number of the patent accompanies the word or words in question. (2)
In any suit for infringement of a patent the court may, if it thinks fit,
refuse to grant any damages or an account of profits in respect of any
infringement committed after a failure
to pay any renewal fee within the prescribed period and before any
extension of that period. (3) Where an amendment of a specification by way of
disclaimer, correction or explanation has been allowed under this Act after the
publication of the specification, no damages or account of profits shall be
granted in any proceeding in respect of the use of the invention before the date
of the decision allowing the amendment, unless the court is satisfied that the
specification as originally published was framed in good faith and with
reasonable skill and knowledge. (4) Nothing in this section shall affect the
power of the court to grant an injunction in any suit for infringement of a
patent.
112. Restriction on power of court
to grant injunction in certain cases.— [Omitted by the Patents (Amendment) Act,
2002]
113. Certificate of validity of
specification and costs of subsequent suits for infringement thereof.—(1) If in
any proceedings before the Appellate Board or a High Court for the revocation of a patent under section 64
and section 104, as the case may be, the validity of any claim of a
specification is contested and that claim is found by the Appellate Board or
the High Court to be valid, the Appellate Board or the High Court may certify
that the validity of that claim was contested in those proceedings and was
upheld. (2) Where any such certificate
has been granted, then, if in any subsequent suit before a court for
infringement of that claim of the patent or in any subsequent proceeding for
revocation of the patent in so far as it relates to that claim, the patentee or
other person relying on the validity of the claim obtains a final order or
judgment in his favour, he shall be entitled to an order for the payment of his
full costs, charges and expenses of
and incidental to any such suit or proceeding properly incurred so far as they
concern the claim in respect of which the certificate was granted, unless the
court trying the suit or proceeding otherwise directs: Provided that the costs
as specific in this sub-section shall not be ordered when the party disputing
the validity of the claim satisfies the court that he was not aware of the
grant of the certificate when he raised the dispute and withdrew forthwith such
defence when he became aware of such a certificate. (3) Nothing contained in
this section shall be construed as authorising the courts or the Appellate
Board hearing appeals from decrees or orders in suits for infringement or
petitions for revocation, as the case may be, to pass orders for costs on the
scale referred to therein.
114. Relief for infringement of
partially valid specification.—(1) If in proceedings for infringement of a
patent it is found that any claim of the specification, being a claim in
respect of which infringement is alleged, is valid, but that any other claim is
invalid, the court may grant relief in
respect of any valid claim which is infringed: Provided that the court
shall not grant relief except by way of injunction save in the circumstances
mentioned in sub-section (2). (2) Where the plaintiff proves that the invalid
claim was framed in good faith and with reasonable skill and knowledge, the court
shall grant relief in respect of any valid claim which is infringed subject to
the discretion of the court as to costs and as to the date from which damages
or an account of profits should be reckoned, and in exercising such discretion
the court may take into consideration the conduct of the parties in inserting
such invalid claims in the specification or permitting them to remain there.
115. Scientific advisers.—(1) In
any suit for infringement or in any proceeding before a court under this Act,
the court may at any time, and whether or not an application has been made by
any party for that purpose, appoint an independent scientific adviser, to
assist the court or to inquire and report upon any such question of fact or of
opinion (not involving a question of interpretation of law) as it may formulate
for the purpose. (2) The remuneration of the scientific adviser shall be fixed
by the court and shall include the costs of making a report and a proper daily
fee for any day on which the scientific adviser may be required to attend
before the court, and such remuneration shall be defrayed out of moneys
provided by Parliament by law for the purpose.
REMEDIES
Administrative remedy - imported-Collector of customs.
Civil Remedy - Interim injunctions
-
Permanent injunctions
Order XXXIX rule 7 of Civil
procedure code - Commissioner to visit
the premises
Reliefs – Damages
-
Account of profits
-
Seized, forfeited and destroyed
Exception –not aware – no
reasonable ground to believe that the patent existed (Sec 111 of the Parent
Act)
Burden of Proof
Patented invention –patentee
Process patent – defendant
DEFENCES IN SUIT FOR INFRINGEMENT
Making, using, importation or
distribution accordance section 47
(section 107 0f Indian Patent Act)
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