By Tashmayee Sarkhel
Published on: 31 July 2022 at 22:36 IST
The article incorporates the concept of rights and obligations of the patentee and also about the Patent Act, of 1970[1].
The Patents Act, of 1970 had a very limited scope of protection wherein the essential elements of invention were new, useful and manner of manufacture. The act so under it defines ‘capable of industrial application’ as an invention capable of being used in industry.
A patentee is said to be a person who had entered into the register of Patents as the grantee or proprietor of a Patent for a time being. The patentee is provided with the authority of using the property or invention of any movable property, in the same way as the original owner could.
Under the Patent Act, 1970, a person registered of Patent, the patentee is provided with certain rights. With the rights, certain restrictions or obligations are also added up, which are expected to be followed up by the patentee. The Controller of Patent grants rights and obligations of the patentee to act by the provisions of the Patent Act, 1970.
The Patents Act, 1970:
The Patents Act, 1970, along with the Patents Rules of 1972[2], came into effect on 20th April 1972, replacing the Indian Patents and Design Act of 1911[3]. The act was solely based on the recommendations of the Ayyangar Committee Report, which was headed by Justice N. Rajagopala Ayyangar. Among all the recommendations made, one of them consisted of the allowance of only process Patents with regards to inventions relating to drugs, medicines, food, and chemicals.
India being a signatory to TRIPS (Trade-Related Intellectual Property Rights System) was under the contractual obligation of amending its Patents Act and adapting to its provisions.
The Patents (Amendment) Act, 1999[4], came into force on 26th March. The amendments under it were,
- Section 5(2)[5] was introduced newly, providing an option for filing applications for Patents in the field of drugs, medicines, and agro-chemicals.
- Exclusive Marketing Rights (EMR) was introduced under Chapter IV A[6].
- Section 39[7] was removed from the act which enabled the Indian residents to file applications within and outside the country.
- Chapter II (A)[8] was interpolated in the Indian Patent Rules, dealing with International Applications under PCT (Patent Cooperation Treaty).
The act again underwent amendment in 2002. The Patents (Amendment) Act, 2002[9], came into force on 20th May 2003. The amendments under it included,
- The term of the Patent provided was extended from 14 to 20 years. The date of Patent was considered as the date on which there is a complete specification. Even the difference in the terms of drug or food Patent and other Patent was removed.
- The word “invention” got defined by the provisions of TRIPS (Trade-Related Intellectual Property Rights System). The concept of inventive step was also introduced which enlarged the scope of the invention.
- Deferred examination system got introduced.
- Provision of publication of application after 18 months from the date of filing got introduced which brought India in close relation with the rest of the world.
- The microorganisms came under the provision of being patentable. The inventions related to traditional knowledge were included in the list of “what are not inventions.”
- The concept of the unity of invention came into existence, through the EPC (Engineering, Procurement, and Construction) and PCT (Patent Cooperation Treaty).
- Section 39[10] got reintroduced which prohibited the Indian residents to apply abroad without prior permission or first filing in India.
- Provisions related to Appellate Board were introduced Thereby bringing Section 116[11]. Under it, all the appeals to the decision of the controller would be appealable before the Appellate Board.
- Section 117[12] provided for the Bolar division which would benefit the agrochemical and pharmaceutical industry.
The third and final amendment to the Patents Act, 1970[13], made India meet the international obligations under the TRIPS (Trade-Related Intellectual Property Rights System). The final amendment came by the Patents (Amendment) Ordinance, 2004[14], later replaced by the Patent (Amendment) Act, 2005[15], and Patents (Amendment) Rules, 2006[16], with retrospective effect from 1st January 2005.
The present Indian System follows the provisions of the Patents Act, 1970. It had two distinct achievements, they were,
- Section 5[17] was deleted thereby granting product Patents. It brought the “productive Patents regime” to India.
- Exclusive Marketing Rights (EMR) got abolished.
Rights and Obligations of a patentee:
A patentee is said to be the one who is given exclusive rights and obligations over their products which acts as an inspiring force for investment in creative exercises in public at large for learning.
There are a few limitations and exceptions which are imposed upon the rights and obligations of the patentee which can be stated as,
- Research or experimental utilization;
- Usage on outdoor vessels;
- Receiving administrative authorization from various professionals;
- Reduction of Patent rights and similar imports;
- Acquisition or use of inventions by the Government.
The term to hold a Patent remains to remain to be unaltered though there is the presence of limitations or exceptions.
In India with the grant of the Patent, many rights are bestowed upon the patentee under the Patent Act, 1970, which can be stated as,
- Right to exploit the Patent
A patentee does possess an exclusive right to use, make, import, or sell for these purposes related to the invention of a new product in India itself. It also gives the right to use the method within the territories of India.
- Right to grant the license
A patentee poses the right of granting a license or entering into some arrangement for some consideration. The license provided would only be considered valid if only been in writing form and should be registered with the Controller of the Patent. As per Section 69 (5)[18] of the Patent Act, 1970, a document of assignment of a Patent is not registered, it would not be admitted as evidence of the title of the patent, and such a rule applies to the assignee, and not the assignor.
- Right to surrender
A patentee through a notice of prescribed manner has the right to surrender a Patent at any time at the patentee’s discretion. Such surrenders are advertised through journals. The publication is done to allow the people so they can oppose the offer of the surrender of the patentee. It is done when the patentee seizes their non-performer of the Patent in the future and upon which they decide to surrender the Patent.
- Right to sue for infringement
The patentee holds the right to sue for infringement of the Patent in the District Court which has the jurisdiction to try the suit.
- Right to use and enjoy Patent
The Patent Act gives a patentee a distinctive right to exercise, make, utilize, conveyor offers an article in India or the patented substance or to practice the techniques associated with the inventions. The rights under it can be either exercised by the patentee themselves or by their licenses or agents.
As when the grant of a Patent to a patentee comes with rights, so do come obligations with it under the Patent Act of 1970. They are as follows,
- Duty to request for examination
Under Section 19 (B)[19] of the Patents Act, 1970, the obligation is driving on the patentee themselves to seek from the Controller of Patents to look at the development connected for Patent.
- Duty to respond to objections
The examination request made to the Controller of Patent for its acceptance passes it to the analyst who looks at the growth and gives a report to the Controller of Patent and which is known as the First Examination Report (FER).
- Duty to clear objections
The owner of the Patent is obliged to respond to the race to objections, and also to clear and remove every raised objection, and even certain oppositions raised against the patentee’s invention. The patentee is obliged to go for a consultation to remove any such kinds of objections and oppositions against their inventions.
- Duty to pay statutory fees
A patentee is obliged to pay all the statutory expenses required to acquire a grant of a Patent in the method of registration without any failures. Mostly the application for the grant of Patent for the patentee isn’t managed. Section 142[20] of the Patent Act, 1970, lays down the provisions recognized with payment of charges and also the consequences for the non-payment of such prescribed fees.
Conclusion:
The patentee is provided with many rights and obligations along with the Patent being provided to them, under the Patent Act, 1970. The limitations to them also constitute to be an essential part of the Patent that is being provided to the patentee. The rights and obligations of the patentee are kept under vigilance by the Controller of Patent as per the Patent Act, 1970.
Hence it is being crucially expected that the patentee abides by the rights and obligations of the provisions as stated under the Patents Act, 1970.
Author: Tashmayee Sarkhel, currently pursuing a B.A.LL.B. (Hons.) at University Law College and Department of Studies in Law, Bangalore University.
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The Patent Act,1970 ↑
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The Patents Rules,1972 ↑
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The Indian Patents and Design Act,1911 ↑
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The Patents (Amendment) Act, 1999 ↑
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The Patents (Amendment) Act, 1999, s. 5(2) ↑
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The Indian Patent Rules, 1999, chapter IV A ↑
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The Patents (Amendment) Act, 1999, s. 39 ↑
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8 The Indian Patent Rules, 1999, chapter II (A) ↑
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The Patents (Amendment) Act, 2002 ↑
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The Patents (Amendment) Act, 2002, s. 39 ↑
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The Patents (Amendment) Act, 2002, s. 116 ↑
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The Patents (Amendment) Act, 2002, s. 117 ↑
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The Patents Act, 1970 ↑
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The Patents (Amendment) Ordinance, 2004 ↑
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The Patent (Amendment) Act, 2005 ↑
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The Patents (Amendment) Rules, 2006 ↑
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The Patents Act, 1970, s. 5 ↑
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The Patents Act, 1970, s. 69(5) ↑
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The Patents Act, 1970, s. 19 (B) ↑
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The Patents Act, 1970, s. 142 ↑
Reference:
Trade-Related Intellectual Property Rights System