Section 8 of the Indian Patents Act relates to furnishing information of foreign applications with the IPO. SECTION 8(1) of the Indian Patent Act mandates an Applicant to file an undertaking at the time of filing a Patent Application in India that the Applicant shall keep updating the Indian Patent office about the correspondence applications […]
Introduction
Pradeep leads the patents practice at the firm, bringing
with him over a decade of rich and invaluable experience in the field of
intellectual property. As a seasoned professional and a registered patent
agent, Pradeep has built a reputation for his meticulous approach and in-depth
understanding of patents. His expertise spans a wide range of areas, including
patent searches, analytics, drafting, prosecution, litigation support, and
technology research. Over the years, he has successfully advised and assisted a
diverse clientele, ranging from multinational corporations and Fortune 500
companies to innovative startups and renowned academic institutions.
Pradeep’s technical proficiency is as extensive as his
experience, covering domains such as telecommunications, electronics, software,
automobiles, mechanical and electrical engineering, medical devices, and
textiles. His ability to seamlessly navigate the complexities of these diverse
industries has made him a trusted advisor in the patent field. Whether it’s
guiding a startup through the patenting process or providing strategic insights
to global corporations, Pradeep’s contributions are both impactful and
transformative.
Beyond his professional commitments, Pradeep is an avid
movie enthusiast and enjoys spending his leisure time exploring different
genres of films. His love for cinema often sparks thought-provoking discussions
and fuels his creativity. A firm believer in maintaining a balanced lifestyle,
he also enjoys engaging in conversations about technology, innovation, and
emerging trends.
Pradeep’s combination of technical expertise, legal acumen,
and personal passions makes him a well-rounded leader, deeply committed to
fostering innovation and helping clients navigate the dynamic world of
intellectual property.
Bhargav is a dedicated Advocate with a unique and diverse educational background spanning Law, Media, Psychology, and English. This multidisciplinary foundation equips him with a well-rounded perspective, allowing him to analyze complex issues from various angles and offer creative, solution-oriented approaches to legal challenges.
With over two years of practical experience, Bhargav has honed his expertise in Criminal, Civil, and Intellectual Property Laws. His hands-on approach and commitment to staying ahead in the ever-evolving legal landscape make him an asset to his clients. Bhargav’s ability to adapt to different situations and bring fresh perspectives to the table stems from his rich educational journey and practical experience, enabling him to navigate intricate legal matters with confidence and precision.
Outside the courtroom, Bhargav is a passionate enthusiast of cinema, automobiles, and sports. Whether it’s analyzing the storytelling in films, exploring the latest trends in the automotive world, or engaging in spirited discussions about his favorite sports teams, his interests reflect his curious and dynamic personality. Bhargav’s blend of professional dedication and personal passions shapes his holistic approach to life and work, making him not just a skilled advocate but also a well-rounded individual.
Sharath brings a practical, hands-on approach to marketing and business development. He thrives on creating strategies that connect marketing campaigns with sales efforts to drive real business growth. With a knack for lead generation and a talent for building strong client relationships, particularly in the B2B space, Sharath plays a key role in shaping InvnTree’s growth story.
At InvnTree, Sharath manages new leads and ensures smooth coordination between the sales and marketing teams. He’s the go-to person for research-driven insights that refine our strategies and make sure we’re always moving in the right direction. His ability to juggle multiple responsibilities—whether it’s scheduling meetings or tweaking marketing campaigns—keeps things running smoothly.
Outside of work, Sharath is passionate about staying active and finds his balance at the gym. For him, working out isn’t just about fitness; it’s a way to stay focused and energized, both in life and at work. This drive and discipline shine through in everything he does, making him an essential part of the InvnTree team.
A passionate Intellectual Property Rights (IPR) enthusiast, she thrives on exploring the fascinating intricacies of trademarks, patents, designs, and everything in between. Her deep interest in the nuances of innovation and legal protection drives her to stay updated with the latest developments in the IPR domain, ensuring she is always ready to tackle new challenges. With a meticulous approach and an eye for detail, she enjoys unraveling the complexities of intellectual property, transforming them into actionable insights for safeguarding innovation.
Her enthusiasm for IPR stems from a genuine curiosity about how creativity and ingenuity can be protected and nurtured. Whether it’s understanding the fine points of patent law, analyzing the unique aspects of trademark disputes, or diving into the artistic facets of design protection, she approaches each task with dedication and a quest for knowledge.
When she’s not immersed in the dynamic world of IPR, she enjoys engaging in her favorite hobbies. From playing games that challenge her mind and body to indulging in captivating movies that offer fresh perspectives, her leisure time is as dynamic as her professional pursuits. A lover of art, she finds inspiration in exploring its many forms, whether through creating her own pieces or appreciating the work of others.
Her ability to balance a thriving professional interest with her personal passions makes her a well-rounded and driven individual, always ready to embrace both challenges and opportunities with energy and enthusiasm.
Pavana specializes in conducting patentability studies in the field of Chemistry, with a focus on organic, inorganic, and analytical chemistry. She brings a keen eye for detail and a deep understanding of chemical processes to her work, ensuring thorough and insightful analyses of inventions.
As a patent analyst, Pavana is passionate about bridging the gap between cutting-edge research and intellectual property protection. She is adept at identifying the novelty and inventive steps in complex chemical inventions, making her an invaluable asset in the patent prosecution process.
Beyond her professional interests, Pavana enjoys exploring trends in technology and innovation, particularly in the chemical industry. In her free time, she finds inspiration in movies, dramas, and series, which fuel her creativity, and she values connecting with friends to share ideas and perspectives.
Meet Akanksha Vishnoi, a seasoned advocate registered with the Bar Council of Delhi, dedicated to safeguarding our clients’ innovation and creativity. She specializes in providing expert guidance on patent, trademark, and design filing and prosecution strategies in India and the US. Her core area of practice involves managing IP portfolios, filing patent, trademark and design applications in India and the US, conducting trademark searches, prepare well curated arguments during prosecution, oppositions and hearings before the Indian Trademark, monitoring and maintaining registered intellectual property.
Akanksha’s strategic approach to trademark filing and prosecution has consistently helped our clients secure well deserved protection for their brands in India.
She has completed her LLM in Corporate and Commercial Law and a BALLB from Christ University, Bangalore.
When she’s not busy safeguarding our clients’ intellectual property, you can find her unwinding with her favorite music and a steaming cup of ginger tea.
Adarsh’s practice revoles around his fervent enthusiasm about Intellectual Property and Trade Law. Adarsh’s main area of work includes IP filing and prosecution in India and the US, providing tailored solutions for clients’ innovations and brands.
Outside the office, Adarsh enjoys playing and watching sports, mainly football.
Aditya plays a pivotal role in IP portfolio management, filing and prosecution, especially in India and the US. His main contributions include patent and design filing, responding to office actions, conducting trademark searches, filing trademarks, and addressing examination reports, among various other responsibilities.
In his free time, Aditya enjoys exploring new cuisines to try, watching cooking shows, and socializing with friends. These activities allow him balance both his personal and professional life.
Prakruthi brings extensive experience in patent consulting, particularly in areas related to manufacturing, automation engineering, electrical engineering, and mechanical engineering. Her professional focus is on Patent Drafting, Patent Prosecution, and conducting Patentability Searches.
Prior to her career in patent consulting, Prakruthi spent three years as an Assistant Professor in an Engineering college. Currently, she is pursuing a PhD in electrical engineering, adding a strong academic foundation to her practical expertise.
In her free time, Prakruthi enjoys watching movies, cooking unique recipes, and exploring lesser-known destinations. These activities allow her to unwind and find new inspirations for both her personal and professional life.
Lokesh works on patent specification drafting, patentability study and prior art searches. He provides patent consulting services in the electronics, computer science, electrical, and communication fields.
Before making the career change, Lokesh has worked in the electronics industry for more than two years in the USA. Prior to that Lokesh graduated from SRM university in India with a B-Tech Degree in Electronics and communications following which he decided to pursue higher studies in the electronics domain in the USA. He completed his first master’s degree in Electrical Engineering at West Virginia University and the second master’s Degree in Electrical Engineering at Southern Methodist University, majoring in Mixed-Signal Integrated Circuits (IC) Design.
Lokesh is also a qualified Indian Patent Agent
In his free time, he travels, plays guitar, reads, and likes to spend time with animals.
Opposition to the patent.—
(1) Representation for opposition under sub-section (1) of section 25 shall be filed in Form 7(A) (incorporated “in Form 7(A)” by 2014 amendment) at the appropriate office with a copy to the applicant, and shall include a statement and evidence, if any, in support of the representation and a request for hearing, if so desired.(substitutes “Representation for opposition under sub-section (1) of section 25 shall be filed at the appropriate office and shall include a statement and evidence, if any, in support of the representation and a request for hearing if so desired” by 2016 amendment)
(1A) Notwithstanding anything contained in sub-rule (1), no patent shall be granted before the expiry of a period of six months from the date of publication of the application under section 11A.
(2) The Controller shall consider such representation only when a request for examination of the application has been filed.
(3) On consideration of the representation if the Controller is of the opinion that application for patent shall be refused or the complete specification requires amendment, he shall give a notice to the applicant to that effect (“along with a copy of such representation” omitted by 2016 amendment).
(4) On receiving the notice under sub-rule (3), the applicant shall, if he so desires, file his statement and evidence, if any in support of his application within three months from the date of the notice,with a copy to the opponent (incorporated “with a copy to the opponent” by 2016 amendment).
(5) On consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, if so requested, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of above proceedings (substitutes “On consideration of the statement and evidence filed by the applicant, the Controller may either refuse to grant a patent on the application or require the complete specification to be amended to his satisfaction before the patent is granted” by 2016 amendment).
(6)(“After considering the representation and submission made during the hearing if so requested, the Controller shall proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within one month from the completion of above proceedings” omitted by 2016 amendment)
Examination of application
(1)(i) A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;
(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;
(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;
(iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;
(v) The period for making request for examination under section 11B of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the’ commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.
(2) (i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:
Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:
Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.
(ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;
(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.
(3) A first statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within one month from the date of disposal of the report of examiner by the Controller: Provided that where the request for examination was filed by a person interested, only an intimation of such examination may be sent to such person interested.
(4) Reply to the first statement of objections and subsequent reply, if any, shall be processed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements.
(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).
Filing of priority document.—
(Incorporated by 2020 amendment)
(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.
(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.
(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.
(end of insertion by 2020 amendment)
(Substitutes)(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraph (a) or paragraph (b) of rule 17.1 of the regulations under the Treaty, the applicant shall file with the patent office the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20.
(2) Where priority document referred to in sub-rule (1) is not in the English language, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.
(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the appropriate office snail invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.
Filing of reply statement and evidence.—
(1) If the patentee desires to contest the opposition, he shall leave at the appropriate office a reply statement setting out fully the grounds upon which the opposition is contested arid evidence, if any, in support or his case within a period of two months from “the date of receipt of the copy of the written statement and Opponent’s evidence, if any by mm under rule 5 and deliver to the opponent a copy thereof.
(2) If the patentee does not desire to contest or leave his reply and evidence within the period as specified in sub-rule (1), the patent shall be deemed to have been revoked.
Payment of fees.—
The continuance of a person’s name in the register of patent agents shall be subject to the payment of the fees specified therefor in the First Schedule.
Particulars of the qualifying examination for patent agents.—
(1) The qualifying examination referred to in clause (c) (ii) of sub-section (1) of section 126 shall consist of a written test and a viva voce examination.
(2) The qualifying examination shall consist of the following papers and marks, namely:
Paper I —Patents Act and Rules 100
Paper II—Drafting and interpretation of patent
specifications and other documents 100
Viva Voce 50
(3) A candidate shall be required to secure a minimum of fifty marks in paper I and paper II and shall be declared to have passed the examination only, if he obtains an aggregate of sixty percent of the total marks.
Manner of application for inclusion in the roll of scientific advisers.—
Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers by furnishing his bio-data. (substitutes “Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers furnishing his bio-data” by 2016 amendment)
Roll of scientific advisers.—
(1) The Controller shall maintain a roll of scientific advisers for the purpose of section 115. The roll shall be updated annually. The roll shall contain the names, addresses, specimen signatures and photographs of scientific advisers, their designations, information regarding their educational qualifications, the disciplines of their specialisation and their technical, practical and research experience.
(2) A person shall be qualified to have his name entered in the roll of scientific advisers, if he—
(i) holds a degree in science, engineering or technology or equivalent;
(ii) has at least fifteen years’ technical, practical or research experience; and (substitutes “has at least fifteen years’ practical or research experience” by 2016 amendment)
(iii) he holds or has held a responsible post in a scientific or technical department of the Central or State Government or in any organisation.
Application for compulsory licence etc.—
An application to the Controller for an order under section 84, section 85, section 91 or section 92 or section 92A shall be in Form 17, or Form 19, as the case may be. Except in the case of an application made by the Central Government, the application shall set out the nature of the applicant’s interest and terms and conditions of the licence the applicant is willing to accept.
Register of patents under section 67.—
(1) Upon the grant of a patent, the Controller shall enter in the register of patents at each appropriate office, the name, address and nationality of the grantee as the patentee thereof, the title of the invention (including the categories to which the invention relates), the date of the patent and the date of grant thereof together with the address for service of the patentee.
(2) The Controller shall also enter in the register of patents particulars regarding proceedings under the Act before the Controller or Appellate Board or the courts in respect of every patent.
(3) Where the register of patents or any part thereof is in computer floppies, diskettes or any other electronic form it shall be maintained and accessed only by the person who is duly authorised by the Controller and no entry or alteration of any entry or rectification of any entry in the said register shall be made by any person who is not so authorised by the Controller.
Supplementary provisions as to convention applications.—
[(1) Where a convention application is made in accordance with the provisions of this Chapter, the applicant shall furnish, when required by the Controller, in addition to the complete specification, copies of the specifications or corresponding documents filed or deposited by the applicant in the patent office of the convention country as referred to in section 133 verified to the satisfaction of the Controller, within the prescribed period from the date of communication by the Controller.] Subs. by Act 15 of 2005, s. 70, for sub-section (1) (w.e.f. 1-1-2005)
(2) If any such specification or other document is in a foreign language, a translation into English of the specification or document, verified by affidavit or otherwise to the satisfaction of the Controller, shall be [furnished when required by the Controller.] Subs. by Act 38 of 2002, s. 58, for “annexed to the specification or document” (w.e.f. 20-5-2003)
(3) For the purposes of this Act, the date on which an application was made in a convention country is such date as the Controller is satisfied, by certificate of the official chief or head of the patent office of the convention country or otherwise, is the date on which the application was made in that convention country.
[(4) An international application filed under the Patent Co-operation 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 abstract and drawings, if any,filed in the international application shall be taken as complete specification for the purposes of this Act.
(5) The filing date of 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 taken as an amendment made before the patent office.] Ins. by s. 58, ibid. (w.e.f. 20-5-2003)
Power of Controller to refuse to deal with certain agents.—
(1) Subject to any rules made in this behalf, the Controller may refuse to recognise as agent in respect of any business under this Act—
(a) any individual whose name has been removed from, and not restored to, the register;
(b) any person who has been convicted of an offence under section 123;
(c) any person, not being registered as a patent agent, who in the opinion of the Controller is engaged wholly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed;
(d) any company or firm, if any person whom the Controller could refuse to recognise as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm.
(2) The Controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in India.
Removal from register of patent agents and restoration.—
(1) The [Controller] Subs. by s. 55, ibid., for “Central Government” (w.e.f. 20-5-2003) may remove the name of any person from the register when [he] Subs. by s. 55, ibid., for “it” (w.e.f. 20-5-2003) is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as [he] Subs. by s. 55, ibid., for “it” (w.e.f. 20-5-2003) thinks fit to make—
(i) that his name has been entered in the register by error or on account of misrepresentation or suppression of material fact;
(ii) that he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the [Controller] Subs. by s. 55, ibid., for “Central Government” (w.e.f. 20-5-2003) renders him unfit to be kept in the register.
(2) The [Controller] Subs. by s. 55, ibid., for “Central Government” (w.e.f. 20-5-2003) may, on application and on sufficient cause being shown, restore to the register the name of any person removed therefrom.
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 circumstances 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 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].
Compulsory licence for export of patented pharmaceutical products in certain exceptional circumstances.—
(1) Compulsory licence shall be available for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided compulsory licence has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India.
(2) The Controller shall, on receipt of an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of the concerned pharmaceutical product to such country under such terms and conditions as may be specified and published by him.
(3) The provisions of sub-sections (1) and (2) shall be without prejudice to the extent to which pharmaceutical products produced under a compulsory license can be exported under any other provision of this Act.
Explanation.—For the purposes of this section, ‘pharmaceutical products’ means any patented product, or product manufactured through a patented process, of the pharmaceutical sector needed to address public health problems and shall be inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use.
Revocation of secrecy directions and extension of time.—
When any direction given under section 35 is revoked by the Controller, then, notwithstanding any provision of this Act specifying the time within which any step should be taken or any act done in connection with an application for the patent, the Controller may, subject to such conditions, if any, as he thinks fit to impose, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application whether or not that time has previously expired.
Secrecy directions to be periodically reviewed.—
[(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 [six months] Subs. by Act 15 of 2005, s. 29, for “twelve months” (w.e.f. 1-1-2005) 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 filed by a foreign applicant it is found that the invention is published outside India it shall forthwith give notice to the Controller to revoke the direction and the Controllers shall thereupon revoke the directions previously given by him].Subs. by Act 38 of 2002, s. 20, for sub-section (1) (w.e.f. 20-5-2003)
(2) The result of every re-consideration under sub-section (1), shall be communicated to the applicant within such time and in such manner as may be prescribed.
Restoration of patents.—
(1) An application for the restoration of a patent under section 60 shall be made in Form 15.
(2) Where the Controller is satisfied that a prima facie case for the restoration of any patent has not been made out, he shall intimate the applicant accordingly and unless the applicant makes a request to be heard in the matter within one month from the date of such intimation, the Controller shall refuse the application.
(3) Where applicant requests for a hearing within the time allowed and the Controller, after giving the applicant such a hearing, is prima facie satisfied that the failure to pay the renewal fees was unintentional, he shall publish the application.
Numbering of applications on the grant of patent.—
On the grant of a patent, the application shall be accorded a number (called serial number) in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911 (2 of 1911), which shall be the number of the patent so granted.
Determination of costs.—
If the patentee notifies the Controller that he desires to withdraw the patent after notice of opposition is given, the Controller, depending on the merits of the case, may decide whether costs should be awarded to the opponent.
Further evidence to be left with the leave of the Controller.—
No further evidence shall be delivered by either party except with the leave or directions of the Controller:
Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 62.
Filing of written statement of opposition and evidence.—
The opponent shall send a written statement in duplicate setting out the nature of the opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, along with notice of opposition and shall deliver to the patentee a copy of the statement and the evidence, if any.
Filing of notice of opposition.—
The notice of opposition to be given under sub-section (2) of section 25 shall be made in Form 7 and sent to the Controller in duplicate at the appropriate office.
Power to extend time prescribed.—
(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20, sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B, sub-rules (10) and (11) of rule 24C, sub-rule of rule 55, sub-rule (1A) of rule 80 and sub-rules (1) and (2) of rule 130 (substitutes “Save as otherwise provided in the rules 24B, sub-rule (4) of rule 55 and sub-rule (1A) of rule 80” by 2016 amendment), the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.
(2) Any request for extension of time prescribed by these rules for the doing of any act or the taking of any proceeding thereunder shall be made before the expiry of such time prescribed in these rules (substitutes “Any request for extension of time made under these rules shall be made before the expiry of prescribed period” by 2016 amendment).
Amendment of the complete specification in case of anticipation.—
(1) If the applicant so requests at any time, or if the Controller is satisfied that the objection has not been removed within the period referred to in sub-rule (2) of rule 29, a date for hearing the applicant shall be fixed forthwith and the applicant shall be given at least ten days’ notice of the date so fixed. The applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.
(2) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as will be to his satisfaction to be made and may direct that reference to such other specification, as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.
Procedure in case of anticipation by prior claiming.—
(1) When it is found that the invention so far as claimed in any claim of the complete specification, is claimed in any claim of any other specification falling within clause (b) of sub-section (1) of section 13, the applicant shall be so informed and shall be afforded an opportunity to amend his specification.
(2) If the applicant’s specification is otherwise in order for grant and an objection under clause (b) of sub-section (1) of section 13 is outstanding, the Controller may postpone the grant of patent and allow a period of two months for removing the objection.
Procedure in case of anticipation by prior publication.—
(1) If the Controller is satisfied after investigation under section 13 that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document referred to in clause (a) of sub-section (1) or subsection (2) of the said section, the Controller shall
communicate the gist of specific objections and the basis thereof to the applicant and the applicant shall be afforded an opportunity to amend his specification.
(2) If the applicant contests any of the objections communicated to him by the Controller under sub-rule (1), or if he refiles his specification along with his observations as to whether or not the specification is to be amended, he shall be given an opportunity to be heard in the matter if he so requests:
Provided that such request shall be made on a date earlier than ten days of the final date of the period preferred to under sub-section (1) of section 21:
Provided further that a request for hearing may be allowed to be filed within such shorter period as the Controller may deem fit in the circumstances of the case.
(3) If the applicant requests for a hearing under sub-rule (2) within a period of one month from the date of communication of the gist of objections, or, the Controller, considers it desirable to do so, whether or not the applicant has refiled his application, he shall forthwith fix a date and time for hearing having regard to the period remaining for putting the application in order or to the other circumstances of the case.
(4) The applicant shall be given ten days’ notice of any such hearing or such shorter notice as appears to the Controller to be reasonable in the circumstances of the case and the applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.
(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as he thinks fit to be made and may refuse to grant the patent unless the amendment so specified or permitted is made within such period as may be fixed.
(6) (Incorporated by 2016 amendment) The hearing may also be held through video-conferencing or audio-visual communication devices: Provided that such hearing shall be deemed to have taken place at the appropriate office.
Explanation.– For the purposes of this rule, the expression “communication device” shall have the same meaning as assigned to it in clause (ha) of sub-section (1) of section 2 of the Information Technology Act, 2000 (21 of 2000). (end of insertion by 2016 amendment)
(7) (Incorporated by 2016 amendment) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing. (end of insertion by 2016 amendment)
Definitions.—
In this Chapter, unless the context otherwise requires,—
(a) “Article” means an Article of the Treaty;
(aa) “Examining Authority” means the Indian International Preliminary Examining Authority referred to in sub-rule (1) of rule 19F;
(ab) “International Bureau” means the International Bureau of World Intellectual Property Organisation;
(ac) “Searching Authority” means the Indian International Searching Authority referred to in sub-rule (1) of rule 19A;
(b) “Treaty” or “PCT” means the Patent Cooperation Treaty.
(c) All other words and expressions used herein and not defined but defined in the PCT shall have the same meaning as assigned to them in that Treaty.
Drawings.—
(1) Drawings, when furnished under section 10 by the applicants otherwise than on requisition made by the Controller, shall accompany the specifications to which they relate.
(2) No drawings or sketch, which would require a special illustration of the specification, shall appear in the specification itself.
(3) At least one copy of the drawing shall be prepared neatly and clearly on a durable paper sheet.
(4) Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3cm at the bottom and right hand of every sheet.
(5) Drawings shall be on a scale sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings.
(6) Drawings shall be sequentially or systematically numbered and shall bear—
(i) in the left hand top corner, the name of the applicant;
(ii) in the right hand top corner, the number of the sheets of drawings, and the consecutive number of each sheet; and
(iii) in the right hand bottom corner, the signature of the applicant or his agent.
(7) No descriptive matter shall appear on the drawings except in the flow diagrams.
Amendments to specifications.—
(1) When amendments are made to a provisional or complete specification or any drawing accompanying it, the pages incorporating such amendments shall be retyped and submitted to form a continuous document. (substitutes “When a provisional or complete specification or any drawing accompanying it has been received by the applicant or his agent for amendment, and amendment is duly made thereon, the page incorporating such amendment shall be retyped and submitted to form a continuous document. Amendments shall not be made by slips pasted ort, or as footnotes or by writing in the margin of any of the said documents” by 2016 amendment)
(2) (Incorporated by 2016 amendment) A marked copy clearly identifying the amendments carried out and a statement clearly indicating the portion (page number and line number) of the specification or drawing being amended along with the reason shall also be filed. (end of insertion by 2016 amendment)
(3) (Incorporated by 2016 amendment) Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents. (end of insertion by 2016 amendment)
(4) When a retyped page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant. (substitutes “The amended documents shall be returned to the Controller together with the superseded pages or drawings, if any, duly marked, cancelled and initiated by the applicant or his agent.Copies of any pages that have been retyped or added and of any drawing that has been added or substantially amended shall be sent in duplicate” by 2016 amendment)
Address for service.—
Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller an address for service, including a postal address in India and an e-mail address, and such address for service shall be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address for service is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter:(substitutes “Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller an address for service in India and that address may be treated for all purposes connected with Such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter” by 2016 amendment)
(Incorporated by 2016 amendment) Provided that a patent agent shall also be required to furnish to the Controller a mobile number registered in India. (end of insertion by 2016 amendment)
Expedited examination of applications
(1)An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:
(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
(Substituted by 2019 amendment)(b) that the applicant is a startup.
(Incorporated by 2019 amendment)
“(b) that the applicant is a startup; or
(c) that the applicant is a small entity; or
(d) that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or
(e) that the applicant is a department of the Government; or
(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
(h) that the applicant is an institution wholly or substantially financed by the Government;
Explanation:- For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or
(i) that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government.
Provided that public comments are invited before any such notification; or
(j) that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.
Explanation:- The patentability of patent applications filed under clause (j) above will be in accordance with the relevant provisions of the Act.” (end of insertion by 2019 amendment)
(2) A request for examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1).
(3) Except where the application has already been published under sub-section (2) of section 11A or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A.
(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.
(5)The Controller shall refer the request for expedited examination along with the application and specification and other documents to the examiner, in respect of the applications where the request for expedited examination has been received, in the order of filing of such requests.
(Incorporated by 2020 amendment)
Provided that a request for expedited examination under this rule filed by a startup or small entity shall not be questioned merely on the ground that the startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognised by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority.
(end of insertion by 2020 amendment)
(Substituted by 2020 amendment) Provided that a request for expedited examination under this rule filed by a startup shall not be questioned merely on the ground that the startup ceased to be a startup after having filed an application for patent due to the lapse of more than five years from the date of its incorporation or registration, or the turnover subsequently crossed the financial threshold limit, as defined.
(6) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding two months from the date of reference of the application to him by the Controller.
(7) The period within which the Controller shall dispose of the report of the examiner shall be one month from the date of receipt of such report by the Controller.
(8) A first statement of objections along with any document, if required, shall be issued by the Controller to the applicant or his authorised agent within fifteen days from the date of disposal of the report of examiner by the Controller.
(9) Reply to the first statement of objections and subsequent reply, if any, in respect of an application where the request for expedited examination was filed, shall be processed in the order in which such reply for such application is received.
(10) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant.
(11) The time for putting an application in order for grant under section 21, as prescribed in sub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).
(12) The Controller shall dispose of the application within a period of three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier: Provided that this time limit shall not be applicable in case of pre-grant opposition.
(13) Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.
Examination of application
(1)(i) A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;
(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;
(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;
(iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;
(v) The period for making request for examination under section 11B of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the’ commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.
(2) (i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:
Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:
Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.
(ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;
(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.
(3) A first statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within one month from the date of disposal of the report of examiner by the Controller: Provided that where the request for examination was filed by a person interested, only an intimation of such examination may be sent to such person interested.
(4) Reply to the first statement of objections and subsequent reply, if any, shall be processed in the order in which such reply is received.
(5) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements.
(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).
Request for publication
A request for publication under sub-section (2) of section 11 A shall be made in Form 9
Appropriate office.—
(1) The appropriate office of the patent office shall—
(i) for all the proceedings under the Act, be the head office of the patent office of the branch office, as. the case may be, within whose territorial limits—
(a) the applicant or first mentioned applicant in case of joint applicants for a patent, normally resides or has his domicile or has a place of business or the place from where the invention actually originated;or
(b) the applicant for a patent or party in a proceeding if he has no place of business or domicile in India, the address for service in India given by such applicant or party is situated; and
(ii) [Omitted by Patents (Amendment) Rules,, 2006]
(2)The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.
(3) Notwithstanding anything contained in sub-rule (2), the Controller may transfer an application for patent so filed, to head office or, as the case may be, branch office of the Patent Office.
(4) Notwithstanding anything contained in sub-rule (1), further application referred to in section 16 of the Act, shall be filed at the appropriate office of the first mentioned application only.
(5) All further applications referred to section 16 of the Act filed in an office other than the appropriate office of the first mentioned application, before the commencement of the Patents (Amendment) Rules, 2013, shall.be transferred to the appropriate office of the first mentioned application.
Definitions and interpretation.—
(1) In this Act, unless the context otherwise requires,—
(a) omitted Clause (a) omitted by Act 33 of 2021, s. 13 (w.e.f.4-4-2021).
(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;
[(aba) “Budapest Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the purposes of Patent Procedure done at Budapest on 28th day of April, 1977, as amended and modified from time to time;] Ins. by Act 15 of 2005, s. 2 (w.e.f. 1-1-2005)
(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) “Controller” means the Controller General of Patents, Designs and Trade Marks referred to in section 73;
(c) “convention application” means an application for a patent made by virtue of section 135;
[(d) “convention country” means a country or a country which is member of a group of countries or a union of countries or an Intergovernmental organization (referred to as a convention country in section 133 Subs. by Act 15 of 2005, s. 2, for “notified as such under sub-section (1) of section 133” (w.e.f. 1-1-2005));] Subs. by Act 38 of 2002, s. 3, for clause (d) (w.e.f. 20-5-2003)
(e) “district court” has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (5 of 1908);
(f) “exclusive licence” means a licence from a patentee which confers on the licensee, on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and exclusive licensee shall be construed accordingly.
(g) Omitted by the Patents (Amendment) Act, 2005 Clause (g) omitted by s. 2, ibid. (w.e.f. 1-1-2005).
(h) “Government undertaking” means any industrial undertaking carried on—
(i) by a department of the Government, or
(ii)by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
(iii) by a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956), or
[(iv) by an institution wholly or substantially financed by the Government;] Ins. by Act 15 of 2005, s. 2 (w.e.f. 1-1-2005).
*The words “and includes the Council of Scientific and Industrial Research and any other institution which is financed wholly or for the major part by the said Council” omitted by s. 2, ibid. (w.e.f. 1-1-2005)
[(i) “High Court”, in relation to a State or Union territory, means the High Court having territorial jurisdiction in that State or Union territory, as the case may be;] Subs. by s. 2, ibid., for clause (i) (w.e.f. 1-1-2005).
[(ia) “international application” means an application for patent made in accordance with the Patent Cooperation Treaty;] Ins. by Act 38 of 2002, s. 3 (w.e.f. 20-5-2003)
[(j) “invention” means a new product or process involving an inventive step and capable of industrial application;] Subs. by s. 3, ibid., for clause (j) (w.e.f. 20-5-2003)
[(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;] Subs. by Act 15 of 2005, s. 2, for clause (ja) (w.e.f. 1-1-2005)
(k) “legal representative” means a person who in law represents the estate of a deceased person;
[(l) “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art;
(la) “Opposition Board” means an Opposition Board constituted under sub-section (3) of section 25;
(m) “patent” means a patent for any invention granted under this Act;] Subs. by s. 2, ibid., for clauses (l) and (m) (w.e.f. 1-1-2005).
(n) “patent agent” means a person for the time being registered under this Act as a patent agent;
(o) “patented article” and “patented process” means respectively an article or process in respect of which a patent is in force;
(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;
(p) “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent;
(q) “patent of addition” means a patent granted in accordance with section 54;
(r) “patent office” means the patent office referred to in section 74;
(s) “person” includes the Government;
(t) “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;
[(ta) “pharmaceutical substance” means any new entity involving one or more inventive steps;] Ins. by Act 15 of 2005, s. 2 (w.e.f. 1-1-2005)
[(u) “prescribed” means,—
(A) in relation to proceedings before a High Court, prescribed by rules made by the High Court;
[(B) omitted] Sub-clause (B) omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021).
(C) in other cases, prescribed by rules made under this Act;] Subs. by Act 38 of 2002, s. 3, for clause (u) (w.e.f. 20-5-2003)
(v) “prescribed manner” includes the payment of the prescribed fee;
(w) “priority date” has the meaning assigned to it by section 11;
(x) “register” means the register of patents referred to in section 67;
(y) “true and first inventor” does not include either the first importer of an invention into India,or a person to whom an invention is first communicated from outside India.
(2) In this Act, unless the context otherwise requires, any reference—
(a) to the Controller shall be construed as including a reference to any officer discharging the functions of the Controller in pursuance of section 73;
(b) to the patent office shall be construed as including a reference to any branch office of the patent office.
Publication of applications] Ins. by s. 9, ibid. (w.e.f. 20-5-2003).
[(1) Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.
(2) The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub- section (1) and subject to the provisions of sub-section (3), the Controller shall publish such application as soon as possible.
(3) Every application for a patent shall, on the expiry of the period specified under sub-section (1), be published, except in cases where the application—
(a) in which secrecy direction is- imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified under sub-section (1).] Subs. by Act 15 of 2005, s. 10, for sub-sections (1) to (3) (w.e.f. 1-1-2005).
(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 prescribed under sub-section (1) 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.
[(7) On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:
Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:
Provided further that the rights of a patentee in respect of applications made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:
Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be instituted against such enterprises].Ins. by s. 10, ibid. (w.e.f. 1-1-2005).
Special provisions relating to convention application.—
(1) Every convention application shall—
(a) be accompanied by a complete specification; and
(b) specify the date on which and the convention country in which the application for protection, or as the case may be, the first of such applications was made; and
(c) state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.
(2) Subject to the provisions contained in section 10, a complete specification filed with a convention application may include claims in respect of developments of, or additions to, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
(3) A convention application shall not be post-dated under sub-section (1) of section 17 to a date later than the date on which under the provisions of this Act the application could have been made.
What are not inventions.—The following are not inventions within the meaning of this Act,—
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
[(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;] Subs. by Act 38 of 2002, s. 4, for clause (b) (w.e.f. 20-5-2003)
(c) the mere discovery of a scientific principle or the formulation of an abstract theory [or discovery of any living thing or non-living substance occurring in nature;] Ins. by s. 4, ibid. (w.e.f. 20-5-2003)
[(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;] Subs. by Act 15 of 2005, s. 3, for clause (d) (w.e.f. 1-1-2005)
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
[(g) Omitted by the Patents (Amendment) Act, 2002] Clause (g) omitted by Act 38 of 2002, s. 4 (w.e.f. 20-5-2003).
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic]Ins. by s. 4, ibid. (w.e.f. 20-5-2003) or other treatment of human beings or any process for a similar treatment of animals *The words “or plants” omitted by s. 4, ibid. (w.e.f. 20-5-2003) to render them free of disease or to increase their economic value or that of their products.
[(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.] Ins. by s. 4, ibid. (w.e.f. 20-5-2003)
Request for examination.—
[(1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period]. Subs. by s. 11, ibid., for sub-section (1) (w.e.f. 1-1-2005)
(2) [Omitted] Sub-section (2) omitted by s. 11, ibid. (w.e.f. 1-1-2005).
[(3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person]. Subs. by s. 11, ibid., for sub-section (3) (w.e.f. 1-1-2005).
(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 [(3)] the words, brackets and figure “or sub-section (2)” omitted by s. 11, ibid. (w.e.f. 1-1-2005)., the application shall be treated as withdrawn by the applicant:
[Provided that—
(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and
(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction] Subs. by s. 11, ibid., for the proviso (w.e.f. 1-1-2005).
Provisional and complete specifications.—[(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.] . Subs. by s. 7, ibid., for sub-section (1) (w.e.f. 1-1-2005)
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.
[Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.] The proviso ins. by Act 15 of 2005, s. 7 (w.e.f. 1-1-2005)
(3) [Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.] Subs. by s. 7, ibid., for sub-section (3) (w.e.f. 1-1-2005)
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before [grant of patent] . Subs. by s. 7, ibid., for “the acceptance of the complete specification”(w.e.f. 1-1-2005), cancel the provisional specification and post-date the application to the date of filing of the complete specification.
Preliminary advice by Registrar as to distinctiveness. –
An application for preliminary advice by the Registrar under sub-section (1) of Section 133 shall be made in Form TM-M in respect of any goods or services comprised as published by the Registrar under sub-rule (2) of rule 20, along with the fees specified in entry number 14 of the First Schedule and accompanied by one representation of the trademark.
Manner of keeping the record of international registrations where India has been designated.-
(1) On receipt of advice from the International Bureau about an international registration designating India and notification about the extension of protection resulting from such international registration, the Registrar shall enter all the particulars thereof electronically in a record called the ‘Record of Particulars of International Registration’. Any change in the particulars as and when received from the International Bureau shall be entered in the said record.
(2) Any entry made in such record shall, to the extent that it applies to India as a designated contracting party, have the same effect as if it had been recorded by the Registrar in the Register of trademarks.
Fees and surcharge.—
(1) There shall be paid in respect of [applications, international applications] Subs. by Act 40 of 2010, s. 8, for “applications” (w.e.f. 8-7-2013) and registration and other matters under this Act such fees and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fee has been paid.
(3) Where a fee is payable in respect of the filing of a document at the Trade Marks Registry, the document shall be deemed not to have been filed at the Registry until the fee has been paid.
Powers of Registrar.—
In all proceedings under this Act before the Registrar,—
(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses;
(b) the Registrar may, subject to any rules made in this behalf under section 157, make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a civil court:
Provided that the Registrar shall have no power to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or provision of services or to authorise the use of the mark;
(c) the Registrar may, on an application made in the prescribed manner, review his own decision.
Procedure for application for rectification, etc., before [High Court].—
(1) An application for rectification of the register made to the [High Court] Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021) under section 57 shall be in such form as may be prescribed.
(2) A certified copy of every order or judgment of the [High Court] Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021) relating to a registered trade mark under this Act shall be communicated to the Registrar by the Board and the Registrar shall give effect to the order of the Board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order.
Resignation and removal.—
Omitted by s. 21, ibid. (w.e.f. 4-4-2021)
Salaries, allowances and other terms and conditions of service of Chairman, Vice-Chairman and other Members.—
Omitted by s. 21, ibid. (w.e.f. 4-4-2021)
Opposition to registration of certification trade marks.—
When an application has been accepted, the Registrar shall, as soon as may be thereafter, cause the application as accepted to be advertised in the prescribed manner, and the provisions of section 21 shall apply in relation to the registration of the mark as they apply in relation to an application under section 18.
(1) The Registrar shall not make any amendment of the register which would have the effect of adding any goods or classes of goods or services to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made or of antedating the registration of a trade mark in respect of any goods or services:
Provided that this sub-section, shall not apply when the Registrar is satisfied that compliance therewith would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods or services and would not substantially prejudice the rights of any person.
(2) A proposal so to amend the register shall be brought to the notice of the registered proprietor of the trade mark affected and advertised in the prescribed manner, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of sub-section (1).
(1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical index of goods and services published under sub-section (1), the classification of goods or services shall be determined by the Registrar in accordance with sub-section (2) of section 7.
There shall be kept under the direction and supervision of the Registrar—
(a) an index of registered trade marks;
(b) an index of trade marks in respect of which applications for registration are pending;
(c) an index of the names of the proprietors of registered trade marks; and
(d) an index of the names of registered users.
Assignability and transmissibility of unregistered trade marks.—
An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.
International application originating from India—
(1) Where an application for the registration of a trade mark has been made under section 18 or a trade mark has been registered under section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the Common Regulations for international registration of that trade mark.
(2) A person holding an international registration may make an international application on the form
prescribed by the Common Regulations for extension of the protection resulting from such registration to
any other Contracting Party.
(3) An international application under sub-section (1) or sub-section (2) shall designate the
Contracting Parties where the protection resulting from the international registration is required.
(4) The Registrar shall certify in the prescribed manner that the particulars appearing in the
international application correspond to the particulars appearing, at the time of the certification, in the
application under section 18 or the registration under section 23, and shall indicate the date and number of
that application or the date and number of that registration as well as the date and number of the
application from which that registration resulted, as the case may be, and shall within the prescribed
period, forward the international application to the International Bureau for registration, also indicating
the date of the international application.
(5) Where at any time before the expiry of a period of five years of an international registration,
whether such registration has been transferred to another person or not, the application under section 18
or the registration under section 23, as the case may be, has been withdrawn or canceled or has expired or
has been finally refused in respect of all or some of the goods or services listed in the international
registration, the protection resulting from such international registration shall cease to have effect:
Provided that where an appeal is made against the decision of registration and an action requesting for
withdrawal of application or an opposition to the application has been initiated before the expiry of the
period of five years of an international registration, any final decision resulting into withdrawal,
cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of
the international registration.
(6) The Registrar shall, during the period of five years beginning with the date of international
registration, transmit to the International Bureau every information referred to in sub-section (5).
(7) The Registrar shall notify the International Bureau the cancellation to be effected to an
international registration keeping in view the current status of the basic application or the basic
registration, as the case may be.
Agency.—
(1) The authorisation of an agent for the purposes of the Act and these rules shall be in Form 26 or in the form of a power of attorney within a period of three months from the date of filing of such application or document, failing which no action shall be taken on such application or documents for further processing till such deficiency is removed. (substitutes “The authorisation of an agent for the purposes of the Act and these rules shall be in Form 26 or in the form of a power of attorney” by 2016 amendment)
(2) Where any authorisation has been made under sub-rule (1), service upon the agent of any document relating to any proceeding or matter under the Act or these rules shall be deemed to be service upon the person so authorising him and all communications directed to be made to a person in respect of any proceeding or matter may be addressed to such agent, and all appearances before the Controller relating thereto may be made by or through such agent.
(3) Notwithstanding anything contained in sub-rule (1) and (2), the Controller may, if it is considered necessary, require the personal signature or presence of an applicant, opponent or party to such proceeding or matter.
Exercise of discretionary power by the Controller.—
Before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to a proceeding adversely, the Controller shall give such applicant or party, a hearing, after giving him or them, ten days notice of such hearing ordinarily.
Payment of unpaid renewal fees.—
(1) Where the Controller decides in favour of the applicant, the applicant shall pay the unpaid renewal fees and the additional fee specified in the First Schedule, within a month from the date of the order of the Controller allowing the application for restoration.
(2) The Controller shall publish his decision.
Request for withdrawal.—
A request for withdrawing the application under sub-section (4) of section 11B shall be made in Form 29.(“Form 29” substitutes “writing” by 2016 amendment)
Savings in respect of other persons authorised to act as agents.—
Nothing in the Chapter shall be deemed to prohibit—
(a) the applicant for a patent *The words “or any person, not being a patent agent, who is duly authorised by the applicant” omitted by s. 56, ibid. (w.e.f. 20-5-2003) from drafting any specification or appearing or acting before the Controller, or
(b) an advocate, not being a patent agent, from taking part in any [hearing before the Controller on behalf of a party who is taking part in any proceeding under this Act.] Subs. by Act 38 of 2002, s. 56, for certain words (w.e.f. 20-5-2003).
Rights of patent agents.—
Subject to the provisions contained in this Act and in any rules made thereunder, every patent agent whose name is entered in the register shall be entitled—
(a) to practice before the Controller; and
(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.
Term of patents of addition.—
(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer:
Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under sub-section (1) the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
Details to be included in an application for the registration of a patent agent.—
An application by a person entitled to be registered as a patent agent under sub-section (2) of section 126 shall also be made in Form 22.
Time for putting application in order for grant.—
(1) An application for a patent shall be deemed to have been abandoned unless, Within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.
Explanation.—Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.
(2) If at the expiration of the period as prescribed under sub section (1),—
(a) an appeal to the High Court is pending in respect of the application for the patent for the main invention; or
(b) in the case of an application for a patent of addition, an appeal to the High Court is pending in respect of either that application or the application for the main invention, the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the period as prescribed under sub-section (1), be extended until such date as the High Court may determine.
(3) If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine:
Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court.] Subs. by Act 15 of 2005, s. 19, for section 21 (w.e.f. 1-1-2005).
Information relating to patents.—
A person making a request to the Controller in the prescribed manner for information relating to any such matters as may be prescribed as respects any patent specified in the request or as respects any application for a patent so specified shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.
Evidence of entries, documents, etc.—
(1) A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorized by this Act or any rules made thereunder to make or do, shall be prima facie evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or omitted to be done.
(2) A copy of any entry in any register or of any document kept in the patent office or of any patent, or an extract from any such register or document, purporting to be certified by the Controller and sealed with the seal of the patent office shall be admitted in evidence in all courts, and in all proceedings, without further proof or production of the original.
(3) The Controller or any other officer of the patent office shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special causes.
Register to be open for inspection.—
(1) Subject to the provisions contained in this Act and any rules made thereunder, the register shall at all convenient times be open to inspection by the public; and certified copies, sealed with the seal of the patent office, of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.
(2) The register shall be prima facie evidence of any matters required or authorised by or under this Act to be entered therein.
[(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 other electronic form or printouts of such record of particulars for inspection] Ins. by Act 38 of 2002, s. 34 (w.e.f. 20-5-2003).
Loss or destruction of patents.—
If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may at any time, on application made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.
Controller to have certain powers of a civil court.—
(1) Subject to any rules made in this behalf, the Controller in any proceedings before him under this Act shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908 (5 of 1908), in respect of the following matters, namely:—
(a) summoning and enforcing the attendance of any person and examining him on oath;
(b) requiring the discovery and production of any document;
(c) receiving evidence on affidavits;
(d) issuing commissions for the examination of witnesses or documents;
(e) awarding costs;
(f) reviewing his own decision on application made within the prescribed time and in the prescribed manner;
(g) setting aside an order passed ex- parte on application made within the prescribed time and in the prescribed manner;
(h) any other matter which may be prescribed.
(2) Any order for costs awarded by the Controller in exercise of the powers conferred upon him under sub-section (1) shall be executable as a decree of a civil court.
Grant of patent to true and first inventor where it has been obtained by another in fraud of him.—
(1) [Where the patent has been revoked under section 64] Subs. by Act 15 of 2005, s. 37, for “Where a patent has been revoked” (w.e.f. 1-1-2005). 2. on the ground that the patent was obtained wrongfully and in contravention of the rights of the petitioner or any person under or through whom he claims, or, where in a petition for revocation, the [{Appellate Board}The word “Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or court] Subs. by s. 37, ibid., for “court” (w.e.f. 2-4-2007), instead of revoking the patent, directs the complete specification to be amended by the exclusion of a claim or claims in consequence of a finding that the invention covered by such claim or claims had been obtained from the petitioner, the [{Appellate Board} The word “Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or court]Subs. by s. 37, ibid., for “court” (w.e.f. 2-4-2007) may, by order passed in the same proceeding, permit the grant to the petitioner of the whole or such part of the invention which the [{Appellate Board} The word “Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or court] Subs. by s. 37, ibid., for “court” (w.e.f. 2-4-2007) finds has been wrongfully obtained by the patentee, in lieu of the patent so revoked or is excluded by amendment.
(2) Where any such order is passed, the Controller shall, on request by the petitioner made in the prescribed manner grant to him—
(i) in cases where the [{Appellate Board}The word “Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or court]Subs. by s. 37, ibid., for “court” (w.e.f. 2-4-2007) permits the whole of the patent to be granted, a new patent bearing the same date and number as the patent revoked;
(ii) in cases where the [{Appellate Board}The word “Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or court]Subs. by s. 37, ibid., for “court” (w.e.f. 2-4-2007) permits a part only of the patent to be granted, a new patent for such part bearing the same date as the patent revoked and numbered in such manner as may be prescribed:
Provided that the Controller may, as a condition of such grant, require the petitioner to file a new and complete specification to the satisfaction of the Controller describing and claiming that part of the invention for which the patent is to be granted.
(3) No suit shall be brought for any infringement of a patent granted under this section committed before the actual date on which such patent was granted.
In cases of “obtaining” Controller may treat the patent as the patent of opponent.—
(1) Where in any opposition proceeding under this Act the Controller finds that—
(a) the invention, so far as claimed in any claim of the complete specification, was obtained from the opponent in the manner set out in clause (a) of sub-section (2) of section 25 and revokes the patent on that ground, he may, on request by such opponent made in the prescribed manner, direct that the patent shall stand amended in the name of the opponent;
(b) a part of an invention described in the complete specification was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part of the invention.
(2) Where an opponent has, before the date of the order of the Controller requiring the amendment of a complete specification referred to in clause (b) of sub-section (1), filed an application for a patent for an invention which includes the whole or a part of the invention held to have been obtained from him and such application is pending, the Controller may treat such application and specification in so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of this Act relating to the priority dates of claims of the complete specification, on the date on which the corresponding document was or was deemed to have been filed by the patentee in the earlier application but for all other purposes the application of the opponent shall be proceeded with as an application for a patent under this Act.]
Forms.—
(1) The Forms set forth in the Second Schedule with such variations as the circumstances of each case may require shall be used for the purposes mentioned therein.
(2) Where no Form is so specified for any purpose, the applicant may use Form 30 specified in the Second Schedule.(substitutes “Where no Form is so specified for any purpose, the applicant may adopt any Form specified in the Second Schedule with such modifications and variations as may be required” by 2016 amendment)
Form and manner in which statements required under section 146(2) to be furnished.—
Form and manner in which statements required under section 146(2) to be furnished
(1) The statements shall be furnished by every patentee and every licensee under subsection (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licensee or his authorised agent.
(Incorporated by 2020 amendment)
(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.
(end of insertion by 2020 amendment)
(Substitutes) (2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.
(3) The Controller may publish the information received by him under subsection (1) or subsection (2) of section 146.
Request for information under section 153.—
(1) A request for information in respect of the following matters relating to any patent or application for patent shall be admissible, namely:—
(a) as to when a complete specification following a provisional specification has been filed or an application for patent has been deemed to have been abandoned;
(aa) as to when the information under section 8 has been filed.
(b) as to when publication of application has been made under section 11A;
(c) as to when an application has been withdrawn under section 11B;
(d) as to when a request for examination has been made under section 11B;
(e) as to when the examination report has been issued under section 12;
(f) as to when an application for patent has been refused;
(g) as to when a patent has been granted;
(h) as to when a renewal fee has been paid;
(i) as to when the term of a patent has expired or shall expire;
(j) as to when an entry has been made in the register or application has been made for the making of such entry; or
(k) as to when any application is made or action taken involving an entry in the register, publication in the Official Journal or otherwise, if the nature of the application or action is specified in the request.
(2) Separate request shall be made in respect of each item of information required.
(3) The fee payable on a request to be made under section 153 shall be as set out in the First Schedule.
Form of patent.—
(1) A patent shall be in the form as specified in the Third Schedule with such modifications as the circumstances of each case may require and shall bear the number accorded to the application under rule 37.
(2) The patent certificate shall ordinarily be issued within seven days from the date of grant of patent under section 43.
Inspection and supply of published documents.—
After the date of publication of the application under section 11A, the application together with the complete specification and provisional specification, if any, the drawing, if any, and the abstract filed in respect of the application may be inspected at the appropriate office by making a written request to the Controller on payment of the fee in that behalf and copies thereof may be obtained on payment of fees specified in the First Schedule.
Supply of certified copies and certificates under sections 72 and 147.—
(1) Certified copies of any entry in the register, or certificates of, or extracts from patents, specifications and other public documents in the patent office, or from registers and other records including records in computer floppies, diskettes or any other electronic form kept there, may be furnished by the Controller on a request therefor made to him and on payment of the fee specified therefor in the First Schedule.
(Incorporated by 2016 amendment) Provided that certified copies shall be issued in the order in which the request is filed. (end of insertion by 2016 amendment)
(2) (Incorporated by 2016 amendment) Notwithstanding anything contained in sub-rule (1), certified copies shall be furnished within a period of one week if such request is made along with the fee specified therefore in the First Schedule. (end of insertion by 2016 amendment)
Form of application for the issue of a duplicate patent.—
An application for the issue of a duplicate patent under section 154 shall contain a statement setting out the circumstances in which the patent was lost or destroyed or cannot be produced together with the fee as specified therefor in the First Schedule.
Permission for making patent application outside India under section 39.—
(1) The request for permission for making patent application outside India shall be made in Form 25.
(2) The Controller shall dispose of the request made under sub-rule (1) within a period of twenty-one days from the date of filing of such request (substitutes “The time within which the Controller dispose of the request made under sub-rule (1), except in case of inventions relating to defence and atomic energy applications, shall ordinarily be within a period of twenty one days from the date of filing of such request” by 2016 amendment):
(Incorporated by 2016 amendment) Provided that in case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government. (end of insertion by 2016 amendment)
Restoration of name of persons removed from the register of patent agents.—
(1) An application for the restoration of the name of any person removed from the register of patent agents under sub-section (2) of section 130 shall be made in Form 23 within two months from the date of such removal.
(2) If the name of a person is restored to the register of patent agents, his name shall be continued therein for a period of one year from the date on which his last annual fee became due.
(3) The restoration of a name to the register of patent agents shall be communicated to the patent agent and also published on the official website (substitutes “The restoration of a name to the register of patent agents shall be published and communicated to the person concerned” by 2016 amendment).
Registration of patent agents.—
After a candidate passes the qualifying examination specified in rule 110 and after obtaining any further information which the Controller considers necessary he shall, on receipt of the fee specified therefor in the First Schedule, enter the candidate’s name in the register of patent agents and issue to him a certificate of registration as a patent agent.
Application for registration of patent agents.—
(1) Every person who desires to be registered as a patent agent shall make an application in Form 22.
(2) The applicant shall furnish such other information as may be required by the Controller.
(3) A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee as specified in the First Schedule after announcement of such examination and within the period as may be specified in the announcement.(substitutes “A person desirous to appear in the qualifying examination under rule 110 shall make a request to the Controller along with the fee as specified in the First Schedule” by 2016 amendment)
Alteration of names, etc., in the register of patent agents.—
(1) A patent agent may apply for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents ,e-mail address, telephone number, fax number or any other particulars under sub-section (1) of section 125 (substitutes “A patent agent may apply for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents” by 2016 amendment). On receipt of such application and the fee specified therefor in the First Schedule for such request for alteration of particulars, the Controller shall cause the necessary alterations to be made in the register of patent agents.
(2) Every alteration made in the register of patent agents shall be published.
Alteration of address.—
(1) A patentee may make a request in writing along with fee payable to the Controller for the alteration of his name, nationality, address or address for service as entered in the register of patents in respect of any patent granted to him. The Controller may require such proof of the alteration as he may think fit before acting on a request to alter the name or nationality.
(2) If the Controller allows a request made under sub-rule (1), he shall cause the entries in the register to be altered accordingly.
(3) If a patentee makes a request in writing along with fee payable for entering an additional address for service in India and if the Controller is satisfied that the request should be allowed, he shall have the additional address for service entered in the register.
Registration of title and interest in patents.—
(1) An application referred to in sub-section (1) or sub-section (2) of section 69 shall be made in Form 16.
(2) An application for an entry in the register of patents of any other document purporting to affect the proprietorship of the patent by the person benefiting under the document shall be made in Form 16.
Fees.—
(1) The fees payable under section 142 in respect of the grant of patents and applications therefor, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule.
(Incorporated by 2014 amendment) Provided that ten per cent. additional fee shall be payable when the applications for patent and other documents are filed through physical mode, namely, in hard copy format:
(Incorporated by September 2021 amendment)
Provided further that in the case of a small entity, or startup, or educational institution, every document for which a fee has been specified shall be accompanied by Form-28.
(Incorporated by September 2021 amendment)
(Incorporated by 2019 amendment)
(Substitutes)Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.
(Incorporated by 2019 amendment)
Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.
(end of insertion by 2019 amendment)
(Substitutes)Provided further that in the case of a small entity, every document, for which a fee has been specified, shall be accompanied by Form-28. (end of insertion by 2014 amendment)
(2) (a) The fees payable under the Act or these rules may be paid at the appropriate office either in cash or through electronic means or may be sent by bank draft or banker‘s cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated and if the draft or banker‘s cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or banker‘s cheque has actually reached the Controller (substitutes “The fees, payable under the Act may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated. If the draft or cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or cheque would have reached the Controller in the ordinary course of mail” by 2016 amendment).
(b) (“Cheques or drafts not including the correct amount of commission and cheques on which the full value specified therein cannot be collected in cash shall be accepted only at the discretion of the Controller” omitted by 2016 amendment)
(c) Where a fee is payable in respect of a document, the entire fee shall accompany the document.
(Incorporated by September 2021 amendment)
“(3) In case an application processed by a natural person, startup, small entity or educational institution is fully or partly transferred to a person other than a natural person, startup, small entity or educational institution, the difference, if any, in the scale of fees between the fees charged from the natural person, startup, small entity or educational institution and the fees chargeable from the person other than a natural person, startup, small entity or educational institution, shall be paid by the new applicant along with the request for transfer.”.
(Incorporated by September 2021 amendment)
(Substituted by 2021 amendment)
(Incorporated by 2020 amendment)
(3) In case an application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer.
(Substituted by 2021 amendment)
Sub-rule (3A) – [Omitted]
Sub-rule (3B) – [Omitted]
Explanation— Where a startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.
(end of insertion by 2020 amendment)
(Substituted by 2020 amendment)(3) In case an application processed by a natural person is fully or partly transferred to a person other than a natural person, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than the natural person in the same matter shall be paid by the new applicant with the request for transfer.
(Substituted by 2020 amendment) (3A) (Incorporated by 2014 amendment) In case an application processed by a small entity is fully or partly transferred to a person other than a natural person(except a small entity), the difference, if any, in the scale of fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the person other than the natural person (except a small entity) in the same matter shall be paid by the new applicant with the request for transfer (end of insertion by 2014 amendment)
(Substituted by 2020 amendment) (3B) (Incorporated by 2016 amendment) In case an application processed by a startup is fully or partly transferred to any person other than a natural person or a startup, the difference, if any, in the scale of fees between the fees charged from a startup and such person to whom the application is transferred, shall be paid by the new applicant along with the request for transfer:
(Substituted by 2020 amendment)Explanation.- Where the startup ceases to be a startup after having filed an application for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable. (end of insertion by 2016 amendment)
(4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not.
(Incorporated by 2016 amendment) Provided that, if the Controller is satisfied that during the online filing process, the fee was paid more than once for the same proceeding, the excess fee shall be refunded.; (end of insertion by 2016 amendment)
(4A) (Incorporated by 2016 amendment) Notwithstanding anything contained in sub-rule (4), upon the withdrawal of an application in respect of which a request for examination has been filed, but before issuance of first statement of objection, the fee may be refunded to the extent prescribed in the First Schedule on a request made by the applicant in Form 29. (end of insertion by 2016 amendment)
(5) (i) Subject to the approval of the Controller, any person may deposit money in advance and request the Controller to realise any fee payable by him from the said deposit and in such case the date of the receipt of the request to realise the fee or the date on which the request to realise the fee is deemed to have been received, whichever is earlier, shall be taken as the date of payment of the fee:
Provided that the requisite amount of money is available at the credit of the person making such request.
(ii) Subject to the approval of the Controller, any person may discontinue the deposit of money in advance and in such case the balance, if any, shall be refunded.
Hearing.—
(1) On the completion of the presentation of evidence, if any, and on receiving the recommendation of Opposition Board or at such other time as the Controller may think fit, he shall fix a date and time for the hearing of the opposition and shall give the parties not less than ten days’ notice of such hearing and may require members of Opposition Board to be present in the hearing.
(2) If either party to the proceeding desires to be heard, he shall inform the Controller by a notice along with the fee as specified in the First Schedule.
(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).
(4) If either party intends to rely on any publication at the hearing not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days’ notice of his intention, together with details of such publication.
(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefore.
Publication of application.—
The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the dale of priority of the application, whichever is earlier
Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.
Application for review of decisions or setting aside of orders of the Controller.—
(1) An application to the Controller for the review of his decision under clause (f) of sub-section (1) of section 77 shall be made in Form 24 within one month from the date of communication of such decision to the applicant or within such further period not exceeding one month thereafter as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, the Controller shall forthwith transmit a copy of each of the application and the statement to the other person concerned.
(2) An application to the Controller for setting aside an order passed by him ex parte under clause (g) of sub-section (1) of section 77 shall be made in Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller may on a request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the application is based. Where the order concerns any other person in addition to the applicant, the Controller shall, forthwith transmit a copy each of the application and the statement to the other person concerned.
Renewal fees under section 53.—
(1) To keep a patent in force, the renewal fees specified in the First Schedule shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration or the second or the succeeding year.
(1A) The period for payment of renewal fees so specified in sub-rule (1) may be extended to such period not being more than six months if the request for such extension of time is made in Form 4 with the fee specified in the First Schedule.
(2) While paying the renewal fee, the number and date of the patent concerned and the year in respect of which the fee is paid shall be quoted.
(3) The annual renewal fees payable in respect of two or more years may be paid in advance.
(4) The Controller shall, after making such enquiry as he may deem necessary, credit any renewal fee and issue a certificate that the fee has been paid.
Specifications.—
(1) Every specification, whether provisional or complete, shall be made in Form 2.
(2) A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made.
(3) A specification in respect of a patent of addition under section 54 shall contain a specific reference to the number of the main patent, or the application for the main patent, as the case may be, and a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted or applied for.
(4) Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification,including the claims where the features illustrated in the drawings shall be followed by their respective reference signs in parentheses (substitutes “Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification” by 2016 amendment).
Provided that in the case of a complete specification, if the applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the complete specification as those left with the provisional specification.
(5) Irrelevant or other matter, not necessary, in the opinion of the Controller, for elucidation of the invention, shall be excluded from the title, description, claims and drawings.
(6) Except in the case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification, a declaration as to the inventorship of the invention shall be filed in Form 5 with the complete specification or at any time before the expiration of one month from the date of filing of the complete specification, as the Controller may allow on an application made in Form 4.
Explanation.—For the purposes of this rule, the date of filing of the complete specification with respect to an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.
(7) (a) The abstract as specified under clause (d) of sub-section (4) of section 10, accompanying the specification shall commence with the title of the invention. The title of the invention shall disclose the specific features of the invention normally in not more than fifteen words.
(b) The abstract shall contain a concise summary of the matter contained in the specification and the summary shall indicate clearly the technical field to which the invention belongs, technical advancement of the invention as compared to the existing knowledge and principal use of the invention excluding any speculative use and where necessary, the abstract shall contain the chemical formula, which characterises the invention (substitutes “The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention” by 2016 amendment).
(c) The abstract may not contain more than one hundred and fifty words.
(d) If the specification contains any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of the drawings which may accompany the abstract when published. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.
(e) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.
(8) The period within which reference to the deposit shall be made in the specification under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application.
(Incorporated by 2016 amendment) Provided that in case of a request for publication under rule 24A, such reference shall be made on or before the date of filing of such request. (end of insertion by 2016 amendment)
International applications designating or designating and electing India.—
(1) An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.(substitutes “An application corresponding to an international application under the Patent Cooperation Treaty under section 7(1A) may be made in Form 1” by 2016 amendment)
(Incorporated by 2016 amendment) Explanation.– For the purpose of this rule, “an application corresponding to an international application‖ means an international application as filed under Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19 and communicated to Designated Office under Article 20 or any amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:
Provided that the applicant, while filing such application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14. (end of insertion by 2016 amendment)
(2) The Patent Office shall not commence processing of an application filed corresponding to international application designating India before the expiration of the time limit prescribed under sub-rule (4) (i).
(3) An applicant in respect of an international application designating India shall, before the time limit prescribed in sub-rule (4)(i),—
(a) pay the prescribed national fee and other fees to the patent office in the manner prescribed under these rules and under the regulations made under the Treaty;
(b) and where the international application was either not filed or has not been published in English, file with the patent office, a translation of the application in English, duly verified by the applicant or the person duly authorised by him that the contents thereof are correct and complete.
(4) (i) The time limit referred to in sub-rule (2) shall be thirty one months from the priority date as referred to in Article 2(xi);
(ii) Notwithstanding anything contained in clause (i), the Patent Office may, on the express request filed in Form 18 along with the fee specified in First Schedule, process or examine the application at any time before thirty one months.
(5) The translation of the international application referred to in sub-rule (3) shall include a translation in English of,—
(i) the description;
(ii) the claims as filed;
(iii) any text matter of the drawings;
(iv) the abstract; and
(v) in case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article;
(vi) in case the applicant has elected India and any amendments to the description, the claims and text matter of the drawings that are annexed to the international preliminary examination report.
(6) If the applicant fails to file a translation of the amended claims and annexures referred to in sub-rule (5), even after invitation from the appropriate office to do so, within a time limit as may be fixed by that office having regard to the time left for meeting the requirements, the amended claims and annexures shall be disregarded in the course of further processing the application by the appropriate office.
(7) The applicant in respect of an international application designating India shall when complying with sub-rule (3), preferably use Forms set out in the Second Schedule before the appropriate office as designated office.
Size, etc., of documents.—
(1) All documents and copies of documents, except affidavits and drawings, sent to or left at the patent office or otherwise furnished to the Controller shall be written or typewritten or printed either in Hindi or in English language (unless otherwise directed or allowed by the Controller) in large and legible characters with deep indelible ink with lines widely spaced upon one side only of strong white paper of a size A4 of approximately 29.7 centimetres by 21 centimetres with a margin of at least 4 centimetres on the top and left hand part and 3cm on the bottom and right hand part thereof. Any signature which is not legible or which is written in a script other than Hindi of English shall be accompanied by a transcription of the name either in Hindi or in English in block letters:
Provided that any document including drawing, if any, may also be filed in electronic form along with a copy of it on white paper:
Provided further that in case the application for patent discloses sequence listing of nucleotides and/or amino acids, the same shall be filed in electronic form.
(2) Additional copies of all documents shall be filed at the appropriate office, if required by the Controller.
(3) Names and addresses of applicants and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for identification.
Removal of agent’s name from the register of Trade Marks agents.-
(I) The Registrar shall remove from the register of trademarks agents the name of any registered trademarks agent-
(a) from whom’ a request has been received to that effect; or
(b) from whom the annual fee has not been received on the expiry of three months from the date on which it became due.
(2) The Registrar shall remove from the register of trademarks agents, the name of any registered trademarks agent-
(a) who is found to have been subject at the time of his registration, or thereafter has become subject, to any of the disabilities stated in clauses (i) to(vii) of rule 145;or
(b) whom the Registrar has declared not to be a fit and proper person to remain in the Register by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity;
(c) whose name has been entered in the register by an error or on account of misrepresentation or suppression of material fact:
Provided that before making such declaration under clauses (b) and (c) the Registrar shall call upon the person concerned to show-cause why his registration should not be canceled and shall make such further enquiry, if any, as may be consider necessary.
(3) The Registrar shall remove from the register of trademarks agents the name of any registered trademarks agent who is dead.
(4) The removal of the name of any person from the register of trademarks agents shall be notified in the Journal and shall, wherever possible, be communicated to the person concerned.
Procedure on application and qualifying requirements. –
(1) On receipt of an application for the registration of a person as a trademarks agent, the Registrar, if satisfied that the applicant fulfills the prescribed qualifications, shall appoint a date in due course on which the candidate will appear for examination in Trade Marks Law and practice.
(2) The qualifying marks for the examination shall be as advertised by the Registrar.
Persons debarred from registration.-
A person shall not be eligible for registration as a trademarks agent if he-
(i) has been adjudged by a competent Court to be of unsound mind;
(ii) is an undischarged insolvent;
(iii) being a discharged insolvent has not obtained from the court or the appropriate forum as the case may, a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
(iv) has been convicted by a competent court or the appropriate forum as the case may, whether within or outside India of an offense punishable with transportation or imprisonment, unless the offense of which he has been convicted has been pardoned or unless on an application made by him, the Central Government by order in this behalf, has removed the disability;
(v) being a legal practitioner has been held guilty of professional misconduct by any High Court in India;
(vi) being a chartered accountant, has been held guilty of negligence or misconduct by a High Court; or
(vii) being a registered trademarks agent has been held guilty of professional misconduct by the Registrar.
Qualifications for registration.-
Subject to the provisions of rule 145, a person shall be qualified to be registered as a trademarks agent if he-
(i) is a citizen of India,
(ii) is not less than 21 years of age;
(iii) is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 148 or is an Advocate within the meaning of the Advocates Act, 1961 (25 of 1961) or is a member of the Institute of Company Secretaries of India;
(iv) is considered by the Registrar as a fit and proper person to be registered as a trademark agent.
Rectification of the register by the Registrar of his own motion.-
(1) The Notice, which the Registrar is required to issue under sub-section (4) of section 57, shall be sent in writing to the registered proprietor, to each registered user, if any, and to any other person who appears from the register to have any interest in the trademark, and shall state the grounds on which the Registrar proposes to rectify the register and shall also specify the time, not being less than one month from the date of such notice, within which an application for a hearing shall be made:
Provided that no notice shall be required to be sent to the registered proprietor, in case the registered proprietor has requested or agreed in writing for cancellation of the registration; and thereupon register shall be rectified accordingly.
(2) Unless within the time specified in the notice aforesaid, any person so notified sends to the Registrar a statement in writing setting out fully the facts upon which he relies to meet the grounds stated in the notice or applies for a hearing, he may be treated as not desiring to take part in the proceedings and the Registrar may act accordingly.
(3) If the Registrar decides to rectify the register he shall communicate his decision in writing to the registered proprietor and to each registered user, if any.
Notice and advertisement of renewal and restoration. –
Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.
Renewal of registration. –
(1) An application for the renewal of the registration of a trademark shall be made in Form TM-R along with the fee as prescribed in the first schedule and may be made at any time not more than one year before the expiration of the last registration of the trademark.
(2) A request for renewal of registration of the trademark filed within prescribed time shall be allowed unless the trademark has been removed or canceled or is otherwise not renewable under any of the provisions of the Act and rules or by any order of the competent court or the Registrar.
Notice of Opposition. –
(I) A notice of opposition to the registration of a trademark under sub-section (l) of section 21, with such particulars as specified in Rule 43, shall be filed in form TM-0 within four months from the date of publication of the trade mark journal in which the application for registration of the trademark was advertised or re advertised.
(2) Where a notice of opposition has been filed in respect of a single application for the registration of a trademark for different classes of goods and services, it shall bear the fee in respect of each class in relation to which the opposition is filed.
(3) Where an opposition is filed only for a particular class or classes in respect of a single application made under sub-section (2) of section 18, the application for remaining class or classes shall not proceed to registration until a request in Form TM-M for division of the application together with the divisional fee is made by the applicant.
( 4) Where in respect of a single application for the registration of a trademark no notice of opposition is filed in a class or classes, the application in respect of such class or classes shall, subject to section 19 and sub-section ( 1) of section 23, proceed to registration after the division of the application in the class or classes in respect of which an opposition is pending.
(5) A copy of notice of opposition shall be ordinarily served by the Registrar to the applicants within three months of the receipt of the same by the appropriate office:
Provided that where the applicant has already filed the counter statement on the basis of the copy of notice of opposition made available in the electronic records on the official website, the requirement of service of copy of the notice of opposition to the applicant shall be dispensed with.
Exception to rule 116.-
Notwithstanding anything in rule 116, costs in respect of fees specified under entries, 10 and 11 of the First Schedule and of all stamps used on and affixed to affidavits used in the proceedings shall follow the event.
Costs in uncontested cases.-
(1) Where a reasonable notice has been given to an applicant by the opponent before filing the notice of opposition and the applicant fails to contest the opposition, the Registrar may impose such costs on the applicant as may be specified in Forth Schedule.
(2) Where an opposition has been filed and the opponent fails to contest the proceedings after the applicant has filed counter statement, the Registrar may impose such costs on the opponent as may be specified in Forth Schedule.
Application for registration as registered user.-
(1) An application to the Registrar for the registration under section 49, of a person as a registered user of a registered trademark, shall be made jointly by that person and the registered proprietor of the trademark in Form TM-U and shall be accompanied by the documents, evidence and details as required in sub-section (1) of section 49.
(2) The registered proprietor and the proposed registered user shall also produce and file such other documents and furnish such other evidence and information as may be required in that behalf by the Registrar.
(3) No application shall be entertained unless the same has been filed within six months from the date of the agreement referred to in clause (a) of sub-section (1) of section 49.
(4) Where more than one application for registration as registered user is made by the same registered proprietor and the same proposed registered user in respect of trademarks covered by the same agreement, the documents mentioned in sub section (1) of section 49 may be filed with any one of the applications and a cross reference to such documents given in the other application or applications.
Registration of assignment to a company under section 46.-
For the purposes of sub- section (4) of section 46, the period within which a company may be registered as the subsequent proprietor of a registered trademark upon application made under rule 75 shall be six months from the date of advertisement in the Journal of the registration of the trademark or such further period not exceeding six months as the Registrar may allow on application being made in Form TM-P by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.
Security for Costs:-
The security for costs which the Registrar may require under sub- section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.
Alteration of registered trademark.-
Where a person applies under section 59 for leave to add to or alter his registered trademark, he shall make the application in writing in Form TM-P and shall furnish copy of the trademark as it will appear when so added to or altered. A copy of the application and of the trademark so amended or altered shall be served by the applicant on every registered user, if any.
Forms.-
(1) The Forms set forth in the Second and the Third Schedules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.
(2) Any Form, when filed at the Trade Marks Registry, shall be accompanied by the prescribed fee.
(3) A requirement under this rule to use a Form as set forth in the Schedule shall be satisfied by the use of a replica of that Form containing all the information required by the Form as set forth and complies with any direction as to the use of such a Form.
(4) The Registrar may after informing the public in the Journal or through public notice on official website specify such Forms as are required to be submitted in electronic mode. Thereafter, such Forms shall be completed in such manner as may be laid down by the Registrar so as to permit an automated input of the content into a computer by character recognition or scanning.
Security for Costs:-
The security for costs which the Registrar may require under sub- section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.
Evidence in support of application.-
(1) Within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.
(2) If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.
Evidence in support of opposition.-
(1) Within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
Application to rectify or remove a trademark from the register.-
An application to the Registrar under Section 47, 57, 68 or 77 for the making, expunging or varying of any entry relating to a trademark or a collective trademark or certification trademark in the register shall be made in Form TM-0, as the case may be, and shall be accompanied by statement in setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks. Where the application is made by a person who is not the registered proprietor of the trademark in question, the application and the statement aforesaid shall be left at the Trade Marks Registry. In case there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. A copy each of the application and statement shall be ordinarily transmitted within one month by the Registrar to the registered proprietor and to each of the registered user and to any other person who appears from the register to have an interest in the trademark. The application shall be verified in the manner prescribed under clause (i) of sub-rule (c) of rule 43 for verification of a notice of opposition.
Application for Registrar’s direction as to advertisement of an assignment of a trademark without goodwill of the business. –
(1) An application for directions under section 42 shall be made in Form TM-P and shall state the date on which the assignment was made. The application shall give particulars of the registration in the case of a registered trademark, and in the case of an unregistered trademark shall show the trademark and give particulars including user of the unregistered trademark that has been assigned therewith. The Registrar may call for any evidence or further information and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.
(2) The Registrar may refuse to consider such an application in a case to which section 41 applies, unless his approval has been obtained under the said section and a reference identifying the Registrar’s notification of approval is included in the application.
(3) A request for an extension of the period within which the application mentioned in sub-rule (I) shall be made shall be in Form TM-P
Application for entry of assignment or transmission.-
An application to register the title of a person who becomes entitled by assignment or transmission to a registered trademark shall be made in Form TM-P.
Requirements of Notice of Opposition.-
(1) A notice of opposition shall contain,-
(a). in respect of an application against which opposition is entered-
(i) the application number against which opposition is entered;
(ii) an indication of the goods or services listed in the trademark application against which opposition is entered; and
(iii) the name of the applicant for the trademark.
(b). in respect of the earlier trademark or the earlier right on which the opposition is based,-
(i) where the opposition is based on an earlier trademark, a statement to that effect and an indication of the status of earlier trademark;
(ii) where available, the application number or registration number and the filing date, including the priority date of the earlier trademark;
(iii) where the opposition is based on an earlier trademark which is alleged to be a well-known trademark within the meaning of sub-section 2 of section 11, an indication to that effect and an indication of the country or countries in which the earlier trademark is recognized to be well known;
(iv) where the opposition is based on an earlier trademark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier trademark is registered or applied for;
(v) a representation of the trademark of the opponent and where appropriate, a description of the trademark or earlier right; and
(vi) Where the goods or services in respect of which earlier trademark has been registered or applied for or in respect of which the earlier trademark is well known within the meaning of sub-section (2) of section 11 or has a reputation within the meaning of that section, the opponent shall when indicating all the goods or services for which the earlier trademark ts protected, also indicate those goods or services on which the opposition is based.
(c). in respect of the opposing party-
(i) where the opposition is entered by the proprietor of the earlier trademark or of the earlier right, his name and address and an indication that he is the proprietor of such trademark or right;
(ii) where opposition is entered by a licensee not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition;
(iii) where the opposition is entered by the successor in title to the registered proprietor of a trademark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office; and
(iv) where the opposing party has no place of business in India, the name of the opponents and his address for service in India.
(d). The grounds on which the opposition is based.
(2) A notice of opposition shall be verified at the foot by the opponent or by his duly authorized agent.
(3) The person verifying shall state specifically by reference to the numbered paragraphs of the notice of opposition, what he verifies of his own knowledge and what he verifies upon information received and believed to be true.
(4) The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.
Request to Registrar for particulars of advertisement of a trademark.-
Any person may request the Registrar in Form TM-M to be informed of the number, and date of the Journal in which a trademark which is sought to be registered specified in the Form was advertised and the Registrar shall furnish such particulars to the person making the request.
Expedited Processing of Application-
(1) The applicant may, after the receipt of the official number of the application, request for expedited processing of application made for the registration of a trademark in Form TM-M on payment of fee as specified in First Schedule. Such an application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the following proceedings viz. the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously subject to such guidelines as may be published in this regard by the Registrar in the trademarks Journal.
(2) The Registrar may limit the number of applications for expedited processing of trademark applications by publishing the same in the trademarks Journal.
Examination, Objection to acceptance, hearing.-
(1) The Registrar shall cause the application to be examined as per provisions of the Act, wherein a search shall also be conducted among the earlier trademarks, registered or applied for registration, for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any trademark identical with or deceptively similar to the trademark applied for. The Registrar may cause the re-examination of the application including re-search of earlier trademarks at any time before the acceptance of the application but shall not be bound to do so.
(2) If, on consideration of the application for registration of a trademark and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant in the form of an examination report.
(3) If, on consideration of the application for registration of a trademark and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to tarnish, the Registrar accepts the application for registration absolutely, he shall communicate such acceptance to the applicant and cause the application to be advertised as accepted under sub- section (1) of section 20.
(4) If, within one month from the date of receipt of the examination report, the applicant fails to respond to the communication, the Registrar may treat the application as abandoned.
(5) In case the response to the examination report is received within the aforesaid time, the same shall be duly considered and if the Registrar accepts the application for registration, he shall communicate such acceptance to the applicant and cause the application to be advertised as accepted under sub-section ( 1) of section 20.
(6) If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the registrar shall provide an opportunity of hearing to the applicant and the same shall be conducted as per rule 115.
(7) In case the applicant fails to appear at the scheduled date of hearing and no reply to the office objection has been submitted by the applicant, the Registrar may treat the application as abandoned.
(8) Where the applicant has submitted his reply to the examination report within the aforesaid period or has appeared in the hearing and made his submissions, the Registrar shall pass an appropriate order.
Hearings.-
(1) the hearing if any, in relation to any proceeding under the Act and rules may be held at the notified date and time and at such place within the territorial jurisdiction of the appropriate office as the Registrar may think fit:
Provide that the hearing may also be held through video- conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.
Explanation- For the purposes of this rule, the expression “communication device” has the same meaning as assigned to it in clause (ha) of sub section (ii) of section 2 of the Information Technology Act,2000 (21 of2000).
(2) Where an officer exercising the powers of the Registrar who has heard any matter under the Act or the rules, has reserved orders therein, is transferred from one office of the Registry to another or reverts to another appointment before passing an order or rendering decision therein, he may, if the Registrar so directs, pass the order or render the decision as if he had continued to be the officer in the office of the Trade Marks Registry where the matter was heard.
Fees. –
(1) The fees to be paid in respect of applications, oppositions, registration, renewal, expedited processing of application or any other matters under the Act and the rules shall be those as specified in the First Schedule.
(2) Where in respect of any matter, a fee is required to be paid under the rules, the form or the application or the request of the petition thereof, it shall be accompanied by the prescribed fee.
(3) Fees may be paid electronically or in cash or sent by money order addressed to the Registrar or by a bank draft issued or by a banker’s cheque drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situated and if sent through post shall be deemed to have been paid at the time when the money order or the properly addressed bank draft or banker’s cheque is received in the office.
(4) Bank drafts and banker’s cheque shall be crossed and made payable to the Registrar at the appropriate office of the Trade Marks Registry and they shall be drawn on a scheduled bank at the place where the appropriate office of the Trade Marks Registry is situate.
(5) Where a fee is payable in respect of filing of a document and where the document is filed without fee or with insufficient fee, such document shall be deemed not to have been filed for the purposes of any proceedings under these rules.
Form and signing of application.-
(1) An application for the registration of a trademark in respect of specification of goods or services shall be made in TM-A and shall be signed by the applicant or his agent.
(2) An application for the registration of a trademark, for goods or services shall–
(a) explain with sufficient precision, a description by words, of the trademark, if necessary, to determine the right of the applicant;
(b) be able to depict the graphical representation of the trademark;
(c) be considered as a three dimensional trademark only if the application contains a statement to that effect;
(d) be considered as a trademark consisting of a combination of colors only if the application contains a statement to that effect.
(3) An amendment to divide an application under proviso to section 22 shall be made in Form TM-M.
(4) An application, not being a series trademark shall be in respect of one trademark only, for as many class or classes of goods or services as may be made.
(5) In the case of an application for registration in respect of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the trademark which the applicant has made or intends to make if and when it is registered:
Provided that while making an application for registration of a trademarks, the names of goods and services stated in the application shall, as far as may be, correspond to those given in the classification of the goods and services published by the registrar under sub-rule (2) of rule 20.
(6) Where an applicant files a single application and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant shall restrict the specification of goods or services to the class or classes already applied for or amend the application to add additional class or classes by filing an application on Form TM-M and by payment of the appropriate fee:
Provided that in case all the goods or services fall in a class other than the class specified, the registrar may permit the correction of class by filing the request on Form TM-M.
Classification of goods and service-
(1) Classification of goods and service for the purpose of registration of trademark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organization (WIPO).
(2) The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin.
Service of Documents by the Registrar. –
(l) All communications and documents in relation to application or opposition matter or registered trademark may be served by the Registrar by leaving them at, or sending them by post to the address for service of the party concerned or by email communication.
(2) Any communication or document so sent shall be deemed to have been served, at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the email.
(3) To prove such service, it shall be sufficient to prove that the letter was properly addressed and put into the post or the email communication was sent to the email id provided by the party concerned.
Address for service.–
( l) Every applicant or opponent or any person concerned in any proceeding under the Act or rules shall furnish to the Registrar an address for service in India comprising of a postal address in India and a valid e-mail address and such address shall be treated as the address for service of such applicant or opponent or person:
Provided that a trademark agent shall also be required to furnish a mobile number registered in India.
(2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.
(3) Unless an address for service in India as required in sub-rule (I) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.
Register of Trademarks Agents.-
The Registrar of Trade Marks shall maintain a Register of trademarks agents wherein shall be entered the name, address of the place of residence, address of the principal place of business, the nationality, qualifications and date of registration of every registered trademarks agent.
Principal place of business in India.-
“Principal place of business in India” means-
(i) where a person carries on business in the goods or services concerned in a trademark-
(a) if the business is carried on in India at only one place, that place;
(b) if the business is carried on in India at more places than one, the place mentioned by him as the principal place of business in India;
(ii) where a person is not carrying on a business in the goods or services concerned in a trademark-
(a) if he is carrying on any other business in India at only one place, that place;
(b) if he is carrying on any other business in India at more places than one, the place mentioned by him as the principal place of business in India; and
(iii) where a person does not carry on any business in India but has a place of residence in India, then such place of residence in India.
Appropriate office of the Trade Marks Registry.-
The appropriate office of the Trade Marks Registry for the purposes of making an application for registration of a trademark under section 18 or for giving notice of opposition under section 21 or for making an application for removal of a trademark under section 47 or canceling or varying the registration of a trademark under section 57 or for any other proceedings under the Act and the rules shall be-
A. in relation to a trademark on the Register of Trade Marks at the notified date, the office of the Trade Marks Registry within whose territorial limits-
(i) the principal place of business in India of the registered proprietor of the trademark as entered in the register at such date is situate;
(ii) where there is no entry in the register as to the principal place of business in India of the registered proprietor, the place mentioned in the address for service in India as entered in the register at such date is situate;
(iii) in the case of jointly registered proprietors, the principal place of business in India of the proprietor whose name is entered first in the register as having such place of business in India at such date is situate;
(iv) where none of the jointly registered proprietors is shown in the register as having a principal place of business in India, the place mentioned in the address for service in India of the joint proprietors as entered in the register at such date, is situate;
(v) if no principal place of business in India of the registered proprietor of the trademark or in the case of joint registration, of any of the joint proprietors of the trademark, is entered in the register, and the register does not contain any address for service in India, the place of the office of the Trade Marks Registry where the application for registration of the trademark was made, is situate, and
B. in relation to a trademark for which an application for registration is pending at the notified date or is made on or after the notified date, the office of the Trade Marks Registry within whose territorial limits-
(i) the principal place of business in India of the applicant as disclosed in the application or, in the case of joint applicants, the principal place of business in India of the applicant whose name is first mentioned in the application, as having such place of business is situate;
(ii) where neither the applicant nor any of the joint applicants, as the case may be, has a principal place of business in India, the place mentioned in the address for service in India as specified in the application is situate.
Assignability and transmissibility of certification trade marks.—
A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which application shall be made in writing in the prescribed manner.
Applications for registration of certification trade marks.—
(1) An application for the registration of a mark as a certification trade mark shall be made to the Registrar in the prescribed manner by the person proposed to be registered as the proprietor thereof, and accompanied by a draft for the regulations to be deposited under section 74.
(2) Subject to the provisions of section 70, the provisions of sections 18, 19 and 22 shall apply in relation to an application under this section as they apply in relation to an application under section 18, subject to the modification that references therein to acceptance of an application shall be construed as references to authorization to proceed with an application.
(3) In dealing under the said provisions with an application under this section, the [Registrar or the High Court as the case may be] Subs. by Act 33 of 2021, s. 21, for “tribunal” (w.e.f. 4-4-2021) shall have regard to the like considerations, so far as relevant, as if the application were applications under section 18 and to any other considerations relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is a certification trade mark.
Prohibition of registration of names of chemical elements or international non-proprietary names.—
No word—
(a) which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or
(b) which is declared by the World Health Organization and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name,
shall be registered as a trade mark and any such registration shall be deemed for the purpose of section 57 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.
Cognizance of certain offences and the powers of police officer for search and seizure.—
(1) No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar or any officer authorised by him in writing:
Provided that in relation to clause (c) of sub-section (1) of section 107, a court shall take cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a registered trade mark has been represented as registered in respect of any goods or services in respect of which it is not in fact registered.
(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.
(3) The offences under section 103 or section 104 or section 105 shall be cognizable.
(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:
Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so obtained.
(5) Any person having an interest in any article seized under sub-section (4), may, within fifteen days of such seizure, make an application to the Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be, for such article being restored to him and the Magistrate, after hearing the applicant and the prosecution, shall make such order on the application as he may deem fit.
Exercise of discretionary power by Registrar.—
Subject to the provisions of section 131, the Registrar shall not exercise any discretionary or other power vested to him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without (if so required by that person within the prescribed time) giving to the person an opportunity of being heard.
Alteration of registered trade marks.—
(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3) Where leave is granted under this section, the trade mark as altered shall be advertised in the prescribed manner, unless the application has already been advertised under sub-section (2).
Correction of register.—
(1) The Registrar may, on application made in the prescribed manner by the registered proprietor,—
(a) correct any error in the name, address or description of the registered proprietor of a trade mark, or any other entry relating to the trade mark;
(b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark;
(c) cancel the entry of a trade mark on the register;
(d) strike out any goods or classes of goods or services from those in respect of which a trade mark is registered, and may make any consequential amendment or alteration in the certificate of registration, and for that purpose, may require the certificate of registration to be produced to him.
(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name, address or description of the registered user.
Additional grounds for removal of registration of collective mark.—
The registration of a collective mark may also be removed from the register on the ground—
(a) that the manner in which the collective mark has been used by the proprietor or authorised user has caused it to become liable to mislead the public as a collective mark; or
(b) that the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark.
Explanation I.—For the purposes of this Chapter, unless the context otherwise requires, ―authorised user‖ means a member of an association authorised to use the registered collective mark of the association.
Explanation II.—For the purposes of this Act, use of a collective mark by an authorised user referred to in Explanation I shall be deemed to be the use by the registered proprietor thereof.
Duration, renewal, removal and restoration of registration.—
(1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:
Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).
(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.
Evidence of entries in register, etc., and things done by the Registrar.—
(1) A copy of any entry in the register or of any document referred to in sub-section (1) of section 148 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorized by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or things having been done or not done.
Registration of trade marks as associated trade marks.—
(1) Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks.
(2) Where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration in the name of the same proprietor, in respect of goods and services which are associated with those goods or services, or goods or services of that description, sub-section (1) shall apply as it applies as where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services.
(3) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1) of section 15, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.
(5) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods or services or both in respect of which it is registered, and may amend the register accordingly.
Procedure where invalidity of registration is pleaded by the accused.—
(1) Where the offence charged under section 103 or section 104 or section 105 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed:—
(a) If the court is satisfied that such defence is prima facie tenable, it shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the [High Court] Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021) under this Act, for the rectification of the register on the ground that the registration is invalid.
(b) If the accused proves to the court that he has made such application within the time so limited or within such further time as the court may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification.
(c) If within a period of three months or within such extended time as may be allowed by the court the accused fails to apply to the [High Court] Subs. by Act 33 of 2021, s. 21, for “Appellate Board” (w.e.f. 4-4-2021) for rectification of the register, the court shall proceed with the case as if the registration were valid.
(2) Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the [Registrar or the High Court, as the case may be,] Subs. by s. 21, ibid., for “tribunal” (w.e.f. 4-4-2021), the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.
Agents.—
Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is—
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a trade marks agent, or
(c) a person in the sole and regular employment of the principal.
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.] Subs. by Act 38 of 2002, s. 52, for section 125 (w.e.f. 20-5-2003)
[Staff of Appellate Board.] Omitted by s. 13, ibid. (w.e.f. 4-4-2021).
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.
Grant of patents.—
(1) Where an application for a patent has been found to be in order for grant of the patent and either—
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection] Subs. by s. 33, ibid., for section 43 (w.e.f. 1-1-2005).
Form of application.—
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
[(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 India.] . Ins. by Act 38 of 2002, s. 6 (w.e.f. 20-5-2003).
[(1B) The filing date of an application referred to in sub-section (1A) 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.] Ins. by Act 15 of 2005, s. 5 (w.e.f. 1-1-2005)
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the [person] Subs. by s. 5, ibid., for “owner” (w.e.f. 1-1-2005) claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
[(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.] Subs. by s. 5, ibid., for sub-section (4) (w.e.f. 1-1-2005)
Persons entitled to apply for patents—
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Contents of specifications.—
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished [before the application is found in order for grant of a patent] Subs. by s. 8, ibid., for “before the acceptance of the application” (w.e.f. 1-1-2005), but such model or sample shall not be deemed to form part of the specification.
(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
[(d) be accompanied by an abstract to provide technical information on the invention:] Ins. by Act 38 of 2002, s. 8 (w.e.f. 20-5-2003)
Provided that—
(i) the Controller may amend the abstract for providing better information to third parties; and
(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely:—
[(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period] Subs. by s. 8, ibid., for sub-clause (A) (w.e.f. 1-1-2005);
(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;
(C) access to the material is available in the depository institution only after the date of the application of 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.
[(4A) In case of an international application designating’ India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.] Subs. by s. 8, ibid., for sub-section (4A) (w.e.f. 1-1-2005)
[(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.] Subs. by Act 38 of 2002, s. 8, for sub-section (5) (w.e.f. 20-5-2003)
(6) A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.
Practice by non-registered patent agents.—
If any person contravenes the provisions of section 129, he shall be punishable with fine which may extend to [one lakh rupees in the case of a first offence and five lakh rupees] Subs. by s. 66, ibid., for “ten thousand rupees in the case of a first offence and forty thousand rupees” (w.e.f. 1-1-2005) in the case of a second or subsequent offence.
Qualifications for registration as patent agents.—
(1) A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely:—
(a) he is a citizen of India;
(b) he has completed the age of 21 years;
(c) he has obtained a [degree in science, engineering or technology from any university established under law for the time being in force] Subs. by s. 53, ibid., for “degree from any University” (w.e.f. 20-5-2003) in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,—
(i) [Omitted by the Patents (Amendment) Act, 2005]Sub-clause (i) omitted by Act 15 of 2005, s. 67 ( w.e.f. 1-1-2005)
(ii) has passed the qualifying examination prescribed for the purpose; [or] Ins. by Act 38 of 2002, s. 53 (w.e.f. 20-5-2003)
[(iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration;] Subs. by Act 38 of 2002, s. 53, for sub-section (2) (w.e.f. 20-5-2003).
(d) he has paid such fee as may be prescribed.
[(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, 2005] Subs. by Act 15 of 2005, s. 67, for “the Patents (Amendment) Act, 2002 (38 of 2002)” (w.e.f. 1-1-2005) shall be entitled to continue to be, or when required to be re-registered, as a patent agent, on payment of the fees as may be prescribed.] Subs. by Act 38 of 2002, s. 53, for sub-section (2) (w.e.f. 20-5-2003).
Restrictions on practice as patent agents.—
(1) No person, either alone or in partnerships with any other person, shall practise, describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered.
(2) No company or other body corporate shall practise, describe itself or hold itself out as patent agents or permit itself to be so described or held out.
Explanation.— For the purposes of this section, practise as a patent agent includes any of the following acts, namely:—
(a) applying for or obtaining patents in India or elsewhere;
(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
(c) giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
Power of Controller to call for information from patentees.—
(1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.
(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.
(3) The Controller may publish the information received by him under subsection (1) or sub-section (2) in such manner as may be prescribed.
Rectification of register by [High Court] Subs. by Act 32 of 2021, s. 13, for “Appellate Board” (w.e.f. 20-5-2003)—
(1) The [High Court] Subs. by Act 32 of 2021, s. 13, for “Appellate Board” (w.e.f. 20-5-2003) may, on the application of any person aggrieved—
(a) by the absence or omission from the register of any entry; or
(b) by any entry made in the register without sufficient cause; or
(c) by any entry wrongly remaining on the register; or
(d) by any error or defect in any entry in the register, make such order for the making, variation or deletion, of any entry therein as it may think fit.
(2) In any proceeding under this section the [High Court] Subs. by Act 32 of 2021, s. 13, for “Appellate Board” (w.e.f. 20-5-2003) may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(3) Notice of any application to the [High Court] Subs. by s. 13, ibid., for “Board” (w.e.f. 4-4-2021) under this section shall be given in the prescribed manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear if so directed by the Board.
(4) Any order of the [High Court] Subs. by Act 32 of 2021, s. 13, for “Appellate Board” (w.e.f. 20-5-2003) under this section rectifying the register shall direct that notice of the rectification shall be served upon the Controller in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
[Staff of Appellate Board.] Omitted by s. 13, ibid. (w.e.f. 4-4-2021).
Power of [Chairperson] Subs. by Act 33 of 2021, s. 21, for “APPELLATE BOARD” (w.e.f. 4-4-2021) to transfer cases from one Bench to another.—
Omitted by s. 21, ibid. (w.e.f. 4-4-2021).
Conditions as to making of interim orders.—
Omitted by The Tribunal Reforms Act, 2021 (33 of 2021), s. 21 (w.e.f. 4-4-2021).
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 circumstances 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 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].
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 of public non-commercial use, that it is necessary that compulsory licenses should be granted at any time after the sealing thereof to work the invention, it may make a declaration to that effect, by notification in the Official Gazette, and thereupon the following provisions shall have effect, that is to say—
(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 patentees 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 Immuno Deficiency Syndrome, Human Immuno Deficiency Virus, tuberculosis, malaria or other epidemics, he shall not apply any procedure specified in section 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.
92A. Compulsory licence for export of patented pharmaceutical products in certain exceptional circumstances.—
(1) Compulsory licence shall be available for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided compulsory licence has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India.
(2) The Controller shall, on receipt of an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of the concerned pharmaceutical product to such country under such terms and conditions as may be specified and published by him.
(3) The provisions of sub-sections (1) and (2) shall be without prejudice to the extent to which pharmaceutical products produced under a compulsory license can be exported under any other provision of this Act.
Explanation.—For the purposes of this section, ‘pharmaceutical products’ means any patented product, or product manufactured through a patented process, of the pharmaceutical sector needed to address public health problems and shall be inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use.
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 licensee 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 advantage 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 under 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.
Power of Controller to correct clerical errors etc.—
(1) Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications for patents or complete specifications [or other documents related thereto] Ins. by s. 37, ibid. (w.e.f. 20-5-2003) and subject to the provisions of section 44, the Controller may, in accordance with the provisions of this section, correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register.
(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.
(3) Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.
(4) Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be [published] Subs. by Act 15 of 2005, s. 51, for “advertised” (w.e.f. 1-1-2005) in the prescribed manner.
(5) Within the prescribed time after any [such publication] Subs. by s. 51, ibid., for “such advertisement” (w.e.f. 1-1-2005) as aforesaid any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
Registration of assignments, transmissions, etc.—
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof to title of his satisfaction,—
(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence thereunder authenticated in the prescribed manner and also such other documents as may be prescribed relevant to the subject matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3) shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.
Revocation of patent in public interest.—
Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.
Surrender of patents.—
(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall [publish] Subs. by Act 15 of 2005, s. 46, for “advertise” (w.e.f. 1-1-2005) the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after [such publication] Subs. by s. 46, ibid., for “such advertisement” (w.e.f. 1-1-2005), give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
Procedure for disposal of applications for restoration of lapsed patents.—
(1) If, after hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall [publish the application] Subs. by Act 15 of 2005, s. 44, for “advertise the application” (w.e.f. 1-1-2005) in the prescribed manner; and within the prescribed period any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(2) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(3) If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(4) The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, under the provisions of this Act, has to be entered in the register but which has not been so entered.
Applications for restorations of lapsed patents.—
(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within [the period prescribed under section 53 or within such period as may be allowed under sub-section (4) of section 142] Subs. by Act 15 of 2005, s. 43, for “prescribed period or within that period as extended under sub-section (3) of section 53” (w.e.f. 1-1-2005), the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within [eighteen months] Subs. by Act 38 of 2002, s. 30, for “one year” (w.e.f. 20-5-2003) from the date on which the patent ceased to have effect, make an application for the restoration of the patent.
(2) [Omitted by the Patents (Amendment) Act, 2002] Sub-section (2) omitted by s. 30, ibid. (w.e.f. 20-5-2003)
(3) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.
Mention of inventor as such in patent.—
(1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,—
(a) that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and
(b) that the application for the patent is a direct consequence of his being the inventor, the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance of the application in the complete specification and in the register of patents:
Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.
(2) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
(3) If any person [other than a person in respect of whom a request in relation to the application in question has been made under sub-section (2)] desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.
[(4) A request or claim under the foregoing provisions of this section shall be made before the grant of patent] Subs. by Act 15 of 2005, s. 25, for sub-section (4) (w.e.f. 1-1-2005).
(5) [Omitted by the Patents (Amendment) Act, 2005] Sub-section (5) omitted by s. 25, ibid. (w.e.f. 1-1-2005).
(6) [Where] Subs. by s. 25, ibid., for “Subject to the provisions of sub-section (5), where” (w.e.f. 1-1-2005) a claim is made under sub-section (3), the Controller shall give notice of the claim to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested; and before deciding upon any request or claim made under sub-section (2), or subsection (3), the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.
(7) Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a certificate to that effect, and the Controller may, after hearing, if required, any person whom he may consider to be interested, issue such a certificate, and if he does so, he shall rectify the specification and the register accordingly.
Powers of Controller in case of potential infringement.—
(1) If, in consequence of the investigations required [under this Act] Subs. by s. 18, ibid., for “by the foregoing provisions of this Act or of proceedings under section 25” (w.e.f. 1-1-2005), it appears to the Controller that an invention in respect of which an application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public, unless within such time as may be prescribed—
(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or
(b) the complete specification is amended to the satisfaction of the Controller.
(2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under sub-section (1)—
(a) that other patent is revoked or otherwise ceases to be in force; or
(b) the specification of that other patent is amended by the deletion of the relevant claim; or
(c) it is found, in proceedings before the court or the Controller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant’s invention, the Controller may, on the application of the applicant, delete the reference to that other patent.
Powers of Controller in cases of anticipation.—
(1) Where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated in the manner referred to in clause (a) of sub section (1) or sub-section (2) of section 13, he may refuse [the application] Subs. by Act 15 of 2005, s. 17, for “to accept the complete specification” (w.e.f. 1-1-2005) unless the applicant—
(a) shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or
(b) amends his complete specification to the satisfaction of the Controller.
(2) If it appears to the Controller that the invention is claimed in a claim of any other complete specification referred to in clause (b) of sub-section (1) of section 13, he may, subject to the provisions hereinafter contained, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant’s complete specification unless within such time as may be prescribed,—
(a) the applicant shows to the satisfaction of the Controller that the priority date of his claim is not later than the priority date of the claim of the said other specification; or
(b) the complete specification is amended to the satisfaction of the Controller.
(3) If it appears to the Controller, as a result of an investigation under section 13 or otherwise,—
(a) that the invention so far as claimed in any claim of the applicant’s complete specification has been claimed in any other complete specification referred to in clause (a) of sub-section (1) of section 13; and
(b) that such other complete specification was published on or after the priority date of the applicant’s claim, then, unless it is shown to the satisfaction of the Controller that the priority date of the applicant’s claim is not later than the priority date of the claim of that specification, the provisions of sub-section (2) shall apply thereto in the same manner as they apply to a specification published on or after the date of filing of the applicant’s complete specification.
(4) [Omitted] Sub-section (4) omitted by Act 15 of 2005, s. 17 (w.e.f. 1-1-2005)
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.
No anticipation if circumstances are only as described in sections 29, 30, 31 and 32.—
Notwithstanding anything contained in this Act, the Controller shall not refuse *The words “to accept complete specification for a patent or” omitted by Act 15 of 2005, s. 27 (w.e.f. 1-1-2005) to grant a patent, and a patent shall not be revoked or invalidated by reason only of any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do not constitute an anticipation of the invention claimed in the specification.
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] Subs. by Act 56 of 1974, s. 3 and the Second Schedule, for “existing” (w.e.f. 20-12-1974) of a patent does not constitute a threat of proceeding within the meaning of this section.
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] Subs. by Act 15 of 2005, s. 57, for certain words (w.e.f. 1-1-2005), and references in this section to the patentee shall be construed accordingly.
Acquisition of inventions and patents by the Central Government.—
(1) The Central Government may, if satisfied that it is necessary that an invention which is the subject of an application for a patent or a patent should be acquired from the applicant or the patentee for a public purpose, publish a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in respect of the invention or patent shall, by force of this section, stand transferred to and be vested in the Central Government.
(2) Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the patentee and other persons, if any, appearing in the register as having an interest in the patent.
(3) The Central Government shall pay to the applicant, or, as the case may be, the patentee and other persons appearing on the register as having an interest in the patent such compensation as may be agreed upon between the Central Government and the applicant, or the patentee and other persons; or, as may, in default of agreement, be determined by the High Court on a reference under section 103 to be just having regard to the expenditure incurred in connection with the invention and, in the case of a patent, the term thereof, the period during which and the manner in which it has already been worked (including the profits made during such period by the patentee or by his licensee whether exclusive or otherwise) and other relevant factors.
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 manner conducive to social and economic welfare, and to a balance of rights and obligations;
(d) that patents granted do not impede protection of public health and nutrition and should act as instrument to promote public interest specially in sectors 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 restrain 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.
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 invention or in developing it and obtaining a patent and keeping it in force and other relevant factors;
(ii) that the patented invention is worked to the fullest extent by the person to whom the licence is granted and with 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 supply in the Indian market and that the licensee may also export the patented product if need be in accordance with the provisions of sub-clause (iii) of clause (a) of sub-section (7) of section 84;
(viii) that in the case of semi-conductor technology, the licence granted is to work the invention for public non-commercial use;
(ix) that in case the licence is granted to remedy a practice determined after judicial or administrative process to be anti-competitive, the licensee shall be permitted to export the patented product, if need be] . Subs. by Act 15 of 2005, s. 54, for clause (vii) (w.e.f. 1-1-2005).
(2) No licence granted by the Controller shall authorise the licensee to import the patented article or an article or substance 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 patented article or an article or substance made by a patented process from abroad (subject to such conditions as it considers necessary to impose relating among other matters to the royalty and other remuneration, if any, payable to the patentee, the quantum of import, the sale price of the imported article and the period of importation), and thereupon the Controller shall give effect to the directions.
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.
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 imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, he may, subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.
(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 thinks fit, instead of making an order for the grant of a licence to the applicant, order the existing licence to be amended.
(3) Where two or more patents are held by the same patentee and an applicant for a compulsory licence establishes that the reasonable requirements of the public have not been satisfied with respect to some only of the said patents, then, if the Controller 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 considerable 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 for 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.
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 shall direct the applicant to serve copies of the application upon the patentee and any other person appearing from the register to be interested in the patent in respect of which the application is made, and [shall publish the application in the official journal] Subs. by Act 15 of 2005, s. 53, for “shall advertise the application in the Official Gazette” (w.e.f. 1-1-2005).
(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,
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 granting 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 invention 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 applicant’s interest.
(3) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that patented invention has not been worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price, may make an order revoking the patent.
(4) Every application under sub-section (1) shall ordinarily be decided within one year of its being presented to the Controller.
Compulsory licences.—
(1) At any time after the expiration of three years from the date of the [grant] Subs. by Act 15 of 2005, s. 52, for “sealing” (w.e.f. 1-1-2005) of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—
(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied,or
(b) that the patented invention is not available to the public at a reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
(2) An application under this section may be made by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price by reason of any admission made by him, whether in such a licence or otherwise or by reason of his having accepted such a licence.
(3) Every application under sub-section (1) shall contain a statement setting out the nature of the applicant’s interest together with such particulars as may be prescribed and the facts upon which the application is 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 available 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 field 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 anticompetitive practices adopted by the patentee, but shall not be required to take into account matters subsequent to the making of the application.
[Explanation.—For the purposes of clause (iv), “reasonable period” shall be construed as a period not ordinarily exceeding a period of six months] The Explanation ins. by Act 15 of 2005, s. 52 (w.e.f. 1-1-2005).
(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 establishment or development of any trade or industry in India, is prejudiced; or
(c) if the patentee imposes a condition upon the grant of licences under the patent to provide exclusive grant back, prevention to challenges to the validity of patent or coercive package licensing; or
(d) if the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable; or
(e) if the working of the 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.
Amendment of patent granted to deceased applicant.—
Where, at any time after a patent has been [granted]Subs. by s. 34, ibid., for “sealed” (w.e.f. 1-1-2005) in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was [granted]Subs. by s. 34, ibid., for “sealed” (w.e.f. 1-1-2005), the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Meaning of use of invention for purposes of Government.—
(1) For the purposes of this Chapter, an invention is said to be used for the purposes of Government if it is made, used, exercised or vended for the purposes of the Central Government, a State Government or a Government undertaking.
(2) [Omitted by the Patents (Amendment) Act, 2002]
(3) Nothing contained in this Chapter shall apply in respect of any such importation, making or using of any machine, apparatus or other article or of any such using of any process or of any such importation, using or distribution of any medicine or drug, as may be made by virtue of one or more of the conditions specified in section 47.
Amendment of specification before Appellate Board or High Court.—
(1) In any proceeding before the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court for the revocation of a patent, the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court, [as the case may be]The words “as the case may be” omitted by s. 13, ibid. (w.e.f. 4-4-2021), may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court may think fit, and if, in any proceedings for revocation the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent.
(2) Where an application for an order under this section is made to the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Appellate Board or the High Court.
(3) Copies of all orders of the [Appellate Board] or the High Court allowing the patentee to amend the specification shall be transmitted by the [Appellate Board] The word “the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021) or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register] Subs. by s. 41, ibid., for section 58 (w.e.f. 2-4-2007).
Amendment of application and specification or any document relating thereto before Controller.—
(1) Subject to the provisions of section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification [or any document relating thereto] Ins. by Act 38 of 2002, s. 28 (w.e.f. 20-5-2003) to be amended subject to such conditions, if any, as the Controller thinks fit:
Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification [or any document relating thereto] Ins. by Act 38 of 2002, s. 28 (w.e.f. 20-5-2003) under this section while any suit before a court for the infringement of the patent or any proceeding before the High Court for the revocation of the patent is pending, whether the suit or proceeding commenced before or after the filing of the application to amend.
(2) Every application for leave to amend an application for a patent [or a complete specification or any document relating thereto] Subs. by s. 28, ibid., for “or a specification” (w.e.f. 20-5-2003) under this section shall state the nature of the proposed amendment, and shall give full particulars of the reasons for which the application is made.
[(3) Any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the grant of patent and the nature of the proposed amendment may be published].Subs. by Act 15 of 2005, s. 40, for sub-section (3) (w.e.f. 1-1-2005)
(4) Where an application is [published] Subs. by s. 40, ibid., for “advertised” (w.e.f. 1-1-2005) under sub-section (3), any person interested may, within the prescribed period after the [publication] Subs. by s. 40, ibid., for “advertisement” (w.e.f. 1-1-2005) thereof, give notice to the Controller of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.
(5) An amendment under this section of a complete specification may be, or include, an amendment of the priority date of a claim.
[(6) The provisions of this section shall be without prejudice to the right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions of the Controller issued before the grant of a patent] Subs. by s. 40, ibid., for sub-section (6) (w.e.f 1-1-2005).
Information and undertaking regarding foreign applications.—
(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently [within the prescribed period as the Controller may allow] Subs. by Act 15 of 2005, s. 6, for certain words—
(a) a statement setting out detailed particulars of such application;.Subs. by Act 38 of 2002, s. 7, for clause (a), and
(b) an undertaking that, [up to the date of grant of patent in India] Subs. by Act 15 of 2005, s. 6, for “up to the date of the acceptance of his complete specification filed in India, he would keep the Controller informed in writing, from time to time, of [detailed particulars as required under] Subs. by Act 38 of 2002, s. 7, for “details of the nature referred to in” clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.Subs. by Act 15 of 2005, s. 6, for sub-section (2)
