patent amendment

MINISTRY OF LAW AND JUSTICE
(Legislative Department)
New Delhi, the 5th April, 2005/Chaitra 15,1927 (Saka)
The following Act of Parliament received the assent of the President on
4th April, 2005, and is hereby published for general information:—
THE PATENTS (AMENDMENT) ACT, 2005
No. 15
OF
2005
[4th April, 2005.]
An Act further to amend the Patents Act, 1970.
BE
it enacted by Parliament in the Fifty-sixth Year of the Republic of India as
follows:—
1. (1) This Act may be called the Patents (Amendment) Act, 2005.
(2) Sub-clause (ii) of clause (a), and clause (b), of section 37, sections 41,42,47,59 to
63 (both inclusive) and 74 shall come into force on such date as the Central Government may,
by notification in the Official Gazette, appoint; and the remaining provisions of this Act shall
be deemed to have come into force on the 1st day of January, 2005.
39 of 1970
2. In section 2 of the Patents Act, 1970 (hereinafter referred to as the principal Act), in
sub-section (1),—
(a) after clause (ab), the following clause shall be inserted, namely:—
'(aba) "Budapest Treaty" means the Budapest Treaty on the International
Recognition of the Deposit of Micro-organisms for the Purposes of Patent
Short title
and
commence-
ment.
Amendment
of section 2.
Page 2
Amendment
of section 3
2_____________THE GAZETTE OF INDIA EXTRAORDINARY __________ [
PART
II—
Procedure done at Budapest on 28th day of April, 1977, as amended and modified
from time to time;';
(b) in clause (d), for the words, brackets and figures "notified as such under sub
section (1) of section 133", the words and figures "referred to as a convention country
in section 133" shall be substituted;
(c) clause (g) shall be omitted;
(d) in clause (h),—
(i) in sub-clause (iii), after the words and figures "the Companies Act,
1956", the word "; or" shall be inserted;
(ii) after sub-clause (iii), the following sub-clause shall be inserted,
namely:—
"(iv) by an institution wholly or substantially financed by the
Government;";
(iii) 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;" shall be omitted;
(e) for clause (i), the following clause shall be substituted, namely:—
'(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
maybe;';
(f) for clause (ja), the following clause shall be substituted, namely:—
(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;';
(g) for clauses (/) and (m), the following clauses shall be substituted, namely:—
'(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';
(h) after clause (t), the following clause shall be inserted, namely:—
(ta) "pharmaceutical substance" means any new entity involving one or
more inventive steps;'.
3. In section 3 of the principal Act, for clause (d), the following shall be substitued,
namely:—
"(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;".
1 of 1956
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SEC.l]__________ THEGAZETTE OF INDIA EXTRAORDINARY _______________3
4. Section 5 of the principal Act shall be omitted.
5. In section 7 of the principal Act,—
(a) after sub-section (1A) the following sub-section shall be inserted, namely:—
"(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.";
(b) in sub-section (3), for the word "owner", the word "person" shall be
substituted;
(c) for sub-section (4), the following sub-section shall be substituted,
namely:—
"(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.".
6. In section 8 of the principal Act,—
(a) in sub-section (1),—
(i) for the words "within such period as the Controller may, for good and
sufficient reasons, allow", the words "within the prescribed period as the Controller
may allow" shall be substituted;
(ii) in clause (b), for the words "up to the date of the acceptance of his
complete specification filed in India", the words "up to the date of grant of patent
in India" shall be substituted;
(b) for sub-section (2), the following sub-section shall be substituted,
namely:—
"(2) At any time after an application for patent is filed in India and till the
grant of 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.".
7. In section 9 of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(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.";
(b) in sub-section (2), the following proviso shall be inserted at the end,
namely:—
"Provided that the period of time specified under sub-section (1) shall be
reckoned from the date of filing of the earliest provisional specification.";
(c) for sub-section (3), the following sub-section shall be substituted,
namely.—
"(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 so 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.";
(d) in sub-section (4), for the words "the acceptance of the complete specification",
the words "grant of patent" shall be substituted.
Omission of
section 5
Amendment
of section 7
Amendment
of section 8
Amendment
of section 9
Page 4
Amendment
of section
10
Amendment
of section
11
Amendment
of section
11A
4 ________
THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
8. In section 10 of the principal Act,—
(a) in sub-section (3), for the words "before the acceptance of the application",
the words "before the application is found in order for grant of a patent" shall be
substituted;
(b) in sub-section (4), in the proviso,—
(i) in clause (ii), for the words "the material to an authorised depository
institution as may be notified by the Central Government in the Official Gazette",
the words "the material to an international depository authority under the
Budapest Treaty" shall be substituted;
(ii) for sub-clause (A), the following sub-clause shall be substituted,
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;";
(c) for sub-section (4A), the following sub-section shall be substituted,
namely:—
"(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.".
9. In section 11 of the principal Act,—
(a) after sub-section (3), the following sub-section shall be inserted, namely:—
"(3A) Where a complete specification based on a previously filed
application in India has been filed within twelve months from the date of that
application and the claim is fairly based on the matter disclosed in the previously
filed application, the priority date of that claim shall be the date of the previously
filed application in which the matter was first disclosed.";
(b) in sub-section (6), after the brackets and figure "(3),", the brackets, figure and
letter "(3A)," shall be inserted.
10. In section 11A of the principal Act,—
(a) for sub-sections (1) to (3), the following sub-sections shall be substituted,
namely:—
"(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).";
(b) in sub-section (4), for the words "of eighteen months", the words, brackets
and figure "prescribed under sub-section (1)" shall be substituted;
Page 5
SEC
.1] __________THEGAZETTE OF INDIA EXTRAORDINARY_______________ 5
(c) after sub-section (6), the following sub-section shall be inserted, namely:—
"(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.".
11. In section 11B of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(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.";
(b) sub-section (2) shall be omitted;
(c) for sub-section (3), the following sub-section shall be substituted,
namely:—
"(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.";
(d) in sub-section (4),—
(i) the words, brackets and figure "or sub-section (2)" shall be omitted;
(ii) for the proviso, the following proviso shall be substituted, namely:—
"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.".
12. In section 12 of the principal Act,—
(a) in sub-section (1), for the words, brackets, figures and letter "under sub
section (1) or sub-section (2) or sub-section (3) of section 11B, the application and
specification and other documents shall be referred to by the Controller", the words,
brackets, figures and letter "under sub-section (1) or sub-section (3) of section 11B,
the application and specification and other documents related thereto shall be referred
at the earliest by the Controller" shall be substituted;
(b) in sub-section (2), for the words "a period of eighteen months from the
date of such reference", the words "such period as may be prescribed" shall be
substituted.
13. In section 13 of the principal Act, in sub-section (3), for the words "it has been
accepted", the words "the grant of a patent" shall be substituted.
Amendment
of section
11B
Amendment
of section
12.
Amendment
of section
13
Page 6
Substitution
of new
sections for
sections 14
and 15.
Consideration
of the report
of examiner
by Controller.
Power of
Controller to
refuse or
require
amended
applications,
etc., in
certain cases.
Amendment
of section
16.
Amendment
of section 17.
Amendment
of section 18.
Amendment
of section
19.
Substitution
of new
section for
section 21.
Time for
putting
application
in order for
grant.
6 ____________THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
14. For sections 14 and 15 of the principal Act, the following sections shall be
substituted, namely:—
"14. Where, in respect of an application for a patent, the report of the examiner
received by the Controller is adverse to the applicant or requires any amendment of the
application, the specification or other documents to ensure compliance with the
provisions of this Act or of the rules made thereunder, the Controller, before proceeding
to dispose of the application in accordance with the provisions hereinafter appearing,
shall communicate as expeditiously as possible the gist of the objections to the applicant
and shall, if so required by the applicant within the prescribed period, give him an
opportunity of being heard.
15. Where the Controller is satisfied that the application or any specification or
any other document filed in pursuance thereof does not comply with the requirements
of this Act or of any rules made thereunder, the Controller may refuse the application or
may require the application, specification or the other documents, as the case may be,
to be amended to his satisfaction before he proceeds with the application and refuse
the application on failure to do so.".
15. In section 16 of the principal Act,—-
(a) in sub-section (1), for the words "before the acceptance of the complete
specification", the words "before the grant of the patent" shall be substituted;
(b) for the Explanation, the following Explanation shall be substituted,
namely:—
"Explanation-For the purposes of this Act, the further application and
the complete specification accompanying it shall be deemed to have been filed
on the date on which the first mentioned application had been filed, and the
further application shall be proceeded with as a substantive application and be
examined when the request for examination is filed within the prescribed period.".
16. In section 17 of the principal Act, in sub-section (1), for the words "before acceptance
of the complete specification", the words "before the grant of the patent" shall be substituted.
17. In section 18 of the principal Act,—
(a) in sub-section (1), for the words "to accept the complete specification", the
words "the application" shall be substituted;
(b) sub-section (4) shall be omitted.
18. In section 19 of the principal Act, in sub-section (1), for the words and figures "by
the foregoing provisions of this Act or of proceedings under section 25", the words "under
this Act" shall be substituted.
19. For section 21 of the principal Act, the following section shall be substituted,
namely:—
"21. (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
Page 7
SEC.l] __________ THE GAZETTE OF INDIA EXTRAORDINARY
___________ 7
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 (/),—
(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.".
20. Sections 22 to 24 of the principal Act shall be omitted.
21. Chapter IVA of the principal Act shall be omitted.
22. In Chapter V of the principal Act, for the Chapter heading "
OPPOSITION TO GRANT OF
PATENT
", the Chapter heading "
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
" shall be
substituted.
23. For sections 25 and 26 of the principal Act, the following sections shall be substituted,
namely:—
"25. (1) Where an application for a patent has been published but a patent has
not been granted, any person may, in writing, represent by way of opposition to the
Controller against the grant of patent on the ground—
(a) that the applicant for the patent or the person under or through whom
he claims, wrongfully obtained the invention or any part thereof from him or from
a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent
made in India on or after the 1 st day of January, 1912; or (ii) in India or
elsewhere, in any other document: Provided that the ground specified
in sub-clause (ii) shall not be available where such publication does
not constitute an anticipation of the invention by virtue of sub-section (2)
or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification published on or
after the priority date of the applicant's claim and filed in pursuance of an
application for a patent in India, being a claim of which the priority date is earlier
than that of the applicant's claim;
Omission of
sections 22
to 24
Omission of
Chapter IVA
Substitution
of new
heading for
heading of
Chapter V
Substitution
of new
sections for
sections 25
and 26
Opposition
to the
patent
Page 8
8_____________THE GAZETTE OF INDIA EXTRAORDINARY __________[
PART
II—
(d) that the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before the priority
date of that claim.
Explanation —For the purposes of this clause, an invention relating to a
process for which a patent is claimed shall be deemed to have been publicly
known or publicly used in India before the priority date of the claim if a product
made by that process had already been imported into India before that date
except where such importation has been for the purpose of reasonable trial or
experiment only;
(e) that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive step, having
regard to the matter published as mentioned in clause (b) or having regard to
what was used in India before the priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe
the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any material
particular was false to his knowledge;
(i) that in the case of convention application, the application was not made
within twelve months from the date of the first application for protection for the
invention made in a convention country by the applicant or a person from whom
he derives title;
(j) that the complete specification does not disclose or wrongly mentions
the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete
specification is anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere,
but on no other ground and the Controller shall, if requested by such person for being heard,
hear him and dispose of such representation in such manner and within such period as may
be prescribed.
(2) At any time after the grant of patent but before the expiry of a period of one
year from the date of publication of grant of a patent, any person interested may give
notice of opposition to the Controller in the prescribed manner on any of the following
grounds, namely:—
(a) that the patentee or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person
under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete
specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a
patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not be
available where such publication does not constitute an anticipation of
the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification published on or
after the priority date of the claim of the patentee and filed in pursuance of an
application for a patent in India, being a claim of which the priority date is earlier
than that of the claim of the patentee;
(d) that the invention so far as claimed in any claim of the complete
specification was publicly known or publicly used in India before the priority
date of that claim.
Explanation.—For the purposes of this clause, an invention relating to a
process for which a patent is granted shall be deemed to have been publicly
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SEC
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known or publicly used in India before the priority date of the claim if a product
made by that process had already been imported into India before that date
except where such importation has been for the purpose of reasonable trial or
experiment only;
(e) that the invention so far as claimed in any claim of the complete
specification is obvious and clearly does not involve any inventive step, having
regard to the matter published as mentioned in clause (b) or having regard to
what was used in India before the priority date of the claim;
(f) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe
the invention or the method by which it is to be performed;
(h) that the patentee has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any material
particular was false to his knowledge;
(i) that in the case of a patent granted on convention application, the
application for patent was not made within twelve months from the date of the
first application for protection for the invention made in a convention country or
in India by the patentee or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions
the source and geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere,
but on no other ground.
(3) (a) Where any such notice of opposition is duly given under sub-section (2),
the Controller shall notify the patentee.
(b) On receipt of such notice of opposition, the Controller shall, by order in
writing, constitute a Board to be known as the Opposition Board consisting of such
officers as he may determine and refer such notice of opposition along with the
documents to that Board for examination and submission of its recommendations to
the Controller.
(c) Every Opposition Board constituted under clause (b) shall conduct the
examination in accordance with such procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition Board and after giving
the patentee and the opponent an opportunity of being heard, the Controller shall
order either to maintain or to amend or to revoke the patent.
(5) While passing an order under sub-section (4) in respect of the ground
mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall not take
into account any personal document or secret trial or secret use.
(6) In case the Controller issues an order under sub-section (4) that the patent
shall be maintained subject to amendment of the specification or any other document,
the patent shall stand amended accordingly.
26. (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),
In cases of
"obtaining"
Controller
may treat the
patent as the
patent of
opponent.
Page 10
Omission of
section 27
Amendment of
section 28
Amendment
of section 31.
Amendment
of section 34.
Amendment
of section 35.
Amendment
of section 36.
Amendment of
section 37.
Substitution of
new section
for section 39.
Residents not
to apply for
patents
outside India
without prior
permission.
10 __________ THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II—
filed an application for a patent for an invention which included 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.".
24. Section 27 of the principal Act shall be omitted.
25. In section 28 of the principal Act,—
(a) for sub-section (4), the following sub-section shall be substituted, namely:—
"(4) A request or claim under the foregoing provisions of this section shall
be made before the grant of patent.";
(b) sub-section (5) shall be omitted;
(c) in sub-section (6), for the words, brackets and figure "Subject to the provisions
of sub-section (5), where", the word "Where" shall be substituted.
26. In section 31 of the principal Act, for the words "not later than six months", the
words "not later than twelve months" shall be substituted.
27. In section 34 of the principal Act, the words "to accept complete specification for a
patent or" shall be omitted.
28. In section 35 of the principal Act, in sub-section (3), for the words "acceptance of
complete specification", the words "grant of patent" shall be substituted.
29. In section 36 of the principal Act, in sub-section (1), for the words "twelve months",
the words "six months" shall be substituted.
30. In section 37 of the principal Act,—
(a) in sub-section (1),—
(i) in clause (a), for the words "to accept", the words "to grant" shall be
substituted;
(ii) for the proviso, the following proviso shall be substituted, namely:—
"Provided that the application may, subject to the directions, proceed up to
the stage of grant of the patent, but the application and the
specification found to be in order for grant of the patent shall not be
published, and no patent shall be granted in pursuance of that application.";
(b) in sub-section (2), for the words "is accepted", the words "is found to be in
order for grant of the patent" shall be substituted.
31. For section 39 of the principal Act, the following section shall be substituted,
namely:—
"39. (1) No person resident in India shall, except under the authority of a written
permit sought in the manner prescribed and granted by or on behalf of the Controller,
make or cause to be made any application outside India for the grant of a patent for an
invention unless—
(a) an application for a patent for the same invention has been made in
India, not less than six weeks before the application outside India; and
(b) either no direction has been given under sub-section (1) of section 35
in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall dispose of every such application within such period as
may be prescribed:
Provided that if the invention is relevant for defence purpose or atomic energy,
the Controller shallnotgrantpermitwithoutthe prior consentof the CentralGovernment.
Page 11
SEC.1]___________THEGAZETTE OF INDIA EXTRAORDINARY ______________11
(3) This section shall not apply in relation to an invention for which an application
for protection has first been filed in a country outside India by a person resident
outside India.".
32. In Chapter VIII of the principal Act, for the Chapter heading "
GRANT AND SEALING OF
PATENTS AND RIGHTS CONFERRED THEREBY
", the Chapter heading "
GRANT OF PATENTS AND RIGHTS
CONFERRED THEREBY
" shall be substituted.
33. For section 43 of the principal Act, the following section shall be substituted,
namely:—
"43. (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.".
34. In section 44 of the principal Act, for the word "sealed", at both the places where it
occurs, the word "granted" shall be substituted.
35. In section 45 of the principal Act, in sub-section (3), for the words "the date of
advertisement of the acceptance of the complete specification", the words "the date of
publication of the application" shall be substituted.
36. In section 48 of the principal Act, the proviso shall be omitted.
37. In section 52 of the principal Act,—
(a) in sub-section (1),—
(i) for the opening words "Where a patent has been revoked", the words
and figures "Where the patent has been revoked under section 64" shall be
substituted;
(ii) for the word "court", wherever it occurs, the words "Appellate Board
or court" shall be substituted;
(b) in sub-section (2), for the word "court", occurring at both the places, the
words "Appellate Board or court" shall be substituted.
38. In section 53 of the principal Act,—
(a) after sub-section (1), the following Explanation shall be inserted, namely:—
"Explanation.—For the purposes of this sub-section, the term of patent
in case of International applications filed under the Patent Cooperation Treaty
designating India, shall be twenty years from the international filing date accorded
under the Patent Cooperation Treaty.";
(b) in sub-section (2), for the words "or within that period as extended under this
section", the words "or within such extended period as may be prescribed" shall be
substituted;
(c) sub-section (3) shall be omitted.
39. In section 54 of the principal Act,—
(a) in sub-section (3), for the words "complete specification", occurring at both
the places, the word "application" shall be substituted;
Substitution
of heading of
Chapter VIII.
Substitution of
new section
for section
43. Grant of
patents.
Amendment
of section 44.
Amendment
of section 45.
Amendment
of section 48
Amendment
of section 52.
Amendment
of section 53.
Amendment
of section
54.
Page 12
Amendment
of section
57.
Substitution
of new
section for
section 58
Amendment
of
specification
before
Appellate
Board or
High Court.
Amendment
of section 59
12____________ THE GAZETTE OF INDIA EXTRAORDINARY _________ [
PART
II—
(b) for sub-section (4), the following sub-section shall be substituted, namely:—"
"(4) A patent of addition shall not be granted before grant of the patent for
the main invention.".
40. In section 57 of the principal Act,—
(a) for sub-section (3), the following sub-section shall be substituted, namely:—
"(3) Any application for leave to amend an application for a patent or a
complete specification or a document related thereto under this section made
after the grant of patent and the nature of the proposed amendment may be
published.";
(b) in sub-section (4),—
(i) for the word "advertised", the word "published" shall be substituted;
(ii) for the word "advertisement", the word "publication" shall be
substituted;
(c) for sub-section (6), the following sub-section shall be substituted,
namely:—
"(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.".
41. For section 58 of the principal Act, the following section shall be substituted,
namely:—
"58. (1) In any proceeding before the Appellate Board or the High Court for the
revocation of a patent, the Appellate Board or the High Court, as the case may be, 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 or the High Court may think fit, and
if in any proceedings for revocation the Appellate Board 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 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 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.".
42. In section 59 of the principal Act, for sub-section (2), the following sub-section
shall be substituted, namely:—
"(2) Where after the date of grant of patent any amendment of the specification
or any other documents related thereto is allowed by the Controller or by the Appellate
Board or the High Court, as the case may be,—
(a) the amendment shall for all purposes be deemed to form part of the
specification along with other documents related thereto;
(b) the fact that the specification or any other documents related thereto
has been amended shall be published as expeditiously as possible; and
Page 13
33 of 1962
SEC.l] __________ THEGAZETTE OF INDIA EXTRAORDINARY______________ 13
(c) the right of the applicant or patentee to make amendment shall not be
called in question except on the ground of fraud.".
43. In section 60 of the principal Act, in sub-section (1), for the words, brackets and
figures "prescribed period or within that period as extended under sub-section (3) of
section 53", the words, figures and brackets "period prescribed under section 53 or within
such period as may be allowed under sub-section (4) of section 142" shall be substituted.
44. In section 61 of the principal Act, in sub-section (1), for the words "advertise the
application", the words "publish the application" shall be substituted.
45. In section 62 of the principal Act,—
(a) in sub-section (1), for the word "advertisement", the word "publication" shall
be substituted;
(b) in sub-section (2), for the words "date of the advertisement", the words "date
of publication" shall be substituted.
46. In section 63 of the principal Act,—
(a) in sub-section (2), for the word "advertise", the word "publish" shall be
substituted;
(b) in sub-section (3), for the words "such advertisement", the words "such
publication" shall be substituted.
47. In section 64 of the principal Act, in sub-section (1), for the words "on the petition
of any person interested or of the Central Government or on a counter-claim in a suit for
infringement of the patent, be revoked by the High Court", the words "be revoked on a
petition of any person interested or of the Central Government by the Appellate Board or on
a counter-claim in a suit for infringement of the patent by the High Court" shall be substituted.
48. For section 65 of the principal Act, the following section shall be substituted,
namely:—
"65. (1) Where at any time after grant of a patent, the Central Government is
satisfied that a patent is for an invention relating to atomic energy for which no patent
can be granted under sub-section (1) of section 20 ofthe Atomic Energy Act, 1962, it
may direct the Controller to revoke the patent, and thereupon the Controller, after
giving notice, to the patentee and every other person whose name has been entered in
the register as having an interest in the patent, and after giving them an opportunity of
being heard, may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may allow the patentee
to amend the complete specification in such manner as he considers necessary instead
of revoking the patent.".
49. For section 68 of the principal Act, the following section shall be substituted,
namely:—
"68. An assignment of a patent or of a share in a patent, a mortgage, licence or the
creation of any other interest in a patent shall not be valid unless the same were in
writing and the agreement between the parties concerned is reduced to the form of a
document embodying all the terms and conditions governing their rights and obligations
and duly executed.".
50. In section 74 ofthe principal Act, for sub-section (2), the following sub-section
shall be substituted, namely:—
"(2) The Central Government may, by notification in the Official Gazette, specify
the name ofthe Patent Office.".
Amendment
of section 60
Amendment
of section 61
Amendment
of section 62
Amendment
of section 63
Amendment
of section 64
Substitution
of new
section for
section 65
Revocation
of patent or
amendment
of complete
specification
on directions
from
Government
in cases
relating to
atomic
energy
Substitution
of new
section for
section 68
Assignments,
etc , not to
be valid
unless in
writing and
duly
executed
Amendment
of section
74.
Page 14
Amendment
of section 78.
Amendment
of section 84.
Amendment
of section 87
Amendment
of section 90.
Insertion of
new section
92A.
Compulsory
licence for
export of
patented
pharmaceutical
products in
certain
exceptional
circumstances.
Amendment
of section
100.
14____________ THE GAZETTE OF INDIA EXTRAORDINARY __________ [
PART
II—
51. In section 78 of the principal Act,—
(a) in sub-section (4), for the word "advertised", the word "published" shall be
substituted;
(b) in sub-section (5), for the words "such advertisement", the words "such
publication" shall be substituted.
'52. In section 84 of the principal Act,—
(a) in sub-section (1), for the word "sealing", the word "grant" shall be substituted;
(b) in sub-section (6), the following Explanation shall be inserted at the end,
namely,—
'Explanation.—For the purposes of clause (iv), "reasonable period" shall be
construed as a period not ordinarily exceeding a period of six months.'.
53. In section 87 of the principal Act, in sub-section (1), for the words "shall advertise
the application in the Official Gazette", the words "shall publish the application in the official
journal" shall be substituted.
54. In section 90 of the principal Act, in sub-section (1), for clause (vii), the following
clauses shall be substituted, namely:—
"(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.".
55. After section 92 of the principal Act, the following section shall be inserted,
namely:—
'92A. (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 licence 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.'.
56. In section 100 of the principal Act, in sub-section (3), for the words "the acceptance
of the complete specification in respect of the patent", the words "grant of the patent" shall
be substituted.
Page 15
38 of 2002
38 of 2002.
38 of 2002.
38 of 2002.
SEC
.1] __________THEGAZETTE OF INDIA EXTRAORDINARY______________ 15
57. In section 105 of the principal Act, in sub-section (4), for the words "after the date
of advertisement of acceptance of the complete specification of a patent", the words "after
the publication of grant of a patent" shall be substituted.
58. In section 107A of the principal Act,—
(a) in clause (a),—
(i) for the words "using or selling", the words "using, selling or importing"
shall be substituted;
(ii) for the words "use or sale,", the words "use, sale or import" shall be
substituted;
(b) in clause (b), for the words "who is duly authorised by the patentee to sell or
distribute the product", the words "who is duly authorised under the law to produce
and sell or distribute the product" shall be substituted.
59. In section 113 of the principal Act,—
(a) for sub-section (1), the following sub-section shall be substituted, namely:—
"(1) If in any proceedings before the Appellate Board or a High Court for
the revocation of a patent under section 64 and section 104, as the case may be,
the validity of any claim of a specification is contested and that claim is found by
the Appellate Board or the High Court to be valid, the Appellate Board or the
High Court may certify that the validity of that claim was contested in those
proceedings and was upheld.";
(b) for sub-section (3), the following sub-section shall be substituted, namely:—
"(3) Nothing contained in this section shall be construed as authorising
the courts or the Appellate Board hearing appeals from decrees or orders in suits
for infringement or petitions for revocation, as the case may be, to pass orders
for costs on the scale referred to therein.".
60. In section 116 of the principal Act fas substituted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (2), clause (c) shall be omitted.
61. In section 117A of the principal Act [as inserted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (2), for the words and figures "section 20, section 25,
section 27, section 28", the words, figures and brackets "section 20, sub-section (4) of
section 25, section 28" shall be substituted.
62. In section 117D of the principal Act [as inserted by section 47 of the Patents
(Amendment) Act, 2002], in sub-section (1), for the words, "for rectification of the register",
the words and figures "for revocation of a patent before the Appellate Board under section 64
and an application for rectification of the register" shall be substituted.
63. For section 117G of the principal Act [as inserted by the Patents (Amendment) Act,
2002], the following section shall be substituted, namely:—
" 117G All cases of appeals against any order or decision of the Controller and all
cases pertaining to revocation of patent other than on a counter-claim in a suit for
infringement and rectification of register pending before any High Court, shall be
transferred to the Appellate Board from such date as may be notified by the Central
Government in the Official Gazette and the Appellate Board may proceed with the
matter either de novo or from the stage it was so transferred.".
64. In section 120 of the principal Act, for the words, "ten thousand rupees", the words
"one lakh rupees" shall be substituted.
Amendment
of section
105
Amendment
of section
107A.
Amendment
of section
113.
Amendment
of section
116.
Amendment
of section
117A.
Amendment
of section
117D.
Substitution
of new
section for
section 117G
Transfer of
pending
proceedings
to Appellate
Board
Amendment
of section
120.
Page 16
Amendment
of section
122.
Amendment
of section
123.
Amendment
of section
126.
Substitution
of new
section for
section 133.
Convention
countries.
Amendment
of section
135.
Amendment
of section
138.
Amendment
of section
142.
Substitution
of new
section for
section 143.
Restrictions
upon
publication
of
specification.
16____________THE GAZETTE OF INDIA EXTRAORDINARY__________ [
PART
II
—
65. In section 122 of the principal Act, in sub-section (1), for the words "twenty
thousand rupees", the words "ten lakh rupees" shall be substituted.
66. In section 123 of the principal Act, for the words "ten thousand rupees in the case
of a first offence and forty thousand rupees", the words "one lakh rupees in the case of a first
offence and five lakh rupees" shall be substituted.
67. In section 126 of the principal Act,—
(a) in sub-section (1), in clause (c), sub-clause (i) shall be omitted;
(b) in sub-section (2), for the words, brackets and figures "the Patents
(Amendment) Act, 2002", the words, brackets and figures "the Patents (Amendment)
Act, 2005" shall be substituted.
68. For section 133 of the principal Act, the following section shall be substituted,
namely:—
"133. Any country, which is a signatory or party or a group of countries, union of
countries or inter-governmental organisations which are signatories or parties to an
international, regional or bi-lateral treaty, convention or arrangement to which India is
also a signatory or party and which affords to the applicants for patents in India or to
citizens of India similar privileges as are granted to their own citizens or citizens to their
member countries in respect of the grant of patents and protection of patent rights
shall be a convention country or convention countries for the purposes of this Act.".
69. In section 135 of the principal Act, after sub-section (2), the following sub-section
shall be inserted, namely:—
"(3) In case of an application filed under the Patent Cooperation Treaty
designating India and claiming priority from a previously filed application in India, the
provisions of sub-sections (1) and (2) shall apply as if the previously filed application
were the basic application:
Provided that a request for examination under section 11B shall be made only for
one of the applications filed in India.".
70. In section 138 of the principal Act, for sub-section (1), the following sub-section
shall be substituted, namely:—
"(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.".
71. In section 142 of the principal Act, in sub-section (4), for the words "the complete
specification", the words "the application" shall be substituted.
72. For section 143 of the principal Act, the following section shall substituted,
namely:—
"143. Subject to the provisions of Chapter VII, an application for a patent, and
any specification filed in pursuance thereof, shall not, except with the consent of the
applicant, be published by the Controller before the expiration of the period prescribed
under sub-section (1) of section 11A or before the same is open to public inspection in
pursuance of sub-section (3) of section 11A or section 43.".
38 of 2002.
Page 17
SEC.l] __________ THEGAZETTE OF INDIA EXTRAORDINARY______________ 17
73. For section 145 of the principal Act, the following section shall substituted,
namely:—
"145. The Controller shall publish periodically an official journal which shall
contain such information as may be required to be published by or under the provisions
of this Act or any rule made thereunder.".
74. In section 151 of the principal Act,—
(a) in sub-section (1), for the words "the High Court", occurring at both the
places, the words "the High Court or the Appellate Board" shall be substituted;
(b) in sub-section (3), for the word "courts", the words "Appellate Board or the
courts, as the case may be," shall be substituted.
75.. Section 152 of the principal Act shall be omitted.
76. In section 159 of the principal Act,— (i)
in sub-section (2),—
(a) for clauses (ia) and (ib), the following clauses shall be substituted,
namely:—
"(ia) the period which the Controller may allow for filing of statement
and undertaking for in respect of applications under sub-section (1), the
period within which the details relating to processing of applications may
be filed before the Controller and the details to be furnished by the applicant
to the Controller under sub-section (2) of section 8;
(ib) the period within which a reference to the deposit of materials
shall be made in the specification under sub-clause (A) of clause (ii) of the
proviso to sub-section (4) of section 10;
(ic) the period for which application for patent shall not be open to
the public under sub-section (1) and the manner in which the applicant
may make a request to the Controller to publish his application under sub-
section (2) of section 11 A;
(id) the manner of making the request for examination for an
application for patent and the period within which such examination shall
be made under sub-sections (1) and (3) of section 11B;
(ie) the manner in which an application for withdrawal of an
application for grant of a patent shall be made and the period within which
a request for examination from the date of revocation of secrecy directions
shall be made under the proviso to sub-section (4) of section 11B.";
(b) in clause (ii), for the word "advertised", the word "published" shall be
substituted;
(c) for clause (v), the following clauses shall be substituted, namely:—
"(v) the manner in which and the period within which the Controller
shall consider and dispose off a representation under sub-section (1) of
section 25;
(va) the period within which the Controller is required to dispose off
an application under section 39;";
Substitution
of new
section for
section 145.
Publication
of official
journal.
Amendment
of section
151.
Omission
of section
152.
Amendment
of section
159.
Page 18
Omission of
section 163
Transitional
provision.
Repeal and
saving.
18____________THE GAZETTE OF INDIA EXTRAORDINARY [
PART
II—
SEC
. 1]
(ii) in sub-section (3), the following proviso shall be added at the end,
namely:—
"Provided that the Central Government may, if it is satisfied that the
circumstances exist which render it practically not possible to comply with such
condition of previous publication, dispense with such compliance.".
77. Section 163 of the principal Act shall be omitted.
78. (1) Notwithstanding the omission of Chapter IVA of the principal Act by section 21
of this Act, every application for the grant of exclusive marketing rights filed under that
Chapter before the 1st day of January, 2005, in respect of a claim for a patent covered under
sub-section (2) of section 5 of the principal Act, such application shall be deemed to be
treated as a request for examination for grant of patent under sub-section (3) of section 11B
of the principal Act, as amended by this Act.
(2) Every exclusive right to sell or distribute any article or substance in India granted
before the 1st day of January, 2005 shall continue to be effective with the same terms and
conditions on which it was granted.
(3) Without prejudice to any of the provisions of the principal Act, the applications in
respect of which exclusive rights have been granted before the 1 st day of January, 2005 shall
be examined for the grant of patent immediately on the commencement of this Act.
(4) All suits relating to infringement of the exclusive right granted before 1st day of
January, 2005 shall be dealt with in the same manner as if they were suits concerning
infringement of patents under Chapter XVIII of the principal Act.
(5) The examination and investigation required as carried out for the grant of exclusive
right shall not be deemed in any way to warrant the validity of any grant of exclusive right to
sell or distribute, and no liability shall be incurred by the Central Government or any officer
thereof by reason of, or in connection with, any such examination or investigation or any
report or other proceedings consequent thereon.
79. (1) The Patents (Amendment) Ordinance, 2004 is hereby repealed.
(2) Notwithstanding such repeal, anything done or any action taken under the principal
Act, as amended by the said Ordinance shall be deemed to have been done or taken under the
corresponding provisions of the principal Act, as amended by this Act.
T.K.VISWANATHAN,
Secy, to the Govt. of India.
Ord. 7 of
2004.