AMITY UNIVERSITY UTTAR PRADESH

INSTITUTE OF ADVANCED LEGAL STUDIES

LLM (BUSINESS LAW) PROGRAM 2012-14
SEMESTER III
TERM PAPER - VI
COURSE CODE MLB331


Topic: Pre- emptive Patenting- Market Exclusion & Operation





Submitted By:
Lipika Gulati
ENROLLMENT No. - A0319312016
CONTENTS

Introduction of Intellectual Property Rights
Types of Intellectual Property Rights
Introduction of Patent
Patentable inventions
Non- Patentable inventions
Concept of Pre-emptive Patenting
Procedure for Obtaining Patent
Rights and Obligations of Patentee
Infringement of Patents
Remedies available for Infringement of Patents
Conclusion
Endnotes
List of Statutes
List of Cases






Introduction of Intellectual Property Rights
Man was supposed to reap benefit of his physical labour from time immemorial. As the
society advanced the intellectual inputs gained more importance than the physical labour and
it became important that ones intellectual labour gets duly rewarded to that it sustains the
motivation of creator to contribute for welfare of society at large.
An Intellectual Property Right is a right vis--vis a product of the mind. It follows that such a
right is based on something intangible and that as per prevalent ideology it is considered to be
private in nature.
The word intellectual is derived from the Latin word intellectus which means perception
i
.
There are three types of property that can be owned by a person or entity. The first two types
are real property (i.e., land and materials that are attached or fixed to the land) and
chattel, also sometimes know as personal property (i.e., movable goods). Ownership and
the rights associated with ownership of these are pretty straightforward. In general, ownership
of these types of property means the right to possess it, the right to enjoy it, the right to sell it
and the right to prevent everyone else on Earth from doing the same.
The laws that deal with ownership and control over these types of property usually concern
questions that come about based on disputed ownership and shared ownership. There is
usually little question as to what constitutes ownership of a parcel of real property or a
physical object and there is usually little question as to what the ramifications of complete
ownership of such property mean
ii
.
Example: Batman owns the Batcave. As such, he has the right to prevent Joker from entering
onto the premises of the Batcave and he has the right to dwell in the Batcave himself, among
other rights that his ownership of the Batcave inherently gives to him. The complex rules of
real property may become an issue when and if Penguin stakes a legal claim to the Batcave or
when and if Batman conveys or leases the Batcave to Robin. However, there is little
confusion as to Batmans rights in the Batcave so long as his ownership of the premises
remains unchallenged.
Example: The Tick, somewhat lesser-known but still as real as a superhero can be, does not
own any real property. Instead, he lives with his sidekick Arthur, who wears a moth outfit
while battling crime. When the Tick jumps to action he cries Spoon! and last year Arthur
gave him a spoon for Christmas, which the Tick prizes dearly. As owner of this chattel, the
Tick may eat with it, display it on his wall, wear it in his belt as a weapon, or (more likely)
misplace it somewhere never to be seen again. Once Arthur gives him the gift, the Tick has
the full bundle of rights which come with ownership of the spoon.
The third type of property that can be owned by a person or entity is intellectual
property. Ownership of intellectual property cannot be crystallized and defined as clearly as
can the other two types of property because the property itself is intangible it cannot be
held, touched, or defined by physical boundaries. Instead, intellectual property is the
ownership interest that a person or entity may have in creations of the human mind.
Ownership of intellectual property means ownership of a concept or idea rather than
ownership of a parcel of property or object. Of course, as with real property and chattel,
intellectual property can be sold or otherwise conveyed.
Intellectual property is usually initially owned by the person who thought of the concept or
idea that is the subject of the intellectual property, although it can often be transferred or
released though agreement, transaction, operation of law or simply the passage of time. While
it is held, ownership of intellectual property allows its owner to exclude other people from
using the ideas or concepts that comprise the intellectual property at issue. Depending on the
type of intellectual property at issue and governing law, this right may be limited to
preventing other people from using the intellectual property at issue for commercial purposes.
Example: Calvin invents the transmorgofier a brilliant device that allows its user to
transform any person into an animal that best approximates the behaviour of that person. If
Calvin has gone through the appropriate steps to secure ownership of the intellectual property
that encompasses the design of the transmorgofier, then he will have the legal power to
prevent Hobbes from selling the same device, even if Hobbes manufactures transmorgofiers
using only his own materials. This is because Calvin owns the idea behind the
transmorgofier, not just the prototype that he may have created.
Intellectual property refers to rights in creations of the human mind which arise under the
laws of patents, copyrights, trademarks, trade secrets, unfair competition and related laws.
Article 2(viii) of the Convention Establishing the World Intellectual Property Organization
(WIPO), concluded in Stockholm on July 14, 1967, defines intellectual property as follows:
Intellectual property" shall include the rights relating to
iii
:
literary, artistic and scientific works;
performances of performing artists, phonograms, and broadcasts
inventions in all fields of human endeavour
scientific discoveries
industrial designs
trademarks, service marks, and commercial names and designations
protection against unfair competition and
all other rights resulting from intellectual activity in the industrial, scientific, literary
or artistic fields.
Intellectual property rights (IPRs) are the legal rights given to creators of intellectual
property. IPRs usually give the creator of intellectual property the right to exclude others
from exploiting the creation for a defined period of time. Intellectual property laws provide
the incentives that foster innovation and creativity, and strive to ensure that the competitive
struggle is fought within certain bounds of fairness. The protection of IPRs contributes
significantly to technological progress, competitiveness of businesses and our country's well-
being.
Thus it can be said that Intellectual property is divided into two categories: industrial
property, which includes inventions (patents), trademarks, industrial designs, and geographic
indications of source: and Copyright, which includes literary and artistic works such as
novels, poems, plays, films and musical works etc. According to the TRIPS Agreement, the
intellectual property has been classified into-Patents, Industrial Designs, Trade Marks,
Copyright, Geographical Indications, Layout Designs of Integrated Circuits, Protection of
Undisclosed Information/Trade Secrets. Different IP Rights vary in the protection they
provide.
When Intellectual property is protected by law, it gives rise to IP Rights. It is useful to note
the distinction between IP and IP Rights. For instance, an invention is the IP, whole a patent
is granted for the invention gives the patent holder the IP Rights. Similarly, a written work is
the IP, whereas copyright protection gives the author the IP Rights.
IP law gives legal rights to IP creators, allowing them to control the use of their IP for a
specific period of time.
Intellectual Property Rights are territorial in nature. They protect the applications of ideas and
information that are of commercial value.
Types of Intellectual Property Rights
The TRIPS Agreement covers following categories of intellectual property
iv
:-
1. Copyrights and related rights - are the rights given by the law to creators of literary,
dramatic, musical and artistic works and producers of cinematograph films and sound
recordings. It is a bundle of rights including, inter alia, rights of reproduction,
communication to the public, adaptation and translation of the work. Copyright
protection shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such. Compilations of data or other material,
whether in machine readable or other form, which by reason of the selection or
arrangement of their contents constitute intellectual creations shall be protected as
such. Member shall provide authors and their successors in title the right to authorize
or to prohibit the commercial rental to the public of originals or copies of their
copyright works. The agreement says performers must also have the right to prevent
unauthorized recording, reproduction and broadcast of live performances.

2. Trade Marks - Any sign, or any combination of signs, capable of distinguishing the
goods or services of one undertaking from those of other undertakings, shall be
capable of constituting a trademark. The owner of a registered trademark shall have
the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs for goods or services. Thus, the
agreement defines the types of signs eligible for protection as trademarks and the
minimum rights that must be conferred on their owners. It says that service marks
must be protected in the same way as trademarks used for goods. Also, the marks that
have become well-known in a particular country must enjoy additional protection.

3. Geographical Indications - are the indications which identify a good as originating
in the territory of a member country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of the good is essentially attributable
to its geographical origin. Under the agreement, the members shall provide the legal
means for interested parties to prevent:- (i) the use of any means in the designation or
presentation of a good that indicates or suggests that the good in question originates in
a geographical area other than the true place of origin in a manner which misleads the
public as to the geographical origin of the good; (ii) any use which constitutes an act
of unfair competition within the meaning of the agreement.

4. Patents- are the exclusive rights granted by a country to the inventor to make, use,
manufacture and market the invention that satisfies the conditions of novelty,
innovativeness and usefulness. Patents shall be available for any such inventions,
whether products or processes, in all fields of technology. The members may exclude
from patentability:- (i) diagnostic, therapeutic and surgical methods for the treatment
of humans or animals; (ii) plants and animals other than micro-organisms, and
essentially biological processes for the production of plants or animals other than non-
biological and microbiological processes. A patent shall confer on its owner the
following exclusive rights:-

Where the subject matter of a patent is a product, to prevent third parties not
having the owner's consent from the acts of making, using, offering for sale,
selling, or importing such those products.
Where the subject matter of a patent is a process, to prevent third parties not
having the owner's consent from the act of using the process, and from the acts
of using, offering for sale, selling, or importing for these purposes at least the
product obtained directly by that process.

5. Industrial Designs - refer to creative activity, which result in the ornamental or
formal appearance of a product. But it does not include any mode or principle or
construction or anything which is in substance a mere mechanical device. Under the
agreement, members shall provide for the protection of independently created
industrial designs that are new or original. The owner of a protected industrial design
shall have the right to prevent third parties not having the owner's consent from
making, selling or importing articles bearing or embodying a design which is a copy,
or substantially a copy, of the protected design, when such acts are undertaken for
commercial purposes.

6. Lay out Designs of Integrated Circuits - Under the agreement, members provide
protection to the layout-designs (topographies) of integrated circuits. Members shall
consider unlawful the following acts if performed without the authorization of the
right holder:- importing, selling, or otherwise distributing for commercial purposes a
protected layout-design, an integrated circuit in which a protected layout-design is
incorporated, or an article incorporating such an integrated circuit only in so far as it
continues to contain an unlawfully reproduced layout-design.

7. Protection of Undisclosed Information (Trade Secrets) - A trade secret or
undisclosed information is any information that has been intentionally treated as
secret and is capable of commercial application with an economic interest. Natural
and legal persons shall have the possibility of preventing information lawfully within
their control from being disclosed to, acquired by, or used by others without their
consent in a manner contrary to honest commercial practices so long as such
information:-

Is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among or readily accessible to
persons within the circles that normally deal with the kind of information in
question,
Has commercial value because it is secret and
Has been subject to reasonable steps under the circumstances, by the person
lawfully in control of the information, to keep it secret.

8. Plant varieties - Members shall provide for the protection of plant varieties either by
patents or by an effective 'sui generis' system or by any combination thereof.
Introduction of Patent
A Patent is an intellectual property right relating to inventions and is the grant of exclusive
right, for limited period, provided by the Government to the patentee, in exchange of full
disclosure of his invention, for excluding others, from making, using, selling, importing the
patented product or process producing that product for those purposes. The purpose of this
system is to encourage inventions by promoting their protection and utilization so as to
contribute to the development of industries, which in turn, contributes to the promotion of
technological innovation and to the transfer and dissemination of technology. Under the
system, Patents ensures property rights (legal title) for the invention for which the patent has
been granted, which may be extremely valuable to an individual or a Company. One should
make the fullest possible use of the Patent System and the benefits it provides. Patent right is
territorial in nature and a patent obtained in one country is not enforceable in other country.
The inventors/their assignees are required to file separate patent applications in different
countries for obtaining the patent in those countries.
The Patent System in India is governed by the Patents Act, 1970 (No. 39 of 1970) as
amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by
the Patents (Amendment) Rules 2006 effective from 05-05-2006.
INTERNATIONAL TREATIES
India is a member-state of Word Intellectual Property Organisation (WIPO), an International
Organisation, responsible for the promotion of the protection of intellectual property
throughout the world. India is a member of the following International Organisations and
Treaties in respect of Patents
v
:
a) World Trade Organization (WTO) with effect from 01-01 -1995.
b) Convention establishing World Intellectual Property Organisation, (WIPO).
c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998.
d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998.
e) Budapest Treaty with effect from 17th December, 2001.
WHAT IS PATENTABLE INVENTION
A new product or process, involving an inventive step and capable of being made or used in
an industry is a patentable invention. It means the invention to be patentable should be
technical in nature and should meet the following criteria
vi

i) Novelty: The matter disclosed in the specification is not published in India or
elsewhere before the date of filing of the patent application in India.
ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light
of the prior publication/knowledge/ document.
iii) Industrially applicable: Invention should possess utility, so that it can be made or used
in an industry.
Ingredients of invention: Trinity Requirements


Must be new Must be non-obvious Must be useful
In Graham v. John Deere Co.
vii
, the US Supreme court laid down certain factors to be
considered to find out whether the invention was obvious or notl. The court observed that to
determine obviousness, courts should consider:
1. The scope and content prior art
2. The difference between the prior art and the claims at issue
3. The level of ordinary skill in the pertinent art.
In additions court may use Secondary considerations such as
(a) The commercial success of the invention
(b) Whether the invention satisfied long felt but unsolved needs in the industry
(c) The failure of others to solve the problems at hand; and
(d) Unexpected result- before reaching a conclusion on obviousness
Obviousness is a question of fact, it must be decided objectively. In deciding obviousness,
all relevant circumstances should be taken into account. The correct conclusion may well
depend on the form and scope of the claim under consideration, construed in the light of the
relevant circumstances. (LOREALS Application
viii
).
WHAT IS NOT PATENTABLE
The following are Non-Patentable inventions within the meaning of the Section 3 and 4 of the
Indian Patents Act, 1970: -
(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
(c) The mere discovery of a scientific principle or the formulation of an abstract theory (or
discovery of any living thing or non-living substances occurring in nature
(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 mere 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.
(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) a method of agriculture or horticulture
(h) any process for the medicinal, surgical, curative, prophylactic,diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.
(i) 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
(j) A mathematical or business method or a computer programme per se or algorithms
(k) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions
(l) A mere scheme or rule or method of performing mental act or method of playing game
(m) A presentation of information; (n) topography of integrated circuits
(o) An invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
In Polar Industries v. Jay Engineering
ix
it was held that if a mechanism or device is known
before, by mere changes in the position of parts, nonew product is created.
In Ram Pratap v. Bhabha Atomic Research
x
, it was held that a diffusion pump was mere
combination of features already known. Those features were without any interdependent
function of their own. Thus the pump itself was treated as a device already known. A patent
was thus refused.
The Court in Stardipack Co. v. Osward Trading
xi
observed that Thickness of plastic film or
layer depends upon the tolerance of the contents of the pouch. Thus, the same is merely the
arrangement of the mixture of the material and cannot be termed as a novel concept and does
not have any novelty. Such arrangement and re-arrangement of mixture of the materials
cannot become an invention, for it is only an improvement by adding microns as per the
strength of the layers.
Types of Patent
There are basically two types of Patent
xii
:
1. Product Patent
2. Process Patent
1. Product Patent- A product patent is granted for a particular product. This means no one
other than the patent holder can make the product for specific time-period.
2. Process Patent- the process patent is given to a particular process of making a product
and the product. So in a way it is given to the technology of making the product.
Process protection, however, allows for more than one producer, competition and restrains
prices.
Concept of Pre-Emptive Patenting
The term preemption literally means the purchase of something before it is offered for sale
to others
xiii
.
In context of Company law it means The right of a shareholder in a corporation to have the
first opportunity to purchase a new issue of stock of that corporation in proportion to the
amount of stock already owned by the shareholder.
xiv

Pre-emption in the patent context implies that claims that forestall competitive
developmenti.e., claims that can have an overly broad impact on downstream innovation
are not eligible for patent protection
xv
. The concern was first raised in the 1972 case of
Gottschalk v. Benson
xvi
. Since its inception in the Gottschalk opinion, preemption has been
mentioned in every Supreme Court opinion focusing on including the Courts two most
recent opinions on the topicBilski v. Kappos
xvii
and Mayo v. Prometheus
xviii
. In Bilski, the
Court pointed out that to allow "petitioners to patent risk hedging would pre-empt use of this
approach in all fields." And in Prometheus, the Court at the outset found the claims at issue
failed the inventive concept test; yet, it went on to invoke pre-emption by stating that
upholding the patents would risk disproportionately tying up the use of the underlying
natural laws, inhibiting their use in the making of further discoveries.
In an effort to avoid costly patent litigation, Microsoft has become the first company to sign
up to a crowd sourcing service that seeks to find prior art and eliminate patents that should
not have been awarded.
The new Litigation Avoidance Program comes from Article One Partners, a startup that pays
cash rewards to discoverers of prior art. Article One pays out rewards of between $5,000 and
$50,000 to members of its claimed million-strong community of patent researchers, and says
it has paid out more than $1.3 million so far.
So far, Article One has operated a scheme enabling those on the receiving end of patent
litigation to crowd source the search for relevant prior art; with that prior art the defendants
can then seek to have the patents being wielded against them invalidated. The Litigation
Avoidance Program goes a step further, proactively seeking out patents purchased by non-
practising entities, and then hunting down prior art relevant to those patents. Non-practicing
entitiesbetter known as patent trollsare those companies who perform no research and
make no products, but instead buy patents and then use them in law suits.
The Litigation Avoidance Program should enable companies to more easily identify poor-
quality patents that ought not have been issued, and use the prior art to overturn those patents
and avoid costly damages awards.
Microsoft is no stranger to patent trolls; most famously, the company was ordered to pay
$521 million to Eolas after Eolas sued Microsoft claiming that Internet Explorer's use of
plugins infringed on an Eolas patent. Microsoft appealed and eventually entered into a
settlement agreement with the patent troll, the terms of which are not public. Bart Eppenauer,
Chief Patent Counsel at Microsoft, warned that "NPEs continue to actively target large
technology companies and often with portfolios of questionable quality", and that the
Litgation Avoidance Program would "reduce risk and potential litigation cost."
Of course, the Litigation Avoidance Program wouldn't have helped in the Eolas casethat
patent withstood prior art challenges
xix
.
Procedure for Obtaining Patent
The Indian Patent Act, 1970 lays down a procedure for the grant of patent to an inventor to
exploit his invention for 20 years subject to fulfilment of certain conditions.
A patent application can be filed at any of the four patent offices in India (Kolkata, Delhi,
Mumbai or Chennai).







Procedure for Registration of Patent
xx

File application in the patent office (Section 6)
Provisional / Complete Specification should be filed (Section 9)
Acceptance of Specification (Section 11)
Publication of application (Section 11A)
Request for examination of application (Section 11B)
Report of Examiner

Approval Objections Division of application
Amendment of Objections
Patent is granted

The patent application passes through the following stages:
A. Filing
B. Publication
C. Examination
D. Opposition
E. Grant

A. Filing
1. Applicant: An application for a patent can be filed by the true and first inventor. Itcan also
be filed by the assignee or legal representative of the inventor. If an application is filed by the
assignee, proof of assignment has to be submitted along with theapplication. The applicant
can be national of any country.
2. Form of Application: Every application shall be accompanied by a provisional or
complete specification. Provisional applications are generally filed at a stage where some
experimentation is required to perfect the invention.
Filing of a provisional specification allows the applicant to get an early application date.
A Provisional Specification shall contain:
a) Title
b) Written Description,
c) Drawings, if necessary and
d) Sample or model if required.
The Complete Specification shall contain:
a) Title
b) Abstract
c) Written Description
d) Drawings (where necessary)
e) Sample or Model (if required by the examiner)
f) Enablement and Best Mode
g) Claims and
h) Deposit (Microorganisms)

a. Title
Title is generally a word or a phrase indicating the content of the invention.
b. Abstract
It is a short paragraph describing the invention in a precise manner.
c. Written Description
This is an important part of the specification. It contains the complete and elaborate
description of the invention. Written Description generally starts with a background of the
invention. The written description explains the invention clearly and comprehensively, with
the help of examples, drawings and models, where and when required.
d. Drawings
The written description might be supplemented with drawings, where and when required. The
drawings should be clearly labelled.
e. Samples or Models
On initiative of the inventor or when required by the patent examiner samples or
modelsmight be submitted to the patent office. Such samples or models will provide a
betterunderstanding of the invention.
f. Enablement and Best Mode
The applicant has to enable his invention in order to allow a person with ordinary skill inthe
art to make and work the invention. He should not only enable, the applicant shouldalso
describe the best mode of carrying out the invention.
g. Claims
Claims define the metes and bounds of the invention. They are the most importantelements in
a specification
h. Deposit
If an invention involves microorganisms, which cannot be described by writing, a sampleof
the microorganism has to be deposited at an internationally recognized depository.There is an
internationally recognized depository at Chandigarh.
A provisional specification cannot be filed if an application has been filed in a foreigncountry
(Convention country) before the Indian filing and if the application is a PCTapplication. A
complete specification has to be filed within twelve months (extendable tofifteen months) of
filing the provisional specification. Each specification should containonly one invention. If
there is more than one invention in a specification, separateapplications have to be filed for
each invention.
3. Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If a
provisional application is followed by a complete application, the priority date shall bedate of
filing of the provisional application. If an Indian application is filed after a foreignor PCT
application, the priority date shall be the date of filing of the foreign or PCTapplication. If an
application is divided into two applications, the priority date shall bedate of filing of the
parent application.
Priority date is the date of reference used by the patent office to determine the newness of the
invention. If the claimed invention is part of public knowledge before the priority date, it will
not be eligible for a patent. Under US Law, priority date is pushed back to the date of
conception for determining novelty and Non-obviousness.
4. Place of Filing
A Patent application can be filed at any of the four patent offices in India. Patent Offices are
located at Kolkata, New Delhi, Chennai and Mumbai.
5. Documents to be submitted at the time of filing
The following documents have to be submitted at the time of filing a patent application:
a. Form 1 - Application for the grant of patent.
b. Form 2 - Provisional or Complete Specification.
c. Form 3 - Statement and undertaking by the applicant.
d. Form 5 - Declaration as to inventorship.
e. Form 26 - Authorization of patent agent or any other person.
Priority document details have to be filed for a Convention application.
B. PUBLICATION
A patent application will be published on expiry of eighteen months after the priority date. It
can be published earlier, if such a request is made by the applicant. The application will not
be published if directions are given for secrecy, until the term of those directions expire. It
will also not be published if the application is withdrawn three months before publication
date.
On publication, specification including drawings and deposits shall be open for public
inspection. The rights of the patentee start from the date of publication but they cannot be
forced until after patent grant.
C. EXAMINATION
1. Request for Examination
The process of examination starts with a request for examination. The request has to bemade
within 36 months from the date of priority or filing. However, if secrecy directionshave been
given for the application, the request can be made six months after thedirections are revoked
or thirty six months from the date of priority or filing, if that dateis later.
2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for
examination. To start with, the examiner makes a formal examination by verifying the
propriety and correctness of all documents filed with the application. Later, he verifies the
patentability of the application. The patentability analysis includes all patentability
requirements.
After confirming that the application falls within the scope of patentable subject matter, the
examiner conducts a prior art search to check if there is prior art, which anticipates the
invention claimed. Prior art search for anticipation includes search for anticipation by
publication, filing of complete specification, etc. He then verifies the existence of inventive
step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month from the date of reference by
controller and that term shall not exceed three months. If the examination report is adverse,
the controller sends a notice to the applicant and gives him an opportunity to correct and if
necessary an opportunity of hearing. The Controller might ask the applicant to amend the
application in order to proceed further. If the applicant does not make such changes, the
application might be rejected.
The Controller has the power to divide the application, post date the application, substitute
applicants and reject the application. An order of division will be given if the application
contains more than one invention and if it is required to file separate applications for each
invention.
The application might be post dated to a period of six months if requested by the applicant.
Substitution of inventors is generally done if the inventor has been wrongfully mentioned or
if a joint inventor has not been mentioned in the application.
The controller has the power to reject the application, if the applicant does not comply with
his requirements.
D. OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published.
Opposition may be filed on any of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.
2. Post-grant Opposition
Any person can file an opposition within a period of twelve months after the grant of a patent.
It can be filed based on the following grounds:
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority date.
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesnt satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve months from the date of convention
application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.
3. Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes
an Opposition board to deal with the opposition. The Opposition board decides the issues
after giving reasonable opportunity of hearing to both the parties. The Opposition board
might invalidate the patent, require amendments or maintain the status quo. If amendments
are required, they have to be made within the prescribed period in order to maintain the
patent.
E. GRANT
If the application satisfies all the requirements of the patent act, the application is said to be in
order for grant. An application in order for grant shall be granted expeditiously. A granted
patent shall be published in the official gazette and shall be open for public inspection. Every
granted patent shall be given the filing date. The patent will be valid throughout India. A
granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and
import the product or use the process. However, the government can make use of the patent
for its own purposes or for distributing an invention relating to medicine to hospitals and
dispensaries. Furthermore, any person can make use of the patent for experiment or
education.
Rights and Obligations of Patentee
Patentee has been enshrined with following rights:-
(a) Where the patent is for a product, the exclusive right to prevent third parties, who do not
have his consent, from act of making, using, offering for sale, selling or importing for those
purposes that product in India.
(b) Where the subject matter of patent is a process, the exclusive right to prevent third parties,
who do not have his consent, from act of using, offering for sale, selling or importing for
those purposes the product directly obtained from that process, in India.
Nevertheless, that product should not be such that no patent can be granted for that product in
India.
More explicitly, if the rights to patentee are to be elaborated, the rights can be formulized as
under:
i) Right to exploit the patent
In the case, when invention is a product, it is the exclusive rights of patentee to make, use,
sell or import for these purposes, the invention in India. Whereas, in the case where such is
for a method or process of manufacturing an article or substance, it confers exclusive right to
use or exercise the method or process in India.
ii) Right to grant license
The patentee has the discretion to transfer rights or grant licenses or enter into some other
arrangement for a consideration. A license or an assignment to must be in writing and
registered with the Controller of Patents, for it to be legitimate and valid. The document
assigning a patent is not admitted as evidence of title of any person to a patent, unless
registered16 and this is applicable to assignee not the assignor.
iii) Right to surrender
The patentee upon his own discretion has the right to surrender the patent at any time by
giving notice in the prescribed manner to the Controller. The Controller, before accepting the
offer of surrender shall have to advertise the same so as to give an opportunity to the
interested parties to oppose the offer of surrender. This is usually done when the patentee
apprehends his non-performance of the patent in future and upon which he decides to
surrender the patent.
iv) Right to sue for infringement
The patentee has a right to institute proceedings for infringement of the patent in a District
Court having jurisdiction to try the suit.
Restrictions on Patentees Rights
Rights of patentees as discussed above are subjected to few restrictions, which are as
follows:-
a) Government use of patent
A patented invention may be used or even acquired by the Government, for its use only, it is
be understood that Government may also restrict or prohibit the use of patent under certain
circumstances. In case of a patent in respect of any medicine or drug, it may be imported by
the Government for its own use or for distribution in any dispensary, hospital or other
medical institution maintained by or on behalf of the Government. This a government can do
without consent of patentee or even without payment of royalties. The Government may also
sell the article manufactured by patented process on royalties or may also acquire a patent on
paying a suitable compensation.

b) Compulsory Licenses
If patent is not worked satisfactorily to meet the reasonable requirements of the public, at a
reasonable price. The Controller may grant compulsory licenses to any applicant to work the
patent. A compulsory license is a provision under the Indian Patent Act which allows the
government to mandate a generic drug maker to produce inexpensive medicine in public
interest even as a patent on the product is valid. Compulsory licenses may also be obtained in
respect of related patents where one patent cannot be worked without using the related patent.
c) Revocation of Patents
A patent may be revoked in cases where there has been no work or unsatisfactory result to the
demand of public in respect of patented invention
d) Invention for defense purposes
Such patents may be subject to certain secrecy provisions, i.e. publication of same may be
restricted or prohibited by directions of controller. Upon continuance of such order or
prohibition of publication or communication of patented invention, applicant is debarred for
using it and Central Government might use it on payment of royalties to applicant.
e) Restored Patents
Once lapsed, a patent may be restored, provided that few limitations are imposed on the right
of the patentee. When infringement was done during the period between date of lapse and
date of advertisement of the application for restoration, then the patentee has no right to seek
action for infringement.
OBLIGATIONS OF A PATENTEE
It has been wisely said, that where there is right, there is a duty. The possession of patent
does not only bestow certain monopoly rights upon the patentee but also certain duties, such
as:-
1. To encourage and secure working of invention to fullest extent without undue delay.
2. Not to use monopoly to unfairly prejudice interest of public.
3. Failure to discharge duties reasonably, would lead to revocation of patent.
Term of Patent
According to Section 53 of the Patents Act, 1970, the term of every patent granted after the
commencement of the Patents (Amendments) Act, 2002, and the term of every patent which
has not expired and has not ceased to have effect on the date of such commencement shall be
20 years from the date of filing of the patent application for the patent.
Infringement of Patents
Once a Patent has issued or granted the Patent owner acquires the right to determine who and
how his patented invention will be used. This Exclusive right will last for up to 20 years from
the filing date provided that all maintenance and renewal fees are paid.
The Exclusive right has two important consequences. Firstly, it allows the Patent owner to
license or sell the rights to the invention. Secondly, it allows the patent owner to sue anyone
who infringes those exclusive rights.
An infringement is defined as the unauthorized making, using, selling, importing or otherwise
any product or process as outlined by any one of the claims of a patented invention. It is
enforceable through the courts.
An infringement is generally determined through the Courts. To establish whether an
infringement has taken place the patent owner or a licensee of the patent needs to prove the
following:
That an infringing act has taken place
That the infringing act has taken place after the patent application has been published
That the prohibited act took place in a country where the patent has been granted
That the prohibited act was in relation to the monopoly found within any one of the
claims of the patent.
A prohibited act is:
The making, selling, using or importing the patented product, or
The use of the patented process, or
The making using, selling or importing of a product obtained directly through the
patented process.
In the case of Richardson v. Castrey
xxi
, the patentee of an apparatus to be used in
manufacturing wine glass brought out an action for infringement of his patent and alleged
that the defendants were using the process described in the patentees specification. The
defendants denied infringement. It was held at that:
1. The process which the defendants was not the one which the plaintiff claimed to have
invented
2. According to the true construction of the specification, the patent was for a particular
combination
3. The defendants had not used that combination and, therefore, had not infringed.
In MacDonald v. Fraser
xxii
, F patented an apparatus for smoke testing and other purposes, the
main feature of which were the same as Ms (an earlier patent) except that an air pumps
substituted for bellows. F denied any infringement and challenged the validity of Ms patent.
It was held that Ms patent was good, and that in as much as Fs apparatus consisted of the
same combination of the same parts and was capable either as made or with slight
modifications, of performing the functions which constituted the merits of Ms invention, it
was an infringement.
In Hayward v. Pavement Light Coy.
xxiii
,is a case of mechanical combinations having
immaterial variations. The plaintiff were the owners of a patent for improvements in
pavements lights having for its object lights so constructed as to divert the rays of light in an
inclined direction into the rooms which it is desired to light by using glass moulded so as to
consist of an angle or series of angle. It was held that the defendants used lights of glass
moulded so as to consist of a curve and thus, infringed the plaintiffs patent.
The Supreme Court in the case of, Morgan Stanlex Mutual Fund v. Kartick Das
xxiv
, referred
in Wockhardt Ltd. v. Hetero Drugs Ltd.
xxv
, laid down the following principles:
(a) Whether the refusal injunction would involve greater injustice than the grant it would
involve
(b) The court expect a party applying for injunction to show utmost good faith in breaking the
application
(c) The general principles like prima facie case, balance of convenience and irreparable loss
would also be considered by the court.
Remedies available for Infringement of Patents
Whenever the monopoly rights of the patentee are violated, his rights are secured again by the
Act through judicial intervention. The Patentee has to institute a suit for infringement. The
relief which may be instituted a suit for infringement. The reliefs which may be awarded in
such a suit are-
(1) Interlocutory / Interim Injunction.
(2) Damages or account of profits.
(3) Permanent injunction.
Section 108 of the Patents Act, 1970 provides for reliefs in suit for infringement. It provides
as follows:
(1) The reliefs which a court may grant in any suit for infringement include an injunction
(subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either
damages or an account of profits.
(2) the court may also order that the goods which are found to be infringing and materials and
implements, the predominant use of which is in the creation of infringing goods shall be
seized, forfeited or destroyed, as the court deems fit under the circumstances of the case
without payment of any compensation.
Who is entitled to sue?
Only the person who has a right in the patent can institute a suit for infringement.
The following persons are entitled to sue:-
1) The Patentee
2) The exclusive licensee if the licence is registered
3) A compulsory licensee when the patentee refuses or neglects to institute proceedings
4) A licensee other than the above two licensees can bring an action for infringement
depending upon the terms of the contract between the licensor and licensee
5) Assignee
6) Co-owners of a Patent
Persons who can be sued
1) Person who infringes the patent that violates the monopoly right of patentee can be
sued for infringement.
2) When two or persons have jointly infringed the patent, both have them have to be
sued as co-defendants.
3) Agents and servants of a principal who is responsible for the infringement can also be
sued either individually or collectively along with their employer / principal.
4) The consignees of an infringing article can be made a party to the proceedings in an
infringement suit.
Conclusion & Suggestion
A patent is a government sanctioned monopoly right granted over a new invention for a
limited period. The person to whom a patent is granted is known as patentee. The patentee
enjoys exclusive right over the patented product. A patent is a form of industrial property.
The owner can sell the whole or part of his property. He can also grant licences to others to
use it. There is an obligation cast on the patentee to work the invention on a commercial scale
either by himself or through licences.
The concept pre-emptive patenting gives preferential right who already has a patent over the
similar product. The concept of pre-emptive patenting is followed in New Zealand, Canada,
U.S.A and many other developed countries. But the concept is still not known in India.
The suggestion is that the concept of pre-emptive patenting should be followed as it would
help in bringing down the number applications for patent which unnecessarily create a barrier
for the patentee.



\
END NOTES

i
http://en.wikipedia.org/wiki/Intellect (viewed on 15
th
October 2013 at 8:30 pm).
ii
http://nationalparalegal.edu/public_documents/courseware_asp_files/patents/IntroIP/WhatIs.asp (viewed on
17
th
October 2013 at 6:30 pm).
iii
http://www.wipo.int/about-ip/en/iprm/pdf/ch1.pdf (viewed on 19
th
October 2013 at 7:45 pm).
iv
http://198.170.119.137/gen-ipr.htm (viewed on 14
th
October 2013 at 6:25 pm).
v
Narayanan, P.: Intellectual Property Law (3
rd
Edition) p. 14.
vi
Dr. Wadhera, B.L.: Law Relating To Intellectual Property (4
th
Edition) p. 5.
vii
383, US 1(1996) 1142.
viii
(1970) RPC 565.
ix
1950 2000 (Suppl. 2) PTC 310.
x
1976 IPLR 28.
xi
AIR 2000 Delhi 23.
xii
Dr. Wadhera, B.L.: Law Relating To Intellectual Property (4
th
Edition) p. 15.
xiii
Justice Y.V. Chandrachud: Concise Law Dictionary (3
rd
Edition) p. 895.
xiv
http://legal-dictionary.thefreedictionary.com/preemption (viewed on 14
th
October 2013 at 8 pm).
xv
http://nulj.org/extralegal/summer2013/unpatentably-preemptive#_ftn7 (viewed on 20
th
October 2013 at 6 pm).
xvi
409 U.S. 63, 72 (1972).
xvii
130 S. Ct. at 3231.
xviii
132 S. Ct. 1289 (2012).
xix
Retrieved from http://arstechnica.com/information-technology/2011/06/microsoft-joins-pre-emptive-patent-
protection-program/ (viewed on 15
th
October 2013 at 8 pm).
xx
Dr. Wadhera, B.L.: Law Relating To Intellectual Property (4
th
Edition) p. 16.
xxi
4 RPC 265.
xxii
10 RPC 386.
xxiii
1 RPC 207.
xxiv
(1994) 4 SCC 225.
xxv
(2006) 32 PTC 65.