INTELLECTUAL PROPERTY LAWS

Introduction:
IPR are the legal rights governing the use of creations of the human minds. Intellectual property refers
to creation of mind, that is., inventions, industrial designs for article, literary and artistic work,
symbols, etc., used in commerce.
The term “Intellectual Property” has been used for almost more than one hundred and fifty years,
which refers to the general area of law that includes copyrights, patents, designs and trade mark and the
related rights. The intellectual property law regulates the creation, use and exploitation of mental or
creative labour. There are number of forms and important differences between the various forms of
intellectual property. The single factor that they are common is that they establish property protection
over intangible things such as ideas, inventions, signs and information.
Intellectual property is divided into two categories:
• industrial property – which includes inventions (patents), trademarks, industrial designs and
geographical indications of source
• copyright- which includes literary and artistic works such as novels, poems, plays, films and
musical works etc.

Why legal protection provided to IP?

The general justification for the protection of IPR is that the intellectual property induces or encourages
desirable behaviour. For example, patent system is sometime justified on the basis that it provides
inventor with an incentive to disclose valuable technical information to the public, which would have
otherwise remain secret. Similarly, the trademark system is justified because it encourages traders to
manufacture and sell high quality products. It prevents third party and it also encourages them to
provide information to the public about those attributes. The ethical and moral arguments justify
intellectual property rights because the law recognizes an author's natural rights over the product of
their labour.

THEORIES OF INTELLECTUAL PROERTY RIGHTS

1. UTILITARIAN THEORY – Jeremy Bentham propounded this theory. This theory is based on the
ideal of “greatest good for the greatest number”. Thus according to this theory, law should guarantee
maximum benefit for the maximum members of the society. Applying this theory to intellectual
property rights, it is stated that by allowing a creator to profit from his work, monetary incentives are
afforded for technological invention and artistic creation which typically benefit society at large.
Further, the proliferation of intellectual property rights, as a means to foster investment of temporal and
financial resources in innovation in the hope that the invention and works that result there from act to
promote “general happiness” and increase the standard, quality of living and thereby the net welfare
benefit amongst the general population.
2. LABOUR THEORY- The labour theory propounded by John Locke who was of opinion that a
person who labors upon resources that are held in common has a natural right to the fruits of his efforts
and the state has duty to respect and enforce that right. The Labour Theory works on the premise that
the labour of a man increases the value of a thing which was in common and therefore the outcome of
his labour belongs to him as a natural right.
3. PERSONALITY THEORY- The personality theory has been propounded by Kant and Hegel. This
theory centers on individual's personality and the external extensions thereof. According to Hegel, man
acquires an “absolute right of appropriation” by putting his will into any and everything..thereby
making it his. The Personality Theory is described by Fisher as justifying property rights “when and
only when they would promote human flourishing by protecting or fostering fundamental human needs
or interests”. Fisher identifies four such needs appropriate for intellectual property: privacy; individual
self-realization; identity and benevolence. The personality theory to apply there must be an intimate
and emotional connection between the author/ creator and his works or inventions.
4. SOCIAL PLANNING THEORY- The social planning theory is rooted in the proposition that
property rights in general and intellectual property rights in particular can and should be shaped so as to
help foster the achievement of a just and attractive culture. This theory has less of an established
foundation. It differs from utilitarian theory in that it seeks to go beyond the notion of social welfare to
a much broader vision of society serviced by intellectual property. This theory is criticized on the
ground that it cannot achieve agreement on what are the goals that such “social planning” seeks to
achieve.

PATENT ACTS, 1970

Objects:
The object of patent law is to encourage scientific research, new technology and industrial progress.
The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which
after the expiry of the fixed period of the monopoly, passes into the public domain.
Salient Features:
1. Novelty
2. Inventive Step
3. Utility/ Industrial Application
4. Disclosure
5. Improvement- In order to be patentable, an improvement on something known before or a
combination of different matters already known, should be something more than a mere workshop
improvement, and must independently satisfy the test of invention or an inventive step. It must produce
a new result, or a new article or a better or cheaper article than before. The subject matter must involve
'invention' over what is old. Mere collocation of more than one integers or things, not involving the
exercise of any inventive faculty does not qualify for the grant of a patent.

Rationale of Patent System:

Before a patent is granted, the patentee has to describe in the patent application, the invention with such
clarity and completeness of all the technical details that anyone having ordinary skill in the art should
by merely reading the description, be able to carry out the invention. In other words, before a patent is
granted, the invention has to be disclosed. The disclosure of invention provides useful information to
the public, which helps in avoiding wasteful duplication of effort and the multiplication of costs that
research aimed at finding solutions to technical problems can entail.
The grant of patent not only recognizes and rewards the creativity of the inventor but also acts as an
inspiration for further inventions which ultimately contributes to the technological development of a
nation.
In Bayer Corporation v. Union of India1, the Bombay HC stated that the object of the patent law was to
encourage scientific research, new technology and industrial progress. The grant of a patent necessarily
meant a new invention of commercial utility. Patent law encouraged research and invention by
guaranteeing to the holder of the patent an exclusive right to prevent all others from manufacturing,
using and selling invented goods for a particular number of years to the exclusion of all others.

History of Patent in India:

In India the Act VI of 1856 on Protection of Inventions was enacted which was based on the British
Patent Law of 1852. Under the Act of 1856, certain exclusive privileges were granted to inventors of
new manufacturers for a period of 14 years. The act was modified as Act XV in 1859. Under this Act,
1. W.P. 1323 of 2013 decided on 15 July 2014
patent monopolies which were called as exclusive privileges were granted for a period of 14 years from
the date of filing specification. These privileges were making, selling and using inventions in India and
authorizing others to do so. Subsequently, the Patents and Designs Protection Act was adopted in 1872.
Thereafter Protection of Inventions Act was adopted in 1883. These Acts were consolidated in 1888 as
the Inventions and Designs Act. In 1911, the Indian Patents and Designs Act was enacted.

Ayyanagar's Report- There have been substantial changes in the political and economic conditions of
the country since the enactment of 1911 Act. The need for a comprehensive law on Patent was felt as it
was realized that the 1911 Act was not responding to the needs of the society and was not keeping pace
with the industrial development. In 1948, the Government appointed Patents Enquiry Committee to
review the working of the patents law in India. The committee submitted its final report in 1950. In
1953, the Patents Bill was introduced in the Lok Sabha. The Bill was largely based on the U.K. Patents
Act,1949. It also incorporated some of the recommendations of the Committee. The Bill could not
become an Act as it lapsed on the dissolution of the First Lok Sabha.

In 1957, Justice Rajagopala Ayyanagar was appointed by the Government to examine afresh and review
the patents law in India and advise the Government on the changes required to be made in law.

Justice Ayyanagar pointed out that the same patent law would operate differently in industrial countries
and under-developed countries because of their different technological and economic development. He
submitted a comprehensive report on Patents Law Revision in September 1959 which became a basis
for the Patents Bill 1965. The Bill also incorporated a few more changes with reference to patents for
food, drugs, and medicines and was introduced in the Lok Sabha in 1965. The Bill referred to a Joint
Committee of Parliament which after making a careful consideration of the matter, adopted a number
of amendments to the Bill. The amended Bill was moved in the Lok Sabha in 1966. Unfortunately, it
could not be proceeded with for want of time and eventually lapsed with the dissolution of the Lok
Sabha in 1967.
The Patents Bill was again introduced in the Parliament and was passed by both the Houses of the
Parliament in 1970. The Act came into force on April 20, 1972.

Patentee:
Patentee means the person for the time being entered on the register as the grantee or proprietor of the
patent. A firm cannot be said to have the capacity to invent. It cannot be called an inventor although
there may be no objection to its being registered as a patentee either by an assignment by a patentee or
jointly with the true and first inventor. A corporation cannot be the sole applicant claiming to be the
inventor.

MEANING OF PATENT:
A patent is a form of industrial or intellectual property. A patent is a right granted to a person who has
invented a new and useful article or an improvement of an existing article or a new process of making
an article. It consists of an exclusive right to manufacture new article invented or manufacture an
article according to the invented process for a limited period. After the expiry of the duration of the
patent, anybody can make use of the invention. Under the system, patents ensure property rights (legal
title) for the invention for which patent has been granted, which may be extremely valuable to an
individual or a company. 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 owner of the patent
can sell his patent property. He can also grant licenses to others to exploit the patent. A patent system is
justified because it encourages and develops new technology and industry.
Section 2(1)(m) – Patent means a patent for any invention granted under this act.
The four requirements for a patent is-
• Novelty or newness
• Utility or industrial application
• Non-obviousness/ Inventive steps
• Disclosure

Invention- Section 2(1)(j) Invention means a new product or process involving an inventive step and
capable of industrial application. A bare perusal of the definition of invention clearly shows that even a
process involving an inventive step is an invention within the meaning of the Act. It is, therefore, not
necessary that the product developed should be a totally new product. Even if a product is substantially
improved by an inventive step, it would be termed to be an invention.

Novelty- The Patents Act, 1970 requires an invention to be new in the sense that on the date of filing of
patent application, it should not form a part of the state of the art. The state of the art comprises all
matter made available to the public before the priority date of the invention by written or oral
description, by use or in any other way. In Bishwanath Prasad Radhey Shyam v. Hindustan Metal
Industries2, the supreme court observed- “The fundamental principle of Patent Law is that a patent is
granted only for an invention which must be new and useful. It is essential for the validity of a patent
that it must be the inventor's own discovery as opposed to mere verification of what was already known
before the date of the patent. The court further stated that whether an alleged invention involved
novelty and an inventive step, was a mixed question of law and fact, depending largely on the
circumstances of the case.”
A new manufacture does not mean only a new article of manufacture, but also means a new process or
method of manufacturing something new. It does not mean a new principle of manufacture. A principle
cannot be an invention but it means a new application of the principles so as to produce a new method
or a new manufacture. The novelty or the invention has to be succinctly stated in the claim. Novelty is
lost where an inventor uses the invention secretly till the time it becomes a success and then apply for
patent at the most advantageous moment. The invention will be no more a new invention.

Inventive Step- Section 2(1)(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. To meet the inventive step criterion, the
patentee will either have to show that the invention includes technical advancement or has economic
significance or both. The requirement of technical advancement is therefore, compromised & diluted by
the fact that a patent could simply be granted on economic significance alone. An inventive step which
is a necessary ingredient of invention in order to make an applicant eligible for grant of patent under
the Act must be relating to an invention involving technical advance or having economic significance
or both along with a necessary factor that such invention should make it “not obvious to a person
skilled in the art”. In Dhanpat Seth v. Nil Kamal Plastic Crates Ltd.3, the court held that- “The mere fact
that the device is made of polymeric material instead of bamboo is not an inventive step involving any
novelty. There is nothing new about the process of manufacturing the traditional Kilta made of natural
material from synthetic material. Even nylon straps now added are virtually copies of the ropes used in
the traditional Kilta. The mere introduction of buckles would not amount to a new device being called
an inventive step.”

Non-obviousness- In order to be patented, an invention needs to be non-obvious. The essential element

of novelty and inventive step would depend on the given facts of the case. If the particular manner of

2. (1979) 2 SCC 511

3. 2008 (36) PTC 123 (HP) (DB)
manufacture is the same, then there cannot be any novelty in the subject matter. If there is no inventive
step, it implies that it is obvious. In Graham v. John Deere Co.4, the US supreme court laid down
certain factors to be considered to find out whether the invention was obvious or not. The court
observed that to determine obviousness, courts should consider-
• the scope and content of prior art;
• the difference between the prior art and the claims at issue; and
• the level of ordinary skill in the pertinent art.
In addition, courts may use secondary considerations such as-
• commercial success;
• long felt but unsolved needs; and
• the failure of other to solve the problem.
Even though the term “obvious” has not been defined under the Patents Act, it can be safely stated to be
a circumstance where a person of skill in the field, on going through the specification would complete
the product. Therefore, even if any of the two ingredients, namely, technical advance or economic
significance or both are available, if such invention enables a person of skill in the field, on going
through the specification would complete the product, such invention can never be treated as an
“inventive step” and consequently no patent can be validly issued.
Capable of Industrial Application- Capable of industrial application means that the invention is capable
of being made or used in an industry. In Indian Vacuum Brake Co. Ltd. v. E.S. Luard, the court held
that mere usefulness was not sufficient to support a patent.
In F Hoffman La Roche Ltd. v. Cipla Ltd., the court stated that S.2(1)(ac) necessitates that an invention
must have commercial use or manifestation. Further, even though an alleged invention may not be a
final product, the same will be patentable only if it has some commercial viability. Thus, it is not the
product which is the focus of attention but the actual physical substance created which has the potential
of a commercial manifestation.

WHAT ARE NOT INVENTIONS?

Section 3 of Patents Act states that the following are not inventions within the meaning of the Act:
1. Inventions which are frivolous or claims anything contrary to well established natural law- For
example, a machines purporting to produce perpetual motion; a machine alleged to be giving output
without any input.
2. Invention contrary to public order or morality- An invention contrary to public order may be the
4. 383 US 1 (1996)
primary use of which would be a criminal act, punishable as a crime, such as an instrument for picking
pockets or fraudulent appliances or preparations.
In additions, inventions relating to cloning of human beings, processes for modifying the germ line and
genetic identity of human beings, use of human embryos for industrial or commercial purposes falls
under this category.
The Manual of Patent Office Practice and Procedure lists out following examples inventions contrary to
public order or morality:
• any device, apparatus or machine or method committing theft/burglary
• any machine or method for counterfeiting of currency notes
• any device or method for gambling
3. Discovery of a scientific principle or living thing or non-living substance- A claim for discovery of
scientific principle is not considered to be an invention, but such a principle when used with a process
of manufacture resulting in a substance or an article may be considered to be an invention. For
instance, a scientific theory is a statement about the natural world. These theories themselves are not
considered to be inventions, no matter how radical or revolutionary insight they may provide, they do
not result in a product or process. But if the theory leads to practical application in the process of
manufacture of an article or substance, it may be patentable.
4. Mere discovery of a new form of a known substance- the following are not inventions and hence not
patentable:
• mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance;
• the mere discovery of any new property of a known substance;
• the mere discovery of new use for a known substance;
• the mere use of a known process unless such known process results in a new product or
employs at least one new reactant;
• the mere use of a known machine or apparatus.
In F. Hoffman-La Roche Ltd. Vs Cipla Ltd5, the court observed that: “S.3(d) assumes that structurally
similar derivatives of a known substance will also be functionally similar and hence ought not to be
patentable. It provides that if the new form of the known substance is found despite a structural
similarity to demonstrate a better functionality that is, 'enhancement of the known efficacy', it would
qualify for assessment under S.2(1)(j) as if it were a new product involving an inventive step and it

5 2016 (65) PTC 1 (Del) (DB), p.17

would thereafter be up to the applicant for the patent to demonstrate the patentability of his substance
under S.2(1)(j) and (ja). This provision is not a patent term extension or an ever greening provision but
in fact recognizes incremental innovations in pharmaceutical patents.
In Novartis AG Vs Union of India6, the Madras High Court interpreted S.3(d) and observed that: “it is
clear from the amended section and the explanation that in the pharmacology field, if a discovery is
made from a known substance, a duty is cast upon the patent applicant to show that the discovery had
resulted in the enhancement of a known efficacy of that substance and in deciding whether to grant a
patent or not on such new discovery, the explanation creates a deeming fiction that all derivatives of a
known substance would be deemed to be the same substance unless it differ significantly in properties
with regard to efficacy. Therefore, the amended section with the explanation prescribes is the test to
decide whether the discovery is an invention or not is that the patent applicant should show the
discovery has resulted in the enhancement of the known efficacy of that substance and if the discovery
is nothing other than the derivative of a known substance, then, it must be shown that the properties in
the derivatives differ significantly with regard to efficacy.”
5. Substance obtained by a mere admixture- An admixture resulting in synergistic properties is not
considered as mere admixture for example a soap, detergent, lubricant and polymer composition etc
and hence may be considered to be patentable. In an infringement suit M/s Stanipack Pvt. Ltd. Vs M/s
Oswal Trading Co. Ltd.7, the defendant challenged the validity of the patent of plaintiff for the
invention for the manufacture of pouch for storage and dispensing of a liquid such as lubricating oil.
The Delhi HC while revoking the patent on the ground that the invention was not new and not an
invention within the meaning of S.3 observed: “Thickness of the plastic film/layer depends upon the
tolerance of the contents of the pouch. Thus the same is merely an arrangement and re-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 cannot be an invention.”
6. Duplication of known devices functioning independently-An invention claiming a mere juxtaposition
of known devices in which each device functions independently is not considered patentable. Merely
placing side-by-side old integers, so that each performs its own function independently of the others, is
not a patentable combination, for example, an umbrella with fan, bucket fitted with torch. However,
where the old integers when placed together have some working interrelation, producing a new or
improved result, then there could be a patentable subject-matter in the working interrelation brought
about by the collection of the integers.

6 (2007) 4 MLJ 1153

7 AIR 2000 Del 23
7. Method of agriculture and horticulture- Examples:
• A method of producing mushroom;
• a method for cultivation of algae
8. Process for the medicinal and surgical treatment of human beings or animals- For instance, more
efficient or less harmful dosages in known treatment, the administration of bacterium to secure
immunity from diseases. Similarly, a method of reducing gastric secretion in mammals by the
systematic administration of certain compounds was held to be a method of treatment of human ailment
with a known substance and therefore, not a patentable invention. In Eli Lilly & Company's
Application8, a claim for a novel manner of use of old chemical compounds for treatment of human
disease has been held to be not patentable. Patent was refused for a method of purifying blood by
removing toxic substances from blood by dialysis.
9. Plants and animals other than micro-organisms- The micro-organism may be patentable provided
they are not discovered from the nature and there is sufficient man-made interference in them. For
instance, genetically modified microorganisms may be patentable subject to other requirements of
patentability.
10. Mathematical and business method- Mathematical methods are considered to be acts of mental
skill. A method of calculation, formulation of equations, finding square roots, cube roots are therefore
not patentable. Business methods claimed in any form are not patentable. The term business methods
includes activities related to commercial or industrial enterprise relating transaction of goods and
services. The reason for not giving patent protection to business methods may be that it may
unnecessarily cut competition and promote monopoly, which may ultimately give rise to unnecessary
litigations. In Telefonaktiebolaget LM Ericsson (Publ) vs Intex Technologies (India) Limited9, the court
stated that any invention which has a technical contribution or has a technical effect and is not merely a
computer program per se is patentable.
11. Literary, Dramatic, Musical or Artistic Work or Cinematographic Works etc- All these are subject-
matter of protection under the Copyright Act,1957.
12. Method of performing mental act or playing game- A mere scheme or rule or method of performing
mental act such as method of teaching or learning or method of playing game, such as method of
playing chess, is not an invention.
13. A presentation of information- Any manner, means or method of expressing information whether
visual, audible or tangible by words, codes, signals, symbols, diagrams or any other mode of

8 (1975) RPC 438

9 2015 (62) PTC 90 (Del)
representation is not patentable. For instance- railway time table, 100 years calendar etc are not
invention.
14. Topography of integrated circuits is not an invention- It is protectable under Semiconductor
Integrated Circuit Layout Designs Act, 2000.
15. Traditional Knowledge-Since traditional knowledge already exists, it cannot be patented. In
Dhanpat Seth vs Nil kamal Plastic Crates Ltd10, “the mere fact that device is made of polymeric
material instead of bamboo is not an inventive step involving any novelty. There is nothing new about
the process of manufacturing the traditional kilta made of natural material from synthetic material.
Even nylon straps now added are virtually copies of the ropes used in the traditional kilta. The mere
introduction of buckles would not amount to a new revise be called an invention”.
APPLICATION FOR PATENT
The Patent Act lays down a procedure for the grant of patent to an inventor to exploit his invention for
20 years subject to the fulfillment of certain conditions. The first step is to make an application in the
prescribed form along with provisional or complete specification. The application is thereafter
published, and examined and search for anticipation is made. Oppositions are invited from the public to
the grant of patent and where there is no opposition, patent is granted and sealed which confers certain
rights on the patentee.
WHO CAN APPLY FOR PATENT?
Section 6: An application for a patent for an invention may be made by any of the following persons
either alone or jointly with any other person:
• any person claiming to be the true and first inventor of the invention;
• any person being the assignee of the person claiming to be the true and first inventor in respect
of the right to make such an application;
• the legal representative of any deceased person who immediately before his death was entitled
to make such an application.
The term person includes Government. The term person also includes any company or association or
body of individuals, whether incorporated or not.
True and first inventor-True and first inventor means a person who has first made an invention. Where
two persons have made the same invention independently and not disclosed it, then the inventor who
applied first for the patent is to be taken as the first and true inventor of the invention, irrespective of
the fact that he made the invention later than the other inventor. In Norris' Patent, it was held that a
person who contributed one of two main ideas in an invention was a co-inventor.
10 2008 (36) PTC 123 (HP) (DB)
Employer-Employee Relationship- Invention made by an employee in the course of his employment
belongs to his employer. In Patchett vs Sterling, Lord Simons stated that “it is an implied term in the
contract of service of any workman that what he produces by the strength of his arm or the skill of his
hand or the exercise of his inventive faculty shall become the property of his employer.” However, it is
essential to show either a positive contract in the employer's favour or an implied duty of trust of the
employee. In rest of the cases, particularly in absence of any contract, the employee may have initial
rights in his own invention.
Assignee of the true and first inventor- Any person to whom an invention has been assigned by the true
and first inventor is also eligible to apply for patent. Assignee can be a natural person or other than a
legal person such as a registered company, a research organization, an educational institute or
Government. Assignee includes an assignee of the assignee and the legal representative of a deceased
assignee. Invention assigned to a firm is a valid assignment. A firm, therefore, can also apply for a
patent as assignee. A corporation can also apply for a patent as assignee.
Legal representative of the deceased- The legal representative of any deceased person who immediately
before his death was entitled to make an application for a patent for an invention is also eligible to
apply for patent. Legal representative means a person who in law represents the estate of a deceased
person. Thus, legal representative of:
• a true and first inventor;
• assignee of true and first inventor;
• assignee of the assignee of first and true inventor are also eligible to apply for a patent.
Section 7: Every application for a patent shall be for one invention only. The application is to be filed
in the Patent Office. Under Patent Act 1970, patent offices could be established at various places. An
application for a patent is to be made in the form prescribed and filed in the appropriate patent office.
Territorial Jurisdiction of a patent office is decided based on the following:
• Place of residence, domicile or business of the applicant
• place from where the invention actually originated
• Address for service in India given by the applicant, when the applicant has no place of business
or domicile in India.
Every application is to state that the applicant is in possession of the invention. It shall name the true
and first inventor. Where the true and first inventor is not the applicant, the application is to contain a
declaration that the applicant believes the person so named to be the true and first inventor.
PROVISIONAL AND COMPLETE SPECIFICATION
In order to obtain a patent, an applicant must fully and particularly describe the invention therein
claimed in a complete specification. The disclosure of the invention in a complete specification must be
such that a person skilled in the art may be able to perform the invention. The specification is a techno-
legal document containing full scientific details of the invention and claims to the patent rights. The
specification, forms a crucial part of the patent application. It is mandatory on the part of an applicant
to disclose fully and particularly various features constituting the invention. The specification can
mainly be divided into two parts: the description and the claim. The description is to disclose the
invention sufficiently, whereas the claim is to mark out the scope of the monopoly rights which are
likely to be conferred by the patent office in case the patent is granted.
Provisional Specification and Complete Specification:
An application for patent is to be accompanied by a provisional or a complete specification. When the
applicant finds that his invention has reached a stage wherein it can be disclosed on paper, but has not
attained the final stage, he may prepare a disclosure of the invention in the form of a written description
and submit it to Patent Office as a provisional specification which describes the invention.
The provisional specification is to ascertain and describe the nature of invention while the complete
specification may also explain in what manner the invention is to be carried out in execution. A
provisional specification is not a rough draft or a skeleton of the complete specification. The complete
specification, which follows a provisional specification, does not replace the latter. Both are permanent
and separate documents and remain so in the file.
Where an application for a patent is accompanied by a provisional specification, a complete
specification shall be filed within 12 months from the date of filing of the application. If the complete
specification is not so filed, the application shall be deemed to have been abandoned.
One complete specification in respect of several provisional specifications-Where two or more
applications in the name of the same applicant are accompanied by provisional specifications in respect
of inventions which are cognate or of which one is a modification of another and the Controller is of
opinion that the whole of such inventions are such as to constitute a single invention and may properly
be included in one patent, he may allow one complete specification to be filed in respect of all such
provisional specifications. The period of time specified above is to be reckoned from the date of filing
of the earliest provisional specifications.
When complete specification is to be treated as provisional specification? - Where an application
for a patent is accompanied by a specification purporting to be a complete specification, the controller
may on the request of applicant within 12 months, direct that such application shall be treated as a
provisional specification and proceed with the application accordingly.
Where a complete specification has been filed after the provisional specification or where complete
specification is treated as provisional specification, the controller may on the request of applicant at any
time before the grant of patent, cancel the provisional specification and post-date the application to the
date of filling of the complete specification. Post-dating of patent can be done only to the date of filing
of the complete specifications.
Contents of Specification (S.10):
In order to obtain a patent, an applicant must fully and particularly describe the invention therein
claimed in a complete specification. The disclosure of the invention in a complete specification must be
such that a person skilled in the art may be able to perform the invention. This is possible only when an
applicant discloses the invention fully and particularly including the best method of performing the
invention. The specification is a techno-legal document containing full scientific details of the
invention and claims to be the patent rights. The specification can mainly be divided into two parts:
• the description, which may be accompanied by diagrams or drawings
• the claim to mark out the scope of monopoly rights which are likely to be conferred by the
patent office in case the patent is granted.
Every complete specification is to-
• fully and particularly describe the invention and its operation or use and the method by which it
is to be performed
• disclose the best method of performing the invention which is known to the applicant and for
which he is entitled to claim protection; and
• end with a claim or claims defining the scope of the invention for which protection is claimed;
and
• be accompanied by an abstract to provide technical information on the invention.
The Manual of Patent Office Practice and Procedure describes the important element of the complete
specification as follows:
• Title- The title should be sufficiently indicate the subject matter of the invention and shall
disclose the specific features of the invention. It need not be the same as the preamble of the
main claim. It shall be brief, precise and definite but it need not to go in details of the invention
itself and shall not exceed 15 words.
• Field of the invention- The description should preferably begin with a general statement of the
invention so as to indicate briefly the subject-matter to which the invention relates. Thereafter,
the advantages of the invention may be mentioned to bring out clearly the areas of application
and preferable use of the invention.
• Prior art and problem to be solved- This part should indicate the status of the technology in the
 field of invention with reference to developments in the field, patents and pending patent
applications in the specific art. When the invention relates to an improvement on an existing
product or process, a short statement of the closest prior art known to the applicant shall also be
given.
• Objects of the invention- The invention should clearly mention the technical problems
associated with the existing technology and the solution for that, bringing out the differences
between the claimed invention and the prior art.
• Summary of the invention- The description should include a summary of invention before
giving the details of the invention and the method of performing it. The statement should clearly
set forth the distinguishing novel features of the invention for which protection is desired. This
part is intended to declare different aspects of the invention.
• Detailed description of the invention- Description of an invention is required to be furnished in
sufficient detail so as to give a complete picture of the invention. The nature of improvements
or modification effected with respect to the prior art should be clearly and sufficiently
described. The details of invention described should be sufficient for a person skilled in the art
to perform the invention. It may include examples/ drawings or both for clearly describing and
ascertaining the nature of the invention.
• Abstract- Every complete specification is to be accompanied by an abstract to provide technical
information on the invention. The abstract is to commence with the title of the invention. The
abstract is to be so drafted that it constitutes an efficient instrument for the purposes of
searching in the particular technical field, in particular by making it possible to assess whether
there is a need to consult the specification itself. The abstract shall contain a concise summary
of the matter contained in the specification.
• Claim- A claim is a statement of technical facts expressed in legal terms defining the scope of
the invention sought to be protected. Thus, claims are the most important part of the patent
application as they define the scope of legal protection. In a patent application, claims must be
drafted carefully to cover all the aspects of the protection being sought at the same time.
PUBLICATION AND EXAMINATION OF APPLICATION
Publication of Application (S.11A):
No application for patent shall ordinarily be open to the public for 18 months from the date of filling of
application or the date of priority of the application, whichever is earlier. The applicant may request the
Controller to publish his application at any time before the aforesaid period. The Controller shall
publish such application as soon as possible. Every application for patent shall be published on the
expiry of the aforesaid period of 18 months, except in the following cases:
• in which secrecy direction is imposed under S.35;or (In case where secrecy direction has been
given in respect of an application u/s 35, then it shall be published after the expiry period of the
aforesaid period or when the secrecy direction has ceased to operate, whichever is later)
• has been abandoned under S.9(1)
• has been withdrawn 3 months prior to the prescribed period as aforesaid. That is before the end
of 15th month.
The publication of every application is to include the particulars of the date of application, number of
application, name and address of the applicant identifying the application and an abstract.
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. However, the applicant shall
not be entitled to institute any proceedings for infringement until the patent has been granted.
Request for Examination (S.11B):
No application for a patent is to be examined unless the applicant or any other interested person makes
a request for such examination. In case the applicant or any other interested person does not make a
request for examination of the application for a patent within 48 months, the application is treated as
withdrawn by the applicant. However, the applicant may at any time after filling the application but
before the grant of a patent withdraw the application by making a request. In case where secrecy
direction has been issued under S.35, the request for examination may be made after the publication of
the application, but within 48 months from the date of priority or from the date of filling of the
application, or within six months from the date of revocation of the secrecy direction, whichever is
later.
Examination of Application (S.12):
When a request for examination has been made in respect of an application and specification and other
documents relating thereto are to be referred at the earliest by the Controller to an examiner for making
a report to him in respect of the following matters:
• whether the application and the specification and other documents relating thereto are in
accordance with the requirements of this Act and of any rules;
• whether there is any lawful ground of objection to the grant of the patent in pursuance of the
application
• the result of investigations made under S.13;and
• any other matter which may be prescribed.
The examiner to whom such application and the specification and other documents are referred shall
ordinarily make the report to the Controller within one month. However, this period shall not exceed 3
months from the date of reference of the application.
A first examination report along with the application and specification is to be sent to the applicant or
his authorized agent. In case other interested person files the request for examination, an intimation of
such examination may be sent to such interested person.
Search for Anticipation (S.13):
The examiner to whom an application for a patent is referred, is to make investigation for the purpose
of ascertaining whether the invention so far as claimed in any claim of the complete specification-
• has been anticipated by publication before the date of filing of the applicant's complete
specification filed in pursuance of an application for a patent made in India
• is claimed in any claim of any other complete specification published on or after the date of
filing of the applicant's complete specification being a specification filed in pursuance of an
application for a patent made in India and dated before or claiming the priority date earlier than
that date.
Where a complete specification is amended under the provisions of this Act before the grant of patent,
the amended specification shall be examined and investigated in same manner as of original
specification.
Consideration of report of examiner by Controller (S.14):
According to S.14, where 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,, the Controller
before proceeding to dispose the application 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 opportunity of being heard.
Power of Controller to refuse or require amended application (S.15):
Where the Controller is satisfied that the application or any specification or any other document does
not comply with the requirements of the Act or rules, the Controller may refuse the application or may
require the application, specification or 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 of the
applicant to do so.
Potential Infringement (S.19):
If in consequence of the investigations required under the Act, it appears to the Controller that an
invention in respect of which an application for a patent has been made cannot be performed without
substantial risk of infringement of a claim of any other patent, he may direct that a reference to that
other patent shall be inserted in the applicant's complete specification by way of notice to the public,
unless within the prescribed time-
• the applicant shows to the satisfaction of the Controller that there are reasonable grounds for
contesting the validity of the said claim of the other patent; or
• the complete specification is amended to the satisfaction of the controller.
S.19 empowers the Controller to direct the insertion of the other patent which is likely to be infringed,
unless the complete specification is amended to the satisfaction of the Controller.
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS

Where an application for a patent has been published but a patent has not been granted, any person may
oppose against the grant of patent to the Controller. Prior to the Patents Amendment Act, 2005, only
person interested could oppose the grant of patent. 'Person Interested' was defined to include a person
engaged in or in promoting research in the same field as that to which the invention relates. After the
Amendment of 2005, any person whether interested or not may oppose the grant of patent. This is an
illustration of statutorily broadening the concept of locus standi and widening the scope of objection
procedure by giving access to any person who has a concern for public interest, to raise an objection.
Within one year from the grant of patent any person interested my file post-grant opposition under
S.25(2).
Grounds of Opposition:
S.25(1) enables a person to oppose the grant of patent on the following grounds:
• Invention obtained wrongfully- The grant of patent may be opposed by a person on the ground
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. The term 'wrongfully obtained' does not necessarily mean that the a patent has been
obtained by fraud. However, conscious and deliberate fraud would render the whole application
void.
It is noteworthy that burden of proof is on the opponent in all those cases where he alleges that
the invention was obtained from him. In Ivor Gwyne Perrett's Application, it was stated that if it
was shown that the complete specification had been communicated to the applicant by the
opponent, who invented the matter first, the onus of proof was upon the applicant to show that
the said matter was independently invented by him prior to such communication.
• Publication of invention before the priority date- It is a ground of opposition to the grant of
 patent that the invention claimed in complete specification has been published before the
priority date of the claim in any Indian Specification or in any document in India or elsewhere.
The term 'publication' has not been defined in the Act. In Mooney's Application, it was observed
that when the matter in question was distributed with the object of spreading the knowledge
among the interested parties, it would constitute publication.
• Prior claiming of invention in other specification- If any claim made in the applicant's
specification is claimed in a specification published after the applicant's priority date and whose
priority date is earlier than that of the applicants' claim, then it can be taken as a ground for
opposition. It has been held that where an earlier claim is wider in its scope than a later claim
and there is no separate claim in the earlier specification restricted to the subject-matter of the
later claim, the applicant of the earlier claim cannot assert that he had a prior claim to the
subject-matter of the later claim. (Daikin Kogyo Co. Ltd.'s Application)
• Invention publicly known or publicly used in India- The grant of patent may be opposed on the
ground, that, the invention so far as claimed in any claim of the complete specification was
publicly used in India before the priority date of that claim. It has been clarified in the Act that
an invention relating to a process for which a patent is claimed is 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.
• Obviousness of Invention and lack of inventive step- It is a ground of opposition to the grant of
patent that the invention is obvious and clearly does not involve any inventive step. The
question of obviousness should be essentially a practical sort of question decided by a practical
man, instructed as to the information which was available. In L'Oreal's Application., it was
stated that obviousness was a question of fact which must be decided objectively. In deciding
this question all the relevant circumstances should be taken into account. The correct conclusion
might well depend on the form and scope of the claim under consideration construed in the light
of the relevant surrounding circumstances.
• Invention not patentable- The grant of patent may be opposed on the ground, that, the subject of
any claim of the complete specification is not an invention or is not patentable under the Patents
Act.
• Invention not sufficiently and clearly described in specification- The grant of patent may be
opposed on the ground that the complete specification does not sufficiently and clearly describe
the invention or the method by which it is to be performed. In Dual Manufacturing
 &Engineering Inc's Patent, it was observed that the fact that the scope of the monopoly claimed
was unclear or that there were inconsistencies between the description and claims, or that the
specification provided no explanation of the operation of the parts concerned, or provided no
explanation of the operation of the concerned, or provided a wrong explanation of the parts
concerned, were not relevant in considering the question of insufficiency. What was relevant
was the sole question, whether or not the description which had been given was going to be
sufficient to enable a person who was reasonably skilled in the particularly field to make an
embodiment of the invention which would have the features which made it fall within the
objects of the invention.
• Failure to disclose information regarding foreign application- It is a ground of opposition to the
grant of patent that the applicant has failed to disclose to the Controller the information required
by S.8 or has furnished the information which in any material particular was false to his
knowledge. S.8 imposes an obligation on the applicant for a patent who is also prosecuting an
application for a patent in a foreign country in respect of the same or substantially the same
invention to disclose certain information to the Controller in respect of his foreign application.
• Convention application filed after prescribed period- In the case of convention application, the
grant of patent may be opposed on the ground, that the application was not made within 12
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. In Fujisawa's
Application, a convention application was received late by the Patent Office. The delivery of
the application was made by an employee of the applicant. It was held that the delivery made by
an employee did not fall within the ambit of 'service of post' and that the mistake was one of
substance and not of procedure. Consequently, the applicant failed to fulfill the requirements of
the statute.
• Specification does not disclose source of biological material- It is a ground of opposition to the
grant of patent that the complete specification does not disclose or wrongly mentions the source
or geographical origin of biological material used for the invention. This ground was inserted
by the Patents (Amendment) Act 2002 consequent to the changes made in S. 10 of the Patents
Act, 1970.
• Invention based on knowledge in local or indigenous community- The grant of patent may be
opposed on the ground, that the invention is anticipated having regard to the knowledge, oral or
otherwise, available within any local or indigenous community in India or elsewhere. The
knowledge available within any local or indigenous community in India may include the
 properties of neem as pesticide, turmeric as wound healing agent, etc.
Opposition Board [S.25(3)]:
On receipt of such notice of opposition, the Controller shall 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. The Board shall conduct the examination in accordance with prescribed procedure.
The Controller shall, on receipt of the recommendation of the Opposition Board and after giving the
patentee and the opponent an opportunity of being heard, order either to maintain or to amend or to
revoke the patent. The Controller shall not take into account any personal document or secret trial or
secret use while passing an order. Where the Controller issues an order that the patent shall be
maintained subject to amendment of the specification or any other document, the patent shall stand
amended accordingly.
GRANT OF PATENT AND RIGHTS CONFERRED THEREBY
Grant of Patent (S.43 & 45):
The patent shall be granted to the applicant with the seal of the patent office where an application for
patent has not been refused by the Controller or the application has not been found to be in
contravention of any of the provision of this Act. The Controller shall publish the fact that the patent
has been granted and the application, specification and other documents related thereto shall be open
for public inspection. Every patent shall be dated as of the date on which the application for patent was
filed. The date of every patent shall be entered in the register.
Nature of Patent Rights:
A patent is a statutory grant conferring certain monopoly rights on the grantee for a defined period,
subject to certain conditions. A patent grant gives the patentee the exclusive right to make or use the
patented article or use the patented process. As a consequence flowing from this he can prevent all
others from making, using, offering for sale, selling or importing the patented article or using the
patented process. A patentee has also the power to assign the patent, grant licenses under, or otherwise
deal with it for any consideration. These rights created by statute are circumscribed by various
conditions and limitations.
NOTE- It may be noted that a patent does not give the patentee any right to use the invention; they do
not confer upon him a right to manufacture according to his invention. What the patent confers is the
right to exclude others from manufacturing in a particular way and using a particular invention. The
right of patentee to the exclusive use of a patented invention during the period of its protection is a
right to property.
Rights of Patentee:
1. Right to exploit patent- A patentee has the exclusive right to make use, exercise, sell or distribute the
patented article or substance in India, or to use or exercise the method or process if the patent is for a
process. This right can be exercised either by the patentee himself or by his agents or licensees. The
patentee's right are exercisable only during the term of the patent.
The term of every patent granted shall be twenty years from the date of filing of the application for
patent. The patent will be in force only so long as the renewal fees prescribed are paid from time to
time within the prescribed period.
2. Rights to assign and licence- A patentee has power to assign, grant licences under, or otherwise deal
with the patent for any consideration. If he is a co-owner of the patent, he can assign his share of the
patent or grant licences to others to use the patent only with the consent of the co-proprietors or under
the directions of the Controller. The power to transfer the patent rights is also subject to any rights
vested in any other person of which notice is entered on the register.
3. Right to surrender- A patentee has the right to surrender his patent. But before accepting the offer of
surrender, notice of surrender is given to persons whose name is entered in the register as having an
interest in the patent and their objections, if any, considered. The application for surrender is also
published in Official Gazette to enable interested persons to oppose.
This is necessary to protect the interest of persons like licensees, equitable assignees and others with
whom the patentee might have contractual obligations which are dependant on the continuance of the
patent.
4. Right before sealing- During the period from the date of advertisement of the acceptance of the
complete specification and the date of sealing of the patent, the applicant for patent can exercise all the
privileges and rights of a patentee except the filing of a suit for infringement. This provision is now
deleted by the Patents (Amendment) Act 2005.
Limitations of the Patentee's Right:
1. Government use of patent- A patent has the same effect as against the Government as it has against
any other person. But the Government may use the patented invention, and even acquire it, under
certain circumstances and terms, or prohibit a person from using an invention. The Government may
import the medicine or drug for its own use or distribution to hospitals or medical institutions. The
aforesaid use can be made without the consent of the patentee or payment of any royalties. Apart from
this, the Government has also power to make use of the patented invention and sell the articles made in
accordance with the patented invention on payment of royalties. The Government may also acquire a
patent on payment of suitable compensation.
2. Inventions for defence purpose- Inventions relevant for defence purposes may be subject to certain
secrecy provisions. Publication or communication of information relating to such inventions may be
restricted or prohibited by directions of the Controller. Secrecy provisions affect the invention at the
application stage. So long as the directions prohibiting or restricting the publication of communication
of the invention remain in force the application will not refused but the complete specification, if
accepted, will not be advertised and no patent will be granted for the invention. During the continuance
of the directions the applicant will be debarred from using the invention, but the Central Government
may use it and pay royalties to the applicant. If the applicant suffers hardship he may be made suitable
payment as solatium.
3. Use in foreign vessels etc- A patent is not deemed to be infringed by the use of the invention in a
foreign vessel or aircraft, or a vehicle owned by a foreigner which comes into India or its territorial
waters temporarily or accidentally if it satisfies certain conditions. The conditions are that the invention
is used in the body of the vessel or its machinery, apparatus or its accessories. It must be used on board
the vessel for its actual needs. In the case of an aircraft or land vehicle the invention must be used in the
construction or working of the aircraft or vehicle as the case may be.
Limitations on restored patents- When a patent which has once lapsed has been restored, certain
limitations are imposed on the rights of the patentee. If any infringement was committed during the
period between the date of lapse and the date of advertisement of the application for restoration the
patentee is debarred from taking any action in respect of the infringement. The Controller may also
impose conditions for the protection or compensation of persons who may have begun to make use of
the invention or avail themselves of the invention during the period when the patent was not effective
due to lapse.
Obligations of Patentee:
The possession of a patent confers on the patentee not only certain valuable monopoly rights and
privileges, but also certain obligations and duties. Patents are granted not only to encourage inventions
but also to secure that the inventions are worked in India on a commercial scale and to the fullest extent
that is practicable without undue delay. It is also essential that the monopoly created by the patent
should not unfairly prejudice the interests of the public. If the patent is not used or the monopoly
abused, compulsory licence may be granted to any person who is willing to work the patent or the
patent may even be revoked. It is an implied responsibility of the patentee to work the patent in India in
such a manner that the reasonable requirements of the public with respect to the patented invention are
satisfied and the products of the invention is made available to the public at a reasonable price. Failure
to discharge this obligation may amount to abuse of the monopoly granted. Further, the patentee may
be restrained from making unjustifiable threats of an action for infringement of the patent.
Every patentee and licensee should furnish to the Controller periodical statements as to the extent to
which the patented invention has been worked on a commercial basis in India. Failure to supply such
information is a punishable offence.
INFRINGEMENT OF PATENT AND REMEDIES
Jurisdiction:
S.104 provides that a suit for infringement of patent or for a declaration as to non-infringement under
S.105 or for relief in cases of groundless threats of infringement proceedings under S.106 is to be
instituted in District Court having jurisdiction to try the suit. However, where a counter-claim is to be
transferred to the High Court for decision.
Infringement of patent:
Monopoly of a patent is a reward of the inventor and there must be presumption of validity of the
patent but at the same time, law mandates that the court must look at the whole case, the strength of the
case of the patentee and the strength of the defence raised in the matter.
A person infringes a patent when he uses an invention of a patentee for which he was granted the
patent, without his previous authorization. A patent may be infringed by taking a part only of the
invention, but that depends on whether the part for which protection is asked is a new and material part,
especially in the case of combination. If it is not new and material, the court must consider what is the
substance of the invention, and to do so it has to consider the relative importance of all parts of the
invention.
In an infringement action, the main function of the court is to construe the claims which are alleged to
have been infringed, without reference to the body of the specification, and to refer to the body of the
specification only if there is any ambiguity or any difficulty in the construction of claims in question. In
F Hoffman-La Roche Ltd vs Cipla Ltd., the court rejected the submission of the plaintiff that the court
should look into the claim and the product and no further document could be imported to draw an
inference. The court stated that the claims were not always decisive. The factors which correlated the
role of the variant and reactant with that of the patented claim were also relevant. The court could see
all such documents and draw inference accordingly after analyzing everything.
A patent is infringed if a person takes the substance of patented invention and makes colourable
variations to it such as omitting some essential features and adding some new features which may be
immaterial. What is the substance of an invention is a question of fact and may be decided on evidence.
The expert opinion on whether a patent has been infringed may be significant. In Dunlop Pneumatic
Tyre Co. Ltd vs Neal., it was held that the purchaser of a patented article can carry out repairs to it;
however, he cannot manufacture a new article and claim that he had not infringed the patent because in
the manufacture he had used an article derived from a patented article sold by its patentee. It was
contended that the defendants cannot similarly claim, by process of 'reverse engineering' that their
products were new and invented goods. They were clearly inspired by the plaintiff's products and after
purchasing them, copied the main elements; their effort was an act of infringement, which had to be
injuncted.
In Laxmi Dutt Roop Chand vs Nankau, the Allahabad High Court observed: “The question of
infringement of a patent is a mixed question of fact and law. The infringement of a patent may be done
in a number of ways, one of which is by using the patent or any colourable imitation thereof in the
manufacture of patented articles. It has also been observed in some of these authorities that the
infringement may not be of the complete whole of the process but it may be only in part but in the latter
case what is necessary is that the protection which is sought for, for such part is material or is totally
new.
Burden of Proof:
In any suit for infringement of a process patent, the court may direct the defendant to prove that the
process used by him to obtain the identical product is different from the patented process if-
• the subject-matter of the patent is a process for obtaining a new product; or
• there is substantial likelihood that the identical product is made by the process,
and the patentee or a person deriving title or interest in the patent from him has been unable
through reasonable efforts to determine the process actually used. The patentee is however to
prove that the product of defendant is identical to the product directly obtained by the patented
process.
Though the general burden of establishing the case of infringement of a patent in relation to a new
substance rests on the plaintiff, the burden of proving a particular fact viz, the process by which the
defendants has prepared a similar substance under his patent will be on the defendant by virtue of S.106
of the Indian Evidence Act.
Declaration as to Non-Infringement by Court:
At any time after the publication of grant of a patent, any person may institute a suit for a declaration
that the use by him of any process, or the making, use or sale of any article by him does not or would
not constitute an infringement of a claim of a patent against the patentee or the holder of an exclusive
licence under the patent, if it is shown-
• that the plaintiff has applied in writing to the patentee or exclusive licensee for a written
acknowledgment to the effect of the declaration claimed and has furnished him with full
 particulars in writing of the process or article in question; and
• that the patentee or licensee has refused or neglected to give such an acknowledgment.
Relief in cases of groundless threats:
According to S. 106, where any person threatens any other person by circulars or advertisements or by
communications, oral or in writing addressed to that or any other person, with proceedings for
infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the
following reliefs:
• a declaration to the effect that the threats are unjustifiable
• an injunction against the continuance of the threats; and
• such damages, if any as he has sustained thereby
Unless the defendant proves that the acts in respect of which the proceedings were threatened constitute
or, if done, would constitute an infringement of a patent or of rights arising from the publication of a
complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid,
the court may grant to the plaintiff all or any reliefs prayed for. However, a mere notification of the
existing of a patent does not constitute a threat of proceeding.
Reliefs in suits for infringement:
1. Injunction- Injunction is a preventive civil remedy. Injunction is of two kinds- Temporary Injunction
and Permanent Injunction. Temporary Injunction is limited to a specific period or till the time the case
is finally decided on merit. The permanent injunction is granted after hearing the parties on the merits
of the case. The permanent injunction is limited to the duration of the patent. The remedy of injunction
is available not only against the infringement of a patent but also against a threat of infringement. The
object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for
which he could not be adequately compensated in damages recoverable in the action if the uncertainty
were resolved in his favour at the trial.
In Bajaj Auto Ltd., vs TVS Motor Company Ltd., the Madras HC stated: The following principles must
be considered:
• the plaintiff must prove prima facie case that the patent is valid and infringed;
• balance of convenience is in favour of plaintiff; and
• irreparable loss that may be caused to the plaintiff by not granting an order of injunction.
The court further stated that the general tendency regarding interlocutory injunctions in patent cases has
been that the onus in showing a prima facie case in justifying the grant of injunction is heavy on the
plaintiff and it is comparatively easy for the defendant to establish a defence.
2. Injunction – Quia timet action – Quia timet is a latin term which means 'because he fears or
apprehends'. For an apprehended action of invasion to the right of the plaintiff, the plaintiff would be
entitled to file a suit seeking injunction. In a quia timet action, in the absence of evidence if a strong
case is made out against the defendants, after valid justification, the interim order may be passed by the
court.
3. Damages or account of profits- The plaintiff is entitled to the remedy of either damages or an
account of profits. The plaintiff is given the option to elect one of them. The remedy of damages or
account of profits is not cumulative but alternative. The remedy of damages or account of profits may
be granted in addition to the remedy of injunction.
Where plaintiff elects the remedy of account of profits, he will be entitled to claim only that profit
which was earned by the defendant by using the invention of the plaintiff. It is unreasonable to give the
patentee profits which were not earned by the use of his invention.
In Microsoft Corp vs K. Mayuri, Justice A.K. Sikri explained the principle laid down in Meters Ltd. Vs
Metropolitan Gas Meters Ltd in the following way:
No. of infringing articles x the sum that would have had to be paid in order to make the
manufacture of that article lawful
For example- if the person committing infringement has sold 1000 articles and the royalty/licence fee
payable is Rs. 100/- per article, the infringer would have to pay damages to the tune of Rs.1,00,000/-.
NOTE- In a suit for infringement, damages or account of profits shall not be granted against the
defendant who proves that at the date of the infringement he was not aware and had no reasonable
grounds for believing that the patent existed.
4. Seizure or forfeiture of infringing goods and implements- Apart from the other reliefs which a court
may grant, the court may also order that the goods which are found to be infringing and materials and
implements which are predominantly used 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.