THE INDIAN PATENTS AND DESIGNS ACT, 1911

 

 

ACT NO.2 OF 1911

[AS ON 1957]

 

 

An Act to amend the law relating to the protection of Inventions and Designs.

 

[1st March, 1911.]

Contents

PRELIMINARY

1.Short title extent and commencement

2.Definition

PART I

PATENTS

Application for and Grant of Patent

3.Application

4.Specifications

4A.      Time for leaving complete specification.

4B.       Provisional protection.

5.Proceedings upon application

6.Advertisement on acceptance of application

7.Effect of acceptance of application

8.

9.Opposition to grant of patent

10.Grant and sealing of patent

11.Date of patent

12.Effect , extent and form of patent

13.Fraudulent applications for patents

13A.    Single patent for cognate inventions.-

14.Term of Patent

15.Extension of term of patent

15A.    Patents of additions.-

16.Restoration of lapsed patent

Amendment of Application or Specification

17.Amendment of application or p by Controller

18.Amendment of specification by the court

19.Restriction of recovery of damages

Register of Patents

20.Register of Patents

Government

21.Patent to bind Government

21A.    Assignment of patent to the central Government.-

Compulsory Licences and Revocation

22.Application for licence

23.Relief in respect of an application under section 22

23A.    Endorsement of patent on application by Government.-

23B.     Provision as to patents endorsed Licences of Right.-

23C.    Exercise of powers on application under section 22 or section 23A.-

23CC.      Intention relating to food or medicine ,etc.-

23D.    Procedure on application under section 22, section 23A or section 23CC.

23E.     Supplementary provisions with respect to orders under section 23, section 23B or section 23CC.-

23F.     Appeals.-

23G.    Procedure for hearing of appeals.-

24.Power of Controller to revoke surrendered patent

25.Revocation of patent on public grounds

Legal Proceedings

26.Petition for revocation of patent

27.Notice of proceedings to persons interested

28.Framing issue for trial before other courts

29.Suits for infringement of patents

30.Exemption of innocent infringer from liability for damages

31.Order for inspection , etc., in suit

32.Certificate of validity questioned and costs thereon

33.Transmission of decrees and orders to the controller

34.Power of High Court to stay proceedings, etc

35.Hearing with assessor

35A.    Grant of relief respect of particular claims.-

36.Remedy in case of groundless threats of legal proceedings

Miscellaneous

37.Grant of patents to two or more persons

38.Public use or knowledge of invention

38A.    Disconformity.

39.Loss or destruction of patent

40.Provisions as to exhibitions and reading before learned societies

41.Models to be furnished to Indian Museum

42.Foreign vessels Indian waters

PART II

DESIGNS

Registration of Designs

43.Application for registration of designs

44.Registration of designs in new classes

45.Certificate of registration

46.Register of Designs

Copyright in Registered Designs

47.Copyright on registration

48.Requirements before delivery on sales

49.Effect of disclosure on copyright

50.Inspection of registered designs

51.Information as to existence of copyright

51A.    Cancellation of registration.

51B.     Registration of designs to bind the Government.-

Industrial and International Exhibitions

52.Provisions as to exhibitions

Legal Proceedings

53.Piracy of registered designs

54.Application of certain provisions of the Act as to patents to designs

PART III

GENERAL

Patent Office and Proceedings thereat

55.Patent office

56.Officers and clerks

Fees

57.Fees

Provisions as to Registers and other Documents in the Patent office

58.Notice of trust not to be entered in registers

59.Inspection of and extracts from registers

59A.    Information relating to patents.

60.Privilege of reports of controller

61.Prohibition of publication of specification, drawings , etc.where application abandoned, etc

62.Power for the controller to correct clerical errors

63.Entry of assignments and transmissions in registers

64.Rectification of register

Powers and duties of controller.

65.Powers of Controller in proceedings under Act

66.Publication of patented inventions

67.Exercise of discretionary power by Controller

68.Power of controller to take directions of the Central Government

69.Refusal to grant patent , etc., in certain cases

70.Appeals to the Central Government

Evidence, etc.

70A.    Evidence before the Controller.-

71.Certificate of Controller to be evidence

71A.    Evidence of documents in patent office.-

72.Transmission of copies of specifications etc., and inspection thereof

73.Applications and notices by post

74.Declaration by infant lunatic, etc

74A.    Security for costs.-

Agency

75.Subscription and verification of certain documents

76.Agency

Powers, etc., of Central Government.

77.Powers for Central Government to make rules

Offences.

78.Wrongful use of words Patent Office

78A.

79.Savings and Repeal

80.Repeals and Savings

81.

THE SCHEDULE

 

WHEREAS it is expedient to amend the law relating to the protection of inventions and designs; It is hereby enacted as follows:—

 

PRELIMINARY

 

 

1.Short title extent and commencement

.- (1)  This Act may be called the Indian Patents and Designs Act, 1911.

 

{The words " except the State of Jammu and Kashmir" omitted by Act 62 of 1956, s.2 and Sch.} [(2) It extends to the whole of India {Subs.by Act 32 of 1950, s.3, for the former sub-section.} ;]

 

(3)  It shall come into force on the first day of January, 1912.

 

 

 

2.Definition

.- In this Act, unless there is anything repugnant in the subject or context:—.

 

[(1) " Advocate General " means an Advocate General appointed under {Subs.by the A.O.1950 for "the Government of India Act, 1935 ".} [the Constitution] {Added by Act 62 of 1956, s.2 and Sch.} {Subs.by the A.O.1937 for the original cl.} [and in relation to the State of Jammu and Kashmir, the Advocate General for that State]:]

 

(2) " article " means (as respects designs) any article of manufacture and any substance artificial or natural, or partly artificial and partly natural:

 

(3) " Controller " means the Controller of Patents and Designs appointed under this Act:

 

(4) " copyright " means the exclusive right to apply a design to any article in any class in which the design is registered:

 

{Subs.by Act 7 of 1930, s.2, for the original cl.} [ (5) " design " means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual.mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction of anything which is in substance a mere mechanical device and does not include any trade mark as defined in section 478, or property mark as defined in section 479 of the Indian Penal Code (45 of 1860):].

 

 (6) " District Court " has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (5 of 1908);

 

{Subs.by the Adaptation of Laws(No.2)Order,1956,for the former cl.}.[ (7) "High Court" means—

 

(a) in relation to a State, the High Court for that State;

 

(b) in relation to the Union territory of Delhi or Himachal Pradesh, the High Court of Punjab;

 

(c) in relation to the Union territory of Manipur or Tripura, the High Court of Assam;

 

(d) in relation to the Union territory of the Andaman and Nicobar- Islands, the High Court at Calcutta; and

 

(e) in relation to the Union territory of the Laccadive, Minicoy and Amindivi Islands, the High Court of Kerala.]

 

{Cl.(7A), Ins.by Act 32 of 1950, s.4, omitted by Act 62 of 1956, s.2 and Sch }

 

(8) "invention" means any manner of new manufacture and includes an improvement and an alleged invention:

 

(9) "legal representative " means a person who in law represents the estate of a deceased person:

 

(10) "manufacture" includes any art, process or manner of producing, preparing or making an article, and also any article prepared or produced by manufacture:

 

(11) patent means a patent granted under the provisions of

 

{Subs.by Act 7 of 1930, s.2, for the original cl.}.[(12) "patentee " means the person for the time being entered on the register of patents kept under this Act as the grantee or proprietor of the patent: ]

 

 (13) "prescribed" includes prescribed by rules under this Act: and

 

 (14) "proprietor of a  {Subs., by Act 7 of 193O, s.2, for " new and original ".} [new or original] design,"—

 

(a) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed; and

 

(b) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and

 

(c) in any other case, means the author of the design; and where the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.

 

{Cl.(15), ins.by the A.O.1950, omitted by Act 32 of 1950, s.4.}

 

 

 {Ins.by Act 32 of 1950, s.5.} 2A.[Rule of construction in application of Act to Part B States.] Rep.by the Part B States (Laws) Act, 1951 (3 of 1951), s.3 and Sch.

 

PART I

 

PATENTS

 

Application for and Grant of Patent

 

 

3.Application

.- (1) An application for a patent may be made by any person whether he is a  {Subs.by the A.O.1950 for "British subject".} [citizen of India] or not, and whether alone or Jointly with any other person.

 

(2) The application must be made in the prescribed form, and must be left at the Patent Office in the prescribed manner.

 

(3) The application must contain a declaration to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application one at least of the applicants, claims to be the true and first inventor or the legal representative or assign of such inventor and for which he desires to obtain a patent, and must be accompanied by  {Subs.by Act 9 of 1945, s.2, for " a specification".} [either a provisional or complete specification] and by the prescribed fee.

 

(4) Where the true and first inventor is not a party to the application, the application must contain a statement of his name, and such particulars for his identification as may be prescribed, and the applicant must show that he is the legal representative or assign of such inventor.

 

 

 {Subs.by Act 9 of 1945, s.3 for the original section.[

4.Specifications

.- (1) A provisional specification must describe the nature of the invention.

 

(2) A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed.

 

(3) A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statement, of the invention claimed.

 

(4) Where the Controller deems it desirable; he may require that suitable drawings shall be supplied at any time before the acceptance of the application, and such drawings shall be deemed to form part of the complete specification.

 

(5) If in any particular case the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention such model or sample as he may require shall be furnished before the acceptance of the application, but such model or sample shall not be deemed to form part of the specification.

 

(6) The Controller may where the application was accompanied by a specification purporting to be a complete specification, if the applicant so requests, treat the specification as a provisional specification and proceed with the application accordingly.]

 

 

 

{Ins.by s.4, ibid.}[

4A.      Time for leaving complete specification.

- (1) If the applicant does not leave a complete specification with his application, he may leave it at any subsequent time within nine months from the date of the application:

 

Provided that the said nine months shall be extended to such period not exceeding ten months from the date of the application, as may be specified in a request made by the applicant to the Controller if the request is made and the prescribed fee is paid within the period so specified.

 

 (2) If the complete specification is not left within the period allowable under sub-section (1), the application shall be deemed to be banded at the expiration of ten months from the date thereof.

 

 

4B.      Provisional protection.

-  (1) An invention may, during the period between the date an application for a patent therefor and the date of sealing a patent that application, be used and published without prejudice to that patent, and such protection from the consequences of use and publication is in this Act referred to as provisional protection.

 

(2) In this section, the expression " date of an application for a patent " means, as respects an application which is post-dated or antedated under this Act, the date to which the application is so post-dated or ante-dated, and means, as respects any other application, the date in which it is actually made.]

 

 

 

5.Proceedings upon application

.- (1) {The words" The Controller shall examine every application, and if he considers  have been successively amended by Acts 12 of 1939, s.3, and 9 of 1945, s.5, to read as above.} [The Controller shall refer to an Examiner every application in respect of which a complete specification has been filed and if satisfied on the report of the Examiner] that:—

 

{Subs.by s.5, ibid., for the original cl.} [(a) the nature of the invention or the manner in which it is to be performed is not particularly described and ascertained in the complete specification, or]

 

(b) the application, specification and drawings have not been prepared in the prescribed manner  {The words "or relate to more than one invention " omitted by Act 7 of 1930, s.3.}, or

 

(c) the title {Ins.by Act 12 of 1939, s.3.} [of the specification] does not sufficiently indicate the subject-matter of the invention, or

 

(d) the statement of claim does not sufficiently define the invention, or

 

 {Ins.by Act 9 of 1945, s.5.} [(dd ) where a complete specification has been left after a provisional specification, the invention particularly described in the complete specification is not substantially the same as that which is described in the provisional specification, or].

 

(e) the invention as described and claimed is prima-facie not a  {Ins.by Act 12 of 1939, s.3.} [manner of] new manufacture or improvement, {Ins.by Act 7 of 1930, s.3.}[or]

 

{Subs.by Act 12 of 1939, s.3, for the former cl.(f) } [(f) the specification relates to more than one invention, or

 

(g) in the case of an application claiming priority under section 78A, the specification describes and claims an invention substantially larger than or substantially different from the invention disclosed in the specification filed with the application made outside  {Subs.by Act 32 of 1950, s.2, for "the States".} [India] by virtue of which priority is claimed, or

 

(h) in the case of an application for a patent of addition under section 15A, the invention described and claimed in the specification is not an improvement or modification of that described and claimed in the original specification,]

 

he may refuse to accept the application or require that the application, specification or drawings be amended before he proceeds with the application; and in the latter case the application shall, if the Controller so directs, bear date as from the time when the requirement is complied with:

 

 {Ins.by Act 7 of 1930, s.3.}[Provided that, when a specification comprises more than one invention, the application shall, if the Controller or the applicant so requires, be restricted to one invention and the other inventions may be made the subject-matter of fresh applications; and any such fresh application shall be proceeded with as a substantive application, but the Controller may, in his discretion, direct that any such fresh application made before the acceptance of the original application shall bear the date of the original application or such later date as he may fix, and the fresh application shall be deemed, for the purposes of this Act, to have been made on the date which it bears in accordance with such direction:]

 

 {Ins.by Act 9 of 1945, s.5.}.[Provided further that where a complete specification is left after a provisional specification, the Controller may, if the applicant so requests, cancel the provisional specification and direct that the application shall be deemed to have been made on the date on which the complete specification was left, and proceed with the application accordingly.]

 

{Ins.by Act 12 of 1939, s.3.}.[(1A) If the Controller considers, at any time before the acceptance of an application, that the invention claimed therein has been wholly or in part claimed in a specification published on or after the date which the patent applied for would bear if granted, appertaining to an application for a patent which if granted will be of prior date to the patent applied for, he may require that the applicant's specification be amended by the insertion of a reference to such other specification, by way of notice to the public.]

 

(2) Where the Controller refuses to accept an application or requires an amendment  {Ins.by Act 12 of 1939, s.3.} [or the insertion of a reference], the applicant may appeal from his decision to the Central Government.

 

(3) The investigations required by this section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Central Government or any officer by reason of, or in connection with, any such investigation, or any proceeding consequent thereon.

 

(4) Unless an application is accepted within  {Subs.by Act 9 of 1945, s.5, for " twelve months".} [eighteen months] from the date of the application, the application shall (except where an appeal has been lodged) {Subs by Act 12 of 1939, s.3, for "become void".}.[be deemed to have been refused]:

 

{Subs by Act 7 of 1930, s.3, for the original proviso.}.[Provided that where, before, or within three months after, the expiration of the said period of  {Subs.by Act 9 of 1945, s.5, for " twelve months".} [eighteen months], a request is made to the Controller for an extension of time   {The words " by any period not exceeding three months " omitted by Act 12 of 1939, s.3.} the application shall, on payment of the prescribed fee, be continued  { Subs.by s.3, ibid., for " or revived, as the case may be, during, but not beyond, the period of extension so requested".}  [for any period so requested not exceeding in all three months from the expiration of the said period of  ] {Subs.by Act 9 of 1945, s.5, for " twelve months".} [eighteen months] ]

 

 

 

6.Advertisement on acceptance of application

.- On the acceptance of an application the Controller shall give notice thereof to the applicant and shall advertise the acceptance; and in the application and {Subs.by Act 9 of 1945, s.6, for " specification ".}  [specifications] with the drawings (if any) shall be open to public inspection.

 

 

{ Subs.by s.7, ibid., for the original section.}[

7.Effect of acceptance of application

.-After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time for  sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application:

 

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.]

 

8.        

[Inquiry before sealing patent.]  Rep.by the Indian Patents and Designs (Amendment) Act, 1930 (7 of 1930), s.4.

 

 

 

9.Opposition to grant of patent

.- (1) Any person may, on payment of the prescribed fee, at any time within  {Subs.by Act 7 of 1930, s.5, for "three".} [four] months from the date of the advertisement of the acceptance of an application, give notice at the Patent Office of opposition to the grant of the patent on any of the following grounds, namely:—

 

(a) that the applicant obtained the invention from him, or from a person of whom he is the legal representative or assign; or

 

(b) that the invention has been claimed in any specification filed in {Subs.by Act 32 of 1950, s.2, for " the States ".}  [India] which is or will be of prior date to the patent, the grant of which is opposed; or

 

(c) that the nature of the invention or the manner in which it is to be performed is not sufficiently or fairly described and ascertained in the {Subs.by Act 9 of 1945, s, 8, for " specification".}  [specifications]; or

 

(d) that the invention has been publicly used in any part of  {Subs.by Act 32 of 1950, s.2, for " the States ".} [India] or has been made publicly known in any part of  {Subs.by Act 32 of 1950, s.2, for " the States ".} [India]; {Ins.by s.8, ibid.}.[or]

 

{Ins.by s.8, ibid.} [(e) that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention either forms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document published in  {Subs.by Act 32 of 1950, s.2, for " the States ".} [India] in that interval ]

 

but on no other ground.

 

 (2) Where such notice is given, the Controller shall give notice of the opposition to the applicant, and shall, on the expiration of those  {Subs.by Act 20 of 1937, s.2 and Sch.1, for " three ".} [four] months, after hearing the applicant and the opponent, if desirous of being heard, decide on the case.

 

(3) The decision of the Controller shall be subject to appeal to the Central Government

 

 

 

10.Grant and sealing of patent

.-  (1) If there is no opposition, or, in case of opposition.if the determination is in favour of the grant of a patent, a patent shall, on pea payment of the prescribed fee, be granted, subject to such conditions (if any) as the Central Government thinks expedient, to the applicant, or in the case of a joint application to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the Patent Office.

 

{Ins.by Act 7 of 1930, s.6.} [(1A) Notwithstanding anything contained in sub-section (1), where

 

(a) an applicant has agreed in writing that on the grant to him of a patent he will assign it to another party or to a Joint applicant and refuses to proceed with the application, or

 

(b) disputes arise between joint applicants as to proceeding with an application,

 

the Controller, if he is satisfied of the existence of such agreement or, in any other case, that any joint applicant or applicants ought to be allowed to proceed alone, may direct that such other party or joint applicant or applicants may proceed with the application accordingly and may grant a patent to him or them, as the case may be:

 

Provided that—

 

(i) the Controller shall not give any such direction until every party interested has had an opportunity of being heard by him, and

 

(ii) an appeal from any such direction shall lie to the Central Government.]

 

(2)patent shall be sealed as soon as may be, and not after the expiration of  {Subs.by Act 9 of 1945, s.9, for " eighteen months ".} [twenty-four months] from the date of application:

 

Provided that,—

 

(a) where the Controller has allowed an extension of the time within which an application may be accepted, a further extension of four months after the said {Subs.by Act 9 of 1945, s.9, for " eighteen months ".}  [twenty-four months] shall be allowed for the sealing of the patent;

 

(b) where the sealing is delayed by an appeal to the Central Government     {The words " or by a reference under section 8 " omitted by Act 7 of 1930, s.6., or by opposition to the grant of the patent, {Ins.by Act 12 of 1939, s.4.} [or by any proceedings taken for obtaining a direction of the Controller under the provisions of subsection (1A)] the patent may be sealed at such time as the Controller may direct;

 

(c) where the patent is granted to the legal representative of an applicant who has died before the expiration of the time which would otherwise be allowed for sealing the patent, the patent may be sealed at any time within twelve months after the date of his death  {Ins.by Act 9 of 1945, s.9.}.[or at such later time as the Controller may think fit];

 

(d) where  {Subs.by Act 7 of 193O, s.6, for " in consequence of the neglect or failure of the applicant to pay any fee''.} [for any reason] a patent cannot be sealed within the period allowed by  {Ins.by s.6, ibid.} [any of the foregoing provisions of] this section, that period may, on payment of the prescribed fee and on compliance with the prescribed conditions, be extended  {Subs.by s.6, ibid., for " to such an extent as may be prescribed ".}.[to the extent applied for but not exceeding three months].

 

 

 

11.Date of patent

.-  Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of the application:

 

Provided that no proceedings shall be taken in respect of an infringement committed before the  {Subs.by s.7, ibid., for " publication of the specification ".} [advertisement of the acceptance of the application]..

 

 

 

12.Effect , extent and form of patent

.-  (1) A patent sealed with the seal of the Patent Office shall, subject to the other provisions of this Act, confer on tile patentee the exclusive privilege of making, selling and using the invention throughout  {Subs.by Act 32 of 1950, s.2, for " the States ".} [India] and of authorizing others so to do.

 

(2) Every patent may be in the prescribed form and shall be granted for one invention only, but the specification may contain more than one claim; and it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.

 

 

 

13.Fraudulent applications for patents

.- (1) A patent granted to the true and first inventor or his legal representative or assign shall not be invalidated by an application in fraud of him, or by protection obtained thereon or by any use or publication of the invention subsequent to that fraudulent application during the period of protection.

 

{.Subs.by Act 7 of 1930, s.8, for the original sub-section.} [(2) Where a patent has been revoked by the High Court on the ground that it has been obtained in fraud of the true and first inventor, or where the grant of a patent has been refused by the controller under section 9 on the ground stated in clause (a) of sub-section (l) of that section, the Controller may, on the application of the true inventor or his legal representative or assign made in accordance with the provisions of this Act, grant to him a patent for the u hole or any part of the invention, and the patent so granted shall bear the same date as the patent so revoked or, in the case of a patent the grant of which has been refused, the same date as would have been borne by the patent if it had been granted:

 

Provided that no suit shall be brought for any infringement of the patent so granted committed before the actual date when such patent was granted.]

 

 

 

           {Ins by Act 9 of 1945, s.10.} [

13A.    Single patent for cognate inventions.-

 (1) Where the same applicant has put in two or more provisional specifications for inventions which are cognate or modifications one of the other, and has obtained thereby concurrent provisional protection for the same, 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 in respect of the whole of such applications and grant a single patent thereon.

 

(2) Such patent shall bear the date of the earliest of such applications, but in considering the validity of the same, and in determining other questions under this Act, the Court or the Controller, as the case may be, shall have regard to the respective dates of the provisional specifications relating to the several matters claimed in the complete specification.

 

 

 

14.Term of Patent

..-  (1) The term limited in every patent for the duration thereof shall, save as otherwise expressly provided by this Act, be   {.Subs.by Act 7 of 1930, s.9, for "fourteen".} [sixteen] years from its date.

 

 {.Ins.by s.9, ibid.} [(1A) Any patent the original term of which had not expired on or before the 1st day of July, 1930, shall have effect as if the term mentioned therein was sixteen years instead of fourteen years, and any license existing at that date which has been granted for the term of the patent shall be treated as having been granted for the term as so extended if the licensee so desires.

 

(1B) Where any party to a contract with the patentee or any other person entered into before the 1st day of January, 1930, is subjected to loss or liability by reason of the extension of the term of any patent under this section, any District Court having jurisdiction {.Subs.by Act 12 of 1939, s.5, for " may determine ".} [may, on application made in this behalf, determine] in what manner and by which parties such loss or liability shall be borne.]

(2) A patent shall, notwithstanding anything therein or in this Act, cease if the patentee fails to pay the prescribed fees within the prescribed times:

 

  {.Subs.by Act 7 of 1930, s.9, for the original proviso.} [Provided that where the patentee, before, or within three months after, the expiration of the time for payment, applies to the Controller for an extension of time    {The words " by any period not exceeding three months "omitted by Act 12 of 1939, s.5.}  , the patent shall, on payment of such additional fee as may be prescribed, be continued or revived, as the case may be, {.Subs.by s.5, ibid., for " during, but not beyond, the period of extension applied for ".} [for any period so applied for not exceeding in all three months from the expiration of the time for payment]]

 

(3) If any proceeding is taken in respect of an infringement of the patent committed after a failure to pay any fee within the prescribed time, and before any enlargement thereof, the Court before which the proceeding is taken may, if it thinks fit, refuse to award any damages in respect of such infringement

 

 

 

15.Extension of term of patent

.- (1) A patentee may   {The words " after advertising in the prescribed to do so " omitted by Act 7 of 1930, s.10.} present a petition to the Central Government praying that his patent may be extended for a further term; but such petition must be left at the Patent office at least six months before the time limited for the expiration of the patent and must be accompanied by the prescribed fee  {.Ins.by s.10, ibid.} [and must be advertised by the patentee within the prescribed time and in the prescribed manner]

 

(2) Any person may  {Ins.by s.10, ibid.}  [within such time as may be prescribed and on payment of the prescribed fee] give notice to the Controller of objection to the extension.

 

(3) Where a petition is presented under sub-section (i), the Central Government may, as it thinks fit, dispose of the petition itself or refer it to a High Court for decision.

 

(4) If the petition be referred to a High Court, then on the hearing of such petition under this section, the patentee, and any person who has given notice under sub-section (2) of objection, shall be remade parties to the proceeding, and the Controller shall be entitled to appear and be heard.

 

{.Subs.by Act 12 of 1939, s.6 for the original sub-sections.} [(5) The Central Government or the High Court to which a petition is referred shall in considering the petition have regard to the nature and merits of the invention in relation to the public, to the profits made on the patent and to all the circumstances of the case.

 

(6) If it appears to the Central Government or to the High Court when the petition is referred to it, that the patent has not been Efficiently remunerative the Central Government or the High Court, as the case may be, may by order extend the term of the patent for a further term not exceeding five or in exceptional cases ten years or may order the grant of a new patent for such term not exceeding ten years as may be specified in the order and subject to any restriction conditions and provisions which the Central Government or the High Court, as the case may be, may think fit.].

 

{Ins.by Act 7 of 1930, s.11.} [

15A.    Patents of additions.-

 (1) Where a patent for an invention has been applied for or granted, and the applicant or the patentee, as the case may be, applies for a further patent in respect of any improvement in or modification of the invention, he may in his application for the further patent request that the term limited in that patent for the duration thereof be the same as that of the original patent or so much of that term as is unexpired, and, if he does so, a patent (hereinafter referred to as a patent of addition) may be granted for such term as aforesaid.

 

(2) Save as otherwise expressly provided by this Act, a patent of addition shall remain in force as long as the patent for the original invention remains in force, but no longer, and in respect of a patent of addition no fees shall be payable for renewal:

 

Provided that if the patent for the original invention is revoked, then the patent of addition shall, of the authority by which it is revoked so orders, become an independent patent, and the fees payable' and the dates when they become payable, shall be determined by its date, but its duration shall not exceed the unexpired term of the patent for the original invention.

 

(3) The grant of a patent of addition shall be conclusive evidence that the invention is a proper subject for a patent of addition, and the validity of the patent shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.]

 

 

 

16.Restoration of lapsed patent

.-  (1) Where any patent has ceased owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the                                                                                                                                       patentee may apply to the Controller in the prescribed manner for an order for the restoration of the patent.

 

(2) Every such application shall contain a statement of the cir                                    cumstances which have led to the omission of the payment of the prescribed fee.

 

(3) If it appears from such statement that the omission was unintentional or unavoidable and that no undue delay has occurred in                                                                                                                                                 the making of the application, the Controller shall advertise the                                                                                                                         application in the prescribed manner, and within such time as may                                                                                                                 be prescribed any person may give notice of opposition at the Patent office.

 

(4) Where such notice is given the Controller shall notify the                                    applicant thereof.

 

(5) After the expiration of the prescribed period the Controller                                   shall hear the case and, subject to an appeal to the Central  Government, issue an order either restoring the patent subject to any conditions   {.Ins.by Act 17 of 1914, s.2 and Sch.I.} [and restrictions] deemed to be advisable or dismissing the application:

 

Provided that in every order under this section restoring a patent such provisions as may be prescribed shall be inserted for the protection of persons who may have availed themselves of the subject matter of the patent after the patent had ceased.

 

Amendment of Application or Specification

 

 

17.Amendment of application or p by Controller

.-  (1) An applicant or a patentee may at any time, by request  in writing left at the Patent office and accompanied by the prescribed fee, seek leave to amend his application or specification, including drawings forming part thereof, by way of disclaimer, correction or explanation, stating the nature of, and the reasons for, the proposed amendment.

 

(2) If the application for a patent has not been accepted, the Controller shall determine whether and subject to what conditions (if any) the amendment shall be allowed.

 

(3) In any other case the request and the nature of the proposed amendment shall be advertised in the prescribed manner, and at any time within three months from its first advertisement any person may give notice at the Patent office of opposition to the amendment.

 

(4) Where such a notice is given the Controller shall give notice of the opposition to the person making the request, and shall hear and decide the case.

 

(5) Where no notice of opposition is given, or the person so giving notice of opposition does not appear, the Controller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.

 

(6) The decision of the Controller in either case shall be subject to an appeal to the Central Government.

 

(7) No amendment shall be allowed that would make the application or specification, as amended, claim an invention substantially larger than, or substantially different from, the invention claimed by the application or specification as it stood before amendment.

 

(8) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall be advertised in be prescribed manner, and shall in all Courts and for all purposes be deemed to form part of the application or specification.

 

(9) This section shall not apply when and so long as any suit for infringement or proceeding before a Court for the revocation of the patent is pending.

 

 

 

18.Amendment of specification by the court

.-  In any suit for infringement of a patent or proceeding before a Court for the revocation of a patent the Court may by order allow the patentee to amend his specification by way of disclaimer, {.Ins.by Act 7 of 1930, s.12.} [correction or explanation] in such manner, and subject to such terms as to costs, advertisement or otherwise, as the Court may think fit:

 

Provided that no amendment shall be so allowed that would make the specification, as amended, claim an invention substantially larger than, or substantially different from, the invention claimed by the specification as it stood before the amendment, and where an application for such an order is made to the Court notice of the application shall be given to the Controller, and the Controller shall have the right to appear and be heard.

 

 

 

19.Restriction of recovery of damages

.-  Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed under this Act, no damages shall be given in any suit in respect of the use of the in venation  {Subs.by s.13, ibid., for " before the disclaimer, correction or explanation ".}  [before the date of the decision allowing the amendment], unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge.

 

Register of Patents

 

 

20.Register of Patents

.-  (1) There shall be kept at the Patent Office a book called the Register of Patents, wherein shall be entered the names and addresses of grantees of patents, notifications of assignments and of     transmissions of patents, of licenses under patents, and of amendments extensions, and revocations of patents, and such other matters affecting the validity or proprietorship of patents as may be prescribed.

 

(2) The register of inventions and address book existing at the                                 commencement of this Act shall be incorporated with.and form part of, the register of patents under this Act.

 

(3) The register of patents shall be prima-facie evidence of any matters by this Act directed or authorized to be inserted therein.

 

(4) Copies of deeds, licenses and any other documents affecting the proprietorship in any patent or in any license thereunder, must be supplied to the Controller in the prescribed manner for filing in the Patent office      { The words " and, unless such copies have been so supplied, such deeds, licenses or other documents shall not be received as evidence of any transaction affecting a patent " omitted by Act 7 of 1930, s.14.}.

 

Government

 

 {.SS.21 and 21A subs.by s.15, ibid., for the original s.21.}[

21.Patent to bind Government

.- (1) Subject to the other provisions of this section, a patent Pate shall have to all intents the like effect as against  { Subs.by the A.O.1950 for " His Majesty the King as it has against a subject ".} [Government as it has against any person]

 

(2) The officers or authorities administering any department of the service of Government may, by themselves or by such of their agents, contractors or others as may be authorised in writing by them.at any time after the application, and after giving notice to the applicant or patentee, make use or exercise the invention for the service of the Government on such terms as may, either before or after the use thereof, be agreed on, with the approval of the Central Government, between such officers or authorities and the applicant or patentee, or, in default of agreement, as may be settled in the manner hereinafter provided.And the terms of any agreement or license concluded between the applicant or patentee and any person other than such officers or authorities, shall be inoperative so far as concerns the making, use or exercise of the invention for the service of the Government.

 

(3) Where an invention which is the subject of any patent has, before the date of the patent, been duly recorded in a document by, or tried by or on behalf of, the officers or authorities administering any department of the service of Government (such invention not having been communicated directly or indirectly by the applicant or patentee), such officers or authorities, or such of their agents, contractors, or others, as may be authorised in writing by them, may, after giving notice to the applicant or patentee, make, use or exercise the invention so recorded or tried for the service of the Government, free of any royalty or other payment to the applicant or patentee' notwithstanding the existence of the patent.If, in the opinion of such officers or authorities, the disclosure to the applicant or patentee, as the case may be, of the document recording the invention, or the evidence of the trial thereof, if required, would be detrimental to the public interest, it may be made confidentially to counsel on behalf of the applicant or patentee, or to any independent expert mutually agreed upon.

 

(4) In the event of any dispute as to the making, use or exercise of an invention under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the High Court for decision, who shall have power to refer the whole matter or any question or issue of fact arising thereon to be tried before a special or official referee or an arbitrator upon such terms as it may direct.The Court, referee or arbitrator, as the case may be, may, with the consent of the parties, take into consideration the validity of the patent for the purposes only of the reference and for the determination of the issues between the applicant or patentee and such officers or authorities.The Court, referee, or arbitrator, further, in settling the terms as aforesaid, shall be entitled to take into consideration any benefit or compensation which the applicant or patentee, or any other person interested in the patent, may have received directly or indirectly from the Government or from such officers or authorities in respect of such patent:

 

Provided that, if the inventor or patentee is a Government servant and the subject-matter of the invention is certified by the Central Government or State Government to be connected with work done in the course of such service, any such dispute shall be settled by the Central Government after hearing the applicant or patentee and any other person having an interest in the invention or patent.

 

(5) The right to use an invention for the services of the Government under the provisions of this section, or any provisions for which this section is substituted, shall include, and shall be deemed always to have included, the power to sell any articles made in pursuance of such right which are no longer required for the services of the Government.

 

(6) Nothing in this section shall affect the right of the Government or of any person deriving title directly or indirectly from the Government to sell or use any articles forfeited under any law for the time being in force relating to customs or excise.

 

 

21A.    Assignment of patent to the central Government.-

 (1) The inventor of any improvement in instruments or munitions of war may (either for or without valuable consideration) The assign to the  {.Subs.by the A.O.1937 for " Secretary of State for India ,in Council ".} [Central Government] {.The words " on behalf of His Majesty" omitted by the A.O.1950.} all the benefit of the invention and of any patent obtained or to be obtained for the invention; and the  {.Subs.by the A.O.1937 for " Secretary of State for India ,in Council ".} [Central Government] may be a party to the assignment.

 

(2) The assignment shall effectually vest the benefit of the invention and patent in the {.Subs.by the A.O.1937 for " Secretary of State for India ,in Council ".}    [Central Government] {.The words " on behalf of His Majesty" omitted by the A.O.1950.}  and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valuable consideration), and may be enforced accordingly by or on behalf of the {.Subs.by the A.O.1937 for " Secretary of State for India ,in Council "} [Central Government].

 

(3) Where any such assignment has been made, the Central Government may, at any time before the publication of the specification, certify to the Controller that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed should be kept secret.

 

(4) If the Central Government so certify, the application and specifications, with the drawings (if any) and any amendment of the specification and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the Patent Office, be delivered to the Controller in a packet sealed by authority of the Central Government.

 

(5) The packet shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the Controller, and shall not be opened save under the authority of an order of the Central Government.

 

(6) The sealed packet shall be delivered at any time during the continuance of the patent to any person authorised by the Central Government to receive it, and shall, if returned to the Controller, be again kept sealed by him.

 

(7) On the expiration of the term of the patent, the sealed packet shall be delivered to the Central Government.

 

(8) Where the Central Government certifies as aforesaid after an application for a patent has been left at the Patent Office but before the publication of the specification, the application and specifications, with the drawings (if any), shall be forthwith placed in a packet sealed by authority of the Controller, and the packet shall be subject to the foregoing provisions respecting a packet sealed by authority of the Central Government.

 

(9) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which a certificate has been given by the Central Government as aforesaid.

 

(10) No copy of any specification or other document or drawing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection of the public, but, save as otherwise provided in this section, the provisions of this Act shall apply in respect of any such invention and patent as aforesaid.

 

(11) The Central Government may at any time waive the benefit of this section with respect to any particular invention, and the specifications, documents and drawings shall be thenceforth kept and dealt with in the ordinary way.

 

(12) The communication of any invention for any improvement in instruments or munitions of war to   {.The words " the Secretary of State for India in Council or " omitted by Act 34 of 1939, s.2 and Sch.I.}  the Central Government or to any person or persons authorised by  {.The words " the Secretary of State for India in Council or " omitted          by Act 34 of 1939, s.2 and Sch.I.} the Central Government to investigate the same or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same.]

 

Compulsory Licences and Revocation

 

{.Ss, 22, 23 and 23A to 23G,subs.by Act 32 of 1950, s.6, for the former ss.22,23 and 23A.}[

22.Application for licence

.-  (1) At any time after the expiration of three years from the date of the sealing of a patent any person interested may apply to the Controller upon any one or more of the grounds specified in sub-section (2) for a license under the patent.

 

(2) The grounds upon which an application under sub-section (1) may be made are as follows, that is to say,—

 

 

(a) that the patented invention, being capable of being commercially worked in India, has not been commercially worked therein or is not being so worked to the fullest extent that is reasonably practicable;

 

(b) that a demand for the patented article in India is not being met to an adequate extent or on reasonable terms, or is being met to a substantial extent by importation of the patented article from other countries;

 

(c) that the commercial working of the invention in India is being prevented or hindered by the importation of the patented article from other countries;

 

(d) that by reason of the refusal of the patentee to grant a license or licences on reasonable terms—

 

(i) a market for the export of the patented article manufactured in India is not being supplied, or

 

(ii) the working or efficient working in India of any other patented invention which makes a substantial contribution to the establishment or development of commercial or industrial activities in India is unfairly prejudiced;

 

(e) that by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of materials not protected by the patent or the establishment or development of commercial or industrial activities in India is unfairly prejudiced.

 

(3) An application under this section may be made by any person notwithstanding that he is already the holder of a license under the patent; and no person shall be esteemed from alleging any of the matters specified in sub-section (2) by reason of any admission made by him, whether in such a license or otherwise, or by reason of his having accepted such a license.

 

(4) In this section the expression " patented article " includes any article made by a patented process.

 

 

 

23.Relief in respect of an application under section 22

.-  (1) Where an application is made under section 22 the Controller may make an order granting any of the following relieves, that  is to say, the Controller may—

 

(a)   grant of license to the applicant upon such terms as the Controller thinks fit; and may also where the circumstances so require direct that all other existing licences in respect of the patent shall be revoked, or that the patentee shall forfeit any right which he may have as a patentee, to make , use ,exercise or vend the invention or to grant licences under the patent ;

 

(b)   revoke any existing license held by the applicant and grant a new license upon such terms as the controller thinks fits , or amend any licences held by the applicant in such manner as the controller may think fit ;

 

(c)   grant a license under the patent to such customers of the applicant and on such terms as the controller thinks fit , if the controller is satisfied that the manufacture , use or sale of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the patentee upon the grant of licences under the patent or upon  the purchase, hire or use of the patented article or process.

 

Provided that where the application is made on the ground that the patented invention is not being commercially worked in India or is not being worked to the fullest extent that is reasonably practicable that it appears to the controller that the time which has elapsed since the granting of the patent  has for any reason been insufficient to enable it to be worked , he may, by order, adjourn the application for such period as will, in his opinion , give sufficient time for the invention to be so worked.

 

(2)Except in cases where the terms of a license have been settled by mutual agreement and such terms otherwise provide, any person to whom a license has been granted under sub- section (1) shall be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent and if the patentee refuses or neglects to do so within two months after being so called upon , the licensee may institute proceedings  for the infringement in his own name as though he were the patentee, making the patentee the defendant and a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

 

 

23A.    Endorsement of patent on application by Government.-

 (1)  At any time after the expiration of three years from the date of the sealing  of a patent , the Central Government may apply to the Controller upon any one or more of the grounds specified in sub- section (2) of section 22 for the endorsement of the patent with the words "License of Right".

 

(2)An application  under this section may also be made on the ground that by the refusal of the patentee to grant a license or licences on reasonable terms the establishment or development of commercial or industrial activities in India is unfairly prejudiced or the development of the industry , the control of which by the union is declared by Parliament by law to be expedient in the public interest , is being prevented or hindered.

 

(3)Where a patent of addition  is in force , any application under sub – section (1) either for the endorsement of the original patent or  the patent of addition  shall be deemed to be an application for the endorsement of both the patents  and where any such application is granted or refused it shall be deemed to have been granted or refused in respect of both the patents.

 

(4)All endorsements of patents made under this section shall be entered in the register of both the patents.

 

(5)For the removal of doubts it is hereby declared that nothing in this section shall afect the right of the Central Government or any State Government to make an application for the grant of  a license in respect of any industrial undertaking or trading activity owned or carried on by such Government.

 

 

23B.    Provision as to patents endorsed Licences of Right.-

 (1) Where the Controller has made an endorsement upon a patent "Licences of Right"—

 

(a)   any person shall at any time after such endorsement be entitled as of right to a license under the patent upon such terms as in default of agreement may be settled by the Controller on application either of the patentee or of the person applying for a license;

 

(b)   the Controller may, on the application of a person holding a license under the patent before the endorsement , order the license to be revoked and grant  a new license by virtue of the endorsement upon terms to be settled in the aforesaid manner;

 

(c)   if in proceedings for the infringement of the patent ( otherwise than by the importation of the patented article from other countries ) the infringing defendant is ready and willing to take a license upon terms to be settled by the Controller, no injunction against him shall be awarded, and the amount recoverable against him by way of damages, if any, shall not exceed double the amount which would have been recoverable against him as licensee if the license had been dated prior to the earliest infringement;

 

(d)  the renewal fees payable in respect of a patent so endorsed shall, as from the date of the            endorsement, be one moiety only of the fees which would otherwise have been payable.

 

(2)  The provisions of sub-section (2) of section 23 shall apply to any license granted under sub-section (1) as they apply to a license granted under the said section 23.

 

 

23C.    Exercise of powers on application under section 22 or section 23A.-

 (1) The powers of the Controller upon an application under section 22 or section 23A shall be exercised with a view to securing the following general purposes, that is to say,—

 

(a) that inventions which can be worked on a commercial scale in India and which should in the public interest be so worked shall be worked therein without undue delay and to the fullest extent that is reasonably practicable;

 

(b) that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the invention;

 

(c) that the interests of any person for the time being working or developing an invention in India under the protection of a patent is not unfairly prejudiced.

 

(2) Subject to the provisions of sub-section (1), the Controller shall, in determining whether to make an order in pursuance of any such application or not, take account of the following matters, that is to say,—

 

(a) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;

 

(b) the ability of any person to whom a license is to be granted under the order to work the invention to the public advantage; and

 

(c) the risks to be undertaken by that person in providing capital and working the invention if the application is granted;

 

but shall not take account of matters subsequent to the making of the application

 

 

{.Ins.by Act 70 of 1952, s.2.} [

23CC.  Intention relating to food or medicine ,etc.-

(1) Without prejudice to the foregoing provisions of this In, Act, where a patent is in force in respect of—

 

(a) a substance capable of being used as   {.Subs.by Act 55 of 1953, s.2, for " food or medicine ".} [food, medicine, insecticide, germicide or fungicide] or in the production of   {.Subs.by Act 55 of 1953, s.2, for " food or medicine ".} [food, medicine, insecticide, germicide or fungicide];  or

 

(b) a process for producing such a substance as aforesaid; or

 

(c) any invention capable of being used as or as part of a surgical or curative device;

 

the Controller !shall, on application made to him by any person interested, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application.

 

(2) In settling the terms of licences under this section the Controller shall endeavour to secure that   {.Subs.by s.2, ibid., for "food, medicines ".} [food, medicines, insecticides, germicides, fungicides], and surgical and curative devices shall be available to the public at the lowest prices consistent with the patentees' deriving a reasonable advantage from their patent rights.

 

(3) A licence granted under this section shall entitle the licensee to make, use, exercise and vend the {.Subs.by s.2, ibid., for " invention as a ".}  [invention as] {.Subs.by Act 55 of 1953, s.2, for " food or medicine ".} [food, medicine, insecticide, germicide or fungicide], or for the purposes of the production of  {.Subs.by Act 55 of 1953, s.2, for " food or medicine ".} [food, medicine, insecticide, germicide or fungicide] or as or as part of a surgical or curative device, but for no other purposes.

 

{.Ins.by s.2, ibid.}  [(4) Where a patent other than a patent referred to in sub-section (1) is in force in respect of a substance or process for producing a substance and the Central Government is satisfied that it is expedient or necessary in the public interest that a licence under such a patent should be granted, the Central Government may, by notification in the Official Gazette, direct that the provisions of sub-section (1) and sub-section (2) respecting the grant of licenses and settling of the terms thereof, in so far as they can-be made applicable, shall apply to such a patent, and on the issue of such a notification the said provisions shall apply accordingly.].

 

 

23D.    Procedure on application under section 22, section 23A or section 23CC.

- (1) Every application under section 22, {.Subs.by Act 70 of 1952, s.3, for " or section 23A"} [section 23A or section 23CC] shall specify the nature of the order sought by the applicant and shall contain a statement setting out the nature of the applicant's interest, if any, and the facts upon which the application is based.

 

(2) Where the Controller is satisfied, upon consideration of any such application, that a prima-facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the patentee and any other persons appearing from the Register of Patents to be interested in the patent in respect of which the application is made.

 

(3) The patentee or any other person desiring to oppose the application may, within such time as may be prescribed or within such further time as the Controller may on application made either before or after the expiration of the prescribed time allow, give to the Controller notice of opposition.

 

(4) Any such notice of opposition shall contain a statement setting out the grounds on which the application is opposed.

 

(5) Where any such notice of opposition is duly given the Controller shall notify the applicant, and shall give to the applicant and the opponent an opportunity to be heard before deciding the case.

 

 

23E.     Supplementary provisions with respect to orders under section 23, section 23B or section 23CC.-

 (1) Any order made by the Controller under section 23, {.Subs.by s.4, ibid., for  "or section 23B ".} [section 23B or section 23CC] for the grant of a licence shall, with out prejudice to any other mode of enforcement have edict as if it under were a deed, executed by the patentee and all other necessary parties, granting a licence in accordance with the order.

 

(2) Notwithstanding anything contained in this Act no order shall be made in pursuance of an application under section 23 or section 23A or section 23B {.Ins.by s.4, ibid..10.1957.} [or section 23CC] any other country.]

 

 

23F.     Appeals.-

  (1) An appeal shall lie to the High Court at Calcutta from any order of the Controller made under section 23 or section 23A or under clause (a) or clause (b) of sub-section (1) of section 23B {.Ins.by Act 70 of 1952, s.5.} [or under section 23CC].

 

(2) Every such appeal shall be made within three months of the date of the order passed by the Controller and shall be in writing   {.The words " and accompanied by the prescribed fee "omitted by Act 48 of 1952, s.3 and Sch.II.}.

 

(3) In calculating the said period of three months, the time, if any, occupied in granting a copy of the order appealed against shall be excluded.

 

 

23G.    Procedure for hearing of appeals.-  

(1) When an appeal has been preferred to the High Court at Calcutta under section 23F, it shall be heard by a Bench of not hp less than two Judges.

 

(2) The Bench hearing the appeal may, if it thinks fit, and shall, on the request of the parties to the appeal, call in the aid of an assessor specially qualified for the purpose, and hear the appeal wholly or partially with his assistance.

 

(2)   The remuneration, if any, to be paid to an assessor under this section shall in every case be determined by the High Court and be paid by it as part of the expenses of the execution of this Act.]

 

 

 

24.Power of Controller to revoke surrendered patent

.- patentee may at any time, by giving notice in the prescribed  manner to the Controller, offer to surrender his patent, and the Controller may, if after giving notice of the offer and hearing all parties who desire to be heard he thinks fit, accept the  and thereupon make an order for the revocation of the patent.

 

 

 

25.Revocation of patent on public grounds

.-  A patent shall be deemed to be revoked if the Central Government declares, by notification in the Official Gazette, the patent or the p mode in which it is exercised to be mischievous to the State or generally prejudicial to the public.

 

Legal Proceedings

 

{.Subs.by Act 12 of 1939, s.7, for the original sub-section.}[

26.Petition for revocation of patent

.- (l) Revocation of a patent in whole or in part may be obtained on petition to or on a counter-claim in a suit for infringement before a High Court on all or any of the following grounds, namely:—

 

(a) that the invention has been the subject of a valid prior grant of a patent in  {.Subs.by Act 32 of 1950, s.2, for ''the States ".}  [India];.

 

(b) that the true and first inventor or his legal representative or assign was not the applicant or one of the applicant for the patent;

 

(c) that the patent was obtained in fraud of the rights of The person applying for the revocation or of any person uncle or through whom he claims;

 

(d) that the invention was not, at the date of the patent' manner of new manufacture or improvement;

 

(e) that the invention does not involve any inventive step having regard to what was known or used prior to the date of the patent.

 

(f) that the invention is of no utility;

 

(g) that the  {.Subs.by Act 9 of 1945, s.11, for " specification ".} [complete specification] does not sufficiently and fairly describe and ascertain the nature of the inventor and the manner in which the invention is to be per formed;

 

(h) that the {.Subs.by s.11, ibid., for " sub-section (2) of section 21".} [complete specification] does not sufficiently and clearly ascertain the scope of the invention claimed;

 

(i) that the patent was obtained on a false suggestion or representation;

 

(j) that the primary or intended use or exercise of the invention is contrary to law;

 

(k) that the patentee has contravened, or has not complied with, the conditions contained in the patent;

 

(l) that the  {.Subs.by Act 9 of 1945, s.11, for " specification ".} [complete specification] does not disclose the best method of performance of the invention known to the applicant for the patent at the time

 

(m) that prior to the date of the patent, the patentee or other persons (not being authorities administering any department of the service of Government, or the agents or contractors of, or any other persons authorised in that behalf by the Central Government) secretly worked the invention on a commercial scale (and not merely by way of reasonable trial or experiment) in {.Subs.by Act 32 of 1950, s.2, for " the States ".}  [India], and thereby made direct or indirect profits in excess of such amount as the Court may in consideration of all the circumstances of the case deem reasonable;

 

  {.Ins.by Act 9 of 1945, s.11.} [(n) that the invention claimed in the complete specification is not the same as that contained in the provisional specification, and that the invention claimed, so far as it is not contained in the provisional specification, was not new at the date when the complete specification was filed: ]

 

Provided that this sub-section shall have effect in relation to the ground of revocation specified—

 

(i) in clause (b), subject to the provisions of section 78A, or

 

(ii) in clause (d), subject to the provisions of sub-section (l) of section 13, {Subs.by s.11, ibid., for "sub – section (2) of section 21"}  [sub-section ( 12) of section 21A], section 38 and section 40.]

 

(2) A petition for revocation of a patent may be presented—

 

(a) by the Advocate General or any person authorized by him; or

 

(b) by any person alleging-

 

(i) that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims; or

 

 

(ii) that he, or any person under or through whom he claims, was the true and first inventor of any invention included in the claim of the patentee; or

 

 

(iii) that he, or any person under or through whom he claims an interest in any trade, business or manufacture, had publicly manufactured, used or sold, with {.Subs.by Act 32 of 1950, s.2, for " the States ".}  [India], before the date of the patent, anything claimed by the patentee as his invention.

 

(3) The High Court may, irrespective of any provisions of the Code of Civil Procedure, 1908, in this behalf, require any person, other than 6 the Advocate General or any person authorized by him, applying for the revocation of a patent to give security for the payment of all costs incurred or likely to be incurred by any person appearing to oppose the petition.

 

 

 

27.Notice of proceedings to persons interested

.- (1) Notice of any petition for revocation of a patent under  section 26 shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein, and it shall not be necessary to serve the notice on any other person.

 

(2) The notice shall be deemed to be sufficiently served if a copy thereof is sent by post in a registered letter directed to the person and place for the time being stated in the register.

 

 

 

28.Framing issue for trial before other courts

.-  (1) A High Court may, if it thinks fit, direct an issue for the trial, before itself or any other High Court, or any District Court, of any question arising upon a petition to itself under section 26, and the issue shall be tried accordingly.

 

(2) If the issue is directed to another High Court, the finding shall be certified by that Court to the High Court directing the issue.

 

(3) If the issue is directed to a District Court, the finding of that Court shall not be subject to appeal, but the evidence taken upon the trial shall be recorded and a copy thereof, certified by the Judge of the Court, shall be transmitted, together with any remarks which he may think fit to make thereon, to the High Court directing the issue, and the High Court may thereupon act upon the finding of the District Court, or dispose of the petition upon the evidence recorded.or direct a new trial, as the justice of the case may require.

 

 

 

29.Suits for infringement of patents

.-  (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Act in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it:

 

 {.Ins.by Act 12 of 1939, s.8.}  [Provided that where a counter claim for revocation of the patent is made by the defendant, the suit, along with the counter claim, shall be transferred to the High Court for decision.]

 

(2) Every ground on which a patent may be revoked under  {.Subs.by Act 12 of 1939, s.8, for " this Act ".} [section 26] shall be available by way of defence to a suit for infringement.

 

 

 

30.Exemption of innocent infringer from liability for damages

.-  A patentee shall not be entitled to recover any damages in respect of any infringement of a patent granted after the commencement of this Act from any defendant who proves that at the date of from the infringement he was not ware, nor had reasonable means of for d making himself aware, of the existence of the patent, and the marking of an article with the word patent", "patented", or any word or words expressing or implying that a patent has been obtained for the article, stamped, engraved, impressed on, or otherwise applied to the article, shall not be deemed to constitute notice of the existence of the patent unless the word or words are accompanied by the year and number of the patent:

 

Provided that nothing in this section shall affect any proceedings for an injunction.

 

 

 

31.Order for inspection , etc., in suit

.-  In a suit for infringement of a patent, the Court may, on the application of either party, make such order for an injunction, inspection or account, and impose such terms and give such directions respecting the same and the proceedings thereon, as the Court may see fit.

 

 

 

32.Certificate of validity questioned and costs thereon

.-  In a suit for infringement of a patent the Court may certify that the validity of the patent came in question, and if the Court so certifies, then in any subsequent suit in that Court for infringement and of the same patent the plaintiff, on obtaining a final order or judgment in his favour, shall, unless the Court trying the suit otherwise directs, have his full costs, charges and expenses of and incidental to the said suit properly incurred.

 

 

 

33.Transmission of decrees and orders to the controller

.-  A Court making a decree in a suit under section 29 or an order on a petition under section 26 shall send a copy of the decree or order, and as the case may be, to the Controller, who shall cause an entry thereof to and reference thereto to be made in the register of patents.

 

 

 

34.Power of High Court to stay proceedings, etc

.-  A High Court to which a petition has been presented under section 26 may stay proceedings on or dismiss the petition if in its opinion the petition would be disposed of more justly or conveniently by another High Court.

 

 

 

35.Hearing with assessor

.-  (1) In a suit or proceeding for infringement or revocation of a patent, the Court may, if it thinks fit, and shall on the request of  {.Subs.by Act 7 of 1930, s.20, for " either of ".} [all the parties to the proceedings, call in the aid of an assessor specially qualified, and try the case wholly or partially w the his assistance.

 

(2) A Court exercising appellate jurisdiction in respect of such suit or proceeding may, if it thinks fit, call in the aid of an assessor as aforesaid.

 

(3) The remuneration, if any, to be paid to an assessor under this section shall in every case be determined by the Court and be paid by it as part of the expenses of the execution of this Act.

 

 

 {.Ins.by s.21, ibid.}  [

35A.    Grant of relief respect of particular claims.-

Notwithstanding anything contained in section 19, if the Court in any action for infringement of a patent finds that any one or more of the claims in the specification in respect of which the infringement is alleged are valid, it may, subject to its discretion as to costs and as to the date from which damages should be reckoned and to such terms as to amendment as it may deem desirable, grant relief in respect of any of such claims which are infringed without regard to the invalidity of any other claim in the specification.In exercising such discretion the Court may take into consideration the conduct of the parties in inserting such invalid claims in the specification or permitting them to remain there.]

 

 

 

36.Remedy in case of groundless threats of legal proceedings

.-  Where any person claiming  {.Subs.by s.22, ibid., for " to be the patentee of an invention ".} [to have an interest in a patent] by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged infringement of the patent, any person aggrieved thereby may bring a suit against him in a District Court having jurisdiction to try the suit, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as he has sustained thereby, if the alleged infringement to which the threats related was not in fact an infringement of  {.Subs.by s.22, ibid., for " any legal rights of the person making such threats ".}  [the patent]:

 

 {.Subs.by s.22, ibid., for the original proviso.} [Provided that this section shall not apply if an action for infringement of the patent is commenced and prosecuted with due diligence.]

 

Miscellaneous

 

 

37.Grant of patents to two or more persons

.-  Where, after the commencement of this Act, a patent is granted to two or more persons jointly, they shall, unless otherwise pat specified in the patent, be treated for the purpose of the devolution of per the legal interest therein as joint tenants, but, subject to any contract to the contrary, each of such persons shall be entitled to use the invention for his own profit without accounting to the others, but shall not be entitled to grant a license without their consent, and, if any such person dies, his beneficial interest in the patent shall devolve on his legal representatives.

 

 

 {.Subs.by Act 12 of 1939, s.9, for the original section.} [

38.Public use or knowledge of invention

.-The public use or knowledge of an invention in  {.Subs.by Act 32 of 1950, s.2, for " the State ".}  [India] before the date of the application for a patent thereon shall not invalidate the patent granted thereon if the knowledge has been obtained surreptitiously or in fraud of the true and first inventor or his Legal representative or assign or has been communicated to the public in fraud of such inventor or his legal representative or assign or in breach of confidence

 

Provided that such inventor or his legal representative or assign has not acquiesced in the public use of his invention, and that he applies for a patent within six months after the commencement of such use.]

 

 

 {.Ins.by Act 9 of 1945, s.12.} [

38A.    Disconformity.

-A patent shall not be held to be invalid on the ground that the complete specification claims a further or different invention to that contained in the provisional, if the invention therein claimed, so far as it is not contained in the provisional, was novel at the date when the complete specification was put in, and the applicant for the patent was the true and first inventor thereof, or the legal representative or assign of such inventor.]

 

 

 

39.Loss or destruction of patent

.-  If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may pa' at any time, on payment of the prescribed fee, seal a duplicate thereof.

 

 

{.Subs.by Act 12 of 1939' s.10, for the original section.} [

40.Provisions as to exhibitions and reading before learned societies

.-The exhibition of an invention at an industrial or other exhibition to which the provisions of this section have been extended by the Central Government by notification in the Official Gazette, the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for t purpose of the exhibition in the place where the exhibition is shall or the use of the invention or the publication of any description thereof, during or after the period of the holding of the exhibit by any person elsewhere without the privity or consent of the ventor or the reading of a paper by an inventor before a learn society, or the publication of that paper in the society's transaction shall not prejudice the right of the inventor to apply for and obtain a patent in respect of the invention, or the validity of any pate granted on the application:

 

Provided that—

 

(a) the exhibitor exhibiting the invention or the inventor reading the paper or authorizing the publication thereof, the case may be, gives to the Controller previous not in the prescribed form; and

 

(b) the application for a patent is made before or within s months from the date of first exhibiting the invention of the reading of the paper, as the case may be, or who' it has not been so read, of the said publication.

 

 

 

41.Models to be furnished to Indian Museum

.-  The trustees of the Indian Museum may at any time require to patentee to furnish them with a model or sample of his invention payment to the patentee of the cost of the manufacture of model or sample, the amount to be settled, in case of dispute, by  the Central Government.

 

 

{The provisions of s.42 apply to the use of an invention on aircraft in registered in India in like manner as they apply to the use of an invent in a foreign vessel, see the Indian Aircraft Act, 1934 (22 of 1934), s.15.}  

42.Foreign vessels Indian waters

.- (l) A patent shall not prevent the use of an invention for t purposes of the navigation of a foreign vessel within the jurisdiction of any Court in{ Subs.by Act 32 of 1950, s.2, for " the States ".} [India], or the use of an invention in a foreign vessel within that jurisdiction.provided it is not used therein for or in connection with the manufacture or preparation of anything intend to be sold in or exported from { Subs.by Act 32 of 1950, s.2, for " the States ".} [India].

 

(2) This section shall not extend to vessels of any foreign State which the laws do not confer corresponding rights with respect

 

the use of inventions in{.Subs.by the A.O.1950 for " British ".} [Indian] vessels while in the ports of that State, or in the waters within the jurisdiction of its Courts.

 

 

PART II

 

DESIGNS

 

Registration of Designs

 

 

43.Application for registration of designs

.-  (1) The Controller may, on the application of any persona claiming to be the proprietor of any new or original design not previously published in{.Subs.by Act 32 of 1950, s.2, for " the States ".} [India], register the design under this Part.

 

(2) The application must be made in the prescribed form and must be left at the Patent Office in the prescribed manner and must be accompanied by the prescribed fee.

 

(3) The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question.

 

(4) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the Central Government.

 

(5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.

 

(6) A design when registered shall be registered as of the date  the application for registration.

 

 

 

44.Registration of designs in new classes

.-  Where a design has been registered in one or more classes of goods, the application of the proprietor of the design to register o it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated—

 

(a) on the ground of the design not being a{.Subs.by Act 7 °f 1930, s 23' for " new and original design ".} [new or original design], by reason only that it was so previously registered; or

 

(b) on the ground of the design having been previously published in {.Subs.by Act 32 of 1950, s.2, for " the States ".} [India], by reason only that it has been applied, goods of any class in which it was so previously registered:

 

{ Ins.by Act 7 of 1930, s.23.} [Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.]

 

 

 

45.Certificate of registration

.-  (1) The Controller shall grant a certificate of registration to  in                               the proprietor of the design when registered.

 

(2) The Controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.

 

 

 

46.Register of Designs

.-  (1) There shall be kept at the Patent Office a book called the                                  Register of Designs, wherein shall be entered the names and addresses                                                                                                          of proprietors of registered designs, notifications of assignments and                                                                                                             of transmissions of registered designs, and such other matters as may be prescribed.

 

(2) The register of designs existing at the commencement of this                               Act shall be incorporated with and form part of the register of designs under this Act.

 

(3) The register of designs shall be prima-facie evidence of any matters by this Act directed or authorized to be entered therein.                                                                                                                                                                               

                                                                                                                                               

Copyright in Registered Designs

 

 

47.Copyright on registration

.-  (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration.

 

(2) If {.The words " within the prescribed time " omitted by Act 12 of 1939, s, 11.} before the expiration of the said five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of five years.

 

(3) If {The words " within the prescribed time " omitted by Act 12 of 1939, s, 11.}  before the expiration of such second period of five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller may, subject to any rules under this Act, on payment of the prescribed fee, extend the period of copyright for a third period of five years from the expiration of the second period of five years.

 

 

 

48.Requirements before delivery on sales

.-  (1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall—

 

 (a) (if exact representations or specimens were not furnished on the application for registration), furnish to the Controller the prescribed number of exact representations or specimens of the design; and, if he fails to do so, the Controller may erase his name from the register, and thereupon the copyright in the design shall cease; and

 

(b) cause each such article to be marked with the prescribed mark, or with the prescribed words or figures, denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

 

(2) Where a representation is made to the Central Government by or on behalf of any trade or industry that in the interests of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Central Government may, if it thinks fit, by rule under this Act, dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as it thinks fit.

 

 

 

49.Effect of disclosure on copyright

.-  The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person other than the proprietor of the design, and the acceptance of a first and confidential order for goods bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.

 

 

 

50.Inspection of registered designs

.-  (1) During the existence of copyright in a design, or such  shorter period not being less than two years from the registration d of the design as may be prescribed, the design shall not be open to inspection except by the proprietor or a person authorized in writing by him, or a person authorized by the Controller or by the Court and furnishing such information as may enable the Controller identify the design, and shall not be open to the inspection of an, person except in the presence of the Controller, or of an officer acting under him, and on payment of the prescribed fee; and the person making the inspection shall not be entitled to take any copy of the design, or of any part thereof:

 

Provided that, where registration of a design is refused on the ground of identity with a design already registered, the applicant of registration shall be entitled to inspect the design so registered.

 

(2) After the expiration of the copyright in a design, or such shorter period as aforesaid, the design shall be open to inspector and copies thereof may be taken by any person on payment of the prescribed fee.

 

(3) Different periods may be prescribed under this section of different classes of goods.

 

 

 

51.Information as to existence of copyright

.-  On the request of any person furnishing such information a of may enable the Controller to identify the design, and on payment a                                                                                                                                                the prescribed fee, the Controller shall inform such person whether                                                                                                                    the registration still exists in respect of the design, and, if so                                                                                                                               respect of what classes of goods, and shall state the date of registration , and the name and address of the registered proprietor.

 

 

{.Ins.by Act 7 of 193O, s.24.} [

51A.    Cancellation of registration.

- (1) Any person interested may present a petition for the cancellation of the registration of a design—

 

(a) at any time after the registration of the design, to the High Court on any of the following grounds, namely:—

 

(i) that the design has been previously registered{.Subs.by Act 32 of 1950, s.2, for " the States ".} [India]; or

 

(ii) that it has been published in {.Subs.by Act 32 of 1950, s.2, for " the States ".} [India] prior to the date of registration; or

 

(iii) that the design is not a new or original design or

 

(b) within one year from the date of the registration, to the Controller on either of the grounds specified in clauses (i) and (ii) of clause (a).

 

(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.

 

 

51B.    Registration of designs to bind the Government.-  

The provisions of section 21 shall apply to registered designs as if those provisions were re-enacted herein and in terms made b applicable to registered designs.]

 

 

Industrial and International Exhibitions

 

{.Subs.by Act 12 of 1939, s 12, for the original section.} [

52.Provisions as to exhibitions

.- The exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition to which the a provisions of this section have been extended by the Central Government by notification in the Official Gazette, or the publication of a description of the design, during the period of the holding of the exhibition, or the exhibition of the design or the article or the publication of a description of the design by any person elsewhere during or after the period of the holding of the exhibition, without the privity or consent of the proprietor, shall not prevent the design from being registered or invalidate the registration thereof:

 

Provided that—

 

(a) the exhibitor exhibiting the design or article, or publishing a description of the design, gives to the Controller previous notice in the prescribed form; and

 

(b) the application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.]

 

Legal Proceedings

 

 

53.Piracy of registered designs

.-  (1) During the existence of copyright in any design it shall  not be lawful for any person—

 

(a) for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

 

{.Ins by s.13, ibid.} [(aa) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or]

 

(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article{.Ins.by Act 12 of 1939, s.13.} [in any class of goods in which the design is registered] without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

 

(2) If any person acts in contravention of this section, he shall be liable for every contravention—

 

(a) to pay to the registered proprietor of the design a sum not exceeding five hundred rupees recoverable as a contract debt, or

 

(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:

 

Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed one thousand rupees.

 

(3) When the Court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.

 

 

 

54.Application of certain provisions of the Act as to patents to designs

.- The provisions of this Act with regard to certificates of the of validity of a patent, and to the remedy in case of groundless threats to of legal proceedings by a patentee shall apply in the case of registered designs in like manner as they apply in the case of patents, with the substitution of references to the copyright in a design for references to a patent, and of references to the proprietor of a design for references to the patentee, and of references to the designs for references to the invention.

 

PART III

 

GENERAL

 

Patent Office and Proceedings thereat

 

 

55.Patent office

.-  (1) The Central Government may provide, for the purpose of this Act, an office which shall be called, and is in this Act referred to as, the Patent office.

 

(2) The Patent Office shall be under the immediate control of the Controller of Patents and Designs, who shall act under the superintendent and direction of the Central Government.

 

(3) There shall be a seal for the Patent Office.

 

(4) Any act or thing directed to be done by or to the Controller may on done by or to any officer authorized by the Central Government.

 

 

56.Officers and clerks

..-  The Central Government may appoint the Controller, and so  many officers and clerks, with such designations and duties, as it clerk thinks fit.

 

 

Fees

 

 

57.Fees

.-  (1) There shall be paid in respect of the grant of patents and Fees.the registration of designs, and applications therefor, and in respect of other matters with relation to the patents and designs under this Act, such fees as may be prescribed by the Central Government, so however that the fees prescribed in respect of the instruments and matters mentioned in the schedule shall not exceed those there specified.

 

(2) A proceeding in respect of which a fee is payable under this Act or the rules made thereunder shall be of no effect unless the fee has been paid.

 

Provisions as to Registers and other Documents in the Patent office

 

 

58.Notice of trust not to be entered in registers

.-  There shall not be entered in any register kept under this Notice Act, or be receivable by the Controller, any notice of any trust, expressed, implied or constructive.

 

 

 

59.Inspection of and extracts from registers

.-  Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act; and certified copies, sealed with the seal of the  Patent Office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.

 

{.Ins.by Act 12 of 1939, s.14.} [

59A.    Information relating to patents.

- A person making a request to the Controller in the prescribed manner as respects any patent specified in the request or as respects any application for a patent so specified, for information to be furnished to him by the Controller of any such matters as may be prescribed affecting that patent or application, shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.]

 

 

 

60.Privilege of reports of controller

.-  Reports of or to the Controller made under this Act shall not                                 in any case be published or be open to public inspection.

 

 

 

61.Prohibition of publication of specification, drawings , etc.where application abandoned, etc

.-  (1) Where an application for a patent has been abandoned or {.Subs.by Act 9 of 1945, s.13, for "become void".} [deemed to have been refused], the specifications and drawings (if any), accompanying or left in connection with such application, shall not, save as otherwise expressly provided by this Act, at any time be open to public inspection or be published by the Controller.

 

(2) Where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations or specimens left in connection with the application shall not at any time be open to public inspection or be published by the Controller.

 

 

 

62.Power for the controller to correct clerical errors

.-  The Controller may, on request in writing accompanied by the prescribed fee,—

 

(a) correct any clerical error in or in connection with an application for a patent or in any patent or any specification;

 

{ Cl.(b) omitted by Act 7 of 1930, s.25.}        

 

(c) correct any clerical error in the representation of a design or in the name or address of the proprietor of any patent or design, or in any other matter which is entered upon the register of patents or the register of designs.

 

 

 

63.Entry of assignments and transmissions in registers

.-  {.Subs.by s.26, ibid., for the original sub-sections (1) and (2).} [(1) Where a person becomes entitled by assignment, transmission or other operation of law to a patent or to the copyright in a registered design, he may make application to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such patent or design and shall cause an entry to be made in the prescribed manner in the register of the assignment, transmission or other instrument affecting the title.

 

(2) Where any person becomes entitled as mortgagee, licensee or otherwise to any interest in a patent or registered design, he may make application to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, cause notice of the interest to be entered in the prescribed manner in the register of patents or designs, as the case may be, with particulars of the instrument, if any, creating such interest.]

 

(3) The person registered as the proprietor of a patent or design shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licenses as to, or otherwise deal with, the patent or design and to give effectual receipts for any consideration of any such assignment, license or dealing:

 

Provided that any equities in respect of the patent or design may be enforced in like manner as in respect of any other moveable property.

 

{.Ins by Act 7 of 1930.s.26.} [(4) Except in the case of an application made under section 64, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of sub-sections (1) and (2) shall not be admitted in evidence in any Court in proof of the title to a patent or to copyright in a design or to any interest therein, unless the Court, for reasons to be recorded in writing, otherwise directs.]

 

 

 

64.Rectification of register

.-  (1) {.Subs.by s.27, ibid., for " A High Court ".} [ The Controller] may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission or from the register of patents or designs of any entry, or by any entry made in either such register without sufficient cause, or by any entry remaining on either such register, or by an error or defect in any entry in either such register, make such order for making, expunging or varying such entry{.Subs by s.27, ibid.for " as it may think fit ".} [as he thinks fit and rectify the register accordingly].

 

(2) The { Subs by s.27, ibid., for " Court ".} [Controller] may in any proceeding under this section decide any question that it may be necessary or expedient   to decide in connection with the rectification of a register.

 

{Subs.by s.2, ibid., for the original sub-section.} [ (3) An appeal shall lie to the High Court from any order of the Controller under section ; and the Controller may refer any application under this section to the High Court for decision, and the High Court shall dispose of any application se referred.]

 

                (4) any order of the High Court rectifying a register shall direct that notice of the rectification be served on the Controller in the prescribed manner , who shall upon the receipt of such notice rectify the register accordingly.

 

               {Subs.by  Act 7 of 1930, s.27, for the original sub-section.} [ (5) Nothing in this section shall be deemed to empower the Controller—

 

(a)to rectify the register of patents , or to decide any question relating to a patent, otherwise than for the purpose of correcting a mistake of fact apparent from a reference either to patent itself or to some order of a competent authority made under any other provision of this Act.

 

(b)To make any such order cancelling the registration of a design as is provided as in section 51A.]

 

Powers and duties of controller.

 

 

65.Powers of Controller in proceedings under Act

.-   Subject to any rules on this behalf , the Controller on any proceedings before him under this Act shall have the powers of a Civil Court for the purpose of receiving evidence , { The word " and  " omitted by Act 12 of 1939, s.15.}  administering oaths , { The word " and  " omitted by Act 12 of 1939, s.15.}  enforcing the attendance of witness , { The word " and  " omitted by Act 12 of 1939, s.15.}           { Subs.by s.15, ibid., for  compelling the production of documents and awarding costs .} [ compelling the discovery and production of documents , issuing commissions for the examining of witnesses and awarding costs and such award shall be executable in any court having jurisdiction as if it were a decree of that Court.

 

                                    

 

66.Publication of patented inventions

.- The Controller shall issue periodically a publication of patented inventions containing such information as the Central Government may direct.

 

 

 

67.Exercise of discretionary power by Controller

.- Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to the applicant for the patent , or for amendment of an application or of a specification , or for registration of a design , without  ( if so required within the prescribed time by the applicant ) giving the applicant an opportunity of being heard.

 

 

 

68.Power of controller to take directions of the Central Government

.- The Controller may , in any case of doubt or difficulty arising in the administration of any of the provisions of this Act apply to the Central Government for directions in the matter.

 

 

 

69.Refusal to grant patent , etc., in certain cases

.-  {S.69 re-numbered as sub-section (1) of that section by Act 7 of 1930, s.28.} [ (1) ] The Controller may refuse to grant patent for an invention or to register a design, of which the use would, in his opinion be contrary to law or mortality.

 

{ Ins.By s.28, ibid.} [( 2 )] An appeal shall lie to the Central Government from an order of the Controller under this section.]

 

 

 

70.Appeals to the Central Government

.- (1 ) Where an appeal is declared by this Act to lie from the Controller to the Central Government , the appeal shall be made within  { Subs.by s.29, ibid., for "two".}  months of the date of the order passed by the Controller , and shall be in writing , and accompanied by the prescribed fee.

 

( 2 ) In calculating the said period of { Subs.by s.29, ibid., for "two".}  months the time ( if any ) occupied in grating a copy of the order appealed against shall be excluded.

 

( 3 ) The Central Government may, if it thinks fit, obtain the assistance of an expert in decoding such appeals, and the decision of the Central Government  shall be final.

 

Evidence, etc.

 

{Ins.By Act 12 of 1939, s.16.} [

 70A.   Evidence before the Controller.-

Subject to any rules made under section 77, in any proceeding under this Act before the Controller, the evidence shall be given by affidavit , in the absence of directions by the Controller to the contrary ; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by affidavit or may allow any party to be cross-examined on the contents of this affidavit.]

 

 

 

71.Certificate of Controller to be evidence

.-A certificate purporting to be under the hand of the Controller as to any entry, matter or thing which he is authorised by this Act, or any rules made thereunder, to make or do, shall be prima-facie evidence  of the entry having been made , and of the contents thereof, and of the matter or thing having been done or left done.

 

{ Ins.By Act 12 of 1939, s.17.} [

71A.    Evidence of documents in patent office.-  

Printed or written copies or extracts , purporting to be certified by the Controller  and sealed with the seal of the patent office of or from patents , specifications and other documents in the Patent Office, and of or from registers and other books kept there, shall be admitted in evidence in all Courts in { Subs.by Act 32 of 1950 , s.2 for " the States".}  [India], and in all proceedings , without further proof or production of the originals: 

 

Provided that a Court may, if it has reason to doubt the accuracy or  authenticity of the copies tendered in evidence , require the production of the originals or such further proof as it  considers necessary.]

 

 

{ Subs.by Act 12 of 1939, s.18, for the original location } [

72.Transmission of copies of specifications etc., and inspection thereof

.-Copies of all such specifications , drawings and amendments left at the patent office, as become open to public inspection under the provisions of this Act , shall be transmitted , as soon as may be, after the printed copies thereof are available , to such authorities as the Central Government may appoint in this behalf, and shall be open to the inspection of any person at all reasonable times at places to be appointed by those authorities and approved by the Central Government.]

 

 

 

73.Applications and notices by post

.- Any application , notice or other document authorized or required to be left, made or given at the Patent Office or to the Controller, or to any other person under this Act , may be sent by post.

 

 

 

74.Declaration by infant lunatic, etc

.- ( 1 ) If any person is, by reason of infancy , lunacy or other disability , incapable of making  any statement or doing anything required or permitted by or under this Act, the lawful guardian , committee or manager ( if any ) of the person subject to the disability , or , if there be none, any person appointed by any Court possessing jurisdiction in respect of his property , may make such statement or a statement as nearly corresponding thereto as circumstances permit , and do such thing in the name on behalf of the person subject to the disability.

 

( 2 ) An appointment may be made by the Court for the purpose of this section upon the petition of any person acting on behalf of the person subject to the disability or of any person interested in the making of the statement or the doing of the thing.

 

 

{ Ins.By Act 7 of1930 , s.30.} [

 74A.   Security for costs.-

Where a person giving notice of any opposition under this Act or giving notice to the Court of appeal from any decision of the Controller under this Act , neither resides nor carries on business in   {Subs.By Act 32 of 1950, s.2 , for " the States ".} [ India ] , the Controller or the Court , as the case may be , may require such person to give security for the payment of all costs incurred and likely to be incurred in the proceedings or appeal, as the case may be, and , in default of such security being given , may disallow the opposition or dismiss the appeal.]

 

Agency

 

 

75.Subscription and verification of certain documents

.- The following documents , namely:--

 

(1)               application for a patent,

 

(2)               notices of opposition,

 

(3)               applications for extension of term of a patent,

 

(4)               applications for the restoration of lapsed patents,

 

(5)               applications for leave to amend,

 

(6)               applications for compulsory license or revocation , and

 

(7)               notices of surrenders of patent,

 

{ Ins.By s.7, ibid.[(8) applications for endorsement of patent with the words " Licences of Right",]

 

shall be signed and verified , in the manner prescribed, by the person making such applications or giving such notices;

 

Provided that, if such person is absent from  {Subs.by Act 32 of 1950, s.2 , for " the States ".} [India] , they may be signed and verified on his behalf by an agent resident in {Subs.by Act 32 of 1950, s.2 , for " the States ".}  [India] authorized by him in writing in that behalf.

 

 

 

76.Agency

.- (1) All other applications and communications to the Controller under this Act may be signed by, and all attendances upon the Controller may be made by or through a legal practitioner or by or through an agent authorized to the satisfaction of the Controller.

 

(2) The Controller may, if he sees fit, require—

 

(a)any such agent to be resident in {Subs.by Act 32 of 1950, s.2 , for " the States ".} [India];

 

(b)any person not residing in {Subs.by Act 32 of 1950, s.2 , for " the States ".} [India] to employ an agent residing in {Subs.by Act 32 of 1950, s.2 , for " the States ".} [India];

 

(c)the personal signature or presence of any applicant , opponent or other person.

 

Powers, etc., of Central Government.

 

 

77.Powers for Central Government to make rules

.- (1) The Central Government may make such rules {For the Indian Patents and Designs Rules , 1933 and the Indian Secret Patent Rules, 1933, see Gazette of India , 1933, Pt, II , p.99 and p.i57, respectively.}  as it thinks expedient subject to the provisions of this Act—

 

(a)for regulating the practice of registration under this Act ;

 

(b)for classifying goods for the purposes of design;

 

(c)for making or requiring duplicates of specifications , drawings and other documents;

 

(d)for securing and regulating the publishing and selling of copies, at such prices and in such manner as the Central Government thinks fit, of specifications , drawings and  other documents;

 

(e)for securing and regulating the making , printing , publishing and selling of indexes to, and abridgements of, specifications and other documents in the Patent Office ; and providing for the inspection of indexes and abridgements and other documents;

 

{ Ins.By Act 7 of 1930, s.31.} [(ee) for the manner in which fees leviable under this Act may be paid;

 

(eee) for ensuring secrecy with respect to patents to which section 21Aapplies;]

 

(f) generally for regulating the business of the patent office, the conduct of proceedings before the Controller, and  all things by this Act placed under the direction or control of the Controller or of the Central Government; and

 

(g) generally for the purpose of carrying into effect the provisions of this Act.

       

  (2)The power to make rules under this section shall be subject to the condition of the rules being made after previous publication.

 

{ Ins.By Act 7 of 1930, s.31.} [ (2A) Nothing in sub-section (2) shall apply in the case of rules made for the purpose specified in clause (eee) of sub-section (1) ; and any such rules may modify any of the provisions of this Act so far as may be necessary for that purpose.]

 

(3) All rules made under this section shall be published in the Official Gazette , and on such publication shall have effect as if enacted in this Act.

 

Offences.

 

 

78.Wrongful use of words Patent Office

.- If any person uses on his place of business, or on any document issued by him , or otherwise, the words "Patent Office", or any other words suggesting that his place of business is officially connected with, or is , the Patent Office, he shall be punishable with fine which may extend to two hundred rupees , and , in the case of a continuing offence is continued after conviction therefor.

 

{ The heading and s.78A ins.by Act 29 of 1920, s.2.}

[Reciprocal arrangements with the United Kingdom and other parts of His Majesty's dominions.

 

78A.   

(1) { Subs.by the A.O.1948 for certain words.} [ Whereas His Majesty has the order made on the 28th day of July , 1938, declared  British India to be convention country within the meaning of section 91A of the Patents and Designs Acts, 1907 to 1938, any person] who has applied for protection for any invention or design in the United Kingdom, {Ins.By Act 11 of 1923 , s.2and Sch.I.} [or his legal representative or assignee ] { Subs.by Act 12 of 1939, s.19, for "shall be entitled to a patent for his invention or to registration of his design under this Act , in priority to other applicants; and the patent or registration shall have".} [shall , either alone or jointly with any other person , be entitled to claim that the patent that may be granted to him under this Act , for the said invention or the registration of the said design under this Act , shall be in priority to other applicants and shall have ] the same date as that of the application in the United Kingdom:

 

Provided that—

 

(a)the application is made in the case of a patent within twelve months, and , in the case of a design , within, { Subs.by Act 7 of 1930, s.for "four".} [six]months from the application for protection in the United Kingdom : and

 

(b)nothing in this section shall entitle the patentee or the proprietor of the design to recover damages for the infringements happening prior to the actual date on which, in the case of a patent , his application is accepted, or , in the case of a design , the design is registered , in { Subs.by Act 32 of 1950 , s.2, for " the States".}  [India].

 

(8)     The patent granted for an invention or the registration of a design shall not be validated—

 

(a)in the case of a patent , by reason only of the publication of a description of, or use of, the invention, or

 

(b)in the case of a design , by reason only of the exhibition or use of, or the publication of a description or representation of , the design ,  

 

(3)The application for the grant of the patent or the registration of a design under this section must be made in the same manner as an ordinary application under this Act:

 

{ Subs.by Act 9 of 1945, s.14, for the original proviso.} [ Provided that, in the case of a patent,--

 

(a)the application shall be accompanied by a complete specification; and

 

(b)if the application is not accepted within eighteen months from the date of the application for protection in the United Kingdom , the specification shall  , with the drawings (if any) supplied therewith, be open to public inspection at the expiration of that period.]

 

 

(4) Where it is made to appear to the Central Government that the legislature of any other part of his Majesty's dominions { The words "or of the law of any part B State" omitted by Act 32 of 1950, s.8.}  has made satisfactory provision for the protection of inventions or designs, patented or registered in { Subs.by Act 32 of 1950 , s.2 for "the States".} [India] , the Central Government may, by notification in the Official Gazette , direct that the provisions of this section , with such variations or additions , if any, as may be set out in such notification , shall apply for the protection of inventions or designs patented or registered in that part of His Majesty's dominions { The words " or in that State , as the case may be " omitted by Act 32  of 1950, s.8.}.]

 

 

 

79.Savings and Repeal

.- [Savings for prerogative.] Rep.By the Adaptation of Laws Order , 1950

 

 

{ Ins.By Act 3 of 1951 , s.3 and Sch.The original s.80 rep.By Act 12 of 1927, s.2 and Sch.} [

80.Repeals and Savings

.-(1) { Subs.by Act 62 of 1956 , s.2 and Sch., for "If immediately before the 18th day of April , 1950, there was in force in any Part B State to which this Act extends".} [If immediately above –

 

(i)the 18th day of April , 1950, in relation to any Part B State other than the State of Jammu and Kashmir, and

 

(ii)the date of commencement of the Jammu and Kashmir (Extension of Laws) Act , 1956, in relation to the State of Jammu and Kashmir ,

 

 

there was in force in the Part B State concerned any law corresponding to this Act , that corresponding law shall be deemed to have been repealed on the date aforesaid:

 

Provided that the repeal shall not affect—

 

(a)the previous operation of any law so repealed or anything duly done or suffered thereunder , or

 

(b)any right privilege , obligation or liability acquired , accrued or incurred under any law so repealed, or

 

(c)any penalty, forfeiture or punishment incurred in respect of any offence committed against any law so repealed, or

 

(d)any investigation , legal proceeding or remedy in respect of any such right, privilege, obligation , liability, penalty, forfeiture or punishment as aforesaid,

 

and any such investigation , legal proceeding or remedy may be instituted , continued or enforced , and any such penalty, forfeiture or punishment may be imposed , as if this Act had not come into force in the Part B State concerned:

 

Provided further that , subject to the preceding proviso , anything done or any action taken including any patent , permit or licence granted or registration effected under any such corresponding law shall be deemed to have been done or taken under the corresponding provision of this Act as now extended to that State and shall continue to be in force accordingly , unless and until superseded by anything  done or any action taken under this Act.

 

(2)Nothing contained in section 6 of the  Part B States (Laws) Act , 1951, { Ins.By Act 62 of 1956, s.2 and Sch.} [ or section 5 of the Jammu and Kashmir (Extension of Laws) Act, 1956,] shall have effect in relation to this Act.]

 

81.      

[Substitution of patents for rights under repealed Act.] Rep.By the Repealing and Amending Act , 1920 (31 of 1920), s.3 and Sch.II.

 

THE SCHEDULE

 

(See section 57.)

 

FEES

       Rs.

{ Subs.by Act 9 of 1945, s.15, for the original entry.} [ On application for a patent

accompanied by provisional specification.     .               .               .               .               .               10

 

On filling complete specification after provisional specification.                .               .               20

 

On application of a patent accompanied by complete specification.          .               .               30]

 

{ Subs.by Act 9 of 1945, s.15, for the original entry.} [ For sealing a patent.           .               30]

 

Before the expiration of the 4th year from the date of the patent.  .               .               50

 

Before the expiration of the 5th year from the date of the patent.  .               .               50

 

Before the expiration of the 6th year from the date of the patent.  .               .               50

 

Before the expiration of the 7th year from the date of the patent.  .               .               50

Before the expiration of the 8th year from the date of the patent.                                  .               .               { Subs.                           by Act 7 of 1930, s.33, for "50".} [100]

Before the expiration of the 9th year from the date of the patent.                                  .               100

 

Before the expiration of the 10th year from the date of the patent.                                .               100

 

Before the expiration of the 11th year from the date of the patent.                                .               100

 

{ Subs.by Act 7 of 1930, s.33, for the last five entries.}Before the expiration of the 12th

 year from the date of the patent.                                                                                      .               150

 

Before the expiration of the 13th year from the date of the patent..                               .               150

 

Before the expiration of the 14th year from the date of the patent..                               .               150

 

Before the expiration of the 15th year from the date of the patent..                               .               150

 

Provided the fees for two or more years may be paid in advance.

 

On application to extend the term of the patent..                                                            .               50

 

{ Subs.by Act 12 of 1939, s.20, for "Before the expiration of ".} [In respect of] each

year of extended term of a patent or of a new patent granted under section 15.       .               150

 

On application for registration of a design..                                                                    .               3]