The
Patents (Amendment) Ordinance, 2004
[Ord.No
7 of 2004]
Date:
26.12.2004
Promulgated by the
President in the Fifty-fifth Year of the Republic of India.
An Ordinance further
to amend the Patents Act, 1970.
WHEREAS
Parliament is not in
session and the President is satisfied that circumstances exist which render it
necessary for him to take immediate action;
NOW,
THEREFORE, in exercise of the
powers conferred by clause (1) of article 123 of the Constitution, the President
is pleased to promulgate the following Ordinance:–
1. Short
title and
commencement.--
(1)
This Ordinance may be called the Patents (Amendment) Ordinance,
2004.
(2) Sub-clause (ii) of clause (a),
and clause (b), of section 37, sections 41, 42, 47, 58 to 62 (both inclusive)
and 73 shall come into force on such date as the Central Government may, by
notification in the Official Gazette, appoint; and the remaining provisions
shall come into force on the 1st
day of January,
2005.
In section 2 of the Patents Act,
1970 (39 of
1970. ) (hereinafter
referred to as the principal Act), in sub-section (1),–
(a) after clause (ab), the
following clause shall be inserted, namely:–
‘(aba) “Budapest Treaty” means the
Budapest Treaty on the International Recognition of the Deposit of
Micro-organisms for the Purposes of Patent Procedure done at Budapest on
28th
day of April, 1977,
as amended and modified from time to time;’;
(b) in clause (d), for the words,
brackets and figure “notified as such under sub-section (1) of section 133”, the
words and figures “referred to as a convention country in section 133” shall be
substituted;
(c) clause (g) shall be omitted;
(d) in clause (h),–
(i) in sub-clause (iii), after the
words and figures “the Companies Act, 1956 (1 of
1956)”, the word “;
or” shall be inserted;
(ii) after sub-clause (iii), the
following sub-clause shall be inserted, namely:–
“(iv) by an institution wholly or
substantially financed by the Government;”;
(iii) the words “and includes the
Council of Scientific and Industrial Research and any other institution which is
financed wholly or for the major part by the said Council;” shall be omitted;
(e) for clause (i), the following
clause shall be substituted, namely:–
‘(i) “High Court”, in relation to
a State or Union territory, means the High Court having territorial jurisdiction
in that State or Union territory, as the case may be;’;
(f) for clauses (l) and (m), the
following clauses shall be substituted, namely:–
‘(l) “Opposition Board” means an
Opposition Board constituted under sub-section (4) of section 25;
(m) “patent” means a patent for
any invention granted under this Act;’.
In section 3 of the principal
Act,–
(a) in clause (d), for the words
“new use”, the words “mere new use” shall be substituted;
(b) for clause (k), the following
clauses shall be substituted, namely:–
“(k) a computer programme per se
other than its technical application to industry or a combination with
hardware;
(ka) a mathematical method or a
business method or algorithms;”.
Section 5 of
the principal Act shall be omitted.
In section 7 of the principal
Act,–
(a) after
sub-section (1A), the following sub-section shall be inserted, namely:–
“(1B) The
filing date of an application referred to in sub-section (1A) and its complete
specification processed by the patent office as designated office or elected
office shall be the international filing date accorded under the Patent
Cooperation Treaty.”;
(b) in
sub-section (3), for the word “owner”, the word “person” shall be substituted;
(c) for
sub-section (4), the following sub-section shall be substituted, namely:–
“(4) Every such application (not
being a convention application or an application filed under the Patent
Cooperation Treaty designating India) shall be accompanied by a provisional or a
complete specification.”.
In section 8 of the principal
Act,–
(a) in
sub-section (1),–
(i) for the
words “within such period as the Controller may, for good and sufficient
reasons, allow”, the words “within the prescribed period as the Controller may
allow” shall be substituted;
(ii) in clause
(b), for the words “upto the date of the acceptance of his complete
specification filed in India”, the words “upto the date of grant of patent in
India” shall be substituted;
(b) for sub-section (2), the
following sub-section shall be substituted, namely:–
“(2) At any time after an
application for patent is filed in India and till the grant of a patent or
refusal to grant of patent made thereon, the Controller may also require the
applicant to furnish details, as may be prescribed, relating to the processing
of the application in a country outside India, and in that event the applicant
shall furnish to the Controller information available to him within such period
as may be prescribed.”.
In section 9 of the principal
Act,–
(a) for sub-section (1), the
following sub-section shall be substituted, namely:–
“(1) Where an application for a
patent (not being a convention application or an application filed under the
Patent Cooperation Treaty designating India) is accompanied by a provisional
specification, a complete specification shall be filed within twelve months from
the date of filing of the application, and if the complete specification is not
so filed, the application shall be deemed to be abandoned.”;
(b) in sub-section (2), the
following proviso shall be inserted at the end, namely:–
“Provided that the period of time
specified under sub-section (1) shall be reckoned from the date of filing of the
earliest provisional specification.”;
(c) for sub-sections (3), the
following sub-section shall be substituted, namely:–
“(3) Where an application for a
patent (not being a convention application or an application filed under the
Patent Cooperation Treaty designating India) is accompanied by a specification
purporting to be a complete specification, the Controller may, if the applicant
so requests at any time within twelve months from the date of filing of the
application, direct that such specification shall be treated, for the purposes
of this Act, as a provisional specification and proceed with the application
accordingly.”;
(d) in sub-section (4), for the
words “the acceptance of the complete specification”, the words “grant of
patent” shall be substituted.
In section 10 of the principal
Act,–
(a) in sub-section (3), for the
words “before the acceptance of the application”, the words “before the
application is found in order for grant of a patent” shall be substituted;
(b) in sub-section (4), in the
proviso,–
(i) in clause (ii), for the words
“the material to an authorised depository institution as may be notified by the
Central Government in the Official Gazette”, the words “the material to an
international depository authority under the Budapest Treaty” shall be
substituted;
(ii) for sub-clause (A), the
following sub-clause shall be substituted, namely:–
“(A) the deposit of the material
shall be made not later than the date of filing the patent application in India
and a reference thereof shall be made in the specification within the prescribed
period;”;
(c) for sub-section namely:–
(4A), the following sub-section
shall be substituted,
“(4A) In case of an international
application designating India, the title, description, drawings, abstract and
claims filed with the application shall be taken as the complete specification
for the purposes of this Act.”.
In section 11 of the principal
Act,–
(a) after
sub-section (3), the following sub-section shall be inserted, namely:–
“(3A) Where a
complete specification based on a previously filed application in India has been
filed within twelve months from the date of that application and the claim is
fairly based on the matter disclosed in the previously filed application, the
priority date of that claim shall be the date of the previously filed
application in which the matter was first disclosed.”;
(b) in
sub-section (6), after the brackets and figure “(3),”, the brackets, figure and
letter “(3A),” shall be inserted.
10. Amendment
of section
11A.--
In section 11A of the principal
Act,–
(a) for sub-sections (1) to (3),
the following sub-sections shall be substituted, namely:–
“(1) Save as otherwise provided,
no application for patent shall ordinarily be open to the public for such period
as may be prescribed.
(2) The applicant may, in the
prescribed manner, request the Controller to publish his application at any time
before the expiry of the period prescribed under sub-section (1) and subject to
the provisions of sub-section (3), the Controller shall publish such application
as soon as possible.
(3) Every
application for a patent shall, on the expiry of the period specified under
sub-section (1), be published, except in cases where the application–
(a) in which
secrecy direction is imposed under section 35; or
(b) has been
abandoned under sub-section (1) of section 9; or
(c) has been
withdrawn three months prior to the period specified under sub-section (1).”;
(b) in
sub-section (4), for the words “of eighteen months”, the words, brackets and
figure “prescribed under sub-section (1)” shall be substituted;
(c) after
sub-section (6), the following sub-section shall be inserted, namely:–
“(7) On and from the date of
publication of the application for patent and until the date of grant of a
patent in respect of such application, the applicant shall have the like
privileges and rights as if a patent for the invention had been granted on the
date of publication of the application:
Provided that the applicant shall
not be entitled to institute any proceedings for infringement until the patent
has been granted:
Provided further that the rights
of a patentee in respect of applications made under sub-section (2) of section 5
before the 1st
day of January,
2005 shall accrue from the date of grant of the patent.”.
11. Amendment
of section 11B.--
In section 11B of the principal
Act,–
(a) for sub-section (1), the
following sub-section shall be substituted, namely:–
“(1) No application for a patent
shall be examined unless the applicant or any other interested person makes a
request in the prescribed manner for such examination within the prescribed
period.”;
(b) sub-section (2) shall be
omitted;
(c) for sub-section (3), the
following sub-section shall be substituted, namely:–
“(3) In case of an application in
respect of a claim for a patent filed under sub-section (2) of section 5 before
the 1st
day of January,
2005 a request for its examination shall be made in the prescribed manner and
within the prescribed period by the applicant or any other interested
person.”;
(d) in sub-section (4),–
(i) the words,
brackets and figure “or sub-section (2)” shall be omitted;
(ii) for the
proviso, the following proviso shall be substituted, namely:–
“Provided that–
(i) the applicant may, at any time
after filing the application but before the grant of a patent, withdraw the
application by making a request in the prescribed manner; and
(ii) in a case where secrecy
direction has been issued under section 35, the request for examination may be
made within the prescribed period from the date of revocation of the secrecy
direction.”;.
12. Amendment
of section 12.--
In section 12 of the principal
Act,–
(a) in
sub-section (1), for the words, brackets, figures and letter “under
subsection (1) or sub-section (2) or sub-section (3) of section 11B, the
application and specification and other documents shall be referred to by the
Controller”, the words, brackets, figures and letter “under sub-section (1) or
sub-section (3) of section 11B, the application and specification and other
documents related thereto shall be referred at the earliest by the Controller”
shall be substituted;
(b) in
sub-section (2), for the words “a period of eighteen months from the date of
such reference”, the words “such period as may be prescribed” shall be
substituted.
13. Amendment
of section 13.--
In section 13
of the principal Act, in sub-section (3), for the words “it has been accepted”,
the words “the grant of a patent” shall be substituted.
14. Substitution
of new sections for sections 14 and 15.--
For sections 14
and 15 of the principal Act, the following sections shall be substituted,
namely:–
“14.
Consideration of the report of examiner by Controller.-- Where, in respect of an
application for a patent, the report of the examiner received by the Controller
is adverse to the applicant or requires any amendment of the application, the
specification or other documents to ensure compliance with the provisions of
this Act or of the rules made thereunder, the Controller, before proceeding to
dispose of the application in accordance with the provisions hereinafter
appearing, shall communicate as expeditiously as possible the gist of the
objections to the applicant and shall, if so required by the applicant within
the prescribed period, give him an opportunity of being heard.
15. Power
of Controller to refuse or require amended applications,
etc., in certain cases.-- Where the Controller is satisfied
that the application or any specification or any other document filed in
pursuance thereof does not comply with the requirements of this Act or of any
rules made thereunder, the Controller may refuse the application or may require
the application, specification or the other documents, as the case may be, to be
amended to his satisfaction before he proceeds with the application and refuse
the application on failure to do so.”.
15. Amendment
of section 16.--
In section 16 of the principal
Act,–
(a) in sub-section (1), for the
words “before the acceptance of the complete specification”, the words “before
the grant of the patent” shall be substituted;
(b) for the Explanation, the
following Explanation shall be substituted, namely:–
“Explanation.– For the purposes of
this Act, the further application and the complete specification accompanying it
shall be deemed to have been filed on the date on which the first mentioned
application had been filed, and the further application shall be proceeded with
as a substantive application and be examined when the request for examination is
filed within the prescribed period.”.
16.
Amendment
of section 17.--
In section 17 of the principal
Act, in sub-section (1), for the words “before acceptance of the complete
specification”, the words “before the grant of the patent” shall be
substituted.
17. Amendment
of section 18.--
In section 18 of the principal
Act,–
(a) in sub-section (1), for the
words “to accept the complete specification”, the words “the application” shall
be substituted;
(b) sub-section (4) shall be
omitted.
18. Amendment
of section 19.--
In section 19 of the principal
Act, in sub-section (1), the words and figures “by the foregoing provisions of
this Act or of proceedings under section 25”, the words “under this Act” shall
be substituted.
19. Substitution
of new section for section 21.--
For section 21 of the principal
Act, the following section shall be substituted, namely:–
“21. Time
for putting application in order for grant.--(1) An application for a patent
shall be deemed to have been abandoned unless, within such period as may be
prescribed, the applicant has complied with all the requirements imposed on him
by or under this Act, whether in connection with the complete specification or
otherwise in relation to the application from the date on which the first
statement of objections to the application or complete specification or other
documents related thereto is forwarded to the applicant by the Controller.
Explanation.–Where the application
for a patent or any specification or, in the case of a convention application or
an application filed under the Patent Cooperation Treaty designating India any
document filed as part of the application has been returned to the applicant by
the Controller in the course of the proceedings, the applicant shall not be
deemed to have complied with such requirements unless and until he has re-filed
it or the applicant proves to the satisfaction of the Controller that for the
reasons beyond his control such document could not be re-filed.
(2) If at the expiration of the
period as prescribed under sub-section (1),–
(a) an appeal
to the High Court is pending in respect of the application for the patent for
the main invention; or
(b) in the case
of an application for a patent of addition, an appeal to the High Court is
pending in respect of either that application or the application for the main
invention, the time within which the requirements of the Controller shall be
complied with shall, on an application made by the applicant before the
expiration of the period as prescribed under sub-section (1), be extended until
such date as the High Court may determine.
(3) If the time within which the
appeal mentioned in sub-section (2) may be instituted has not expired, the
Controller may extend the period as prescribed under sub-section (1), to such
further period as he may determine:
Provided that if an appeal has
been filed during the said further period, and the High Court has granted any
extension of time for complying with the requirements of the Controller, then
the requirements may be complied with within the time granted by the Court.”.
20. Omission
of sections 22 to 24.--
Sections 22 to
24 of the principal Act shall be omitted.
21.
Omission of Chapter IVA.--
Chapter IVA of
the principal Act shall be omitted.
22.
Substitution of heading of Chapter V.--
In Chapter V of
the principal Act, for the Chapter heading “OPPOSITION
TO GRANT OF PATENT”, the Chapter
heading “REPRESENTATION
AND OPPOSITION PROCEEDINGS” shall be
substituted.
23. Substitution
of new sections for sections 25 and 26.--
For sections 25
and 26 of the principal Act, the following sections shall be substituted,
namely:–
“25. Opposition
to the patent.-- (1) Where an application for a
patent has been published but a patent has not been granted, any person may, in
writing, represent by way of opposition to the Controller against the grant of
patent on the ground of–
(a)
patentability including novelty, inventive step and industrial applicability,
or
(b)
non-disclosure or wrongful mentioning in complete specification, source and
geographical origin of biological material used in the invention and
anticipation of invention by the knowledge, oral or otherwise available within
any local or indigenous community in India or elsewhere,
and the Controller shall consider
and dispose of such representation in such manner and within such period as may
be prescribed.
(2)
Notwithstanding anything contained in sub-section (1), the person making a
representation referred to in that sub-section shall not become a party to any
proceedings under this Act only for the reason that he has made such
representation.
(3) At any time
after the grant of patent but before the expiry of a period of one year from the
date of publication of grant of a patent, any person interested may give notice
of opposition to the Controller in the prescribed manner on any of the following
grounds, namely:–
(a) that the
patentee or the person under or through whom he claims, wrongfully obtained the
invention or any part thereof from him or from a person under or through whom he
claims;
(b) that the
invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim–
(i) in any specification filed in
pursuance of an application for a patent made in India on or after the
1st
day of January,
1912; or
(ii) in India or elsewhere, in any
other document:
Provided that the ground specified
in sub-clause (ii) shall not be available where such publication does not
constitute an anticipation of the invention by virtue of sub-section (2) or
sub-section (3) of section 29;
(c) that the
invention so far as claimed in any claim of the complete specification is
claimed in a claim of a complete specification published on or after the
priority date of the claim of the patentee and filed in pursuance of an
application for a patent in India, being a claim of which the priority date is
earlier than that of the claim of the patentee;
(d) that the
invention so far as claimed in any claim of the complete specification was
publicly known or publicly used in India before the priority date of that
claim.
Explanation.–For
the purposes of this clause, an invention relating to a process for which a
patent is granted shall be deemed to have been publicly known or publicly used
in India before the priority date of the claim if a product made by that process
had already been imported into India before that date except where such
importation has been for the purpose of reasonable trial or experiment only;
(e)
that the invention so far as claimed in any claim of the complete specification
is obvious and clearly does not involve any inventive step, having regard to the
matter published as mentioned in clause (b) or having regard to what was used in
India before the priority date of the claim;
(f)
that the subject of any claim of the complete specification is not an invention
within the meaning of this Act, or is not patentable under this
Act;
(g)
that the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
(h)
that the patentee has failed to disclose to the Controller the information
required by section 8 or has furnished the information which in any material
particular was false to his knowledge;
(i)
that in the case of a patent granted on convention application, the application
for patent was not made within twelve months from the date of the first
application for protection for the invention made in a convention country or in
India by the patentee or a person from whom he derives
title;
(j)
that the complete specification does not disclose or wrongly mentions the source
and geographical origin of biological material used for the
invention;
(k)
that the invention so far as claimed in any claim of the complete specification
was anticipated having regard to the knowledge, oral or otherwise, available
within any local or indigenous community in India or
elsewhere,
but on
no other ground.
(4) (a) Where any such notice of opposition is duly given under sub-section (3), the Controller shall notify the patentee.
(b) On
receipt of such notice of opposition, the Controller shall, by order in writing,
constitute a Board to be known as the Opposition Board consisting of such
officers as he may determine and refer such notice of opposition along with the
documents to the Board for examination and submission of its recommendations to
the Controller.
(c)
Every Opposition Board constituted under clause (b) shall conduct the
examination in accordance with such procedure as may be
prescribed.
(5) On
receipt of the recommendation of the Opposition Board and after giving the
patentee and the opponent an opportunity of being heard, the Controller shall
order either to maintain or to amend or to revoke the
patent.
(6)
While passing an order under sub-section (5) in respect of the ground mentioned
in clause (d) or clause (e) of sub-section (3), the Controller shall not take
into account any personal document or secret trial or secret
use.
(7) In
case the Controller issues an order under sub-section (5) that the patent shall
be maintained subject to amendment of the specification or any other document,
the patent shall stand amended accordingly.
26. In
cases of “obtaining” Controller may treat the patent as the patent of
opponent.-- (1)
Where in any opposition proceeding under this Act the Controller finds that–
(a) the
invention, so far as claimed in any claim of the complete specification, was
obtained from the opponent in the manner set out in clause (a) of sub-section
(3) of section 25 and revokes the patent on that ground, he may, on request by
such opponent made in the prescribed manner, direct that the patent shall stand
amended in the name of the opponent;
(b) a part of
an invention described in the complete specification was so obtained from the
opponent, he may pass an order requiring that the specification be amended by
the exclusion of that part of the invention.
(2) Where an opponent has, before
the date of the order of the Controller requiring the amendment of a complete
specification referred to in clause (b) of sub-section (1), filed an application
for a patent for an invention which included the whole or a part of the
invention held to have been obtained from him and such application is pending,
the Controller may treat such application and specification in so far as they
relate to the invention held to have been obtained from him, as having been
filed, for the purposes of this Act relating to the priority dates of claims of
the complete specification, on the date on which the corresponding document was
or was deemed to have been filed by the patentee in the earlier application but
for all other purposes the application of the opponent shall be proceeded with
as an application for a patent under this Act.”.
Section 27 of
the principal Act shall be omitted.
25. Amendment
of section 28.--
In section 28
of the principal Act,–
(a) for sub-section (4), the
following sub-section shall be substituted, namely:–
“(4) A request or claim under the
foregoing provisions of this section shall be made before the grant of
patent.”;
(b) sub-section (5) shall be
omitted;
(c) in sub-section (6), for the
words, brackets and figure “Subject to the provisions of sub-section (5),
where”, the word “Where” shall be substituted.
26. Amendment
of section 31.--
In section 31
of the principal Act, for the words “not later than six months”, the words “not
later than twelve months” shall be substituted.
27. Amendment
of section 34.--
In section 34
of the principal Act, the words “to accept complete specification for a patent
or ” shall be omitted.
28. Amendment
of section 35.--
In section 35
of the principal Act, in sub-section (3), for the words “acceptance of complete
specification”, the words “grant of patent” shall be substituted.
29. Amendment
of section 36.--
In section 36
of the principal Act, in sub-section (1), for the words “twelve months”, the
words “six months” shall be substituted.
30. Amendment
of section
37.--
In section 37
of the principal Act,–
(a) in
sub-section (1),–
(i) in clause
(a), for the words “to accept”, the words “to grant” shall be substituted;
(ii) for the proviso, the
following proviso shall be substituted, namely:–
“Provided that the application
may, subject to the directions, proceed up to the stage of grant of the patent,
but the application and the specification found to be in order for grant of the
patent shall not be published, and no patent shall be granted in pursuance of
that application.”;
(b) in sub-section (2), for the
words “is accepted”, the words “is found to be in order for grant of the patent”
shall be substituted.
31. Substitution
of new section for section 39.--
For section 39 of the principal
Act, the following section shall be substituted, namely:–
“39. Residents
not to apply for patents outside India without prior
permission.-- (1)
No person resident in India shall, except under the authority of a written
permit sought in the manner prescribed and granted by or on behalf of the
Controller, make or cause to be made any application outside India for the grant
of a patent for an invention unless–
(a) an
application for a patent for the same invention has been made in India, not less
than six weeks before the application outside India; and
(b) either no
direction has been given under sub-section (1) of section 35 in relation to the
application in India, or all such directions have been revoked.
(2) The
Controller shall dispose of every such application within such period as may be
prescribed:
Provided that
if the invention is relevant for defence purpose or atomic energy, the
Controller shall not grant permit without the prior consent of the Central
Government.
(3) This
section shall not apply in relation to an invention for which an application for
protection has first been filed in a country outside India by a person resident
outside India.”.
32. Substitution
of heading of Chapter VIII.--
In Chapter VIII
of the principal Act, for the Chapter heading “GRANT
AND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY”, the Chapter
heading “GRANT
OF PATENTS AND RIGHTS CONFERRED THEREBY” shall be
substituted.
33. Substitution
of new section for section 43.--
For section 43
of the principal Act, the following section shall be substituted, namely:–
“43.
Grant
of patents.-- (1)
Where an application for a patent has been found to be in order for
grant
of the patent and either–
(a) the
application has not been refused by the Controller by virtue of any power vested
in him by this Act; or
(b) the
application has not been found to be in contravention of any of the provisions
of this Act,
the patent shall be granted as
expeditiously as possible to the applicant or, in the case of a joint
application, to the applicants jointly, with the seal of the patent office and
the date on which the patent is granted shall be entered in the register.
(2) On the grant of patent, the
Controller shall publish the fact that the patent has been granted and thereupon
the application, specification and other documents related thereto shall be open
for public inspection.”.
34. Amendment
of section 44.--
In section 44
of the principal Act, for the word “sealed”, at both the places where it occurs,
the word “granted” shall be substituted.
35. Amendment
of section 45.--
In section 45
of the principal Act, in sub-section (3), for the words “the date of
advertisement of the acceptance of the complete specification”, the words “the
date of publication of the application” shall be substituted.
36. Amendment
of section 48.--
In section 48
of the principal Act, the proviso shall be omitted.
37. Amendment
of section 52.--
In section 52
of the principal Act,–
(a) in
sub-section (1),–
(i) for the
opening words “Where a patent has been revoked”, the words and figures “Where
the patent has been revoked under section 64” shall be substituted;
(ii) for the
word, “court”, wherever it occurs, the words “Appellate Board or court” shall be
substituted;
(b) in sub-section (2), for the
word “court”, occurring at both the places, the words “Appellate Board or court”
shall be substituted.
38. Amendment
of section 53.--
In section 53 of the principal
Act,–
(a) after
sub-section (1), the following Explanation shall be inserted, namely:–
“Explanation.–For
the purposes of this sub-section, the term of patent in case of International
applications filed under the Patent Cooperation Treaty designating India, shall
be twenty years from the international filing date accorded under the Patent
Cooperation Treaty.”;
(b) in
sub-section (2), for the words “or within that period as extended under this
section”, the words “or within such extended period as may be prescribed” shall
be substituted;
(c) sub-section (3) shall be
omitted.
39. Amendment
of section 54.--
In section 54 of the principal
Act,–
(a) in sub-section (3), for the
words “complete specification”, occurring at both the places, the word
“application” shall be substituted;
(b) for sub-section (4), the
following sub-section shall be substituted, namely:–
“(4) A patent of addition shall
not be granted before grant of the patent for the main invention.”.
40. Amendment
of section 57.--
In section 57 of the principal
Act,–
(a) for sub-section (3), the
following sub-section shall be substituted, namely:–
“(3) Any application for leave to
amend an application for a patent or a complete specification or a document
related thereto under this section made after the grant of patent and the nature
of the proposed amendment may be published.”;
(b) in sub-section (4),–
(i) for the word “advertised”, the
word “published” shall be substituted;
(ii) for the word “advertisement”,
the word “publication” shall be substituted;
(c) for sub-section (6), the
following sub-section shall be substituted, namely:–
“(6) The provisions of this
section shall be without prejudice to the right of an applicant for a patent to
amend his specification or any other document related thereto to comply with the
directions of the Controller issued before the grant of a patent.”.
41. Substitution
of new section for section 58.--
For section 58 of the principal
Act, the following section shall be substituted, namely:–
“58. Amendment
of specification before Appellate Board or High Court.--
(1) In any proceeding
before the Appellate Board or the High Court for the revocation of a patent, the
Appellate Board or the High Court, as the case may be, may, subject to the
provisions contained in section 59, allow the patentee to amend his complete
specification in such manner and subject to such terms as to costs,
advertisement or otherwise, as the Appellate Board or the High Court may think
fit, and if, in any proceedings for revocation, the Appellate Board or the High
Court decides that the patent is invalid, it may allow the specification to be
amended under this section instead of revoking the patent.
(2) Where an application for an
order under this section is made to the Appellate Board or the High Court, the
applicant shall give notice of the application to the Controller, and the
Controller shall be entitled to appear and be heard, and shall appear if so
directed by the Appellate Board or the High Court.
(3) Copies of all orders of the
Appellate Board or the High Court allowing the patentee to amend the
specification shall be transmitted by the Appellate Board or the High Court to
the Controller who shall, on receipt thereof, cause an entry thereof and
reference thereto to be made in the register.”.
42. Amendment
of section 59.--
In section 59 of the principal
Act, for sub-section (2), the following subsection shall be substituted,
namely:–
“(2) Where after the date of grant
of patent any amendment of the specification or any other documents related
thereto is allowed by the Controller or by the Appellate Board or the High
Court, as the case may be,–
(a) the amendment shall for all
purposes be deemed to form part of the specification along with other documents
related thereto;
(b) the fact that the
specification or any other documents related thereto has been amended shall be
published as expeditiously as possible; and
(c) the right of the applicant or
patentee to make amendment shall not be called in question except on the ground
of fraud.”.
43. Amendment
of section 60.--
In section 60 of the principal
Act, in sub-section (1), for the words, brackets and figures “prescribed period
or within that period as extended under sub-section (3) of section 53”, the
words, figures and brackets “period prescribed under section 53 or within such
period as may be allowed under sub-section (4) of section 142” shall be
substituted.
44. Amendment
of section 61.--
In section 61 of the principal
Act, in sub-section (1), for the words “advertise the application”, the words
“publish the application” shall be substituted.
45. Amendment
of section 62.--
In section 62 of the principal
Act,–
(a) in sub-section (1), for the
word “advertisement”, the word “publication” shall be substituted;
(b) in sub-section (2), for the
words “date of the advertisement”, the words “date of publication” shall be
substituted.
46. Amendment
of section 63.--
In section 63 of the principal
Act,–
(a) in sub-section (2), for the
word “advertise”, the word “publish” shall be substituted;
(b) in sub-section (3), for the
words “such advertisement”, the words “such publication” shall be substituted.
47. Amendment
of section 64.--
In section 64 of the principal
Act, in sub-section (1), for the words “on the petition of any person interested
or of the Central Government or on a counter claim in a suit for
infringement of the patent, be revoked by the High Court”, the words “be revoked
on a petition of any person interested or of the Central Government by the
Appellate Board or on a counter-claim in a suit for Infringement of the patent
by the High Court” shall be substituted.
48. Substitution
of new section for section 65.--
For section 65 of the principal
Act, the following section shall be substituted, namely:–
“65. Revocation
of patent or amendment of complete specification on directions from Government
in cases relating to atomic energy.--
(1) Where at any time
after grant of a patent, the Central Government is satisfied that a patent is
for an invention relating to atomic energy for which no patent can be granted
under sub-section (1) of section 20 of the Atomic Energy Act, 1962(33 of
1962.), it may direct
the Controller to revoke the patent, and thereupon the Controller, after giving
notice, to the patentee and every other person whose name has been entered in
the register as having an interest in the patent, and after giving them an
opportunity of being heard, may revoke the patent.
(2) In any proceedings under
sub-section (1), the Controller may allow the patentee to amend the complete
specification in such manner as he considers necessary instead of revoking the
patent.”.
49. Substitution
of new section for section 68.--
For section 68
of the principal Act, the following section shall be substituted, namely:–
“68.
Assignments,
etc., not to be valid unless in writing and duly executed.--An assignment
of a patent or of a share in a patent, a mortgage, licence or the creation of
any other interest in a patent shall not be valid unless the same were in
writing and the agreement between the parties concerned is reduced to the form
of a document embodying all the terms and conditions governing their rights and
obligations and duly executed.”.
50. Amendment
of section 74.--
In section 74
of the principal Act, for sub-section (2), the following subsection shall
be substituted, namely:–
“(2) The Central Government may,
by notification in the Official Gazette, specify the name of the Patent
Office.”.
51. Amendment
of section 78.--
In section 78 of the principal
Act,–
(a) in
sub-section (4), for the word “advertised”, the word “published” shall be
substituted;
(b) in
sub-section (5), for the words “such advertisement”, the words “such
publication” shall be substituted.
52. Amendment
of section 87.--
In section 87
of the principal Act, in sub-section (1), for the words “shall advertise the
application in the Official Gazette”, the words “shall publish the application
in the official journal” shall be substituted.
53. Amendment
of section 90.--
In section 90
of the principal Act, in sub-section (1), for clause (vii), the following shall
be substituted, namely: –
“(vii) that in the case of
semi-conductor technology, the licence granted is to work the invention for
public non-commercial use or to remedy a practice determined after judicial or
administrative process to be anti-competitive;
(viii) that the licence is granted
with a predominant purpose of supplying in the Indian market:
Provided that the licensee may
also export the patented product in accordance with section 92A:
Provided further that in case the
licence is granted to remedy a practice determined after judicial or
administrative process to be anti-competitive, the licensee shall be permitted
to export the patented product.”.
54. Insertion
of new section 92A.--
After section 92 of the principal
Act, the following section shall be inserted, namely:–
“92A. Compulsory
licence for export of patented pharmaceutical products in certain exceptional
circumstances.-- (1) Compulsory licence shall be
available for manufacture and export of patented pharmaceutical products to any
country having insufficient or no manufacturing capacity in the pharmaceutical
sector for the concerned product to address public health problems, provided
compulsory licence has been granted by such country.
(2) The
Controller shall, on receipt of an application in the prescribed manner, grant a
compulsory licence solely for manufacture and export of the concerned
pharmaceutical product to such country under such terms and conditions as may be
specified and published by him.
(3) The
provisions of sub-sections (1) and (2) shall be without prejudice to the extent
to which pharmaceutical products produced under a compulsory license can be
exported under any other provision of this Act.
Explanation.–For the purposes of
this section, ‘pharmaceutical products’ means any patented product, or product
manufactured through a patented process, of the pharmaceutical sector needed to
address public health problems and shall be inclusive of ingredients necessary
for their manufacture and diagnostic kits required for their use.”.
55. Amendment
of section 100.--
In section 100
of the principal Act, in sub-section (3), for the words “the acceptance of the
complete specification in respect of the patent”, the words “grant of the
patent” shall be substituted.
56. Amendment
of section 105.--
In section 105
of the principal Act, in sub-section (4), for the words “after the date of
advertisement of acceptance of the complete specification of a patent”, the
words “after the publication of grant of a patent” shall be substituted.
57.
Amendment
of section
107A.--
In section 107A of the principal
Act,–
(a) in clause
(a),–
(i) for the
words “using or selling”, the words “using, selling or importing” shall be
substituted;
(ii) for the
words “use or sale,” the words “use, sale or import” shall be substituted;
(b) in clause (b), for the words
“who is duly authorised by the patentee to sell or distribute the product”, the
words “who is duly authorised under the law to produce and sell or distribute
the product” shall be substituted.
58. Amendment
of section 113.--
In section 113 of the principal
Act,–
(a) for sub-section (1), the
following sub-section shall be substituted, namely:–
“(1) If in any proceedings before
the Appellate Board or a High Court for the revocation of a patent under section
64 and section 104, as the case may be, the validity of any claim of a
specification is contested and that claim is found by the Appellate Board or the
High Court to be valid, the Appellate Board or the High Court may certify that
the validity of that claim was contested in those proceedings and was
upheld.”;.
(b) for sub-section (3), the
following sub-section shall be substituted, namely:–
“(3) Nothing contained in this
section shall be construed as authorising the courts or the Appellate Board
hearing appeals from decrees or orders in suits for infringement or petitions
for revocation, as the case may be, to pass orders for costs on the scale
referred to therein.”.
59. Amendment
of section 116.--
In section 116 of the principal
Act [as substituted by section 47 of the Patents (Amendment) Act, 2002
(38 of
2002)], in
sub-section (2), clause (c) shall be omitted.
60. Amendment
of section 117A.--
In section 117A of the principal
Act [as inserted by section 47 of the Patents (Amendment) Act, 2002(38 of
2002)], in
sub-section (2), for the words and figures “section 20, section 25, section 27,
section 28”, the words, figures and brackets “section 20, sub-sections (5) of
section 25, section 28” shall be substituted.
61. Amendment
of section 117D.--
In section 117D of the principal
Act [as inserted by section 47 of the Patents (Amendment) Act, 2002], in
sub-section (1), for the words, “for rectification of the register”, the words
and figures “for revocation of a patent before the Appellate Board under section
64 and an application for rectification of the register” shall be
substituted.”.
62. Substitution
of new section for section 117G.--
For section 117G of the principal
Act [as inserted by the Patents (Amendment) Act, 2002(38 of
2002)], the following
section shall be substituted, namely:–
“117G. Transfer
of pending proceedings to Appellate Board.--
All cases of appeals
against any order or decision of the Controller and all cases pertaining to
revocation of patent other than on a counter-claim in a suit for infringement
and rectification of register pending before any High Court, shall be
transferred to the Appellate Board from such date as may be notified by the
Central Government in the Official Gazette and the Appellate Board may proceed
with the matter either de novo or from the stage it was so transferred.”.
63. Amendment
of section 120.--
In section 120 of the principal
Act, for the words, “ten thousand rupees”, the words “one lakh rupees” shall be
substituted.
64. Amendment
of section 122.--
In section 122 of the principal
Act, in sub-section (1), for the words, “twenty thousand rupees”, the words “ten
lakh rupees” shall be substituted.
65. Amendment
of section 123.--
In section 123 of the principal
Act, for the words, “ten thousand rupees in the case of a first offence and
forty thousand rupees”, the words “one lakh rupees in the case of a first
offence and five lakh rupees” shall be substituted.
66. Amendment
of section 126.--
In section 126 of the principal
Act,–
(a) in sub-section (1), in clause
(c), sub-clause (i) shall be omitted;
(b) in sub-section (2), for the
words, brackets and figures “the Patents (Amendment) Act, 2002 (38 of
2002.)”, the words,
“the Patents (Amendment) Ordinance, 2004” shall be substituted.
67. Substitution
of new section for section 133.--
For section 133
of the principal Act, the following section shall be substituted, namely:–
“133.
Convention
countries.--
Any country,
which is a signatory or party or a group of countries, union of countries or
intergovernmental organizations which are signatories or parties to an
international, regional or bi-lateral treaty, convention or arrangement to which
India is also a signatory or party and which affords to the applicants for
patents in India or to citizens of India similar privileges as are granted to
their own citizens or citizens to their member countries in respect of the grant
of patents and protection of patent rights shall be a convention country or
convention countries for the purposes of this Act.”.
68. Amendment
of section 135.--
In section 135
of the principal Act, after sub-section (2), the following subsection shall
be inserted, namely:–
“(3) In case of an application
filed under the Patent Cooperation Treaty designating India and claiming
priority from a previously filed application in India, the provisions of
sub-sections (1) and (2) shall apply as if the previously filed application were
the basic application:
Provided that a request for
examination under section 11B shall be made only for one of the applications
filed in India.”.
69. Amendment
of section 138.--
In section 138
of the principal Act, for sub-section (1), the following subsection shall
be substituted, namely:–
“(1) Where a
convention application is made in accordance with the provisions of this
Chapter, the applicant shall furnish, when required by the Controller, in
addition to the complete specification, copies of the specifications or
corresponding documents filed or deposited by the applicant in the patent office
of the convention country as referred to in section 133 verified to the
satisfaction of the Controller, within the prescribed period from the date of
communication by the Controller.”.
70. Amendment
of section 142.--
In section 142
of the principal Act, in sub-section (4), for the words, “the complete
specification”, the words, “the application” shall be substituted.
71. Substitution
of new section for section 143.--
For section 143
of the principal Act, the following section shall substituted, namely:–
“143.
Restrictions upon publication of specification.--
Subject to the
provisions of Chapter VII, an application for a patent, and any specification
filed in pursuance thereof, shall not, except with the consent of the applicant,
be published by the Controller before the expiration of the period prescribed
under sub-section (1) of section 11A or before the same is open to public
inspection in pursuance of sub-section (3) of section 11A or section 43.”.
72. Substitution
of new section for section 145.--
For section 145
of the principal Act, the following section shall substituted, namely:–
“145.
Publication
of official journal.-- The
Controller shall publish periodically an official journal which.
shall
contain such information as may be required to be published by or under the
provisions of this Act or any rule made thereunder.”.
73. Amendment
of section
151.--
In section 151 of the principal
Act,–
(a) in
sub-section (1), for the words, “the High Court”, occurring at the places, the
words “the High Court or the Appellate Board” shall be substituted;
(b) in
sub-section (3), for the word “courts”, the words “Appellate Board or the
courts, as the case may be,” shall be substituted.
74. Omission
of section
152.--
Section 152 of the principal Act
shall be omitted.
75. Amendment
of section 159.--
In section 159 of the principal
Act,–
(i) in sub-section (2),–
(a) for clauses (ia) and (ib), the
following clauses shall be substituted, namely:–
“(ia) the period which the
Controller may allow for filing of statement and undertaking for in respect of
applications under sub-section (1), the period within which the details relating
to processing of applications may be filed before the Controller and the details
to be furnished by the applicant to the Controller under sub-section (2) of
section 8;
(ib) the period within which a
reference to the deposit of materials shall be made in the specification under
sub-clause (A) of clause (ii) of the proviso to sub-section (4) of section 10;
(ic) the period for which
application for patent shall not be open to the public under sub-section (1) and
the manner in which the applicant may make a request to the Controller to
publish his application under subsection (2) of section 11A;
(id) the manner of making the
request for examination for an application for patent and the period within
which such examination shall be made under sub-sections (1) and (3) of section
11B;
(ie) the manner in which an
application for withdrawal of an application for grant of a patent shall be made
and the period within which a request for examination from the date of
revocation of secrecy directions shall be made under the proviso to sub-section
(4) of section 11B.”;
(b) in clause (ii), for the word
“advertised”, the words “published” shall be substituted;
(c) for clause (v), the following
clauses shall be substituted, namely:–
“(v) the manner in which and the
period within which the Controller shall consider and dispose off a
representation under sub-section (1) of section 25;
(va) the period within which the
Controller is required to dispose off an application under section 39;”;
(ii) in sub-section (3), the
following proviso shall be added at the end, namely:–
“Provided that the Central
Government may, if it is satisfied that circumstances exist which render it
practically not possible to comply with such condition of previous publication,
dispense with such compliance.”.
76. Omission
of section 163.--
Section 163 of the principal Act
shall be omitted.
(1) Notwithstanding the omission
of Chapter IVA of the principal Act by section 21 of this Ordinance, every
application for the grant of exclusive marketing rights filed under that Chapter
before the 1st
day of January,
2005, in respect of a claim for a patent covered under sub-section (2) of
section 5 of the principal Act, such application shall be deemed to be treated
as a request for examination for grant of patent under sub-section (3) of
section 11B the principal Act, as amended by this Ordinance.
(2) Every
exclusive right to sell or distribute any article or substance in India granted
before the 1st
day of January,
2005 shall continue to be effective with the same terms and conditions on which
it was granted.
(3) Without
prejudice to any of the provisions of the principal Act, the applications in
respect of which exclusive rights have been granted before the
1st
day of January,
2005 shall be examined for the grant of patent immediately on the commencement
of this Ordinance.
(4) All suits
relating to infringement of the exclusive right granted before
1st
day of January,
2005 shall be dealt with in the same manner as if they were suits concerning
infringement of patents under Chapter XVIII of the principal Act.
(5) The
examination and investigation required as carried out for the grant of exclusive
right shall not be deemed in any way to warrant the validity of any grant of
exclusive right to sell or distribute, and no liability shall be incurred by the
Central Government or any officer thereof by reason of, or in connection with,
any such examination or investigation or any report or other proceedings
consequent thereon.
A.P.J.ABDUL
KALAM,
President.
T.K.VISWANATHAN,
Secy. to the Govt. of India.