The Article highlights and explains the various Rights, obligations conferred
to a patentee and also explains the various Limitations of the Patent Rights.
Intellectual Property refers to creations of the mind for which exclusive rights
are recognised. It is a set of legal rights granted to individuals for their
creative and intellectual works. These rights allow the creators to have a
monopoly over their creations. Intellectual Property includes Patents,
Trademarks, Industrial Designs, Copyrights etc. The main motive of Intellectual
Property Rights is to provide incentives for innovations and creativity and also
enabling creators to benefit from their work.
What is a Patent?
The word patent originates from the Latin term 'Patere' which means 'To lay
open'. The Patent System in India is governed by the Indian Patents Act, 1970. A
patent is a form of Intellectual property that grants exclusive rights for an
invention to its inventor. Section 2(1)(m) of the Indian Patents Act, 1970
defines a Patent as: "patent" means a patent for any invention granted under
this Act. It is a statutory right for an invention granted for a limited period
of time to the patentee by the Government, in exchange of full disclosure of his
invention for excluding others, from making, using, selling, importing the
patented product or process.
Essentials for Grant of a Patent:
- Novelty: Invention must be new or novel, that is it should not be known to the public.
- Non-Obviousness: Any invention made by a person should be non-obvious to that person.
- Capable of Industrial Application: An invention to be patented must be capable of being made or used in an industry.
- Usefulness: For an invention to be patented, it should be useful to society. Inventions that are not useful cannot be patented.
- Should Not Fall within the scope of Non-Patentable Inventions: Lastly, for an invention to be patented, it should not attract the provisions of Section 3 & 4 of the Indian Patents Act, 1970, which lists down various non-patentable inventions.
Who Is a Patentee?
The person to whom a patent is granted is a patentee. The patentee has a legal
interest in the patent. The patent is his property. The Patentee is entitled to
deal with his property in the same manner as the owner of any other movable
property. This gives the patentee exclusive rights to prevent others from
making, using, exercising or selling the patented product and also prevents
others from using or exercising the process or method.
Section 48 of the Indian Patents Act 1970 mentions about the rights of the
Patentee. These exclusive rights are granted by the government as an incentive
to inventors to create new and useful inventions.
All of the Rights granted to a patentee are conditional, they are subject to
conditions imposed under section 47 of the Indian Patent Act, 1970.
Rights Of a PatenteeThe Rights conferred to a Patentee are not absolute rights. Following are the
Rights of a Patentee:
Right to Exploit the Patent
A patentee has the exclusive right to make, use, exercise, sell, or distribute the patented product or to use or exercise the method or process if the patent is for a process. The right can be exercised by the patentee himself or by his agents or licensees. These rights conferred to a patentee are exercisable only during the term of the patent. The term of the patent shall be 20 years from the date of filing the patent application. The patent will be in force only as long as the prescribed renewal fees are paid.
Right to License
Section 70 of the Indian Patents Act, 1970, confers the right on a grantee or proprietor of a patent to grant licenses. The patentee can grant licenses to others to use the patented invention in exchange for consideration. Where there are co-owners of the patented product, all the patent owners must collectively grant the license to the third party. The license should be in writing and must be documented (Registered) with the Controller of Patent.
Right to Assign
Section 70 of the Indian Patents Act, 1970 confers the right on a patentee to assign his patent to others fully or partially. The Assignment should be in writing and must be documented (Registered) with the Controller of Patent.
Right to Surrender the Patent
Section 63 of the Indian Patents Act, 1970, allows a patentee to surrender a patent. There is no obligation to maintain the monopoly right on the patent for the entire term of 20 years. The patentee may surrender the patent at any time he desires.
The patentee has to make an application of surrender before the Controller. The Controller then publishes the application of surrender in the official gazette to enable interested persons to oppose the same. If any third person has any interest in the patent, he must issue a notice to the Controller opposing the surrender. The Controller if satisfied that there are sufficient grounds for opposition, he calls both the parties for a hearing and decides upon the same.
Right to Sue for Infringement
Infringement occurs when the Patentees rights are violated. It may consist the violation of any right to make, use, sell, or distribute the invention. The Patentee, his Assignee, Licensee or Agent has the right to file a civil suit for infringement in a court not lower than the District Court. If it is established that the Patentees Rights has been violated by the defendant, the court will either grant an injunction or award damages for the same.
Right to be issued a Duplicate Patent
Section 154 of the Indian Patents Act, 1970, mentions about Loss or Destruction of Patents. Patentee has a right to apply for a duplicate Patent if the Patent is lost, destroyed or if its non-production is explained satisfactorily to the Controller.
Right to make a Convention Application
Every Patentee in India has the right to make a Convention Application for protection of Patent in Convention Countries. This Right is based on the principle of reciprocity and national treatment of international law.
Right to make a Patent of Addition
Sections 54 to 56 of the Indian Patents Act, 1970, make provision for Patent of Addition. This provision provides for modification in the existing invention. In this case, the Patent holder is granted the right to the modified invention after the notification of acceptance comes out. The owner is provided with the same rights as provided in the previous patent only when the notification is presented.
Obligations of a Patentee:
As the owner of a Patent, a Patentee has certain obligations to maintain and
enforce their rights in the patent. These obligations include:jkj
Duty to pay Statutory and Maintenance Fees:
With regards to the registration process, the Patentee must pay all the necessary statutory fees. Also, in order to keep a Patent in force, the Patentee must pay maintenance fees to the patent office at specified intervals throughout the life of the Patent. The Patent will be revoked if the Patentee fails to pay the maintenance fees.
Duty to Disclose the Patent:
Patents are granted in exchange for the public disclosure of the invention. The patentee is obligated to fully and accurately disclose the invention in the patent application, and to update the disclosure as necessary during the prosecution of the patent.
Duty to Request for Examination:
According to section 11B of the Indian Patents Act, 1970, No application for a patent will be examined unless the applicant or any other interested person makes a request for examination within the prescribed time period. The obligation is upon the Patentee to inquire with the Controller of Patent about the development of the patent.
Duty to work the Invention:
The Patentee must not sit idle on his invention on the belief to prevent others from making or using the invention. It is the duty of the Patentee to work on the invention in India, that is by actively commercializing the invention by manufacturing the product or by licensing the invention to others. Reasonable requirements of the public with respect to the patented invention should be satisfied. Also, these patented products should be made available to the public at reasonable prices.
Duty to Respond to Objections:
The First Examination Report (FER) prepared by the Patent Examiners may contain some objections. It is the duty of the Patentee to respond to such objections. The Patentee's application will be automatically rejected if the clarifications are not sought within a period of one year from the date of issue of the First Examination Report.
Duty to not Misuse the Patent:
The patentee cannot use their patent to violate any laws or regulations, harm the public interest, or unfairly dominate a market. The patentee must not make false or misleading statements about the invention in any advertising, marketing, or other promotional materials.
Limitations of Patent Rights:
Patent Rights are not absolute hence they are subject to certain limitations.
The Indian Patents Act, 1970, provides for certain limitations on the exercise
of such rights.
Following are the Limitations:
- Use of Patent by Government
Section 100 of the Indian Patents Act, 1970, provides that at any time after
the application for a patent has been filed at the patent office or the
patent has been granted, the central government may use the invention for
government purposes. The patent may be used or even acquired for its own
use. Government may also acquire a patent on payment of suitable
compensation. The right to make, use, exercise and vend an invention for the
purposes of Government, shall also include the right to sell.
- Compulsory Licenses
Section 84 of Indian Patents Act pertains to the grant of Compulsory
Licences. This section stipulates that any time after the expiration of
three years from the date of grant of patent, any interested person may make
an application to the controller for grant of compulsory license. Compulsory
license will be granted only after it fulfils the following conditions: (a)
That the reasonable requirements of the public with respect to the patented
invention have not been satisfied, (b) That the patented invention is not
available to the public at a reasonably affordable price, (c) That the
patented invention has not worked in the territory of India.
- Use of Invention for Defence Purposes
An application made before the Controller for a patent belongs to a class
notified by the central government as relevant for defence purpose only, the
controller may give a direction prohibiting or restraining the publication
of such information of the invention. The invention is subjected to Secrecy
Provisions. All orders passed by the controller or Central government with
regards to the secrecy shall be treated final and the same cannot be
challenged in any court of law.
- Restored Patents
For a patent to remain in force, renewal fees should be paid to the patent
office by the patentee. If he fails to pay the renewal fees in the specified
time period the patent lapses. The provisions under this Act provides for
restoration of Lapsed Patents. Section 60 to 63 of the Indian Patents Act
1970, deals with restoration of lapsed patents. Where a patent has lapsed
and subsequently has been restored, certain limitations are imposed on the
rights of the patentee. Where a patent is lapsed and it is subsequently
restored, no suit for infringement can be filed after the date on which the
patent ceased to have effect.
How are the Rights of a Patentee Enforced?
Enforcement arises only after the rights have been given to a person and there
has been an infringement of these rights conferred.
A Patentee can Enforce his Rights by:
- A Suit for infringement of Patent
- An action for specific performance of a contract
- An action for recovery of royalties
- Kewanee Oil Co. V. Bicron Corp., 416 U.S. 470 (1974)
In this case the US Supreme court identified three objectives of the patent;
first as an incentive to invent, promoting the full disclosures of
inventions, and ensuring that ideas in public domain remain.
- Edwards & Co. V. Picard 2  2 KB 903, 905 (CA)
In this case it was stated that the legal qualities of a patent are, not
that it confers upon the patentee a right to manufacture, for that he could
do without a patent, but that: It gives him monopoly in the Manufacture; It
creates in him the right of action to prevent anyone from manufacturing; It
creates in him the right to bring an action for infringement for which the
remedy will be injunction or damages or both; It is a legal right.
Patents are essential for protecting intellectual property, encouraging
innovation and investment by giving inventors exclusive rights to their
inventions for a limited period. Patents also helps in promoting competition and
growth in the global economy. Being a Patentee comes with both rights and
responsibilities, and it is important that the Patentee understands and fulfils
his obligations to protect and maintain its Intellectual Property.
Award Winning Article Is Written By: Mr.Jonus Issac D'Souza, Student of V.M. Salgaocar College of Law Panaji- Goa.
Authentication No: OT329379889791-20-1023