Rights and Obligations of a Patentee

Meaning of Patent

• A patent is a legal instrument that provides inventors with a set of exclusive rights to their inventions, granting them a temporary monopoly on the creation, use, and commercialization of their innovations.
• This statutory grant, typically effective for 20 years from the date of filing, aims to incentivize innovation by offering inventors the opportunity to reap the benefits of their ingenuity.
• The core purpose of patent protection is to allow inventors to exclude others from making, using, selling, or importing the patented invention without permission, thereby securing a competitive advantage and potential financial returns.
• While a patent does not confer the right to use the invention itself meaning the patentee must still navigate other legal or regulatory requirements to exploit their invention it does provide a mechanism to prevent others from doing so. This exclusivity is granted in exchange for the public disclosure of the invention, contributing to the broader pool of technological knowledge and fostering further innovation.
• The patent system, as outlined by the Indian Patents Act, 1970, requires the completion of several procedural steps, including the submission and approval of a patent application.
• The aim is to balance the interests of the inventor with public access to new technologies, ensuring that the benefits of patent protection are realized while promoting ongoing advancements in various fields. The rights and limitations associated with patents are designed to uphold this balance, offering inventors protection while also serving the public interest.

Rights of a Patentee

Under the patent laws, a patentee is granted several rights which include:

1. Exclusive Right to Exploit the Invention

The patentee has the exclusive right to make, use, sell, or distribute the patented invention. This right is defined under Section 48 of the Indian Patents Act, 1970[1], which grants the patentee the ability to control how the invention is used and commercialized. This right can be exercised by the patentee directly or through agents or licensees and remains in effect for the duration of the patent, subject to the payment of renewal fees.

2. Right to License the Patent

Under Section 70 of the Indian Patents Act, 1970[2], the patentee can grant licenses to others to use the patented invention. This provision allows the patentee to earn revenue from the patent by permitting third parties to exploit the invention. If multiple owners hold the patent, all must collectively agree to grant licenses, and such licenses must be documented in writing and registered with the Controller of Patents.

3. Right to Assign the Patent

Section 69(5) of the Indian Patents Act, 1970[3], provides the right to assign or transfer the patent to others. The assignment must be made in writing and registered with the Patent Authority. This provision allows the patentee to sell or transfer their rights in the patent, facilitating changes in ownership and strategic decisions.

4. Right to Surrender the Patent

As per Section 63 of the Indian Patents Act, 1970[4], the patentee has the option to surrender their patent before the end of its term. The patentee must submit a surrender application to the Controller, who will publish the application in the official gazette. Interested parties can oppose the surrender, and a hearing may be held if the Controller finds sufficient grounds for opposition.

5. Right to Sue for Infringement

Section 104A of the Indian Patents Act, 1970[5], provides the patentee with the right to file a civil suit for infringement if their patent rights are violated. This section allows the patentee to seek remedies such as injunctions to stop the unauthorized use or distribution of the invention and damages for any losses suffered. Legal proceedings must be conducted in a court with appropriate jurisdiction, typically starting with a District Court.

6. Right to Obtain a Duplicate Patent

Section 154 of the Indian Patents Act, 1970[6], addresses the issuance of a duplicate patent. If the original patent document is lost, destroyed, or otherwise unavailable, the patentee can apply for a duplicate. This provision ensures that the patentee can continue to enforce their rights and benefit from the patent even if the original document is no longer in their possession.

7. Right to Make a Convention Application

Section 135 of the Indian Patents Act, 1970[7], provides the right to make a Convention Application for patent protection in other Convention countries. This right is based on principles of reciprocity and national treatment, allowing the patentee to secure patent rights in multiple jurisdictions.

8. Right to Make a Patent of Addition

Sections 54 to 56 of the Indian Patents Act, 1970, detail the provisions for a Patent of Addition. This allows the patentee to apply for a patent for modifications or improvements to the existing invention. The new patent, granted after the acceptance of the modification, provides the same exclusive rights as the original patent, subject to the statutory conditions.

Obligations of Patentee

Though the Patents Act of 1970 offers considerable rights of patentees, it places particular obligations on all those entitled to that property, including the protection of public interest. Those obligations of patentees include:

1. Duty to Disclose the Patent

Under Section 8 of the Indian Patents Act, 1970[8], the patentee is required to disclose detailed information about the invention to the public. Specifically, Section 8(1) mandates that the patentee disclose all necessary data related to any remote application of similar or identical inventions documented at the time of filing or within six months thereafter.[9] This includes recording all listed specifications in the patent application and making efforts to disclose any relevant points in future applications. Section 8(2) further obliges the patentee to provide any additional information requested by the Controller regarding the invention within six months of such a request.[10]

2. Duty to Request for Examination

Section 11(B) of the Patents Act, 1970[11], stipulates that the patentee must actively request the examination of their patent application. Unlike other intellectual property rights, there is no automatic examination process. The patentee must submit a request for examination within the prescribed period to ensure that the application is reviewed and considered for grant.

3. Duty to Respond to Objections

Following the examination request, the Patent Controller issues a First Examination Report (FER), which may contain objections. The patentee is obligated to respond to these objections within one year from the date of issuance of the FER. Failure to address the objections in a timely manner results in the automatic abandonment of the patent application.

4. Duty to Clear All Objections

The patentee must resolve all objections raised against their invention during the examination process. If the Patent Controller has not addressed these objections adequately, the patentee may need to attend a hearing. Persistent failure to clear objections can result in the patent being transferred to an objecting party, as the Patent Controller has the authority to assign the patent rights accordingly.

5. Duty to Pay Statutory Fees

Section 142 of the Patents Act, 1970,[12] outlines the obligation of the patentee to pay all statutory fees associated with the patent registration process. This includes initial registration fees and maintenance fees required to keep the patent in force. Failure to make these payments can lead to the patent being considered for revocation or non-grant.

6. Duty to Work the Invention

The patentee is required to actively work the invention in India, as specified under Section 83 of the Patents Act, 1970[13]. This obligation can be fulfilled by either manufacturing the patented product or licensing it to others. The purpose is to ensure that the invention is available to the public at reasonable prices and meets the reasonable requirements of the public. If the patentee fails to work on the invention within three years from the date of grant or discontinues its working for more than two years, any interested party may apply for a compulsory license.

7. Duty to Not Misuse the Patent

The patentee must avoid using the patent to contravene laws, harm public interest, or unfairly dominate the market. According to Section 84, any misuse, such as making false or misleading statements about the invention in advertisements or promotional materials, is prohibited.[14] The patentee must ensure ethical use of the patent and maintain compliance with relevant regulations.

8. Duty to Request an Inspection

In line with Section 11B of the Patents Act, 1970,[15] the patentee must request an inspection or re-examination of the patent application within the prescribed period. This is necessary to confirm the appropriate evaluation and processing of the patent application.

Limitations

The exclusive rights conferred by a patent are subject to certain exceptions and limitations:

1. Restrictions on Private and Non-Commercial Use

The patent system in India limits the scope of patent rights, particularly concerning private and non-commercial use. Under the Indian Patents Act of 1970, patent holders cannot use their patents solely for personal gain or monopolize commercial activities. The government may intervene if a patent holder is not leveraging the patented invention for commercial purposes, potentially granting a compulsory license to a third party. This provision is outlined in Sections 84 and 92 of the Patents Act[16], which address the need for mandatory licenses when the patented product is not accessible to the public at affordable prices. Section 85 further provides for the revocation of patents by the Controller in cases of non-use.

2. Exception for Experimental or Scientific Use

Section 47(3) of the Patents Act[17] permits individuals to use patented processes or products for scientific experimentation and research. This exception is designed to protect bona fide research and experimental activities, allowing third parties to engage in such research without infringing on the patent holder’s rights.

3. Regulatory-Use/Prior-Use Exemption

Section 107A of the Indian Patents Amendment Act, 2005[18], introduces a regulatory-use exemption, commonly known as the Bolar provision. This provision allows manufacturers of generic drugs to use patented products for research and development purposes, enabling them to seek marketing approval beyond India’s borders. However, generic manufacturers can only produce, use, and sell the product post-expiry of the patent, which lasts 14 years from the date of filing the patent application.

4. Exhaustion of Patent Rights

The doctrine of patent exhaustion dictates that once a patented product is sold in the market, the patent holder’s exclusive rights are exhausted. This means that after the first unrestricted sale of the patented product, the patent holder loses control over the product. The rationale is that the patent’s purpose—providing exclusive rights in exchange for public disclosure—is fulfilled once the product enters the market.

5. Use of Patent by Government

Section 100 of the Patents Act[19] grants the central government the right to use patented inventions for governmental purposes. This includes acquiring and using patents, with appropriate compensation. The government’s rights extend to making, using, and distributing the patented invention, including its sale.

6. Compulsory Licenses[20]

Section 84 outlines the conditions under which a compulsory license may be granted. After three years from the patent’s grant date, any interested party may apply for a compulsory license if:

• The public’s needs for the patented invention are not met.
• The invention is not available to the public at an affordable price.
• The patented invention is not being worked on in India.

7. Utilization of Invention for Defence Purposes

Patents classified by the central government as relevant for defence may be subject to secrecy provisions. The Controller may issue directives to restrict the publication of information regarding such inventions. Orders concerning secrecy are final and not subject to judicial review.

8. Restored Patents

Patents that lapse due to non-payment of renewal fees can be restored under Sections 60 to 63 of the Patents Act. However, once restored, certain limitations apply. Specifically, a patentee cannot file a suit for infringement for periods during which the patent was lapsed, emphasizing the importance of timely fee payment to maintain enforceable patent rights.

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[1] The Indian Patents Act, 1970, s. 48.

[2] Id. at s. 70.

[3] Id. at s. 69(5).

[4] Id. at s. 63.

[5] Id. at s. 104A.

[6] Id. at s. 154.

[7] Id. at s. 135.

[8] Id. at s. 8.

[9] Id. at s. 8(1).

[10] Id. at s. 8(2).

[11] Id. at s. 11B.

[12] Id. at s. 142.

[13] Id. at s. 83.

[14] Id. at s. 84.

[15] Id. at s. 11B.

[16] Id. at ss. 84, 92.

[17] Id. at s. 47(3).

[18] The Indian Patents Amendment Act, 2005, s. 107A

[19] The Patents Act, 1970, s. 100.

[20] Supra note at 14.