117E. Appearance of Controller in legal proceedings.—
(1) The Controller shall have the right to
appear and be heard—
(a) in any legal proceedings before the 1[High Court] in which the relief sought includes
alteration or rectification of the register or in which any question relating to the practice of the patent
office is raised;
(b) in any appeal to the 1[High Court] from an order of the Controller on an application for grant
of a patent—
(i) which is not opposed, and the application is either refused by the Controller or is accepted
by him subject to any amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Controller considers that his appearance is necessary in
the public interest,
and the Controller shall appear in any case if so directed by the 1[High Court].
(2) Unless the 1[High Court] otherwise directs, the Controller may, in lieu of appearing, submit a
statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before
him relating to the matter in issue or of the grounds of any decision given by him or of the practice of the
patent office in like cases, or of other matters relevant to the issues and within his knowledge as the
Controller may deem it necessary, and such statement shall be evidence in the proceeding.
117F. [Costs of Controller in proceedings before Appellate Board.] Omitted by the Tribunals
Reforms Act, 2021 (33 of 201), s. 13 (w.e.f. 4-4-2021).
117G. [Transfer of pending proceedings to Appellate Board.] Omitted by s. 13, ibid. (w.e.f. 4-4-
2021).
117H. [Power of Appellate Board to make rules.] Omitted by s. 13, ibid. (w.e.f. 4-4-2021).
CHAPTER XX
PENALTIES
118. Contravention of Secrecy provisions relating to certain inventions.—If any person fails to
comply with any direction given under section 35 2[or makes or causes to be made an application for the
grant of a patent in contravention of section 39], he shall be punishable with imprisonment for a term
which may extend to two years, or with fine, or with both.
119. Falsification of entries in register, etc.—If any person makes, or causes to be made, a false
entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in such a
register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing
knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may
extend to two years, or with fine or with both.
1. Subs. by Act 33 of 2021, s. 13, for “Appellate Board” (w.e.f. 4-4-2021).
2. Ins. by Act 38 of 2002, s. 48 (w.e.f. 20-5-2003).
54
120. Unauthorised claim of patent rights.—If any person falsely represents that any article sold by
him is patented in India or is the subject of an application for a patent in India, 1[he shall be liable to
penalty which may extend to ten lakh rupees, and in case of the continuing claim, a further penalty of one
thousand rupees for every day after the first during which such claim continues]
Explanation l.—For the purposes of this section, a person shall be deemed to represent—
(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise
applied to, the article the word “patent” or “patented” or some other word expressing or implying that
a patent for the article has been obtained in India;
(b) that an article is the subject of an application for a patent in India, if there are stamped,
engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent
pending”, or some other words implying that an application for a patent for the article has been made
in India.
Explanation 2.—The use of words “patent”, “patented”, “patent applied for”, “patent pending” or
other words expressing or implying that an article is patented or that a patent has been applied for shall be
deemed to refer to a patent in force in India, or to a pending application for a patent in India, as the case
may be unless there is an accompanying indication that the patent has been obtained or applied for in any
country outside India.
121. [Wrongful use of words “patent office”.] Omitted by the Jan Vishwas (Amendment of
Provisions) Act, 2023 (18 of 2023), s. 2 and Schedule (w.e.f. 01-08-2024).
122. Refusal or failure to supply information.—
(1) If any person refuses or fails to furnish:—
(a) to the Central Government any information which he is required to furnish under
sub-section
(5) of section 100;
(b) to the Controller any information or statement which he is required to furnish by or under
section 146,
2
[he shall be liable to penalty which may extend to one lakh rupees, and in case of the continuing refusal
or failure, a further penalty of one thousand rupees for every day after the first during which such refusal
or failure continues.]
(2) If any person, being required to furnish any such information as is referred to in sub-section
(1),
furnishes information or statement which is false, and which he either knows or has reason to believe to
be false or does not believe to be true, 3[he shall be liable to penalty for a sum equal to one half per cent.
of the total sale or turnover, as the case may be, of business or of the gross receipts in profession as
computed in the audited accounts of such person, or a sum equal to five crore rupees, whichever is less].
123. Practice by non-registered patent agents.—If any person contravenes the provisions of
section 129, 4[he shall be liable to penalty, which may extend to five lakh rupees, and in case of the
continuing default, a further penalty of one thousand rupees for every day after the first during which
such default continues].
124. Offences by companies.—
(1) If the person committing an offence under this Act is a company,
the company as well as every person in charge of, and responsible to, the company for the conduct of its
business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall
be liable to be proceeded against and punished accordingly:
Provided that nothing contained in this sub-section shall render any such person liable to any
punishment if he proves that the offence was committed without his knowledge or that he exercised all
due diligence to prevent the commission of such offence.
1. Subs. by Act 18 of 2023, s. 2 and Schedule for certain words (w.e.f. 01-08-2024).
2. Subs. by s. 2 and Schedule, ibid., for the long line (w.e.f. 01-08-2024).
3. Subs. by s. 2 and Schedule, ibid., for certain words (w.e.f. 01-08-2024).
4. Subs. by s. 2 and Schedule, ibid., for certain words (w.e.f. 01-08-2024).
55
(2) Notwithstanding anything contained in sub-section
(1), where an offence under this Act has been
committed by a company and it is proved that the offence has been committed with the consent or
connivance of, or that the commission of the offence is attributable to any neglect on the part of any
director, manager, secretary or other officer of the company, such director, manager, secretary or other
officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and
punished accordingly.
Explanation.—For the purposes of this section,—
(a) “company” means any body corporate and includes a firm or other association of individuals;
and
(b) “director”, in relation to a firm, means a partner in the firm.
1
[124A. Adjudication of penalties.—The Controller may, by an order, authorise an officer referred
to in section 73, to be the adjudicating officer for holding an inquiry and imposing penalty under the
provisions of this Act, in the manner as may be prescribed, after giving the person concerned a reasonable
opportunity of being heard.
124B. Appeal.—
(1) Whoever aggrieved by an order of the adjudicating officer under section 124A
may prefer an appeal to the appellate authority, who shall be an officer at least one rank above the
adjudicating officer, within a period of sixty days from the date of receipt of the order, as the Central
Government may by notification authorise in this behalf.
(2) Every appeal under this section shall be preferred in such form and manner as may be prescribed.
(3) An appeal may be admitted after the expiry of the period of sixty days if the appellant satisfies the
appellate authority that he had sufficient cause for not preferring the appeal within that period.
(4) No appeal shall be disposed of unless the appellant has been given a reasonable opportunity of
being heard.
(5) The appellate authority referred to in sub-section
(1) shall dispose of the appeal within sixty days
from the date of filing the appeal.
(6) Notwithstanding anything contained in this Act, if the person fails to comply with the order of the
adjudicating officer under section 124A or the order of the appellate authority under this section, as the
case may be, within ninety days of such order, he shall, in addition to the penalty, be punishable with fine
of one lakh rupees or imprisonment for a term which may extend to one year, or with both.]
CHAPTER XXI
PATENT AGENTS
2
[125. Register of patent agents.—
(1) The Controller shall maintain a register to be called the
register of patent agents in which shall be entered the names, addresses and other relevant particulars, as
may be prescribed, of all persons qualified to have their names so entered under section 126.
(2) Notwithstanding anything contained in sub-section
(1), it shall be lawful for the Controller to keep
the register of patent agents in computer floppies, diskettes or any other electronic form subject to such
safeguards as may be prescribed.]
126. Qualifications for registration as patent agents.—
(1) A person shall be qualified to have his
name entered in the register of patent agents if he fulfils the following conditions, namely:—
(a) he is a citizen of India;
(b) he has completed the age of 21 years;
1. Ins. by Act 18 of 2023, s. 2 and Schedule (w.e.f. 01-08-2024).
2. Subs. by Act 38 of 2002, s. 52, for section 125 (w.e.f. 20-5-2003).
56
(c) he has obtained a 1[degree in science, engineering or technology from any University
established under law for the time being in force] in the territory of India or possesses such other
equivalent qualifications as the Central Government may specify in this behalf, and, in addition,—
2
* * * * *
(ii) has passed the qualifying examination prescribed for the purpose; 3[or]
2
[(iii) has, for a total period of not less than ten years, functioned either as an examiner or
discharged the functions of the Controller under section 73 or both, but ceased to hold any such
capacity at the time of making the application for registration;]
(d) he has paid such fee as may be prescribed.
4
[
(2) Notwithstanding anything contained in sub-section
(1), a person who has been registered as a
patent agent before the commencement of 5[the Patents (Amendment) Act, 2005 (15 of 2005)] shall be
entitled to continue to be, or when required to be re-registered, as a patent agent, on payment of the fee as
may be prescribed.]
127. Rights of patent agents.—Subject to the provisions contained in this Act and in any rules made
thereunder, every patent agent whose name is entered in the register shall be entitled:—
(a) to practice before the Controller; and
(b) to prepare all documents, transact all business and discharge such other functions as may be
prescribed in connection with any proceeding before the Controller under this Act.
128. Subscription and verification of certain documents by patent agents.—
(1) 6*** all
applications and communications to the Controller under this Act may be signed by a patent agent
authorised in writing in this behalf by the person concerned.
7
* * * * *
129. Restrictions on practice as patent agents.—
(1) No person, either alone or in partnerships with
any other person, shall practise, describe or hold himself out as a patent agent, or permit himself to be so
described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his
partners are so registered.
(2) No company or other body corporate shall practise, describe itself or hold itself out as patent
agents or permit itself to be so described or held out.
Explanation.—For the purposes of this section, practise as a patent agent includes any of the
following acts, namely:—
(a) applying for or obtaining patents in India or elsewhere;
1. Subs. by s. 53, ibid., for “degree from any University” (w.e.f. 20-5-2003).
2. Sub-clause
(i) omitted by Act 15 of 2005, s. 67 ( w.e.f. 1-1-2005).
3. Ins. by Act 38 of 2002, s. 53 (w.e.f. 20-5-2003).
4. Subs. by s. 53, ibid., for sub-section
(2) (w.e.f. 20-5-2003).
5. Subs. by Act 15 of 2005, s. 67, for “the Patents (Amendment) Act, 2002 (38 of 2002)” (w.e.f. 1-1-2005).
6. The words, brackets and figure “Subject to the provisions contained in sub-section
(2) and to any rules made under this
Act,” omitted by Act 38 of 2002, s. 54 (w.e.f. 20-5-2003).
7. Sub-section
(2) omitted by s. 54, ibid. (w.e.f. 20-5-2003).
57
(b) preparing specifications or other documents for the purposes of this Act or of the patent law of
any other country;
(c) giving advice other than of a scientific or technical nature as to the validity of patents or their
infringement.
130. Removal from register of patent agents and restoration.—
(1) The 1[Controller] may remove
the name of any person from the register when 2[he] is satisfied, after giving that person a reasonable
opportunity of being heard and after such further inquiry, if any, as 2[he] thinks fit to make—
(i) that his name has been entered in the register by error or on account of misrepresentation or
suppression of material fact;
(ii) that he has been convicted of any offence and sentenced to a term of imprisonment or has
been guilty of misconduct in his professional capacity which in the opinion of the 1[Controller]
renders him unfit to be kept in the register.
(2) The 1[Controller] may, on application and on sufficient cause being shown, restore to the register
the name of any person removed therefrom.
131. Power of Controller to refuse to deal with certain agents.—
(1) Subject to any rules made in
this behalf, the Controller may refuse to recognise as agent in respect of any business under this Act—
(a) any individual whose name has been removed from, and not restored to, the register;
(b) any person who has been convicted of an offence under section 123;
(c) any person, not being registered as a patent agent, who in the opinion of the Controller is
engaged wholly or mainly in acting as agent in applying for patents in India or elsewhere in the name
or for the benefit of the person by whom he is employed;
(d) any company or firm, if any person whom the Controller could refuse to recognise as agent in
respect of any business under this Act, is acting as a director or manager of the company or is a
partner in the firm.
(2) The Controller shall refuse to recognise as agent in respect of any business under this Act any
person who neither resides nor has a place of business in India.
132. Savings in respect of other persons authorised to act as agents.—Nothing in this Chapter
shall be deemed to prohibit—
(a) the applicant for a patent 3*** from drafting any specification or appearing or acting before
the Controller; or
(b) an advocate, not being a patent agent, from taking part in any 4[hearing before the Controller
on behalf of a party who is taking part in any proceedings under this Act].
CHAPTER XXII
INTERNATIONAL ARRANGEMENTS
5
[133. Convention countries.—Any country, which is a signatory or party or a group of countries,
union of countries or inter-governmental organisations 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.]
1. Subs. by Act 38 of 2002, s. 55 for “Central Government” (w.e.f. 20-5-2003).
2. Subs. by s. 55, ibid., for “it” (w.e.f. 20-5-2003).
3. The words “or any person, not being a patent agent, who is duly authorised by the applicant” omitted by s. 56, ibid.
(w.e.f. 20-5-2003).
4. Subs. by s. 56, ibid., for certain words (w.e.f. 20-5-2003).
5. Subs. by Act 15 of 2005, s. 68, for section 133 (w.e.f. 1-1-2005).
58
134. Notification as to countries not providing for reciprocity.—Where any country specified by
the Central Government in this behalf by notification in the Official Gazette does not accord to citizens of
India the same rights in respect of the grant of patents and the protection of patent rights as it accords to
its own nationals, no national of such country shall be entitled, either solely or jointly with any other
person,—
(a) to apply for the grant of a patent or be registered as the proprietor of a patent;
(b) to be registered as the assignee of the proprietor of a patent; or
(c) to apply for a licence or hold any licence under a patent granted under this Act.
135. Convention applications.—
(1) Without prejudice to the provisions contained in section 6,
where a person has made an application for a patent in respect of an invention in a convention country
(hereinafter referred to as the “basic application”), and that person or the legal representative or assignee
of that person makes an application under this Act for a patent within twelve months after the date on
which the basic application was made, the priority date of a claim of the complete specification, being a
claim based on matter disclosed in the basic application, is the date of making of the basic application.
Explanation.—Where applications have been made for similar protection in respect of an invention in
two or more convention countries, the period of twelve months referred to in this sub-section shall be
reckoned from the date on which the earlier or earliest of the said applications was made.
(2) Where applications for protection have been made in one or more convention countries in respect
of two or more inventions which are cognate or of which one is a modification of another, a single
convention application may, subject to the provisions contained in section 10, be made in respect of those
inventions at any time within twelve months from the date of the earliest of the said applications for
protection:
Provided that the fee payable on the making of any such application shall be the same as if separate
applications have been made in respect of each of the said inventions, and the requirements of clause
(b)
of sub-section
(1) of section 136 shall, in the case of any such application, apply separately to the
applications for protection in respect of each of the said inventions.
1
[
(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.]
136. Special provisions relating to convention applications.—
(1) Every convention application
shall—
(a) be accompanied by a complete specification; and
(b) specify the date on which and the convention country in which the application for protection,
or as the case may be, the first of such applications was made; and
(c) state that no application for protection in respect of the invention had been made in a
convention country before that date by the applicant or by any person from whom he derives title.
(2) Subject to the provisions contained in section 10, a complete specification filed with a convention
application may include claims in respect of developments of, or additions to, the invention in respect of
which the application for protection was made in a convention country, being developments or additions
in respect of which the applicant would be entitled under the provisions of section 6 to make a separate
application for a patent.
1. Ins. by Act 15 of 2005, s. 69 (w.e.f. 1-1-2005).
59
(3) A convention application shall not be post-dated under sub-section
(1) of section 17 to a date later
than the date on which under the provisions of this Act the application could have been made.
137. Multiple priorities.—
(1) Where two or more applications for patents in respect of inventions
have been made in one or more convention countries and those inventions are so related as to constitute
one invention, one application may be made by any or all of the persons referred to in sub-section
(1) of
section 135 within twelve months from the date on which the earlier or earliest of those applications was
made, in respect of the inventions disclosed in the specifications which accompanied the basic
applications.
(2) The priority date of a claim of the complete specification, being a claim based on matters
disclosed in one or more of the basic applications, is the date on which that matter was first so disclosed.
(3) For the purposes of this Act, a matter shall be deemed to have been disclosed in a basic
application for protection in a convention country if it was claimed or disclosed (otherwise than by way of
disclaimer or acknowledgment of a prior art) in that application, or any documents submitted by the
applicant for protection in support of and at the same time as that application, but no account shall be
taken of any disclosure effected by any such document unless a copy of the document is filed at the patent
office with the convention application or within such period as may be prescribed after the filing of that
application.
138. Supplementary provisions as to convention applications.—1[
(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.]
(2) If any such specification or other document is in a foreign language, a translation into English of
the specification or document, verified by affidavit or otherwise to the satisfaction of the Controller, shall
be 2[furnished when required by the controller].
(3) For the purposes of this Act, the date on which an application was made in a convention country is
such date as the Controller is satisfied by certificate of the official chief or head of the patent office of the
convention country or otherwise, is the date on which the application was made in that convention
country.
3
[
(4) An international application filed under the Patent Cooperation Treaty designating India shall
have effect of filing an application for patent under section 7, section 54 and section 135, as the case may
be, and the title, description, claim and abstract and drawings, if any, filed in the international application
shall be taken as complete specification for the purposes of this Act.
(5) The filing date of an application for patent and its complete specification processed by the patent
office as designated office shall be the international filing date accorded under the Patent Cooperation
Treaty.
(6) Amendment, if any, proposed by the applicant for an international application designating India or
designating and electing India before international searching authority or preliminary made examination
authority shall, if the applicant so desires, be taken as an amendment made before the patent office.]
139. Other provisions of Act to apply to convention applications.—Save as otherwise provided in
this Chapter, all the provisions of this Act shall apply in relation to a convention application and a patent
granted in pursuance thereof as they apply in relation to an ordinary application and a patent granted in
pursuance thereof.
CHAPTER XXIII
1. Subs. by Act 15 of 2005, s. 70, for sub-section
(1) (w.e.f. 1-1-2005).
2. Subs. by Act 38 of 2002, s. 58, for “annexed to the specification or document” (w.e.f. 20-5-2003).
3. Ins. by s. 58, ibid. (w.e.f. 20-5-2003).
60
MISCELLANEOUS
140. Avoidance of certain restrictive conditions.—
(1) It shall not be lawful to insert—
(i) in any contract for or in relation to the sale or lease of a patented article or an article made by a
patented process; or
(ii) in a licence to manufacture or use a patented article; or
(iii) in a licence to work any process protected by a patent, a condition the effect of which may
be—
(a) to require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor,
or his nominees, or to prohibit him from acquiring or to restrict in any manner or to any extent his
right to acquire from any person or to prohibit him from acquiring except from the vendor, lessor,
or licensor or his nominees, any article other than the patented article or an article other than that
made by the patented process; or
(b) to prohibit the purchaser, lessee or licensee from using, or to restrict in any manner or to
any extent the right of the purchaser, lessee or licensee, to use an article other than the patented
article or an article other than that made by the patented process, which is not supplied by the
vendor, lessor or licensor or his nominee; or
(c) to prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to
any extent the right of the purchaser, lessee or licensee to use any process other than the patented
process; or
1
[
(d) to provide exclusive grant back, prevention to challenges to validity of patent and
coercive package licensing,]
and any such condition shall be void.
(2) A condition of the nature referred to in clause
(a) or clause
(b) or clause
(c) of sub-section
(1)
shall not cease to be a condition falling within that sub-section merely by reason of the fact that the
agreement containing it has been entered into separately, whether before or after the contract relating
to the sale, lease or licence of the patented article or process.
(3) In proceedings against any person for the infringement of a patent, it shall be a defence to prove
that at the time of the infringement there was in force a contract relating to the patent and containing a
condition declared unlawful by this section:
Provided that this sub-section shall not apply if the plaintiff is not a party to the contract and proves to
the satisfaction of the court that the restrictive condition was inserted in the contract without his
knowledge and consent, express or implied.
(4) Nothing in this section shall—
(a) affect a condition in a contract by which a person is prohibited from selling
