64. Revocation of Power patents.—
(1) Subject to the provisions contained in this Act, a patent
whether granted before or after the commencement of this Act, may, 4[be revoked on a petition of any
person interested or of the Central Government 5*** or on a counter-claim in a suit for infringement of
the patent by the High Court] on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in
a valid claim of earlier priority date contained in the complete specification of another patent granted
in India;
(b) that the patent was granted on the application of a person not entitled under the provisions
of this Act to apply therefor:
6
* * * * *
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any
person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new,
having regard to what was publicly known or publicly used in India before the priority date of the
claim or to what was published in India or elsewhere in any of the documents referred to in section
13:
6
* * * * *
(f) that the invention so far as claimed in any claim of the complete specification is obvious or
does not involve any inventive step, having regard to what was publicly known or publicly used in
India or what was published in India or elsewhere before the priority date of the claim:
6
* * * * *
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
1. Subs. by Act 15 of 2005, s. 45, for “date of the advertisement” (w.e.f. 1-1-2005).
2. Subs. by s. 46, ibid., for “advertise” (w.e.f. 1-1-2005).
3. Subs. by s. 46, ibid., for “such advertisement” (w.e.f. 1-1-2005).
4. Subs. by s. 47, ibid., for certain words (w.e.f. 2-4-2007).
5. The words “by the Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021).
6. The proviso omitted by Act 38 of 2002, s. 31 (w.e.f. 20-5-2003).
34
(h) that the complete specification does not sufficiently and fairly describe the invention and the
method by which it is to be performed, that is to say, that the description of the method or the
instructions for the working of the invention as contained in the complete specification are not by
themselves sufficient to enable a person in India possessing average skill in, and average knowledge
of, the art to which the invention relates, to work the invention, or that it does not disclose the best
method of performing it which was known to the applicant for the patent and for which he was
entitled to claim, protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined
or that any claim of the complete specification is not fairly based on the matter disclosed in the
specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly
used in India, otherwise than as mentioned in sub-section
(3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information
required by section 8 or has furnished information which in any material particular was false to his
knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 1[or made
or caused to be made an application for the grant of a patent outside India in contravention of
section 39];
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by
fraud;
1
[
(p) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
(q) 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.]
(2) For the purposes of clauses
(e) and
(f) of sub-section
(1),—
(a) no account shall be taken of 2[personal document or secret trial or secret use]; and
(b) where the patent is for a process or for a product as made by a process described or claimed
the importation into India of the product made abroad by that process shall constitute knowledge or
use in India of the invention on the date of the importation, except where such importation has been
for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause
(l) of sub-section
(1), no account shall be taken of any use of the
invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a Government
undertaking, in consequence of the applicant for the patent or any person from whom he derives title
having communicated or disclosed the invention directly or indirectly to the Government or person
authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom
he derives title having communicated or disclosed the invention, and without the consent or
acquiescence of the applicant or of any person from whom he derives title.
1. Ins. by Act 38 of 2002, s. 31 (w.e.f. 20-5-2003).
2. Subs. by s. 31, ibid., for “secret use” (w.e.f. 20-5-2003).
35
(4) Without prejudice to the provisions contained in sub-section
(1), a patent may be revoked by the
High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has
without reasonable cause failed to comply with the request of the Central Government to make, use or
exercise the patented invention for the purposes of Government within the meaning of section 99 upon
reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons
appearing from the register to be proprietors of that patent or to have shares or interests therein and it
shall not be necessary to serve a notice on any other person.
1
[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.]
66. Revocation of patent in public interest.—Where the Central Government is of opinion that a
patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the
public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the
Official Gazette and thereupon the patent shall be deemed to be revoked.
CHAPTER XIII
REGISTER OF PATENTS
67. Register of patents and particulars to be entered therein.—
(1) There shall be kept at the patent
office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments and of transmissions of patents, of licences under patents, and of
amendments, extensions, an revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of patents as may be
prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the register,
and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and direction of the Central Government, the register shall be kept
under the control and management of the Controller.
2
[
(4) Notwithstanding anything contained in sub-section
(1), it shall be lawful for the Controller to
keep the register of patents or any part thereof in computer floppies, diskettes or any other electronic form
subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy of, or
extracts from, the register of patents, certified to be a true copy under the hand of the Controller or any
officer duly authorised by the Controller in this behalf shall, in all legal proceedings, be admissible in
evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any other
electronic form,—
1. Subs. by Act 15 of 2005, s. 48, for section 65 (w.e.f. 1-1-2005).
2. Subs. by Act 38 of 2002, s. 32, for sub-section
(4) (w.e.f. 20-5-2003).
36
(a) reference in this Act to an entry in the register shall be deemed to include reference to a record
of particulars kept in computer floppies, diskettes or any other electronic form and comprising the
register or part of the register;
(b) references in this Act to particulars being registered or entered in the register shall be deemed
to include references to the keeping of record of those particulars comprising the register or part of
the register in computer floppies, diskettes or any other electronic form; and
(c) references in this Act to the rectification of the register are to be read as including references
to the rectification of the record of particulars kept in computer floppies, diskettes or any other
electronic form and comprising the register or part of the register.]
1
[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.]
69. Registration of assignments, transmissions, etc.—
(1) Where any person becomes entitled by
assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a
mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the
prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his
interest in the register.
(2) Without prejudice to the provisions of sub-section
(1), an application for the registration of the
title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled
by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the
prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may
be.
(3) Where an application is made under this section for the registration of the title of any person the
Controller shall, upon proof of title to his satisfaction,—
(a) where that person is entitled to a patent or a share in a patent, register him in the register as
proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or
event by which he derives title; or
(b) where that person is entitled to any other interest in the patent, enter in the register notice of
his interest, with particulars of the instrument, if any, creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence,
transmission, operation of law or any other such transaction has validly vested in such person a title to the
patent or any share or interest therein, the Controller may refuse to take any action under clause
(a) or, as
the case may be, under clause
(b), until the rights of the parties have been determined by a competent
court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent
office copies of all agreements, licences and other documents affecting the title to any patent or any
licence thereunder authenticated in the prescribed manner and also such other documents as may be
prescribed relevant to the subject-matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so requested by
the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any
person except under the order of a court.
(5) Except for the purposes of an application under sub-section
(1) or of an application to rectify the
register, a document in respect of which no entry has been made in the register under sub-section
(3) shall
not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a
share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise
directs.
1. Subs. by Act 15 of 2005, s. 49, for section 68 (w.e.f. 1-1-2005).
37
70. Power of registered grantee or proprietor to deal with patent.—Subject to the provisions
contained in this Act relating to co-ownership of patents and subject also to any rights vested in any other
person of which notice is entered in the register, the person or persons registered as grantee or proprietor
of a patent shall have power to assign, grant licences under, or otherwise deal with, the patent and to give
effectual receipts for any consideration for any such assignment, licence or dealing:
Provided that any equities in respect of the patent may be enforced in like manner as in respect of any
other movable property.
71. Rectification of register by 1[High Court].—
(1) The 1[High Court] may, on the application of
any person aggrieved—
(a) by the absence or omission from the register of any entry; or
(b) by any entry made in the register without sufficient cause; or
(c) by any entry wrongly remaining on the register; or
(d) by any error or defect in any entry in the register,
make such order for the making, variation or deletion, of any entry therein as it may think fit.
(2) In any proceeding under this section the 1[High Court] may decide any question that may be
necessary or expedient to decide in connection with the rectification of the register.
(3) Notice of any application to the 1[High Court] under this section shall be given in the prescribed
manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear
if so directed by the 2[High Court].
(4) Any order of the 1[High Court] under this section rectifying the register shall direct that notice of
the rectification shall be served upon the Controller in the prescribed manner who shall upon receipt of
such notice rectify the register accordingly.
72. Register to be open for inspection.—
(1) Subject to the provisions contained in this Act and any
rules made thereunder, the register shall at all convenient times be open to inspection by the public; and
certified copies, sealed with the seal of the patent office, of any entry in the register shall be given to any
person requiring them on payment of the prescribed fee.
(2) The register shall be prima facie evidence of any matters required or authorised by or under this
Act to be entered therein.
3
[
(3) If the record of particulars is kept in computer floppies or diskettes or in any other electronic
form, sub-sections
(1) and
(2) shall be deemed to have been complied with if the public is given access to
such computer floppies, diskettes or any other electronic form or printouts of such record of particulars
for inspection.]
CHAPTER XIV
PATENT OFFICE AND ITS ESTABLISHMENT
73. Controller and other officers.—
(1) The Controller General of Patents, Designs and Trade Marks
appointed under sub-section
(1) of 4[section 3 of the Trade Marks Act, 1999 (47 of 1999)], shall be the
Controller of Patents for the purposes of this Act.
(2) For the purposes of this Act, the Central Government may appoint as many examiners and other
officers and with such designations as it thinks fit.
(3) Subject to the provisions of this Act, the officers appointed under sub-section
(2) shall discharge
under the superintendence and directions of the Controller such functions of the Controller under this Act
as he may, from time to time by general or special order in writing, authorise them to discharge.
1. Subs. by Act 33 of 2021, s. 13, for “Appellate Board” (w.e.f. 20-5-2003).
2. Subs. by s. 13, ibid., for “Board” (w.e.f. 4-4-2021).
3. Ins. by Act 38 of 2002, s. 34 (w.e.f. 20-5-2003).
4. Subs. by s. 35, ibid., for certain words (w.e.f. 20-5-2003).
38
(4) Without prejudice to the generality of the provisions of sub-section
(3), the Controller may, by
order in writing and for reasons to be recorded therein withdraw any matter pending before an officer
appointed under sub-section
(2) and deal with such matter himself either de novo or from the stage it was
so withdrawn or transfer the same to another officer appointed under sub-section
(2) who may, subject to
special directions in the order of transfer, proceed with the matter either de novo or from the stage it was
so transferred.
74. Patent office and its branches.—
(1) For the purposes of this Act, there shall be an office which
shall be known as the patent office.
1
[
(2) The Central Government may, by notification in the Official Gazette, specify the name of the
Patent Office.]
(3) The head office of the patent office shall be at such place as the Central Government may specify,
and for the purpose of facilitating, the registration of patents there may be established, at such other
places as the Central Government may think fit, branch offices of the patent office.
(4) There shall be a seal of the patent office.
75. Restriction on employees of patent office as to right or interest in patents.—All officers and
employees of the patents office shall be incapable, during the period for which they hold their
appointments, to acquire or take, directly or indirectly, except by inheritance or bequest, any right or
interest in any patent issued by that office.
76. Officers and employees not to furnish information, etc.—An officer or employee in the patent
office shall not, except when required or authorised by this Act or under a direction in writing of the
2
[Central Government 3***] or the Controller or by order of a court,—
(a) furnish information on a matter which is being, or has been, or dealt with under this Act 4***;
(b) prepare or assist in the preparation of a document required or permitted by or under this
Act 4*** to be lodged in the patent office; or
(c) conduct a search in the records of the patent office.
CHAPTER XV
POWERS OF CONTROLLER GENERALLY
77. Controller to have certain powers of a civil court.—
(1) Subject to any rules made in this
behalf, the Controller in any proceedings before him under this Act shall have the powers of a civil court
while trying a suit under the Code of Civil Procedure, 1908 (5 of 1908), in respect of the following
matters, namely:—
(a) summoning and enforcing the attendance of any person and examining him on oath;
(b) requiring the discovery and production of any document;
(c) receiving evidence on affidavits;
(d) issuing commissions for the examination of witnesses or documents;
(e) awarding costs;
(f) reviewing his own decision on application made within the prescribed time and in the
prescribed manner;
(g) setting aside an order passed ex parte on application made within the prescribed time and in
the prescribed manner;
(h) any other matter which may be prescribed.
(2) Any order for costs awarded by the Controller in exercise of the powers conferred upon him under
sub-section
(1) shall be executable as a decree of a civil court.
1. Subs. by Act 15 of 2005, s. 50, for sub-section
(2) (w.e.f. 1-1-2005).
2. Subs. by Act 38 of 2002, s. 36, for “Central Government” (w.e.f. 20-5-2003).
3. The words “or Appellate Board” omitted by Act 33 of 2021, s. 13 (w.e.f. 4-4-2021).
4. The words and figures “or under the Indian Patents or Designs Act, 1911 (2 of 1911)” omitted by s. 36, ibid. (w.e.f. 20-5-2003).
39
78. Powers of Controller to correct clerical errors, etc.—
(1) Without prejudice to the provisions
contained in sections 57 and 59 as regards amendment of applications for patents or complete
specifications 1[or other documents relating thereto] and subject to the provisions of section 44, the
Controller may, in accordance with the provisions of this section, correct any clerical error in any patent
or in any specification or other document filed in pursuance of such application or in any application for a
patent or any clerical error in any matter which is entered in the register.
(2) A correction may be made in pursuance of this section either upon a request in writing made by
any person interested and accompanied by the prescribed fee, or without such a request.
(3) Where the Controller proposes to make any such correction as aforesaid otherwise than in
pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the
applicant for the patent, as the case may be, and to any other person who appears to him to be concerned,
and shall give them an opportunity to be heard before making the correction.
(4) Where a request is made under this section for the correction of any error in a patent or
application for a patent or any document filed in pursuance of such an application, and it appears to the
Controller that the correction would materially alter the meaning or scope of the document to which the
request relates and ought not to be made without notice to persons affected thereby, he shall require
notice of the nature of the proposed correction to be 2[published] in the prescribed manner.
(5) Within the prescribed time after any 3[such publication] as aforesaid any person interested may
give notice to the Controller of opposition to the request, and, where such notice of opposition is given,
the Controller shall give notice thereof to the person by whom the request was made, and shall give to
him and to the opponent an opportunity to be heard before he decides the case.
79. Evidence how to be given and powers of Controller in respect thereof.—Subject to any rules
made in this behalf, in any proceeding under this Act before the Controller, evidence shall be given by
affidavit in the absence of directions by the Controller to the contrary, but in any case in which the
Controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by
affidavit, or may allow any party to be cross-examined on the contents of his affidavit.
80. Exercise of discretionary powers by Controller.—Without prejudice to any provision contained
in this Act requiring the Controller to hear any party to the proceedings thereunder or to give any such
party an opportunity to be heard, the Controller shall give to any applicant for a patent, or for amendment
of a specification (if within the prescribed time the applicant so requires) an opportunity to be heard
before exercising adversely to the applicant any discretion vested in the Controller by or under this Act:
4
[
Provided that the party desiring a hearing makes the request for such hearing to the Controller at
least ten days in advance of the expiry of the time-limit specified in respect of the proceeding.]
81. Disposal by Controller of applications for extension of time.—Where under the provisions of
this Act or the rules made thereunder the Controller may extend the time for doing any act, nothing in this
Act shall be deemed to require him to give notice to or hear the party interested in opposing the extension,
nor shall any appeal lie from any order of the Controller granting such extension.
5
[CHAPTER XVI
WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION
82. Definition of “patented articles” and “patentee”.—In this Chapter, unless the context otherwise
requires,—
(a) “patented article” includes any article made by a patented process; and
(b) “patentee” includes an exclusive licensee.
1. Ins. by s. 37, ibid. (w.e.f. 20-5-2003).
2. Subs. by Act 15 of 2005, s. 51, for “advertised” (w.e.f. 1-1-2005).
3. Subs. by s. 51, ibid., for “such advertisement” (w.e.f. 1-1-2005).
4. Ins. by Act 38 of 2002, s. 38 (w.e.f. 20-5-2003).
5. Subs. by s. 39, ibid., for Chapter XVI (sections 82 to 98) (w.e.f. 20-5-2003).
40
83. General principles applicable to working of patented inventions.—Without prejudice to the
other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be
had to the following general considerations, namely:—
(a) that patents are granted to encourage inventions and to secure that the inventions are worked
in India on a commercial scale and to the fullest extent that is reasonably practicable without undue
delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation
of the patented article;
(c) that the protection and enforcement of patent rights contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual advantage
of producers and users of technological knowledge and in a manner conducive to social and economic
welfare, and to a balance of rights and obligations;
(d) that patents granted do not impede protection of public health and nutrition and should act as
instrument to promote public interest specially in sectors of vital importance for socio-economic and
technological development of India;
(e) that patents granted do not in any way prohibit Central Government in taking measures to
protect public health;
(f) that the patent right is not abused by the patentee or person deriving title or interest on patent
from the patentee, and the patentee or a person deriving title or intere
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