This article has been written by Anjani Anil Prasad pursuing a Diploma in Intellectual Property: Prosecution, licensing and litigation course from LawSikho.

This article has been edited and published by Shashwat Kaushik.

Introduction

The statutory history of a patentee’s rights and duties since the Indian Patents and Designs Act of 1911 has been one of continuous evolution and the Patents Act of 1970, with its recent amendment in 2016, is nothing but a continuation of what India demands to maintain its own identity in the world of patency. The present article will carefully analyse the present and futuristic patentee’s  rights and duties w.r.t. The Patent Act of 1970, which came into force on April 20, 1972.

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Who is a patentee

The Patent Act of 1970, specifically Section 2(p), provides a clear definition of who qualifies as a patentee. According to this section, a patentee is an individual or entity that is officially recorded in the patent register as the grantee or proprietor of a particular patent. This legal recognition establishes the individual or entity ownership rights and exclusive privileges associated with the patented invention.

The term “patentee” holds significance in the context of patent law and intellectual property rights. It signifies the individual or entity that has successfully obtained a patent for an invention. A patent, granted by a government authority such as a patent office, confers exclusive rights to the patentee for a specified period, usually 20 years from the filing date of the patent application.

During the patent term, the patentee has the sole right to exploit the patented invention for commercial purposes, including manufacturing, using, selling, or licensing the invention to others. The patentee can also take legal action against any unauthorised use or infringement of their patent rights.

It’s important to note that the status of a patentee can change over time. If a patent is assigned or transferred to another individual or entity, the new assignee or transferee becomes the patentee. Similarly, if there are multiple inventors or joint patentees, they may collectively hold the rights and responsibilities associated with the patent.

The concept of a patentee is crucial to safeguarding the rights of innovators and promoting technological advancements. By providing exclusive rights to patentees, the patent system incentivizes individuals and organisations to invest in research and development, leading to new inventions and contributions to society.

Sections under the Patents Act of 1970 dealing with rights  of a patentee

Sections 3 and 4 provide an inclusive list of inventions that cannot be patented. This, in turn, leaves room for an exhaustive list of inventions that can be patented. For example, with  the Patents (Amendment) Act of 2005, inventions relating to methods or processes of manufacture are now  patentable. The Patents (Amendment) Act of 2005 introduced significant changes to the Indian patent regime, expanding the scope of patentable subject matter. One of the key amendments was the inclusion of inventions relating to methods or processes of manufacture within the ambit of patentable inventions.

Prior to this amendment, such inventions were excluded from patentability under Section 3(k) of the Patents Act, 1970. This exclusion was based on the rationale that methods or processes of manufacture were not considered to be “new inventions” as they did not involve the creation of a new product or composition of matter.

However, the Patents (Amendment) Act of 2005 recognised the importance of protecting and encouraging innovation in the field of manufacturing processes. By amending Section 3(k), the Act now allows for the grant of patents for inventions relating to methods or processes of manufacture that are new, non-obvious, and have industrial application.

In addition to the inclusion of methods or processes of manufacture, the Patents (Amendment) Act of 2005 also made several other changes that have had a positive impact on the Indian patent system. For example, Sections 3 and 4 of the Act were amended to provide more clarity and flexibility in the interpretation of what constitutes an invention. These amendments have helped to create a more conducive environment for innovation and have encouraged the filing of more patent applications in India.

Overall, the Patents (Amendment) Act of 2005 has been a positive step forward for the Indian patent system. The amendments introduced by the Act have helped to promote innovation and have made India a more attractive destination for foreign investment and technology transfer.

But no invention is patentable if one is not entitled to qualify as a patentee. It is here that Section 6 comes into play. Only a true and first inventor, an assignee of the person claiming to be the true and first inventor, the inventor’s legal representation upon the inventor’s death or one who was a joint inventor can apply to become a patentee. This leaves no stone unturned from blocking any capable inventor from accessing its right to become an exclusive patentee for an invention. Although anyone falling outside the scope of Section 6 is prohibited from becoming a patentee.

Even when obtaining a patent falls under the territorial jurisdiction of India, foreign applications for patent rights in India are also welcomed under Section 8. But with the right comes the duty of a patentee. Here, such an application for a patent can only be entertained by a controller. It is the duty of a prospective patentee to keep the controller updated until the grant of a patent in India. Further, from time to time, the controller should be updated on any other application filed for the same invention outside India.

Section 43 is the heart of the Act, as it provides grant of a patent if it fulfils the conditions, i.e., the patent application should not be refused by the Controller or be in contravention of the Patents Act, 1970. The patent is then expeditiously provided to the patentee. But here, one may notice that the act does not mention any time frame to substitute the word ‘expeditiously’. Expeditiously could mean 1 day, 30 days or years. Therefore, this section lags behind the certainty of time. 

Section 44 provides grace to a deceased patentee if, at the discretion of the controller and falling under the norms of the Act, a patent that was granted to a person or body corporate has died or ceased to exist, respectively. The controller, in its power, will allow the patent to be in effect. 

Section 46 states that the Patents Act of 1970 will be effective throughout India. This in turn was a very bold step given the time and geo-political conditions of India, e.g., the then volatile state of Jammu and Kashmir. This gave inventors the opportunity and control over the centre to supervise the right and effective use of a patent.

Now, Section 48 explicitly states the right of the patentee against a third party for a product or process. This section categorically disallows a third party from the act of using the product/process and from the act of using, offering for sale, selling or importing for those purposes the process/product obtained directly by that product/process in India.

Section 49  clearly talks about the right of a patentee when his/her infringement of that right takes place. Let’s dive into what causes infringement of rights and what recourse a patentee has if his right is infringed. According to Section 49 (1), if a vessel , aircraft or land vehicle registered in a foreign country enters the Indian Territory accidentally or temporarily and the use of the patent was on board the vessel and was needed, further when such a patent is used for the construction or working of the aircraft or land vehicle, then no infringement takes place. But if such rights are not provided to Indian residents in the foreign country’s territorial jurisdiction, it is an infringement of a patentee’s right and a judicial proceeding transcends all. This way, no patentee’s rights can be infringed just by giving any excuse for an emergency. The legislation made sure that mere misuse of the rights of a patentee would cause a chain of unwanted judicial events. 

Sometimes within a patent, the interests of many patentees reside, and they therefore, together, become the ‘co-owners’ of patents. Here comes Section 50 to the aid of such co-ownership. Section 50 (1) explicitly states that unless there is a contract to the contrary, joint owners are entitled to an ‘equal and undivided share’. Furthermore, Section 50 (2) states that if one of the co-owners wants to exploit and retain profits in a patent, without sharing profits with the other owner(s), he/she is free to do the same. Here, one must worry that if the profit is huge, repelling other patentees from enjoying the profit would do more harm than good, as people, even after making great inventions, would stay away from the idea of co-ownership of patents. However, a fail switch is under way with Section 50(3). Under it, any one joint owner cannot, without the consent of all the other co-owners, grant a licence or ownership interest to a third party.

Section 53 is specially included in this article to explain that 20 years of a patent granted to an invention is also a form of right, as this gives impetus to new developments within the same invention or, all together, makes the patentees make new innovations. This also boosts the research and development of the Indian economy.

But in a situation where a patentee has already made an application known as the main application and, after a while, requires some improvement or modification to the main application. Here, Section 54 comes into play as it permits a patentee to do the same under certain conditions. The applicant has to be the same for the main invention and the improvement / modification and the language of the provision suggests that if the improvement / modification involves an additional applicant, a patent of addition may not be pursued.  Further, a patent of addition should either be filed on the same date or a date later than the date of filing of the main application. Therefore, in principle, a patent of addition can be filed even after the grant of the main application. Where the improvement or modification over the main application is the subject of an independent patent, and if the patentee is the same in respect of both inventions, the controller may, on request by the patentee, revoke the independent patent and grant the same as a patent of addition.        

There are no special rules governing the priority date of patents of addition and hence, the default rule will apply – the date of filing of the patent of addition will be considered the priority date, subject to other provisions in the Act.        

In the case of a patent of addition, Rule 13(3) of the Patents Rules states that each such patent of addition shall include a reference to the main patent or the application for the main patent  and also include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application.

What if  a patent gets lapsed, which could occur due to many reasons like non-payment of required annual fee or not being able to comply with the stipulated conditions? Here, Section 60 is the best recourse. It provides a remedy. Now, if the shortcomings are remedied, the controller will restore the patent. 

Section 62 will now be in full effect by permitting full rights to the patentee. This helps in the protection of innovation and simple procedural formalities.

The Act also provides the patentee’s right to ‘Surrender of Patent’ under Section 63. This is a unique clause, as generally statutes provide positive rights to a party but here a negative right is also welcomed. Here, again, the role of the controller and his discretion come into play. The surrender gives power and rights to other applicants/third parties to join the race to get hold of the invention’s patent journey, while the controller follows the procedure of publishing and notifying the applicants.

Other rights of the patentee

In addition to the exclusive rights to make, use, offer for sale, sell, and import the patented invention, the patentee is also entitled to other rights, including:

  1. The right to mark the patented invention: The patentee has the right to mark the patented invention with the word “patent” or “patented,” along with the patent number. This serves as a notice to the public that the invention is protected by a patent and that unauthorised use or infringement of the patent may result in legal consequences.
  2. Sue for infringement: The patentee can sue for infringement under Section 104A, which occurs when the patentee’s rights are violated.
  3. Duplicate patent: Patentees also have the right to be issued a ‘Duplicate Patent’ under Section 154 of the Indian Patents Act, 1970, when ‘Loss or Destruction of Patents’ occurs.
  4. Convention application: Patentees can make a ‘Convention Application’ under Section 135 for protection of patents in Convention Countries. This right is based on the ‘Principle of Reciprocity’ and national treatment of international law.
  5. The right to assign the patent: The patentee can assign the patent to another person or entity. The assignment can be for the entire patent or for a specific share of the patent.
  6. The right to licence the patent: The patentee can also licence the patent to another person or entity. The licence can be exclusive or non-exclusive, and it can be for a specific field of use or for the entire patent.
  7. The right to file for a patent extension: In certain circumstances, the patentee can file for a patent extension. This can be done if the patent was delayed due to factors beyond the patentee’s control, such as a regulatory delay or a patent interference proceeding.
  8. The right to challenge the validity of the patent: The patentee has the right to challenge the validity of the patent in court. This can be done if the patentee believes that the patent is invalid due to prior art, lack of novelty, or other reasons.

These additional rights of the patentee are important for protecting the patentee’s invention and ensuring that the patentee is able to fully benefit from the patent.

Analysis of the duties of the patentee

Obligation not to abuse the patent

A patent owner cannot use his patent to violate  laws or regulations, harm the public interest, or unfairly dominate the market. The patent owner may not make false or misleading claims about the invention in advertisements, marketing or other promotional material.

Obligation to carry out the invention

A patentee cannot refrain from using his invention in the belief that, by doing so, he might be able to  prevent others from making or using his invention. It is the responsibility of the patentee to practise the invention in India by actively marketing the invention by manufacturing the product or licensing the invention to others. The reasonable demands of the public for the patented invention must be met. These proprietary products should also be available to the public at reasonable prices.

Obligation to pay legal and support charges

Concerning the enrollment interaction, the patentee should pay the important legal charges. Likewise, to keep a patent in force, the patentee should pay support charges to the patent office at determined intervals over the lifetime of the patent, or else the patent will be repudiated, assuming that the patentee neglects to pay the upkeep charges. Non-payment of these charges, as outlined in Section 142 of the Act, renders the patent ineligible for consideration.

Obligation to address objections

When the First Examination Report (FER) is made available by the Patent Inspectors, it might contain a few complaints. It is then the obligation of the patentee to answer such complaints. The patentee’s application will be naturally dismissed in the event that the explanations are not looked at within a span of one year from the date of issue of the first examination report.

Patent disclosure obligation

Patents are granted in exchange for the publication of an invention. The patent owner must disclose the invention fully and accurately in the patent application and  update the notice as necessary during the patent process.

Duty to request an inspection under Section 11B

Here,  no patent application shall proceed unless the applicant or other interested party files an application for re-examination within the prescribed  period. It is  the duty of the patent owner to ask the patent examiner about the development of the patent.

Conclusion

Now everything boils down to what a patentee decides to do with his innovation. Although not absolute, the legislation has explicitly granted a number of rights to the patentee. From applying for a patent to surrendering the same, from choosing to be a single patentee to co-ownership of a patent, the legislation has been flexible and quite modern in its approach, considering its enactment year being 1970. The Act has been able to contain itself even in today’s world of innovation, research and development. But since the Act also provides for underlining duties, it becomes the ethical and moral duty of a patentee to maintain its innovation’s duty to help build a better society. From misappropriation to not delivering the desired result, these are the plagues that haunt the world of securing patents. Assurance of unbiased development is the need of the hour. 

References

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