MODULE-4INTRODUCTION TO INTELLECTUAL PROPERTY (IP)

- IP is internationally recognized as covering :Patents )Industrial Designs ) Industrial PropertyCopyright )Trade MarksKnow-how and Confidential Information

- Scope of IP developing fast. Therefore they seek protection under the umbrella of IP rights

- The scope of IP relates to following topics :1) Nature of the Property2) Mode of its Acquisition3) Nature of Rights conferred4) Commercial Exploitation of those rights5) Enforcement of those rights6) Remedies against infringement of those rights

BASIC CONCEPTS OF IP LAWa) Patent Law - Novelty and Inventive Stepb) Design Law - Novelty and Originalityc) Trade Mark Law - Distinctiveness and Similarity of Marks and goodsd) Copyright - Originality and Reproduction

NATURE OF IP- IP - Intangible Incorporate Property / Territorial in nature

A bundle of rightsEg. a) Patent - Exclusive right to use invention patented

To grant Licenses to othersTo sell that right

b) Industrial - Exclusive right to apply designDesign

c) Trade Mark - Exclusive right to use mark in relationto a product of servicePrevents others from using it

d) Copyright - Right of Reproductione) Know How & -Rights exist until it is secret

Confidential Action against unlawful use Information

COMMERCIAL EXPLOITATION OF IP

- Patent - Industrialize )- Design - Give Licence to use ) Licence can also be- Copyright - Reproductions ) granted- Trade Mark - Use will earn Royalty )

ENFORCEMENT OF RIGHTS AND REMEDIES AGAINST INFRINGEMENT- Enforcement through Court arises on infringement- Patent ) Injunction - Damages - Account of profits

Design )- Trade Mark - Injunction - Damages - Account of profits -

Delivery of Articles - Imprisonment - Fine- Copyright - Civil à Injunction - Damages - Account of profits -

Criminal - Imprisonment, Fine - Seizure of copies

IP AND ECONOMIC DEVELOPMENT- Very substantial

Eg. Patent - New and better productsTechnological Information

Industrial - Encourages Creativity Design - Eg. Consumer products - Toys, Garments,

Furniture Trade Mark -Ensures Quality and identity of product Copyright - Printing, Publishing, Entertainment

INTERNATIONAL CHARACTER OF IP- Globalization of Trade and Commerce has had its impact on IP- IP travels effortlessly from Country to Country- Piracy has acquired International character- International conventions

SALIENT FEATURES OF THE PATENTS ACT, 1970- An Act to amend and consolidate the Law relating to Patents1. The Indian Patents and Designs Act, 19112. Patents Enquiry Committee - Report in 1950 - Patents Bill, 1953 -

Lapsed with dissolution of 1st Lok Sabha - based on United Kingdom Patents Act, 1949

3. The Patents Bill, 1965 - Sri. Justice N. Rajagopala Ayyangar Report, 1959 - Joint Committee of Parliament - Lapsed on dissolution of 3rd Lok Sabha

4. The Patents Act, 1970 - from 20.04.19725. 1999 Amendment - To keep it in tune with trade related aspects of

Intellectual Property rights (Trips) entered into by WTO and to

provide for Public Interest, National Security, Bio-diversity, Traditional Knowledge, Procedure for grant of Patents

EXTANT - Extends to the whole of India

ENFORCEABILITY - 20.04.1972

DEFINITIONS1. Sec. 2(ab) - ‘ASSIGNEE’ includes as Assignee of the Assignee and

the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person

2. Sec. 2(ac) - ‘CAPABLE OF INDUSTRIAL APPLICATION’ in relation to an invention means that the invention is capable of being made or used in an Industry

3. Sec. 2(c) - ‘CONVENTION APPLICATION’ means an application for Patent made by virtue of Sec. 135

4. Sec. 2(d) - ‘CONVENTION COUNTRY’ means a country or a country which is member of a group of countries or an union of countries or an inter-governmental organisation notified as such under Sec. 133(1)

5. Sec. 2(f) - ‘EXCLUSIVE LICENCE’ means a licence from a Patentee which confers on the Licensee, or on the Licensee and persons authorised by him, to the exclusion of all other persons (including the Patentee) any right in respect of the patented invention and ‘Exclusive Licensee’ shall be construed accordingly.

6. Sec. 2(g) - ‘FOOD’ means any Article of Nourishment for human consumption and also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink

7. Sec. 2(ia) - ‘INTERNATIONAL APPLICATION’ means an application for Patent made in accordance with the Patent Co-operation Treaty

8. Sec. 2 ( j) - ‘INVENTION’ means a new product or process involving an inventive step and capable of industrial application

9. Sec. 2 ( ja) - ‘INVENTIVE STEP’ means a feature that makes the invention so obvious to a person skilled in the Art

10. Sec. 2(l) - ‘MEDICINE OR DRUG’ includesi) All medicines for internal or external use of human beings and

animalsii) All substances intended to be used for or in the diagnosis,

treatment, mitigation of diseases in human beings and animalsiii) All substances intended to be used for or in the maintenance of

public health, or the prevention or control of any epidemic disease among human beings or animals

iv) Insecticides, Germicides, Fungicides, Weedecides and all other substances intended to be used for the protection or preservation of plants

v) All chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances above referred to

11. Sec. 2(m) - ‘PATENT’ means patent granted under the Act

12. Sec. 2(n) - ‘PATENT AGENT’ means a person for the time being registered under the Act as Patent Agency

13. Sec. 2(o) - ‘PATENTED ARTICLE’ AND ‘PATENTED PROCESS’ means respectively an Article or Process in respect of which a Patent is in force

14. Sec. 2(oo) - ‘PATENT CO-OPERATION TREATY’ means the Patent Co-operation Treaty done at Washington on 19th June 1970 as amended and modified from time to time

15. Sec. 2(p) - ‘PATENTEE’ means a person for the time being entered on the register as the Grantee or Proprietor of the Patent

16. Sec. 2(q) - ‘PATENT OF ADDITION’ means a Patent granted in accordance with Sec. 54

17. Sec. 2(t) - ‘PERSON INTERESTED’ includes a person engaged in, or in promoting research in the same field as that to which the invention relates

18. Sec. 2(y) - ‘TRUE AND FIRST INVENTOR’ does not include either the First Importer of any invention into India, or to whom an invention is first communicated from outside India

INVENTIONS NOT PATENTABLESec. 3 - WHAT ARE NOT INVENTIONS1. Frivolous and contrary to laws of nature2. Commercial exploitation of which is contrary to public order or

morality and causes prejudice3. Discovery of : Scientific principle / Formulation

Living thingNon-living substance occurring in natureNew property or new use of a known substanceNew use of known process, machine or appratus

unless resulting in new product4. A substances obtained by admixture5. Mere arrangement or re-arrangement or duplication of known

devices6. Method of agriculture and horticulture7. Any process for medicinal, surgical, curative, prophylactic,

diagnostic, therapeutic treatment of human beings and animals to render them free of disease or which increases its economic value

8. Plants and animals and its biological process for production or propagation

9. Mathematical or business method or computer program10. Literary, dramatic, musical or artistic work or aesthetic creation

including cinematographic works and television productions11. Scheme or role or method of performing mental act or method of

playing game12. Presentation of Information13. Topography of integrated circuits14. An invention involving traditional knowledge

Sec. 4 - INVENTIONS relating to ATOMIC ENERGY NOT PATENTABLE as per Atomic Energy Act, 1962

Sec. 5 - INVENTIONS where only METHODS OR PROCESSES OF MANUFACTURE PATENTABLE

1. Substances used in drugs or medicines2. Substances produced by Chemical processes. Eg. Alloys, Optical

glass, Semi-Conductors and Inter-metallic compounds - But methods and processes of manufacture patentable

APPLICATION FOR PATENTS- Every true and first inventor, his assignee (proof) and in case of

death his legal representative (declaration) can file the application for grant of Patent (Sec. 6)

- To file application in prescribed form and to be accompanied by Provisional or Complete Specification - applies also to International Application under Patent Co-operation Treaty (Sec. 7)

- In case of Foreign Application along with application in India applicant to furnish all particulars and information regarding progress of Foreign Application to Indian Office (Sec. 8)

- Complete specification to be filed within 12 or 15 months of filing of Provisional Application (Sec. 9)

- CONTENTS OF SPECIFICATIONS :i) Titleii) Description of Inventioniii) Drawingsiv) Model or Sample for illustrationv) Method of Operationvi) Use / Performancevii) Claimsviii) Abstract providing technical informationix) Deposit of material in case of biological materialx) Declaration regarding furnishing of invention within prescribed

periodxi) Developments and subsequent additions (Sec. 10)

- Priority Date of Complete Specifications :i) Date of its filingii) Two Specifications - Latter dateiii) Relates to two inventions - date is of first disclosureiv) In case of two Priority Dates - earlier datev) In case of Ante-Dating and Post-Dating the Ante-dated and

Post-dated Dates (Sec. 11)

PUBLICATION AND EXAMINATION OF APPLICATIONS- Applications for Patents to be published 18 months after Priority

Date in Official Gazette and in case of secrecy direction after cessation of direction - Publication to contain date, number, name and address of Applicant and from date of publication to be open to public (Sec. 11-A)

- Request for Examination of Application to be within 48 months of application otherwise considered as withdrawn (Sec. 11-B)

- Application to be referred by Controller to Examiner and Examiner to submit Report within 18 months on following grounds :i) in accordance with Actii) lawful objection to Grantiii) result of Searchiv) any other matter (Sec. 12)

- Examiner to conduct Search by Anticipation by Previous Publication and by prior claim in India and outside (Sec. 13)

- On receipt of Report by Examiner Controller in case of Adversity and Amendment give Notice to Applicant and reasonable opportunity of being heard (Sec. 14)

- Powers of Controller in case of Applications : (Secs. 15 - 20)i) To refuse or require amended Applications in case of non

compliance with requirements of Actii) To make orders respecting division of application if it relates to

more than one invention and require fresh application and specification to be filed and to be dated from date of original application

iii) To postdate Application for a period not beyond 6 monthsiv) In cases of Anticipation

a) Refuse complete Satisfactionb) Insert reference regarding other Specificationsc) Prove that this Application has earlier priority date

v) In case of potential infringement insert a reference regarding that Application

vi) To make Order regarding substitution of Applicant if subsequent one better entitled

- Applicant to comply with all additional requirements within 12 months of date of objections or extended time granted by Controller (Sec. 21)

- Complete Specification to be accepted after compliance with requirements (Sec. 22)

- After acceptance of Complete Specification, Notice to Applicant and Publication in Official Gazette and open to Public Inspection

- From date of acceptance of Complete Specification upto date of Sealing of Patent, Applicant to have all rights as Patentee except Right to sue for Infringement (Sec. 24)

EXCLUSIVE MARKETING RIGHTS- Controller to refer for examination to Examiner Application for Patent

of substances used in the course of manufacture of medicines including exclusive marketing rights in India (Sec. 24-A & B)

- And grant the same if it is invention that is Patentable- Provisions relating to licences applicable (Sec. 24-C)- In Public Interest Central Government can grant power to someone

else to sell and distribute the same and give authority to fix price (Sec. 24-D)

- Infringement provisions to apply (Sec. 24-E)

OPPOSITION TO GRANT PATENT- Controller to accept opposition to grant of Patent within 4 - 5 months

of date of advertisement and acceptance of Complete Specification on following grounds :a) Applicant has wrongfully obtained inventionb) Invention has been published before Priority Datec) Invention part of another Complete Specificationd) Invention publicly used in India before Priority Datee) Invention does not involve inventive stepf) Not an invention or patentable under the Provisions of Actg) Complete Specification does not sufficiently and clearly

describe inventionh) Information not properly disclosedi) In case of convention not within prescribed time (12 months)j) Complete Specification does not disclose or wrongly mentions

Geographical Origin or Biological Material usedk) Invention has been anticipated

And notify Applicant and give opportunity to be heard (Sec. 25)- In case of wrongful ‘obtaining’ of invention, name of opponent to be

substituted and in case of part of invention, that part is to be removed and made subject to another Application which will have a Priority Date as of earlier Application (Sec. 26)

- Controller may refuse grant of Patent if it comes to his knowledge that invention has been Anticipated before Priority Date unless Application suitable amended (Sec. 27)

- Any person having no grounds for opposition but the inventor is to submit Application within prescribed period of two months of advertisement of Complete Specification in prescribed manner for inclusion of name and Controller to carry out same after notice to Applicant and giving him opportunity of being hard (Sec. 28)

ANTICIPATION- No Anticipation in following cases :a) Featured in Complete Specification and prior to Priority Date but has

been obtained or derived from this Application (Sec. 29)b) Has been communicated to Government under its Authorisastion

(Sec. 30)c) Has been publicly displayed in an exhibition or described in

newspaper publication with consent of Applicant (Sec. 31)d) Publicly worked for reasonable trial by Applicant or with consent of

Applicant (Sec. 32)e) Used and published after filing of Provisional Specification (Sec. 33)

- The above grounds cannot be used by Controller to refuse, revoke or invalidate Patent (Sec. 34)

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS- When Controller is of opinion that an Application if of a class notified

by Central Government as relevant for defence purposes, Controller to give direction for its non-publication and inform Central Government, Central Government to revoke direction or direct if directions not given (Sec. 35)

- The above direction to be periodically reviewed at 12 months intervals or on application of Applicant and Applicant to be informed of same (Sec. 36)

- Consequences of Secrecy Directions :i) Controller not to pass Ordersii) No Appeal to lie from direction of Controlleriii) Secs. 100 - 103 to applyiv) If hardship is caused to Applicant, Solatium to be paid by

Central Governmentv) If Patent is granted subsequently, no renewal fee during

pendency of directions- When revocation of Secrecy Directions has taken place Applicant to

be given extension of time for doing what he has to carry out (Sec. 38)

- No Application can be preferred outside India for grant of Patent relating to defence purposes or atomic energy without written permission of Controller and prior consent of Central Government (Sec. 39)

- Violation of Sec. 35 & 39 results in abandonment and revocation of Patent (Sec. 40)

- Orders of Controller and Central Government - Final and cannot be questioned in Court (Sec. 41)

- All disclosures by Controller to Central Government valid (Sec. 42)

GRANT AND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY- On application by Applicant within prescribed time or such extended

time after Advertisement and Acceptance of Complete Specification, Controller to seal the Patent and register the same if :a) No opposition or time of filing Opposition has expiredb) Opposition decided in favour of Applicantc) Application not refused by Controllerd) Application not in contravention of Provisions of Act

- In case of death of Applicant or non-existence of body corporate which has filed the Application before Sealing Controller to include name of person to whom Patent to be granted (Sec. 44)

- Date of Patent entered in Register shall be Date of Application (Sec. 45)

- Patent to be in prescribed form, to have effect throughout India and to be granted for one invention only (Sec. 46)

- Grant of Patent subject to following conditions :a) Article or Process may be imported by Government for its useb) May be used by Government for its usec) May be used in experiment or research and imparting

instruction to pupilsd) If it is Patent of Medicine or Drugs may be imported by

Government for its use (Sec. 47)- Rights of Patentees relating to :

a) Goods i) Makeii) Market / Import

b) Process i) Useii) Market / Import (Sec. 48)

- Patent rights not infringed when used on foreign vessels, etc. temporarily or accidentally in India when required for its operation (Sec. 49)

- Rights of Co-owners of Patents :i) Each person entitled to equal undivided share of Patentii) Each person entitled to rights without accounting to the other

unless contract to contraryiii) Licence to be granted by one of them with consent of otheriv) Purchaser to treat sale as though by sole Patenteev) Rules of Law applicable to ownership and Devolution of

moveable property applicable (Sec. 50)- One of the Co-owners to apply to Controller to give directions to

other and Controller to do so after giving opportunity of being heard and if direction does not effect mutual rights (Sec. 51)

- When grant of Patent has been given to true and first inventor where it has been obtained by another in fraud of him Controller to give Patent bearing same Date and Number as of Patent revoked (Sec. 52)

- Term of Patent to be 20 years from Date of Application and can be renewed, if not renewed stands revoked and no protection against infringement during Interim period (Sec. 54)

PATENTS OF ADDITION

- Patent of Addition can be granted to any improvement in or modification of a Patent wherein a Complete Specification has been filed and the Complete Specification should have been filed on or later than Date of Specification in main invention (Sec. 54)

- Patent of Addition shall exist for same period as Main Patent and if Main Patent is revoked before expiry of period, Patent of Addition to continue as Independent Patent (Sec. 55)

- Patent of Addition cannot be revoked or invalidated on the ground that it does not involve :i) Inventive stepii) Ought to be subject of Independent Patent

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS- Applicant of Patent or Patentee may file Application for Amendment

of Application or Specification by giving full particulars to Controller and Controller to grant same and if it is substantive in nature, to be published, opposition accepted and hearing of Parties and then to decide and amendment may relate to Priority Date (Sec. 57)

- When proceedings for revocation is pending before High Court, Application for Amendment can be filed before High Court after Notice to Controller and High Court to give directions and Direction of Amendment to be recorded by Controller (Sec. 58)

- Amendment to be allowed only for following purposes :i) A disclaimerii) Correction or Explanationiii) Incorporation of Actual factiv) Within Scope of SpecificationAnd Amendment cannot be questioned except on ground of fraud (Sec. 59)

RESTORATION OF LAPSED PATENTS- Application for Restoration of Lapsed Patent by Aggrieved Party can

be filed giving the reasons for non payment of renewal fee within 18 months (Sec. 60)

- Controller to advertise Application if he is satisfied that :a) Failure to pay renewal fee was unintentionalb) No undue delay in filing ApplicationAccept opposition on above ground and renew PatentAfter hearing Parties and collecting Renewal and Additional fee and enter the same in Register (Sec. 61) and Controller may impose conditions

- For the inbetween period i.e. Lapse and Restoration :a) Compensation to aggrieved persons

b) No Suits of Infringement (Sec. 62)

SURRENDER AND REVOCATION OF PATENTS- Patentee to notify in prescribed manner of surrender of Patent to

Controller, Controller to advertise and notify Interested Person, consider opposition, hear Parties and revoke Patent (Sec. 63)

- On Petition by Interested Person, Central Government or Counter-claim in Suit for Infringement High Court to revoke Patent on following grounds :i) is subject to valid claim of earlier Priority Dateii) Applicant lacks capacityiii) Patent wrongfully obtainediv) Not an inventionv) Not newvi) Does not involve inventive stepvii) Not usefulviii) Complete Specification does not sufficiently and fairly describe

inventionix) Scope not sufficiently and clearly definedx) Patent obtained on false suggestion and representationxi) Secretly used in Indiaxii) Inadequate information and false information givenxiii) Amendment obtained by Fraudxiv) Non-disclosure or wrongful disclosure of Geographical origin of

Biological material usedxv) Has been anticipatedxvi) Non-Compliance with Central Government directionsNotice to be given to all interested persons (Sec. 64)

- Central Government may direct Controller to refuse Application or revoke Patent relating to Atomic Energy and Controller to do same after Notice to Party (Sec. 65)

- Central Government is of opinion Patent is mischievous to State or against Public Interest, give Notice, hear and Notify its Revocation (Sec. 66)

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REGISTER OF PATENTS (CHAP. XIII)

PATENT OFFICE AND ITS ESTABLISHMENT (CHAP. XIV)

POWERS OF CONTROLLER GENERALLY (CHAP. XV)

WORKING OF PATENTS, COMPULSORY LICENCES AND REVOCATION- ‘Patented Article’ includes Article made by Patented process

‘Patentee’ includes exclusive Licensee (Sec. 82)- Principles underlying Grant of Patent :

a) Encourage inventions, their Commercial Application without undue delay

b) Not for Patentees to enjoy monopoly of Articlec) Promotion of Technological Innovationd) Promote Public Intereste) Do not prohibit Central Government from taking measures to

protect Public Healthf) Patent Right not to be abusedg) Benefit of Patented Invention to be available at reasonable

prices- On expiry of 3 years from date of sealing, Party interested to apply

to Controller for Grant of Compulsory Licence on the following grounds :a) Reasonable requirements of Public not satisfiedb) Patented Article not available to Public at affordable pricesc) Patent not worked within Territory of IndiaAnd stating that person’s interest and to be granted by Controller if conditions fulfilled and taking into account following factors :a) Nature of Inventionb) Ability of Applicant to work invention to Public advantagec) Capacity of Applicant to take riskd) Whether Applicant has made reasonable attempts to obtain

LicenceAnd reasonable requirements of Public shall be deemed not to have been satisfied :i) a) Existing Trade and Industry prejudiced

b) Demand for Patented Article not met on reasonable termsc) Market for Export of Patented Article not developedd) Commercial Activities in India prejudiced

ii) Manufacture of Patented Articles not protectediii) Results in Coercive Package Licensing - Exclusive Grant back

iv) Not worked in Territory of Indiav) Working of Patented Article prevented (Sec. 84)

- Central Government or Person interested may prefer Application on expiry of two years of Grant of Compulsory Licences for Revocation of Patent on following grounds :

a) Patented Invention not worked in Territory of Indiab) Reasonable requirements of Public not metc) Invention not available to Public at reasonably affordable pricesAlso to be included prescribed particulars and Applicant’s interest and if Controller satisfied may revoke Patent and decision to be within one year of publication (Sec. 85)

- Controller has power to adjourn Application by one year under Sec. 84 & 85 if it feels time was not sufficient for implementation of working of Patent

- Procedure applicable to Application under Sec. 84 & 85 :i) Notification to Patentee and Interested Personsii) Advertisement in Official Gazetteiii) Opposition à Notice to relevant persons

- Controller has power to give following directions if Application has been preferred under Section 84 due to unfavourable conditions put by Patentee while granting Licence :i) Direct Grant of suitable Licencesii) Cancel or Amend Licenceiii) Grant Licence in other related Patentsiv) Subsequently revise terms and conditions of LicenceThis Application cannot be entertained second time (Sec. 88)

- Grant of Compulsory Licence under Sec. 84 can be on following general grounds :i) Patented Article to be commercially exploited on large scale in

Indiaii) Other person working invention shall not be prejudicially

effected- Terms and Conditions to be imposed by Controller while granting

Licence under Sec. 84 except Import and this also with permission of Central Government :i) Reasonable Royalty and Remunerationii) Can be worked to fullest extant with reasonable profitiii) Article made available to Public at reasonable priceiv) Licence is not Non-Exclusive Licencev) Right of Licence not assignablevi) Licence is for balance period of Patentvii) If beneficial, Licence can be for Export

- Licencing of related Patents on reasonable terms and will contribute to Commercial activity in India on same conditions but not assignable

- Controller to grant Compulsory Licence on satisfaction of Central Government in following exigencies :i) National Emergency

ii) Extreme Urgencyiii) Public Non-Commercial useiv) Public Health Crisis (Sec. 92)

- Order for Licence to operate as a Deed between Patentee and Licencee (Sec. 93)

- On Application of Patentee and Interested Person Controller to cancel Compulsory Licence when conditions of its no longer exist and Licencee to be heard (Sec. 94)

USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT- When Invention is used, exercised or vended for purposes of

Central Government, State Government, or Government Undertaking it is used for purposes of Government (Sec. 99)

- After filing of Application Central Government or Authorised Person to use Invention for Government purpose but not for Commercial purpose and Patentee to be paid adequate remuneration and Central Government to notify use of Patent to Patentee (Sec. 100)

- Effect on Third Parties in respect of use of Invention for purposes of Government :i) Cannot regulate use by Governmentii) Government to make necessary paymentsiii) All Licences, Assignments and Agreements not to have effect

(Sec. 101)- Central Government may acquire Patents in Public Interest by

Notification to that effect in Official Gazette and Patent to vest in Government and Government to make necessary payments (Sec. 102)

- In case of disputes relating to Patent use by Central Government same may be referred to High Court (Sec. 103)

SUITS CONCERNING INFRINGEMENT OF PATENTS- District Court to have jurisdiction concerning Suits for Infringement

of Patents and in case of parallel Suit for revocation to be transferred to High Court (Sec. 104)

- Burden of Proof :Plaintiff - Product identical to Patented productDefendant - Process and Product different (Sec. 105)

- Court has power to declare a Product as Non-Infringing (Sec. 106)- In case of threats of Suits of Infringement Court may direct :

a) By Declaration of Threats as unjustifiableb) Grant Injunction against Threatsc) Damages (Sec. 106)

- All defenses available under Revocation available for in defense of Infringement (Sec. 107)

- Following Acts not Infringement :i) Use as per Lawii) Import by Authorised Person (Sec. 107)

- Relief in Suits for Injunction :i) Injunctionii) Damages / an Account of Profitsiii) Goods may be seized, forfeited or destroyed (Sec. 108)

- Licencee has same Rights for Infringement of his Rights and in case of Infringement of Patent Suit by Licencee, Patentee is Plaintiff otherwise Defendant (Sec. 110)

- In case of Infringement of Patent, Licencee (under Sec. 84) may request Patentee to file Suit of Infringement and if Patentee fails within two months, Licencee to file same and Patentee to be included as Defendant (Sec. 110)

- Court not to grant damages under following circumstances :i) Infringer was not aware of existence of Patentii) Plaintiff has failed to pay Renewal Feeiii) Amendment of Specification by way of Disclaimer not allowedAnd above not to effect Grant of Injunction (Sec. 111)

- High Court may grant Certificate of Validity of Suit for Infringement but the same not to effect Appeals (Sec. 113)

- Court to grant Relief in case of Valid Claims (Sec. 114)- Court to take advise of Scientific Advisor on Application or Sou Motu

(Sec. 115)

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APPEALS TO APPELLATE BOARD (CHAP. XIX)

PENALTIES (CHAP. XX)

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PATENT AGENTS- Controller to maintain Register of Patent Agents and the same to

contain name, addresses and other relevant particulars of persons qualified and the same can be retained in Electronic System (Sec. 125)

- Qualifications for registration as Patent Agent :

i) Citizen of Indiaii) 21 yearsiii) Degree in Science, Engineering or Technologyiv) An Advocatev) Passed Qualifying Examvi) Functioned as Examiner for 10 yearsvii) Paid prescribed feeAlready registered as Patent Agent prior to 2002 (Sec. 126)

- Rights of Patent Agent :i) Practice before Controllerii) Prepare proceedings before Controller (Sec. 127)

- All Applications and Communications (Verification) to Controller to be signed by Patent Agent and Concerned Person (Sec. 128)

- One can practise as Patent Agent only if registered as such and means :i) Applying for or obtaining Patents in India or elsewhereii) Preparation of Documents and Specificationsiii) Advice (Sec. 129)

- Removal of name from Patent Register wheni) Name has been entered in error or on misrepresentationii) Sentenced to imprisonment for Professional Misconduct- Restore name if sufficient cause shown (Sec. 130)

- Controller has power to refuse to deal with certain Agents :i) Name removed from Registerii) Convicted for Professional Misconductiii) Acting / Employed as Patent Agent of anotheriv) Controller does not recognize as Patent Agent - No residence

or place of business in India (Sec. 131)- No prohibition for

i) Applicant for Patent to draft Specification or appear before Controller

ii) An Advocate (Sec. 132)

INTERNATIONAL ARRANGEMENTS- Notification as Convention Country when another Country is given

same Rights as Indians based on Treaty, Convention or Arrangement (Sec. 133)

- Notification as to Countries not providing for Reciprocity then that National cannot :i) Apply for Grant of Patentii) Registered as Proprietor of Patentiii) Apply and hold Licence (Sec. 134)

- Convention Application - Made in more than One Country (Sec. 135)

- Special Provisions relating to Convention Application are :i) Accompanied by Complete Specificationii) Specify Date and Countries where Application is submittediii) No Application prior to Date of receiving Authority- Patents of Additions Application- Convention Application cannot be Post-Dated (Sec. 136)

- One Application sufficient in case Convention Application is made in more than One Country in respect of same Invention and Priority Date is Date of First Application (Sec. 137) and disclosure to have taken place in First Application

- Supplementary Provisions as to Convention Application -i) To give information of all Applicationsii) Translation if in Foreign languageiii) Date of Application as given by Head in that Countryiv) Complete Specification in International Application can be used

for purposes of this Actv) Date of Filing to be Date of Filing under Patent Co-operation

Treatyvi) Amendment to be considered as made before Patent Office

- All other Provisions to apply to Convention Application (Sec. 139)

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MISCELLANEOUS (CHAP. XXIII)