(iii) in clause (b), the words "details of the nature referred to in", the words "detailed particulars as required under" shall be substituted; (b) for sub-section (2), the following section shall be substituted, namely:— "(2) at any time after an application for patent is filed in india and till the grant of patent or refusal to grant of patent is made thereon, the controller may also require the applicant to furnish details relating to the processing of the application in a country outside india, and in that event the applicant shall furnish information available to him to the controller within thirty days from the date of receipt of the communication requiring such furnishing of information or within such further period as the controller may, for good and sufficient reasons, allow" amendment 8 in section 10 of the principal act,— of section 10   (a) in sub-section (4), after clause (c), the following clause shall be inserted, namely:— "(d) be accompanied by an abstract to provide technical information on the invetion: provided that— (i) the controller may amend the abstract for providing better information to third parties; and (ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not avilable to the public, the application shall be completed by depositing the material to an authorised depository institution as may be notified by the central government in the official gazette and by fulfilling the following conditions, namely: - (a) the deposit of the material shall be made not later than the date of the patent application in india or if a priority is claimed not later than the date of such priority; (b) all the available characteristics of the material required for it to be correctly identified or indicated is included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution; (c) access to the material is available in the depository institution only after the date of the application for patent in india or if a priority is claimed after the date of the priority; (d) disclose the source and geographical origin of the biological material in the specification, when used in an invention" (b) after sub-section(4), the following sub-section shall be inserted, namely:— "(4a) in case of an international application designating india,— (i) the title, description, drawings, abstracts and claims filed with the application shall be taken as the complete specification for the purposes of this act; and (ii) the filing date of the application and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the patent cooperation treaty";(c) for sub-section (5), the following sub-section shall be substituted, namely :— "(5) the claim or claims of a complete specification shall relate to a single invention, or to a group of invention linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification" 9 in chapter iv of the principal act,— amendment of  oo, oo, chapter iv (a) for the chapter heading "examination of applications", the following chapter heading shall be substituted, namely:— "publication and examination of applications"; (b) before section 12, the following sections shall be inserted, namely:— "11a (1) applications for patents shall be kept secret for a period of publication of eighteen months as from the date of filing or date of priority, whichever is  2pplications earlier , (2) except when a secrecy direction is given under section 35, every application for a patent shall, on the expiry of the period as specified in subsection (/), shall be published (3) the publication of every application for a patent shall be notifietl in the official gazette (4) in case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period of eighteen months or when the secrecy direction has ceased to operate, whichever is later (5) the publication of every application under this section shall include the particulars of the date of application, number of application, name and address of the application identifying the application and an abstract (6) upon publication of an application for a patent under this section— (a) the depository institution shall make the biological material mentioned in the specification available to the public; (b) the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public 11b (7) no application for a patent shall be required to be examined _ request for unless the applicant or other interested person makes a request in the prescribed - ©m™unation manner for such examination within forty-eight months from the date of filing of the application for patent (2) in case of applications filed before the commencement of the patents (second amendment) act, 1999, a request for examination shall'be made by the applicant or any other interested person within a period of twelve months from the date of such commencement or within forty-eight months from the date of application, whichever is later (3) in case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under'sub-section (j), the application shall be treated as withdrawn by the applicant: provided that— (i) the applicant may, at any time after the filing of the application but before the grant of the patent, withdraw the application made by him; and(ii) in a case where a secrecy direction has been issued under section 35, the request for examination may be made within forty-eight months from the date of revocation of the secrecy direction" 10 in section 12 of the principal act, in sub-section (1),— amendment of section 12 (a) (i) for the portion beginning with the words "when the complete specification" and ending with the words "specification relating thereto", the following shall be substituted, namely:— "when a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (/) of section 11b, the application and other documents related thereto" (ii) in clause (a), for the words "specification relating thereto", the words "oher documents related thereto" shall be substituted (5) in sub-section (2), for the words "specification relating thereto", the words "other documents related thereto" shall be substituted amendment of section 13 11 in section 13 of the principal act, in sub-section (2), the words "as the controller may direct" shall be omitted subsstituton of new section 12 for section 15 of the principal act, the following section shall be substituted, namely:— "15 where the controller is satisfied that the application or any specification for section 15 power of conor any other document filed in pursuance thereof does not comply with the requirements of this act or of any rules made thereunder, the controller may require troller to refuse applications in certain cases the application, specification or the other document as the case may be, to be amended to his satisfaction before he proceeds with the application or refuse the application on failure to do so" amendment of section 17 13 in section 17 of the principal act, in sub-section (2), the words, brackets, letter and figure "clause (b) of sub-section (/) of" shall be omitted 14 in section 21 of the principal act,— amendment of section 21 (a) in sub-section (1), for the portion beginning with the words "fifteen months" and ending with the words "of this section", the words "twelve months from the date on which the first statement of objections to the application or complete specification is forwarded to the applicant by the controller," shall be substituted (b) sub-section (2) shall be omitted; (c) in sub-section (3),— (i) for the words, brackets and figures "fifteen months specified in subsection (1) or the extended period, as the case may be,", the words "twelve months" shall be substituted; (ii) for the words "fifteen months or one extended period, as the case may be", the words "twelve months" shall be substituted; (d) in sub-section (4), for the words "fifteen months, or as the case may be, the extended period, until the expiration of", the words "twelve months to" shall be substituted 15 in section 22 of the principal act, in the proviso, for the words "eighteen months", amendment of section 22 the words "twelve months" shall be substituted 16 in section 23 of the principal act, for the words "filed in pursuance thereof", amendment of section 23 the words "as accepted by the controller along with the other documents filed by the applicant in pursuance thereof" shall be substituted 17 in section 25 of the principal act,— amendment of section 25 (a) in sub-section (1), after clause (i), the following clauses shall be inserted, namely:—"(j) that the complete specification does not disclose or wrongly mention the source or geographical origin of biological material used for the invention; (k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in any country,"; (b) in sub-section (2), for the words "shall give", the words "may, if so desired, give" shall be substituted; (c) in sub-section (3), after the words "shall be taken of any", the words "personal document or secret trial or" shall be added 18 in section 35 of the principal act, in sub-section (/), the words "to any person amendment of section 35 or class of persons specified in the directions" shall be omitted amendment of section 36 19 in section 36 of the principal act, for sub-section (7), the following sub-section shall be substituted, namely:— "(1) the question whether an invention in respect of which directions have been given under section 35 continues to be relevant for defence purposes shall be reconsidered by the central government at intervals of twelve months or on a request made by the applicant which is found to be reasonable by the controller and if, on such re-consideration it appears to the central government that the publication of the invention would no longer be prejudicial to the defence of india or in case of an application filed by a foreign applicant it is found that the invention is published outside india it shall forthwith give notice to the controller to revoke the direction and the controller shall thereupon revoke the directions previously given by him"  20 in section 43 of the principal act, in sub-section (/),— amendment of section 43 (a) in clause (c), the word "or" shall be inserted at the end; (b) after clause (c), the following clause be inserted, namely:— "(d) the application has not been found to be in contravention of any of the provisions of the act,"' amendment of section 45, 21 in section 45 of the principal act, for the sub-section (/), the following subsection shall be substituted, namely:— "'(1) subject to the other provisions contained in this act, every patent shall be dated as of the date on which the application for patent was filed"' 22 for section 48 of the principal act, the following section shall be substituted, namely:— "48, subject to the other provisions contained in this act and the conditions specified in section 47, a patent granted after the commencement of the patents (second amendment) act, 1999 shall confer upon the patentee— (a) where the subject matter of the patent is a product, the exclusive right to prohibit third parties who do not have his consent from the act of making using, offering for sale, selling or importing for those purposes that product in india; (b) where the subject matter of the patent is a process, the exclusive right to prohibit third parties who do not have his consent from the act of using that process and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in india: provided that the product obtained is not a product in respect of which no patent shall be granted under this act" amendment of 23 in-section 50 of the principal act, in sub-section (2), for the words "make, use, section 50, exercise and sell the patented invention'', the words and figures "the rights conferred by section 48" shall be substituted amendment 24 in section 53 of the principal act,— of section 53 (a) for sub-section (/), the following sub-section shall be substituted, namely: - "(1) subject to the provisions of this act, the term of every patent granted under this act shall be twenty years from the date of filling of the application for patent" ; (b) after sub-section (3), the following sub-section shall be added, namely:— "(4) notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on-expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection" amendment 25 in section 57 of the principal act,— of section 57, (a) in sub-section (1), after the word "specification" occurring at both the places, the words "or any document related thereto" shall be inserted; (b) in sub-section (2), for the words "or a specification", the words "or a complete specification or any document related thereto" shall be substituted; (c) for sub-section (3), the following sub-section shall substituted, namely:— "(3) any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the acceptance of the complete specification and the nature of the proposed amendment may be advertised in the official gazette if the controller deems it fit to do so" amendment 26 in section 59 of the principal act, for sub-section (j), the following sub-section of section 59 shall be substituted, namely:— "(1) no amendment of an application for a patent or a complete specification or any document related thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose « of incorporation of actual fact, and no amendment of a complete specification shall be allowed the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment" amendment 27 in section 60 of the principal act,— of section 60 , ' " as " (a) in sub-section (/), for the words "one year"', the words "eighteen months ~ shall be substituted; (b) sub-section (3) shall be omitted amendment 28 in section 64 of the principal act,— of section 64  (a) sub-section (j):— (i) the proviso to clause (b) shall be omitted; (ii) the proviso to clause (e) shall be omitted; (iii) the proviso to clause (f) shall be omitted; (iv) after clause (0), the following clauses shall be added, namely:—'(p) that the complete specification does not disclose or wrongly mention 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 any country"; (b) in sub-section (2), in clause (a), for the words "secret use", the words "secret use, personal document or secret trial" shall be substituted 29 in section 67 of the principal act, for sub-section (4), the following sub-section amendment shall be substituted, namely:— of section 67 "(4) notwithstanding anything contained in sub-section (j), 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 1 of 1872 (5) notwithstanding anything contained in the indian evidence act, 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 the register is kept wholly or partly in computer floppies, diskettes or any other electronic form,— (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"' 30 in section 68 of the principal act, for the words "the controller within six months amendment 'from the commencement of this act, or the execution of the document, whicuever is later of section 68 or within such further period not exceeding six months in the aggregate'', the words "the controller within six months from the execution of the document or within such further period" shall be substituted 31 in section 72 of the principal act, after sub-section (3), the following sub- amendment section shall be added, namely: ~ of section 72 "(3) tf the record of particulars is kept in computer floppies, diskettes or any other er ctronic form, sub-sections(/) and (3) 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" 32 in section 76 of the principal act,— amendment of section 76 (a) for the words "central government", the words "central government, appellate board" shall be substituted;(b) in clauses (a) and (6), the words and figures " or under the indian patents and designs act, 1911' shall be omitted amendment of 33 in section 78 of the principal act, after the words "complete specifications", section 78 the words "or other documents related thereto" shall be inserted amendment of 34 to section 80 of the principal act, in sub-section (/), the following proviso section 80 shall be added at the end, namely:— '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"' amendment of 35 in secton 84 of the principal act,—- section 84   (a) in sub-sections (/) and (3), after the-words "alleging that the', the words "patented invention has not been worked in india or that the" shall be inserted; (b)in sub-section (5), after the words "satisfied that the", the words "patented invention has not been worked in india or that the" shall be inserted amendment of 36 in section 85 of the principal act, after clause (iii), the following clause shall be section 85 inserted, namely--- "(iv) except in case of a national emergency or other circumstances of extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-competitive practices adopted by the patentee, as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable commercial terms and conditions and whether such efforts have not been successful within a reasonable period as the controller may deem fit,'' omission of 37, sections 86, 87 and 88 of the principal act shall be omitted sections 86, 87 and 88 amendment of 38 in section 89 of the principal act,— section 89 (a) for sub-section (j), the following sub-section shall be substituted, namely:— "(1) where, in respect of a patent, a compulsory licence has been granted, the central government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the controller for an order revoking the patent on the ground that the patented invention has not been worked in india or that reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price" (b) in sub-section (3) after the words "if satisified that the", the words "patented invention has not been worked in india or that the" shall be inserted amendment of 39 in section 90,— section 90 (a) in the opening portion, for the words and figures "sections 84, 86 and 89", the words and figures "sections 84 and 89" shall be substituted; (b) in clause (@),— (i) the opening words "if, by reason of the default of the patentee to © manufacture in india to an adequate extent and supply on reasonable terms the patented article or a part or the patented article which is necessary for its efficient working or" shall be omitted; (ii) in sub-clause (i), the words "from manufacture in india" shall be omitted; (c) in clause (b), the brackets and words "(whether before or after the commencement of this act)" shall be omitted; (d) after clause (b), the following clause shall be inserted, namely:— "(bb) if the patentee imposes a condition upon the grant of licences under the patent to provide exclusive grant back, prevention to challenges to : the validity of patent or coercive package licensing"' (e) clause (d) shall be omitted; (f) in clause (e), for the words "by the patentee or other persons referred to in the preceding clause" the following shall be substituted, namely:— "by— (i) the patentee or persons claiming under him; or (ii) persons directly or indirectly purchasing from him; or (it) other persons against whom the patentee is not taking or has not taken proceedings for infringement " amendment of section 91, 40 in section 91 of the principal act, in sub-section (/), for the words and figures "section 84, section 86 or section 89, as the case may be, is made on the ground", the words and figures "section 84 or section 89, as the case may be, is made on the grounds that the patented invention has not been worked in india or on the ground" shall be substituted amendment of section 92 41 in section 92 of the principal act, in sub-section (/), the words and figures", section 86" shall be omitted 42 in section 93 of the principal act,— amendment of section 93 (a) sub-section (3) shall be omitted; (b) for sub-section (4), the following sub-section shall be substituted, namely:— "(4) where two or more patents are held by the same patentee and an applicant for a compulsory licence establishes that the reasonable requirements of the public have not been satisfied with respect to some only of the said patents, then, if the controller is satisfied that the applicat cannot efficiently or satisfactorily work the licence granted to him under those patents without infinging the other patents held by the patentee and if those patents involve important technical advancement of considerable economic significance in relation to the other patents, he may, by order, direct the grant of a licence in respect of the other patents also to enable the licensee to work the patent or patents in regard to which a licence is granted under section 84," amendment of section 95, 43 in section 95 of the principal act, in sub-section (j), after clause (iii), the following clauses shall be inserted, namely:— "(iv) that the licence granted is a non-exclusive licence; (v) that the right of the licensee is non-assignable; (vi) that the licence is for the balance term of the patent unless a shorter term is consistent with public interest; (vii) that the licence is granted with a predominent purpose of supplying in the indian market and in the case of semi-conductor technology, the licence granted is to work the invention for public non-commercial use and in the case, the license granted to remedy a practice determined after judicial or administrative process to be anti-competitive licensee shall be permitted to export the patented product" 44, after section 95 of the principal act, the following section shall be inserted, namely:— insertion of new section 95a "95a (1) on an application made by the patentee or any other person deriving termination of compulsory licencetitle or interest in the patent, a compulsory licence granted under section 84 may be terminated by the controller, if and when the circumstances that gave rise to the grant thereof no longer exist and such circumstances are unlikely to recur: provided that the holder of the compulsory licence shall have the right to object to such termination (2) while considering an application under sub-section (/), the controller shall take into account that the interest of the person who had previously been granted the licence is not unduly prejudiced amendment 45 in section 96 of the principal act, to sub-section (3), the following proviso'shall of section 96 be added at the end, namely:— "provided that the licence granted by the controller shall be non-assignable except with the assignment of the respective patents" amendment 46 in section 97 of the principal act, in sub-section (1),— of section 97 (a) for the words "or class of patents in force that it is necessary or expedient in the public interest", the words "in force in circumstances of national emergency or circumstances of extreme urgency, it is necessary or in case of public noncommercial use" shall be substituted; (b) for the word "terms" occurring in clauses (i) and (ii), the words "terms and conditions" shall be substituted amendment 47 in section 99 of the principal act, sub-section (3) shall be omitted of section 99 amendment 48 in section 100 of the principal act,— of section 100 (a) the proviso to sub-section (3) shall be omitted; (b) in sub-section (5), for the words "unless it appears to the government that it would be contrary to the public interest so to do", the words "except in circumstances of extreme urgency or of national emergency or for non-commercial use" shall be substituted; (c) in sub-section (6), for the words "right to sell the goods", the words "right to sell, on non-commercial basis, the goods" shall be substituted 49, in section 101 of the principal act,— (a) in sub-section (1),— insertion of new section 101 + (i) the words ", whether before or after the commencement of this act," shall be omitted; (ii) the brackets and words "(including payments by way of minimum royalty)" shall be omitted; (b) in sub-section (2), the brackets and words "(including payments by way of minimum royalty)", shall be omitted; (c) in sub-section (3), in clause (b), the words "including payments by way of minimum royalty" shall be omitted 50 after section 104 of the principal act, the following section shall be inserted, namely:— insertion of new section 104a "104a (1) in any suit for infringement of a patent, where the subject matter burden of proof in case of the patent is a process for obtaining a new product, the burden of proving that a new and identical product is not made by that process shall be on the alleged infringer of suits concerning infringement if a substantial likelihood exists that the identical product is made by the process, and the proprietor, of the patent or a person deriving title or interest in the patent from him has been unable through reasonable efforts to determine the process actually used: provided that the proprietor of the patent or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process (2) in considering whether a party has discharged the burden imposed upon him by sub-section (/), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so " 51 after section 107 of the principal act, the following section shall be inserted, insertion of namely :—- new section 107a "107a for the purposes of this act— certain acts   not to be (a) any act of making or using a patented invention within three years _ considered as before the expiry of the term of the patent by any person for the purpose of ™fringement development and submission of information to any regulatory authority responsible for grant of marketing approval for the product of invention; (b) importation of patented products by any person from a person who is duly authorised by the patentee to sell or distribute the product, shall not considered as an infringement of patent rights" 52 section 108 of the principal act shall be renumbered as sub-section (1) thereof, | amendment of and after sub-section (j), as so renumbered, the following sub-section shall be inserted, section 108 namely:— "(2) the court may also order that the goods which are found to be infringing and materials and implements, the predominant use of which is in the creation of infringing goods shall be destroyed without payment of any compensation" 53 section 112 of the principal act, shall be omitted omigson of section 112, 54, for chapter xix of the principal act, the following chapter shall be substituted, substitution of namely:—  new chapter for chapter "chapter xix xix,  appeals to the appellate board116 (1) subject to the provisions of this act, the appellate boardestablished appellate under section 83 of the trade marks act, 1999 shall be the appellate board for board the purposes of this act and the said appellate board shall exercise the jurisdiction, powers and authority conferred on it by or under this act: provided that the technical member for the purposes of this act shall have the qualifications specified in sub-section (2) (2) aperson shall not be qualified for appointment as a technical member for the purposes of this act unless he— (a) has at least five years held the post of controller under this act or has exercised the functions of the controller under this act for at least five years; or (b) has been for at least ten years functioned as a registered patent agent and possesses a degree in engineering or technology or a masters degree in science from a recognised university or equivalent; or (c) has, for at least ten years, been an advocate of a proven specialised experience in practising law relating to patents and designs 117 (1) the central government shall determine the nature and categories —_ staff of of the officers and other employees required to assist the appellate board in the appellate discharge of its functions under this act and provide the appellate board with board such officers and other employees as it may think fit (2) the salaries and allowances and conditions of service of the officers and other employees of the appellate board shall be such as may be prescribed (3) the officers and other employees of the appellate board shall discharge their functions under the general superintendence of the chairman in the manner as may be prescribed117a (1) save as otherwise expressly provided in sub-section (3), no appeal | appeals    ||------------|| appellate  || board     |shall lie from any decision, order or direction made or issued under this act by the central government, or from any act or order of the controller for the purpose of giving effect to any such decision, order or direction (2) an appeal shall lie to the appellate board from any decision, order or direction of the controller or central government under section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, section 84, section 89, section 93, section 96 and section 97 (3) every appeal under this section shall be in the prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the decision, order or direction appealed against and by such fees as may be prescribed (4) every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the controller, or within such further time as the appellate board may in accordance with the rules made by it allow 117b the provisions of sub-sections (3) to (6) of section 84, section 87, section | procedure    | and    ||--------------|--------|| powers       | of     || appellate    |        || board       |        |92, section 95 and section 96 of the trade marks act, 1999 shall apply to the appellate board in the discharge of its functions under this act as they apply to it in the discharge of its functions under the trade marks act, 1999 bar of jurisdiction of 117c no court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section courts, etc (2) of section 116 or section 117d 117d (1) an application for rectification of the register made to the appellate board under section 71 shall be in such form as may be prescribed | procedure     | for    ||---------------|--------|| application   | for    || rectification |        |(2) acertified copy of every order or judgment of the appellate board relating to a patent under this act shall be communicated to the controller by the board and etc before appellate board the controller shall give effect to the order of the board and shall, when so directed, amend the entries in, or rectify, the register in accordance with such order 117e (1) the controller shall have the right to appear and be heard— appearance of controller in (a) in any legal proceedings before the appellate board in which the legal proceedings 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 appellate board from an order of the controller on an application for grant of a patent— (i) which is 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 appellate board (2) unless the appellate board 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 relavant to the issues and within his knowledge as the controller, and such statement shall be evidence in the proceeding117f in all proceedings under this act before the appellate board, the costs of the controller shall be in the discretion of the board, but the controller shall not | costs    | of    | con-    ||----------|-------|---------|| troller  | in    | pro-    || ceedings | be-   |         |be ordered to pay the costs of any of the parties fore appellate board 117g all cases of appeals against any order or decision of the controller and all cases pertaining to rectification of register, pending before any high court, shall | transfer    | of        ||-------------|-----------|| pending     |           || proceedings |           || to          | appellate || board      |           |be transferred to the appellate board from such date as may be notified by the central government in the official gazette and the appellate board may proceed with the matter either de novo or from the stage it was so transferred" amendment of 55 in section 120 of the principal act, for the words "five hundred rupees", the section 120 words "ten thousand rupees" shall be substituted 56 in section 122 of the principal act, in sub-section (1), for the words "one thousand amendment of section 122 rupees", the words "twenty thousand rupees" shall be substituted 57 in section 123 of the principal act,— amendment of section 123 (a) for the words "five hundred rupees", the words "ten thousand rupees" shall be substituted; (b) for the words "two thousand rupees", the words "forty thousand rupees" shall be substituted 58, for section 125 of the principal act, the following section shall be substituted, substitution of new section namely:— | for      | section    ||----------|------------|| 125     |            || register | of         || patent   | agents    |"125, (1) the controller shail 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 (/), 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" 59 in section 126 of the principal act,— amendment of section 126(a) in sub-section (1),— (2) in clause (c),— (a) for the words "degree from any university", the words "degree in science, engineering or technology from any university" shall be substituted; (b) in sub-clause (ii), the word "or" shall be added at the end; (ii) after sub-clause (ii), the following sub-clause shall be inserted, namely:— "(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;"; (b) for sub-section (2), the following sub-section shall be substituted, namely: - "(2) notwithstanding anything contained in sub-section (j), a person who has been registered as a patent agent before the commencement of the patents (second amendment) act, 1999, 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" amendment of 60 in section 128 of the principal act,— section 128 :    : (a) in sub-section (j), the words "subject to the provisions contained in subsection (3) and to any rules made under this act' shall be omitted; (b) sub-section (3) shall be omitted amendment of 61 in section 130 of the principal act, section 130 (a) for the words "central government" wherever they occur, the word "controller" shall be substituted; (b) in sub-section (/), for the word "it", the word "he" shall be substituted amendment of 62 in section 132 of the principal act,— section 132 :   (a) in clause (a), the words "or any person, not being a patent agent, who is duly authorised by the applicant" shall be omitted; (b) in clause (b), for the words "proceedings under this act otherwise than by way of drafting any specification", the words "hearing before the controller on behalf of a party who is taking part in any proceeding under this act" shall be substituted amendment 63 in section 133 of the principal act, the following explanation shall be inserted of section at the end, namely:— 133 'explanation—for the purposes of this chapter "country" includes a group or union of countries or inter-governmental organisations' amendment 64 in section 138 of the principal act,— of section (a) in sub-section (j), after the words "shall furnish", the words "when required by the controller," shall be inserted; (b) in sub-section (2), for the words "annexed to the specification or document", the words "furnished when required by the controller" shall be substituted; (c) after sub-section (3), the following sub-sections shall be inserted, namely :-— "(4) an international application filed under pateht co-operation 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 co-operation treaty (6) amendment, if any, proposed by the applicant for an international application designating india or designating and electing india before international searching or preliminary examination authority shall, if the applicant so desires, be taken as an amendment made before the patent office" amendment 65 in section 140 of the principal act,— of eection (a) in sub-section (j), in clause (ii), after sub-clause (c), the following subclause shall be inserted, namely:— "(d) to provide exclusive grant back, prevention to challenges to validity of patent and coercive package licensing,"; (b) sub-section (5) shall be omitted amendment of 66 in section 141 of the principal act, in sub-section (1), the words "whether made section 14] before or after the commencement of this act," shall be omitted amendment of 67 in section 142 of the principal act,— section 142(a) for sub-section (3), the following sub-section shall be substituted, namely:— "(3) where a fee is payable in respect of the filing of a document at the patent office, the fee shall be paid along with the document or within the prescribed time and the document shall be deemed not to have ben filed at the office if the fee has not been paid within such time"; (b) in sub-section (4), the words "or within the extended period not later than nine months from the date of recording" shall be added at the end 68 in section 143 of the principal act, for the words "or be open to public inspection amendment of section 143 at any time before the date of advertisement of acceptance of the application", the words "before eighteen months from the date of application or the priority date of the application or before the same is opened to public inspection" shall be substituted 69 for section 157a of the principal act, the following section shall be substituted, namely:— substitution of new secton for secton 157a protection of security of "157a notwithstanding anything contained in this act, the central government shall— india (a) not disclose any information relating to any patentable invention or any application relating to the grant of patent under this act, which it considers prejudicial to the interest of the security of india; (b) take any action including the revocation of any patent which it considers necessary in the interest of the security of india by issue of a notification in the official gazette to that effect explanation—for the purpose of this section, the expression "security of india" means any action necessary for the security of india which— (i) relates to fissionable materials or the materials from which they are derived; or (ii) relates to the traffic in arms, ammunition and implements of war and to such traffic in other goods and materials as is carried on directly or, indirectly for the purpose of supplying a military establishment; or (iii) is taken in time or war or other emergency in international relations" amendment 70 in section 159 of the principal act, in sub-section (2),— (a) after clause (i), the following clause shall be inserted, namely:— of section 159, "(ia) the manner of making the request for examination of an application for patent under sub-section (/) of section 11b;"; (b) in clause (iii), after the word "manner", the word "time" shall be inserted; (c) in clause (xi), after the word "maintained", the words "and the safeguards to be observed in the maintenance of such register in computer floppies, diskettes or any other electronic form" shall be inserted; (b) after clause (xii), the following clauses shall be inserted, namely:— "(xiia) the salaries and allowances and other conditions of service of the officers and other employees of the appellate board under sub-section (2) and the manner in which the officers and other employees of the appellate board shall discharge their functions under sub-section (3) of section 117; (xiib) the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of section 117a; (xtic) the form in which, and the particulars to be included in, the application to the appellate board under sub-section (j) of section 117d;"; (c) in clause (xiv), after the word "maintained", the words, brackets and figures "under sub-section (j) of the section 125 and the safeguards to be observed in the maintenance of such register of patent agents on computer floppies, diskettes or any ' other electronic form under sub-section (2) of that section;" 71 section 161 of the principal act, shall be omitted | omission    | of    ||-------------|-------|| section     | 161  || amendment   | of    |72 in section 162 of the principal act, sub-sections (2) and (3) shall be omitted  section 162,— statement of objects and reasonsthe law relating to patents is contained in the patents act, 1970 which came into force on the 20th april, 1972 the act was last amended in march, 1999 to meet india's obligations under the agreement on trade related aspects of intellectual property rights (trips) which forms part of the agreement establishing the world trade organisation (wt) apart from the aforesaid amendment, the act has not undergone any change so fa sin 1972, there has been considerable technological innovations and development of knowledge and the concept of intellectual property as a resource for knowledge-based industries has become well recognised the world over development of technological capability in india, coupled with the need for integrating the intellectual property system with international practices and intellectual property regimes, requires that the act be modified into a modern, harmonised and user-friendly legislation to adequately protect national and public interests while simultaneously meeting india's international oblications under the trips agreement which are to be fulfilled by 31st december, 1999 2 given the importance of the issues, the government engaged itself in broadbased and extensive consultations involving different interest groups on aspects critical to the changes which may be necessary in the patents act, 1970 3 while considering amendment to the act, efforts have been made to make the law not only trips complaint but also to provide therein necessary and adequate safeguards for protection of public intcrest, national security, bio-diversity, traditional knowledge, etc opportunity is also proposed to be availed of for harmonising the procedure for grant of patents in accordance with international practices and to make the system more user friendly 4 some of the salient features of the bill are as under:— (a) to define the term "invention" in consonance with international practices and consistent with trips agreement, (b) to modify section 3 of the present act to include exclusions permitted by trips agreement and also subject matters like discovery of any living or nonliving substances occurring in nature in the list of exclusions which in general do not constitute patentable invention; (c) to align rights of patentee as per article 28 of the trips agreement; (d) to add provision for reversal of burden of proof in case of infringement suit on process patent in accordance with article 34 of the trips agreement; (e) to provide a uniform term of patent protection of twenty years for all categories of invention as per article 33 of the trips agreement; (f) to align the provisions relating to compulsory licensing and to omit provisions relating to licensing of rights; (g) to provide provisions relating to parallel import of patented products; (h) to make a provision for enabling persons other than patent holder to obtain marketing approval from the appropriate regulatory authorities within three years before the expiration of the term of the patent; (i) to incorporate measures for protection of bio-diversities and traditional knowledge; (j) to provide an appelate board for speedy disposal of appeals and rectification of register of patent which at present lie before high court; (k) to amend the provisions relating to national security (1) to amend several provisions of the act with a view to simplifying and rationalising the procedures aimed at benefitting users 5 the bill seeks to achieve the above objects the notes on clauses explain the various provisions of bill new delhi murasoli maran the 16th december, 1999 clause 1—sub-clause (1) of this clause provides for the short title of the proposed legislation sub-clause (2) provides for appointment of different dates for commencement of different provisions of the bill when enacted, because provisions like those for appellate board are new and require providing of necessary mechanism, which may take some time clause 2—this clause provides substitution of the words "high court" and "court" by the words "appellate board" and "board" in sections 21, 43 and 71 and in sections 21 and 71 respectively of the patents act, 1970 (hereafter referred to as the act) in the bill it is proposed ia clause 54 to set up an appellate board to which appeals on the orders, decisions or directions of the "controller" and application for rectification of the register are to be made clause 3—this clause seeks to amend section 2 of the patents act, 1970 relating to definitions and interpretation while some new definitions which have been added, some of the existing definitions have been made comprehensive and amplified the new definitions which have been added are "appellate board", "capable of industrial application", "international application", "inventive step" and "patent cooperation treaty" and definitions which are amended are those relating to "assignee", "convention country", food, "high court" and "patent" while it is necessary to define new terminologies used in this bill, it has also become necessary to modify some other definitions in accordance with changing requirements, present practices, etc definition of "assignee" has been amended to include an assignee of the assignee the group of countries or union of countries or inter-governmental organization have been included in the definition of convention countries to meet the requirements of international treaties to which india is a party the definition of food has been amended to encode interpretation of the existing provision as applicable to human beings only "invention" has been defined to mean a new product or process involving an inventive step and capable of industrial application to make it in conformity with article 27 of the agreement on trade related intellectual property rights (trips) the expressions "inventive step" and "capable of industrial application" have aiso been defined clause 4—this clause seeks to amend section 3 of the act which relates to inventions not patentable it is proposed to modify some of the provisions in respect of non-patentable subject matter and also proposes to include some additional matters as non-patentable under the category of non-patentable subject matter sub-clause (a) seeks to substitute clause (b) of the said section so that invention causing serious prejudice to human beings, animals or plant or to the environment would not be inventions within the meaning of the act sub-clause (b) seeks to amend clause (c) of section 3 so as to include discoveries of any living thing or non-living substance occurring in nature as not inventions patentable method of testing has been removed from the category of non-patentable subject matter by omission of clause (g) of section 3 as required by article 27 of the trips agreement the scope of the subject matter under clause (1) of seciton 3 has been widened to include diagnostic and therapeutic methods but the similar treatment of plants in this category has been removed from the category of non-patentable inventions as such exclusion is not permissible under article 27 of the trips agreement a new provision has been added to exclude plants and animals, other than micro-organism in whole or any part thereof including seeds varieties and species and essentially biological process for production or propogation of plants and animals from being patentable as these exclusions are permissible under paragraph 3 of article 27 of the trips agreement similarly a mathematical or business method or a computer programme or algorithms, a literary, dramatic, musical or artistic work or any other aesthetic creation including cinematographic works and television productions, a mere scheme or rule or method of performing mental act or method or playing game; a presentation of information and topography of integrated circuits have been included in this section so as to be ineligible for being patented clause 5—this clause seeks to amend section 5 of the act relating to inventions where only methods or processes of manufacture are patentable it is proposed to add an explanation to the section clarifying that the expression "chemical process" shall include biochemical, biotechnological and microbiological processes products of such processes are not presently protected under the act clause 6—this clause seeks to insert a new provision in section 7 of the act which relates to form of application it proposes that an international application when it is filed designating india shall be treated as an application under the act the provision is in conformity with the patent cooperation treaty to which india is a signatory clause 7—-sub-clause (a) of this clause proposes to amend sub-section (1) of section 8 of the act which relates to information and undertaking regarding foreign applications to enable filing of particulars of corresponding applications being prosecuted in other countries either alongwith the application subsequently within such period as the controller may, for goods and sufficient reasons allow it is also proposed to expand the requirement of submission of such particulars to detailed particulars of the foreign application by sub-clause (b), sub-section (2) of section 8 is proposed to be substituted by a provision for receiving information relating to processing of corresponding application outside india from the applicant within one month under the direction of the controller or within such period as the controller may permit clause 8—by this clause some new provisions are proposed to be included under section 10 which relates to contents of application to make furnishing of abstract of invention as mandatory for making deposit of biological material mentioned in the specifications with the authorized depository institution and also for disclosing the source and geographical origin of the biological material used in the invention the proposed new sub-section (4a) seeks to lay down that the title, description drawings and claims filed in an international application designating india shall be the complete specification under the act and the filing date of an application for patent and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the patent cooperation treaty this provision is in accordance with patent cooperation treaty to which india is a signatory sub-clause (c) seeks to substitute sub-section (5) of section 10 to accommodate a group of inventions as one invention when having single inventive concept the provision is in accordance with patent cooperation treaty to which india is a signatory clause 9—this clause seeks to insert new section i] a and ii b in the act to include a system of publication of applications after 18 months of the priority date and a system of examination on request only the request can be made by the applicant for patent or any other interested party provisions for withdrawal of application has also been introduced consequent upon the insertion of these new provisions, the heading of chapter iv is proposed to be amended to read as publication and examination of applications clause 10—this clause proposes to amend section 12 which relates to examination of application to the effect that the application is to be referred by the controller to an examiner for examination only after a request for such examination is received clause 11—this clause proposes to amend section 13 of the act which relates to search for anticipation by previous publication and by prior claim so as to make international search mandatory for the examiner which under the existing provisions, is required only on the direction of the controller clause 12—this clause seeks to substitute section 15 which relates to power of controller to refuse or require amendment of application the provision has been simplified to enable the controller to require the application, specification or drawings to be amended to his satisfaction or on failure to do so entails refusal of applicationclause 13—this clause proposes to amend section 17 as a consequential to the introduction of the new provision of section 15 by clause 12 clause 14—this clause proposes to amend section 21 of the act which relates to the time for putting application in order for acceptance by this clause the time limit for putting up an application for patent in order for acceptance has been reduced to twelve months (with no further extension) from the existing time limit of 15 months, extendable by 3 months, for expediting grant of patents clause 15—this clause proposes to amend section 22 of the act so as to make changes consequential to the changes proposed in section 21 by clause 14 clause 16—this clause seeks to amend section 23 of the act which relates to advertisement of acceptance of complete specification by this clause it is proposed to provide that the other documents alongwith the application and the specification as accepted should made available to public inspection on advertisement of acceptance of complete specification in the official gazette clause 17—this clause seeks to amend section 25 of the act relating to opposition to grant of patent to incorporate two additional grounds for opposition to grant of a patent it is proposed to include non-disclosure or wrongful disclosure of the source of biological materials and also availability of local or indigenous knowledge oral or otherwise in any country as grounds for opposition further it is also proposed that when opposition is not substantially lodged, the controller should not be compelled to give hearing to the parties this is with a view to avoid dilatory tacties of parties this scope of sub-section (3) with respect to secret use is proposed to be extended to incorporate personal documents and secret trial clause 18—this clause proposes to amend section 35 of the act which relates to secrecy directions relating to inventions relevant for defence purposes it is proposed to extend the scope of secrecy from partial secrecy with respect to a person or class of persons to complete secrecy in respect of inventions relevant for defence purpose clause 19—this clause proposes amendment of section 36 of the act which relates to periodical review of secrecy directions it is proposed to substitute sub-section (1) with a new sub-section so as to provide for review of secrecy direction after a uniform interval of one year in place of nine months at the first instance and thereafter twelve months further it is also proposed that on publication of application abroad in case of foreign applications, the secrecy direction shall be removed by the central government clause 20—this clause proposes to amend section 43 of the act which relates to grant and sealing of patent it is proposed to incorporate a provision for refusal of grant of patent by controller in case the accepted application violates any of the provisions under the act clause 21—this clause proposes to amend section 45 which relates to date of patent to make the date of patent as date of filing of the application in place of date of filing of complete specification and to delete the proviso relating to the provisions of patents and designs act, 1911 which have no relevance now clause 22—this clause seeks to substitute section 48 of the act which is for right of the patentee with a new provision under the proposed section, the right of a patentee on product patent will be extended to prevent importation and that on process patent is extended to sell and importation of the product directly obtained by the process, provided that the product itself is patentable under the act clause 23—this clause seeks to carry out a consequential amendment in section 50 of the act which relates to right of co-owners of patents proposed by clause 22clause 24—this clause proposes amendment of section 53 of the act which relates to the term of patent sub-clause (a) proposes to substitute sub-section (1) so as to lay down a uniform term of 20 years for every patent granted under the act from the date of filing of application for such patent this provision is proposed in accordance with article 33 of the trips agreeement sub-clause (b) seeks to insert a new sub-section (4) to section 53 so as to provide that once the invention enters into public domain due to non-payment of renewal fee or expiry of full term, the subject matter is not entitled to protection clause 25—this clause proposes amendment of section 57 of the act which relates to amendment of application and specification to incorporate provision for amendment of other documents related therewith further it is also proposed to make it discretionary to the controller to advertise in the official gazette of the advertisement of amendment proposed and the nature of such amendment after acceptance of the comnplete specification by him clause 26—-this clause seeks to amend section 59 of the act which provides supplementary provisions for amendment of application and sepcification so as to allow amendment for incorporation of actual facts also to be included in the said supplementary provision clause 27—this clause proposes to amend section 60 of the act which relates to restoration of lapsed patent period for restoration is now proposed to be eighteen months in place of one year this clause further proposes deletion of sub-section (2) which relates to patents granted under the patents and designs act, 1911 as the said provision has become obsolete clause 28——this clause proposes to amend section 64 of the act which relates to revocation of patents by this clause, proviso to clauses (b), (e) and (f) of sub-section (1) are proposed to be omitted as those provisos pertain to patents granted under the patents and designs act, 1911 (since repealed) and have since become obsolete this clause further proposes to incorporate two additional grounds for revocation of patents nondisclosure or wrongful mentioning of the source or geographcial origin of biological material used for the invention is now proposed to be a grounds for revocation of patent this measure is taken to protect the bio-diversity of the country it is further proposed to include knowledge available to indigenous community in any country as anticipation of the invention for the purpose of revocation of patent this measure is taken to protect folklore or knowledge belonging to local or indigenous community clause 29—-this clause seeks to amend section 67 of the act which relates to register of patent by this clause it is proposed to enable the controller to maintain the register of patent or any part thereof in computer floppies or diskettes or in any other electronic form subject to such safeguards as may be prescribed by rules it is a meausre to keep pace with recent developments in the technology and to provide better and quicker services clause 30—this clause seeks to amend section 68 of the act which relates to registration of the documents like assignments, etc by this clause, the rigidity in the provision to make registration within a maximum period of one year from the date of execution of the documents is proposed to be made flexible clause 31—this clause proposes to amend section 72 of the act which relates to register of patent to be open for public inspection this clause provides amendments which are consequential to the amendment proposed in section 67 by clause 29 clause 32—this clause proposes to amend section 76 of the act which relates to restriction on the officers or employees in the patent office to furnish information, etc, except by the order of the central government or controller or court by this clause it is proposed to add "appellate board" to it as consequential to the establishment of appellate board by clause 54 this clause further provides deletion of reference to the patents 'and designs act, 1911 as which has become obsolete clause 33—this clause proposes to amend section 78 of the act which relates to power of the controller to correct clerical errors, etc by this clause the words "or other documents related thereto" has been sought to be inserted after the words "complete specifications" in sub-section (1)n order to enable the controller to correct the said documents this is consequential to the amendments proposed in sections 57 and 59 clause 33—this clause proposes to amend section 80 of the act which relates to exercise of discretionary powers by controller this clause seeks to add a proviso to the said section so as to lay down that at least 10 days time limit shall be given for requesting hearing by the party desiring a hearing before the controller this provision will enable the controller to have timely and effective hearing to the parties clause 35—this clause proposes to amend section 84 which relates to grant of compulsory licence on patents by this clause, additional ground of non-working of patented invention in india has been included in the grounds for grant of compulsory licence clause 36—this clause proposes to amend section 85 of the principle act which relates to matters to be taken into account in granting compulsory licences this clause provides prior approaching to patentee for grant of licence on reasonable terms and conditions this clause further provides that such prior approaching is not necessary in the case of national emergency, extreme urgency, public non-commercial use or on establishment of a ground of anti competitive practices adopted by the patentee clause 37—this clause proposes to delete sections 86, 87 and 88 of the act which relate to licence of right as these provisions are not in conformity with provisions under article 31(a) of the trips agreement which lays down that use of patent without authorisation of the patentee to be considered only on individual merit clause 38—this clause proposes to amendment section 89 of the act which relates to revocation of patent by the controller for non-working amendments proposed are consequential to the amendments proposed in section 84 vide clause 35 clause 39—this clause proposes amendment of section 90 of the act which provides circumstances as to when reasonable requirement of the public deemed to be not satisfied it is proposed to omit certain words relating to manufacture in india from clause (a) and clause (d) of section 90 so as to meet the obligations under the trips amendments consequential to the omition of clause (d) are also proposed to be made in clause (e) it also proposes removal of reference to section 86 which is proposed to be deleted by clause 37 further the words whether before or after the commencement of this act are also proposed to be deleted from clause (a) of section 90 as the provision under the patents and designs act, 1911 have become redundant further it is also proposed that if the patentee imposes restrictive conditions while granting a licence the same will also be taken as of the reasonable requirement of public is not met ' clause 40-—this clause proposes amendment of section 91 of the act which relates to the power of controller to adjourn application for compulsory licences in some cases amendments proposed are consequential to the amendments contained in clauses 35 and 37 clause 41—this clause seeks to amend section 92 of the act which relates to proceedings for dealing with applications for compulsory licences so as to omit the reference to section 86 therein the amendment proposed is consequential to the amendment contained in clause 37 clause 42— this clause proposes amendment of section 93 of the act which relates to the power of controller in granting compulsory licence sub-section (3) which empowers the controller to grant compulsory licence of exclusive nature is proposed to be deleted as it contravenes clause (d) of article 31 of trips agreementclause 43— this clause amendment of section 95 of the act which relates to terms and conditions of the compulsory licences it is proposed to introduce three more clauses in sub-section (1) so as to enable the controller to endeavour to secure, the in setting the terms and conditions of a licence under section 84 the new conditions are that the compulsory license to be an non-exclusive license, rift under license is non-assignable, the licence is to be granted for the balance term of the patent and that the license is granted for predominant purpose for supply in the india market further licence granted for semi-conductor technologies is for public non-commercial use and in the case of establishment of anti-competitive practices adopted by the patentee, licence granted can be for exporting the goods manufactured these provisions are proposed in accordance with article 31 of the trips agreement clause 44—this clause incorporate a new provision for termination of compulsory licence in the act when the circumstances on which compulsory licence is granted does not exist and also unlikely to recur after consideration of objection, by the licence holder and taking into account to his interest these provisions are porposed to make the law in conformity with clause (g) of article 31 of trips agreement clause 45— this clause proposes amendment of section 96 of the act which relates to licensing of related patents it imposes a restriction on the licence granted by the controller as to be non-assignable this provision is proposed in accordance with clause ()) of article 31 of the trips agreement clause 46— this clause proposes amendment of section 97 of the act which relates to special provision of compulsory licence on notification by central government it is proposed to remove the applicability of the provision to "class of patents" and to substitute the expression "public interest" with "circumstances of national emergency or circumstances of extreme urgency" these amendments are proposed in accordance with article 31 of the trips agreement clause 47— this clause propose omission of sub-section (2) of section 99 as it relates to the patents granted under the patents and designs act, 1911 and has thus become redundant clause 48— this clause proposes amendment of section 100 of the act which relates to power of central government to use invention for the purpose of government it is proposed to delete the proviso under sub-section (3) which restricts the royalty to four  per cent as it is against the provisions of clause (h) of article 31 of the trips agreement according to which patent holder must be paid adequate remuneration based on the circumstances of the case sub-clause (b) seeks to amend sub-section (5) so as to substitute the words "contrary to public interest' by the words "circumstances of extreme urgency or of national emergency or for public non-commercial use" as in those circumstances only the trips agreement permits that the patent holder need not be approached when use without authorisation of the patent holder is granted, sub-clause (c) seeks to amend subsection (6) so as to restrict the right to sell the goods to non-commercial basis this is proposed in accordance with article 31 of the trips agreement clause 49— this clause proposes amendment of section 101 of the act which relates to rights of third parties in respect of use of invention for purposes of government it is proposed to omit the words, "whether before or after the commencement of this act" occurring in sub-section (/) as these words have become redundant it is also proposed to omit the brackets and words "(including payments by way of minimum royalty)" occurring in sub-sections (1) and (2) as clause (a) of article 31 of trips agreement provides for payment of adequate remuneration based on the circumstances of the case clause 50—this clause seeks to insert a new section 104a in the act relating to burden of proof in the cases of infringement suits it is proposed that in the case of infringement of process patent, the burden of proof in proving that the patent is not infringed shall be on the alleged infringer in the circumstances specified in the provision however, the alleged infringer shall not be required by the court to disclose any manufacturing or commercial secrets when such disclosure is found to be unreasonable clause 51—this clause seeks to insert a new section 107a in the act, relating to certain acts which are not to be considered infringements it is proposed that the act of making or using a patented product for the purpose of development and submission of information to a regulatory authority regulating marketing approval of the product, shall not constitute an infringement this provision is proposed to ensure that generic durg should be available in indian market immediately after the expiry of the term of the concerned patents it is also proposed that the importation of patented product from the person who is duly authorised by the patent holder shall not constitute an infringement this provision is proposed to ensure availability of the patented product in the indian market at minimum international market price clause 52—this clause proposes to amend section 108 of the act which relates to reliefs in suits for infringement it is proposed to provide additional reliefs to the patentee in case of infringement of the patent by giving power to the court for destruction of infringing goods and implements used for the production of said goods this provision is proposed in accordance with articles 41 and 61 of the trips agreement clause 53—this clause seeks to omit section 112 of the act which relates to restriction on powers of the court to grant injunction in cases of infringement of patent endorsed or deemed to be endorsed with the words '"'licences of rights" this is consequential to the proposal made in clause 37 for deletion of section 86, 87 and 88 which are related to "licences of rights' clause 54—this clause seeks to substitute chapter xix of the act with a new chapter with the heading 'appeals to the appellate board'' intellectual property is a specialized subject needing special expertise to deal with appellate tribunal for intellectual property is a recognised system in many countries of the world having regard to the expected increase in the volume of appeals in the future and in order to have speedy, timely and less expensive disposal of appeals, etc it is proposed to utilize the services of the intellectual property rights appellate board sought to be established under section 83 of the proposed trade marks act, 1999 with experienced hands in the field of patent law as technical member it is proposed that appeals from the decisions of the controller shall be to the appellate board instead of to the high court further, rectification of the register which is now before the high court under section 71 of the act is proposed to be brought before appellate board the new chapter deals with constitution, functions and powers of the appellate board, qualifications of technical member, arrangement of staff for the appellate board, appeals, procedure of appellate board, bar of jurisdiction of other forum in matters within the jurisdiction of the appellate board, procedure for rectification before appellate board, appearance of controller before the appellate board, cost of controller and transfer of proceedings pending before high court clause 55—this clause proposes amendment of section 120 of the act which relates to unauthorized claim of patent right it is proposed to raise the amount of fine from five hundred rupees to ten thousand rupees based on the prevalent socio-econonic conditions and the nature of the offence clause 56—this clause proposes amendment of section 122 of the act which relates to refusal or failure to supply information about patents to the controller or central government when asked to do so, it is proposed to raise the fine for such refusal or failure from one thousand rupees to twenty thousand rupees based on the prevalent socio-economic conditions and the nature of the offence clause 57—this clause proposes to amend section 123 of the act which relates to practice by non-registered patent agents it is proposed to raise the amount of fine in that respect from five hundred rupees to ten thousand rupees for first offence and from one thousand rupees to twenty thousand rupees for any subsequent offence based on the changed socio-economic conditions and the nature of the offence clause 58—-this clause seeks to substitute a new section for section 125 of the act which relates to register of patent agent by a new provision the provision will enable maintenance of the register of patent agent to be kept in computer floppies or diskettes or in any other electronic form this provision is made to keep pace with the modern technology computer floppies or diskettes or any other electronic form it is proposed to lay down necessary safeguards by way of rules clause 59—this clause proposes amendment of section 126 which relates to the qualifications for registration as a patent agent by this clause it is proposed that in place of qualification of degree from any university, the qualification of degree in science, engineering or technology from any university to be substituted to ensure that the patent agents are sufficiently qualified to deal with scientific and technological matters contained in the specification further it is proposed that controller and examiners of the patent offices having functioned on such for 10 years will be qualified for registration of patent agents this provision is made to enrich the profession of the patent agent with the experienced personnel of the patent office at present the said profession is deficient of experienced personals for which applicants for patents are suffering and their intersts are prejudiced sub-clause (b) seeks to substitute sub-section (2) so as to provide for reregistration of existing patent agents clause 60—this clause proposes to amend section 128 of the act which relates to subscription and verification of certain documents by patent agent the amendment proposed will remove the restriction an patent agents in respect of signing and verification of documents produced before the patent office clause 61—this clause proposes amendment of section 130 of the act which relates to removal of name from the register of patent agent and restoration thereof by this amendment, the power to remove and restore any name from or in the register of patent agent is proposed to be vested in controller in place of the central government clause 62—this clause seeks to amend section 132 of the act which relates to savings in respect of the persons authorised to act as patent agents so as to preclude any person other than the applicant and patent agents from drafting of specification or acting or appearing before the controller other than the applicants for patents it also restricts the activities of advocates, who are not patent agents to practice before the controller they will be permitted only to take part in the hearing before the controller clause 63—this clause proposes amendment of section 133 of the act which relates to notification as to convention countries it is proposed to include an explanation to this section to the effect that for the purpose of the whole chapter which relates to international arrangement, the expression country will include a group or union of country or intergovernmental organization this proposal is made to make reciprocal arrangement with bodies like european union, aripo, etc which are members of international treaties like paris convention or wto to which india is also a party clause 64-—-this clause proposes amendment of section 128 of the act which provides supplementary provisions as to convention application by this proposal the furnishing of certified copy of basic application to the controller is made optional and with the discretion of the controller it is also proposed that the translation of the documents in foreign language can only be furnished to the controller on his requisition it is also proposed that international application filed under patent cooperation treaty designating india shall have the effect of filing an application for patent in india and the title, description, claims, abstract and drawings filed in the international application are to be taken as complete specification under the actit is further proposed that the amendments before international searching or preliminary examination authority shall be taken as amendment before the patent office when desired by the applicant these proposals are in accordance with provisions under patent cooperation treaty to which india is a signatory clause 65—this clause proposes amendment of section 140 of the act which relates to avoidance of certain restrictive conditions in contractual licenses sub-clause (a) of this clause seeks to specify that exclusive grant back, prevention to challenges to validity of patent or corecive package licensing shall be a restrictive condition sub-clause (b) seeks to omit sub-section (5) of this section as it refers to the indian patent and designs act, 1911 which has since become obsolete clause 66—-this clause seeks to amend section 141 of the act which relates to determination of certain contracts so as to omit the words "whether made before or after the commencement of this act" occurring in sub-section (1) thereof as these words have become redundant clause 67—this clause proposes amendment of section 147 of the act which relates to payment of fees by this clause it is proposed that fee can be paid alongwith documents requiring payment of such fee or within a period prescribed under the rules it if further proposed to increase the time limit to nine months for payment of arrear of renewal fees in the event the patent is granted after two years from the date of filing clause 68—this clause proposes amendment of section 143 of the act which relates to restriction upon publication of the specification, the amendment proposed are consequential to the provisions contained in the proposed new sections 11a and section 23 vide clauses 9 and 16 respectively clause 69—this clause proposes amendment of section 157a of the act relating to the protection of security of india by this clause it is proposed that the central government can take any action including revocation of a patent in the interest of the security of india under clause (b) of this section by issuing a notification in official gazette clause 70—this clause seeks to amend sub-section (2) of section 159 of the act relating to rule making powers of the central government by this clause some additional matters in respect of rule making powers are sought to be enumerated as consequential to the other amendments proposed in the act these inter alia include the safeguards to be observed in maintenance of register of patent and register of patent agents in computer floppies or diskettes or in any other electronic media the manner of making a request for examination of an application for patent, the salaries and allowances and other conditions of service of the officers and other employees of the appellate board under sub-section (2) of section 177 and the manner in which such officers and employees shall discharge their functions under sub-section (3) of that section, the form of making an appeal, the manner of verification and fee payable under sub-section (3) of section 117a, the form in which, and the particulars to be included in, the application to the appellate board under sub-section (1) of section 117d and the time of payment of fees clause 71—this clause proposes to omit section 161 of the act which relates to special provision with respect to certain applications deem to have been refused under the patents and designs act 1911, as the said section has become obsolete clause 72—this clause seeks to omit sub-sections (2) and (3) of section 162 of the act which relates to repeal of act 2 of 1911 as those provisions have become obsolete financial memorandumclause 54 of the bill seeks to substitute chapter xix of the patents act, 1970 with a new chapter xix relating to appeals to the appellate board the new section 116 sought to be inserted by the aforesaid chapter xix, inter alia, provides that the appellate board for the purposes of the patents act, 1970 the board will have technical member(s) fulfilling the qualifications laid down in sub-section (2) of the proposed section 116 proposed new section 117 sought to be inserted in new chapter xix empowers the central government to determine the nature and categories of officers and other employees required to assist the appellate board in the discharge of its functions under the act and provide the board with such officers and other employees as the central government may think fit sub-section (2) of the said section 117 provides that the salaries and allowances and conditions of service of officers and other employees of the appellate board shall be such as may be prescribed by the central government by rules 2 it is estimated that, for meeting the salaries, allowances, etc, of the officers and other employees of the appellate board, a recurring expenditure to the tune of rupees 4627 lakhs per annum from the consolidated fund of india will be incurred it is also estimated that an expenditure to the tune of rupees 350 lakhs shall be incurred, by way of a non-recurring expenditure, towards meeting the establishment of the office of the technical members, staff, additional furniture required by the trade marks registry, vehicles, telephones, etc, during the financial year 1999-2000 clause 9 of the bill, inter alia, seeks to insert new sections 11a and 11b in the patents act, 1970 clause (b) of sub-section (6) of the proposed new section 11a relating to publication of applications for patents empowers the central government to prescribe the fee payable by any person to the patent office for obtaining specifications and drawings, if any, in respect of such applications sub-section (1) of proposed new section 11b relating to request for examination empowers the central government to lay down the rules relating to the manner of making applications for getting the applications for patents examined 2 clause 29 of the bill seeks to amend section 67, relating to register of patents and particulars to be entered therein, of the patents act, 1970 sub-section (5) of the aforesaid section 67 as sought to be inserted provides that it shall be lawful for the controller to keep the register of patents or any part thereof in computer floppies or diskettes or any other electronic forms this sub-section empowers the central government to lay down the safeguards in relation to maintenance of such register of patents in computer floppies, etc 3 clause 54 of the bill seeks to substitute a new chapter xix relating to appeals with the appellate board for chapter xix of the patents act, 1970 sub-section (2) of section 117 sought to be inserted in the aforesaid chapter xix empowers the central government to make rules governing the salaries and allowances and conditions of service of the officers and employees of the appellate board referred to in section 116 of the act sub-section (3) of section 117 empowers the central government to make rules governing the manner in which the officers and other employees of the appellate board shall discharge their functions under the general superintendence of the chairman sub-clause (3) of the new section 117a relating to appeals to appellate board proposed to be inserted in the aforesaid new chapter xix empowers the central government to specify the form in which an appeal may be made and also the manner of verification of such memorandum of appeal sub-section (1) of new section 117d relating to procedure for application for rectification, etc, before the appellate board proposed to be inserted in the said chapter xix empowers the central government to specify the form in which an application for rectification shall be made 4 clause 58 of the bill seeks to substitute a new section 125 relating to register of patent agents for the existing section 125 sub-section (1) of the new section 125 empowers the central government to make rules specifying the other relevent particulars in addition to the name and address of the patent agents to be ended in the register of such agents sub-section (2) of section 125 empowers the central government to make rules governing the safeguards subject to which the register of patent agents shall be maintained in computer floppies or diskettes or in any other electronic form 5 clause 59 of the bill seeks to amend section 126 relating to qualifications for registration as patent agents proposed sub-section (2) of section 126 empowers the central government to make a rules specifying the fee payable for re-registration as patent agents 6 clause 67 of the bill, inter alia, seeks to substitute to sub-section (3) of section 142 relating to fees of the act the said sub-section (3) empowers the central government to make rules specifying the time within which any document may be filed in the patent office 7 the power of central government to make rules under the act is subject to the condition of the rules being made after previous publication the rules are also required to be laid before parliament 8 the power to make rules in respect of the aforesaid matters relate to matters of procedure or administrative details and it is not practicable to provide for them in the bill itself the delegation of legislative powers is, therefore, of a normal character  extracts from the parents act, 1970 (39 of 1970)|            ||-------------|| definitions |2 (1) in this act, unless the context otherwise requires,— and interpretation (a) "assignee" includes 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; |     |     |     |     |     ||------|------|------|------|------|(d) "convention country" means a country notified as such under sub-section (1) of section 133; |     |     |     |     |     ||------|------|------|------|------|(g) "food" means any article of nourishment and includes any substance intended for the use of babies, invalids or convalescents as an article of food or drink;      (i) "high court" means,— (i) in relation to the union territory of delhi and the union territory of himachal pradesh, the high court of delhi; (ii) in relation to the union territory of manipur and the union territory of tripura, the high court of assam; |     |     |     |     |     ||------|------|------|------|------|(v) in relation to the union territory of goa, daman and diu and the union territory of dadra and nagar haveli, the high court at bombay;      (f "invention" means any new and useful— (1) art, process, method or manner of manufacture; (ii) machine, apparatus or other article; (ili) substance produced by manufacture, and includes any new and useful improvement of any of them and an alleged invention;      (m) "patent"? means a patent granted under this act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and chapters xvi, xvii and xviii, a patent granted under the indian patents and designs act, 1911; 2 of 1911     (u) "prescribed'' means, in relation to proceedings before a high court, prescribed by rules made by the high court, and in other cases, prescribed by rules made under this act;       chapter ii inventions not patentablewhat are not 3 the following are not inventions within the meaning of this act,— inventions      (b) an invention the primary or intended use of which would be contrary to law or morality or injurious to public health; (c) the mere discovery of a scientific principle or the formulation of an abstract theory;      (g) a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture;      (i) any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products      information and undertak- 8 (1) where an applicant for a patent under this act is prosecuting either alone or jointly with any other person an application for a patent in any country outside india in ing regarding respect of the same or substantially the same invention, on where to his knowledge such foreign applications an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application— (a) a statement setting out the name of the country where the application is being prosecuted, the serial number and date of filing of the application and such other particulars as may be prescribed; and (b) an undertaking that, up to the date of the acceptance of his complete specification filed in india, he would keep the controller informed in writing, from time to time, of details of the nature referred to in clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside india subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time (2) the controller may also require the applicant to furnish, as far as may be available to the applicant, details relating to the objections, if any, taken to any such application as is referred to in sub-section (j) on the ground that the invention is lacking in novelty or patentability, the amendments effected in the specifications, the claims allowed in respect thereof and such other particulars as he may require (5) the claim or claims of a complete specification shall relate to a single invention, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification and shall, in the case of an invention such as is referred to in section 5, relate to a single method or process of manufacture  examination of applicationsexamination 12 (1) when the complete specification has been filed in respect of an application of applicationfor a patent, the application and the specification relating thereto shall be referred by the controller to an examiner for making a report to him in respect of the following matters, namely:— (a) whether the application and the specification relating thereto are in accordance with the requirements of this act and of any rules made thereunder; (b) whether there is any lawful ground of objection to the grant of the patent under this act in pursuance of the application, (c) the result of investigations made under section 13; and (d) and other matter which may be prescribed      13(1)     a | search       | for      ||--------------|----------|| anticipation |          || by           | previous || publication  |          |(2) the examiner shall, in addition, make such investigation as the controller may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim and by prior claim of the complete specification, has been anticipated by publication in india or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant's complete specification |     |     |     |     |     ||------|------|------|------|------|15 (1) where the controller is satisfied that the application or any specification file power of controller to in pursuance thereof does not comply with the requirements of this act or of any rules made thereunder, the controller may either— (a) refuse to proceed with the application or | refuse       | or     ||--------------|--------|| require      |        || amended      |        || applications | in     || certain      | cases |(b) require the application specification or drawings to be amended to his satisfaction before he proceeds with the application (2) if it appears to the controller that the invention claimed in the specification is not an invention within the meaning of, or is not patentable under, this act, he shall refuse the application (3) if it appears to the controller that any invention, in respect of which an application for a patent is made, might be used in any manner contrary to law, he may refuse the application, unless the specification is amended by the insertion of such disclaimer in respect of that use of the invention, or such other reference to the illegality thereof, as the controller thinks fit |           |       ||------------|--------|| 17        |        || (j)        |        ||           |        ||           |        ||           |        ||           |        ||           |        || power      | of     || controller | to     || make       | orders || respecting |        |(2) where an application or specification (including drawings) is required to be amended under clause (b) of sub-section (1) of section 15, the application or specification shall, if the controller so directs, be deemed to have been made on the date on which dating of application the requirement is complied with or where the application or specification is returned to the applicant, on the date on which it is re-filed after complying with the requirement |     |     |     |     |     ||------|------|------|------|------|time for putting application in order for acceptance, 21 (1) an application for a patent shall be deemed to have been abandoned unless within fifteen months from the date on which the first statement of objections to the application or complete specification is forwarded by the controller to the applicant or within such longer period as may be allowed under the following provisions of this section the applicant has complied with all the requirements imposed on him by or under this act, whether in connection with the complete specification or otherwise in relation to _ the application: explanation —where the application or any specification or, in the case of a convention application, any document filed as part of the application has been returned to the ment to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to make, use, exercise and sell the patented invention for his own benefit without accounting to the other person or persons %  %   term of patent 53 (1) subject to the provisions of this act, the term of every patent granted under this act shall— (a) in respect of an invention claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as a medicine or drug, be five years from the date of sealing of the patent, or seven years from the date of the patent whichever period is shorter; and (6) is respect of any other invention, be fourteen years from the date of the patent       chapter x amendment of applications and specifications| amendment     | of    ||---------------|-------|| application   | and   || specification |       || before        |       |57 (1) subject of the provisions of section 59, the controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification to be amended subject to such conditions, if any, as the controller thinks fit: controller provided that the controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification under this section while any suit before a court for the infringement of the patent or any proceeding before the high court for the revocation of the patent is pending, whether the suit or proceeding commenced before or after the filing of the application to amend (2) every application for leave to amend an application for a patent or a specification under this section shall state the nature of the proposed amendment, and shall give full particulars of the reasons for which the application is made (3) every application for leave to amend an application for a patent or a specification under this section made after the acceptance of the complete specification and the nature of the proposed amendment shall be advertised in the prescribed manner      §9 (1) no amendment of an application for a patent or a complete specification supplementary provisions as to amendment of application shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, and no amendment of a complete specification shall be allowed the effect of which would be that or specification the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amend: ment  chapter xi restoration of lapsed patentsapplications for restoration of lapsed patents60 (1) where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under subsection (3) of section 53, the patentee'or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the controller, one or more of them without joining the others, may, within one year from the date on which the patent ceased to have effect, make an application for the restoration of the patent (2) the provisions of sub-section (1) shall also apply to patents granted beforethe commencement of this act, subject to the modification that for the reference to the prescribed period or to sub-section (3) of section 53, there shall be substituted a reference to 2 of 1911 the period prescribed therefor under the indian patents and designs act, 1911 or to subsection (2) of section 14 of that act      revocation of patents 64 (1) subject to the provisions contained in this act, a patent, whether granted before or after the commencment of this act, may, on the petition of any person interested or of the central government or on a counter-claim in a suit for infringement of the patent be revoked by the high court on any of the following grounds, that is to say—      (6) that the patent was granted on the application of a person not entitled under the provisions of this act to apply therefor: provided that a patent granted under the indian patents and designs act, 1911 shall not be revoked on the ground that the applicant was the communicatee or the importer of the invention in india and therefore not entitled to make an application for the grant of a patent under this act; |     |     |     |     |     ||------|------|------|------|------|(© 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 section 13: provided that in relation to patents granted under the indian patents and de- 2 of 1911 signs act, 1911, this clause shall have effect as if the words "'or elsewhere" had been omitted; () 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: provided that in relation to patents granted under the indian patents and de- 2 of 1911signs act, 1911, this clause shall have effect as if the words "or elsewhere" had been omitted;      (2) for the purposes of clauses (e) and (f} of sub-section (/),— (a) no account shall be taken of secret use; and       chapter xiii register of patents67 ( 1)      (4) for the removal of doubts, it is hereby declared that the register of patents exist- register of patents and particulars to ing at the commencement of this act shall be incorporated in, and form part of, the regisbe entered therein ter under this act assignments, etc, not to be valid unless in writing and registered 68 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 the application for registration of such document is filed in the prescribed manner with the controller within six months from the commencement of this act or the execution of the document, whichever is later or within such further period not exceeding six months in the aggregate as the controller on application made in the prescribed manner allows: applicant by the controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it (2) the period of fifteen months specified in sub-section (1) shall, on request made by the applicant in the prescribed manner and before the expiration of the period so specified, be extended for a further period so requested (hereafter in this section referred to as the extended period), so, however, that the total period for complying with the requirements of the controller does not exceed eighteen months from the date on which the objections referred to in sub-section (1) are forwarded to the applicant (3) if at the expiration of the period of fifteen months specified in sub-section (1) or extended period— (a) an appeal to the high court is pending in respect of the application for the patent for the main invention, or (6) in the case of an application for a patent of addition, an appeal to the high court is pending in respect of either that application or the application for the main invention, the time within which the requirements of the controller shall be complied with shall, on an application made by the applicant before the expiration of the said period of fifteen months or the extended period, as the case may be, be extended until such date as the high court may determine (4) if the time within which the appeal mentioned in sub-section (3) may be instituted has not expired, the controller may extend the period of fifteen months, or as the case may be, the extended period, until the expiration of such further period as he may determine: provided that if an appeal has been filed during the said further period, and the high court has granted any extension of time for complying with, the requirements of the controller, then, the requirements may be complied with within the time granted by the court 22 subject to the provisions of section 21, the complete specification filed in pursuance of an application for a patent may be accepted by the controller at any time after | acceptance     ||----------------|| complete       || specification |the applicant has complied with the requirements mentioned in sub-section (j) of that section, and, if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter: provided that the applicant may make an application to the controller in the prescribed manner requesting him to postpone acceptance until such date [not being later than eighteen months from the date on which the objections referred to in sub-section (1) of section 21 are forwarded to the applicant] as may be specified in the application, and, if such application is made, the controller may postpone acceptance accordingly advertisement of acceptance of complete specification 23 on the acceptance of a accomplete specification, the contoller shall give notice thereof to the applicant and shall advertise in the official gazette the fact that the specification has been accepted, and thereupon the application and the specification with the drawings (if any) filed in pursuance thereof shall be open to public inspections  chapter v opposition to grant of patent25 (1)    x  opposition to grant of patent(2) where any such notice of opposition is duly given, the controller shall notify the-applicant and shall give to the applicant and the opponent an opportunity to the heared before deciding the case (3) the grant of a patent shall not be refused on the ground stated in clause (c) of sub-section (j) if no patent has been granted in pursuance of the application mentioned in that clause; and for the purpose of any inquiry under clause (d) or clause (e) of that subsection, no account shall be taken of any secret use |     |     |     |     |     ||------|------|------|------|------| chapter vii provisions for secrecy of certain inventions35 (1) where, in respect of an application made before or after the commencement of this act for a patent, it appears to the controller that the invention is one of a class' secrecy directions relating to inventions relevant for defence purposes, notified to him by the central government as relevant for defence purposes, or, where otherwise the invention appears to him to be so relevant, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information to any person or class of persons specified in the directions |        ||---------|| secrecy |36 (1) the question whether an invention in respect of which directions have been given under section 35 continues to be relevant for defence purposes shall be re-considered by the central government within nine months from the date of issue of such direc- | directions    ||---------------|| periodically  || reviewed,     |tions and thereafter at intervals not exceeding twelve months, and if, on such re-consideration it appears to the central government that the publication of the invention would no longer be prejudicial to the defence of india it shall forthwith give notice to the controller accordingly and the controller shall thereupon revoke the directions previously given by him |      |     |        |     |     ||-------|------|---------|------|------|| date  | of   | patent |      |      || 45   | (1)  | subject | to   | the  || dated | as   | of      | the  | date || 2     | of   | 1911   |      |      |provided that a patent which is granted in pursuance of an application to which any directions issued under section 78c of the indian patents and designs act, 1911 applied immediately before the commencement of this act, shall be dated as of the date of the filing of the complete specification or the date of such commencement whichever is later      48 (1) subject to the other provisions contained in this act, a patent granted before rights of patentees the commencement of this act, shall confer on the patentee the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute the invention in india (2) subject to the other provisions contained in this act and the conditions specified in section 47, a patent granted after the commencement of this act shall confer upon the patentee— (a) where the patent is for an article or substance, the exclusive right by hjmself, his agents or licensees to make, use, exercise, sell or distribute such article or substance in india; (b) where a patent is for a method or process of manufacturing an article or substance, the exclusive right by himself, his agents or licensees to use or exercise the method or process in india         50 (1)   (2) subject to the provisions contained in this section and in section 51, where two rights of coowners of patents or more persons are registered as grantee or proprietor of a patent, then, unless an agree- (6) save as otherwise provided in sub-section (5), the provisions of sub-sections (1), (2), (4) and (5), of section 93 (regarding the powers of the controller) and of sections 94 and 95 shall apply to licences granted under this section as they apply to licences granted under section 84 89 (1) where, in respect of a patent, a compulsory licence has been granted or the endorsement "licences of right" has been made or is deemed to have been made, the central government or any person interested may, after the expiration of two years from revocation of patents by the controller for non-working the date of the order granting the first compulsory licence or, as the case may be, the date of the grant of the first licence under section 88, apply to the controller for an order revoking the patent on the ground that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price      (3) the controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may make an order revoking the patent      90 for the purposes of sections 84, 86 and 89, the reasonable requirements of the public shall be deemed not to have been satisfied— when reasonable requirements of the public deemed not satisfied (a) if, by reason of the default of the patentee to manufacture in india to an adequate extent and supply on reasonable terms that patented article or a part of the patented article which is necessary for its efficient working or if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms,—      (ii) the demand for the patented article is not being met to an adequate extent or on reasonable terms from manufacture in india; or      (d) if the demand for the patented article in india is being met to a substantial extent by importation from abroad by— (i) the patentee or persons claiming under him; or (if) persons directly or indirectly purchasing from him; or (iii) other persons against whom the patentee is not taking or has not taken proceedings for infringement; or adjourn applications | for       | compulsory    ||-----------|---------------|| licences, | etc,         || in        | certain       || cases    |               |91 (1) where an application under section 84, section 86 or section 89, as the case may be, is made on the ground mentioned in clause (c) of section 90 and the controller is satisfied that the time which has elapsed since the sealing of the patent has for any reason been insufficient to enable the invention to be worked on a commercial scale to an adequate extent or to enable the invention to be so worked to the fullest extent is reasonably practicable, he may, by order, adjourn the further hearing of the application for such period not exceeding twelve months in the aggregate as appears to him to be sufficient for the invention to be so worked: provided that in any case where the patentee establishes that the reason why a patented invention could not be worked as aforesaid before the date of the application was due to any state or central act or any rule or regulation made thereunder or any order of the government imposed otherwise than by way of a condition for the working of the invention in india or for the disposal of the patented articles or of the articles made by the process or by the use of the patented plant, machinery, or apparatus, then, the period of adjournment ordered under this sub-section shall be reckoned from the date on which the period during which the working of the invention was prevented by such act, rule or regulation or order of government as computed from the date of the application, |     |     |     |     |     ||------|------|------|------|------|92 (1) where the controller is satisfied, upon consideration of an application under section 84, section 86 or section 89, that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon procedure for dealing with applications under sections the patentee and any other person appearing from the register to be interested in the patent 84, 86 and 89 in respect of which the application is made, and shall advertise the application in the official gazette |    |     |     |     |     |     |     ||----|-----|------|------|------|------|------|| 93 | ()) |     |     |     |     |     |(3) where on an application made under section 84, the controller orders the grant | powers     | of    ||------------|-------|| controller | in    || granting   |       || compulsory |       || licences  |       |of a licence, he may, for reasons to be recorded in writing, direct that the licence shall operate— (a) to deprive the patentee of any right which he may have as patentee to make, use, exercise or vend the invention or to grant licences under the patent; (b) to revoke all existing licences in respect of the invention |     |     |     |     |     ||------|------|------|------|------|95 (1) in settling the terms and conditions of a licence under section 84, the controller shall endeavour to secure— | terms      | and    ||------------|--------|| conditions | of     || compulsory |        || licences  |        |(i) that the royalty and other remuneration, if any, reserved to the patentee or other person beneficially entitled to the patent, is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant factors; (ii) that the patented invention is worked to the fullest extent by the person to whom the licence is granted and with reasonable profit to him; (iii) that the patented articles are made available to the public at reasonable prices |           |          |     |     |     |     |     ||-----------|----------|------|------|------|------|------|| 96        | ()       |     |     |     |     |     || licensing | of       |      |      |      |      |      || related   | patents |      |      |      |      |      |(3) when the controller is satisfied that the conditions mentioned in sub-section (1) have been established by the applicant, he may make an order on such terms as he thinks fit granting a licence under the first mentioned patent and a similar order under the other patent if so requested by the proprietor of the first mentioned patent or his licensee |           |     ||------------|------|| special    |      || provision  | for  || compulsory |      |97 (1) if the central government is satisfied in respect of any patent or class of patents in force that it is necessary or expedient in the public interest that compulsory licences should be granted at any time after the sealing thereof to work the invention or inventions, it may make a declaration to that effect in the official gazette, and thereupon licences on notification by the following provisions shall have effect, that is to say— central government (i) the controller shall on application made at any time after the notification by any person interested grant to the applicant a licence under the patent on such terms as he thinks fit; (ii) in settling the terms of a licence granted under this section, the controller shall endeavour to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights     provided that the document shall, when registered, have effect from the date of its execution |          |     ||-----------|------|| officers  | and  || employees | not  |76 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 central government or the controller or by order of a court,— | to           | furnish    ||--------------|------------|| information, |            || etc         |            || 2            | of         || (2)          | furnish    || under        | this       || (5)          | prepare    || 2            | of         || or           | under      || the          | patent     ||             |           || power        | of         |78 (1) without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications for patrents or complete specifications and subject to controller to correct clerical the provisions of section 44, the controller may, in accordance with the provisions of errors, etc 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 |     |     |     |     |     ||------|------|------|------|------|84 (1) at any time after the expiration of three years from the date of the sealing compulsory licences of a patent, any person interested may make an application to the controller alleging that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price and praying for the grant of a compulsory licence to work the patented invention (2) an application under this section may be made by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be estopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not available to the public at a reasonable price by reason of any admission made by him, whether in such a licence or otherwise or by reason of his having accepted such a licence  (5) the controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may order the patentee to grant a licence upon such terms as he may deem fit endorsement 86 (1) at any time after the expiration of three years from the date of the sealing of patent with of a patent, the central government may make an application to the controller for an order that the patent may be endorsed with the words "licences of right" on the ground that the reasonable requirements of the public with respect to the patented invention have | the       | words    ||-----------|----------|| "licences | of       || right"   |          |not been satisfied or that the patented invention is not available to the public at a reasonable price (2) the controller, if satisfied that' the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may make an order that the patent be endorsed with the words "licences of right' (3) where a patent of addition is in force, any application made under this section for an endorsement either of the original patent or of the patent of addition shall be treated as an application for the endorsement of both patents, and where a patent of addition is granted in respect of a patent which is already endorsed under this section, the patent of addition shal! also be so endorsed (4) all endorsements of patents made under this section shall be entered in the register and published in the official gazette and in such other manner as the controller thinks desirable for bringing the endorsement to the notice of manufacturers 87 (1) notwithstanding anything contained in this act,— certain patents deemed to be endorsed with (a) every patent in force at the commencement of this act in respect of inventions relating to— the words "licences of right" (4) substances used or capable of being used as food or as medicine or drug; (1) the methods or processes for the manufacture or production of any such substance as is referred to in sub-clause (4); (iti) the methods or processes for the manufacture or production of chemical substances (including alloys, optical glass, semi-conductors and inter-metallic compounds), shall be deemed to be endorsed with the words "licences of right" from the commencement of this act or from the expiration of three years from the date of sealing of the patent under the indian patents and designs act, 1911, whichever is later; and 2 of 1911(b) every patent granted after the commencement of this act in respect of any such invention as is referred to in section 5 shall be deemed to be endorsed with the words "licences of right" from the date of expiration of three years from the date of sealing of the patent (2) in respect of every patent which is deemed to be endorsed with the words "licences of right" under this section, the provisions of section 88 shall apply 88 (1) where a patent has been endorsed with the words "licences of right', any person who is interested in working the patented invention in india may require the patentee to grant him a licence for the purpose on such terms as may be mutually agreed upon, notwithstanding that he is already the holder of a licence under the patent effect of endorsement of patent with the words "licences of nght" (2) if the parties are unable to agree on the terms of the licence, either of them may apply in the prescribed manner to the controller to settle the terms thereof (3) the controller shall, after giving notice to the parties and hearing them and after making such enquiry as he may deem fit, decide the terms on which the licence shall be granted by the patentee (4) the controller may at any time before the terms of the licence are mutually agreed upon or decided by the controller, on application made to him in this behalf by any person who has made any such requisition as is referred to in sub-section (/), permit him to work the patented invention on such terms as the controller may, pending agreement between the parties or decision by, the controller, think fit to impose (5) in the case of every patent in respect of an invention referred to in sub-clause (i), or sub-clause (ii); of clause (a) of sub-section (1) of section 87 and deemed to be endorsed with the words "licences of right" under clause (a) or clause (6) of that sub-section, the royalty and other remuneration reserved to the patentee under a licence granted to any person after such commencement shall in no case exceed four per cent of the net exfactory sale price in bulk of the patented article (exclusive of taxes levied under any law for the time being in force and any commissions payable) determined in such manner as may be prescribed  chapter xvii use of inventions for purposes of government and acquisition of inventions by cen- tral government99 (1)      (2) without prejudice to the generality of the provisions of sub-section (/),— meaning of use of invention (a) the importation, by or on behalf of the government, of any invention be- for purposes of government ing a machine, apparatus or other article covered by a patent granted before the commencement of this act, for the purpose merely of its own use; and (b) the importation, by or on behalf of the government, of any invention being a medicine or drug covered by a patent granted before the commencement of this act— (+) for the purpose merely of its own use; or (if) for the purpose of distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the government or in any other dispensary, hospital or other medical institution which the central government may, having regard to the public service which such other dispensary, hospital or medical institution renders, specify in this behalf by notification in the official gazette, shall also be deemed, for the purposes of this chapter, to be use of such invention for the purposes of government    ;   100(1)      | power      | of         ||------------|------------|| central    |            || government | to         || use        | inventions |(3) if and so far as the invention has not been so recorded or tried or tested as aforesaid, any use of the invention made by the central government or any person author- for purposes of governmentised by it under sub-section (/), at any time after the acceptance of the complete specification in respect of the patent or in consequence of any such communication as aforesaid, shall be made upon terms as may be agreed upon either before or after the use, between the central government or any person authorised under sub-section (1) and the patentee, or, as may in default of agreement be determined by the high court on a reference under section 103: provided that in the case of any such use of any patent in respect of any medicine or drug or article of food the royalty and other remuneration shall in no case exceed four per cent of the net ex-factory sale price in bulk of the patented article (exclusive of taxes levied under any law for the time being in force and any commissions payable) determined in such manner as may be prescribed      (5) where an invention has been used by or with the authority of the central government for the purposes of government under this section, then, unless it appears to the government that it would be contrary to the public interest so to do, the government shall notify the patentee as soon as practicable of the fact and furnish him with such information as to the extent of the use of the invention as he may, from time to time, reasonably require; and where the invention has been used for the purposes of a government undertaking, the central government may call for such information as may be necessary for this purpose from such undertaking (6) the right to make, use, exercise and vend an invention for the purposes of government under sub-section (1) shall include the right to sell the goods which have been made in exercise of that right, and a purchaser of goods so sold, and a person claiming through him, shall have the power to deal with the goods as if the central government or the person authorised under sub-section (1) were the patentee of the invention      101 (/) in relation to any use of a patented invention, or an invention in respect of which an application for a patent is pending, made for the purposes of government— rights of third parties in respect of use of invention (a) by the central government or any person authorised by the central government under section 100; or for purposes of government () by the patentee or applicant for the patent to the order made by the central government the provisions of any licence, assignment or agreement granted or made, whether before or after the commencement of this act, between the patentee or applicant for the patent (or any person who derives title from him or from whom he derives title) and any person other than the central government shall be of no effect so far as those provisions— {i restrict or regulate the use for the purposes of government of the invention, or of any model, document or information relating thereto, or (ii) provide for the making of payments in respect of any use of the invention or of the model, document or information relating thereto for the purposes of government (including payments by way of minimum royalty), and the reproduction or publication of any model or document in connection with the said use for the purposes of government shall not be deemed to be an infringement of any copyright subsisting in the model or document (2) where the patent, or the right to apply for or obtain the patent, has been assigned to the patentee in consideration of royalties or other benefits determined by reference to the use of the invention (including payments by way of minimum royalty), then, in relation to any use of the invention made for the purposes of government by the patentee to the order of the central government, sub- section (3) of section 100 shall have effect as if that use were made by virtue of an authority given under that section; and any use of the invention for the purposes of government by virtue of sub-section (3) of that section shall have effect as if the reference to the patentee included a reference to the assignor of the patent, and any sum payable by virtue of that sub-section shall be divided between the patentee and the assignor in such proportion as may be agreed upon between them or as may in default of-agreement be determined by the high court on a reference under section 103 (3) where by virtue of sub-section (3) of section 100, payments are required to be made by the central government or persons authorised under sub-section (1) of that section in respect of the use of an invention for the purposes of government and where in respect of such patent there is an exclusive licensee authorised under his licence to use the invention for the purposes of government, such sum shall be shared by the patentee and such licensee in such proportions, if any, as may be agreed upon between them or as may in default of agreement be determined by the high court on a reference under section 103 to be just, having regard to any expenditure incurred by the licensee— (a) in developing the said invention; or (b) in making payments to the patentees other than royalties or other benefits determined by reference to the use of the invention including payments by way of minimum royalty in consideration of the licence |     |     |     |     |     ||------|------|------|------|------|reliefs in suits 108 the- reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the for infringement plaintiff, either damages or an account of profits |     |     |     |     |     ||------|------|------|------|------|restriction power of court 112 if in proceedings for the infringement of a patent, endorsed or deemed to be endorsed with the words "licences of right" (otherwise than by the importation of the patented article from other countries) the infringing defendant is ready and willing to to grant injunction in certain cases take a licence upon terms to be settled by the controller as provided in section 88, no injunction shall be granted against him, and the amount if any recoverable against him by way of damages shall not exceed double the amount which would have been recoverable against him as licensee if such a licence had been granted before the earliest infringement       chapter xix appealsappeals 116 (1) no appeal shall lie from any decision, order or direction made or issued under this act by the central government, or from any act or order of the controller for the purpose of giving effect to any such decision, order or direction (2) save as otherwise expressly provided in sub-section (1), an appeal shall lie to a high court from any decision, order or direction of the controller under any of the following provisions, that is to say, section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, sub-section (3) of section 69, section 78, section 84, section 86, section 88(3) section 89, section 93, section 96 and section 97 (3) every appeal under this section shall be in writing and shall be made within three months from the date of the decision, order or direction, as the case may be, of the controller, or within such further time as the high court may in accordance with the rules made by it under section 158 allow | procedure    | for    ||--------------|--------|| hearing      | of     || appeals,     |        |117 (1) every appeal before a high court under section 116 shall be by petition and shall be in such form and shall contain such particulars as may be prescribed by rules made by the high court under section 158 (2) every such appeal shall be heard by a single judge of the high court: provided that any such judge may, if he so thinks fit, refer the appeal at any stage of the proceeding to a bench of the high court (3) every such appeal shall be heard as expeditiously as possible and endeavour shall be made to decide the appeal within a period of twelve months from the date on which it is filed      120 if any person falsely represents that any article sold by him is patented in india unauthorised claim of patent rightsor is the subject of an application for a patent in india, he shall be punishable with fine which may extend to five hundred rupees explanation 1—-for the purposes of this section, a person shall be deemed tv represent-—- (a) that an article 1s 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, engiaved 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 2 explanation 2—the use of words "patent", "patented", "patent applied for", 66 "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 |        |     ||---------|------|| refusal | or   |122 (1) if any person refuses or fails to furnish— | failure      ||--------------|| supply       || information |(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, he shall be punishable with fine which may extend to one thousand rupees |     |     |     |     |     ||------|------|------|------|------|123 1f any person contravenes the provisions of section 129, he shall be punish- | practice       | by      ||----------------|---------|| non-registered |         || patent         | agents |able with fine which may extend to five hundred rupees in the case of a first offence and two thousand rupees in the case of a second or subsequent offence |     |     |     |     |     ||------|------|------|------|------| chapter xxi patent agents125 the controller shall maintain a register to be called the register of patent agents register of patent agents in which shall be entered the names and addresses of all persons qualified to have their names so entered under section 126 qualifications for registration 126 (1) a person shall be qualified to have his name entered in the register of patent agents if he fulfils the following conditions, namely:— | x       |       ||---------|--------|| as      | patent || agents |        |(c) he has obtained a degree from any university in the territory of india or possesses such other equivalent qualifications as the central government may specify in this behalf, and, in addition - (i) is an advocate within the meaning of the advocates act, 1961; or 25 of 1961(ii) has passed the qualifying examination prescribed for the purpose; |     |     |     |     |     ||------|------|------|------|------|(2) notwithstanding anything contained in sub-section (1), a person who has been practising as a patent agent before the ist day of november, 1966 and has filed not less than five complete specifications before the said day, shall, on payment of prescribed fee, be qualified to have his name entered in the register of patent agents      subscription and verifica- 128 (1) subject to the provisions contained in sub-section (2) and to any rules made under this act, 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 tion of certain documents by patent agents (2) the following documents, namely:-—~ (i) applications for patents; (ii) applications for the restoration of lapsed patents; (iii) applications for the sealing of patents after the time allowed for that purpose by or under sub- section (2), or sub-section (3) of section 43 has expired; (iv) applications for leave to amend; (vv) applications for compulsory licences or for revocation; and (vi) notices of surrender of patents, shall be signed and verified in the manner prescribed by the person making such applications or giving such notices: provided that if such person is absent from india, they may be signed and verified on his behalf by a patent agent authorised by him in writing in that behalf removal from 130 (1) the central government may remove the name of any person from the register when it is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as it thinks fit to make— | register    | of           ||-------------|--------------|| patent      | agents       || and         | restoration |(i) that his name has been entered in the register by error or on account of misrepresentation or suppression of material fact; (ti) 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 central government renders him unfit to be kept in the register (2) the central government may, on application and on sufficient cause being shown, restore to the register the name of any person removed therefrom 132 nothing in this chapter shall be deemed to prohibit— |            | savings    | in      ||------------|------------|---------|| respect    | of         | other   || persons    |            |         || authorised | to         |         || act        | as         | agents |(a) the applicant for a patent or any person not being a patent agent, who is duly authorised by the applicant 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 proceedings under this act otherwise than by way of drafting any specification  chapter xxil international arrangements| notification    | as         ||-----------------|------------|| to              | convention || countries      |            |133 (1) with a view to the fulfilment of a treaty, convention or arrangement with any country outside india which affords to applicants for patents in india or to citizens of india similar privileges as are granted to its own citizens in respect of the grant of patents and the protection of patents rights, the central government may, by notification in the official gazette, declare such country to be a convention country for the purposes of this act (2) a declaration under sub-section (/) may be made for the purposes either of all or of some only of the provisions of this act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this act is in force shall be deemed to be a convention country for the purposes of those provisions only      138 (1) where a convention application is made in accordance with the provisions of supplementary provisions as this chap:, the applicant shall furnish, in addition to the complete specification, copies of the specifications or corresponding documents filed or deposited by the applicant in the to convention applicationspatent office of the convention country in which the basic application was made, certified by the official chief or head of the patent office of the convention country, or otherwise verified to the satisfaction of the controller, along with the application or within three months thereafter, or within such further period as the controller may on good cause allow (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 annexed to the specification or document (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 |     |     |     |     |     ||------|------|------|------|------| chapter xxiii miscellaneousavoidance of 140 (1) it shall not be lawful to insert— certain restrictive (i) in any contract for or in relation to the sale or lease of a patented article or conditions an article made by a patented process; or (ii) in a licence to manufacture or use a patented article; or (ili) in a licence to work any process protected by a patent, a condition the effect of which may be— |     |     |     |     |     ||------|------|------|------|------|(5) the provisions of this section shall also apply to contracts made before the commencement of this act if, and in so far as, any restrictive conditions declared unlawful by this section continue in force after the expiration of one year from such commencement determination of certain 141 (1) any contract for the sale or lease of patented article or for licence to manufacture, use or work a patented article or process, or relating to any such sale, contracts lease or licence, whether made before or after the commencement of this act, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by the purchaser, lessee, or licensee, as the case may be, of the patent on giving three months notice in writing to the other party |     |     |     |     |     ||------|------|------|------|------|142 (1)      fees (3) where a fee is payable in respect of the filling of a document at the patent office, the document shall be deemed not to have been filed at the office until the fee has been paid (4) where a principal patent is granted later than two years from the date of filing of the complete specification, the fees which have become due in the meantime may be paid within a term of three months from the date of the recording of the patent in the regs tcy 143 subject to the provisions of chapter vii, an application for a patent, and +, specification filed in pursuance thereof, shall not, except with the consent of the apph- restrictions upon publication of cant, be published by the controller or be open to public inspection at any time before the specifications date of advertisement of acceptance of the application in pursuance of section 23       protection of security of 157a notwithstanding anything contained in this act, the central government shall—india (a) not disclose any information relating to any patentable invention or any application relating to the grant of a patent under this act, which it considers prejudicial to the interest of security of india; (b) take action including the recocation of any patent which it considers necessary in the interest of security of india: provided that the central government shall, before taking any action under this clause, issue a notification in the official gazette declaring its intention to take such action explanation— for the purposes of this section, the expression security of india means any action necessary for the security of india which— ry (i) relates to fissionable materials or the materials from which they are derived; or (i) relates to the traffic in arms, ammunition and implements of war and to such traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment; or (iii) is taken in time of war or other emergency in matter of international relations      (ix) the maintenance of the register of patents and the matters to be entered therein;      (xiv) the manner in which the register of patent agents may be maintained; the conduct of qualifying examinations for patent agents; and matters connected with their practice and conduct, including the taking of disciplinary proceedings against patent agents for misconduct;      29 of 1948 special provisions with respect to 33 of 1962 161 (1) where, as a result of action taken by the controller under section 12 of the atomic energy act, 1948, or under section 20 of the atomic energy act, 1962, an application for a patent made before the commencement of this act could not be accepted within the time specificd for the purpose in the indian patents and designs act, 191] (hereafter in this section referred to as the repealed act), and, consequently, was deemed to have been refused by reason of sub-section (4) of section 5 of the repealed act, the application may, if the applicant or, if he is dead his legal representative makes a request certain applications deemed to have been refused under act 2 of 1911in that behalf to the controller in the prescribed manner within three months from the commencement of this act, be revived and shall be disposed of as if it were an application pending at the commencement of this act to which the provisions of this act apply by reason of sub-section (3) of section 162 (2) the controller may, before proceeding to act upon any such request as is referred to in sub- section (1), refer the matter to the central government for directions as to whether the invention is one relating to atomic energy and shall act in conformity with the directions issued by it (3) where in pursuance of any such application as is referred to in sub-section (1) a patent is granted, the rights of the patentee shall be subject to such conditions as the controller things fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the patented invention before the date of advertisement of the acceptance of the complete specification (4) a patent granted in pursuance of any such application as is referred to in subsection (1) shall be dated as of the date on which the request for reviving such application was made under sub-section (1)      162 (1) of 1911 in so  , : far as it relates (2) notwithstanding the repeal of the indian patents and designs act, 1911, in so far to patents and == as it relates to patents— savings (a) the provisions of section 21a of that act and of any rules made thereunder shall continue to apply in relation to any patent granted before the commencement of this act in pursuance of that section, and (b) the renewal fee in respect of a patent granted under that act shall be as fixed thereunder (3) save as otherwise provided in sub-section (2), the provisions of this act shall apply to any application for a patent pending at the commencement of this act and to any proceedings consequent thereon and to any patent granted in pursuance thereof     