PROVIDED that different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

Section 2. Definitions and interpretation

(1) In this Act, unless the context otherwise requires,& mdash

¹[(a) “ Appellate Board” means the Appellate Board referred to in section 116

(ab) “ assignee” includes an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person

²[(aba) “ Budapest Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure done at Budapest on 28th day of April, 1977, as amended and modified from time to time ]

(ac) “ capable of industrial application” , in relation to an invention, means that the invention is capable of being made or used in an industry ]

(b) “ Controller” means the Controller-General of Patents, Designs and Trade Marks referred to in section 73

³[(d) “ convention country” means a country or a country which is member of a group of countries or a union of countries or an Inter-governmental organisation [referred to as a convention country in section 133 ]]

(e) “ district court” has the meaning assigned to that expression by the CPC, 1908

(f) “ exclusive licence” means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and “ exclusive licensee” shall be construed accordingly

(g) [Clause (g) omitted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005]

(h) “ government undertaking” means any industrial undertaking carried on& mdash

(i) by a department of the government or

(ii) by a corporation established by a Central, Provincial or State Act, which is owned or

controlled by the government or

(iii) by a government company as defined in section 617 of the Companie Act, 1956(1 of

1956) ⁴[ or]

⁴[(iv) by an institution wholly or substantially financed by the Government ] [Certain words omitted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005]

⁵[(i) “ High Court” , in relation to a State or Union territory, means the High Court having territorial jurisdiction in that State or Union territory, as the case may be ]

⁶[(ia) “ international application” means an application for patent made in accordance with the Patent Cooperation Treaty ]

⁷[(j) “ invention” means a new product or process involving an inventive step and capable of industrial application

⁵[(ja) “ inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art ]

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(k) “ legal representative” means a person who in law represents the estate of a deceased person

⁵[(l) “ new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art

(m) “ patent” means a patent for any invention granted under this Act ]

⁴[(ia) “ pharmaceutical substance” means any new entity involving one or more inventive steps ]

⁵[(la) “ Opposition Board” means an Opposition Board constituted under sub-section (4) of section 25 ]

(n) “ patent agent” means a person for the time being registered under this Act as a patent agent

(o) “ patented article” and “ patented process” mean respectively an article or process in respect of which a patent is in force

⁶[(oa) “ Patent Co-operation Treaty” means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time ]

(p) “ patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent

(q) “ patent of addition” means a patent granted in accordance with section 54

(r) “ patent office” means the patent office referred to in section 74

(s) “ person” includes the government

(t) “ person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates

⁸[(u) “ prescribed” means,& mdash

(A) in relation to proceedings before a High Court, prescribed by rules made by the High Court

(B) in relation to proceedings before the Appellate Board, prescribed by rules made by the Appellate Board and

(v) “ prescribed manner” includes the payment of the prescribed fee

(w) “ priority date” has the meaning assigned to it by section 11

(x) “ register” means the register of patents referred to in section 67

(y) “ true and first inventor” does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India.

(2) In this Act, unless the context otherwise requires, any reference& mdash

(a) to the Controller shall be construed as including a reference to any officer discharging the functions of the Controller in pursuance of section 73

(b) to the patent office shall be construed as including a reference to any branch office of the patent office.

COMMENTS

Appellate Board

Section 116 of the Act provides that the Appellate Board established under section 83 of the Trade Marks Act, 1999 shall be the Appellate Board for the purposes of the Act and the said Appellate Board shall exercise the jurisdiction, power and authority conferred on it by or under the Act. Section 83 of the Trade Marks Act, 1999 provides that the Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under that Act. The provisions for composition of the said Board are contained in section 84 of the said Act.

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Assignee

Assignment is the act of transferring to another all or part of one's property, interest or rights. It is a transfer or making over to another of the whole of any property, real or personal, in possession or in action, or of any estate or right therein. It includes transfers of all kinds of property, including negotiable instruments. In other words, it is the transfer by a party of all the rights to some kind of property, usually intangible property such as rights in a lease, mortgage, agreement of sale or a partnership. Tangible property is more often transferred by possession and by instruments conveying title such as a deed or a bill of sale. & mdash Black's Law Dictionary. “ Assignment” means the transfer of the claim, right or property to another. The Commissioner of Gift Tax, Madras v. N.S. Getty Chettiar, AIR 1971 SC241O.

An “ assignee” is a person to whom an assignment is made grantee. Assignee in fact is one to whom an assignment has been made in fact by the party having the right and assignee in law is one in whom the law vests the right, as an executor or administrator.

Assignee means a person appointed by another to do any act or perform any business also a person who takes some right, title or interest in things by an assignment from an assignor. They are divided into& mdash (1) assignees by deed, as when a lessee of a term sells or assigns it to another, and (2) assignees by law, as when property devolves upon an executor without any specific appointment, the executor is assignee in law to the testator.& mdash Wharton's Law Lexicon.

Capable of industrial application

An invention, in order to be patentable, must be capable of being made or used in some kind of industry. In this context, “ industry” should be understood in its broadest sense as including any useful, practical activity as distinct from purely intellectual or aesthetic activity, and does not necessarily imply the use of a machine or the manufacture of an article. An “ invention” within the meaning of the Act is an invention for a manner of new manufacture that is in some way associated with trade and commerce meaning traffic in goods, i.e., exchange of commodities for money or other commodities& mdash Sri Gajalakshmi Ginning Factory Ltd. v. CIT (1952) 22ITR 502 (Mad). Trade or commerce is carried with profit motive. The expression “ invention” has, therefore, been defined in the Patents Act, 1970 to mean manner of manufacture machine substance produced by manufacture. The invention relates to the skill (art), series of action (process) or the particular way (method) or the way (manner) of making a product or thing. It also relates to machine or apparatus by which a thing is made and also the product which is the result of act of making. All these are associated with “ manufacture” , which word:

& bull denotes either a thing made which is useful for its own sake and vendible as such or

& bull means an engine or instrument to be employed either in the making of some previously known article or in some useful purpose or extending to new process to be carried on by known implements or elements acting upon known substances and ultimately producing some other known sbstance, but producing it in a cheaper or more expeditious manner, or of a better or more useful kind. [See R. v. Wheeler (1819) 26 & Aid345, quoted with approval in BombayAgarwal Co. v. RamchandAIR 1953 Nag. 154]. The focus in on “ manufacture” .

Controller

Under section 3(1) of the Trade Marks Act, 1999, the Central Government may, by Notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of that Act. The said officer shall be the Controller for the purposes of the Patents Act also.

Convention application

Convention is an agreement or compact especially, international agreement e.g. Geneva Convention. It is an assembly or meeting of members or representatives of political, legislative, fraternal, etc. organisations.

Under section 135 of the Patents Act, where a person has made an application for a patent in respect of an invention in a convention country and that person or the legal representative or assignee of that person makes an application under the Act for a patent within 12 months after the date on which the basic application was made, the priority date of a claim of the complete specification being a claim based on matter disclosed in the basic application, is the date of the basic application.

Convention country

With regard to international arrangements in respect of patents, 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 protection of patent rights, the Central Government may declare such country to be a convention country for the purposes of the Act, vide section 133.

District Court

Section 2(4) of the Code of Civil Procedure, 1908 says that, “ district” means the local limits of the jurisdiction of a Principal Civil Court of original jurisdiction (called a “ District Court” ) and includes the local limits of the ordinary original civil jurisdiction of a High Court.

Exclusive licence

The expression “ exclusive” is explicit and significant when the expression is explicit, it is conclusive, alike in what it says and in what it does not say. This is corroborated by the use of the expression “ claim” for all purposes& mdash Charan Lal Sahu v. Union of India AIR 1990 SC 1480 (In the context of Bhopal Gas Leak Disaster (Processing of Claims) Act, 1985).

Exclusive licene is the exclusive right granted by patent holder to licensee to use, manufacture, and sell patented article. It is the permission to do a thing and contract not to give leave to any one else to do the same thing& mdash Overman Cushion Tire Co. v. Goodyear Tire and Rubber Co. C.C.A. N. Y. 59 F. 2d 998, 999. It is a licence which binds the licensor not to enlarge thereafter the scope of other licences already granted, or increase the number of licences, is an exclusive licence& mdash Mechanical Ice Tray Corporation v. General Motors Corporation, C.C.A.N. Y. 144 F. 2d 720,275.

An “ exclusive licensee” is one granted exclusive right and licence to use, manufacture, and sell patented article one having exclusive rightto use patented method and apparatus in designated territory.& mdash De/te/ v. Chisholm, C.C.A.N.Y. 42 F. 2d 172, 173 Paul E. Hawkinson Co. v. Carnell, C.C.A. Pa. 119 F. 2d 396, 398

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Food

Food is a nutritive material absorbed or taken into the body of an organism which serves for purposes of growth, work or repair and for the maintenance of the vital processes.& mdash Webster's International Dictionary.

Under section 2(v) of the Prevention of Food Adulteration Act, 1954, “ Food” means any article used as food or drink for human consumption other than drugs and water and includes& mdash

(a) any article which ordinarily enters into, or is used in the composition or preparation of human food, and

(b) any flavouring matter or condiments.

Within the meaning of the Prevention of Food Adulteration Rules, 1955, “ food” means the composite preparations which normally go to constitute a meal.& mdash Collector of Central Excise v. Parle Exports (Pvt.) Ltd. AIR 1989 SC 644

The expression & lsquo food' has generally been understood to mean nutritive material absorbed or taken into the body of an organism which serves for purposes of growth, work or repair and for the maintenance of the vital process. What human beings consume is styled as food and what animals consume is described as animal feed. This distinction has to be borne in mind. Expression & lsquo food-stuffs' is made of two expressions, & lsquo food' plus & lsquo stuff. In other words, the stuff which is used as food wpuld be foodstuff. Therefore, foodstuff is that which is taken into the system to maintain life and growth and to supply waste of tissue. If the raw foodstuff with a view to making it consumable by human beings undergoes a change of its conditions by the process of cooking, the derivative is none the less foodstuff.& mdash Welcome Hotel v. State ofAndhra Pradesh, AIR 1983 SC 1015:

Food means an article which normally a man eats or drinks to nourish his body and also an article which normally is not considered food but which normally enters into or is used in the composition or preparation of human food.& mdash Khedar Lal v. State of U.P. 1981 FAJ 192 (All)

Government undertaking

Undertaking means business, project or works undertaken something undertaken a promise, a pledge. Under section 2(v) of the Monopolies and Restrictive Trade Practices Act, 1969, “ undertaking” means an undertaking which is engaged in the production, supply, distribution or control of goods of any description or the provision of service of any kind.

Undertaking means the entire organization. A company whether it has a plant or whether it has an organization is considered as one whole unit, and the entire business of the going concern is embraced within the word & lsquo undertaking'.& mdash Rustom Cavasjee Cooper v Union of India AIR 1970 SC 564: (1970) 1 SCJ 564: (1970)2 SCA 37.

The term “ undertaking” must be defined as any business or any work or project resulting in material goods or material services and which one engages in or attempts as an enterprise analogous to business or trade.& mdash Secretary, Madras Gymkhana Club Employees' Union v. Management of the Gymkhana Club, AIR 1968 SC 554.

The word “ undertaking” as used in Section 25-FFF of the Industrial Disputes Act used its ordinary sense, connoting thereby any work, enterprise, project or business undertaking. It is not intended to cover the entire industry or business of the employer.& mdash Workmen of the Straw Board Manufacturing Co. Ltd. v. Straw Board Manufacturing Co. Ltd., AIR 1974 SC 1132.

According to its dictionary meaning as given by Webster, “ undertaking” means anything undertaken any business, work or project which one engages in or attempts an enterprise.& mdash The Workmen of Indian Standards Institution v. The Management of Indian Standards Institution, AIR 1976 SC 145.]

Invention

Invention is the act or operation of finding out something new the process of contriving and producing something not previously known or existing, by the exercise of independent investigation and experiment. Also the article or contrivance or composition so invented& mdash Smith v. Nichols, 88 U.S. (21 Wall.) 112, 22 LEd. 566 Hollister v. Mfg. Co., 113 U.S. 59, 5 S.Ct. 717, 28 LEd. 901.

Invention is a concept a thing involved in the mind it is not a revelation of something which exists and was unknown, but is creation of something which did not exist before, possessing elements of novelty and utility in kind and measure different from and greater than what the art might expect from skilled workers& mdash Pursche v. Atlas Scraper & Engineering Co. C.A. Cal., 300 F.2d467, 472. The finding out& mdash The contriving, the creating of something which did not exist, and was not known before, and which can be made useful and advantageous in the pursuits of life, or which can add to the enjoyment of mankind. Not every improvement is invention but to entitle a thing to protection it must be the product of some exercise of the inventive faculties and it must involve something more than what is obvious to persons skilled in the art to which it relates. Mere adaptation of known process to clearly analogous use is not invention.& mdash Firestone Tire and Rubber Co. v. U.S. Rubber Co., C.C.A. Ohio, 79 F.2d 948, 952, 953.

Inventive skill has been defined as that intuitive faculty of the mind put forth in the search for new results, or new methods, creating what had not before existed, or bringing to light what lay hidden from vision it differs from a suggestion of that common experience which arose spontaneously and by a necessity of human reasoning in the minds of those who had become acquainted with the circumstances with which they had to deal.& mdash Hollister v. Mfg. Co., 113 U.S. 59, 5 S.Ct. 717,28 L.Ed. 901. Invention, in the nature of improvements, is the double mental act of discerning, in existing machines, processes or articles, some deficiency, and pointing out the means of overcoming it.

Under section 2(8) of the Patents and Designs Act, 1911, “ invention” means any manner of new manufacture and includes an improvement and an allied invention. Unlike the Patents Act, 1970, the 1911 Act does not specify the requirement of being useful in the definition of “ invention” . But courts have always taken the view that a patentable invention, apart from being a new manufacture, must also be useful. The foundation for this judicial interpretation is to be found in the fact that section 26(1 )(f) of the 1911 Act recognises lack of utility as one of the grounds on which a patent can be revoked.& mdash Bishwanath PrasadRadheyShyam v, Hindustan Metal Industries AIR 1982 SC 1444.

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Legal representative

The term “ legal representative” in its broadest sense means one who stands in place of,and represents the interests, of another. He is a person who oversees the legal affairs of another.

A “ legal representative” ordinarily means a person who in law represents the estate of a deceased person or a person on whom the estate devolves on the death of an individual.& mdash Gujarat State Road Transport Corporation v. Ramanbhai Prabhat Bhai, AIR 1987 SC 1690: “ Legal representatives” include heirs as well as persons who represent the state even without title either as executors or administrators in possession of the estate of the deceased.& mdash Custodian of Branches of BANCO National Ultramarino v. Nalini Bai Naique, AIR 1989 SC 1589:

Legal representative is a person who in law represents the estate of a deceased person, and includes any person who intermeddles with the estate of the deceased and where a party sues or is sued in a representative character, the person on whom the estate devolves on the death of the party so suing orsued.& mdash Civil Procedure Code 1908, s. 2(11) Arbitration Act 1940, s. 2(d) Gift-Tax Act 1958, s. 2(xvi) (b).

The term conceives of two distinct categories. Firstly, the heirs or persons, who in law represent the estate of the deceased person. However, at par with them and in a class by itself is any person who intermeddles with the estate of the deceased. Such a person is equally a legal representative.& mdash Sudama Devi v Jogendra ChoudhuryAIR 1987 Pat 239. Medicine or drug

Drug includes all medicines for internal or external use of human beings or animals and all substances intended to be used for or in the diagnosis, treatment, mitigation or prevention of disease in human beings or animals.& mdash Sk. Amir v. State of Maharashtra AIR 1974 SC 469

Under section 3(b) of the Drugs and Cosmetics Act, 1940, “ drug” includes& mdash

(i) all medicines for internal or external use of human beings or animals and all substances intended to be used for or in the diagnosis, treatment, mitigation or prevention of disease in human beings or animals and

(ii) such substances (other than food) intended to affect the structure or any function of the human body or intended to be used for the destruction of vermins or insects which cause disease in human beings or animals, as may be specified from time to time by the Central Government by notification in the Official Gazette.

& lsquo Drug' includes& mdash

(i) all medicines for internal or external use of human beings or animals and all substances intended to be used for or in the treatment, mitigation or prevention of disease in human beings or animals otherthan medicines and substances exclusively used or prepared for use in accordance with the Ayurvedic or Unani systems of medicine and

(ii) such substance (other than food) intended to affect the structure or any function of the human body or intended to be used for the destruction of vermins or insects which cause disease in human beings or animals, as may be specified from time to time by the Central Government by notification in the Official Gazette. Drugs Act 1940, s. 3(b).

& lsquo Drug' includes& mdash

(i) a medicine for the internal or external use of human beings or animals

(ii) any substance intended to be used for or in the diagnosis, cure, mitigation, treatment or prevention of disease in human beings or animals

(iii) any article, other than food, intended to affect or influence in any way the structure or any organic function of the body of human beings or animals (iv) any article intended for use as a component of any medicine, substance or article, referred to in sub-clauses (i), (ii) and (iii). Drugs and Magic Remedies (Objectional Advertisements) Act, 1954, s. 2(b).

& lsquo Drug' means any drug as defined in clause (b) of section 3 of the Drugs Act, 1940 (XXIII of 1940), in respect of which a declaration has been made under s. 3. Drugs (Control) Act 1950.

Patent

Patent is a grant or right to exclude others from making, using or selling one's invention and includes right to license others to make, use or sell it.

It is an official document conferring a right or privilege, letters patent writing securing to an inventor for a term of years the exclusive right to make, use and sell his invention the monopoly or right so granted.& mdash Webster's Ninth New Collegiate Dictionary.

The effect of the grant of patent is quid pro quo, quid'ts the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. Section 12, Patents and Designs Act sets out that a Patent once granted confers upon the patentee the exclusive privilege of making, selling and using the invention throughout India and of authorising others so to do. This is quo. The quid is compliance with the various provisions resulting in the grant of patent.& mdash Raj Parkash v Mangat Ram Choudhary AIR 1978 Del 1:

Patentee

“ Patentee” is he to whom a patent has been granted. The term is usually applied to one who has obtained letters patent for a new invention.

Patentee includes assignee of patent whose name is entered into the register of patents.& mdash Luxmi Dutta v. Nankaus AIR 1964 All 27

Person

In general usage, a human being (i.e. natural person), though by statute term may include labor organizations, partnerships, associations, corporations, legal representatives, trustees, trustees in bankruptcy, or receivers.

& lsquo Person' shall include any company or association or body of individuals, whether incorporated or not.& mdash General Clauses Act 1897, s. 3(42) Indian Penal Code 1860, s. 11. The definition of the term in the General Clauses Act is not exhaustive. It is hardly a definition. It only indicates the intention of legislature to treat artificial persons as persons.& mdash Jabbar v State of UP. AIR 1966 All 590.

Section 11, I.P.C. defining a person includes within its ambit a company or association or body of persons whether incorporated or not. It may seem prima facie that a corporate body or a body of unincorporated persons is punishable as an ordinary individual. But, the clause “ unless there is anything repugnant to the subject or context” must always be understood to exist in the context of the definition given in Penal Code. So a corporate body or a company shall not be indictable for offences which can be committed only by a human individual (e.g., rape, bigamy etc.) or for offences which must be punished by imprisonment (e.g. cheating).& mdash Sfafe of Maharashtra v Syndicate Bank AIR 1964 Bom 95: (1964) 2 Cr U 276.

In general, a corporation is in the same position in relation to criminal liability as a natural person and may be convicted of common law and statutory offences including those requiring mens rea. There are, however, crimes which a corporation is incapable of committing or of which a corporation cannot be found guilty as principal nor can a corporation be convicted of a crime for which death or imprisonment are the only punishments.

Criminal liability of a corporation arises where an offence is committed in the course of corporation's business by a person in control of its affairs to such a degree that it may fairly be said to think and act through him so that his actions and intent are the actions and intent of the corporation.& mdash Halsbury's Laws of England, 4th Ed. Vol. 11, para 34, p. 30.

Under section 2(31) of the Income Tax Act, 1961 “ person” includes& mdash

(i) an individual,

(ii) a Hindu undivided family,

(iii) a company,

(iv) a firm,

(v) an association of persons or a body of individuals, whether incorporated or not,

(vi) a local authority, and

(vii) every artificial juridical person, not falling within any of the preceding sub-clauses. Income-tax Act 1961, s. 2(31).

In Order 30, Rule 10, Code of Civil Procedure 1908, the word & lsquo person' does not include a company, because such a construction will be repugnant to the context.& mdash Modi Vanaspati v Khaitan Jute Mills AIR 1969 Cat 496.

The General Clauses Act, 1897 defines that “ person” shall include any company, or association or body of individuals whether incorporated or not” . The word “ person” in section 4 of the Indian Partnership Act which has replaced section 239 of the Indian Contract Act contemplates only natural or artificial, that is, legal persons and therefore a firm, is not a person and as such is not entitled to enter into Partnership with another firm or Hindu undivided family or individual.& mdash Dulichand Laxminarayan v. Commissioner of Income Tax, Nagpur, AIR 1956SC 354:

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& mdash & mdash & mdash & mdash & mdash & mdash & ndash

1. Substituted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

2. Inserted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

3. Substituted for “ notified as such under sub-section (1) of section 133” by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

4. Inserted by Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

5. Substituted, ibid.

6. Inserted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide SO 561(E), dt. 20-5-2003.

7. Substituted, ibid.

8. Substituted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide SO 561(E), dt. 20-5-2003.

Chapter II & ndash Inventions not Patentable

Section 3. What are not inventions

The following are not inventions within the meaning of this Act,& mdash

(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws

¹[(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment ]

(c) the mere discovery of a scientific principle or the formulation of an abstract theory ²[or discovery of any living thing or non-living substance occurring innatur ]

³[(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation : For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy ]

(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way

(g) [Omitted by Patents (Amdt.) Ad, 2002, w.e.f. 20-5-2003 vide S.0.561(E), dt. 20-5-2003]

(h) a method of agriculture or horticulture

(i) any process for the medicinal, surgical, curative, prophylactic ⁴[diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals ⁵[xxxxx] to render them free of disease or to increase their economic value or that of their products.

⁴[(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals

(k) a mathematical or business method or a computer program per se or algorithms

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematrographic works and television productions

(m) a mere scheme or rule or method of performing mental act or method of playing game

(n) a presentation of information

(o) topography of integrated circuits

(p) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.] , ,

& mdash & mdash & mdash & mdash & mdash & mdash -

1. Substituted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

2. Inserted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

3. Substituted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

4. Inserted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E),dt. 20-5-2003.

5. Words “ or plants” omitted, by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

Section 4. Inventions relating to atomic energy not patentable

No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).

Section 5. [Omitted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005]

[Omitted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005]

Chapter III & ndash Applications for Patents

Section 6. Persons entitled to apply for patents

(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,& mdash

(a) by any person claiming to be the true and first investor of the invention

(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application

(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

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Section 7. Form of application

Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.

¹[(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.]

²[(1B) The filing date of an application referred to in sub-section (1A) 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.]

(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.

(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the ³[person] claiming to be the true and first inventor and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.

⁴[(4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.]

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1 Inserted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E),dt. 20-5-2003.

2. Inserted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

3. Substituted for “ ownei” by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

4. Substituted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

Section 8. Information and undertaking regarding foreign applications

(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 respect of the same or substantially the same invention, or where to his knowledge such 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 [or subsequently ²[within the prescribed period as the Controller may allow]]& mdash

³[(a) a statement setting out detailed particulars or such application and]

(b) an undertaking that, ⁴[up to the date of grant of patent in India,] he would keep the Controller informed in writing, from time to time, of ⁵[detailed particulars as required under] clause (a) in respect of every other application & ndash . 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.

¹[(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be perscribed.]

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1. Substituted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

2. Substituted for “ within such period as the Controller may, for good and sufficient reasons, allow” by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

3. Substituted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

4. Substituted for “ up to the date of the acceptance of his complete specification filed in India” by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

5. Substituted for “ details of the nature referred to in” by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E),dt. 20-5-2003.

Section 9. Provisional and complete specifications

¹[(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve & lsquo months i rum the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.]

(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications:

²[PROVIDED that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.]

¹[(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.]

(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before ³[grant of patent] cancel the provisional specification and post-date the application to the date of filing of the complete specification.

COMMENTS

Mere arrangement or rearrangement or duplication of a known device cannot be patented.& mdash Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. 1999 (19) PTC 479 (Del)

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1. Substituted by the Patents (Amdt.) Act 2005, w.e.f. 1-1-2005.

2. Inserted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

3. Substituted for “ the acceptance of the complete specification' by the Patents (Amdt.) Act, 2005 w.e.f. 1-1-2005.

Consult: Top Patent Lawyers in India

Section 10. Contents of specifications

(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.

(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional and any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly. & ndash

(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished ¹[before the application is found in order for grant of a patent] but such model or sample shall not be deemed to form part of the specification.

(4) Every complete specification shall& mdash

(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed

(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection and

²[(d) be accompanied by an abstract to provide technical information on the invention:

PROVIDED that& mdash

(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 available to the public, the application shall be com-*” pleted by depositing ³[the material to an international depository authority under the Budapest Treaty] and by fulfilling the following conditions, namely:& mdash

⁴[(A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period ]

(B) all the available characteristics of the material required for it to be correctly identified or indicated are 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.]

⁴[(4A) In case of an international application designating India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.]

⁵[(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions 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.]

(6) A declaration as to the inventorship of the invention shall, in such cases as may be prescribed be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.

(7) Subject to the foregoing provisions of this section, a complete specification to the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.

COMMENTS

Where the invention has not been properly described and will not function in the way claimed by the applicants, the opponents succeed even when they fail to establish “ prior publication” as well as “ prior public knowledge” and, therefore, the application for grant of patent is liable to be rejected.& mdash Abid Kagalwala v. Edgar Haddley Co. (P) Ltd. 1984 PTC 234 (PO)

Where the invention claimed by the plaintiff involves nothing which is outside the probable capability of skilled craftsman having regard to what was already known in the country and there being no new manner of manufacture or a distinctive improvement on the old contrivance involving novelty or inventive step, ex parte injunction granted is liable to be vacated.& mdash Surendra Lal Mahendra v. Jain Glazers 1981 PTC 112 (Del)

It is incumbent under section 10(4) to fully and particularly describe the invention and its operation or use and the method by which it is to be performed and disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection ending with a claim or claims defining the scope of the invention for which protection is claimed.& mdash Ram Narain Kher v. Ambassador Industries PTC (Suppl.) (1) 180 (Del).

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1. Subs, for “ before the acceptance of the application” by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

2. Inserted by Patents (Amdt.) Act, 2002, w.e.f. 20-5-2003 vide S.O. 561(E), dt. 20-5-2003.

3. Substituted for “ the material to an authorised depository institution as may be notified by the Central Government in the Official Gazette” by the Patents (Amdt) Act, 2005, w.e.f. 1-1-2005.

4. Substituted by the Patents (Amdt.) Act, 2005, w.e.f. 1-1-2005.

5. Substituted by Patents (Amdt.) Act. 2002, w.e.f. 20-5-2003 vide S.O. 561 (E), dt. 20-5-2003.

Consult: Top Patent Lawyers in India

Section 11. Priority dates of claims of a complete specification

(1) There shall be a priority date for each claim of a complete specification.

(2) Where a complete specification is filed in pursuance of a single application accompanied by& mdash

(a) a provisional specification or

(b) a specification which is treated by virtue of a direction under sub-section (3) of section 9 as a provisional specification,

and the claim is fairly based on the matter disclosed in the specification referred to in clause (a) or clause (b), the priority date of that claim shall be the date of the filing of the relevant specification.

(3) Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned in sub-section (2) and the claim is fairly based on the matter disclosed& mdash

(a) in one of those specifications, the priority date of that claim shall be the date of filing of the application accompanied by that specification

(b) partly in one and partly in another, the priority date of that claim shall be the date of the filing of the application accompanied by the specification of the later date.

¹[(3A) Where a complete specification based on a previously filed application in India has been filed within twelve months from the date of that application and the claim is fairly based on the matter disclosed in the previously filed application, the priority date of that claim shall be the date of the previously filed application in which the matter was first disclosed.]