Author: Abhinav Gaur, Research Associate
What is a patent?
A patent is an exclusive right ((N. R. Subramanium, Patent Law, Wadhwa and Company, New Delhi [2nd ed. 2007]))granted to a person who has invented a new and useful article or an improvement of an existing article, or a new process of making an article ((P. Narayanan, Patent Law, Eastern Law House, Kolkata [4th ed. 2006] 1)). Patent is a monopoly ((Raj Prakash v. Mangat Ram Chaudhary, (1978) AIR Del 1))right ((A. Bhargava, Guide To Patents Act With Patent Rules, Taxmann Allied Services, New Delhi, ))in respect of an invention ((Halsbury’s Laws of England [4th ed., Vol. 35, para 303])). The object of granting a patent is to encourage and develop new technology and industry ((P. Narayanan, Intellectual Property Law, Eastern Law House, Kolkata, (3rd ed. 2001) 11)). Thus, precisely, Patent is an instrument to guarantee protection of rights of patent holder to use the invention to his advantage.
The word patent is nowhere defined in the Act, although section 2(1)(m) states ‘Patent’ means a patent granted under this Act’, but generally, A patent is a state sanctioned time barred right to the inventor, in return of inventor disclosing the details of the invention to the public.
Who is a patentee?
Patentee is a person for the time being entered in Register of Patents as the grantee or proprietor of patent ((S. 2 (1) (p), The Patents Act, 1970. (39 OF 1970).)). Patentee is the one to whom a patent has been granted. The term is usually applied to one who has obtained letters patent for a new innovation ((Black’s Law Dictionary (2nd ed.) http://thelawdictionary.org/patentee/ [Last viewed on May 23, 2013])).
Grant of a patent
Patent once granted ((Section 43 The Patents Act, 1970 [39 OF 1970]))does not prima facie validate a patent. Guarantee of patent should not be confused with issuance of a patent ((Bishwanath Prasad Radhey Shyam v. H M Industries, AIR 1982 SC 1444; Hindustan Lever Ltd. v. Godrej Soaps Ltd, AIR 1996 Cal HC 367; Standipack P Ltd v. Oswal Trading Co, AIR 2000 Del 23; Gandhimathi Appliances v. L G Varadaraju, (2001) CLA-BL Supp 250 (Mad HC DB); Novartis AG v. Mehar Pharma, 2005(30) PTC 160 [Bom])). The examination and investigation carried out by the Controller of Patents and any further report or proceedings must not at all be deemed to warrant the validity of a patent, and Government or any other officer related to it shall not be liable for any action taken on grounds of the investigation ((S. 13(4) The Patents Act, 1970 [39 OF 1970].)). Controller, taking notice of a failure to abide by his specification, may refuse the grant of patent ((S. 15 The Patents Act, 1970 [39 OF 1970])).
The following paragraph elucidates upon the effect of grant of a patent on a patentee:
The effect of the grant of a patent is quid pro quo. Quid id the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent ((Raj Prakash v. Mangat Ram Chaudhary, AIR 1978 Del 1. See Firoz Ali Khaidar, The Laws Of Patents: With Special Focus On Pharmaceuticals In India, Lexis Nexis, Buttersworth Wadwa, Nagpur, (2009) 250.)).
Consequences of Grant of Patents
There lies an exclusive right upon patentee’s agent or assignee conferred by a patent, for a limited period to the exclusion of all others. With the right to prevent others from making, using or marketing such invention during the period of protection, lies a monopoly right over the invention for a limited period to make or use the invention or to make it.
Rights and Obligations of Patentee
Patentee has been enshrined with following rights:-
(a) Where the patent is for a product, the exclusive right to prevent third parties, who do not have his consent, from act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) Where the subject matter of patent is a process, the exclusive right to prevent third parties, who do not have his consent, from act of using, offering for sale, selling or importing for those purposes the product directly obtained from that process, in India ((F Hoffmann-la Roche Ltd v. Cipla Limited, 2008 (37) PTC 71 (Del).)).
Nevertheless, that product should not be such that no patent can be granted for that product in India ((S. 48 The Patents Act, 1970 [39 OF 1970])).
More explicitly, if the rights to patentee are to be elaborated, the rights can be formulized as under:
Right to exploit the patent
In the case, when invention is a product, it is the exclusive rights of patentee to make, use, sell or import for these purposes, the invention in India. Whereas, in the case where such is for a method or process of manufacturing an article or substance, it confers exclusive right to use or exercise the method or process in India.
Right to grant license
The patentee has the discretion to transfer rights or grant licenses or enter into some other arrangement for a consideration. A license or an assignment to must be in writing and registered with the Controller of Patents, for it to be legitimate and valid. The document assigning a patent is not admitted as evidence of title of any person to a patent, unless registered ((S. 69(5) The Patents Act, 1970 [39 OF 1970])) and this is applicable to assignee not the assignor ((National Research Dev. v. Silicon Ceramics, AIR 1998 Del 52)).
Right to surrender
The patentee upon his own discretion has the right to surrender the patent at any time by giving notice in the prescribed manner to the Controller. The Controller, before accepting the offer of surrender shall have to advertise the same so as to give an opportunity to the interested parties to oppose the offer of surrender. This is usually done when the patentee apprehends his non-performance of the patent in future and upon which he decides to surrender the patent.
Right to sue for infringement
The patentee has a right to institute proceedings for infringement of the patent in a District Court having jurisdiction to try the suit.
What are Patentee’s rights subjected to?
Rights of patentees as discussed above are subjected to few restrictions, which are as follows:-
Government use of patent
A patented invention may be used or even acquired by the Government, for its use only; it is be understood that Government may also restrict or prohibit the use of patent under certain circumstances. In case of a patent in respect of any medicine or drug, it may be imported by the Government for its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government. This a government can do without consent of patentee or even without payment of royalties. The Government may also sell the article manufactured by patented process on royalties or may also acquire a patent on paying a suitable compensation.
If patent is not worked satisfactorily to meet the reasonable requirements of the public, at a reasonable price. The Controller may grant compulsory licenses to any applicant to work the patent. A compulsory license is a provision under the Indian Patent Act which allows the government to mandate a generic drug maker to produce inexpensive medicine in public interest even as a patent on the product is valid. Compulsory licenses may also be obtained in respect of related patents where one patent cannot be worked without using the related patent.
Revocation of Patents
A patent may be revoked in cases where there has been no work or unsatisfactory result to the demand of public in respect of patented invention.
Invention for defense purposes
Such patents may be subject to certain secrecy provisions, i.e. publication of same may be restricted or prohibited by directions of controller. Upon continuance of such order or prohibition of publication or communication of patented invention, applicant is debarred for using it and Central Government might use it on payment of royalties to applicant.
Once lapsed, a patent may be restored, provided that few limitations are imposed on the right of the patentee. When infringement was done during the period between date of lapse and date of advertisement of the application for restoration, then the patentee has no right to seek action for infringement.
OBLIGATIONS OF A PATENTEE
Wisely said, that where there is right, there is a duty. The possession of patent does not only bestow certain monopoly rights upon the patentee but also certain duties, such as:-
1. To encourage and secure working of invention to fullest extent without undue delay.
2. Not to use monopoly to unfairly prejudice interest of public.
3. Failure to discharge duties reasonably, would lead to revocation of patent.
4. To furnish periodical statements to Controller, as to extend to which invention has been worked.
5. Failure to provide statement to Controller is a punishable offence.
A patent is a monopoly right conferred by the Patent Office on an inventor, with his right to exploit his invention for a limited period of time. During this period, the inventor is entitled to exclude anyone else from commercially exploiting his invention. Once a patent is granted to the patentee, certain rights and obligations arises with respect of holding, using, exploiting, and working of a patent on a patentee. The author believes it to be a negative right, because enjoyment of a patent by a patentee is subject to various restrictions and obligations, breach of which may result into heavy penalties as subscribed by the law.