UGC NET LAW (058) · UNIT 09 · MODULE 2: COPYRIGHT, PATENTS AND TRADEMARKS · TOPIC 5

Law of Patents

Criteria of patentability, the exclusions in section 3, who can apply, the step-by-step procedure, patentee's rights, exceptions, revocation and infringement.

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  1. 5.1Framework and historyThe Patents Act 1970 (in force 20 April 1972) replaced the Indian Patents and Designs Act 1911.
    • Patents Act 1970
    • only process patents
    • Patents (Amendment) Act 1999
    • 2002 Amendment
    • 2005 Amendment
  2. 5.2Meaning and criteria of patentabilityCovers Invention (Section 2(1)(j)), New (2(1)(l)), Inventive step (2(1)(ja)).
    • Invention (Section 2(1)(j))
    • New (2(1)(l))
    • absolute novelty
    • Inventive step (2(1)(ja))
    • technical advance
  3. 5.3Who can apply (Section 6) and forms of applicationA patent application may be made by: the true and first inventor ; the assignee of the right to apply; or the legal representative of a deceased person who was entitled…
    • true and first inventor
    • assignee
    • legal representative
    • Form 1
    • Form 2
  4. 5.4Procedure for grant: step by stepCovers Filing, Publication, Request for examination, Examination, Pre-grant opposition (Section 25(1)) and more.
    • Filing
    • Publication
    • 18 months
    • early publication
    • Request for examination
  5. 5.5Rights of the patentee (Section 48)Subject to the Act, a patent grants:
    • product patent
    • process patent
    • using the process
    • Section 104A
    • Term (Section 53)
  6. 5.6Limitations and exceptions to patent rightsCovers Government use (Section 47), Research and experimental use, Bolar provision (Section 107A(a)), Compulsory licences (Sections 84–92), Section 92 and more.
    • Government use (Section 47)
    • Sections 99–103
    • royalty/compensation
    • acquisition (Section 102)
    • Research and experimental use
  7. 5.7Revocation (Section 64)On petition of a person interested or the Central Government (or counterclaim in an infringement suit) to the High Court .
    • High Court
    • invention published before
    • prior publication/use
    • obvious
    • not an invention
  8. 5.8Infringement and remediesCovers What is infringement?, Jurisdiction (Section 104), Reliefs (Section 108), Standard-essential patents (SEPs), Offences (Chapter XX).
    • What is infringement?
    • in India
    • Test
    • "pith and marrow"
    • as granted
  9. 5.9Recent trends in patent lawCovers IPAB abolition (2021), Section 3(d) litigation continues, Standard-essential patents, Increasing use of the 2021–2024 Rules, Patent grants and more.
    • IPAB abolition (2021)
    • High Court
    • IP Division
    • Standard-essential patents
    • FRAND damages

Revision mode hides the full explanations and keeps each section's key terms, lists and tables. Use it from your second read onward.

5.1Framework and history#

In brief

The Patents Act 1970 (in force 20 April 1972) replaced the Indian Patents and Designs Act 1911.

  • Patents Act 1970
  • only process patents
  • Patents (Amendment) Act 1999
  • 2002 Amendment
  • 2005 Amendment
  • product patents
  • Patents Rules 2003
  • 2024

The Patents Act 1970 (in force 20 April 1972) replaced the Indian Patents and Designs Act 1911. It was modelled on the Ayyangar Committee Report (1959) and originally allowed only process patents for food, medicines and chemicals (Section 5). TRIPS compliance came in three steps: the Patents (Amendment) Act 1999 (mailbox facility and exclusive marketing rights), the 2002 Amendment (term extended to 20 years, Sections 3(p), 25 and TK/biological-material disclosure provisions) and the 2005 Amendment (product patents in all fields of technology; Section 5 omitted; Section 3(d) strengthened; Section 92A added). The Patents Rules 2003 (amended 2016, 2019, 2021 and 2024) govern procedure. The Patents (Amendment) Rules 2024 (March 2024) among other changes relaxed the Form 27 (working statement) to a three-financial-year cycle (verify exact current text). A patent is a statutory monopoly, not a natural right: Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (SC 1978) explained that a patent is a reward for the inventor's disclosure, and that the grant of a monopoly must not be broader than the invention.

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5.2Meaning and criteria of patentability#

In brief

Covers Invention (Section 2(1)(j)), New (2(1)(l)), Inventive step (2(1)(ja)).

  • Invention (Section 2(1)(j))
  • New (2(1)(l))
  • absolute novelty
  • Inventive step (2(1)(ja))
  • technical advance
  • economic significance
  • single most tested provision
  • known efficacy
  • Invention (Section 2(1)(j)): a new product or process involving an inventive step and capable of industrial application.

  • New (2(1)(l)): not anticipated by prior publication, prior use or otherwise, anywhere in the world (absolute novelty) before the date of filing/priority.

  • Inventive step (2(1)(ja)): a feature involving technical advance compared to existing knowledge, or having economic significance or both, and making the invention not obvious to a person skilled in the art ("PSITA").

  • Capable of industrial application (2(1)(ac)): the invention is capable of being made or used in an industry.

Subject matter excluded: Section 3 ("What are not inventions"). This is the single most tested provision in patent law. Learn all of 3(a)–(p):

Clause Not an invention
3(a) Frivolous inventions or claims contrary to well-established natural laws
3(b) Inventions whose commercial exploitation would be contrary to public order or morality, or cause serious prejudice to human, animal, plant life or health, or the environment
3(c) Discovery of a scientific principle, formulation of an abstract theory, or discovery of any living thing or non-living substance occurring in nature
3(d) Mere discovery of a new form of a known substance that does not result in enhancement of known efficacy; mere discovery of a new property or new use of a known substance; mere use of a known process unless it results in a new product or employs at least one new reactant. Salts, esters, polymorphs, isomers, combinations are the same substance unless they differ significantly in properties with regard to efficacy.
3(e) Mere admixture resulting only in the aggregation of properties of components (e.g. a combination of known drugs with no synergistic effect)
3(f) Mere arrangement, rearrangement or duplication of known devices functioning independently
3(g) (Omitted by the 2002 Amendment)
3(h) Method of agriculture or horticulture
3(i) Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or of animals to render them free of disease or to increase their economic value
3(j) Plants and animals in whole or in any part, including seeds, varieties and species, and essentially biological processes for production or propagation of plants and animals (micro-organisms are patentable)
3(k) Mathematical or business method or a computer programme per se or algorithms
3(l) Literary, dramatic, musical or artistic work or any other aesthetic creation (including cinematographic works and television productions)
3(m) A mere scheme, rule or method of performing a mental act, or a method of playing a game
3(n) Presentation of information
3(o) Topography of integrated circuits
3(p) An invention which, in effect, is traditional knowledge, or is an aggregation or duplication of known properties of traditionally known component(s)

Section 4: inventions relating to atomic energy (Atomic Energy Act 1962, Section 20) are not patentable.

Section 3(d) and Novartis. Novartis AG v. Union of India (SC, 1 April 2013) is the leading case. Novartis sought a patent on the beta crystalline form of imatinib mesylate (Glivec) for cancer. The Supreme Court held that the beta crystalline form was a new form of a known substance (imatinib free base, disclosed in the Zimmermann patent) and that the claimed increase in bioavailability did not show enhanced therapeutic efficacy; the explanation to Section 3(d) requires that "efficacy" means therapeutic efficacy for medicines. The Court read 3(d) as a standard setting a higher threshold for incremental innovations to prevent evergreening (extending monopoly by trivial changes), and held it consistent with TRIPS and Article 21. It also said that Section 3(d) is not a limit on patentability of true innovations.

Computer-related inventions (CRI). Section 3(k) excludes software per se. CRI Guidelines 2017 (revised) allow patents where the claim shows a technical effect or technical contribution and is not merely software. Ferid Allani v. Union of India (Delhi HC 2019) held that software with technical effect is patentable; Microsoft Technology Licensing LLC v. Assistant Controller of Patents (Delhi HC 2023) applied the same approach.

Biotechnology. Dimminaco AG v. Controller of Patents (Calcutta HC 2002): a vaccine containing a live virus was patentable as the claimed process produced a manufacture, rejecting the Controller's "living organism" refusal. Micro-organisms are patentable (Diamond v. Chakrabarty, US 1980, is the global reference; the Budapest Treaty deposit is required where the invention uses a micro-organism not publicly available). Plant varieties are under the PPVFR Act 2001.

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5.3Who can apply (Section 6) and forms of application#

In brief

A patent application may be made by: the true and first inventor ; the assignee of the right to apply; or the legal representative of a deceased person who was entitled…

  • true and first inventor
  • assignee
  • legal representative
  • Form 1
  • Form 2
  • provisional
  • complete
  • Form 3

A patent application may be made by: the true and first inventor; the assignee of the right to apply; or the legal representative of a deceased person who was entitled before death. Applications are made in Form 1 with Form 2 (specification: provisional or complete), plus Form 3 (Section 8: statement and undertaking on foreign filing), Form 5 (declaration of inventorship, for convention/PCT applications) and Form 26 (authorisation of patent agent). The specification must fully and particularly describe the invention and the best method of performing it known to the applicant (Section 10(4)), and the claims define the scope of protection. A provisional specification secures a priority date, with the complete specification due within 12 months (Section 9).

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5.4Procedure for grant: step by step#

In brief

Covers Filing, Publication, Request for examination, Examination, Pre-grant opposition (Section 25(1)) and more.

  • Filing
  • Publication
  • 18 months
  • early publication
  • Request for examination
  • Form 18
  • 48 months
  • Examination
  1. Filing (Section 7) at the appropriate Patent Office (determined by the applicant's/inventor's residence or place of business).

  2. Publication (Section 11A) automatically 18 months from the filing/priority date; early publication can be requested (Rule 24A, within about a month).

  3. Request for examination (Section 11B) in Form 18 within 48 months from the earlier of the priority/filing date (expedited examination, Rule 24C, Form 18A for startups, small entities, women applicants, applications where India was the ISA and some others).

  4. Examination by an examiner (Section 12): the First Examination Report (FER) is issued; the applicant must comply within 6 months (extendable by 3 months; total 9 months from FER) (Section 21).

  5. Search for anticipation by previous publication and prior claiming (Section 13).

  6. Pre-grant opposition (Section 25(1)): any person, after publication and before grant, may file a representation. Grounds include: wrongful obtaining; prior publication; prior claiming; public knowledge/use; obviousness; not an invention or not patentable (Sections 3, 4); insufficient description; failure to disclose Section 8 information; convention-date non-compliance; non-disclosure or wrong mention of source/geographical origin of biological material (25(1)(j)); anticipation by knowledge available within a local or indigenous community in India or elsewhere (25(1)(k)). (Rule 55: within 6 months of publication or before grant, whichever is later.)

  7. Grant (Section 43) and sealing: the patent is granted if all requirements are met, entered in the Register, and published in the Patent Office Journal. The date of the patent is the date of filing (Section 43(4)). Where it is a PCT application, the international filing date.

  8. Post-grant opposition (Section 25(2)): by any person interested, within 12 months from the date of publication of grant, before an Opposition Board, then decided by the Controller. Grounds are the same list as pre-grant (with the wording "person interested" and no "public knowledge/use" difference of note). A revocation petition (Section 64) can be filed before the High Court or as a counterclaim in an infringement suit.

  9. Renewal (Section 53(2)): annual renewal fee from the second/third year onwards (the patent lapses on non-payment but may be restored, Sections 60–61).

Other key provisions

  • Section 8: the applicant must furnish information about corresponding foreign applications; failure is a ground for opposition and revocation.

  • Section 16: divisional applications where the application claims more than one invention (before grant).

  • Section 54: patent of addition (an improvement or modification of the main invention); term coterminous with the main patent.

  • Section 35–39: secrecy directions for inventions relevant to defence; Section 39: an Indian resident must obtain prior written permission (or wait 6 weeks) before filing abroad.

  • Section 138 / Rule 20: PCT national-phase entry (31 months).

  • Priority: Convention applications within 12 months (Section 135).

  • Fees: reduced for startups, small entities and educational institutions (80% rebate for startups since 2021 Rules; 2024 Rules extended educational-institution benefits – verify).

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5.5Rights of the patentee (Section 48)#

In brief

Subject to the Act, a patent grants:

  • product patent
  • process patent
  • using the process
  • Section 104A
  • Term (Section 53)
  • 20 years
  • date of filing
  • Assignment and licence

Subject to the Act, a patent grants:

  • For a product patent: the exclusive right to prevent third parties without consent from making, using, offering for sale, selling or importing the product in India.

  • For a process patent: the exclusive right to prevent others from using the process, and from using, offering for sale, selling or importing the product directly obtained by the process (Section 48(b)). Section 104A: burden of proof shifts to the defendant in process patent suits where the product is new, or where there is a substantial likelihood that the product was made by the patented process and the patentee has been unable to determine the process used.

  • Term (Section 53): 20 years from the date of filing of the application (for PCT, from the international filing date), for all patents.

  • Assignment and licence: must be in writing and registered (Sections 68–70); co-owners have rights under Sections 50–51; Section 70: a co-owner may work the patent but cannot assign/license without the others' consent (subject to agreement).

  • Working of the patent: patentees/licensees must file Form 27 statements on commercial working (Section 146).

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5.6Limitations and exceptions to patent rights#

In brief

Covers Government use (Section 47), Research and experimental use, Bolar provision (Section 107A(a)), Compulsory licences (Sections 84–92), Section 92 and more.

  • Government use (Section 47)
  • Sections 99–103
  • royalty/compensation
  • acquisition (Section 102)
  • Research and experimental use
  • 107A(b)
  • parallel importation
  • Section 84
  • Government use (Section 47): the Government may import or make patented products for its own use, for research, or for distribution in dispensaries, hospitals and medical institutions. Sections 99–103: use of inventions for the purposes of Government, with notice and payment of royalty/compensation and the Central Government's power of acquisition (Section 102).

  • Research and experimental use (Section 47(3)): a patented process/product may be used for research or instruction.

  • Bolar provision (Section 107A(a)): any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law that regulates manufacture/sale/import of any product (so generics can seek regulatory approval before patent expiry). 107A(b): parallel importation of patented products from a person duly authorised to sell them – international exhaustion.

  • Compulsory licences (Sections 84–92):

    • Section 84: any person interested may apply after 3 years from the date of grant on grounds that (a) the reasonable requirements of the public have not been satisfied; (b) the invention is not available at a reasonably affordable price; (c) the invention is not worked in the territory of India. Bayer Corporation v. Union of India and Natco Pharma (Controller 2012; IPAB 2013; Bombay HC 2014; SC dismissed SLP 2014) is India's first (and best-known) compulsory licence: sorafenib tosylate (Nexavar), for kidney/liver cancer, granted to Natco on all three grounds, with royalty of 6% of net sales.

    • Section 92: compulsory licence at any time after grant in circumstances of national emergency, extreme urgency or public non-commercial use, by notification of the Central Government.

    • Section 92A: compulsory licence for export of patented pharmaceutical products to countries with insufficient manufacturing capacity (TRIPS Para 6 system; Art. 31bis).

    • Section 83: general principles applicable to working of patented inventions: patents are granted to encourage inventions and secure that they are worked on a commercial scale in India without undue delay and not merely for importation; they should not impede protection of public health and nutrition.

    • Section 90: terms and conditions of CL (reasonable royalty, non-exclusive, non-assignable, with the main aim of supply in India).

    • Section 66: revocation of a patent in the public interest by the Central Government.

  • Patent linkage rejected: Bayer Corporation v. Union of India (Delhi HC 2010) held that the drug regulator cannot refuse marketing approval merely because a patent exists; India does not follow patent linkage.

  • Traditional knowledge protection (Section 3(p)) and disclosure of biological source (Section 10(4)(d)(ii)(A)); Section 64(1)(p)–(q) grounds for revocation.

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5.7Revocation (Section 64)#

In brief

On petition of a person interested or the Central Government (or counterclaim in an infringement suit) to the High Court .

  • High Court
  • invention published before
  • prior publication/use
  • obvious
  • not an invention
  • not patentable
  • Section 8
  • traditional knowledge

On petition of a person interested or the Central Government (or counterclaim in an infringement suit) to the High Court. Grounds (Section 64(1)) include: patent granted to a person not entitled; already claimed in an earlier Indian patent (prior claiming); invention published before the priority date or publicly known/used in India (prior publication/use); obvious or lacking inventive step; not an invention under the Act or not patentable; insufficient/ambiguous description; wrong Section 8 information; secrecy directions contravened; failure to disclose the source of biological material (64(1)(p)); and anticipation by traditional knowledge (64(1)(q)).

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5.8Infringement and remedies#

In brief

Covers What is infringement?, Jurisdiction (Section 104), Reliefs (Section 108), Standard-essential patents (SEPs), Offences (Chapter XX).

  • What is infringement?
  • in India
  • Test
  • "pith and marrow"
  • as granted
  • Jurisdiction (Section 104)
  • District Court
  • High Court
  • What is infringement? Unauthorised making, using, offering for sale, selling or importing the patented product, or using the patented process (and its direct products), in India, during the term of the patent. Test: the claims are construed purposively; the court looks at the "pith and marrow" of the invention (Raj Prakash v. Mangat Ram Chowdhary, Delhi HC 1977); equivalents are considered under the doctrine of equivalents/purposive construction (Indian courts have also applied Catnic). Infringement and revocation are decided on the claims as granted.

  • Jurisdiction (Section 104): suits lie in the District Court; where the defendant counterclaims for revocation, the suit is transferred to the High Court. After the Tribunals Reforms Act 2021, appeals from the Controller go to the High Court (Section 117A).

  • Reliefs (Section 108): injunction (interim and final), damages or account of profits (against the infringer; innocent infringer exception, Section 111), delivery up. Section 106: relief against groundless threats of infringement proceedings. Section 109: an exclusive licensee may sue (patentee as co-plaintiff); Section 110: the right of a licensee/assignee.

  • Standard-essential patents (SEPs): Telefonaktiebolaget LM Ericsson v. Lava International (Delhi HC 2024) awarded approx. ₹244 crore in damages for SEP infringement of 2G/3G patents, an important recent decision on FRAND (fair, reasonable and non-discriminatory) licensing.

  • Offences (Chapter XX): falsification of Register (Section 123), unauthorised claim of patent rights (Section 120), wrongful claim of being a patent agent, breach of secrecy directions (Section 118), refusal to supply information; with penalties of imprisonment (up to 6 months in some provisions) and fines, though many criminal provisions were decriminalised or reduced under the Jan Vishwas (Amendment of Provisions) Act 2023 (verify provisions).

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5.9Recent trends in patent law#

In brief

Covers IPAB abolition (2021), Section 3(d) litigation continues, Standard-essential patents, Increasing use of the 2021–2024 Rules, Patent grants and more.

  • IPAB abolition (2021)
  • High Court
  • IP Division
  • Standard-essential patents
  • FRAND damages
  • Patent grants
  • disclosure of origin
  • Patents (Amendment) Rules 2024
  • IPAB abolition (2021): appeals now lie to the High Court; the Delhi High Court's IP Division deals with Patent Office appeals.

  • Section 3(d) litigation continues (e.g. disputes on drugs such as risdiplam and linagliptin).

  • Standard-essential patents and FRAND damages (Ericsson v. Lava, 2024).

  • Increasing use of the 2021–2024 Rules to reduce fees and timelines (startups, educational institutions, expedited examination).

  • Patent grants by the Indian Patent Office have risen sharply since 2020 (CGPDTM annual reports).

  • Genome/AI inventions and CRI Guidelines; disclosure of origin under the WIPO GRATK Treaty (2024) and Section 10(4)(d)(ii)(A).

  • Patents (Amendment) Rules 2024: Form 27 once in three years (verify), changes to Form 3 timeline and divisional applications.

Quick facts for revision (Section 5). Act: 1970 (in force 1972). Term: 20 years from filing. Publication: 18 months. RFE: 48 months. FER reply: 6 + 3 months. Pre-grant opposition: Section 25(1); post-grant: 25(2) within 12 months of publication of grant. Revocation: Section 64. Compulsory licence: Section 84 (after 3 years), Section 92 (emergency, any time), Section 92A (export). Bolar: 107A. Product patents: 2005. Not inventions: Section 3; atomic energy: Section 4. Novartis: 2013 (3(d), "therapeutic efficacy"). First CL: Natco (Bayer's sorafenib), 2012. Burden of proof in process patents: Section 104A. Foreign filing permission: Section 39 (6 weeks).

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