Salient Features of the Patents Act, 1970

1. Background and policy

The Act replaced the Indian Patents and Designs Act, 1911 on the recommendations of the Justice N. Rajagopala Ayyangar Committee (1959) and came into force on 20 April 1972. As enacted it allowed only process patents for food, drugs and chemicals, and was built to ensure that patents were worked in India. It has been amended three times to meet TRIPS (1999, 2002, 2005), and procedure is now governed by the Patents Rules, 2003 as amended, most recently by the Patents (Amendment) Rules, 2024. The legislative competence is Entry 49 of the Union List: “Patents, inventions and designs; copyright; trade-marks and merchandise marks.”

2. Patentability

• Definition of invention: a new product or process, involving an inventive step, capable of industrial application (section 2(1)(j)), with definitions of new invention, inventive step and industrial application (sections 2(1)(l), 2(1)(ja), 2(1)(ac)).
• Product patents in all fields since 1 January 2005, as required by Article 27(1) of TRIPS. The old section 5, which limited food and drug patents to processes, was omitted.
• Exclusions in section 3, the widest in any major patent law, including section 3(d) (new forms of known substances without enhanced efficacy), 3(i) (methods of treatment), 3(j) (plants and animals), 3(k) (computer programs per se, business methods) and 3(p) (traditional knowledge). Section 4 excludes atomic energy inventions.

Section 3(d) is the feature that most distinguishes Indian law. In Novartis AG v. Union of India, 2013 INSC 198, (2013) 6 SCC 1, the Supreme Court upheld the refusal of a patent for the beta crystalline form of imatinib mesylate (sold as Glivec), holding that for medicines “efficacy” means therapeutic efficacy, and that better flow properties or bioavailability alone do not prove it. The Madras High Court had earlier rejected Novartis’s challenge to the constitutional validity of section 3(d) (2007).

3. Procedure

• Application by the true and first inventor or assignee (section 6), with a provisional or complete specification (section 9); the complete specification must describe the invention, disclose the best method of performance, end with claims, and disclose the source and geographical origin of any biological material used (section 10).
• Publication after eighteen months (section 11A) and examination only on request (section 11B). The 2024 Rules shortened the time for requesting examination to thirty-one months from the priority date.
• Secrecy and foreign filing: a resident must obtain permission before filing abroad first (section 39), and defence-related applications may be kept secret (section 35).
• Two oppositions. Any person may file a pre-grant representation after publication (section 25(1)); any person interested may file a post-grant opposition within one year of grant (section 25(2)). The grounds include lack of novelty or inventive step, non-patentable subject matter, insufficiency, non-disclosure of biological source, and anticipation by traditional knowledge.
• International routes: priority under the Paris Convention (section 135) and national phase entry under the Patent Cooperation Treaty, both of which India joined in 1998.

4. Rights of the patentee and term

Section 48 confers the exclusive right to prevent others from making, using, offering for sale, selling or importing the product, or using the process and dealing in its direct products. The term is twenty years from the date of filing (section 53), uniform since the 2002 amendment, subject to payment of renewal fees. The patentee may assign or license the patent, but the assignment must be in writing and registered (sections 68 and 69). Section 140 renders void certain restrictive conditions in licences, such as compulsory purchase of unpatented goods from the licensor.

5. What the public keeps

This is where the Act carries out the Ayyangar philosophy.

• Working. Section 83 states that patents are granted to encourage inventions and to secure that they are worked in India on a commercial scale, not to enable the patentee to enjoy a monopoly for the importation of the patented article. Patentees file working statements in Form 27 (section 146), which the 2024 Rules reduced to once every three financial years.
• Compulsory licences. After three years from grant any person may apply on the grounds that the reasonable requirements of the public are not satisfied, the invention is not available at a reasonably affordable price, or it is not worked in India (section 84). In Bayer Corporation v. Natco Pharma Ltd. the Controller granted India’s first compulsory licence in 2012 for the kidney and liver cancer drug sorafenib tosylate, which Bayer sold at a price few patients could pay. The IPAB and the Bombay High Court (2014) upheld it, and the Supreme Court declined to interfere. Section 92 provides for licences in a national emergency, extreme urgency or public non-commercial use, and section 92A for export of medicines to countries without manufacturing capacity, implementing the WTO paragraph 6 system.
• Government use and acquisition (sections 100 to 102), and revocation in the public interest (section 66) or for non-working after a compulsory licence (section 85).
• Exceptions to infringement: experimental and research use (section 47), the Bolar exception allowing use of the invention to generate data for regulatory approval, and parallel import of products put on the market by a person authorised by the patentee (section 107A).

6. Infringement, revocation and adjudication

• A suit for infringement lies in a court not below a District Court, and if the defendant counterclaims for revocation it is transferred to the High Court (section 104). Under the Commercial Courts Act, 2015 patent suits are commercial disputes. In process patent suits the burden of proof can shift to the defendant (section 104A).
• Reliefs include injunction, damages or an account of profits, and seizure or destruction of infringing goods (section 108). An innocent infringer may escape damages (section 111).
• Revocation on the grounds in section 64 may be sought by a counterclaim or by a petition.
• The Intellectual Property Appellate Board, which heard appeals from the Controller and revocation petitions from 2007, was abolished by the Tribunals Reforms Act, 2021. Those powers now lie with the High Courts; the Delhi High Court has had an Intellectual Property Division since 2021 and the Madras High Court has one as well.

7. Offences

The Act punishes contravention of secrecy directions and foreign filing restrictions (section 118), falsification of entries in the register (section 119), unauthorised claims of patent rights (section 120) and false representation that a patent has been applied for. Infringement itself is a civil wrong only, unlike trade mark and copyright piracy.

How this is examined

Answer in five groups: history and policy; patentability with section 3(d) and Novartis; procedure with the two oppositions; rights and term; public interest safeguards with section 83, compulsory licensing and Bayer v. Natco. End with adjudication after the IPAB’s abolition. One paragraph on the TRIPS-compatibility debate turns a good answer into an LL.M. answer.