Powers of the Controller under the Patents Act, 1970

1. The office

The Controller General of Patents, Designs and Trade Marks, appointed by the Central Government under the Trade Marks Act, 1999, is the Controller for the purposes of the Patents Act (s.73(1)). The Central Government may appoint Joint, Deputy and Assistant Controllers and examiners, who exercise the Controller's powers as he authorises (s.73(2)–(3)). The head office is the Patent Office at Kolkata, with branches at Delhi, Mumbai and Chennai (s.74). The Controller works under the Department for Promotion of Industry and Internal Trade.

2. General powers

1. Powers of a civil court (s.77). In any proceeding before him the Controller has the powers of a civil court under the Code of Civil Procedure, 1908 for: (a) summoning and enforcing attendance of any person and examining him on oath; (b) requiring discovery and production of documents; (c) receiving evidence on affidavits; (d) issuing commissions for examination of witnesses or documents; (e) awarding costs; (f) reviewing his own decision on application made within the prescribed time and manner; (g) setting aside an order passed ex parte; and (h) any other matter prescribed. An order for costs is executable as a decree of a civil court.
2. Correction of clerical errors (s.78). The Controller may correct any clerical error in a patent, specification, application, document or the register, on request or on his own motion after notice.
3. Evidence (s.79). Evidence before the Controller is given by affidavit unless he directs oral evidence or allows cross-examination.
4. Hearing before adverse discretion (s.80). Without prejudice to anything requiring him to hear any party, the Controller shall not exercise any discretionary power adversely to an applicant or a party without giving him an opportunity of being heard, if the hearing is asked for within the prescribed time.
5. Power to call for information (s.146). The Controller may require a patentee or licensee to furnish information on the extent to which the patented invention has been commercially worked in India; the periodic statement of working (Form 27) is filed under this section, once in every three financial years after the 2024 Rules.
6. Extension of time (Rule 138 of the Patents Rules, 2003). The Controller may extend certain periods on request.

3. Powers during examination and before grant

• Refer for examination on a request (ss.11B, 12) and consider the examiner's report (s.14).
• Refuse or require amendment where the application or specification does not comply with the Act (s.15), including refusal where the invention is not patentable.
• Divisional applications (s.16): allow a further application for an invention disclosed in the parent, to be dated as of the parent.
• Post-dating an application (s.17).
• Anticipation (s.18): require amendment or reference to an earlier specification where the invention is anticipated or prior claimed, and refuse the application if not met.
• Potential infringement (s.19): direct that a reference to another patent be inserted in the specification where working the invention would infringe it.
• Substitution of applicants (s.20) on assignment or agreement.
• Treat applications as abandoned when not put in order for grant within the prescribed time (s.21).
• Decide pre-grant oppositions (s.25(1)) and refuse the application or require amendment.
• Grant the patent under seal (s.43).

4. Protective powers

• Secrecy directions (s.35): where an invention appears relevant to defence, the Controller may prohibit or restrict publication and communication of information, and refer it to the Central Government, which reviews the direction periodically.
• Foreign filing permission (s.39): residents may not apply abroad without written permission unless an Indian application was filed at least six weeks earlier and no secrecy direction was made; the Controller grants or refuses permission, with the consent of the Central Government for defence or atomic energy inventions.

5. Powers after grant

• Post-grant opposition (s.25(2)–(4)): constitute an Opposition Board, consider its recommendation, hear the parties, and maintain, amend or revoke the patent.
• Amendment of the specification (s.57), subject to s.59; publication and opposition of the proposed amendment.
• Restoration of lapsed patents (ss.60–62), with protection for persons who began to use the invention after the lapse.
• Surrender (s.63): accept an offer to surrender, after advertisement and hearing any opponent, and revoke the patent.
• Register (ss.67–72): maintain the register of patents; register assignments, licences and other interests (s.69); the register is prima facie evidence (s.72). Rectification of the register is for the High Court (s.71).
• Patents of addition (ss.54–56).

6. Licensing and revocation powers

• Compulsory licences (s.84): grant a licence on the grounds that 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; settle terms and royalty (s.90). The Controller granted the first such licence to Natco for Bayer's sorafenib in 2012.
• Licences on notification (s.92) of national emergency, extreme urgency or non-commercial public use, and for export (s.92A).
• Revocation for non-working (s.85): revoke a patent on application by the Central Government or any person interested where two years have passed since the first compulsory licence and the invention is still not worked or available.
• Terminate a compulsory licence when circumstances cease (s.94).
• Revocation on directions relating to atomic energy (s.65), on directions of the Central Government.
• Endorsement of patents with “licences of right” was a power under the original Act, abolished in 2002.

7. Character of the office and controls

The Controller exercises quasi-judicial functions and must act fairly: give notice and a hearing (s.80), consider the evidence, and give reasons. Orders of the Controller under the listed sections are appealable to the High Court (s.117A), which since the Tribunals Reforms Act, 2021 has taken over the IPAB's appellate jurisdiction; the Delhi and Madras High Courts hear these in their IP Divisions. Writ jurisdiction under Article 226 remains for jurisdictional errors and breach of natural justice. Courts have repeatedly set aside cryptic refusal orders and remanded them, insisting that the Controller deal with the applicant's arguments on each objection.

8. Appeals and the Appellate Board

The syllabus lists “appeals and appellate board” separately, and the history explains the present law.

• 1970–2007. Appeals from the Controller lay to the High Court. Revocation petitions were heard by the High Court.
• The Intellectual Property Appellate Board. The Trade Marks Act, 1999 created the IPAB, which began work at Chennai in 2003 for trade marks. The Patents (Amendment) Act, 2002 extended its jurisdiction to patents (Chapter XIX, ss.116–117H), effective from 2007. It sat in benches of a judicial member and a technical member (Technical Member (Patents)), heard appeals from the Controller under s.117A and revocation petitions under s.64, and had exclusive jurisdiction, so civil courts could not hear those matters (s.117C). Appeals lay within three months of the order (s.117A(4)).
• Criticism. The IPAB suffered long vacancies in the posts of chairperson and technical members, which left it unable to sit for long periods, and pendency grew. The Supreme Court's tribunal cases, ending with Madras Bar Association v. Union of India, 2021 INSC 332, repeatedly criticised government control over appointments and tenure of tribunal members.
• Abolition. The Tribunals Reforms Act, 2021 abolished the IPAB with effect from 4 April 2021 and substituted the High Court for the Appellate Board throughout the Patents Act. Appeals under s.117A, revocation petitions under s.64 and rectification of the register under s.71 now go to the High Court, and pending matters were transferred to it.
• IP Divisions. The Delhi High Court set up an Intellectual Property Division in 2021 and framed the IPD Rules, 2022; the Madras High Court followed. Appeals are heard by a single judge, with expert assistance where needed, and a revocation petition can be heard with an infringement suit on the same patent.

Orders appealable under s.117A(2) include refusal of an application (s.15), decisions in opposition (s.25(4)), orders on amendment (s.57), restoration (s.60), compulsory licences (s.84) and revocation for non-working (s.85). Administrative directions that are not listed can be challenged only by writ.

How this is examined

Q5 of 2024. Write the office (s.73), then the five groups with section numbers. Section 77 must be listed in full (eight powers). End with s.80, appeal under s.117A and the critique. A table of “power – section” is an efficient way to show coverage.