Rights and Obligations of the Patentee

1. The nature of the right

A patent is a negative right: it allows the patentee to exclude others, not to use the invention himself. A patentee of a drug still needs regulatory approval, and a patentee of an improvement may infringe an earlier patent. Section 48 is expressly “subject to the other provisions contained in this Act and the conditions specified in section 47”.

2. Exclusive rights (s.48)

• Product patent: the exclusive right to prevent third parties who do not have his consent from the act of making, using, offering for sale, selling or importing that product for those purposes in India.
• Process patent: the exclusive right to prevent third parties from the act of using that process, and from using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

These track TRIPS Article 28. Protection of the direct product of a process, together with the reversed burden of proof in s.104A, makes process patents effective against imports.

The rights begin on publication in a limited sense: from publication until grant the applicant has the same privileges and rights as if a patent had been granted, but he cannot sue for infringement until the patent is granted (s.11A(7)). Damages may then be claimed back to the date of publication.

3. Associated rights

1. Assign the patent wholly or partly, or mortgage it, by a written document embodying all the terms (s.68), to be registered (s.69).
2. License exclusively or non-exclusively; an exclusive licensee can sue (s.109).
3. Surrender the patent (s.63).
4. Sue for infringement (s.104) and seek injunction, damages or account of profits (s.108); seek relief against groundless threats if threatened (s.106 protects others).
5. Amend the specification (s.57) and obtain patents of addition for improvements (s.54).
6. Co-owners are each entitled to an equal undivided share and may use the invention for their own benefit without accounting to the others, but cannot license or assign a share without the others' consent (s.50).
7. Term: twenty years from the date of filing (s.53), subject to renewal fees.

4. Limits on the rights

• Section 47 conditions: the Government may import, make or use the patented invention merely for its own use; any person may make or use the invention for the purpose of experiment or research including imparting instruction to pupils; and the Government may import a patented medicine or drug for its own use or for distribution in government dispensaries and hospitals.
• Bolar exception (s.107A(a)): making, constructing, using, selling or importing a patented invention solely for uses reasonably related to development and submission of information required under any law in India or in another country regulating manufacture, use, sale or import of any product is not infringement. A Division Bench of the Delhi High Court in Bayer Corporation v. Union of India (2019) held that export for regulatory purposes abroad is covered.
• Parallel imports (s.107A(b)): importation of patented products from a person who is duly authorised under the law to produce and sell or distribute them is not infringement. This reflects international exhaustion, which TRIPS Article 6 and the Doha Declaration leave to members. The Delhi High Court applied international exhaustion to trade marks in Kapil Wadhwa v. Samsung (Division Bench, 2012); for patents the text of s.107A(b) has been read in the same direction.
• Foreign vessels and aircraft temporarily in India (s.49).
• Government use (s.100) and acquisition (s.102), on terms and compensation.
• Compulsory licences (ss.84, 92, 92A) and revocation (ss.64, 66, 85).
• Innocent infringement (s.111): no damages or account against a defendant who proves that on the date of infringement he was not aware and had no reasonable grounds for believing the patent existed.

5. Obligations

1. Full disclosure of the invention and the best method (s.10), and of foreign applications (s.8). Breach is a ground of revocation.
2. Working in India. Section 83 sets the principle that patents are granted to be worked in India on a commercial scale and not merely to give an import monopoly; failure exposes the patent to a compulsory licence after three years (s.84(1)(c)) and revocation after two more years (s.85).
3. Statement of working (s.146(2), Form 27). Every patentee and licensee must file a statement of the extent of commercial working in India. The 2020 revision of Form 27 followed a public interest writ petition in the Delhi High Court (Shamnad Basheer v. Union of India) which pointed to widespread non-filing and uninformative statements. The Patents (Amendment) Rules, 2024 changed the period to once in every three financial years. Failure to furnish, or furnishing false information, is an offence (s.122).
4. Pay renewal fees annually from the third year (s.53, s.142); non-payment causes the patent to cease, subject to a six-month grace period and restoration (s.60).
5. Register assignments, licences and mortgages (s.69); unregistered documents are not admitted as evidence of title unless the court allows (s.69(5)).
6. Avoid restrictive conditions in licences and contracts (s.140): tie-ins, restrictions on using competitors' products, exclusive grant-back, no-challenge clauses and coercive package licensing are void; their presence is also a defence to infringement (s.140(3)).
7. Not to mark falsely. Falsely representing an article as patented is an offence (s.120).
8. Comply with government use and secrecy directions (ss.35, 100).

How this is examined

As a short note (2024): s.48 in full, four associated rights, four limits, and the obligations in a numbered list. As an essay, add the working debate and the Form 27 history. Read with the notes on compulsory licensing and infringement.