Rights of the patentee, transfer, compulsory licences, government use, surrender and revocation

1. Rights of the patentee

• Exclusive right to prevent (section 48). For a product patent, to prevent third parties without consent from making, using, offering for sale, selling or importing the product in India. For a process patent, to prevent them from using the process and from using, offering for sale, selling or importing the product obtained directly by it. The right is “subject to the other provisions of the Act and the conditions specified in section 47”.
• Right to assign and license (sections 68 to 70). The patentee may assign the patent or a share in it, mortgage it or grant licences. An assignment, mortgage or licence is valid only if it is in writing, embodies all its terms in a document and is duly executed (section 68). The person entitled must apply to register his title (section 69); until he does, the document is not admitted as evidence of title except by the Controller or court’s leave.
• Right to sue for infringement in a District Court or High Court (section 104), and the exclusive licensee’s parallel right (section 109).
• Co-owners (section 50). Each co-owner is entitled to an equal undivided share and may use the invention for his own benefit without accounting to the others, but cannot grant a licence or assign a share without their consent.
• Right to surrender (section 63) and to amend the specification (section 57).
• Term. Twenty years from filing (section 53), provided renewal fees are paid; a lapsed patent may be restored on application within eighteen months (sections 60 to 62).

2. Limitations built into the grant

• Government use (section 47(1), (2) and (4)). The Government may import or make a patented article, or use a patented process, merely for its own use, and may import a patented medicine for distribution in government and notified hospitals.
• Experiment, research and teaching (section 47(3)). Any person may make or use the invention merely for experiment or research, including imparting instructions to pupils.
• Foreign vessels, aircraft and vehicles (section 49) temporarily or accidentally in India.
• Bolar exception (section 107A(a)). Making, using, selling or importing a patented invention solely for uses reasonably related to developing and submitting information required by a regulatory law, in India or abroad. A generic manufacturer can therefore prepare its drug approval before the patent expires.
• Parallel import (section 107A(b)). Importing patented products from a person duly authorised under the law to produce and sell or distribute them is not infringement.
• Restrictive conditions void (section 140). Clauses in a licence that force the licensee to buy unpatented goods from the patentee, or forbid him to challenge validity, are void.
• Working statements (section 146). The patentee must furnish statements of the extent of commercial working in India in the prescribed manner (since 2024, once every three financial years). Failure attracts a penalty under section 122.

3. Compulsory licences: sections 82 to 94

A compulsory licence is a licence granted by the Controller to a third party, against the patentee’s will, on payment of royalty. Article 5A of the Paris Convention and Article 31 of TRIPS permit it.

Section 84. At any time after three years from the date of grant, any person interested may apply on any of three grounds:

• (a) the reasonable requirements of the public with respect to the invention have not been satisfied;
• (b) the invention is not available to the public at a reasonably affordable price; or
• (c) the invention is not worked in the territory of India.

Section 84(7) explains when reasonable requirements are deemed not satisfied (for example, refusal to license on reasonable terms so that an Indian industry is prejudiced, or demand not met to an adequate extent). The Controller considers the nature of the invention, the time since grant, the patentee’s efforts to work it, the applicant’s ability to work it, and whether he first tried to obtain a voluntary licence on reasonable terms (section 84(6)). Terms are fixed under section 90; a compulsory licence is non-exclusive and mainly for supply of the Indian market.

The first and best-known grant is Natco Pharma Ltd. v. Bayer Corporation, decided by the Controller of Patents on 9 March 2012. Bayer’s patented kidney and liver cancer drug sorafenib tosylate (Nexavar) cost about ₹2.8 lakh for a month’s therapy and reached only a small fraction of patients. The Controller found all three grounds made out and granted Natco a licence at a royalty of 6 per cent of net sales; Natco undertook to sell at ₹8,880 a month. The order was upheld by the IPAB (2013) and the Bombay High Court (2014).

• Revocation for non-working (section 85). Two years after the first compulsory licence, the Central Government or any person interested may apply for revocation on the ground that the invention is still not worked or not available at a reasonably affordable price.
• Notification by Government (section 92). In a national emergency, in circumstances of extreme urgency or for public non-commercial use, the Central Government may notify that compulsory licences should be granted; the three-year wait does not apply.
• Export to countries without capacity (section 92A). A compulsory licence may be granted to manufacture and export a patented pharmaceutical product to a country with insufficient manufacturing capacity, to address public health problems.

4. Use and acquisition by the Central Government: sections 99 to 103

Under section 100 the Central Government, or any person authorised by it in writing, may use an invention for the purposes of Government. Use before grant is free; after grant it is on terms agreed or, failing agreement, fixed by the High Court (section 103). Section 102 allows the Central Government to acquire an invention or patent for a public purpose on payment of compensation.

5. Surrender and revocation

Surrender (section 63). The patentee may at any time offer to surrender by notice to the Controller. The offer is published and notified to persons with an interest on the register; anyone interested may oppose. If satisfied, the Controller accepts and revokes the patent.

Revocation by the High Court (section 64). On the petition of any person interested or the Central Government, or on a counter-claim in an infringement suit, the High Court may revoke a patent on any of the grounds in section 64(1), which include: prior claim; grant to a person not entitled; wrongful obtaining; not an invention; not new; obvious; not useful; insufficient description; claims not clearly defined; false suggestion; not patentable; secret use before the priority date; non-disclosure of foreign applications; breach of secrecy directions; and non-disclosure or wrong mention of the source of biological material or anticipation by traditional knowledge.

Other routes. The Controller may revoke for non-working (section 85) and after post-grant opposition (section 25(4)). The Central Government may revoke for reasons of atomic energy (section 65) or, after hearing the patentee, by gazette declaration that the patent or the mode of its exercise is mischievous to the State or generally prejudicial to the public (section 66).

How this is examined

January 2026: “Discuss the various rights available to a patentee. What are the limitations imposed on patent rights?” February 2025: “Define Patent. What are the rights of patentee?” August 2024: a short note on “compulsory licence of patent”. For the essay, sections 1 and 2 with a paragraph each on sections 84 and 92. For the short note, section 3 alone with Natco v. Bayer; the three grounds of section 84(1) and the three-year rule are what the examiner looks for.