Patent Act 1970 with Supreme Court & High Court’s leading cases, Comparison with India, US, UK & EU
Patent Act 1970 with Supreme Court & High Court’s Leading Cases, Comparison with India, US, UK & EU
Blog by:
Jayprakash B. Somani
Advocate, Supreme Court of India & IP
? Cell: PA 9322188701
? www.jayprakashsomani.com
? www.supremecourtlawfirm.com
Part A
The Patents Act, 1970 – Comprehensive Analysis
Introduction
The Patents Act, 1970 is the principal legislation governing patent protection in India. It provides a legal framework for granting exclusive rights over inventions while balancing innovation incentives with public interest.
The Act has been amended multiple times, notably in 1999, 2002, and 2005, to align with the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) under the World Trade Organization (WTO).
Structure of the Act
Total Chapters: 20
Total Sections: 163
Schedules: No formal schedules (rules are contained in the Patent Rules, 2003)
Chapter-wise Overview (Key Themes)
Chapter I: Preliminary (Definitions – Section 2)
Chapter II: Non-patentable inventions (Section 3)
Chapters III–IV: Application, publication & examination
Chapter V: Opposition proceedings
Chapter VIII: Grant & rights of patentees
Chapter XII: Revocation
Chapter XVI: Compulsory licensing
Chapter XVIII: Infringement suits
Chapter XXIII: Miscellaneous provisions
Important Sections of the Act
(A) Patentability & Definitions
Section 2(1)(j) – Definition of invention
Section 2(1)(ja) – Inventive step
Section 3 – Non-patentable inventions (e.g., software per se, abstract ideas)
(B) Application & Specification
Section 6 – Persons entitled to apply
Section 7 – Form of application
Section 10 – Contents of specification
Specification must include:
Full description of invention
Best method of performing the invention
Claims defining scope of protection
(C) Publication & Examination
Section 11A – Publication of application
Section 11B – Request for examination
Sections 12–15 – Examination and refusal/amendment
(D) Opposition
Section 25 – Pre-grant and post-grant opposition
(E) Grant & Rights
Section 43 – Grant of patent
Section 48 – Rights of patentees
Section 53 – Term of patent (20 years)
(F) Compulsory Licensing
Section 84 – Compulsory licence
Section 92A – Export of patented drugs
(G) Assignment & Licensing
Section 68 – Assignment must be in writing
Section 69 – Registration of assignments
(H) Revocation
Section 64 – Revocation of patent
Section 66 – Revocation in public interest
(I) Infringement & Remedies
Section 104 – Jurisdiction
Section 107 – Defences
Section 108 – Reliefs (injunction, damages)
Rights of Patent Holder
1. Exclusive Right to Exploit the Invention
Under Section 48, the patentee has the exclusive right to:
Make
Use
Sell
Import
the patented product or process.
This prevents unauthorized commercial exploitation.
2. Right to License or Assign
Under Sections 68–69, patents can be:
Licensed
Assigned (fully or partially)
These rights allow monetization of innovation.
3. Right to Sue for Infringement
Under Sections 104–108, the patentee can:
File civil suit
Seek injunction
Claim damages or account of profits
Enforcement is a key component of patent protection.
4. Other Rights
Right to surrender patent (Section 63)
Right to amend (Section 57)
Right to exploit commercially
Leading Supreme Court Judgments
(A) Novartis AG v. Union of India
Citation: (2013) 6 SCC 1
Principle:
Section 3(d) restricts “evergreening” of pharmaceutical patents
Reinforced access to affordable medicines
(B) Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries
Citation: (1979) 2 SCC 511
Principle:
Defined inventive step and obviousness test
(C) F. Hoffmann-La Roche Ltd. v. Cipla Ltd.
(Primarily Delhi High Court, principles widely followed)
Principle:
Clarified patent infringement standards in the pharmaceutical sector
(D) Enercon (India) Ltd. v. Aloys Wobben
Citation: (2014) 5 SCC 1
Principle:
Clarified jurisdiction and revocation versus infringement proceedings
Impact on Trade and Industry in India
1. Boost to Innovation & R&D
Encourages investment in:
Pharmaceuticals
Biotechnology
Technology sector
2. Growth of Pharmaceutical Industry
India became a global generic medicine hub
Balanced patent protection with affordability through Section 3(d)
3. Attracts Foreign Investment
A strong IP regime increases foreign direct investment (FDI) inflows.
4. Technology Transfer & Licensing
Enables commercialization through:
Licensing agreements
Joint ventures
5. Public Interest Protection
Compulsory licensing ensures:
Affordable medicines
Wider public access
6. Startup Ecosystem Growth
Patent protection encourages:
Innovation-driven startups
Deep-tech industries
Procedure for Patent Registration in India
Step 1: Patent Search
Conduct prior art search
Check novelty and inventiveness
Step 2: Filing of Application
File under Section 7.
Types of applications:
Provisional application
Complete application
Step 3: Filing Specification
Under Section 10, the application must include:
Description
Claims
Drawings (if required)
Step 4: Publication
Under Section 11A:
Published after 18 months
Early publication request can also be filed
Step 5: Request for Examination
Under Section 11B:
Must be filed within the prescribed time
Step 6: Examination & Objections
The examiner reviews the application under Sections 12–15.
The applicant must respond to objections raised in the First Examination Report (FER).
Step 7: Opposition Proceedings
Under Section 25:
Pre-grant opposition
Post-grant opposition
Step 8: Grant of Patent
Under Section 43:
Patent is granted and published in the Patent Journal
Step 9: Renewal
Annual renewal fees must be paid to maintain the patent.
Timeline for Patent Registration
The patent registration process in India generally takes approximately 2–5 years, depending upon:
Complexity of invention
Objections raised
Opposition proceedings
Examination backlog
Key Principles of Patent Law in India
First-to-file system
Territorial rights (valid only within India)
Limited monopoly for 20 years
Mandatory disclosure requirement (quid pro quo principle)
Conclusion
The Patents Act, 1970 plays a pivotal role in:
Promoting innovation
Protecting inventors’ rights
Balancing public interest
The legislation has significantly contributed to transforming India into a global hub for pharmaceuticals, technology, and innovation-driven industries while ensuring that patent rights do not hinder access to essential goods and medicines.
