Rights and Obligations of Patentee

The rights of a patentee refer to the exclusive privileges granted by a patent, allowing the patent holder to control the use, making and selling of the patented invention. These rights of patentee, outlined in the Indian Patents Act of 1970, empower patentees to safeguard their innovations.

However, these rights come with obligations. These obligations of patentee are essential for maintaining the balance between protecting intellectual property and contributing to the public good through innovation and disclosure.

What is a Patent?

A patent is a special right granted to inventors for their creations. The term comes from the Latin word ‘Patere,’ meaning ‘To lay open.’ In India, the rules for patents are outlined in the Indian Patents Act of 1970. This legal document provides exclusive rights to the inventor for a specific period. In return, the inventor must fully disclose their invention. This exclusivity means others cannot make, use, sell or import the patented product or process.

Essentials for Getting a Patent

• Novelty: The invention must be new and not known to the public.
• Non-Obviousness: The invention should not be obvious to the person making it.
• Industrial Application: The invention must be usable in an industry.
• Usefulness: The invention should be beneficial to society; otherwise, it cannot be patented.
• Non-Patentable Inventions: The invention should not fall under the categories listed in Sections 3 & 4 of the Indian Patents Act, 1970, which cover non-patentable inventions.

Who Is a Patentee?

The person who receives a patent is called a patentee. The patentee has legal ownership of the patent, treating it like any other property. This ownership grants exclusive rights, preventing others from making, using or selling the patented product or using the patented process.

Section 48 of the Indian Patents Act, 1970, outlines the rights of the patentee. These exclusive rights are given by the government to encourage inventors to create new and useful things.

However, it’s important to note that these rights are conditional and subject to certain conditions outlined in Section 47 of the Indian Patents Act, 1970.

Rights of a Patentee

The rights of patentee are not absolute; they come with certain conditions. Here are the key rights of a patentee:

Exclusive Right

The exclusive right is detailed in Section 48 of the Patent Act of 1970. Whether it’s a method or a product, this section grants exclusive rights. If the patent covers a product, the patentee has the exclusive right to prevent others from manufacturing, selling, importing or using the patented product without permission. If it’s a method, the patentee can prevent others from using, selling or importing products made using that method.

Right to Exploit the Patent

A patentee has the exclusive right to make, use, exercise, sell or distribute the patented product or use the patented method. This right can be exercised by the patentee, their agents or licensees. However, these rights are only valid during the patent’s term, which is 20 years from the date of filing the patent application. The patent remains in force as long as the required renewal fees are paid.

Right to License

Section 70 of the Indian Patents Act, 1970, provides the right of patentee to grant licenses to others for using the patented invention in exchange for consideration. If there are multiple owners of the patent, all owners must collectively grant the license to a third party. The license must be in writing and documented (registered) with the Controller of Patent.

Right to Assign

Section 69(5) of the Patent Act of 1970 provides the right of patentee to assign or give licenses to third parties for producing and distributing the patented goods. In cases where multiple owners share the patent, all owners must agree to grant the license collectively. The license is only considered valid after the administrator has properly authorised the request. Therefore, for the assignment or license to be legal and valid, it must be in writing and submitted to the Patent Authority.

Right to Surrender the Patent

Under Section 63 of the Indian Patents Act, 1970, there is a right of patentee has the option to surrender their patent. There’s no obligation to maintain the monopoly right for the entire 20-year term. The patentee can submit a surrender application to the Controller, who then publishes it in the official gazette. Interested parties can oppose the surrender and if the Controller finds sufficient grounds, a hearing is conducted to make a decision.

Right to Sue for Infringement

Infringement occurs when the patentee’s rights are violated, involving the unauthorised making, using, selling or distributing of the invention. The patentee, their assignee, licensee or agent has the right to file a civil suit for infringement in a court not lower than the District Court. If the court establishes a violation, it may grant an injunction or award damages.

Right to be Issued a Duplicate Patent

Section 154 of the Indian Patents Act, 1970, addresses the loss or destruction of patents. It is the right of patentee apply for a duplicate patent if the original is lost, destroyed or if its non-production is satisfactorily explained to the Controller.

Right to Make a Convention Application

Every patentee in India has the right to make a Convention Application for patent protection in Convention Countries. This right of patentee is based on the principles of reciprocity and national treatment in international law.

Right to Make a Patent of Addition

Sections 54 to 56 of the Indian Patents Act, 1970, provide right of patentee for a Patent of Addition, allowing modifications to an existing invention. The patent holder is granted rights to the modified invention after the notification of acceptance. These rights are equivalent to those provided in the original patent, but only when the notification is presented.

Obligations of Patentee

As the proprietor of a patent, a patentee carries specific obligations to uphold and enforce their rights in the patent. These obligations of a patentee include:

Duty to Pay Statutory and Maintenance Fees

The patentee is obligated to pay all statutory costs associated with the registration procedure to obtain the patent. Non-payment of these charges, as outlined in Section 142 of the Patent Act, renders the patent ineligible for consideration.

Duty to Disclose the Patent

According to Section 8 of the Patent Act of 1970, the patentee must disclose the innovation to society. This obligation of patentee involves revealing all necessary information about similar innovations documented in distant applications at the time of applying for a patent or within six months of submitting applications.

Duty to Request for Examination

Section 11B of the Indian Patents Act, 1970, places the obligation on the patentee to request examination within the prescribed time. No patent application will be examined unless such a request is made by the applicant or an interested party.

Duty to Work the Invention

The patentee is obligated to actively work on the invention in India, either by manufacturing the product or licensing it to others. This obligation of patentee aims to prevent the patentee from merely holding the invention without contributing to its development. The patented products should be made available to the public at reasonable prices, meeting the reasonable requirements of the public.

Duty to Respond to Objections

If the Patent Examiners raise objections in the First Examination Report (FER), it is the obligation of patentee to respond to these objections. Failure to seek clarifications within one year from the date of the FER can result in automatic rejection of the patentee’s application.

Duty to not Misuse the Patent

The patentee is prohibited from using the patent to violate laws or regulations, harm public interest or unfairly dominate a market. Additionally, false or misleading statements about the invention in advertising, marketing or promotional materials are not permitted. It is the obligation of patentee to ensure the ethical use of their patent.

Limitations of Patent Rights

While patent rights provide exclusive privileges, they are not absolute and are subject to certain limitations outlined in the Indian Patents Act of 1970. The key limitations are:

Use of Patent by Government

As per Section 100 of the Indian Patents Act, 1970, the central government has the authority to use a patented invention for government purposes. This includes using or acquiring the patent for its own use. The government may also acquire a patent by paying appropriate compensation and this right extends to selling the patented invention.

Compulsory Licenses

Section 84 of the Indian Patents Act addresses the grant of compulsory licenses. After three years from the patent’s grant date, any interested person can apply to the controller for a compulsory license.

To obtain the license, certain conditions must be met, including the reasonable requirements of the public not being satisfied, the patented invention not being available at an affordable price and the invention not being worked in the territory of India.

Use of Invention for Defence Purposes

If an application for a patent is classified by the central government as relevant for defense purposes, the controller may issue a direction to prohibit or restrain the publication of information about the invention.

This imposes secrecy provisions on the invention and any orders made by the controller or the central government regarding secrecy are considered final and cannot be challenged in a court of law.

Restored Patents

To maintain the validity of a patent, the patentee is required to pay renewal fees to the patent office within a specified time period. Failure to meet this requirement results in the patent lapsing. However, provisions within the Indian Patents Act of 1970 allow for the restoration of lapsed patents, as outlined in Section 60 to 63.

When a patent has lapsed and is subsequently restored, certain limitations are placed on the rights of the patentee. Notably, if a patent has lapsed and is later restored, the patentee cannot file a suit for infringement after the date on which the patent ceased to have effect. This provision underscores the importance of timely payment of renewal fees to prevent the lapse of a patent and maintain the ability to enforce its rights against infringement.

Conclusion

Being a patentee entails both rights and responsibilities. Patent rights, while not absolute, grant exclusive privileges, including the right to prevent others from using, making or selling the patented invention. However, these rights of patentee are contingent upon fulfilling certain obligations.

The patentee must pay statutory and maintenance fees, disclose the invention to society and actively work on the invention in India. Additionally, obligations of patentee include responding to objections and not misusing the patent. The legal framework also allows for the surrender of a patent and places restrictions on patentee rights, such as compulsory licensing. Balancing these rights and obligations of patentee is crucial for ethical and effective patent management.