You are currently viewing Rights and Obligations of Patentee in India

Rights and Obligations of Patentee in India


Last Updated on May 30, 2024 by Kanakkupillai

Patent originates from the Latin expression ‘Patere’, which signifies ‘To expose’. The Indian Patents Act of 1970 represents the Patent system in India. A patent is a type of Protected innovation that awards select privileges for an invention to its innovator. Section 2(1)(m) of the Indian Patents Act, 1970 characterizes a Patent as: “patent” signifies a patent for any invention conceded under this Act. It is a legal right for an invention conceded to the Patentee for a restricted Patentee by the public authority in return for the complete story of his Creation for barring others from making, utilizing, selling, or importing the protected product or process.

Essentials for Grant of a Patent

  • Novelty: Creation should be new or novel; it should not be known to the general population.
  • Non-Obviousness: Any Creation made by an individual should be non-obvious to that individual.
  • Capable of Industrial Application: A creation to be protected should be capable of being made or utilized in an industry.
  • Usefulness: An innovation should be helpful to society for it to be licensed. Creations that are not useful cannot be protected.
  • Shouldn’t Fall Inside the Extent of Non-Patentable Creations: For a creation to be licensed, it shouldn’t be included in the provisions of Sections 3 and 4 of the Indian Patents Act, 1970, which records different non-patentable Creations.

Who is a Patentee?

  • The individual to whom a patent is conceded is a patentee. The Patentee has a lawful interest in the Patent. The Patent is his property. The Patentee is qualified to manage his property similarly to the proprietor of some other movable property. This gives the Patentee the selective Right to keep others from making, utilizing, practising or selling the licensed item and prevents others from using or practising the process or strategy.
  • Section 48 of the Indian Patents Act 1970 gives notice to the rights of the Patentee. The public authority allows these selective rights to motivate creators to make new and helpful creations.
  • The Rights conceded to a patentee are conditional; they are likely to conditions forced under Section 47 of the Indian Patent Act, 1970.

Rights of a Patentee

The Rights presented to a Patentee are not absolute. The following are the rights of a Patentee:

  1. Right to exploit the patent
  2. Right to license
  3. Right to assign
  4. Right to surrender the patent
  5. Right to sue for infringement occurs when the Patentee’s rights are violated.
  6. Right to be issued a duplicate patent
  7. Right to make a convention application
  8. Right to make a patent addition

1. Right to exploit the patent:

A patentee has the selective Right to make, use, exercise, sell, or disseminate the licensed item or to utilize or practice the strategy or interaction if the Patent is for a process. The Patentee, his representatives, or licensees can practise the Right. These rights given to a patentee are exercisable only during the patent term. The term of the Patent will be extended from the date of documenting the patent application. The Patent will be in force just as long as the recommended renewal charges are paid.

2. Right to license:

Section 70 of the Indian Patent Act of 1970 provides a grantee or patent owner’s Right to give licenses. The Patentee can allow licenses to others to use the protected Creation in return for consideration. Where there are co-proprietors of the protected item, every one of the patent proprietors should collectively give the permit to the outsider. The permit should be recorded as a hard copy and documented (Registered) with the Patent Regulator.

3. Right to assign:

Section 70 of the Indian Patent Act of 1970 gives a patentee the Right to assign his Patent to others entirely or to some extent. The Task should be written as a hard copy and documented (Registered) with the patent Regulator.

4. Right to surrender the patent:

Section 63 of the Indian Patent Act of 1970 permits a patentee to surrender a patent. There is no commitment to keep up with the monopoly right on the Patent for 20 years. The Patentee might surrender the Patent at any time they want. The Patentee needs to make an application of surrender before the Regulator. The Regulator then distributes the application of surrender in the official gazette to empower interested people to go against something very similar. Suppose any third parties have any interest in the Patent. In that case, they should notify the Regulator opposing the surrender. Whenever satisfied with adequate reason for opposition, the Regulator calls both parties for a conference and chooses something similar.

5. Right to sue for infringement occurs when the patentee’s rights are violated:

It might comprise the violation of any right to make, use, sell, or distribute the development. The Patentee, his Trustee, Licensee or Agent has the Right to document a civil suit for infringement in a court not lower than the District Court. Suppose it is established that the defendant has violated the Patentee’s Rights. In that case, the court will either concede an injunction or grant damages for something similar.

6. Right to be issued a duplicate patent:

Section 154 of the Indian Patent Act of 1970 specifies the Loss or Destruction of Patents. The Patentee has a right to apply for a copy of the Patent if it is lost or obliterated or if its non-production is explained satisfactorily to the Regulator.

7. Right to make a convention application:

Each Patentee in India has the right to make a conventional Application for the security of Patents in conventional Countries. This Right depends on the rule of reciprocity and public treatment of international law.

8. Right to make a patent addition:

Sections 54 to 56 of the Indian Patent Act 1970 provide the Patent of Addition. This provision provides for changes in the current Creation. In this case, the patent holder can modify the creation after the acknowledgement notice emerges. The owner is given similar freedoms as given in the past Patent just when the notice is presented.

How are the Rights of a Patentee Enforced?

Enforcement emerges only after the rights have been given to an individual and there has been an encroachment of these rights conferred.

A Patentee can Enforce his rights by:

  • A Suit for Encroachment of Patent
  • An activity for the specific performance of an agreement
  • An activity for recovery of sovereignties

Obligations of a Patentee

As the owner of a Patent, a Patentee has specific commitments to keep up with and implement their rights in the Patent. These commitments include:

  1. Duty to pay legal and maintenance fees
  2. Duty to disclose the patent
  3. Duty to request for examination
  4. Duty to work on the invention
  5. Duty to respond to objections
  6. Duty to not abuse the patent

1. Duty to pay legal and maintenance fees:

The Patentee should pay all the essential legal charges for the registration process. Likewise, to keep a Patent in force, the Patentee should pay maintenance charges to the patent office at determined intervals over the Patent’s lifetime. The Patent will be revoked if the Patentee fails to pay the maintenance expenses.

2. Duty to disclose the Patent:

Patents are conceded in return for the public disclosure of the Creation. The Patentee is committed to entirely and accurately revealing the Invention in the patent application and refreshing the disclosure as essential during the patent’s arraignment.

3. Duty to request for examination:

As per Section 11B of the Indian Patents Act, 1970, No application for a patent will be examined except if the candidate or some other interested individual asks for Examination within the prescribed period. The commitment is upon the Patentee to ask the Patent Regulator about the advancement of the Patent.

4. Duty to work on the invention:

The Patentee should be active in his innovation, believing that it will keep others from making or utilizing the Creation. The Patentee must deal with the Creation in India, that is, by effectively commercializing the Invention by manufacturing the product or by authorizing the Creation to other people. Reasonable necessities of people in general as for the patented Creation should be fulfilled. Likewise, these licensed products should be accessible to the public at sensible costs.

5. Duty to respond to objections:

The First Examination Report (FER) prepared by the Patent Examiners might contain a few objections. The Patentee must answer such objections. The Patentee’s application will be automatically dismissed unless the explanations are looked at within one year from the date of issue of the First Examination Report.

6. Duty to not abuse the patent:

The Patentee can’t utilize their Patent to violate any regulations or guidelines, harm the public interest, or unreasonably rule a market. The Patentee should not offer false or misleading statements about the development in any advertising, marketing, or other advertisement materials.

Limitations of Patent Rights

Patent rights are not absolute; consequently, they depend on specific limitations. The Indian Patents Act of 1970 provides for particular limitations on exercising such rights. The following are the Limitations:

  1. Use of patent by the government
  2. Compulsory licenses
  3. Utilization of invention for protection purposes
  4. Re-established patents

1. Use of patent by government:

Section 100 of the Indian Patents Act, 1970, provides that whenever the application for a patent has been documented at the patent office or the Patent has been conceded, the central Government might involve the Creation for government purposes. The Patent might be utilized or even procured for its utilization. The government may also acquire a patent for the instalment of reasonable payments. The Right to make, use, practice and distribute a creation for the Government also includes the Right to sell.

2. Compulsory licenses:

Section 84 of the Indian Patent Act pertains to the award of Compulsory Licenses. This section specifies that any time after the lapse of three years (3 years) from the date of award of the Patent, any interested individual might apply to the Regulator for the prize of compulsory Licenses. Compulsory Licenses will be allowed solely after they satisfy the following circumstances:

(a) That the necessities of the general public for the patented Invention have not been fulfilled,

(b) That the patented Creation isn’t accessible to the general public at a reasonable cost,

(c) The patented innovation has yet to work in India.

3. Utilization of invention for protection purposes:

An application made before the Regulator for a patent has a place with a class told by the Central Government as significant for protection reasons only; the Regulator might provide guidance prohibiting or limiting the distribution of such data of the Creation. The Invention is exposed to Secrecy Provisions. All orders passed by the Regulator or central Government concerning the mystery will be dealt with in the final, and the equivalent can’t be tested in any court in India.

4. Re-established patents:

For a patent to remain in force, the Patentee should pay reestablishment charges to the patent office. The Patent fails because it must pay the renewal expenses within a predetermined period. The provisions under this Act provide for the rebuilding of Lapsed Patents. Sections 60 to 63 of the Indian Patents Act 1970 manage the reconstruction of lapsed patents. Where a patent has lapsed and, in this way, has been re-established, certain restrictions are forced on the Patentee’s rights. Where a patent is lapsed by, and it is in this way re-established, no suit for encroachment can be recorded after the date on which the Patent stopped having an impact.

Related Services

G.Durghasree B.A.B.L (Hons)

G Durghasree B.A.B.L (Hons) is a registered trademark attorney with extensive experience as an Advocate for a period of 8 years. She possesses expertise in trademark law, including trademark filing and trademark hearings. Additionally, she is skilled in contract drafting and reviewing, providing legal advice and opinions, particularly in the areas of Company Law, Insolvency and Bankruptcy Code (IBC), and Goods and Service Tax Law (GST). Her experience encompasses both litigation and non-litigation aspects of these laws.