Rights of Patentees

Exclusive Rights of Patentee (Section 48)

To make, use, sell, import the patented invention

As per Section 48 of the Indian Patents Act, 1970, a patentee is granted certain exclusive rights to commercially exploit the invention. These rights apply only when the patent has been granted and is in force.

Rights in Case of a Product Patent

In case the patent is granted for a product, the patentee has the exclusive right to:

Make the patented product in India.
Use the product for commercial or research purposes.
Sell or offer for sale the patented product in India.
Import the product into India.

Rights in Case of a Process Patent

In case of a process patent, the patentee gets the right to:

Use the process in India.
Sell, import, or distribute products obtained directly from the process.

The objective is to reward the patentee for their innovation and promote technological advancement by protecting their invention from unauthorized use.

Example 1. A company develops a unique water-purifying filter and gets it patented in India. Can any other company import or manufacture that filter in India without permission?

Answer:

No. As per Section 48 of the Patents Act, only the patentee has the exclusive rights to make, use, sell or import the patented filter in India. Others will need the patentee’s permission, failing which it will be a case of patent infringement.

Right to Assign or Transfer the Patent

Section 68 of the Patents Act allows a patentee to assign (transfer ownership) of the patent to any other person or organization. This enables monetisation of the invention through direct transfer.

Types of Assignments

1. Legal Assignment

Full ownership of the patent is transferred. The assignee becomes the new owner.

2. Equitable Assignment

Benefits of the patent are transferred, but legal title remains with the original patentee.

3. Partial Assignment

Rights are transferred only for a certain time period, region or for certain uses.

Any assignment must:

Be in writing.
Clearly define the terms.
Be registered with the Controller of Patents within the prescribed time.

Example 2. A company in Mumbai assigns its patented medical device to another company in Delhi for North India. What type of assignment is this?

Answer:

This is a case of partial assignment since the rights are geographically limited to North India.

Right to Grant Licenses

The patentee may allow others to use the patent under specific terms by granting a license. The licensee gains rights to use the patent without becoming its owner.

Types of Licenses

1. Exclusive License

Only the licensee can use the patent. Even the patentee is barred from using it.

2. Non-exclusive License

Patentee may license the patent to multiple people simultaneously.

3. Compulsory License

Granted by the government (under Section 84) when:

The reasonable public requirement is not met.
The patented invention is not available at an affordable price.
The invention is not worked in the territory of India.

All licenses should be:

In writing.
Registered with the Controller.

Example 3. A pharma company licenses a patented drug to a hospital chain. Who owns the patent?

Answer:

The pharma company still owns the patent. The hospital chain has a license to use it under agreed conditions.

Right to prevent others from infringing the patent

The patentee can stop others from unauthorized making, using, offering for sale, selling or importing the patented invention. This is the essence of having exclusive rights.

Legal Remedies Available

1. Injunction

Courts may prohibit the infringer from further usage or sale of the invention.

2. Damages

Patentee can claim compensation for the loss suffered due to infringement.

3. Account of Profits

Infringer may be directed to pay the profits earned from the wrongful use of the patent.

Burden of Proof in Process Patents

In case of process patents, the burden of proof may lie with the defendant to prove that their product is made by a different process, as per Section 104A.

Patent infringement cases are heard in District Courts or High Courts. In case of wilful infringement, even criminal penalties can be applied in some cases.

Example 4. A company copies a patented machinery design and begins selling it online. What can the patentee do?

Answer:

The patentee can file an infringement suit in a competent court, seek an injunction to stop sales, and also claim damages or profits earned by the infringing party.

Infringement of Patent

What Constitutes Infringement?

Unauthorized making, using, selling, importing

Patent infringement refers to the unauthorized use of a patented invention by any person or entity during the term of the patent. This includes any activity that violates the exclusive rights granted to the patentee under Section 48 of the Indian Patents Act, 1970.

The following acts amount to infringement when done without the consent of the patentee:

Making the patented product or using the patented process.
Using the patented invention for commercial gain.
Selling or offering to sell the patented product.
Importing the patented product into India.

The infringement may be of a product patent or process patent. For process patents, infringement also includes using a process that is identical or equivalent to the patented process.

Example 1. XYZ Ltd. starts manufacturing and selling a water purifier identical to a patented design owned by ABC Ltd. without authorization.

Answer:

This is a clear case of patent infringement because XYZ Ltd. is making and selling a patented product without the patentee’s consent.

Types of Infringement

Direct Infringement

Direct infringement occurs when a person or entity directly performs any of the exclusive acts granted to a patentee without authorization. It includes making, using, selling, or importing the patented invention.

Example 2. A company manufactures and exports a patented drug without permission.

Answer:

This is a case of direct infringement since the company is manufacturing the patented product without consent.

Indirect Infringement (Contributory Infringement)

Indirect infringement refers to situations where a person facilitates, aids, or contributes to patent infringement. This may include supplying components, instructions, or assistance that help another to infringe a patent.

There are two types of indirect infringement:

Induced infringement: Actively encouraging or aiding another to infringe.
Contributory infringement: Selling or importing a component knowing it will be used to infringe a patent.

Example 3. A person sells machine parts designed exclusively for a patented machine, knowing the buyer will assemble and use the patented device.

Answer:

This is a case of indirect or contributory infringement as the seller knowingly contributes to the patent violation.

What is not an Infringement? (Section 107A)

Experimental use

Under Section 107A of the Patents Act, any use of a patented invention for the purpose of experiment or research is not considered infringement. This encourages scientific advancement and technological learning.

Use by Government for defence purposes

As per the law, use of a patented invention by the Central or State Government or any person authorized by it for governmental or defense purposes is not considered an infringement.

This exception ensures that national interest is prioritized over commercial monopoly.

Use by others for research and study

The Act allows patented inventions to be used for the purpose of academic study, teaching, or research. This includes non-commercial use in educational institutions and laboratories.

Bolar Exception (Section 107A)

It allows any person to make, construct, use, or sell a patented invention solely for the purposes of developing and submitting information under any Indian law or law of a country regulating the manufacture or sale of drugs.

This is commonly used by generic drug manufacturers to prepare for launch after patent expiry.

Example 4. A medical research institute uses a patented molecule in lab tests for educational research. Is this an infringement?

Answer:

No. As per Section 107A, this use is allowed as it is experimental and educational in nature.

Example 5. A pharma company makes and stocks a patented drug to submit data to the Drug Controller General of India (DCGI) before the expiry of the patent.

Answer:

This is not an infringement due to the Bolar Exception provided under Section 107A of the Patents Act.