Rights and Duties of Patentee under the Patents Act, 1970
Introduction
A patent grants exclusive legal rights to an inventor over his invention. The main objective of granting a patent is to provide the patentee with monopoly rights to use, manufacture, and sell the patented invention. In India, these rights are protected under the Patents Act, 1970.
Once a patent is granted, the patentee enjoys certain rights but must also fulfill specific duties. These rights enable the patentee to commercially exploit the invention and prevent unauthorized use by others.
The important rights and duties of a patentee are mainly provided under Sections 48, 63, 70, and 104 of the Patent Act 1970.
Rights of Patentee
1. Right to Use the Patent
The most important right of a patentee is the exclusive right to use the patented invention.
Under Section 48 of the Patent Act 1970., the patentee has the exclusive authority to:
• Manufacture the patented product
• Use the patented process
• Sell or offer the patented invention for sale
• Import the patented product into India
The patentee can also prevent any person from performing these acts without permission.
However, the patentee can only restrain those persons who do not have authorization or licence to use the patent.
Case Law
In Mumbai Agarwal Co. v. Akula Ramchandra Diwan Chandra, the court held that no person can violate the rights of a patentee. Any unauthorized use of the patented invention amounts to infringement.
2. Right to Surrender the Patent
Under Section 63 of the Patent Act 1970, the patentee has the right to surrender the patent voluntarily.
The patentee may apply to the Controller of Patents requesting surrender of the patent.
Procedure to surrender the Patent :-
(i) The patentee informs the Controller of his intention to surrender.
(ii) The Controller publishes the proposal in the prescribed manner.
(iii) Interested persons may oppose the surrender.
(iv) After hearing both parties, the Controller may accept the surrender.
(v) If accepted, the patent is revoked and returned to the Patent Office.
This provision ensures that surrender does not harm the interests of other stakeholders.
3. Right of Assignment
Under Section 70 of the Patent Act 1970, a patentee has the right to assign his patent to another person, either wholly or partially.
Assignment means transfer of ownership of the patent rights.
Important requirements:
• Assignment must be in writing
• The agreement must be registered with the Patent Office
• The document may be used as legal evidence in case of disputes
Assignment allows inventors to commercially exploit their patents through business agreements.
4. Right to Grant Licence
The patentee may also grant a licence to another person to use the patent.
Under the relevant provisions of the Act, a patentee, proprietor, or assignee may authorize another person to manufacture or use the patented invention for consideration.
Parties in a Licence Agreement
• Licensor: Person granting the licence (patentee)
• Licensee: Person receiving permission
• Licence Agreement: Contract governing the rights and obligations
Through licensing, the patentee can earn royalty or fees while allowing others to commercially use the invention.
5. Right to Bring Legal Action
Under Section 104 of the Patent Act 1970, the patentee has the right to bring legal proceedings against infringement of the patent.
The patentee may file the following types of suits:
(i) Suit for Declaration – under Section 105
(ii) Suit against Groundless Threats – under Section 106
(iii) Suit for Patent Infringement
* These suits are filed in District Courts or higher courts having jurisdiction.
Case Law-
👉 In Shree Prakash Steel Industries v. Ramapada Chatterjee, it was held that a patent suit cannot be filed in courts inferior to the District Court.
👉 In Rola Tanners Ltd. v. Standi Pack Pvt. Ltd. and Ajay Industrial Corporation v. Shiro Kamas of Iber B.City, it was observed that when the validity of a patent is challenged, the matter may be transferred to the High Court.
👉 In Bilcare Ltd. v. Supreme Industries Ltd., the Delhi High Court stated that the following conditions must be satisfied for granting an injunction in patent cases:
• Prima facie case
• Balance of convenience
• Irreparable loss
Duties of Patentee
Although the Patents Act mainly focuses on rights, the patentee also has certain responsibilities.
1. Duty to Work the Patent
The patentee must ensure that the invention is worked in India and made available to the public.
Failure to work the patent may lead to compulsory licensing.
2. Duty to Pay Renewal Fees
The patentee must pay annual renewal fees to maintain the patent for the full 20-year term.
Failure to pay the renewal fee may result in lapse of the patent.
3. Duty to Avoid Misuse of Patent Rights
The patentee must not misuse patent rights to create unfair monopolies or anti-competitive practices.
Summary Table – Rights and Duties of Patentee
Conclusion
The Patents Act, 1970 grants significant rights to a patentee to protect and commercially exploit his invention. These rights include the ability to use the patent, assign or license it, surrender it, and take legal action against infringement.
However, these rights are balanced with certain duties to ensure that patents benefit not only the inventor but also the public and the economy. Proper use of these rights and responsibilities promotes innovation, technological development, and fair competition.
MCQs – Rights and Duties of Patentee (Patents Act, 1970)
1. Which section of the Patents Act, 1970 provides the exclusive rights of a patentee?
A. Section 45
B. Section 48
C. Section 63
D. Section 70
Answer: B
2. The right of a patentee to surrender his patent is provided under:
A. Section 48
B. Section 63
C. Section 70
D. Section 104
Answer: B
3. The right of assignment of a patent is given under:
A. Section 48
B. Section 63
C. Section 70
D. Section 104
Answer: C
4. A patentee can prevent others from which of the following acts?
A. Manufacturing the patented product
B. Selling the patented product
C. Importing the patented product
D. All of the above
Answer: D
5. Patent infringement suits can be filed in:
A. Civil Court
B. District Court
C. Supreme Court
D. Consumer Court
Answer: B
6. Which case held that patent suits cannot be filed in courts inferior to District Court?
A. Shree Prakash Steel Industries v. Ramapada Chatterjee
B. Donoghue v Stevenson
C. Kesavananda Bharati Case
D. Vishaka Case
Answer: A
7. Which section allows the patentee to bring a suit for patent infringement?
A. Section 48
B. Section 63
C. Section 70
D. Section 104
Answer: D
8. Granting permission to another person to use a patent is called:
A. Revocation
B. Licensing
C. Opposition
D. Registration
Answer: B
9. Transfer of patent ownership from one person to another is known as:
A. Licence
B. Assignment
C. Revocation
D. Registration
Answer: B
10. Which conditions are required for granting injunction in patent cases according to Bilcare Ltd. v. Supreme Industries Ltd.?
A. Prima facie case
B. Balance of convenience
C. Irreparable loss
D. All of the above
Answer: D
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FAQs – Rights of Patentee
1. What are the rights of a patentee in India?
- A patentee has the exclusive right to make, use, sell, and import the patented invention, and to prevent others from using it without permission.
2. Which law governs patent rights in India?
- Patent rights are governed by the Patents Act, 1970.
3. What is the meaning of patent assignment?
- Patent assignment refers to the transfer of ownership of a patent from the patentee to another person through a written agreement.
4. What is patent licensing?
- Patent licensing means granting permission to another person to use or manufacture the patented invention for consideration.
5. Can a patentee surrender his patent?
- Yes. Under Section 63, the patentee may voluntarily surrender the patent to the Controller of Patents.
6. Where can a patent infringement suit be filed?
- Patent infringement suits are filed in the District Court or higher courts having jurisdiction.
7. What remedies are available for patent infringement?
- Remedies include injunction, damages, and account of profits.
8. What duties does a patentee have?
- The patentee must work the patent in India, pay renewal fees, and avoid misuse of patent rights.
9. What happens if the patentee does not work the patent?
- If the patent is not worked in India, the government may grant compulsory licence to another person.
10. Why are patent rights important?
- Patent rights encourage innovation, technological development, and economic growth by protecting inventors.
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