WIPO Lex

PATENTS RULES, 19721

1. Vide Not. No. S.O. 301(E), dt. 20.4.1972, published in GOI (E), dt. 20.4.1972, pp. 735 -805

CHAPTER I

PRELIMINARY

1. Short title and commencement. -

(1) These rules may be called the Patents Rules, 1972.

(2) Save as otherwise provided in these rules, these rules shall come into force on the twentieth day of April 1972.

Provided that rule 21, rules 49 to 53, rule 73 and rules 93 to 105, which relate to sub-section (2) of section 12, sub-section (2) of section 13, section 28, section 68 and sections 125 to 132 of the Act respectively shall come into force on the date on which the said sections are brought into force.

2. Definitions. - In these rules, unless the context otherwise requires,-

(a) “Act” means the Patents Act, 1970 (39 of 197.0);

(b) “Appropriate office,” means the appropriate office of the Patent Office as specified in rule 4;

(d) “Form” means a Form specified in the Second Schedule;

(e) “Schedule” means Schedule to these rules;

(f) “Section” means a section of the Act;

(g) Words and expressions used, but not defined in these rules, shall have the meanings respectively assigned to them in the Act.

3. Prescribed particulars. - Save as otherwise provided in these rules, the particulars contained in a Form are hereby prescribed as the particulars, if any required under the relevant provision or provisions of the Act.

4. Appropriate office. -

(1) The appropriate office of the Patent Office shall-

(i) For all the proceedings under the Act, other than those “[under sections 24A, 24B, 24C, 43, 44, 51, 52, 60, 65, 68, 69, 125, 153 and 154], be the Head Office of the Patent Office or the branch office, as the. case may be, within whose territorial limits-

1[(a) The applicant or first mentioned applicant in case of joint applicants for a patent normally resides or has his domicile or has a place of business or the place from where the invention actually originated; or

(b) If the applicant for a patent or party in a proceeding has no place of business or domicile in India, the address for service in India given by the applicant or party is situated, and,]

(ii) For proceedings 2[undersection24A,24B,24C,43,44,51,52,60,65,68,69, 125, 153 and 154] be the head office of the Patent Office.

(2) Notwithstanding anything contained in sub-rule (1), until branch offices are established in accordance with the provisions of sub-section (3) of section 74, the appropriate office for all proceedings under the Act shall be the head office of the Patent Office at Calcutta.

3[(3) The appropriate office decided in respect of any proceedings under the Act shall not ordinarily be changed.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

2. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

3. Ins. by S.O. 411 (E), dt. 2.6.1999, w.e.f 2.6.1999.

5. Address for service. - Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Control and address for service in India and that address may be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules.

6. Leaving and serving documents. -

1[(l) Any application, notice or other document authorised or required to be filed, left, made or given at the Patent Office, or to the Controller or to any other person under the Act or these rules, may be sent by hand or by a letter addressed to the Controller at the appropriate office or to the person through post or registered post or speed post or courier service and if it is sent by post, or registered post or speed post or courier service it shall be deemed to have been filed, left, made or given at the time when the letter containing the same would have been delivered in the ordinary course of post or registered post or speed post or courier service, as the case may be. In proving such sending, it

shall be sufficient to prove that the letter was properly addressed and mailed. If the documents sent through Tele-Fax, are clear and fully legible, they shall also be accepted provided that the original document corresponding to the one sent by Tele-Fax is submitted to the appropriate office within fifteen days from the date of receipt of the document so faxed.]

(2) Any written communication addressed to a patentee at his address as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the application or notice of opposition or given for service, shall be deemed to be properly addressed.

2[(3) All notices and all written communications addressed to a patentee, or to any applicant or opponent in any proceedings under the Act or these rules, and all documents forwarded to the patentee or to the said applicant or opponent shall, except when they are sent by special messenger, be sent by registered post acknowledgment due.]

3[(4) The date of a notice or a written communication addressed to a patentee or to any applicant or opponent in any proceedings under the Act and these rules shall be the date of dispatch of the said notice or written communication, as the case may be, unless otherwise specified under the Act or these rules.

(5) In case of postal delay in receipt of a document or a communication sent by the patent office to a party to any proceedings under the Act or these rules, the delay in transmitting or resubmitting a document to the patent office or doing any act by the party may be condoned by the Controller if a petition for such condonation of delay is made by the party to the Controller immediately after the receipt of the document or a communication along with a statement stating the circumstances of the fact and evidence in support of the statement, provided that the delay thus condoned by the Controller shall not exceed the period between the date on which the party was supposed to have received the document or communication by ordinary course of mail and the actual date of receipt of the same.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

2. Ins. by S.O. 2908, dt. 31.7.1976, w.e.f 14.8.1976

3. Sub-rule (4) and (5), ins. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

7. Fees. -

(1) The fees payable in respect of the grant of patents and applications therefor and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule.

(2) 1[(a) The fees payable under the Act may either be paid in cash or may be sent by bank draft or cheque payable to the Controller and drawn on a scheduled bank at a place where the appropriate office is situated. If the draft or cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or cheque reached the Controller in the ordinary course of the mail].

(b) Cheques or drafts not including the correct amount of commission and cheques on which the full value specified therein cannot be collected in cash within the time allowed for payment of the fees, shall be accepted only at the discretion of the Controller.

1[(d) Where a fee is payable in respect of a document, the entire fee shall accompany the document.

Provided that the Controller may accept the fee in part or allow whole of the fee to be paid at any time within fifteen days from the date of filing of the document and in that event the document shall be deemed to have been filed on the date on which the full fee has been paid.]

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3[(3) In case an application processed by an individual is fully or partly transferred to a legal entity other than an individual, the difference, if any, in the scale of

fee(s) between the fee(s) charged from an individual and the fee(s) chargeable from the legal entity other than the individual in the same matter shall be paid by the new applicant with the request for transfer.

(4) Fees once paid in respect of any proceeding shall not be returned irrespective of whether the proceeding has taken place or not.

(5) Subject to the approval of the competent authority any applicant or a registered patent agent may deposit money in advance once in a financial year and request the Controller to realise any fee payable by him from the said deposit and in such case the date of the receipt of the request to realise the fee or the date on which the request to realise the fee is deemed to have been received, whichever is earlier, shall be taken as the date of payment of the fee.

Provided that the requisite amount of money is available at the credit of the person making the request.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

2. Clause (e) omitted by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

3. Sub-rule (3) to (5), ins. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

8. Forms. -

(1) The forms set forth in the Second Schedule with such variations as the circumstances of each case may require shall be used for the purposes mentioned therein.

(2) Where no Form is so specified for any purpose, the applicant may adopt any Form specified in the Second Schedule with such modifications and variations as the Controller may permit.

9. Size etc., of documents. -

(1) All documents and copies of documents, except affidavits and drawings, sent to or left at the Patent Office or otherwise furnished to the Controller shall be written, typewritten, lithographed, or printed 1[either in the Hindi or in the English language] (unless otherwise directed or allowed by the Controller) in large and legible characters with deep indelible ink with lines widely spaced upon one side only of strong white paper of a size of approximately 33.00 centimeters by 20.50 centimeters (13 inches by 8 inches) or 29.7 centimeters by 21 centimeters (11 ¾ inches by 8 ¼ inches) with a margin of at least four centimeters (one and a half inches) on the left-hand part thereof. 2[Any signature which is not legible or which is written in a script other than Hindi or English shall be accompanied by a transcription of the name either in Hindi or in English in block letters.]

(2) Additional copies of all documents shall be filed it the appropriate Office, if required by the Controller.

(3) Names and addresses of applicants and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for identification.

1. Subs. by S.O. 3598, dt. 28.10.1977 for “in the English language”, w.e.f 26.11.1977

2. Subs. S.O 3598, dt. 28.10.1977, w.e.f 26.11.1977

10. Signature and verification of documents. - The documents specified in sub-section (2) of section 128 of the Act shall be dated and signed at the foot and shall contain a statement that the facts and matters stated therein are true to the best of the knowledge, information and belief of the person signing the said documents.

CHAPTER II

APPLICATIONS FOR PATENTS

11. Period within which proof of the right to make the application shall be furnished. - Where in an application for a patent made by virtue of an assignment of the right to

apply for the patent for the invention, if the proof of the right to make the application is not furnished with the application, the applicant shall within a period three months after the filing of such application furnish such proof.

12. Order of recording applications. - The applications filed in a year shall constitute a series identified by the year of such filing.

13. Statement and Undertaking regarding foreign applications. -

(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in1 [Form 3].

(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country outside India in the undertaking to be given by him under clause (b) of sub- section (1) of section 8 shall be three months from the date of such filing.

2[(3) When so directed by the Controller under sub-section (2) of section 8, the applicant shall furnish the required information within the normal period or by the last date of putting the application in order for acceptance as specified under sub-sections (1) and (2) of section 21.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

2. Ins. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

14. Specifications. -

(1) Every specification, whether provisional or complete, shall commence with the title of the invention, the name, nationality and address of the applicant as given in the application and shall be signed and dated at the end by the applicant or his agent.

(2) A specification in respect of a patent of addition shall contain a specific reference to the number of the main patent, or the application for the main patent, as the case may be, and a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted or applied for.

(3) Where the invention is capable of representation by drawings, such drawings shall be prepared in accordance with the provisions of rules 16 to 19 and shall be supplied with, and referred to in detail, in the specification.

Provided that in the case of a complete specification if the applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the complete specification as those left with the provisional specification.

(4) Irrelevant or other matter, not necessary, in the opinion of the Controller, for elucidation of the invention, shall be excluded from the title, description, claims and drawings.

(5) Except in the case of an application (other than a convention application) which is accompanied by a complete specification, a declaration as to the inventorship of the invention shall be filed in 1[Form 5] with the complete specification or at any time before the expiration of three months from the date of filing of the complete specification, as the Controller may allow on an application made in 1[Form 4].

15. Amendments to specifications. -

(1) When a provisional or complete specification or any drawing accompanying it has been received by the applicant or his agent for amendment the necessary alterations shall be made thereon as far as possible Additional matter may be interpolated if necessary, by rewriting such pages as are required to form a continuous document. Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents.

(2) The amended documents shall be returned to the Controller together with the superseded pages or drawings, if any, duly marked cancelled and initialed by the applicant or

his agent. Copies of any pages that have been retyped or added and of any drawing that has been added or substantially amended shall be sent in triplicate. Amendments alterations or additions shall be initialed in the margin by the applicant or his agent.

16. Drawings. -

(1) Drawings, when furnished by the applicant otherwise than on a requisition made by the Controller shall accompany the specifications to which they relate.

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(3)Drawings shall be delivered flat or so rolled as to be free from crease.

(4) At least one copy of the drawing -shall be suitable for reproduction, and for that purpose, shall be prepared on tracing cloth or transparent or semitransparent sheet, or film made of plastics or fibre glass 2[or thick and durable paper].

(5) Mounted drawings shall not be used.

1. Subs-rule (2) omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

2. Added by S.O. 411(E)., dt. 2.6.1999.

1[17. Size of paper, etc. on which drawings shall be furnished. - Drawings shall be on standard A4 size sheets. A clear margin of 2.5 centimeters shall be left from the edges of every sheet. If there are more figures than can be shown on one sheet, two or more of such sheets shall be used. When an exceptionally large figure is required to be drawn, it shall be continued on subsequent sheet (s). The figures shall be numbered consecutively throughout. Sufficient space shall be kept between the figures so that they shall be distinct.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

18. Particulars of drawings. - Drawings shall be prepared in accordance with the following requirements, namely: -

(a) Drawings shall be executed with indelible black ink.

(b) Each line shall be firmly and evenly drawn, sharply defined and shall be of the same strength throughout.

(d) Shading lines shall not contrast too much in thickness with general lines of the drawings.

(e) Sections and shading shall not be represented by solid black or washes.

(f) Drawings shall be on a scale sufficiently large to show the inventions clearly and only so much of the apparatus, machine or other matter shall appear to achieve this object. If the scale is given, it shall be drawn and not denoted by words. No dimensions shall be marked on the drawings.

1[(g) The figures shall be drawn preferably in an upright position with regard to the top and bottom of the sheet.]

(h) Reference letters and numerals, and index letters, symbols and numerals used in conjunction therewith, shall be bold, distinct and not less than 0.3 centimeter (one-eighth of an inch) in height. The same letters or numerals shall be used to indicate the same parts in different views where the reference letters or numerals are shown outside the figure, they shall be connected by fine lines with the parts to which they refer.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

19. Further particulars about drawings. -

(1) Drawings shall bear-

(i) In the left hand top corner, the name of the applicant;

(ii) In the right hand top comer, the number of the sheets of drawings, and the consecutive number of each sheet; and

(iii) In the right hand bottom corner, the signature of the applicant or his agent.

(2) Neither the title of the invention nor any descriptive matter shall appear on the drawings.

(3) No descriptive matter shall appear on constructional drawings, but drawings in the nature of flow sheets may bear descriptive matter to show the materials used and the chemical or other reactions or treatments effected in carrying out the invention.

(4) Drawings showing the number of instruments or units of apparatus and their interconnections, either mechanical or electrical, where each such instrument or unit is shown only symbolically, may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections.

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1. Sub-rule (5) omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

20. Models. -

(1) Models or samples shall be furnished only when required by the Controller.

(2) Except as permitted by the Controller, no model shall exceed twelve inches on its longest side.

(3) Samples shall be enclosed in convenient containers.

(4) Dangerous substances shall be supplied only in accordance with the directions of the Controller.

(5) Every model or sample shall be clearly and securely labelled or marked so as to identify the application to which it relates.

1[CHAPTER IIA

INTERNATIONAL APPLICATIONS UNDER PATENT COOPERATION TREATY

1. Chapter IIA ins. by S.O. 1029(E), dt. 2.12.1998, w.e.f. 7.12.1998.

20A. Definitions. - In this Chapter, unless the context otherwise requires-

(a) “Article” means an article of treaty;

(b) “Treaty” or “PCT” means the Patent Cooperation Treaty done at Washington on the 19th June, 1970 as amended and modified from time to time in terms of Articles 47 and 61 of the Treaty;

(c) All other words and expressions used herein and not defined but defined in the PCT shall have the same meaning as assigned to them in that Treaty.

20B. Appropriate office in relation to international applications. -

(1) The Head Office of the Patent Office (hereinafter referred to as “Patent Office”) shall function as receiving office, designated office and elected office for the purposes of international applications filed under the Treaty.

(2) An international application shall be-

(a) Filed in and processed by the Patent Office as a receiving office;

(b) Processed by the Patent Office as a designated office and as elected office,

In accordance with the provisions of this Chapter, the Treaty and the Regulations established under the PCT.

20C. International applications filed with Patent Office as receiving office. -

(1) An international application shall be filed with the Patent Office in triplicate, either in English or in Hindi language.

(2) The fees payable in respect of an international application filed with the Patent Office shall be, in addition to the fees as specified in the Regulations under the Treaty, the fees as specified in the First Schedule.

(3) Where an international application filed with the Patent Office has not been filed in triplicate and the applicant desires that the Patent Office should prepare the additional copies required, the fee for making such copies shall be paid by the applicant.

(4) On receipt of a request from the applicant and on payment of the prescribed fee by him, the Patent Office shall prepare a certified copy of the priority document and transmit the same to the International Bureau for the purpose of an international application filed with the Patent Office with an intimation to the applicant.

20D. International applications designating or designating and electing India. -

(1) An international application designating India shall be treated as an application for patent under the Act.

(2) For the purpose of an international application designating India, the title, description, drawings and claims filed in the international application shall be taken as the complete specification for the purpose of the Act.

(3) The filling date of an application for patent and its complete specification processed by the Patent Office, as designated office shall be the international filing date accorded under the Treaty.

(4) The Patent Office shall not commence processing of an international application designating India before the expiration of the time limit prescribed under sub-rule (6) except when the applicant complies with the requirements of that sub-rule and files at the Patent Office an express request for early commencement of such processing.

(5) An applicant in respect of an international application designating India shall, before the time limit prescribed in sub-rule (6)-

(a) Pay the prescribed national fee and other fees to the Patent Office in the manner prescribed under these rules and under the Regulations made under the Treaty;

(b) File with the Patent Office a translation of the application in English duly verified by the applicant stating the correctness and completeness of the contents thereof, if the international application was either not filed or has not been published in English.

(6) The time limit referred to in sub-rule (5) shall be-

(a) Where the applicant has not, before the expiration of nineteen months from the priority date referred to in Article 2(xi), elected India for the purpose of the use of the result of international preliminary examination, twenty one months from the said priority date; and

(b) Where the applicant has, before the expiration of nineteen months from the priority date referred to in Article 2(xi), elected India for the purpose of the use of the result of international preliminary examination, thirty-one months from the priority date.

(7) The translation of the international application referred to in sub-rule (5) shall include a translation in English of, -

(i) The description;

(ii) The claims as filed;

(iii) Any text matter of the drawings;

(iv) The abstract;

(v) In the case referred to in clause (a) of sub-rule (6) and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article; and

(vi) In the case referred to in clause (b) of sub-rule (6) and any amendments to the description, the claims and text matter of the drawings that are annexed to the international preliminary examination report.

(8) If the applicant fails to file a translation of the amended claims and annexures referred to in sub-rule (7), even after invitation from the Patent Office to do so within a time limit as may be fixed by that Office having regard to the time left for meeting the requirements, the amended claims and annexures shall be disregarded in the course of further processing the application by the Patent Office.

(9) The applicant in respect of an international application designating India shall when complying with sub-rule (5), preferably use forms set out in the Second Schedule before the Patent Office as designated office.

20E. Filing of priority Documents. –

(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraph (a) or paragraph (b) of Rule 17.1 of the Regulations under the Treaty, the applicant shall file with the Patent Office the priority document referred to in that Rule before the expiration of the time limit referred to in sub-rule (6) of rule 20 D.

(2) Where the priority document referred to in sub-rule (1) is not in the English language, a duly verified English translation thereof shall be filed within the time limit specified in sub- rule (6) of rule 20 (D).

(3) Where the applicant does not comply with the requirements of sub-rule (1), or sub-rule (2) the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of the invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.

20F. Effect of non-compliance with certain requirements. - An international application designating India shall be deemed to be withdrawn if the applicant does not comply with the requirements of rule 20D.

20G. The requirements under this Chapter to be supplemental to the Regulations, etc., under the Treaty. –

(1) The provisions of this Chapter shall be supplemental to the PCT and the Regulations and the Administrative Instructions made thereunder.

(2) In case of a conflict between any provisions of these rules and the provisions of Treaty and the Regulations and the Administrative Instructions made thereunder, the provisions of the Treaty and the Regulations and Administrative Instructions made thereunder shall apply in relation to international applications.]

CHAPTER III

EXAMINATION OF APPLICATIONS

21. Procedure in case of anticipation by prior publication-

(1) If the Controller is satisfied after investigation under section 13 that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document referred to in clause (a) of sub-section (1) or subsection (2) of the said section, the Controller shall communicate the gist of such objections to the applicant and the applicant shall be afforded an opportunity to amend his specification.

(2) If the applicant contests any of the objections communicated to him by the Controller under sub-rule (1) or if he refiles his specification along with his observations whether or not the specification is amended, he shall be given an opportunity to be heard in the matter if he so requires.

1[Provided that such request is made on a date earlier than ten days of the final

Date of the period specified under sub-section (1) or sub-section (2) of section 21.]

(3) If the applicant requires a hearing under sub-rule (2) within a period of one month from the date of communication of the gist of objections or if the Controller, considers it desirable to do so, whether or not the applicant has refiled his application, fix a date for hearing having regard to the time remaining for putting the application in order or other circumstances of the case.

(4) When a hearing is fixed under sub-rule (3), the applicant shall be given at least 10 days” notice of such fixation or such shorter notice as appears to the Controller to be reasonable in the circumstances of the case and the applicant shall, as soon as possible notify the Controller whether he will attend the hearing.

(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as he thinks fit to be made and may refuse to accept the specification unless the amendment so specified or permitted is made within such period as he may fix.

1. Ins. by S.O. 411(E), dt. 2.6.1999 w.e.f. 2.6.1999.

22. Procedure in case of anticipation by prior claiming. -

(1) When it is found that the invention so far as claimed in any claim of the complete specification is claimed in any claim of any other specification falling within clause (b) of subsection (1) of section 13, the applicant shall be so informed and shall be afforded an opportunity to amend his specification.

(2) If the applicants specification is otherwise in order for acceptance and an objection under clause (b) of sub-section (1) of section 13 is outstanding, the

Controller may accept the specification and allow a period of two months from the date of its publication for removing the objection.

(3) If an objection under clause (b) of sub-section (1) of section 13 is communicated to the applicant after acceptance of the specification, a period of two months from the date of the communication shall be allowed for removing the objection.

23. Amendment of the complete specification in case of anticipation.-

(1) If the applicant so requests at any time, or if the Controller is satisfied that the objection has not been removed within the period prescribed by rule 22, a date for hearing the applicant shall be fixed and the applicant shall be given at least ten days notice of the date so fixed. The applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.

(2) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as will be to his satisfaction to be made and may direct that reference to such other specification, as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.

24. Extension of the period specified in rules 22 and 23. - The periods mentioned in rule 22 or rule 23 may be extended if a request for such extension is made in 1[Form 4] before the expiry of such period or the extended period, so, however that the total extension of either period allowed under this rule shall not exceed six months.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

25. Form of reference to another specification. - When in pursuance of rule 23, the Controller directs that a reference to another specification shall be inserted in the applicant’s complete specification, such reference shall be inserted after the claims and shall be in the following form namely:-

“Reference has been directed, in pursuance of section 18 (2) of the Patents Act, 1970, to the specification filed in pursuance of application No.”

26. Procedure in case of potential infringement. - If in consequence of an investigation made under section 13 or section 25, it appears to the Controller that the applicant’s invention cannot be performed without substantial risk of infringement of a claim of another patent, the applicant shall be so informed and the procedure provided in rules 22 to 24 shall, so far as may be necessary, be applicable.

27. Form of reference to another patent.- Where the Controller directs that a reference to another patent shall be inserted in the applicant’s complete specification under sub- section (1) of section 19 such reference shall be inserted after the claims in the following form, namely-

“Reference has been directed, in pursuance of section 19 (l) of the Patents Act, 1970, to Patent No......

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1. Rule 28 omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

29. Manner in which a claim under section 20(l) shall be made.-

(1) A claim under sub-section (1) of section 20 shall be made in 1[Form 6].

(2) The original assignment or agreement or an official or notarially certified copy thereof shall also be produced for the Controller’s inspection and the Controller may call for such other proof of title or written consent as he may require.

1. Rule 28 omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

30. Manner in which a request may be made.-

(1) A request under subsection (4) of section 20 shall be made in 1[Form 6].

(2) The consent by the legal representative of the deceased joint applicant required to be given under sub-section (4) of section 20 shall be endorsed on the request.

(3) The request shall also be accompanied by proof of death of the joint applicant and a certified copy of the probate of the will of the deceased or letters of administration in respect of his estate or any other document to prove that the person who gives the consent is the legal representative of the deceased first applicant.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

31. Manner of application under section 20(5). -

(1) An application under sub-section (5) of section 20 shall be made in 1[Form 6] in duplicate and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

(2) A copy of the application and statement shall be sent by the Controller to every other joint applicant and the person making the application shall apply sufficient number of copies for that purpose.

32. Numbering of applications on acceptance of the complete specification. - On the acceptance of a complete specification filed in respect of an application, the application shall be accorded a number (called serial number) in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911 (2 of 1911), which shall be the number of the patent which may be sealed in. pursuance of the application.

33. Inspection of application, specification, etc.- After the date of advertisement of the acceptance of a complete specification under section 23, the application together with

the provisional and complete specifications, the drawings and document5, if any, filed in respect of the application may be inspected at the appropriate office 1by making a written request to the Controller in that behalf].

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

1[CHAPTER III A

EXCLUSIVE MARKETING RIGHTS

1. Chapter IIIA (Sections 33A to 33P) ins. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

33A. Filling of application. - An application for grant of a patent in respect of an invention covered under sub-section (2) of section 5 shall be made to the Controller in Form I along with the fees as specified in the First Schedule.

33B. The application for grant of exclusive marketing right- An application for grant of exclusive right to sell or distribute the article or substance shall be made to the Controller in Form 27 along with the fees as specified in the First Schedule and the Controller shall notify the filing of the application in the Official Gazette and to the authority of the Central Government that is responsible for the grant of approval to sell or distribute the article or the substance for which the application is being made.

33C. Controller to refer application: - On receipt of an application under rule 33B, the Controller shall refer to the application relating to the patent to an examiner for making a report to him.

33D. Report of examiner.- The examiner to whom an application has been referred shall ordinarily make the report to the Controller within a period of ninety days from the date of such reference.

33E. Notifying of grant or refusal of exclusive marketing rights: -When the Controller grants or refuses an application for grant of exclusive right to sell or distribute the article or substance, he shall notify the same in the Official Gazette and to the authority of the Central Government that has granted approval to sell or distribute the article or the substance.

33F. Personal documents, etc. in relation to inventions. - The recording in a document relating to specifications and trial or use as referred to in sub-section (2) of section 24B shall include public document, public trial or use but shall not include a personal document or secret trial or use.

33G. Appropriate tests. - The appropriate tests conducted on or after the lst day of January 1995 and referred to in section 24B shall be the tests either the whole or a part of which had been conducted for the purposes of this Chapter.

33H. Form for grant of exclusive marketing rights. - Exclusive marketing rights shall be granted in Form 28.

33I. Application for compulsory license to sell or distribute or for revocation of exclusive marketing rights. -

(1) An application to the Controller for an order under section 84, section 89, or section 97, as modified by section 24C, shall be in Form 18 or, as the case may be in Form 20, to be modified as deemed necessary. Except in the case of an application made by the Central Government, the application shall set out the nature of the applicant’s interest and the terms and conditions of the license to which the applicant is willing to accept.

(2) For the purpose of sub-section (4) of section 84, as modified by section 24C, the Controller may call for statements and evidences from the applicant.

(3) On receiving an order from the Controller, the applicant shall furnish the statement and evidences within a period of ninety days from the date of the order of the Controller.

33J. When a prima-facie case is not make out. –

(1) If upon consideration of the evidence, the Controller is satisfied that a prima- facie case has not been made out for making an order under any of the sections referred to in rule 331, he shall notify the applicant accordingly. Unless the applicant makes a request to be heard in the matter, the Controller shall refuse the application after the expiry of a period of thirty days from the date of receipt of the notice by the applicant.

(2) If the applicant makes a request for hearing within the time allowed under sub- rule (1) the Controller shall, after giving the applicant an opportunity of being heard, determine whether the application may be proceeded with or it shall be refused.

33K. Notice of opposition against grant of compulsory license or revocation of exclusive marketing rights: –

(1) A notice of opposition under sub-sections (2) of section 92, as modified by section 24C shall be given in Form 14 and shall be sent to the Controller within ninety days from the date of the advertisement of the application under sub- section (1) of the said section.

(2) The notice of opposition referred to in sub-rule (1) shall include the terms and conditions of the license, if any, which the opponent is prepared to grant to the applicant and shall be accompanied by evidence in support of opposition.

(3) The Controller may by order call for further evidence from the opponent if he desires so.

(4) On receipt of the order under sub-rule (3), the opponent shall furnish the further evidence within a period of ninety days from the date of such receipt.

(5) The opponent shall serve a copy of his notice of opposition and evidence on the applicant and notify the Controller when such service has been effected.

(6) No further statement or evidence shall be delivered by either party except by leave of or on requisition by the Controller.

(7) The Controller shall thereafter appoint a date and time for the hearing of the case and shall give the parties not less than ten days notice of such hearing.

(8) The procedure specified in sub-rules (2) to (5) of rule 44, shall, so far as may be, apply to the procedure for hearing under this rule, as they apply to the hearing of opposition to the grant of patents.

(9) The provisions of clause (f) of sub-section (1) of section 77 for review of the decision of the Controller shall be applicable to any decision of the grant or refusal to grant of compulsory licence by the Controller.

(10) When the opponent makes the application for review of the decision of the Controller, the Controller shall suspend the operation of the decision for which the review is being requested till the disposal of the application for review.

33L. Manner of advertisement of the order for revocation of exclusive marketing rights: - The Controller shall advertise, in the Official Gazette, the order made by him under sub-section (3) of section 89 as modified by section 24C, for revoking exclusive marketing rights to sell or distribute the article or substance.

33M. Application for the revision of the terms and conditions of a license: -

(1) An application under sub-section (5) of section 93 as modified by section 24C for the revision of the terms and conditions of a license which has been settled by the Controller shall be in Form 21 as may be modified as deemed necessary and shall state the facts relied upon by the applicant and the relief he seeks and shall be accompanied by evidence in support of the application.

(2). If the Controller is satisfied that a prima facie case has not been made out for the revision of the terms and conditions of the license, he may notify the applicant accordingly and unless within a period of thirty days the applicant requests to be heard in the matter, the Controller may refuse the application.

(3) The Controller, after giving the applicant an opportunity of being heard, shall determine whether the application shall be proceeded with or it shall be refused.

33N. Procedure to be followed in case of application under rule 33M: –

(1) If the Controller allows, the application to be proceeded with, he shall direct the applicant to serve copies of the application and of the evidence in support thereof upon the holder of exclusive marketing rights or upon any other person on whom, in his opinion, such copies should be served.

(2) The applicant shall inform the Controller the date on which the service of copies of application and of the evidence on the holder of exclusive marketing right and other persons referred to in sub-rule (1) has been effected.

(3) The holder of the exclusive marketing right of any other person on whom copies of the application and of the evidence have been served may give the Controller a notice of opposition in Form 14 as may be modified as deemed necessary, within sixty days from the date of such service. Such notice shall contain the grounds relied upon by the opponent and shall be accompanied by evidence in support of the opposition.

(4) The opponent shall serve copies of the notice of opposition and his evidence on the applicant and inform the Controller the date on which service has been made.

(5) No further evidence or statement shall be filed by either party without special leave of or on requisition by the Controller.

(6) On completion of the proceedings specified under sub-rule (1) to (5) or at such other time as he may deem fit, the Controller shall appoint a date and the time for the hearing of the case and shall give the parties not less than ten days notice of such hearing.

(7) The procedure specified in sub-rules (2) to (5) of rule 44 shall, so far as may be, apply to the procedure for hearings under this rule as they apply to the hearing of opposition to the grant of a patent.

(8) If the Controller decides to revise the terms and conditions of license he shall amend the license granted to the applicant in such manner, as he may deem necessary.

33O. Reference to public interest. - Reference to public interest in subsection (1) of section 24D shall mean the requirement of the public in a national emergency or other circumstances of extreme urgency.

33P. Register of exclusive marketing rights. –

(1) There shall be kept at the head office of the patent office a register to be called the Register of exclusive marketing rights and a copy thereof shall be available at each of the branch offices and all entries relating to exclusive marketing rights shall be made therein.

(2) The Register kept under sub-rule (1) shall be open to the public on a request to be made to that effect to the Controller in writing.

(3) Certified copy of any entry in the Register of exclusive marketing rights thereof shall be supplied on a request therefor made to that effect to the Controller.]

CHAPTER IV

OPPOSITION TO GRANT OF PATENT

34. Manner of application for extension of time under section 25(1). -

(1) An application for extension of time for giving notice of opposition to the grant of patent under sub-section (1) of section 25 shall be made in 1[Form 4] and left at the appropriate office within four months from the date of advertisement of the acceptance of the complete specification stating the reasons for the grant of extension of time.

(2) The application for extension of time shall be filed in triplicate.

(3) One copy of the application for extension of time shall be sent by the Controller to the applicant for patent.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

35. Filing of notice of opposition. - The notice of opposition to be given under sub- section (1) of section 25 shall be made in 1[Form 7] and sent to the Controller in triplicate.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

1[36. Written statement of opposition. - The opponent shall send a written statement in duplicate setting out the nature of opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, in duplicate in support of his case along with notice of opposition or within sixty days from the date of the notice of opposition and shall deliver to the applicant a copy of the statement and the evidence.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

1[37. Time for filing reply statement. - If the applicant desires to contest the opposition, he shall leave at the appropriate office a reply statement in duplicate setting out fully the grounds upon which the opposition is contested and evidence if any, in duplicate, in support of his case within a period of sixty days from the date of receipt of the copy of the written statement and opponent’s evidence by him under rule 36 and deliver to the opponent a copy thereof.]

2* * * * * * * * * * * *

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

2. Rule 38 and 39 omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

1[40. Reply evidence by opponent. - The opponent may, within thirty days from the date of delivery to him a copy of the applicant’s reply statement and evidence under rule 37, leave at the appropriate office evidence in reply in duplicate strictly confined to matters in the applicant’s evidence and shall deliver to the applicant a copy of such evidence.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

41. Further evidence to be left with the leave of the Controller. - No further evidence shall be delivered by either party except by leave or directions of the Controller.

1[Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 44.]

1. Added by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

42. Number of copies to be supplied of documents. -

(1) Copies of all documents other than Indian patents specification referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition and authenticated to the satisfaction of the Controller, shall-

(a) In a case where they are referred to in the notice of opposition and written statement, be furnished in triplicate; and

(b) In any other case, be furnished in duplicate.

Unless the Controller otherwise directs. The number of copies shall accompany the notice, statement or evidence as the case may be, in which they are referred to.

(2) Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof, in triplicate, in English shall be furnished 1[along with such notice, statement or evidence, as the case may be].

1. Added by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

43. Extension of time. - The time allowed for filing the reply statement or evidence shall not ordinarily be extended except by a special order of the Controller given on a petition made by the person seeking extension of time and on payment of the fee specified therefor in the First Schedule.

Provided that the extension so granted shall in no case exceed three months in the aggregate.

44. Hearing. -

(1) On the completion of the presentation of evidence, if any, or at such other time as the Controller may think fit, he shall appoint a time for the hearing of the

opposition and shall give the parties not less than ten days” notice of such hearing.

(2) If either party to the proceeding desires to be heard, he shall inform the Controller by a notice 1[***].

(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).

(4) If either party intends to refer at the hearing to any publication not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days” notice of his intention, together with details of such publication to which he intends to refer.

(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

1. Omitted by S.O. 411(E), Lit. 2.6.1999, w.e.f. 2.6.1999.

45. Determination of costs. - If the applicant notifies the Controller that he does not desire to proceed with the application after notice of opposition is given, the Controller in deciding whether cost should be awarded to the opponent, shall consider whether opposition might have been avoided if the opponent had given reasonable notice to the applicant before the notice of opposition was given to the Controller.

46. Time within which complete specification is to be amended under section 27. - The time within which an applicant shall amend his complete specification to the satisfaction of the Controller under section 27 shall be two months from the date of such intimation by the Controller.

47. Procedure to be followed. -

(1) If the specification has not been amended to the satisfaction of the Controller within the time allowed under rule 46, including any extension thereof which the Controller may allow, a time for hearing shall be appointed and the applicant shall be given at least ten days” notice of such date of hearing.

(2) The applicant shall as soon as possible, notify the Controller whether he will attend the hearing.

(3) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may prescribe or permit such amendment of the specification as will be to his satisfaction

To be made and may refuse to grant a patent unless the amendment is made or agreed to within two months from the date of his order.

48. Extension of time. - A request for extension of time specified in rule 46 or in sub-rule (3) of rule 47 shall be made in 1[Form 4] and the total extension of time given under either of the said rules shall not exceed two months.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

49. Manner of request under section 28(2). - A request under sub-section (2) of section 28 shall be made in 1[Form 8].

50. Manner of making a claim under section 28(3). -

(1) A claim under subsection (3) of section 28 shall be made in 1[Form 8], and shall be accompanied by a statement setting out the circumstances under which the claim is made.

(2) A copy of the claim made and of the statement shall be sent by the Controller to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested and the claimant shall supply sufficient number of copies for the purpose.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

51. Form of application to be made under sub-section (7) of section 28. -

(1) An application under sub-section (7) of section 28 for a certificate shall be made in 1[Form 8] and shall be accompanied by a statement setting out the circumstances under which the application is made.

(2) A copy of the application and of the statement shall be sent by the Controller to each patentee or the applicant for patent, as the case may be (not being the applicant), to the person mentioned as the actual deviser, and to any other person whom the Controller may consider to be interested and the applicant shall supply sufficient number of copies for the purpose.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

52. Procedure for the hearing of claim or an application under section 28. -The procedure specified in rules 35 to 45 relating to the filing of notice of opposition, written statement, reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of a claim or an application under section 28 as they apply to the proceedings in opposition to the grant of patents subject to the modification that reference to applicant shall be construed as the person making the claim or an application as the case may be.

53. Mention of inventor. - Any mention of the inventor under sub-section (1) of section 28 shall be made in the patent after the name of the Controller and on the complete specification at the head of [Form 2] and may be in the following form, namely: -

“The inventor of this invention/ substantial part of this invention within the meaning of section 28 of the Patents Act, 1970, is.......... of............”

CHAPTER V

SECRECY DIRECTIONS

54. Communication of result of reconsideration under section 36(2). - The result of every reconsideration under sub-section (1) of section 36 shall be communicated in writing to the applicant for patent within fifteen days of the receipt by the Controller of the notice under that sub-section.

55. Extension of time on revocation of secrecy directions under section 38. -The extension of time to be given for doing anything required or authorised to be done under section 38 shall not exceed the period for which directions given by the Central Government under sub-section (1) of section 35 were in force.

CHAPTER VI

SEALING OF PATENTS

56. Sealing of patents. -

(1) A request for the sealing of a patent under subsection (1) of section 43 shall be made in 1[Form 9].

(2) The period within which a request for the sealing of a patent may be made under clause (a) of the proviso to sub-section (2) of section 43 shall be two months after the final determination of the proceedings referred to in that clause.

(3) An application under sub-section (3) of section 43 shall be made in 1[Form 4].

1. Subs. by S.O. 411(E), dt. 2.6.1999 w.e.f. 2.6.1999.

57. Form of patent. - A patent shall be in the form as specified in the Third Schedule with such modifications as the circumstances of each case may require and shall bear the number accorded to the application under rule 32.

58. Amendment of patent under section 44. - An application under section 44 for the amendment of a patent shall be made in 1[Form 10] in duplicate and shall be accompanied by evidence verifying the statements made therein and by the patent.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

59. Manner of applying for directions under section 51(1). -

(1) An application for directions under sub-section (1) of section 51 shall be made in 1[Form 11] in duplicate and shall be accompanied by a statement setting out the facts upon which the applicant relies.

(2) A copy of the application and of the statement shall be sent by the Controller to every other person registered as grantee or proprietor of the patent and the applicant shall supply sufficient number of copies for that purpose.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

60. Manner of application under section 51(2). -

(1) An application for directions under sub-section (2) of section 51 shall be made in 1[Form 11] in duplicate and shall be accompanied by a statement setting out the facts upon which the applicant relies.

(2) A copy of the application and statement shall be sent by the Controller to the person in default.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

61. Procedure for the hearing of proceedings under section 51. - The procedure specified in rules 35 to 45 relating to the filing of notice of opposition, written statement, reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of an application under section 51 as they apply to the hearing of an opposition to the grant of patents.

62. Manner of request under section 52(2). -

(1) A request under sub-section (2) of section 52 shall be made in 1[Form 12] within three months from the date of the order of the Court referred to in sub- section (1) of the said section and shall be accompanied by a statement setting out the facts upon which the petitioner relies and the relief he claims and a certified copy of the order of the court.

Provided that the time taken for obtaining a certified copy of the order shall be excluded in calculating the said period of three months.

(2) Where the court has ordered the grant of patent to the applicant only for a part of the invention, the new patent granted shall be accorded a number in the same series of numbers accorded to the complete specifications accepted on the same days as the patent is granted.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

63. Renewal fees. -

(1) If it is desired to keep a patent in force for the term of the patent, the renewal fees specified in the First Schedule shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same

shall be remitted to the Patent Office before the expiration of the second or the succeeding year.

(2) While paying the renewal fee, the number of the patent concerned and the year in respect of which the fee is paid shall be quoted.

(3) The annual renewal fees payable in respect of two or more years may be paid in advance.

1[(4) The Controller shall, after making such enquiry as he may deem necessary, credit any renewal fee and issue a certificate that the fee has been paid.]

2* * * * * * * * * * * *

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

2. Rule 64 omitted by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

CHAPTER VII

AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

65. Amendment of application or specification. -

(1) An application under section 57 for the amendment of an application for a patent or a complete specification shall be made in 1[Form 13].

(2) If the application for amendment under sub-rule (1) relates to an application for a patent which has not been accepted, the Controller shall determine whether any subject to what conditions, if any, the amendment shall be allowed.

(3)

(a) If the application for amendment under sub-rule (1) is made after the acceptance of the complete specification, the application for the amendment and the nature of the proposed amendment shall be advertised by the Controller in the Official Gazette and by the applicant in such other manner as the Controller may in each case direct. The Controller shall also notify all the persons who, in his opinion, may have an interest in the matter.

(b) Any person 1[interested in] opposing the application for amendment shall give a notice of opposition in 1[Form 14] in duplicate within three months from the date of advertisement of the application in the Official Gazette.

(c) The procedure specified in rules 36 to 45 relating to the filing of written statement, reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of the opposition under section 57 as they apply to the hearing of the opposition to the grant of patents.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

66. Preparation of amended specifications, etc.- Where the Controller allows the application for a patent or the complete specification to be amended, the applicant shall, if the Controller so requires and within the time to be specified by him, leave at the appropriate office an amended application or specification, as the case may be, in accordance with the provisions of these rules.

1[67. Advertisement of the amendments allowed. - The amendments allowed by the Controller after a complete specification has been accepted may be advertised by him in the Official Gazette.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

CHAPTER VIII

RESTORATION OF PATENTS

68. Restoration of patents. -

(1) An application for the restoration of a patent under section 60 shall be made in 1[Form 15].

(2) Upon consideration of the application and the evidence adduced by the applicant, if any, if the Controller is satisfied that a prima facie case for the restoration of the patent has not been made out he shall intimate the applicant accordingly and unless within one month from the date of such intimation the applicant requests to be heard in the matter the Controller shall refuse the application.

(3) If the applicant request for a hearing within the time allowed and the Controller after giving the applicant such a hearing is prima facie satisfied that the failure to pay the renewal fees was unintentional, he shall advertise the application in the Official Gazette.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

69. Opposition to restoration. -

(1) At any time within two months from the date of advertisement or the application in the Official Gazette under sub-rule (3) of rule 68, 1 [any person interested] may give notice of opposition thereto in 1 [Form 14] in duplicate.

(2) A copy of the notice of opposition shall be sent by the Controller to the applicant.

(3) The procedure specified in rules 36 to 45 relating to the filing of written statement, reply statement, leaving evidence and hearing shall, so far as may be

apply to the hearing of the opposition under section 60 as they apply to the hearing of the opposition to the grant of patents.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

70. Payment of unpaid renewal fees. -

(1) If the Controller decides in favour of the applicant, the applicant shall pay the unpaid renewal fees and the additions fee specified in the First Schedule, within a month from the date of the order of the Controller allowing the applicant for restoration.

(2) The Controller shall advertise in the Official Gazette his decision on the application.

CHAPTER IX

SURRENDER OF PATENTS

71. Surrender of patents. - 1* * * * * * * *

2[(2) The Controller shall advertise the notice of an offer given under section 63 in the Official Gazette.]

(3) Any person interested may within three months from the date of advertisement of the notice in the Official Gazette give notice of opposition to the Controller in 1[Form 14] in duplicate.

(4) The procedure specified in rules 36 to 45 relating to the filing of written statement, reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of the opposition under section 63 as they apply to the hearing of the opposition to the grant of patents.

(5) If the Controller accepts the patentee’s offer to surrender the patent, he may direct the patentee to return the patent and on receipt of such patent, the Controller shall by order revoke it and notify the revocation of the patent in the Official Gazette.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

2. Sub-rule (1) omitted by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

CHAPTER X

REGISTER OF PATENTS

72. Register of patents. -

(1) Upon the sealing of a patent, the Controller shall enter in the register of patents, the name, address and nationality of the grantee as the patentee thereof, the title of the invention including the categories specified in section 5 to which the invention relates), the date of the patent and the date of sealing thereof together with the address of service of the patentee.

(2) The Controller shall also enter in the register of patents particulars regarding proceedings under the Act before the Controller or the courts in respect of every patent.

73. Registration of documents under section 68. - An application for the registration of a document under section 68 shall be made in 1[Form 16].

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

74. Registration of title and interest in patents. -

(1) An Application referred to in sub-section (1) of section 69 shall be made-

(a) By a person becoming entitled to a patent or a share in it in 1 [Form 17];

(b) By a person becoming entitled as a mortgagee or a licensee or otherwise to any other interest in a patent in 1 [Form 17].

(2) An application referred to in sub-section (2) of section 69 shall be made-

(a) By the assignor in 1 [Form 17];

(b) By a mortgagor, licensor or other party in 1[Form 17].

(3) An application for entry in the register of patents of the notification of any other document purporting to affect the proprietorship of the patent by the person benefiting under the document shall be made in 1 [Form 17].

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

75. Presentation of assignment, etc., of patent to Controller. - Every assignment and every other document giving effect to or being evidence of the transfer of a patent or affecting the proprietorship thereof or creating an interest therein is claimed in such application, shall, unless the Controller otherwise directs, be presented to him together with the application which shall be accompanied by two copies of the assignment or other document certified to be true copies by the applicant or his agent and the controller may call for such other proof of title or written consent as he may require.

76. Registration of title or interest in a patent. - After the receipt of an application under sub-section (1) or sub-section (2) of section 69, the Controller shall register the title of the person concerned or his interest in a patent, as the case may be, and an entry in the following form shall be made in the register, namely,

“In pursuance of an application received on the

Proprietor Assignment

Registered as licencee by virtue of licence

Mortgagee etc. Mortgage deed etc.

Dated…………. and made between……………..of the one part and………….of the other part”.

77. Entry of renewal fee. - Upon the issue of a certificate of the payment of the prescribed renewal fee in respect of a patent, the Controller shall enter in the register of patents the fact that the fee has been paid and the date of payment of such fee as stated in the certificate.

78. Alteration of address. -

(1) A patentee may make a request “fin writing] to the Controller for the alteration of his name, nationality, address or address for service as entered in the register of patents in respect of any patent granted to him. The Controller may require such proof of the alteration as he may think fit before acting on a request to alter the name or nationality.

(2) If the Controller allows a request made under sub-rule (1), he shall cause the entries in the register to be altered accordingly.

(3) If a patentee makes a request 1 [in writing] for entering an additional address for service in India and if the Controller is satisfied that the request should be allowed, he shall have the additional address for service entered in the register subject to the condition that not more than two addresses for service shall be entered in the register at any one time.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

79. Inspection of register of patents and fees payable therefor. -

(1) The register of patents shall be kept at the head office of the Patent Office and shall be open for public inspection during office hours on payment of the fees specified therefor in the First Schedule.

(2) A copy of the register shall be available for inspection at each of the branch offices of the Patent Office on the same conditions as are applicable to, and on payment of the same fees as are payable for, the inspection of the register under sub-rule (1).

CHAPTER XI

COMPULSORY LICENCES ENDORSEMENT OF PATENTS WITH THE WORDS “LICENCES OF RIGHT” AND REVOCATION

80. Application for compulsory licence etc.- An application to the Controller for an order under section 84, section 86, section 89, section 96, or section 97 shall be in 1 [Form 18, Form 19 and Form 20], as the case may be. Except in the case of an application made by the Central Government, the application shall set out the nature of the applicant’s interest and the terms and conditions of the licence the applicant is willing to accept.

81. When a prima facie case is not made out. -

(1) If, upon consideration of the evidence, the Controller is satisfied that a prima facie case has not been made out for the making of an order under any of the sections referred to in rule 80, he shall notify the applicant accordingly, and unless the applicant requests to be heard in the matter, within one month of the date of such notification, the Controller shall refuse the application.

(2) If the applicant requests for a hearing within the time allowed under sub-rule (1), the Controller shall, after giving the applicant an opportunity of being

heard, determine whether the application may be proceeded with or whether it shall be refused.

82. Notice of opposition under section 92(2). -

(1) A notice of opposition under sub-section (2) of section 92 shall be given in [Form 14] in duplicate and shall be sent to the Controller within two months from the date of the advertisement of the application under sub-section (1) of the said section.

(2) The notice of opposition referred to in sub-rule (1) shall include the terms and conditions of the licence, if any, the opponent is prepared to grant to the applicant and shall be accompanied by evidence in support of the opposition.

(3) The opponent shall serve a copy of his notice of opposition and evidence on the applicant and notify the Controller when such service has been affected

(4) No further statement or evidence shall be delivered by either party except by leave of or on requisition by the Controller.

(5) The Controller shall thereafter appoint a date and time for the hearing of the case and shall give the parties not less than ten days” notice of such hearing.

(6) The procedure specified in sub-rules (2) to (5) of rule 44, shall, so far as may be, apply to the procedure for hearing under this rule as they apply to the hearing of the opposition to the grant of patents.

83. Manner of application under section 88(2). -

(1) An application under sub-section (2) of section 88 for settling the terms of the licence shall be made in [Form 21] in duplicate and shall be accompanied by a

statement of negotiations made between the applicant and the other party and the terms and conditions of the licence the applicant is willing to accept.

(2) In the case of applications in respect of patents for inventions referred to in sub-clause (i), or sub-clause (ii), of clause (a) of sub-section (1) of section 87 and deemed to be endorsed with the words “Licences of Right”, under clause (a) or clause (b) of that sub-section, a statement containing an estimate of the net ex-factory sale price in bulk of the patented article and all the information relevant thereto with evidence in support thereof shall also be filed along with the application.

(3) The Controller shall send one copy of the application, the statement, if any, referred to in sub-rule (2) and the evidence to the other party and direct him to file a statement containing the terms and conditions of the licence he is prepared to accept within one month from the date of sending the said copies and serve a copy of such statement, if any, on the applicant and communicate the date of such service on the applicant to the Controller.

(4) In the case of an application in respect of a patent referred to in sub-rule (2) the Controller may also direct the other party to furnish a similar statement in reply and evidence in support thereof, and to serve a copy of the statement on the applicant.

(5) The Controller shall give the parties an opportunity of being heard within one month from the date of service of the statement or statements and evidence.

(6) The procedure specified in sub-rules (2) to (5) of rule 44, shall, so far as may be, apply to the procedure for hearing under this rule as they apply to the hearing of opposition to the grant of a patent.

(7) The Controller in determining the royalty and other remuneration reserved to the patentee shall consider the statements and may make such enquiries, as he may deem fit.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

84. Manner of applying under section 88(4). -

(1) An application under subsection (4) of section 88 for permission to work the patented invention shall be in 1 [Form 22] in duplicate and shall contain the reasons for making the application and the terms under which he would work the patented invention pending agreement with the patentee or decision by the Controller. The applicant shall file evidence in support of the application, if the Controller so directs.

(2) The Controller shall forward a copy of the application and evidence, if any, to the patentee and direct him to file within such time not exceeding one month a statement containing the terms of the licence he is willing to grant or the terms under which the Controller may allow the applicant to work the patented inventions pending agreement with the applicant.

(3) The Controller after hearing the parties may direct them to execute a licence if they mutually agree on the terms and conditions of the same or permit the applicant to work the patented invention on such terms as he may think fit to impose.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

85. Manner of advertisement of the revocation order. - The Controller shall advertise in the Official Gazette the order made by him under sub-section (3) of section 89 revoking a patent.

86. Application under section 93(5). -

(1) An application under sub-section (5) of section 93 for the revision of the terms and conditions of a licence which have been settled by the Controller shall be in 1 [Form 21] in duplicate and shall state the facts relied upon by the applicant arid the relief he seeks and shall be accompanied by evidence in support of the application.

(2) If the Controller is satisfied that a prima facie case has not been made out of the revision of the terms and conditions of the licence, he may notify the

applicant accordingly and unless within a month the applicant requests to be heard in the matter the Controller may refuse the application.

(3) The Controller after giving the applicant an opportunity of being heard shall determine whether the application shall be proceeded with or whether the application shall be refused.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

87. Procedure to be followed in case of applications under section 93(5). -

(1) If the Controller allows the application to be proceeded with, he shall direct the applicant to serve copies of the application and of the evidence in support thereof upon the patentee or any other person appearing in the register to be interested in the patent or upon any other person on whom in his opinion such copies should be so served.

(2) The applicant shall inform the Controller the date on which the service of copies of application and of the evidence on the patentee and other persons referred to in sub-rule (1) has been effected.

(3) The patentee or any other person on whom copies of the application and of the evidence have been served, may give to the Controller notice of opposition in Form 46 in duplicate within two months from the date of such service. Such notice shall contain the grounds relied upon by the opponent and shall be accompanied by evidence in support of the opposition.

(4) The opponent shall serve copies of the notice of opposition and his evidence on the applicant and inform the Controller the date on which such service has been effected.

(5) No further evid6nce or statement shall be filed by either party without special leave of or on requisition by the Controller.

(6) On completion of the above proceedings or at such other time as he may deem fit, the Controller shall appoint a date and the time for the hearing of the case and shall give the parties not less than ten days” notice of such hearing.

(7) The procedure specified in sub-rules (2) to (5) or rule 44 shall, so far as may be, apply to the procedure for hearing under this rule as they apply to the hearing of opposition to the grant of a patent.

(8) If the Controller decides to revise the terms and conditions of licence he shall amend the licence granted to the applicant in such manner, as he may deem necessary.

CHAPTER XII

SCIENTIFIC ADVISERS

88. Roll of scientific advisers. -

(1) The Controller shall maintain a roll of scientific advisers for the purpose of section 115. The roll shall contain the names and addresses of scientific advisers, their designations, information regarding their educational qualifications, the disciplines of their specialization and their technical, practical and research experience.

(2) A person shall be qualified to have his name entered in the roll of scientific advisers if he fulfils the following conditions, namely: -

(i) He holds a degree in science, engineering or technology;

(ii) He has at least 15 years” practical or research experience; and

(iii) He holds or has held a responsible post in a scientific or technical department of the Central or State Government or in any Organisation.

89. Manner of application for inclusion in the roll of scientific advisers. - Any interested person may apply to the Controller for inclusion of his name in the roll of scientific advisers furnishing his bio-data.

90. Inclusion of the name of any other person in the roll of scientific advisers. - The Controller may, notwithstanding anything contained in rules 88 and 89, enter the name of any person in the roll of scientific advisers, if the Controller is of opinion after such inquiry as he deems fit, that such person should be entered in the roll of scientific advisers.

91. Power to relax. - Where the Controller is of the opinion that it is necessary or expedient so to do, he may, by order, for reasons to be recorded in writing, relax any of the qualifications specified in sub-rule (2) of rule 88 with respect to any person, if such person is otherwise well qualified.

92. Removal of names from the roll of scientific advisers. - The Controller may remove the name of any person from the roll of scientific advisers,-

(a) If such person makes a request for such removal; or

(b) If the Controller is satisfied that his name has been entered in the roll by error or on account of misrepresentation or suppression of any material fact; or

(c) If he has been convicted of an offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity and the Controller is of the opinion that his name should be age removed from the roll.

1 [Provided that, before removing the name of any person from the roll of scientific advisers under this rule, such person shall be given a reasonable opportunity of being heard.]

1. Ins. by S.O. 2908, dt. 31.7.1976, w.e.f 14.8.1976.

CHAPTER XIII

PATENT AGENTS

93. Particulars to be contained in the register of Patent agents. -The register of patent agents maintained under section 125 shall contain the name, nationality, address of the principal place of business, addresses of branch offices, if any, the qualifications and the date of registration of every registered patent agent.

94. Application for registration of patent agents. -

(1) Every person desiring to be registered as a patent agent shall make an application in 1 [Form 23] in duplicate, which shall be filed at the head office of the Patent Office.

(2) The applicant shall furnish such other information as may be required by the Controller.

2 [(3) A person desirous to a pear in the qualifying examination under rule 95 shall make a request therefor to the Controller.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999

2. Ins. by S.O. 41](E), dt. 2.6-1999, w.e.f 2.6.1999

95. Particulars of the qualifying examination for patent agents. -

(1) The qualifying examination referred to in clause (ii) of sub-section (1) of section 126 shall consist of a Written test and a viva voce examination

(2) The written test shall consist of the following papers, namely: -

Subject Maximum Marks Paper I- Patents Act and rules 100 Paper II- Drafting and interpretation of patent

Specifications and other documents 100

(3) The qualifying marks for each written paper and for the viva voce examination, shall be 40 percent and 60 percent respectively, and a candidate shall be declared to have passed the examination only if he obtains an aggregate of 50 percent of the total marks.

1 [(4) A person who has functioned in the patent office under section 73 for a period of at least 10 years as Examiner or Controller or both shall be deemed to have passed the qualifying examination.]

1. Ins. by S.O. 41](E), dt. 2.6-1999, w.e.f 2.6.1999

96. Registration of patent agents. - After a candidate passes the qualifying examination specified to rule 95 and after obtaining any further information which the Controller considers necessary he shall, on receipt of the fee specified therefor in the First Schedule, enter the candidate’s name in the register of patent agents and issue to him a certificate of registration as a patent agent.

97. Details to be included in an application for the registration of a patent agent. - An application by a person entitled to be registered as a patent agent under sub-section (2) of section 126 shall be made in 1 [Form 23] in duplicate and shall be accompanied by a statement giving information regarding his practice as patent agent before the lst November, 1966 and a list of applications in respect of which he has filed complete specifications before the said date.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

98. Registration of patent agents under an section 126(2). - On receipt of application for the registration of a person as a patent agent under rule 97, the Controller may if he is satisfied that the said person fulfils the conditions specified in sub-section (2) of section 126 enter his name in the register of patent agents.

99. Disqualifications for registration as a patent agent. - A person shall not be eligible to be registered as a patent agent, if he-

(i) Has been adjudged by a competent court to be of unsound mind;

(ii) Is an undischarged insolvent?

(iii) Being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;

(iv) Has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government has, by order in his behalf, removed the disability;

(v) Being a legal practitioner has been guilty of professional misconduct; or

(vi) Being a chartered accountant has been guilty of negligence or misconduct.

100. Payment of fees. - The continuance of a person’s name in the register of patent agents shall be subject to the payment of the fees specified therefor in the First Schedule.

101. Deletion of a name from the register of patent agents. -

(1) The Controller may delete from the register of patent agents the name of any patent agent-

(a) From whom a request has been received to that effect; or

(b) When he is dead; or

(d) If he has defaulted in the payment of fees specified in Rule 100, by more than three months after they Are due.

(2) The deletion of the name of any person from the register of patent agent shall be notified in the Official Gazette and shall be communicated to the person concerned.

102. Restoration of names of persons removed from the register of patent agents-

(1) An application for the restoration of the name of any person removed from the register of patent agents under sub-section (2) of section 130 shall be made in 1 [Form 24] in triplicate within six months from the date of such removal

(2) If the name of a person is restored to the register of patent agents, his name shall be continued therein for a period of one year from the date on which his last annual fee became due.

(3) The restoration of a name to the register of patent agents shall be notified by the Controller in the Official Gazette and communicated to the person concerned.

1. Subs. by S.O. 411 (E), dt. 2.6.1999, w.e.f. 2.6.1999.

103. Alteration of names etc. in the register of patent agents. -

(1) A patent agent may apply 1[***] in triplicate for the alteration of his name, address of the principal place of business and branch offices, if any, or the qualifications entered in the register of patent agents. On receipt of such application and the fee specified therefor in the First Schedule, the Controller shall cause the necessary alterations to be made in the register of patent agents.

(2) Every alteration made in the register of patent agents shall be notified in the Official Gazette.

1. Some words omitted by S.O 411 (E), dt. 2.6.1999 w.e.f. 2.6.1999

104. Refusal to recognise as patent agent. - If the Controller is of the opinion that any person should not be recognised a patent agent in respect of any business under the Act as provided in sub-section (1) of section 131 thereof he shall communicate his reasons to that person and direct him to show cause why he should not refuse to recognise him as such agent, within such time as he may allow, and after considering the reply, if any, of that person and giving him an opportunity of being heard, the Controller may pass such orders as he may deem fit.

105. Publication of the names of patent agents, registered under the Act. - The names and addresses of persons registered as patent agents shall from time to time be published in the Official Gazette, newspapers, trade journals and in such other manner as the Controller may deem fit.

CHAPTER XIV

MISCELLANEOUS

106. Address of all communications. - All communications in relation to any proceeding under the Act or these rules shall be addressed to the Controller of Patents at the appropriate office.

107. Correction of clerical errors. - A request for the correction of a clerical error in any document referred to in section 78 1 [***] shall be accompanied by two in copies of the document indicating the corrections required clearly in red ink along with the fees payable therefor as specified in the First Schedule;

1. Some words omitted by S.O 411 (E), dt. 2.6.1999 w.e.f. 2.6.1999

108. Manner of advertisement of the proposed correction of any error. - Where the Controller requires a notice of the nature of the proposed correction to e advertised, the request and the nature of the proposed correction shall be published in the Official Gazette and the person making the request shall also serve copies of the request and the copies of the document showing the proposed corrections to such persons who, in the Opinion of the Controller, may be interested.

109. Manner and time of opposition to the making of corrections. -

(1) Any person interested may, at any time, within three months from the date of the advertisement of the request for correction in the Official Gazette give notice of opposition to the Controller in 1 [Form 14] in duplicate.

(2) Such notice of opposition shall be accompanied by a statement in duplicate setting out the nature of the opponent’s interest, the facts on which he relies and the relief which he seeks.

(3) A copy of the notice and of the statement shall be sent by the Controller to the person making the request.

(4) The procedure specified in rules 37 to 45 relating to the filing of reply statement, leaving evidence and hearing shall, so far as may be, apply to the hearing of the opposition under section 78 as they apply to the hearing of the opposition to the grant of patents.

1. Subs. by S.O. 411 (E), dt. 2.6.1999 w.e.f. 2.6.1999.

110. Notification of corrections. - The Controller shall notify the person making a request for the correction and the opponent, if any, of the corrections made in the relevant document.

111. Form etc., of affidavits. -

(1) The affidavits required by the Act or these rules to be filed at the Patent Office or furnished to the Controller shall be headed in the matter or matters to which they relate, shall drawn up in the first person, shall be divided into paragraphs consecutively numbered, and each paragraph shall as far as practicable, be confined to one subject. Every affidavit shall contain the description and place of residence of the person making the affidavit and shall bear the name and address of the person making it and, if the affidavit is made on behalf of any other person, it shall state the name of that person on whose behalf it is made.

(2) Where two or more persons join in an affidavit, each of them shall depose separately to such facts, which are within his personal knowledge, and those facts shall be stated in separate paragraphs.

(3) Affidavits shall be confined to such facts, as the deponent is able of his own knowledge to prove except in interlocutory matters, where statements of belief of the deponent may be admitted, provided that the grounds thereof are given.

(4)Affidavits shall be sworn to as follows: -

(a) In India. - Before any court or person having by law authority to receive evidence, or before any officer empowered by such court as aforesaid to administer oaths or to take affidavits;

(b) In any country or place outside India. - Before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 (41 of 1948) in such country or place or before a notary of the country or place, recognised by the Central Government under section 14 of the Notaries Act, 1952 (53 of 1952), or before a judge or magistrate of the Country or place.

(5) The person before whom an affidavit is sworn to shall state the date on which and the place where the same is sworn to and shall affix thereto his seal, if any, or the seal of the court if the affidavit is sworn to before the court or an officer empowered by that court and sign his name and state his designation and address at the end thereof.

(6) Any affidavit purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised under sub-rule (4), in testimony of the affidavit having been sworn to before him, may be admitted by the Controller without proof of the genuineness of the seal or signature, or of the official position of that person.

(7) Alterations and interlineations shall, before an affidavit is sworn to or affirmed be authenticated by the initials of the person before whom the affidavit is sworn to.

(8) Where the deponent is illiterate, blind or unacquainted with the language in which the affidavit is written, a certificate by the person before whom the affidavit is sworn to, to the effect that the affidavit was read, translated or explained in his presence to the deponent, and that the deponent seemed perfectly to understand it and has signed the affidavit or affixed his mark in his presence, shall be attached at the end of the affidavit.

(9) Every affidavit filed before the Controller in connection with any proceedings under the Act or these rules shall be duly stamped under the provisions of any law for the time being in force.

112. Exhibits. - Where there are exhibits to be filed in an opposition or any other proceedings a copy or impression of each exhibit shall be supplied to the other party at his request and expense; if copies or impressions of the exhibits cannot conveniently be furnished, the originals shall be left with the Controller for inspection by the person interested by prior appointment. The exhibits in original if not already left with the Controller shall be produced at the hearing.

113. Directions not otherwise prescribed. -

(1) Where for the proper prosecution or completion of any proceedings under the Act or these rules, the Controller is of opinion that it is necessary for a party to such proceedings to perform an act, file a document or produce evidence, for which provision has not been made in the Act or these rules, he may, by notice in writing, require such party to perform the act, file the document or produce the evidence specified in such notice.

(2) Where an applicant or party to a proceeding desires to be heard or not, the Controller may, at any time, require him to submit his statement in writing giving such information as the Controller may deem necessary within the time specified by him.

114. Exercise of discretionary power by the Controller. – Before exercising any discretionary power under the Act or these rules adversely to an applicant for a patent or a party to a proceeding the Controller shall give such applicant or party, a hearing, after giving him at least ten days notice of such hearing.

115. Application for review of decisions or setting aside of orders of the Controller. -

(1) An application to the Controller for the review of his decision under clause (f) of sub-section (1) of section 77 shall be made in 1 [Form 25] in duplicate within one month from the date of communication of such decision to the applicant or within such further period not exceeding one month thereafter as the Controller may on a request made in 1 [Form 4] allow and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, the said application and statement shall be left in triplicate.

The Controller shall, forthwith transmit a copy of each of the applications and the statement to the other person concerned.

(2) An application to the Controller for setting aside an order passed by him ex parte under clause (g) of sub-section (1) of section 77 shall be made in 1 [Form 25] in duplicate within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller may on a request made in 1 [Form 4] allow and shall be accompanied by a statement setting forth the grounds on which the application is based. Where the order concerns any other person in addition to the applicant, the application and the statement shall be left in triplicate. The Controller shall, forthwith transmit a copy each of the applications and the statement to the other person concerned.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f 2.6.1999.

116. Manner of payment of compensation. -

(1) The compensation in respect of acquisition of an invention or patent by the Central Government under section 102 of the Act shall be payable by that Government in a lump sum, if the amount of compensation does not exceed 1[one lakh rupees] and if such amount exceeds 1[one lakh rupees] the amount over and above the said amount of 1[one lakh rupees] shall be payable in five equal annual instalments.

(2) If the compensation payable in a lump sum or any of the instalments thereof referred to in sub-rule (1) is not paid within thirty days of the date on which the amount of instalments is due, if any, the Central Government shall be liable to pay simple interest at the rate of 9 percentper annum reckoned from the day immediately following the date of expiry of the said period of thirty days.

1. Subs. by S.O. 411(E), dt. 2.6.1999, for “Rs 10,000”, w.e.f 2.6.1999.

117. Form and manner in which statements required under section 146 (2) to be furnished. -

(1) The statements which shall be furnished by every patentee and every licencee under sub-section (2) of section 146, shall be 1[***] duly verified by the patentee or the licensee or his authorised agent.

(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

(3) The Controller may publish the information received by him under subsection (1) or sub-section (2) of section 146 in the Official Gazette and such newspapers and trade journals as he may deem fit.

1. Omitted by S.O 411 (E), dt. 2.6.1999 w.e.f 2.6.1999.

118. Form of application for the issue of a duplicate patent. - An application for the issue of a duplicate patent under section 154 1[***] shall contain a statement setting out the circumstances in which the patent was lost or destroyed or cannot be produced together with the fees as specified therefor in the First Schedule.

1. Omitted by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

119. Supply of certified copies and certificates. - Certified copies of any entry in the register, or certificates of, or extracts from, patents, specifications and other public documents in the patent office, or from registers and other records kept there, may be furnished by the Controller on a request thereof made to him and on payment of the fee specified therefor in the First Schedule.

120. Request for information under section 153. -

(1) A request for information in respect of the following matters relating to any patent or application for a patent shall be made in [respect of]: -

(a) As to when a complete specification following a provisional specification has been filed or an application for patent has been deemed to have been abandoned;

1 [(aa) As to when the examination report has been issued for the first time.]

(b) As to when a complete specification has been accepted or when an application for patent has been refused;

(d) As to when a renewal fee has been paid;

(e) As to when the term of a patent has expired or shall expire;

(f) As to when an entry has been made in the register or application has been made for the making of such entry; or

(g) As to when any application is made or action taken involving an entry in the register or advertisement in the Official Gazette, if the Nature of the application or action is specified in the request.

(2) Separate request shall be made in respect of each item of information required.

(3) The fees payable on a request to be made under section 153 shall be as set out in the First Schedule.

1. Ins. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

121. Agency. -

(1) The authorisation of an agent for the purposes of the Act and these rules shall be in 1[Form 26] or in the form of a power of attorney.

(2) Where any authorisation has been made under sub-rule (1) service upon the agent of any document relating to any proceeding or matter under the Act or these rules shall be deemed to be service upon the person so authorising him; all communications directed to be made to a person in respect of any proceeding or matter may be addressed to such agent, and all appearances before the Controller relating thereto may be made by or through such agent.

(3) Notwithstanding anything contained in sub-rules (1) and (2), the Controller may, if it is considered necessary, require the personal signature or presence of an applicant, opponent or party to such proceeding or matter.

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

122. Scale of costs. -

1 [(l)] In all proceedings before the Controller, he may, subject to rule 46, award costs, as he considers reasonable, having regard to all the circumstances of the case.

Provided that the amount of costs awarded in respect of any matters set forth in the Fourth Schedule shall not exceed the amount specified therein.

2 [(2) Notwithstanding anything contained in sub-rule (1), the Controller may, in his direction award a compensatory cost in any proceeding before him which in his opinion is false or vexatious.]

1. Original rule renumber as sub-section (1) by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

2. Ins. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

123. Powers of Controller generally. - Any document for the amendment of which no special provision is made in the Act may be amended and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person, may be corrected if the Controller thinks fit and upon such terms as he may direct.

1 [124. Power to extend time prescribed. –

(1) The time prescribed by these rules for doing of any act or the taking of any proceeding thereunder may be extended by the Controller if he thinks it fit to do so and upon such terms as he may direct, provided that one such extension shall normally be granted by the Controller in every matter before him.

(2) Any request for extension of time made under these rules shall be made within the extendable period by request unless otherwise provided in these rules.]

1. Subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

125. Hearing before the Controller to be in Public in certain cases. - Where the hearing before the Controller of any dispute between two or more parties relating to an application for a patent or to any matter in connection with a patent takes place after the date of the publication of the complete specification, the hearing of the dispute shall be in public unless the Controller, after consultation with the parties to the dispute who appear in person or are represented at the hearing, otherwise directs.

126. Repeal and Amendment of the Indian Patents and Designs Rules, 1933. - The Indian Patents and Designs Rules, 1933, in so far as they relate to patents are hereby repealed, that is to say, the said rules shall stand amended in the manner specified in the Fifth Schedule.

1 [THE FIRST SCHEDULE

[See rule 7]

FEES

1. The First Schedule subs. by S.O. 411 (E), dt. 2.6.1999, w.e.f. 2.6.1999.

No. of entry

On what payable No. of the relevant from

Amount of fees (in rupees) For individual (s)

For legal entity

Other than

Individual (s)

either alone or

jointly with other

(s) 1. 2. 3. 4. 5. 1. On application for a patent under

section 5(2), 7, 54 or 135 accompanied by provisional / complete specification.

1 1,500 5,000

2. (i) On filling complete specification in respect of application for patents for which provisional specification filed before the commencement of the Patents (Amendment) Rules, 1999

(ii) On filing complete specification after provisional

1400

No fee

4900

No fee

3. On filing a statement and undertaking under section 8.

3 No fee No fee

4. On request for extension of time under sections 9(l), 21(2), 25(l), 28(4), 43(3) or 53(3) and rules14(5), 24, 34(l), 48, 56(3) or 115.

250

per month

1,000 per month

5. On filing a declaration as to inventorship under rule 14(5).

No fee

500

No fee

2,000 6. On application for post dating

7. On application for deletion of reference under section 19(2).

500

2,000

2,000 8. (i) On claim under section 20(n( �

(ii) On request for direction under section 20(4) or 20(5).

6 500 2,000

9. On request for postponement of acceptance of complete specification under section 22.

- 500 2,000

10. On notice of opposition to grant of patent.

7 1,500 5,000

11. On giving notice that hearing before Controller will be attended.

- 1,500 5,000

12. On application under sections 28(2), 28(3) or 28(7).

8 500 2,000

13. On request for sealing of a patent under section 43.

9 1,500 5,000

14. On application under section 44 for amendment of patent.

10 1,500 5,000

15. On application for directions undersections5l (l) or 51(2).

11 500 2,000

16. On request for grant of a patent under section 52(2).

12 1,500 5,000

17. On request for converting a patent of addition to an independent patent under section 55(l).

- 500 2,000

18. For renewal of a patent under section 53.

(i) Before the expiration of the 2nd year from the date of patent in respect of 3rd year.

- 600 3,200

(ii) Before the expiration of the 3rd year in respect of the 4th year.

- 600 3,200

(iii) Before the expiration of the 4th year in respect of the 5th year.

- 600 3,200

(iv) Before the expiration of the 5th year in respect of the 6th year.

- 600 3,200

(v) Before the expiration of the 6th year in respect of the 7th year.

- 1,500 4,500

(vi) Before the expiration of the 7th year in respect of the 8th year.

- 1,500 4,500

(vii) Before the expiration of the 8th year in respect of the 9th year.

- 1,500 4,500

(viii) Before the expiration of the 9th year in respect of the 10th year. - 1,500 4,500

(ix) Before the expiration of the 10th year in respect of the 11th year.

- 3,500 10,000

(x) Before the expiration of the l1th year in respect of the 12th year. -

3,500 10,000

(xi) Before the expiration of the 12th year in respect of the 13th year.

- 3,500 10,000

(xii) Before the expiration of the 13th year in respect of the 14th year.

- 3,500 10,000

19. On application for amendment of application for patent/complete specification under

Section 57.

13 (i)Before acceptance 700 2,500 (ii) After acceptance 1,000 6.000

20. On notice of opposition to an application under section 57, 60, 92(2), 93(5) or to surender a patent under section 63 or to a request under section 78(5) or section 93(5)

is modified by section 24C.

14 1,500 5,000 21. On application for restoration of a

patent under section 60. 15 1,500 5,000

22. Additional fee for restoration - 3,000 10,000

23. On notice of offer to surrender a patent under section 63.

- 1,000 3,000

24. Application for registration of a document in the register of patent under section 68 in

respect of each patent.

16 700 3,000

25. On application for the entry in the register of patent of the name of a person entitled to a patent or as a share or as a mortgagee or as licensee or as otherwise or for the entry in the Register of Patents of notification of a document under

17 700 3,000

sections 69(l) or 69(2) and rule 74(l), 74(2) or 74(3) in respect of each patent.

26. On application for alteration of an entry in the register of patents or register of patent

agent under rule 78(l) or rule 103.

- 200 500

27. On request for entry of an additional address for service in the Register of Patents

under rule 78(3)

- 700 2,500

28. On application for Compulsory license under sections 84(l), 96(l), 97(l) and sections 84(l) and 97(l) is modified by section 24C.

18 1,500 5,000

29. On application by Central Government for endorsement of Patent under Section 86(l)

19 - 5,000

30. On application for revocation of a patent under section 89(l), and section 89(l) as modified by section 24C

20 1,500 5,000

31. On application for settlement of terms of license or for revision of terms and conditions of license under sections 88(2) or 93(5) and section 93(5) as modified by section 24C.

21 1,500 5,000

32. On application for permission of working a patented invention under section 88(4)

22 1,500 5,000

33. On application for registration as a patent agent under rules 94 or 97

23 1,000 -

34. On request for appearing in the qualifying examination under rule 95.

- 200 -

35. For registration of a person as a patent agent under rule 94 or 97.

- 1,000 -

36. For continuance of the name of a person in the register of patent agent.

- - -

(i) For the lst year to be paid along with registration

- 500 -

(ii) For every year excluding the lst year to be paid on the 1st April in each year.

- 500 -

37. On application for restoration of the name of a person in the Register of Patent Agents under

Rule 102

24 1,000(Plus continuation fee under entry number 36)

38. On a request for correction of clerical error under section 78(l)

- 500 1,500

39. On application for review or setting aside the decisions/order of the controller under sections

77(l)(f) or 77(l)(g).

25 700 2,500

40. On statement regarding working of a patented invention on a commercial scale in India under section 146(2).

- No fee No fee

41. On application for duplicate Patent under section154

- 1,000 3,000

42. On request for certified copies under section 72 or for certificate under section 147.

- 700 2,500

43. For certifying office copies, MSS or printed each.

- 200 500

44. On request for inspection of register under section 72.

- 200 500

45. On request for information under section 153.

- 300 1,000

46. On form of authorisation of patent agent.

26 No fee No fee

47. On petition not otherwise provided for.

- 1,000 3,000

48. For supplying of Xerox copies of the documents per page.

- 10 10

49. Transmittal fee for International application.

- 1,500 5,000

50. For preparation of certified copy of priority document and for transmission of the same to the International Bureau.

- 1,000 3,000

51. National fee in respect of International application

- 1,500 5,000

52. On request for grant of exclusive marketing right under section 24B.

27 25,000 75,000

53. On application for compulsory license under rule33-1.

18 25,000 75,000

54. On application for revocation of exclusive marketing right under rule 33-I

20 1,500 5,000

55. On notice of opposition to application under rule 33K or rule 33N.

14 10,000 30,000

56. On application for revision of terms and conditions of License under rule 33M.

21 10,000 30,000

57. On request for inspection of Register of exclusive marketing right.

- 200 500

58. On request for supply of Certified copy of the entry in the Register of exclusive marketing right.

- 700 2,500]

1 [THE SECOND SCHEDULE

(See rule 8)

FORMS

LIST OF FORMS

1. The Second Schedule subs. by S.O. 411 (E), dt. 2.6.1999, w.e.f 2.6.1999

Form No.

Section and Rule Title

1. 2. 3.

1. Sections 5(2), 7, 54 or 135 and rule 33A.

Application for grant of a Patent.

2. Section 10. Provisional/Complete Specification.

3. Section 8 and rule 13. Statement and undertaking.

4. Sections 9(l), 21(2), 25(l), 26(4), 43(3) or 53(3) and rules 14(5), 24, 34(l), 48, 56(3) or 115.

Request for extension of time

5. Section 10(6) and to rule 14(5). Declaration as inventorship.

6. Sections 20(l), 20(4) or 20(5) and rules 29(l), 30 or 31

Claim or request regarding any change in applicant for patent.

7. Section 25 and rule 35. Notice of opposition to grant of a patent. 8.

Sections 28(2), 28(3) or 28(7) and rules 49, 50, 51.

Request or claim regarding invention of inventor as such in a patent.

Section 43 and rule 56(l) Request for sealing of a patent. 10. Section 44 and rule 58. Application for amendment of patent.

11. Sections 51(l), 51(2) and rules 59, 60.

Application for direction of the controller.

12. Section 52 (2) and rule 62. Request for grant of patent.

13. Section 57 and rule 65(l) Application for amendment of the application for patent/Complete

specification.

14. Sections 24C, 57, 60, 63, 78(5), 92 or 93(5) and rules 33K, 33N, 65(3), 69, 71(3), 82, 87(3) or 109 and sections 92 and 93(5) as modified by section 24C.

Notice of opposition to amendment/ Restoration/Surrender of Patent/ Grant of compulsory license or revision of terms thereof or to a correction of clerical errors.

15. Section 60 and rule 68. Application for restoration of patents.

16. Section 68 and rule 73. Application for registration of a document.

17. Sections 69(l) or 69(2) and rules 74(l)(a), 74(l)(b), 74(l)(c) 74(2)(a), 74(2)(b) or 74(3)

Application for registration of title/ Interest in a patent or share in it or registration of any document purporting to affect proprietorship of the patent.

18. Sections 84, 96 or 97 and rules 33-I, 80, and sections 84 and 97 as modified by section 24C.

Application for compulsory license.

19. Section 86(l) and rule 80. Application by Central Government for Endorsement of Patent.

20. Section 89(l) and rules 33-1 or 80, and section 89(l) as modified by section 24C.

Application for Revocation of a Patent.

21. Sections 88(2), 93(5) and rules 83, 86 and section 93(5) as modified by section 24C.

Application for settlement/ revision o terms and conditions of license.

22. Section 88(4) and rule 84. Permission to work the patented invention.

23. Rules 94, 97 Application for registration of Patent Agent.

24. Rule 102 Application for the restoration of the name in the register of Patent Agents

25. Sections 77(l) (f), 77(l) (g) and rules 115 (l) or 115 (2)

Application for review/setting aside controller’s decision/order.

26. Sections 127, 132 and rule 121. Form of authorisation of a Patent Agent/or any person in a matter or proceeding under the Act.

27. Section 24B. Request for grant of exclusive marketing rights.

28. Rule 33H Form for the grant of exclusive marketing rights.]

1 [FORM 1

THE PATENTS ACT, 1970

(39 OF 1970)

APPLICATION FOR GRANT OF A PATENT

[See sections 5(2), 7, 54 and 135 and rule 33A]

1. Form 1 to Form 28, subs. by S.O. 411 (E), dt. 2.6.1999, w.e.f 2.6.1999.

1. I/We, 1……

(a) 2………………………………………………………………….

(b) 3…………………………………………………………………..

2. hereby declare-

(a) That I am/we are in possession of an invention titled

(b) That the Provisional/Complete Specification relating to this invention is filed with this application.

3. Further declare that the inventor(s) for the said invention is/are 5……………………

(a) 6…………………………………………………………………………..

(b) 7…………………………………………………………………………..

4. I/We claim the priority from the application(s) filed in convention countries, particulars of which are as follows: 9……………………………………………………………………

(a) 10………………………………………………………………………………..

(b) 11…………………………………………………………………………………

(d) 13…………………………………………………………………………………

(e) 14…………………………………………………………………………

5. I/We state that the said invention is an improvement in or modification of the invention, the particulars of which are as follows and of which I/We are the applicant/patentee:

(a) 15…………………………………………………………………………….

(b) 16…………………………………………………………………………….

6. I/We state that the application is divided out of my/our application, the particulars of which are given below and pray that this application deemed to have been filed on……………………………….under section 16 of the Act.

(a) 17……………………………………………………………………………….

(b) 18………………………………and…………………………………………….

7. That I am / We are the assignee or legal representative of the true and first inventors.

8. That my/our address for service in India is as follows: 19………………………………….

9. Following declaration was given by the inventor (s) or applicant (s) in the convention country:

I/We the true and first inventors for this invention or the applicant (s) in the convention country declare that the applicant (s) herein is/are my/our assignee or legal representative 20………….

(a) 6, 13 ………………………………………………………………………………………..

(b) 7 …………………………………………………………………………………………..

( ) 21

10. That to the best of my/our knowledge, information and belief the fact and matters stated herein are correct and that there is no lawful ground of objection to the grant of patent to me / us on this application.

11. Following are the attachment with the application:

(a) Provisional/Complete specification (3 copies).

(b) Drawings (3 copies).

(d) Statement and Undertaking on FORM-3.

(e) Power of authority.

(f) ……………………………………..

(g) ……………………………………..

(h) ……………………………………

(i) Fee Rs ……………in cash/cheque/bank draft bearing No. ……………….

Date……………on……………………..Bank.

I/We request that a patent may be granted to me/us for the said invention.

Dated this………… day of 19…….. /20………

Signature22

( ) 23

The Controller of Patents

The Patent Office,

at ……………………

Note: (a) Strike out whichever is inapplicable.

(b) Fee: See the First Schedule.

1. Repeat the columns (a) to (c) if there are more than one applicant.

2. Insert the name in full. The family or principal name in the beginning if the applicant is a natural person.

3. Insert the complete address including postal index number/Code and State and/or Country

4. Insert the nationality.

5. Repeat the columns (a) to (c) if there are more than one inventor.

6. Insert the name in full. Family or principal name in the beginning.

7. Insert the complete address including the postal code, state and/or country.

8. Insert the nationality.

9. Repeat the columns (a) to (e) if there are more than one applications.

10. Name of the country.

11. Application Number.

12. Date of application.

13. Application in convention country.

14. Title of the invention in the convention country.

15. Application number of patent number.

16. Date of application or date of patent.

17. Application number including published serial number, if any.

18. Date of filing of provisional specification and/or complete specification.

19. Complete address including postal index number/code and state along with Telephone and Telefascimile number (s).

20. Repeat the columns (a) to (c) if necessary.

21. Signature of the true and first inventor (s) or applicant in the convention country with date.

Name of the natural person should also be given below the signature.

22. To be signed by the applicant (s) or if the applicants (s) is/are absent, by an authorised patent agent.

23. Name of the natural person who has signed.

FORM 2

THE PATENTS ACT, 1970(39 of 1970)

PROVISIONAL/COMPLETE SPECIFICATION

[See section 10]

1. 1 ……………………………………………………………………

2. 2(a) 3 …………………………………………………………………

(b) 4 …………………………………………………………………

The following specification (particularly)6 …………. describes6 ……… the nature of the invention and the manner in which it is to be performed6………..

3. 7 ………………………………………………………………………

4. I/We claim: 8 …………………………………………………

Dated this………… day of 19 ………/20………………..

Signature9

( ) 10

5. 11.... ...... ……………... (Abstract of the invention)

The Controller of Patents

The Patent Office,

At …………………

Note: Strikeout whichever is inapplicable.

1. Title of the invention.

2. Repeat the columns (a) to (c) if there are more than one applicant.

3. Insert the name in full. The family or principal name in the beginning if the applicant is a natural person.

4. Insert the complete address including postal index number/code, State and country.

5. Insert the nationality.

6. Strike out in case of provisional specification.

7. Description of the invention.

8. Inapplicable in case of provisional specification.

9. To be signed by the applicant or his authorised registered patent agent.

10. Name of the natural person who has signed.

11. (a) Not applicable in case of provisional specification.

(b) Separate sheet to be used for this column.

FORM 3

THE PATENTS ACT, 1970

(39 of 1970)

STATEMENT AND UNDERTAKING UNDER SECTION 8

[See rule 13]

I/We 1………………………………………………………………

I hereby declare:

(i) That I/We who have made this application alone/ jointly with2 ………………………….. .............................................................., made for the same invention application (s) for patent in the other countries, the particulars of which are given below:

Name of the

Country

Date of

application

Application No.

Status of the application

Date of publication

Date of

grant.

(ii) That the rights in the application (s) has/have been assigned to 3…………………

...............................................................................................................................

(iii) That I/We undertake that upto the date of acceptance of the complete specification by the controller, I/We would keep the controller informed in writing the details regarding corresponding applications for patents filed outside India within three months from the date of filing of such application.

Dated this………….. day of 19……………………………… /20…………

Signature4

( )5

The Controller of Patents,

The Patent Office,

At…………………

1. Name, address and nationality of the applicant.

2. Name, address and nationality of the person.

3. Name, and address of the assignee.

4. To be signed by the applicant or his authorised registered patent agent.

5. Name of the natural person who has signed.

FORM 4

THE PATENTS ACT,1970

(39 OF 1970)

REQUEST FOR EXTENTION OF TIME

[See sections 9 (1), 21 (2), 25 (1), 26 (4), 43(3) and 53 (3) and rules 14 (5), 24, 34 (1), 48,56 (3) and 115]

I/We1…………………………………………………………………………………………

……………………………………………………………………hereby request for extension of time for……………………..months under

Section/Rule………………………………………………

The reasons for making the request are as follows:

…………………………………………………………………………………………………

……………………………………………………………

Dated this…………………day of 19………………../20…………

Signature2

( )3

The Controller of Patents,

The Patent Office,

At………………

Note: Fee: See the First Schedule.

1. Name, address and nationality.

2. To be signed by the applicant or authorised registered patent agent.

3. Name of the natural person who has signed.

FORM 5

THE PATENTS ACT, 1970

(39 of 1970)

DECLARATION AS TO INVENTORSHIP

[See rule 14 (5) ]

I/We1………………………………………………………………………………………

Hereby declare that the true and first inventor (s) of the invention disclosed in the complete specification filed in pursuance of my/ our application numbered……………….. dated………… is/ are2 :

(a) 3……………………………………………………………………………………

(b) 4……………………………………………………………………………………

Dated this……….day of 19…………./20…………..

Signature6

( )7

If any person named as inventor at above is not so named in the application, he must sign the following statements:-

I assent to the invention referred to in the above declaration, being included in the complete specification filed in pursuance of the stated application.

Signature 8

( )7

The Controller of Patents,

The Patent Office,

At………………..

Note: Strike out whichever is inapplicable.

1. Name (s) of the applicant (s)

2. Repeat the columns (a) to (c) if there are more than one inventor.

3. Insert the name in full. The family name or principal name in the beginning

4. Insert the complete address.

5. Insert the nationality.

6. To be signed by the applicant or his authorised registered patent agent.

7. name of the natural person who has signed.

8. To be signed by the inventor.

FORM 6

THE PATENTS ACT,1970

(39 of 1970)

CLAIM OF REQUEST REGARDING ANY CHANGE IN APPLICANT FOR PATENT

[ See sections 20 (1) 20 (4) and 20 (5) and rules 29 (1), 30 and 31)

I/we 1………………………………………………………

(a) 2…………………………………………………………

(b) 3…………………………………………………………

hereby request that the application for patent No. …………..dated..............made

by 5 ……………may proceed in my/our name and further request that direction of the Controller, if necessary be made in that effect.

Reasons for making the above request are as follows :-

........................................................................................................................................

I furnish the following document (s) in support of my above request:

6................................…………………………………………………………………

(a) 7……………………………………………………………………………….

(b) 7 ……………………………………………………………………………….

My/Our address for service in India is: 8…………………………………………

Dated this……..day of 19………../20

Signature9

( )10

The Controller of Patents,

The Patent Office,

At………………….

N.B.: This form is not applicable for mere change of name.

Note: (a) Strike out whichever is inapplicable.

(b) See the first schedule.

1. Repeat the columns (a) to (c) if there are more than one applicant.

2. Insert the name in full. The family name or principal name in the beginning if the applicant is a natural person.

3. Insert the complete address including postal index number/code and state and/or country.

4. Insert the nationality.

5. State the name of the applicant (s) for patent.

6. Original and certified copies of the documents shall accompany the claim or request.

7. Insert the details of the documents.

8. Complete address including postal index number/code and state along with Telephone and telefacsimile number (s).

9. To be signed by the applicants (s) or authorised registered patent agent.

10. Name of the natural person who has signed.

FORM 7

THE PATENTS ACT, 1970

(39 of 1970)

NOTICE OF OPPOSITION TO GRANT OF A PATENT

[See section 25 and rule 35]

I/We1…………………………………………………………………………………… ………………………………………………………………………………………… ….

hereby give notice of opposition to the grant of a patent on application for patent No……. (Serial No. …………. ) Dated………. made by…………on the grounds 2……..

My/Our address for services in India is:

3.....................………………………………………………………………………… ………………………………………………………………………………………… ………………………………………………………………………………………..

Dated this………….. day of 19…………./20……..

Signature4

( )5

The Controller of Patents,

The Patent Office,

At…………………..

Fee: See the First Schedule.

1. State name, address and nationality.

2. State the grounds taken one after another.

3. Complete address including postal index number/code and state along with Telephone and Telefacsimile number.

4. To be signed by the opponent or by his authorised registered patent agent.

5. Name of the natural person who has signed.

FORM 8

THE PATENT ACT, 1970

(39 of 1970)

REQUEST OR CLAIM REGARDING MENTION OF INVENTOR AS SUCH IN A PATENT

[See sections 28 (2), 28 (3) and 28 (7) and rules 49, 50 and 51]

1. I/we 1.............................................................................................................................

……………………………………………………………………………………….

hereby state/claim that the following person (s)/I/We be mentioned as inventor(s) in the patent application No. ……..dated…….. made by

hereby declare that 2 …………………………………………………………………..

………………………………………………………………………………

ought not to have mentioned as inventor in the application for Patent No. ……….dated……………….made by……………………………and I/we hereby apply for a certificate to that effect.

2. A statement setting out the circumstances under which this application is made is attached together with the copy/copies thereof as required under the Rules.

My/Our address for service in India is:

3......................................................................................................................................... .......

..........…………………………………………………………………………………… …..

Dated this…… day of 19………/20……….

Signature4

( )5

The Controller of Patents,

The Patent Office,

At…………………

Note: Fee: See First Schedule.

1. State name, address and nationality of the person making this application.

2. Insert the name, of the person mentioned as inventor.

3. Complete address including postal index number/code and state along with Telephone and Telefacsimile number (s).

4. To be signed by the applicant or his authorised registered patent agent.

5. Name of the natural person who had signed.

FORM 9

THE PATENTS ACT, 1970

(39 of 1970)

REQUEST FOR THE SEALING OF A PATENT

[See section 43 and rule 56 (1) ]

I/We1…………………………………………………………………………………… ….………………………………………………………………………………………

………………………………………………………………………………………….

request that a patent may be sealed on my/our application No……………………..dated …………….Serial No……………and declare that no proceeding in relation to that application is pending before the Controller or the High Court.

That to best of my/our knowledge, information and belief the facts and matters stated herfein are correct and that there is no lawful ground of objection to the grant of a patent to me/us on this application.

Dated this………….. day of 19……………………. /20…………..

Signature2

( )3

The Controller of Patents,

The Patent Office,

At ……………..

Note: Fee: See the First Schedule.

1. State the name of the applicants.

2. To be signed by the applicant or authorised registered patent agent.

3. Name of the natural person who has signed.

FORM 10

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR AMENDMENT OF PATENT

[See section 44 and rule 58]

I/We 1………………………………………………………..

9a) 2…………………………………………………………..

(b) 3……………………………………………………………..

(a) 2………………………………………………………………

(b) 3……………………………………………………………..

Hereby request that Patent No…………………………dated…………………granted to……….. may be amended by substituting my/our name for the name of the grantee and in support to my/our request, I/We furnish the following documents:

……………………………………………………………………………………….

………………………………………………………………………………………

My/ our address for service in India is:

5…………………………………………………………………………………………

…………………………………………………………………………………………

Dated this ……………………..day of 19…………………./20…………………

Signature6

( )6

The Controller of Patents,

The Patent Office

At……………….

Note: Fee: See the First Schedule.

1. Repeat the Columns (a) to (c) if there are more than one applicant.

2. Insert the name in full. Family or principal name in the beginning if the applicant is a natural person.

3. Insert the complete address including postal index number/code and state and /or country.

5. Complete address including postal index number/code and state along with Telephone and Telefacsimile number (s).

6. To be signed by the applicant (s) or authorised registered patent agent.

7. Name of the natural person who has signed.

FORM 11

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR DIRECTION OF THE CONTROLLER

[See section 51(l) and 51(2) and rules 59 and 60.]

I/We 1…………………………………………………………………….

……………………………………………………………………………

hereby apply for the following direction in respect of patent No………………dated…….. granted to…………………………………….

The reasons for making this application are as follows :

……………………………………………………………………………………..

………………………………………………………………………………………

My/our address for service in India is:

2…………………………………………………………………………………

………………………………………………………………………………… ............................................................................................................................

Dated this………… day of 19……………./20………….

Signature3

( )4

The Controller of Patents,

The Patent Office,

At……………….

Fee:See the First Schedule.

1. State the name in full, address and nationality.

2. Complete address including postal index number/code and state along with Telephone and Telefacsimile number (s).

3. To be signed by the applicant (s) or authorised registered patent agent.

4. Name of the natural person who has signed.

FORM 12

THE PATENTS ACT, 1970

(39 of1970)

REQUEST FOR GRANT OF PATENT UNDER SECTION 52 (2)

[See rule 62]

I/We 1……………………………………………………………………

(a) 2…………………………………………………………………….

(b) 3……………………………………………………………………..

hereby declare:

(i) That I/we made a petition under section 64 of the Act before the High Court of 5………. and the details of the patent and the petition are given below.

Patent No.……dated ……….Grantee/Patentee……… Petition No. ……. Dated………..

(ii) That I/we have claimed to be the true and first inventor (s)/assignee (s)/legal representative (s) of 6………………… the true and first inventor of the invention for which the said patent was granted.

(iii) That by an order in the said petition the patent was revoked/the complete specification of the patent was directed to be amended by exclusion of ………….claims thereof.

(iv) That the court ordered to grant to me a patent in lieu of the said patent/part of the invention excluded by the amendment.

(v) That I/we submit a statement and certified copy of the order of the Court in support of my application and request that a patent be granted to me in accordance with the order of the Court.

My/Our address for service India is: 7 ………………………………………………

Dated this………………….day of 19…………./20………………

Signature8

( )9

The Controller of Patents,

The Patent Office,

At…………………

Note: (a) Strike out whichever is inapplicable.

(b) Fee: See the First Schedule.

1. Repeat the columns (a) to (c) if there are more than one applicant.

2. Insert the name in full. Family or principal name in the beginning, if the applicant is a natural person,

3. Insert the complete address including postal/or country.

4. Nationality of the person.

5. Name of the High Court.

6. Name, address and nationality of the true and first inventor.

7. Complete address including postal index number code state along with Telephone and telefacsimile number (s).

8. To be signed by the appliant (s) or authorised registered patent agent.

9. Name of the natural person who has signed .

FORM 13

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR AMENDMENT OF THE APPLICATION FOR PATENT/COMPLETE SPECIFICATION

(See section 5 and 7 and rule 65(l)]

I/We 1............................................................................................................................

…………………………………………………………………………………

Request leave to amend the application/complete specification with respect to application for patent No………………………….dated……………………………. as shown in the red ink in the copy hereto annexed.

My/Our reasons for making this request are as follows: .......................................................................................................................................… …………………………………………………………………………………………..

I/We declare that no action for infringement or for the revocation of the patent in question is pending before a court.

I/We declare that the facts and matters stated herein are true to the best of my/our knowledge information and belief.

Dated this……….day of ……19 /20…

Signature2

( ) 3

The Controller of Patents,

The Patent Office,

At……………………...

Fee:See the First Schedule.

1. Name, address and nationality of the applicant(s).

2. To be signed by the applicant(s) or patentee (s) or if the applicant (s) or patentee(s) is/are absent from India by authorised registered patent agent.

3. Name of the natural person who has signed.

FORAM 14

THE PATENTS ACT, 1970

(39 of 1970)

NOTICE OF OPPOSITION TO AMENDMENT /RESTORATION/SURRENDER OF PATENT/GRANT OF COMPULSORY LICENCE OR REVISION OF TERMS THEREOF OR TO

CORRECTION OF CLERICAL ERRORS

[See sections 57, 60, 63, 78 (5) and 92 and 93 (5) rules 33K, 33N, 65(3), 69, 71(3), 82, 87(3) and 109, and sections 92 and 93(5) as modified by section 24C]

I/We 1………………………………………………………………………………

hereby give notice of opposition:-

to the amendment of the application/specification with respect to application for

Patent No……………….. /dated……………………………..

to the application for restoration of Patent No……………….dated…………………..

to the offer to surrender the Patent No………………….dated……………………….

for the grant of compulsory licence, endorsement of patent or revocation of patent

No………………dated……………….

for the revision of the terms and conditions of licence in respect of Patent

No…………………………..dated…………………………………………………

for correction of a clerical error in Patent No…………..dated………………………..

Specification No……………dated……………….in respect of Patent No…………..

Dated…………or Patent application No………………dated………………………

To grounds in which the said opposition is made are as follows :

.......................................................................................................................................

My/Our address for service in India is: 2……………………………………………….

Dated this…………..day of 19……………../20…………

Signature3

( ) 4

The Controller of Patents,

The Patent Office,

At………………………..

Note: (a) Strike out whichever is inapplicable.

(b) Fee: See the First Schedule.

1. State the name, address and nationality.

2. Complete address including postal index number/code and state along with Telephone and Telefacsimile number(s).

3. To be signed by the opponent or authorised registered patent agent.

4. Name of the natural person who has signed.

FORM -15

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR THE RESTORATION OF PATENT

(See section 60 and rule 681

I/We 1………………………………………………………………………………..

hereby apply for an order of the Controller for the restoration of Patent No………….. dated……………….granted to………………………..

The circumstances, which led to the failure to pay the renewal fee of Rs………………….

(Rupees………………………only) on or before…………………………………are as follows :

...........................................................................................................................................

I/We declare that I/we have not assigned the patent to any other person(s) and that the facts and matters stated herein are true to the best of my/our knowledge information and belief.

Dated this day……………. of 19……………. /20………………

Signature2

( ) 3

The Controller of Patents,

The Patent Office,

At…………………..

Fee: See the First Schedule.

1. Insert the name, address nationality of the applicant.

2. To be signed by the applicant (s) or if the applicant (s) is/are absent from India, by authorised registered Patent agent.

3. Name of the natural person who has signed.

FORM - 16

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR REGISTRATION OF A DOCUMENT

[See section 68 and rule 73]

I/We 1……………………………………………………………………………….

..............................................................................................…………………………… …………………………………………………………………………………………

hereby apply for the registration of a document the details of which are given below,

in respect of Patent No……………….dated……………granted to…………………..

.............................and of which the patentee is…………………………………………

in the register of patents.

Dated this……………day of 19……….. /20………..

Signature2

( ) 3

The Controller of Patents,

The Patent Office,

At…………………….

Fee:See the First Schedule.

1. Insert the name, address and nationality.

2. To be signed by the applicants or authorised registered patent agent.

3. Name of the natural person who has signed.

FORM 17

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR REGISTRATION OF TITLE / INTEREST IN A PATENT OR SHARE IN IT OR REGISTRATION OF ANY DOCUMENT PURPORTING TO AFFECT

PROPRIETORSHIP OF THE PATENT

[See section 69(l), 69(2) and rules 74(l), 74(2) and 74(3)]

I/We 1........................................................................................................................

……………………………………………………………………………………….

Hereby apply that my/our name(s) may be registered in the register of patent as a person entitled to the patent/a share in the patent/an interest in the patent details of which are specified below:

Patent No dated grantee patentee and in proof thereof we transmit the accompanying 2……………….with a certified copy thereof.

Transmit herewith an attested Copy of 2……………………………………………in

Respect of Patent No.(s). ………. Dated…………….granted to……..……….of which

The patentee is………………………………………as well as the original document for

Verification and I/We hereby apply that a notification thereof may be entered in the register of patents.

My/Our address for service in India is:

3......................................................................................................................................

...................................................………………………………………………………

Dated this……………day of 19………… /20………..

Signature4

( ) 5

The Controller of Patents,

The Patent Office,

At………………………

Note:(a) Fee: See the First Schedule.

(b) Strike out whichever is inapplicable.

1. Insert name, address and nationality of the applicant(s).

2. A description of the nature of the document, giving the date and the names, address and nationality of the parties thereto.

3. Complete address including postal code and state along with Telephone and Telefacsimile number(s).

4. To be signed by the applicant or authorised registered patent agent.

5. Name of the natural person who has signed.

FORM-18

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR COMPULSORY LICENCE

[See sections 84(l), 96(l) and 97(i) and rule 33-I, 80 and

sections 84(l) and 97(l) as modified by section 24C]

I/We 1…………………………………………………………………………..

........................................................................……………………………………

hereby apply for the grant of a compulsory licence under Patent No. ..……………

dated………….granted to……………for which the patentee is………………… on the following grounds, namely:

......................................................................................................................................

I/We declare that the facts and matters stated herein are true to the best of my/our knowledge, information and belief.

The details of documentary evidence in support of my/our interest and the grounds stated above are given below: 2……………………

(a) …………………………………………………………………………

(b) …………………………………………………………………………

MY/Our address for service in India is:

3......................................................................................................................................

.......................................………………………………………………………………

Dated this………….day of 19………./20………

Signature4

( ) 5

The Controller of Patents,

The Patent Office,

At……………………….

See the First Schedule.

1. Name, address and nationality of the applicant(s).

2. Certified copies of the documents are to be enclosed in duplicate.

3. Complete address including postal code and state along with Telephone and Telefacsimile number (s).

4. To be signed by the applicant(s) or if the applicant(s) is/are absent from India by authorised registered patent agent.

5. Name of the natural person who has signed.

FORM-19

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION BY CENTRAL GOVERNMENT FOR ENDORSEMENT OF PATENT

UNDER SECTION 86(l)

[See rule 80]

The Central Government hereby applies for an order of the Controller in respect of Patent No………………dated………….granted to………………………………… which the patentee is………………………….for the endorsement of the patent with the words “Licences of Right” on the following grounds, namely:

.................................................................................................................................... ………………………………………………………………………………………

………………………………………………………………………………………

The details of documentary evidence in support of the grounds stated above are

given below: 1…………………………………

(a) ………………………………………………………………………

(b) ………………………………………………………………………

The address for service in India is:

2..................................................................................................……………………

..........……………………………………………………………………………….

Dated this………day of 19…… /20……..

Signature3

( ) 4

The Controller of Patents,

The Patent Office,

At…………………….

Fee:See the First Schedule.

1. Certified copies of all the documents are to be enclosed in duplicate.

2. Complete address including postal code and state along with Telephone and Telefacsimile number (s).

3. To be signed by a competent Officer of Central Government.

4. Name of the natural person who has signed.

FORM-20

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR REVOCATION OF A PATENT

[See section 89(1) and rules 33-I and 80, and section 89(1) is modified by section 24C.]

I/We 1..........................................................................................................................

…………………………………………………………………………………………

hereby apply for revocation of Patent No……………..dated…………………granted to………………………for which the patentee……………..………. is for the following reasons, namely:

2........................................................................................................................................

………………………………………………………………….....................................

The details of documentary evidence in support of my/our interest and the reasons stated above are given below: 3……………………….

(a)………………………………………………………………………………….

(b) …………………………………………………………………………………

(c)…………………………………………………………………………………

I/We declare that the facts and matters stated herein are true to the best of my/our knowledge, information and belief.

My/Our address for service in India is:

4.................................................................................................................................

.........................................………………………………………………………….

Dated this……….day of 19……../20……….

Signature5

( ) 6

The Controller of Patents,

The Patent Office,

At…………………….

Fee: See the First Schedule.

1. Name, address and nationality of the applicant(s).

2. State the nature of the applicant”s interest, the facts on which he relies and the grounds on which the application is made.

3. Certified copies of all the documents are to be enclosed in duplicate.

4. Complete address including postal index number/code and state along with Telephone and Telefacsimile number(s).

5. To be signed by the applicant (s) or if the applicant(s) is/are absent from India, by authorised registered patent agent.

6. Name of the natural person who has signed.

FORM - 21

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR SETTLEMENT / REVISION OF TERMS AND CONDITIONS OF LICENCE

[See sections 88(2) and 93(5) and rules 33M(l), 83 and 86, and

section 93(5) as modified by section 24C.]

I/We 1………………………………………………………………………

hereby declare :

(i) that Patent No………dated………..was grant to………………………….for

which the patentee is…………../myself/us.

(ii) that the said patent has been endorsed with the words “Licences of Rights”

by an order made by the Controller on…………….under section 86.

that the said patent is deemed to have been endorsed with the words “Licence

of Rights” under section 87.

that I/we holding licence under the patent granted by the Controller by an

order dated………………….

(iii) that I/we have requested the said……………….to grant me/us a licence

under the patent,

That……………….has/have requested me/us to grant him/them a licence under the patent. And we are unable to agree on the terms of licence.

(iv) That the terms and conditions settled by the Controller have proved to be more onerous than originally expected and we are unable to work the invention.

(v) That the circumstances in which this application is made are set forth in the accompanying statement in duplicate.

I/We request the Controller to settle/revise the terms and conditions of the licence.

Dated this………day of 19…. /20…

Signature2

( ) 3

The Controller of Patents,

The Patent Office,

At………………….

Note: (a) Fee: See the First Schedule.

(b) Strike out whichever is inapplicable.

1. Name, address and nationality of the applicants.

2. To be signed by the applicants or authorised registered patent agent.

3. Name of the natural person who has signed.

FORM 22

THE PATENTS ACT, 1970

(39 of 1970)

PERMISSION TO WORK THE PATENTED INVENTION

[See section 88(4) and rule 84]

I/We 1…………………………………………………………………………..

hereby apply for permission to work the invention of Patent No……………………

dated…………granted to………..for which the patentee is………………………

(i) The Patent has been endorsed with the words “Licences of Right” under section 86,

The Patent is deemed to be endorsed with the words “Licences of Rights” under Section 87.

(ii) I/We have made a requisition to the patentee under sub-section (1) of Section

88.

I/We have applied to the Controller to settle the terms on……………………………..

(iii) The reasons for making the application are as follows:

..........................................................................................................................

I/We request that I/we may be permitted to work the invention under such terms as the Controller may think to impose.

My/Our address for service in India is:

2...............................................................................................................................….

………………………………………………………………………………………..

Dated this……….day of 19………/20……

Signature3

( ) 4

The Controller of Patents,

The Patent Office,

At……………………..

Note: (a) Fee: See the First Schedule.

(b) Strike out whichever is inapplicable.

1. Name, address and nationality of the applicant(s).

2. Complete address including postal index number/code and state along with Telephone and Telefacsimile number(s).

3. To be signed by the applicant(s) or authorised registered patent agent.

4. Name of the natural person who has signed.

FORM 23

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR REGISTRATION OF PATENT AGENT

[See rules 94 and 97]

I beg to apply for registration as a patent agent under the Patents Act, 1970

A certificate of character1 From……………………………………………………

...................................................................……………………is enclosed herewith.

I hereby declare that I am not subject to any of the disqualifications specified in rule 98 of the Patent Rules 1972 and that the information given below is true to the best of my knowledge and belief.

1. Name 2………………………………………………………………………….

2. Address/place of residence :………………...…………………………… .........................................................................................………………………..

3. Principal place of business :……………………………………………………….

4. Address of the branch office if any………………………………………………..

5. Father’s name :……………………………………………………………………

6. Nationality :……………………………………………………………………….

7. Date and place of birth.:…………………………………………………………..

8. Occupation :……………………………………………………………………..

9. Particulars of qualification for registration as patent agent 3………………………..

(a) ………………………………………………………………………….

(b) ………………………………………………………………………….

Dated this…………day of 19………/20…….

Signature4

( ) 5

1. Certificate testifying to the character of the applicant should be from a person not related to him and being a Gazetted Officer or any other Person whom the Controller thinks fit.

2. Family or principal name in the beginning.

3. Either original certificates and other documents or copies thereof duly attested by the Gazetted Officer or any other person whom the Controller thinks fit must be sent with the application.

4. To be signed by the applicant.

5. Name of the natural person who has signed.

FORM - 24

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR THE RESTORATION OF THE NAME IN THE REGISTER

OF PATENT AGENTS

[See rule 102]

I, .......................................................................................................................... hereby apply for the restoration of my name to the register of patent agent, which was removed on…………………………………………………………..… under section 130 of the Patents Act, 1970. My name was originally entered in the register on……………………………

under No. ……………………………

Dated this…………day of 19……. /20……..

Signature1

( ) 2

The Controller of Patents,

The Patent Office,

At……………………

Free: See the First Schedule.

1. To be signed by the applicant.

2. Name of the natural person who has signed.

FORM - 25

THE PATENTS ACT, 1970

(39 of 1970)

APPLICATION FOR REVIEW/SETTING ASIDE CONTROLLER”S DECISION/ORDER

[See sections 77(l)(f) and 77(1)(g) and rules 115(l) and 115(2)]

In the matter of 1 ........................................................................................................

...............................................................................................................................…

……………………………………………………………………………………..

I/We 2……………………………………………………………………………

..................................................................................................................................

being the applicant(s)/opponent/party in the above matter hereby apply for the

review/setting aside of the Controller’s decision/order dated the ………………in the above matter.

The grounds for making the application are set forth in the accompanying statement in duplicate.

Dated this……….day of 19……./20…….

Signature3

( ) 4

The Controller of Patents,

The Patent Office,

At……………………….

Free: See the First Schedule.

1. State the number of patent or patent application number and the relevant proceeding.

2. Name, address and nationality of the applicant(s).

3. To be signed by the applicant(s) or authorised registered patent agent.

4. Name of the natural person who has signed.

FORM - 26

THE PATENTS ACT, 1970

(39 of 1970)

FORM OF AUTHORISATION OF A PATENT AGENT/OR ANY PERSON IN A MATTER OR PROCEEDING UNDER THE ACT

[See section 127 and 132 and rule 121 ]

I/We 1……………………………………………………………………………

hereby authorise 2…………………………………………………………………

to act on my/our behalf in connection with 3…………………………………………

and request that all notices, requisitions and communication relating thereto may be sent to such person at the above address unless otherwise specified.

I/We hereby revoke all previous authorisation, if any made, in respect of s matter or proceeding.

I/We hereby assent to the action already taken by the said person in the above matter.

Dated this………..day of 19……./20……..

Signature4

( ) 5

The Controller of Patents,

The Patent Office,

At……………………….

To be stamped under the Indian Stamp Act, 1899 (2 of 1899).

1. Insert name, address and nationality.

2. Insert the name, address and nationality of the person(s) to be authorised.

3. State the particular matter or proceeding for which the authorisation is made.

4. To be signed by the person(s) making this authorisation.

5. Name of the natural person who has signed along with designation and official seal, if any.

FORM 27

THE PATENTS ACT, 1970

(39 of 1970)

APPLICAT40N FOR GRANT OF EXCLUSIVE MARKETING RIGHTS UNDER SECTION 24B

(To be made in triplicate)

(See rule 33B)

1. I/We 1…………………………

(a) 2……………………………………………………………………………

(b) 3……………………………………………………………………………

2. hereby declare-

(a) that I am/We are in possession of an invention titled-

5..........…………………………………………………………………………….

(b) that an application for protection of an invention has been made in India the following official date with application number, namely:-

No. 6……………………………………………………………………………..

On ………………………………………………………………………………

(c) that I/We had made an applications for the protection for an identical invention/inventions in the convention country/countries and patent/patents has/have been granted for same invention/inventions, and patent number/ numbers with official date/dates are as follows:

In 10……………………………………………………………………..

No. 8………………………………………………………………………

Dated 9……………………………………………………………………….

(d) that I/We had made an application for protection of a process patent in India

having patent application number……………………………..and a patent thereon

has been granted in India and an application for a patent for a product obtained by that process has been made in India under Rule 33A under

No. 6…………………………………………………………………………

Dated 7…………………………………………………………………………

(e) That I/We have been granted marketing approval for the product of the invention in convention/countries on the basis on appropriate tests conducted after 01-01-1995.

In 10………………………………………………………………………

On 11………………………………………………………………………

By 12………………………………………………………………………

(f) That I/We have obtained approval for marketing of the said product from appropriate authority in India.

For 13……………………………………………………………………….

No. 14……………………………………………………………………….

On 15……………………………………………………………………….

By 12……………………………………………………………………….

(g) That I/We believe that I am/We are entitled to a exclusive marketing right for the said product having regards to the Provisions therefor in the law for the time being in force.

3. I/We requests that I/We may be granted an exclusive marketing right for the said product.

In Support of my/our request I/We hereby furnish the following documents 16………..

(a) …………………………………………………………………………………

(b) …………………………………………………………………………………

4. I/We request that all notices requisition and communications relating to this application my be sent to:

..........................................……………………………………………………………….

Dated this…………day of 19………./20……..

Signature17

( ) 18

The Controller of Patents,

The Patent Office,

At………………………

Note:(a) Strike out whichever is inapplicable.

(b) Fee: See the First Schedule.

1. Repeat the columns (a) to (c) if there is more than one applicant.

2. Insert the name in full. The family or principal name in the beginning if the applicant is a natural person.

3. Insert the complete address including postal index number/code and State and/or country.

4. Insert the nationality.

5. Insert title of the invention.

6. Insert application number of the invention.

7. Insert official date of application made in India.

8. Insert patent number/numbers of convention country/countries in which patent(s) has/have been granted.

9. Insert the official date of patent(s) granted.

10. Insert name of the convention country/countries.

11. Insert official date/dates of marketing approval on the basis of appropriate tests.

12.

13. Insert the name of the product.

14. Insert approval number/numbers obtained from Government of India.

15. Insert official date/dates of approval of Govt. of India.

16. Original or certified copies of all the documents should be furnished.

17. To be signed by applicant(s) or by an authorised Patent Agent.

18. Name of the natural person who has signed.

FORM 28

THE PATENTS ACT, 1970

(39 of 1970)

FORM FOR THE GRANT OF EXCLUSIVE MARKETING RIGHTS

(See Rule 33H)

No. ………………of…………….19…………. /20……………..

Whereas……………………………has declared that he is in possession of an invention For……………………..and that he is a true and first inventor thereof (or the legal representative or assignee of the true and first inventor) and that he his made an application (No. ………………dated…………….) for grant of Patent thereof:

And whereas he has, by an application dated……………….requested that an exclusive marketing rights to sell or distribute in India may be granted to him for his article or substance ………………………….

Now, therefore the said applicant is hereby granted, subject to the provision of the law for the time being enforce, the exclusive rights to sell or distribute the said article/ substance in India by himself, his agents or his licensees.

The exclusive right shall stand terminated at the end of five years from the date grant of exclusive marketing rights, in India or on the date of rejection of application for the grant of patent, whichever is earlier.

In witness thereof, the Controller has caused this exclusive marketing rights to sell or distribute the above-mentioned article/substance granted as of the………….day of….… 19……./20……….

CONTROLLER OF PATENTS

(Seal)

THE THIRD SCHEDULE

FORM OF PATENT

[See rule 57]

GOVERNMENT OF INDIA

THE PATENT OFFICE

No. …………………………….of………………………..19…………

Whereas……………………………….has declared that he is in possession of in invention For…………....and that he is the…………………….true and first inventor thereof (or the legal representative or assignee of the true and first inventor) and that he is entitled to a patent for the said invention, having regard to the provisions of the Patents Act, 1970 and that there is no objection to the grant of a patent to him;

And whereas he has, by an application, requested that a patent may be granted to him for the said invention;

And whereas he has by and in his complete specification particularly described and ascertained the nature of the said invention and the manner in which the same is to be performed;

Now, these presents that the above-said applicant (including his legal representatives and assignees or any of them) shall, subject to the provisions of the Patents Act, 1970 and the conditions specified in section 47 of the said Act, and to the conditions and provisions specified by any other law for the time being in force, have the exclusive privilege of making, using, exercising, selling or distributing any article or substance in India/using or exercising the method or process in India, for a term of five years/seven years/fourteen years from the ………………day of…………….. 19…… and of authorising any other person to do so, subject to the conditions that the validity of this patent is not guaranteed and that the fee prescribed for the continuance of this patent are duly paid.

In witness thereof, the Controller has caused this patent to be sealed as of the ......................... day of……………….19………

Controller of Patents,

Date of sealing………

Note- The fees for renewal of this patent, if it is to be maintained, will fall due on…………….. day of…………..19…………and on the same day in every year thereafter.

1[THE FOURTH SCHEDULE

(See proviso to rule 122)

1. The Fourth Schedule, subs. by S.O. 411(E), dt. 2.6.1999, w.e.f. 2.6.1999.

Number

Of entry

Matter in respect of which cost is to be awarded.

Amount of fees

(in rupees)

For individual (s)

For legal entity other than individual (s) either alone or jointly with other (s).

1. 2. 3. 4. 1. For notice of opposition under section 25, 57,

60, 63, 78, 92(2) or 93(5) and sections 92(2), 93(5) as modified by section 24C.

1,500 5,000

2. For application for compulsory license or endorsement of patents under section 84(1), 86(1), 93(5), 96(1) or 97(1) and sections 84(1), 93(5) and 97(1) as modified by section 24C.

5,000 5,000

For notice of intention to attend the hearing

1,500 5,000

4. Stamp fee for power of attorney, where a patent agent or other person has been appointed or stamp fee in respect of relevant affidavits.

The amount

actually paid

The amount actually paid

5 For written statement under rule 36 or reply statement under rule 37 or for each affidavit, if relevant.

2,500 2,500

6. For each document or publication produced in the proceedings if relevant.

1,000 1,000

7. For each unnecessary or irrelevant affidavit or citation.

1,000 1,000

8. For every day or part day of hearing before the Controller

2,500 2,500]

THE FIFTH SCHEDULE

[See rule 127]

AMENDMENTS TO THE INDIAN PATENTS AND DESIGNS RULES, 1933

1. Rule 1- In sub-rule (1), omit “Indian Patents and”

2. Rule 2-

(i) In clause (a), omit “Indian Patents and”

(ii) In clause (b), omit “an invention or” and “as the case may be”,

(iii) For clause (c), substitute-

“(c) “Controller” means the Controller General of Patents, Design, and Trade Marks, appointed under sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958).”

(jv) For clause (d), substitute-

“(d) “Office” means the patent office referred to in section 74 of the Patents Act, 1970 (39 of 1970).”.

3. Rule 3- In sub-rule (2), Omit “to a patentee or”,, and “register of patents of,,, “as the case may be” and “or notice of Opposition”.

4. Rule 4-Omit “a patentee or”, “patent or the” and “patentee”.

5. Rule 5- In sub-rule (i), Omit “the grant of patents ,and”, patents and” and the proviso.

6. Rule 6- Omit the proviso.

7. Omit Chapter II.

8. Rule 48- for sub-rule (4), substitute,-

“(4) The applicant may, after delivery to him of the copy of the registered proprietor’s counter-statement, leave at the office, evidence by way of affidavits in support of his case and shall also deliver to the registered proprietor a copy thereof.

(5) The registered proprietor may after delivery to him of the applicant’s evidence, leave at the office evidence by way of affidavits in Support of his case and shall also deliver to the applicant a copy thereof.

(6) The applicant may after delivery to him of a copy of the registered proprietor’s evidence leave at the office evidence in reply by way of affidavits and shall also deliver to the registered proprietor a copy of such evidence.

(7) No further statement or evidence shall be left by either party except by leave of or on requisition by the Controller.

(8) Where a document in a language other thin English is referred to in any statement or affidavit filed in connection with in application under section 51A or opposition thereto, an attested translation of that document shall be furnished in duplicate.

(9) The time allowed for filing the counter-, statement or for leaving evidence by way of affidavits shall ordinarily be one month which may be extended only by a special order of the Controller given on a petition made by the art seeking extension of time.

Provided that the extension so granted shall in no case exceed three months in the aggregate.

(10) On completion of the filing of the statement and the evidence referred to in sub-rules (3) to (8) or at such other time is he may decide, the Controller shall appoint a time for the hearing of the application and shall give the parties not less than ten days, notice of such hearing

(11) If either party desires to be heard, he shall give to the Controller a notice in Form 7 of this intention to attend the hearing.

(12) If, at the hearing, either party intends to refer to any publication, he shall give to the Controller and to the other party not less than five days” notice of such intention, together with the details of the publication to which he intends to refer.

(13) After hearing the party or parties desirous of being heard or without a hearing, if neither party desires to be heard or attends the hearing, the Controller shall decide on the application and the opposition, if any, and notify his decision to the parties.”

9. In the heading to Chapter IV, omit “Patents and”.

10. Omit rules 49-51.

11. Rule 53- Omit “patentee or”.

12. Rule 54- Omit “to a patent or”, “patent or” and “ as the case may be”.

13. Rule 56- Omit “of a patent or”.

14. Rule 58- For “registers”, substitute “registers of designs”, and omit “of a patent, or

15. Rule 59- For “Registers of Patents and Designs”, substitute “Register of Designs”.

16. Rule 60- Omit “Patents or”.

17. Rule 61-

(i) Re-number the existing rule as sub-rule (1) thereof, and in sub-rule (1) as so re- numbered, omit “the Register of Patents or” and “and the procedure for the disposal of such opposition shall be regulated by the provisions of rules 20, 21 and 22”;

(ii) After sub-rule (1) as so renumbered, insert-

(2) The opponent shall, within fourteen days of giving notice of opposition, leaving at the office his written statement in duplicate setting out the nature of his interest, the facts upon which he bases his opposition and the relief which he seeks.

(3) The Controller shall furnish the applicant with a copy each of the notice of opposition and the written statement.

(4) The procedure specified in sub-rules (4) to (13) of rule 48 relating to leaving evidence and hearing shall, so far as may be, apply to the hearing of the application under section 54 as they apply to the hearing of an application under section 51A”.

18. Rule 62- In Clause (a) of sub-rule (3), omit “in appeals under sections 9, IO (IA),

19. Rule 63- For “registers” substitute 11 register of designs” and omit “patents, specifications”.

20. Omit rule 63A.

21. Omit rule 63D.

22. Rule 64- Omit “for a patent or” and “refused, or, as the case may be”.

23. The First Schedule-

(i) Omit entries Nos. I to 24;

(ii) In entry No. 25, omit “an unpatended invention or” and “40 or”;

(iii) In entry No. 34 omit “of specifications etc.”, and for “Drawing” substitute “Copies of representations of designs”;

(iv) omit entry No. 37A;

(v) In entries Nos. 41, 43 and 45 omit “of Patents or” and “or of the coming into force of these Rules”;

(vi) In entries Nos. 42 and 44, omit “of Patents or” and “and the coming into force of these Rules”;

(vii) In entry No. 46, omit “of Patents or”, “the grant of patens” and “and the coming into force of these Rules”;

(viii) In entry No. 48, omit “20 or”;

(ix) In entry No. 52, omit “5, 9, 10 (IA), 16, 17”;

24. In the Second Schedule-

(i) for the list of forms, substitute,-

“LIST OF FORMS

Form

No.

Section of the

Act or Rule

Title

4. Rule 38A Application for extension of time. 5. 43,69 Appeal 7. Rule 48 or 61 Notice of intention to attend hearing

14. 40,52 Notice of intended exhibition or publication of an unregistered design.

15. 43 Application for registration of design. 16. 78A Application for registration of design under reciprocal

arrangements. 17. 43 Application for registration of design applicable to a set. 18. Rule 41 Request for grounds of decision. 19. 47 Application for extension of copyright. 20. 51 Request for information when registration number is furnished. 21. 51 Request for information when registration number is furnished. 22. 51A Application to the Controller to cancel registration of design. 23. Rule 53 Request to alter name or address or address for service in Register. 24. 20,46 Request for entries of two addresses in Register. 25. 63 Application for entry in Register. 26. 63 Application for entry in Register. 27. Rule 53 Application for entry of notification of documents in register. 28. 62 Request for correction. 29. 59 (Rule 63) Request for certificate. 30. 64 Application for rectification of Register. 31. 76 Power of authority to agent”.

(ii) In the heading to all the Forms, omit “Indian patents and”;

(iii) Omit Forms 1, 1A, IB, IC, 1AC, 1CC, 2,2A, 2C, 2AC, 3,3A, 6,8,9, 10, 11, 11A, 11B, IIC, 12, 13 and 29A;

(iv) In form,-

(a) For “Sections 4A, 5, 10, 14 or Rule 11 or 38A”, substitute „( cee rule 38A)”;

(b) Omit items (a) to (d).

(v) In Form 5, omit “Sections 5, 9, IO(IA), 16, 17”, and items (a) to (i).

(vi) In Form 7, for “Section 9, 10 (lA), 16, 17, 23D(5), 24 or 61”, substitute „( cee rules 48 (ii) and 61)”.

(vii) In Form 23,-

(a) Omit “of Patents or” and “Patent No of

(b) For “Register of Patents”, substitute “Register of Designs”.

Designs

(viii) In Form 24,-

(a) For “Register of Patents/Designs” in the two places they occur, substitute “Register of Designs”;

(b) Omit “20 or” and “Patent No…………… of…………..”.

(ix) In Form 25,-

(a) For “Register of Patents/Designs” in the two places they occur, substitute “Register of Designs”;

(b) Omit “of Patent(s) No(s) *………of ……..granted to2……… of which the title is 3 ……………”;

(d) In the footnote,-

(A) Omit “or the coming into force of the Indian Patents and Designs Rules, 1933;

(B) omit “patent or” wherever occurring.

(x) In Form 26-

(a) For “Register of Patents/Designs” in the two places they occur, substitute “Register of Designs”;

(b) Omit “in Patent(s) No(s)……… of………granted to 3…….. of which the title is 3…………”;

(d) In the footnote,-

(A) Omit “or the coming into force of the Indian Patents and Designs Rules, 1933”;

(B) Omit “patent or” wherever occurring.

(xi) In Form 27,-

(a) For “Register of Patents/Designs”, substitute “Register of Designs”;

(b) Omit “29 or” and “Patent(s)”;

(A) Omit “the grant of the patent or” and “or the coming into force of the Indian Patents and Designs Rules, 1933”;

(B) Omit “patent or” wherever occurring.

(xii) In Form 29,-

(a) Omit “Patent No1………..of………….”.

(b) For the marginal heading No. 1, substitute ““Insert number and class of design”.

(xiii) In Form 30,-

(a) For “Register of Patents/Designs”, substitute “Register of Designs”;

(b) For “Patents/Designs” substitute “Design”;

25. Omit the Third Schedule.

26. In the fifths Schedule,-

(i) In entry No.1, for “Sections 9, 16 and 17 and Rules 33 and 61”, substitute “Rule 48 and Rule 61”;

(ii) Omit entries Nos. 2 and 3;

(iii) In entry No. 8, omit “Rule 21(l) or”;

(iv) In entry No. 9, omit “Rule 21(2) or”

印度

IN029

Patents Rules, 1972