Intellectual
Property Rights
Patents
Act, 1970
CHAPTER XVII: USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION
OF INVENTIONS BY CENTRAL GOVERNMENT
99. Meaning of use of invention for purposes of government
(1) For the purposes of this chapter,
an invention is said to be used for the purposes of government if it is
made, used, exercised or vended for the purposes of the Central Government,
a State Government or a government undertaking.
(2) Without prejudice to the generality
of the provisions of sub-section (1)-
(a) the importation, by or on
behalf of the government, of any invention being a machine, apparatus;
or other article covered by a patent granted before the commencement of
this Act, for the purpose merely of its own use; and
(b) the importation, by or on
behalf of the government, of any invention being a medicine or drug covered
by a patent granted before the commencement of this Act-
(i) for the purpose merely of
its own use; or
(ii) for the purpose of distribution
in any dispensary, hospital or other medical institution maintained by
or on behalf of the government or in any other dispensary, hospital or
other medical institution which the Central Government may, having regard
to the public service which such other dispensary, hospital or medical
institution renders, specify in this behalf by notification in the Official
Gazette,
shall also be deemed, for the purposes
of this Chapter, to be use of such invention for the purposes of government.
(3) Nothing
contained in this Chapter shall apply in respect of any such importation
making or using of any machine, apparatus, or other article or of any
such using of any process or of any such importation, using or distribution
of any medicine or drug, as may be made by virtue of one or more of the
conditions specified in section 47.
100. Power of Central Government to use inventions for purposes
of government
(1) Notwithstanding
anything contained in this Act, at any time after an application for a
patent has been filed at the patent office or a patent has been granted,
the Central Government and any person authorised in writing by it may
use the invention for the purposes of government in accordance with the
provisions of this chapter.
(2) Where an invention has, before
the priority date of the relevant claim of the complete specification,
been duly recorded in a document, or tested or tried, by or on behalf
of the government or a government undertaking, otherwise than in consequence
of the communication of the invention directly or indirectly, by the patentee
or by a person from whom he derives title, any use of the invention by
the Central Government or any person authorised in writing by it for the
purposes of government may be made free of any royalty or other remuneration
to the patentee.
(3) If and so far as the invention
has not been so recorded or tried or tested as aforesaid, any use of the
invention made by the Central Government of any person authorised by it
under sub-section (1), at any time after the acceptance of the complete
specification in respect of the patent or in consequence of any such communication
as aforesaid, shall be made upon terms as may be agreed upon either before
or after the use, between the Central Government or any person authorised
under sub-section (1) and the patentee, or, as may in default of agreement
be determined by the High Court on a reference under section 103:
PROVIDED that in the case of any
such use of any patent in respect of any medicine or drug or article of
food the royalty and other remuneration shall in no case exceed four per
cent of the net ex-factory sale price in bulk of the patented article
(exclusive of taxes levied under any law for the time being in force and
any commissions payable) determined in such manner as may be prescribed.
(4) The authorisation by the Central
Government in respect of an invention may be given under this section,
either before or after the patent is granted and either before or after
the acts in respect of which such authorisation is given or done, and
may be given to any person, whether or not he is authorised directly or
indirectly by the applicant or the patentee to make, use, exercise or
vend the invention or import the machine, apparatus or other article or
medicine or drug covered by such patent.
(5) Where an invention has been
used by or with the authority of the Central Government for the purposes
of government under this section, then unless it appears to the government
that it would be contrary to the public interest so to do, the government
shall notify the patentee as soon as practicable of the fact and furnish
him with such information as to the extent of the use of the invention
as he may, from time to time, reasonably require; and where the invention
has been for the purposes of a government undertaking, the Central Government
may call for such information as may be necessary for this purpose from
such undertaking.
(6) The right to make, use, exercise
and vend an invention for the purposes of government under sub-section
(1) shall include the right to sell the goods which have been made in
exercise of that right, and a purchaser of goods so sold, and a person
claiming through him, shall have the power to deal with the goods as if
the Central Government or the person authorised under sub-section (1)
were the patentee of the invention.
(7) Where
in respect of a patent which has been the subject of an authorisation
under this section, there is an exclusive licensee as is referred to in
sub-section (3) of section (3) of section 101, or where such patent has
been assigned to the patentee in consideration of royalties or other benefits
determined by reference to the use of the invention (including payments
by way of minimum royalty), the notice directed to be given under sub-section
(5) shall also be given to such exclusive licensee or assignor, as the
case may be, and the reference to the patentee in sub-section (3) shall
be deemed to include a reference to such assignor or exclusive licensee.
101. Right of third parties in respect of use of invention for
purposes of government
(1) In
relation to any use of a patented invention, or an invention in respect
of which an application for a patent is pending, made for the purposes
of government
(a) by the Central Government
or any person authorised by the Central Government under section 100;
or
(b) by the patentee or applicant
for the patent to the order made by the Central Government,
the provisions of any licence,
assignment or agreement granted or made, whether before or after the commencement
of this Act, between the patentee or applicant for the patent (or any
person who derives title from him or from whom he derives title) and any
person other than the Central Government shall be of no effect so far
as those provisions-
(i) restrict or regulate the use
for the purposes of government of the invention, or of any model, document
or information relating thereto, or
(ii) provide for the making of
payments in respect of any use the invention or of the model, document
or information relating thereto for the purposes of government (including
payments by way of minimum royalty),
and the reproduction or publication
of any model or document in connection with the said use for the purposes
of government shall not been deemed to be an infringement of any copyright
subsisting in the model or document.
(2) Where the patent, or the right
to apply for or obtain the patent, has been assigned to the patentee in
consideration of royalties or other benefits determined by reference to
the use of the invention (including payments by way of minimum royalty),
then, in relation to any use of the invention made for the purposes of
government by the patentee to the order of the Central Government, sub-section
(3) of section 100 shall have effect as if that use were made by virtue
of an authority given under that section, and any use of the invention
for the purposes of government by virtue of sub-section (3) of that section
shall have effect as if the reference to the patentee included a reference
to the assignor of the patent, and any sum payable by virtue of that sub-section
shall be divided between the patentee and the assignor in such proportion
as may be agreed upon between them or as may in default of agreement be
determined by the High Court on a reference under section 103.
(3) Where by virtue of sub-section
(3) of section 100, payments are required to be made by the Central Government
or persons authorised under sub-section (1) of that section in respect
of the use of an invention for the purposes of government, and where in
respect of such patent there is an exclusive licensee authorised under
his licence to use the invention for the purposes of government, such
sum shall be shared by the patentee and such licensee in such proportions,
if any, as may be agreed upon between them or as may in default of agreement
be determined by the High Court on a reference under section 103 to be
just, having regard to any expenditure incurred by the licensee-
(a) in developing the said invention;
or
(b) in
making payments to the patentees other than royalties or other benefits
determined by reference to the use of the invention including payments
by way of minimum royalty in consideration of the licence.
102. Acquisition of inventions and patents by the Central Government
(1) The
Central Government may, if satisfied that it is necessary that an invention
which is the subject of an application for a patent or a patent should
be acquired from the applicant or the patentee for a public purpose, publish
a notification to that effect in the Official Gazette, and thereupon the
invention or patent and all rights in respect of the invention or patent
shall, by force of this section, stand transferred to and be vested in
the Central Government.
(2) Notice of the acquisition
shall be given to the applicant, and, where a patent has been granted,
to the patentee and other persons, if any, appearing in the register as
having an interest in the patent.
(3) The
Central Government shall pay to the applicant, or as the case may be,
the patentee and other persons appearing on the register as having an
interest in the patent such other compensation as may be agreed upon between
the Central Government and the applicant or the patentee and other persons;
or, as may, in default of agreement, be determined by the High Court on
a reference under section 103 to be just having regard to the expenditure
incurred in connection with the invention and, in the case of a patent,
the term thereof, the period during which and the manner in which it has
already been worked (including the profits made during such period by
the patentee or by his licensee whether exclusive or otherwise) and other
relevant factors,
103. Reference to High Court of disputes as to use for purposes
of government
(1) Any
dispute as to the exercise by the Central Government or a person authorised
by it of the powers conferred by section 100, or as to terms for the use
of an invention for the purposes of government thereunder or as to the
right of any person to receive any part of a payment made in pursuance
of sub-section (3) of that section or as to the amount of compensation
payable for the acquisition of an invention or a patent under section
102, may be referred to the High Court by either party to the dispute
in such manner as may be prescribed by the rules of the High Court.
(2) In any proceedings under this
section to which the Central Government is a party, the Central Government
may-
(a) if the patentee is a party
to the proceedings, petition by way of counter-claim for revocation of
the patent on any ground upon which a patent may be revoked under section
64; and
(b) whether a patentee is or is
not a party to the proceedings, put in issue the validity of the patent
without petitioning for its revocation.
(3) If in such proceedings as
aforesaid any question arises whether an invention has been recorded,
tested or tried as is mentioned in section 100, and the disclosure of
any document regarding the invention, or of any evidence of the test or
trial thereof, would, in the opinion of the Central Government, be prejudicial
to the public interest, the disclosure may be made confidentially to the
advocate of the other party or to an independent expert mutually agreed
upon.
(4) In determining under this
section any dispute between the Central Government and any person as to
terms for the use of an invention for the purposes of government, the
High Court shall have regard to any benefit or compensation which that
person or any person from whom he derives title, may have received, or
may be entitled to receive, directly or indirectly in respect of the use
of the invention in question for the purposes of government.
(5) In any proceedings under this
section, the High Court may at any time order the whole proceedings or
any question or issue of fact arising therein to be referred to an official
referee, commissioner or an arbitrator on such terms as the High Court
may direct, and references to the High Court in the foregoing provisions
of this section shall be construed accordingly.
(6) Where the invention claimed
in a patent was made by a person who at time it was made was in the service
of the Central Government or of a State Government or was an employee
of a government undertaking and the subject-matter of the invention is
certified by the relevant government or the principal officer of the government
undertaking to be connected with the work done in the course of the normal
duties of the government servant or employee of the government undertaking,
then, notwithstanding anything contained in this section, any dispute
of the nature referred to in sub-section (1) relating to the invention
shall be disposed of by the Central Government conformably to the provisions
of this section so far as may be applicable, but before doing so the Central
Government shall give an opportunity to the patentee and such other parties
as it considers have an interest in the matter to be heard.
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