Intellectual
Property Rights
Patents
Act, 1970
CHAPTER IV: EXAMINATION OF APPLICATIONS
12. Examination of application
(1) When
the complete specification has been filed in respect of an application
for a patent, the application and the specification relating thereto shall
be referred by the controller to an examiner for making a report to him
in respect of the following matters, namely,-
(a) whether
the application and the specification relating thereto are in accordance
with the requirements of this Act and of any rules made thereunder;
(b) whether
there is any lawful ground of objection to the grant of the patent under
this Act in pursuance of the application;
(c) the
result of investigations made under section 13; and
(d) any
other matter which may be prescribed.
(2) The
examiner to whom the application and the specification relating thereto
are referred under sub-section (1) shall ordinarily make the report to
the Controller within a period of eighteen months from the date of such
reference.
13. Search for anticipation by previous publication and by prior
claim
(1) The
examiner to whom an application for a patent is referred under section
12 shall make investigation for the purpose of ascertaining whether the
invention so far as claimed in any claim of the complete specification-
(a) has
been anticipated by publication before the date of filing of the applicant's
complete specification in any specification filed in pursuance of an application
for a patent made in India and dated on or after the 1st day of January,
1912;
(b) is
claimed in any claim of any other complete specification published on
or after the date of filing of the applicant's complete specification,
being a specification filed in pursuance of an application for a patent
made in India and dated before or claiming the priority date earlier than
that date.
(2) The
examiner shall, in addition, make an investigation as the Controller may
direct for the purpose of ascertaining, whether the invention, so far
as claimed in any claim of the complete specification, has been anticipated
by publication in India or elsewhere in any document other than those
mentioned in sub-section (1) before the date of filing of the applicant's
complete specification.
(3) Where
a complete specification is amended under the provisions of this Act before
it has been accepted, the amended specification shall be examined and
investigated in like manner as the original specification.
(4) The
examination and investigations required under section 12 and this section
shall not be deemed in any way to warrant the validity of any patent,
and no liability shall be incurred by the Central Government or any officer
thereof by reason of, or in connection with, any such examination or investigation
or any report or other proceedings consequent thereon.
14. Consideration of report of examiner by Controller
Where,
in respect of an application for a patent, the report of the examiner
received by the Controller is adverse to the applicant or requires any
amendment of the application or of the specification to ensure compliance
with the provisions of this Act or of the rules made thereunder, the Controller,
before proceeding to dispose of the application in accordance with the
provisions hereinafter appearing, shall communicate the gist of the objections
to the applicant and shall, if so required by the applicant within the
prescribed time, give him an opportunity of being heard.
15. Power of Controller to refuse or require amended applications
in certain cases
(1) Where
the Controller is satisfied that the application or any specification
filed in pursuance thereof does not comply with the requirements of this
Act or of any rules made thereunder, the controller may either-
(a) refuse
to proceed with the application; or
(b) require
the application, specification or drawings to be amended to his satisfaction
before he proceeds with the application.
(2) If
it appears to the Controller that the invention claimed in the specification
is not an invention within the meaning of, or is not patentable under,
this Act, he shall refuse the application.
(3) If
it appears to the Controller that any invention, in respect of which an
application for a patent is made, might be used in any manner contrary
to law, he may refuse the application, unless the specification is amended
by the insertion of such disclaimer in respect of that use of the invention,
or such other reference to the illegality thereof, as the controller thinks
fit.
16. Power of Controller to make orders respecting division of
application
(1) A person
who has made an application for a patent under this Act may, at any time
before the acceptance of the complete specification, if he so desires,
or with a view to remedy the objection raised by the Controller on the
ground that the claims of the complete specification relate to more than
one invention, file a further application in respect of an invention disclosed
in the provisional or complete specification already filed in respect
of the first-mentioned application.
(2) The
further application under sub-section (1) shall be accompanied by a complete
specification but such complete specification shall not include any matter
not in substance disclosed in the complete specification filed in pursuance
of the first-mentioned application.
(3) The
Controller may require such amendment of the complete specification filed
in pursuance of either the original or the further application as may
be necessary to ensure that neither of the said complete specification
includes a claim for any matter claimed in the other.
Explanation:
For the purposes of this Act the further application and the complete
specification accompanying it shall be deemed to have been filed on the
date on which the complete specification in pursuance of the first mentioned
application had been filed, and the further application shall, subject
to the determination of the priority date under sub-section (4) of section
11, be proceeded with as a substantive application.
17. Power of Controller to make orders respecting dating of application.
(1) Subject
to the provisions of section 9, at any time after the filing of an application
and before acceptance of the complete specification under this Act, the
Controller may, at the request of the applicant made in the prescribed
manner, direct that the, application shall be post-dated to such date
as may be specified in the request, and proceed with the application accordingly:
PROVIDED
that no application shall be post-dated under this sub-section to a date
later than six months from the date on which it was actually made or would,
but for the provisions of this sub-section, be deemed to have been made.
(2) Where
an application or specification (including drawings) is required to be
amended under clause (b) of sub-section (1) of section 15, the application
or specification shall, if the Controller so directs, be deemed to have
been made on the date on which the requirement is complied with or where
the application or specification is returned to the applicant, on the
date on which it is re-filed after complying with the requirement.
18. Powers of Controller in cases of anticipation
(1) Where
it appears to the Controller that the invention so far as claimed in any
claim of the complete specification has been anticipated in the manner
referred to in clause (a) of sub-section (1) or sub-section (2) of section
13, he may refuse to accept the complete specification unless the applicant-
(a) shows
to the satisfaction of the Controller that the priority date of the claim
of his complete specification is not later than the date on which the
relevant document was published; or
(b) amends
his complete specification to the satisfaction of the Controller.
(2) If
it appears to the Controller that the invention is claimed in a claim
of any other complete specification referred to in clause (b) of sub-section
(1) of section 13, he may, subject to the provisions hereinafter contained,
direct that a reference to that other specification shall be inserted
by way of notice to the public in the applicant's complete specification
unless within such time as may be prescribed-
(a) the
applicant shows to the satisfaction of the Controller that the priority
date of his claim is not later than the priority date of the claim of
the said other specification; or
(b) the
complete specification is amended to the satisfaction of the Controller;
(3) If
it appears to the Controller, as a result of an investigation under section
13 or otherwise-
(a) that
the invention so far as claimed in any claim of the applicant's complete
specification has been claimed in any other complete specification referred
to in clause (a) of sub-section (1) of section 13; and
(b) that
such other complete specification was published on or after the priority
date of the applicant's claim,
then, unless
it is shown to the satisfaction of the Controller that the priority date
of the applicant's claim is not later than the priority date of the claim
of that specification, the provisions of sub-section (2) shall apply thereto
in the same manner as they apply to a specification published on or after
the date of filing of the applicant's complete specification.
(4) Any
order of the Controller under sub-section (2) or sub-section (3) directing
the insertion of a reference to another complete specification shall be
of no effect unless and until the other patent is granted.
19. Powers of Controller in case of potential infringement
(1) If,
in consequence of the investigation required by the foregoing provisions
of this Act or of proceedings under section 25, it appears to the Controller
that an invention in respect of which an application for a patent has
been made cannot be performed without substantial risk of infringement
of a claim of any other patent, he may direct that a reference to that
other patent shall be inserted in the applicant's complete specification
by way of notice to the public, unless within such time as may be prescribed-
(a) the
applicant shows to the satisfaction of the Controller that there are reasonable
grounds for contesting the validity of the said claim of the other patent;
or
(b) the
complete specification is amended to the satisfaction of the Controller.
(2) Where,
after a reference to another patent has been inserted in a complete specification
in pursuance of a direction under sub-section (1)-
(a) that
other patent is revoked or otherwise ceases to be in force; or
(b) the
specification of that other patent is amended by the deletion of the relevant
claim; or
(c) it
is found, in proceedings before the court of the Controller, that the
relevant claim of that other patent is invalid or is not infringed by
any working of the applicant's invention.
the Controller
may, on the application of the applicant, delete the reference to that
other patent.
20. Powers of Controller to Make orders regarding substitution
of applicants, etc.
(1) If
the Controller is satisfied on a claim made in the prescribed manner at
any time before a patent has been granted, that by virtue of any assignment
or agreement in writing made by the applicant or one of the applicants
for the patent or by operation of law, the claimant would, if the patent
were then granted, be entitled thereto or to the interest of the applicant
therein, or to an undivided share of the patent or of that interest, the
Controller may, subject to the provisions of this section, direct that
the application shall proceed in the name of the claimant or in the names
of the claimants and the applicant or the other joint applicant or applicants,
accordingly as the case may require.
(2) No
such direction as aforesaid shall be given by virtue of any assignment
or agreement made by one of two or more joint applicants for a patent
except with the consent of the other joint applicant or applicants.
(3) No
such direction as aforesaid shall be given by virtue of any assignment
or agreement for the assignment of the benefit of an invention unless-
(a) the
invention is identified therein by reference to the number of the application
for the patent; or
(b) there
is produced to the Controller an acknowledgment by the person by whom
the assignment or agreement was made that the assignment or agreement
relates to the invention in respect of which that application is made;
or
(c) the
rights of the claimant in respect of the invention have been finally established
by the decision of a court; or
(d) the
Controller gives directions for enabling the application to proceed or
for regulating the manner in which it should be proceeded with under sub-section
(5).
(4) Where
one of two or more joint applicants for a patent dies at any time before
the patent has been granted, the Controller may, upon a request in that
behalf made by the survivor or survivors and with the consent of the legal
representative of the deceased, direct that the application shall proceed
in the name of the survivor or survivors alone.
(5) If
any dispute arises between joint applicants for a patent whether or in
what manner the application should be proceeded with, the Controller may,
upon application made to him in the prescribed manner by any of the parties,
and after giving to all parties concerned an opportunity to be heard,
give such directions as he thinks fit for enabling the application to
proceed in the name of one or more of the parties alone or for regulating
the manner in which it should be proceeded with, or for both those purposes,
as the case may require.
21. Time for putting application in order for acceptance
(1) An
application for a patent shall be deemed to have been abandoned unless
within fifteen months from the date on which the first statement of objections
to the application or complete specification is forwarded by the Controller
to the applicant or within such longer period as may be allowed under
the following provisions of this section the applicant has complied with
all the requirements imposed on him by or under this Act, whether in connection
with the complete specification or otherwise in relation to the application.
Explanation
: Where the application or any specification or, in the case of a convention
application, any document filed as part of the application has been returned
to the applicant by the Controller in the course of the proceedings, the
applicant shall not be deemed to have complied with such requirements
unless and until he has re-filed it.
(2) The
period of fifteen months specified in sub-section (1) shall, on request
made by the applicant in the prescribed manner and before the expiration
of the period so specified, be extended for a further period, so requested
(hereafter in this section referred to as the extended period), so, however,
that the total period for complying with the requirements of the Controller
does not exceed eighteen months from the date on which the objections
referred to in sub-section (1) are forwarded to the applicant.
(3) If
at the expiration of the period of fifteen months specified in sub-section
(1) or the extended period-
(a) an
appeal to the High Court is pending in respect of the application for
the patent for the main invention; or
(b) in
the case of an application for a patent of addition, an appeal to the
High Court is pending in respect of either that application or the application
for the main invention,the
time within which the requirements of the Controller shall be complied
with shall, on an application made by the applicant before the expiration
of the said period of fifteen months or the extended period, as the case
may be, be extended until such date as the High Court may determine.
(4) If
the time within which the appeal mentioned in sub-section (3) may be instituted
has not expired, the Controller may extend the period of fifteen months,
or as the case may be, the extended period, until the expiration of such
further period as he may determine:
PROVIDED
that if an appeal has been filed during the said further period, and the
High Court has granted any extension of time for complying with the requirements
of the Controller, then, the requirements may be complied with within
the time granted by the court.
22. Acceptance of complete specification
Subject
to the provisions of section 21, the complete specification filed in pursuance
of an application for a patent may be accepted by the Controller at any
time after the applicant has complied with the requirements mentioned
in sub-section (1) of that section, and, if not so accepted within the
period allowed under that section for compliance with those requirements,
shall be accepted as soon as may be thereafter.,
PROVIDED
that the applicant may make an application to the Controller in the prescribed
manner requesting him to postpone acceptance until such date not being
later than eighteen months from the date on which the objections referred
to in sub-section (1) of section 21 are forwarded to the applicant as
may be specified in the application, and, if such application is made,
the Controller may postpone acceptance accordingly.
23. Advertisement of acceptance of complete specification
On the
acceptance of a complete specification, the Controller shall give notice
thereof to the applicant and shall advertise in the Official Gazette the
fact that the specification has been accepted, and thereupon the application
and the specification with the drawings (if any) filed in pursuance thereof
shall be open to public inspection.
24. Effect of acceptance of complete specification
On and
from the date of advertisement of the acceptance of a complete specification
and until the date of sealing of a patent in respect thereof, the applicant
shall have the like privileges and rights as if a patent for the invention
had been sealed on the date of advertisement of acceptance of the complete
specification:
PROVIDED
that the applicant shall not be entitled to institute any proceedings
for infringement until the patent has been sealed.
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