A Note on the Civil Procedure Code Amendment Act 2002

THE CIVIL PROCEDURE CODE (AMENDMENT) ACT 2002

The 2002 amendment to the Civil procedure Code, 1908 (“CPC“ in common usage), is the latest Parliamentary effort at making litigation in the country more effective and speedy. The Code is a consolidation of procedural laws that prescribe for civil courts, the practice, procedure and machinery for the enforcement of substantive law (- i.e. Rights and liabilities of parties to a dispute.). It extends to the whole of India barring the States of Jammu and Kashmir; (2) Nagaland and the tribal areas.

The Amendment of 2002 comes in the wake of the Amendment act of 1999, which was enacted to reduce the delays, experienced by litigants at various levels. It seeks to address those provisions introduced by the Act of 1999 that have been criticized as causing hardships to litigants and also other proposals to reduce delays faced

Litigation consists of the following stages, broadly categorised as pre-trial and trial proceedings. For the sake of clarity, the amendments are presented in conjunction with the stage of litigation they correspond to..

Sl. No.	Stages of Litigation	Corresponding Amendments made by the Act of 2002.
I)	PRE-TRIAL PROCEEDINGS
(a)	Institution of plaint, along with documents relied on	Under the amended Order, Rules 17 & 18 of the CPC Any documents that the plaintiff wants to rely on which have not been either attached along with the plaint or stated in the list can’t be subsequently introduced without the leave of the court. This provision would lead to greater efficiency if followed strictly. The position under the amendment introduced in 1999 was that new documents could only be introduced for the purpose of cross examination or to refresh the witness’s memory In cases where there’s delay in production of documents due to no fault of the client, the Court may consider that as a sufficient reason and allow the subsequent production of documents.
(b)	Service of summons to the opposite party (defendant) to submit their written statement.	Amendment to Rule 9, Order V: Summons shall be delivered by the proper officer of the court in the ordinary course, as opposed to the pre- amendment position, where in some cases, the plaintiff or her agent could deliver the summons. Now the plaintiff only has to provide the required number of copies of the plaint and to pay the costs of delivery. If this is not done within the stipulated period of 7 days then the suit shall be dismissed (Amended Rule 2 of the first schedule of Order IX ), Rule 2 of Order IX as amended. However, on application to the court, the plaintiff may be allowed to issue summons herself. (Rule 9-A) Summons may now be delivered through Fax, or email also. In cases where the defendant resides outside the jurisdiction of the court where the suit is filed, such court can direct service of summons through any one of the courier services approved by it. An improvement over the 1999 Act insofar as the local court has now got power to approve the courier service, whereas earlier only the HC had the power to do so. The decentralisation should speed up the litigation. However all this is subject to the Rules made by the High Court. what kind of rules are made by the High Court are yet to be sseen and only then can the efficacy of this provision be commented on. . If the Defendant. refuses to accept summons (which is till now a common problem), whether it is served personally by the proper officer through any of the new modes introduced, the court on being intimated, can issue a declaration to the effect that the summons have been duly served. Rule 9 (5) (what is the effect of such a declaration? - contempt of court?)
(c )	Filing of Defendants written statement	The defendant has to submit the written statement within 30 days of the service of summons. This may be extended upon an application to the court, up to a maximum of 90 days Reasons for granting extension to be recorded in writing (as per amended Rule 1 sub rule (i), Schedule I of Order V,). Regarding the introduction of additional. documents at a later stage the similar rule applies to the defendant. as to the plaintiff mentioned above. If the defendantt. fails to file the written statement within the given time the court may pass any order against the erring party or a judgment / decree. Amended Order VIII Rule This provision would definitely further the cause of speedy justice..
II	TRIAL PROCEEDINGS
a)	Hearings in Court ADJOURNMENTS !	Once the hearing is commenced both the plaintiff and defendant shall not be given leave by the court to amend the suit unless the court is decides that in spite of due diligence being exercised the party could not have raised the matter. Rule 17 of Order VI Further if the party does not amend the suit within the given time then she shall not be allowed to unless the court extends the time. Rule 18 Of Order Vi The Act of 2002 has reintroduced the power of the Court to amend /strike out issues for the purpose of determining the matter in controversy between the parties. (Rule V of Order XIV). This power was taken away by the 1999 amendment. The court shall not grant more than three adjournments to either party to the suit. Any adjournment shall only be granted after the party requesting time shows sufficient cause. In each adjournment, the court shall make an order as to costs faced by the other party as a result of the adjournment. The court may also award higher costs if its thinks fit. Possibly a punitive measure
i)	Presentation of oral arguments	The court may fix a time limit for oral arguments of either of the parties as it thinks fit. (Sub Rule 3- D Rule 2, Order XVIII, First Schedule) Sometimes oral arguments tend to drag on for hours together. However there is also a provision by which written arguments can be submitted. This is a useful provision, because it offsets any possible injustice owing to the refusal of the Court to hear the arguments.
ii)	Examination in chief cross – examination by the other side. of both parties witnesses.	The examination in chief of the witnesses of both parties shall be rendered via affidavit and furnished to the court. The evidence (re-examination and Cross examination) may be taken by a commissioner appointed by the court for this purpose, on the same day. However usually (even after the new act, time is granted for cross examination)
b)	Pronouncement of Judgment and Decree/Order	Judgement to be ordinarily pronounced within 30 days subject to a maximum time limit of 60 days ( for extraordinary reasons) But this is also not absolute….( per amended Order XX) In cases where the court orders sale of the defendants property in pursuance of the claim awarded to the plaintiffs. As per the amendment, the defendant now has 60 days (as opposed to the earlier 30 days) for depositing the suit money in court. The amendment removes the anomaly between the Code and the limitation act, which granted 60 days to the defendant before making the sale absolute. The amendment is particularly beneficial for poorer litigants who now have additional time to come up with the funds.
c)	Revision of Lower courts Order	Section 115 has been amended to the disadvantage of litigants. Under the amended provision, when a party files a Civil Revision Petition aggrieved by the Order of a lower Court, the High Court cannot reverse such Order except where the Order, if it had been made in favour of the Revisioner, would have had the effect of finally disposing of the proceedings. For example, if a Plaintiff in a suit wishes to make an amendment to the Plaint and the Trial Court rejects the application, the High Court cannot reverse this order, as it would not have finally disposed of the case if the Order had been in favour of the Plaintiff
d).	Appeal	The appeal process has been limited so that hence forth no appeal shall lie from the judgment of a single judge of a High court and no second appeal in any suit (irrespective of whether it comes up before the high court or a lower court) where the subject value of the original suit is up to Rs. 25,000/- (Substituted new section 102)
III.	SETTLEMENT OF DISPUTES OUTSIDE OF COURT	The Act of 1999, has introduced a new provision (S.89) where the court may by itself, proactively refer a dispute for alternative dispute resolution methods if it appears that elements of a settlement exist, which may be acceptable to the parties to the dispute. The Provision is a good one provided that it does not in any way prevent the parties themselves withdrawing the case so that they may settle through any mode of alternate dispute resolution that is acceptable to both parties.

A Note on the Civil Procedure Code Amendment Act 2002

A kick-start to our online efforts at making the Judiciary more accessible and also “demystifying“ the law. If procedure is the handmaiden to justice than understanding the Civil Procedure Code which lays down procedures for the Civil court s including the High court is important. The note given below attempts to simplify the latest amendment to the Code, for litigants and hopefully (!) any lay person having an interest in the justice delivery system of our country.

THE CIVIL PROCEDURE CODE (AMENDMENT) ACT 2002

The 2002 amendment to the Civil procedure Code, 1908 (“CPC“ in common usage), is the latest Parliamentary effort at making litigation in the country more effective and speedy. The Code is a consolidation of procedural laws that prescribe for civil courts, the practice, procedure and machinery for the enforcement of substantive law (- i.e. Rights and liabilities of parties to a dispute.). It extends to the whole of India barring the States of Jammu and Kashmir; (2) Nagaland and the tribal areas.

The Amendment of 2002 comes in the wake of the Amendment act of 1999, which was enacted to reduce the delays, experienced by litigants at various levels. It seeks to address those provisions introduced by the Act of 1999 that have been criticized as causing hardships to litigants and also other proposals to reduce delays faced

Litigation consists of the following stages, broadly categorised as pre-trial and trial proceedings. For the sake of clarity, the amendments are presented in conjunction with the stage of litigation they correspond to..

Sl. No.	Stages of Litigation	Corresponding Amendments made by the Act of 2002.
I)	PRE-TRIAL PROCEEDINGS
(a)	Institution of plaint, along with documents relied on	Under the amended Order, Rules 17 & 18 of the CPC Any documents that the plaintiff wants to rely on which have not been either attached along with the plaint or stated in the list can’t be subsequently introduced without the leave of the court. This provision would lead to greater efficiency if followed strictly. The position under the amendment introduced in 1999 was that new documents could only be introduced for the purpose of cross examination or to refresh the witness’s memory In cases where there’s delay in production of documents due to no fault of the client, the Court may consider that as a sufficient reason and allow the subsequent production of documents.
(b)	Service of summons to the opposite party (defendant) to submit their written statement.	Amendment to Rule 9, Order V: Summons shall be delivered by the proper officer of the court in the ordinary course, as opposed to the pre- amendment position, where in some cases, the plaintiff or her agent could deliver the summons. Now the plaintiff only has to provide the required number of copies of the plaint and to pay the costs of delivery. If this is not done within the stipulated period of 7 days then the suit shall be dismissed (Amended Rule 2 of the first schedule of Order IX ), Rule 2 of Order IX as amended. However, on application to the court, the plaintiff may be allowed to issue summons herself. (Rule 9-A) Summons may now be delivered through Fax, or email also. In cases where the defendant resides outside the jurisdiction of the court where the suit is filed, such court can direct service of summons through any one of the courier services approved by it. An improvement over the 1999 Act insofar as the local court has now got power to approve the courier service, whereas earlier only the HC had the power to do so. The decentralisation should speed up the litigation. However all this is subject to the Rules made by the High Court. what kind of rules are made by the High Court are yet to be sseen and only then can the efficacy of this provision be commented on. . If the Defendant. refuses to accept summons (which is till now a common problem), whether it is served personally by the proper officer through any of the new modes introduced, the court on being intimated, can issue a declaration to the effect that the summons have been duly served. Rule 9 (5) (what is the effect of such a declaration? - contempt of court?)
(c )	Filing of Defendants written statement	The defendant has to submit the written statement within 30 days of the service of summons. This may be extended upon an application to the court, up to a maximum of 90 days Reasons for granting extension to be recorded in writing (as per amended Rule 1 sub rule (i), Schedule I of Order V,). Regarding the introduction of additional. documents at a later stage the similar rule applies to the defendant. as to the plaintiff mentioned above. If the defendantt. fails to file the written statement within the given time the court may pass any order against the erring party or a judgment / decree. Amended Order VIII Rule This provision would definitely further the cause of speedy justice..
II	TRIAL PROCEEDINGS
a)	Hearings in Court ADJOURNMENTS !	Once the hearing is commenced both the plaintiff and defendant shall not be given leave by the court to amend the suit unless the court is decides that in spite of due diligence being exercised the party could not have raised the matter. Rule 17 of Order VI Further if the party does not amend the suit within the given time then she shall not be allowed to unless the court extends the time. Rule 18 Of Order Vi The Act of 2002 has reintroduced the power of the Court to amend /strike out issues for the purpose of determining the matter in controversy between the parties. (Rule V of Order XIV). This power was taken away by the 1999 amendment. The court shall not grant more than three adjournments to either party to the suit. Any adjournment shall only be granted after the party requesting time shows sufficient cause. In each adjournment, the court shall make an order as to costs faced by the other party as a result of the adjournment. The court may also award higher costs if its thinks fit. Possibly a punitive measure
i)	Presentation of oral arguments	The court may fix a time limit for oral arguments of either of the parties as it thinks fit. (Sub Rule 3- D Rule 2, Order XVIII, First Schedule) Sometimes oral arguments tend to drag on for hours together. However there is also a provision by which written arguments can be submitted. This is a useful provision, because it offsets any possible injustice owing to the refusal of the Court to hear the arguments.
ii)	Examination in chief cross – examination by the other side. of both parties witnesses.	The examination in chief of the witnesses of both parties shall be rendered via affidavit and furnished to the court. The evidence (re-examination and Cross examination) may be taken by a commissioner appointed by the court for this purpose, on the same day. However usually (even after the new act, time is granted for cross examination)
b)	Pronouncement of Judgment and Decree/Order	Judgement to be ordinarily pronounced within 30 days subject to a maximum time limit of 60 days ( for extraordinary reasons) But this is also not absolute….( per amended Order XX) In cases where the court orders sale of the defendants property in pursuance of the claim awarded to the plaintiffs. As per the amendment, the defendant now has 60 days (as opposed to the earlier 30 days) for depositing the suit money in court. The amendment removes the anomaly between the Code and the limitation act, which granted 60 days to the defendant before making the sale absolute. The amendment is particularly beneficial for poorer litigants who now have additional time to come up with the funds.
c)	Revision of Lower courts Order	Section 115 has been amended to the disadvantage of litigants. Under the amended provision, when a party files a Civil Revision Petition aggrieved by the Order of a lower Court, the High Court cannot reverse such Order except where the Order, if it had been made in favour of the Revisioner, would have had the effect of finally disposing of the proceedings. For example, if a Plaintiff in a suit wishes to make an amendment to the Plaint and the Trial Court rejects the application, the High Court cannot reverse this order, as it would not have finally disposed of the case if the Order had been in favour of the Plaintiff
d).	Appeal	The appeal process has been limited so that hence forth no appeal shall lie from the judgment of a single judge of a High court and no second appeal in any suit (irrespective of whether it comes up before the high court or a lower court) where the subject value of the original suit is up to Rs. 25,000/- (Substituted new section 102)
III.	SETTLEMENT OF DISPUTES OUTSIDE OF COURT	The Act of 1999, has introduced a new provision (S.89) where the court may by itself, proactively refer a dispute for alternative dispute resolution methods if it appears that elements of a settlement exist, which may be acceptable to the parties to the dispute. The Provision is a good one provided that it does not in any way prevent the parties themselves withdrawing the case so that they may settle through any mode of alternate dispute resolution that is acceptable to both parties.

SEBI gets Supreme Courts not to question Raju

The Supreme Court of India permitted the Securities and Exchange Board of India (Sebi) on Tuesday to interrogate former Satyam chairman B Ramalinga Raju and his brother, Rama Raju, in connection with the Satyam Fraud

A bench headed by Chief Justice K G Balakrishnan directed the Superintendent of Chanchalguda central prison to allow SEBI's investigating officer Sunil Kumar to question the Raju brothers.

SEBI had since January 8, the day after Ramalinga Raju disclosed a Rs 7,800-crore fraud in Satyam, been trying to quiz the two brothers. But the Rajus were arrested by the state CID police on January 9 and since became inaccessible.

The regulator then approached a local court for permission to interrogate the Rajus, but the plea was rejected on technical grounds.

When hearing of its appeal in the Andhra Pradesh High Court was repeatedly deferred, SEBI moved the apex court for "urgent relief".

The Supreme Court today also said that Kumar will intimate the jail authorities in advance as to who will be accompanying him for the interrogation of the Raju brothers.

SEBI would be probing if there was any insider trading angle to the fraud since Raju had disclosed falsifying profits for years -- which would have helped inflate share prices.

Maharashtra State Financial Corporation

MSFC is a statutory Corporation set up under the State Financial Corporations (SFCs) Act, 1951.

JURISDICTION :
State of Maharashtra (since 1962), State of Goa and the union Territory of Daman & Diu
(since 1964).

FUNCTIONS
To provide mainly the term loan assistance to small and medium scale industries for acquiring fixed assets like land, building, plant & machinery. Loans are presently extended for expansion, diversification, technology development, enlarging product mix / product range, quality improvement including ISO 9000 series certifications and also for Take-Over of Term Loan accounts from Banks . otherFinancial Institutions in case of good borrowers of the Corporation.

FEE BASED ACTIVITIES :
Preparation of Project Appraisal / Feasibility Report etc.

ORGANISATIONAL STRUCTURE :
Besides the Head Office at Mumbai (Bombay), MSFC has 7 Regional Offices and 12 Branch Offices in
Maharashtra and Goa.

The Regional Offices are located at Aurangabad, Kolhapur, Nagpur, Nashik, Pune & Thane in Maharashtra and at Panaji in Goa. The Branch Offices are located at Ahmednagar, Akola, Amravati, Beed, Chandraupr, Chiplun, Jalgaon, Latur, Nanded, Sangli, Satara and Solapur.

ELIGIBLE ACTIVITIES
i) Industrial Activities such as manufacturing, assembling, servicing, processing, preservation, transportation,
setting-up industrial estates, etc.
ii) Activities such as Nursing Homes, Hotels, Restaurants, Tourism Related Activities
iii) Medical Practitioners are eligible for loan for acquiring Electro Medical and other equipment for professional
use.
iv) Qualified Professionals in Management, Engineering, Architecture, Accountancy etc desiring to undertake
expansion of their professional practice / consultancy ventures.
v) Other Service Activities declared as eligible under the SFCs Act.

vi) Proposed :
Commercial Complexes, Multiplexes, Marriage Halls, Group Housing / Residential Complex, etc.
The Small Scale Industrial Units should have SSI Registration while Service Enterprises should be registered with
the appropriate authority.

LOAN LIMIT : Rs. 5 Crore.
QUANTUM OF ASSISTANCE :
While deciding upon the quantum of loan, minimum promoters contribution and the prescribed Debt Equity Ratio
(DER) are taken into consideration. Higher margin and / or shorter repayment period may be insisted depending
upon the nature and rate of technological obsolescence and the risk perception for the project.

DEBT EQUITY RATIO (DER)
Permissible DER for the project is upto 2:1 depending upon the loan amount, nature of assets and risk perception but DER upto 1:1 may be insisted upon keeping in mind viability and collateral security. "Equity" includes promoters' contribution, share capital, seed capital, State Govt. subsidy, portion of accruals, deposits / interest free unsecured loanss (Quasi Equity) raised by the promoters etc. "Debt" includes long term loans, deferred payments, etc.

PROCEDURE FOR SANCTION OF LOAN :
The loan application forms are available free of charge which are to be submitted to the concerned Regional Office
duly filled in with required additional particulars. Preliminary clearance for further processing of the proposal is
given after scrutiny of the proposal and interaction with the promoters by the Screening Committee at the Regional Office or at the Head Office depending upon the loan amount. Detailed Technical and Financial Appraisal of the proposal for the loan is submitted to the Appropriate Authority for sanction of the loan.

PROCESSING FEE

Loan upto Rs.10 Lakh	:	0.7% of the amount sanctioned
Loan above Rs. 10Lakh	:	1% of the amount sanctioned subject to the maximum of Rs.1 Lakh

DISBURSEMENT OF LOAN :
Loan amount is disbursed after the promoters have complied with the terms & conditions stipulated in the
Sanction Letter.

Disbursement is made in stages depending upon the fixed assets acquired / created. Promoters have to furnish
necessary documents, valuation reports and Chartered Accountant's Certificate in the prescribed format to prove
the expenditure incurred. Physical verification of the assets acquired / created is carried out before disbursement
of loan.

The disbursement amount is released by keeping the margin stipulated on the value of the specific assets upon
completion of the legal formalities / documentation.

SECURITY :
i. Prime security in the form of fixed assets viz. land, building, plant & machinery financed by the Corporation
ii. Collateral security depending upon the type of project, location, technological obsolescence, risk perception
etc.

INTEREST RATES :
As may be decided by the Board of Directors of the Corporation from time to time. Presently the rate of interest is 13 % with 1.5 % incentive for prompt payment of principal installments and interest on due dates.

REPAYMENT PERIOD
Repayment schedule is fixed on the basis of the debt servicing capacity of the project. Maximum 8 years' repayment period inclusive of the moratorium period up to 2 years from the date of first disbursement is given. For certain schemes shorter repayment period is prescribed. Only interest payment commences during the moratorium period.

For repayment of Principal : Quarterly Installments.
For payment of interest : Monthly installments.

PERFORMANCE HIGHLIGHTS (Till March - 2004)
Term Loans Sanctioned Investment Catalysed No. of Units Assisted Employment Generated Share of SSI Sector (Numberwise)	Rs. 3417 crore Rs. 6672 crore 58549 14.09 Lakh 94 %

HEAD OFFICE
United India Building, 1st Floor, Sir P. M. Road, Fort, Mumbai - 400 001
* Tel. : (022) 22691911 / 12 / 13 / 14 * Fax : (022) 22691915
* E - Mail : msfchead@vsnl.net * Web : www.msfcfinance.com

REGIONAL OFFICES :
* Mumbai - Konkan * Thane, Daman & Diu * Pune * Nashik * Kolhapur * Aurangabad
* Amravati * Nagpur and * Panaji (Goa)

The State Industrial & Investment Corporation Of Maharashtra Limited (SICOM)

SICOM is a premier financial institution located in Mumbai, dedicated to catalyzing development in the Industry, Services and Infrastructure sectors in India by providing tailor-made financial solutions and advisory services to entrepreneurs, companies in the private and public sector and Government bodies.

SICOM Limited was established in 1966, by the Govt. of Maharashtra as a 100% state owned company, with the objective of industrialising the backward areas of the State of Maharashtra. In the 38 years since its inception, SICOM, as the State Industrial Development Corporation (SIDC) for Maharashtra, has offered a range of services and extended Long Term Financial Assistance of more than Rs. 4,000 crores to over 3,000 units. The total investment catalysed in the backward areas of the state was to the tune of Rs. 85,000 cores.

Nature of operations :
In the past, term lending was the predominant activity for SICOM, with other services having a smaller share in terms of percentage of the total income. Over the last five years the product-mix has been diversified and SICOM now offers a range of services, which include fund based , as well as non-fund-based services. Fund based activities include providing of financial assistance by way of long term loans, leasing, short and medium term loans, and bills discounting. The above activities are supplemented by fee based activities like corporate advisory services, mergers, amalgamations and restructuring. SICOM's infrastructure advisory services include feasibility study, preparation of bid documents, loan syndication and assisting in identification of joint venture partners. Even though SICOM has diversified its product range, industrial financing continues to be the focus area of operation for SICOM.

SICOM hopes to play a major role for the IT enterprise that are being set up in the State of Maharashtra. SICOM has realised that IT entrepreneurs have special needs and SICOM has designed new products which cater to their specific needs. The customized term loan packages, that are project oriented or cash flow related are offered to these companies.

SICOM has launched a venture fund with participation from SIDBI and UWB. The fund is managed by SICOM and is targeted to provide equity support to companies in Information Technology sector. The fund operates from Pune. Information about the fund can he had from it's website www.sicomindia.com.

SICOM's website www.sicomindia.com provides more information about SICOM and nature of its operations. There is also a special section on “buy and sell opportunities” wherein entrepreneurs who are interested in seeking or offering industrial properties, sick units / mergers / acquisitions / partnership opportunities get a chance to interact on-line, this facility is found very useful by investors.

To international and domestic entrepreneurs, SICOM provides value added advice in setting up projects in Maharashtra. This includes advice on
i) Project Location ii) Govt. Clearances iii) Assistance in Legal Documentation
iv) Arranging for infrastructure v) Funds syndication.

SICOM has been a profit making organization and has played a prominent role in the Industrial Development in the State of Maharashtra. SICOM is the nodal agency for NRI investment and FDI in Maharashtra. Further, SICOM successfully pioneered and operated the Package Scheme of Incentives of GoM. In 1995, following Government of India's policies of economic liberalisation and privatisation of PSUs, Govt. of Maharashtra privatized SICOM. Accordingly, 51% of GoM's stake in SICOM was divested, making SICOM the first and only SIDC so far, where Government has reduced its holding to below 50%.

Initially, SICOM adopted the Growth Centre strategy whereby select centres were identified viz. Nashik, Aurangabad, Nagpur, Roha, Butibori, etc. and then concentrated efforts were made to provide support services to nurture the industrialists setting up projects in these Growth Centres. It was believed that once the wheel of industrial development was set in motion, social development would follow. Over the years, one has seen this strategy bearing fruits. SICOM played an important role in implementing the Govt. of Maharashtra's specially designed policy offering incentives to the industrialists investing in backward area.

SICOM today
SICOM has five regional presence in Delhi, Nagpur, Pune, Aurangabad and Nashik. SICOM believes in continuously upgrading it's products and providing a wide range of financial and advisory services to Indian and International Investors.

SICOM is acting as an effective catalyst to encash the strengths of Maharashtra, such as industrial culture, comfortable power position, qualified human resources, excellent infrastructure, State Government's initiatives in attracting private investment in the infrastructure projects, good telecommunication network, five star category industrial parks with abundant water supply, excellent social infrastructure in the industrial locations, in attracting foreign investment as well as investment from the NRIs and Indian companies in Maharashtra. Corporate Office :
SICOM Limited, 'Nirmal', Nariman Point, Mumbai 400 021. Tel. No. : 5657 2700 / 2202 3018
Fax No. : 2282 5781 / 2288 2895 E-mail : agarde@sicomindia.com Website : www.sicomindia.com

Regional Offices :
Aurangabad : Anand Bhavan, 166, N-5 (South), CIDCO, Aurangabad 431 001.
Tel.No. : 0240 2484580 / 2484590 Fax No. : 0240 2484570 E-mail : bkedar@sicomindia.com

Nagpur : Udyog Bhavan, 3rd Floor, Civil Lines, Nagpur 440 001.
Tel.No. : 0712 2564358 / 2552312 Fax No. : 0712 2561575 E-mail : jsalve@sicomindia.com

Nashik : Ground Floor, Common Service Centre, Nashik Trambak Road, MIDC Area, Satpur,
Nashik 422 007
Tel.No. : 95253 2354770 Fax No. : 95253 2354719 E-mail : rbhosale@sicomindia.com

Pune : Kubera Chambers, Dr.Rajendra Prasad Road, Opp. Sancheti Hospital, Shivaji Nagar,
Pune 411 005.
Tel.No. : 9520 2553 33 71 / 2553 81 67 Fax No. : 9520 25533201 E-mail : amahadik@sicomindia.com

New Delhi : 2 B, Vandana Building, 2nd Floor, 11, Tolstoy Marg, New Delhi 110 001.
Tel.No. : 011 23736738 Fax No. : 011 2373 6928 E-mail : mdas@sicomindia.com

Trademark

WHAT IS A TRADEMARK?

A trademark is a word, name, logo or symbol or phrase or device, which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks, which are used in interState or foreign commerce, may be registered with the Trademark Office of concerned countries individually or through Madrid Agreement Route . India is yet to become Member of the Madrid agreement.
There exist three different types of trademark protection:

• Common law
• State / Federal registration

In order to gain common law rights in a trademark, the owner must use the mark on goods or services in commerce. These rights may be limited to the area in which the owner is doing business. Countries like India have, only federal registration system for trademarks. However some countries like USA have provision of registration in any State as well as from the federal trademarks office. In order to secure a State registration, the owner must use the goods or services in commerce and simply file the mark with the Secretary of State. The boundaries of protection for a State trademark are limited to the particular State. A federal trademark registration extends the owner's trademark rights nationwide. The federal registration serves as notice to all other trademark owners and generally trumps any other form of trademark protection, of course with some limitations

Functions of a Trade Mark

1. It identifies the product of its origin
2. It guaranties its unchanged quality
3. It advertises the products &
4. It creates an image for products

RELEVANT FORMS AND PROCEDURE FOR OBTAINING TRADEMARK IN INDIA

(a) Objectives

The aim of the Trademarks Registry is to provide for registration and better protection of trade marks in India and for the prevention of the use of fraudulent marks on merchandise.

b) Functions

The Trademarks Registry had been functioning since 1.9.1940 for the administration of the Trade and Merchandise Marks Act, 1958 read with the Trade and Merchandise Rules, 1959 Since September 20, 2003 the Trademarks Act 1999 read with The Trademark Rules 2001 has come in force

Apart from the above, the Trade Marks Registry has other functions like issue of search reports as to whether an identical or deceptively similar trade mark is already registered or filed, preliminary advice regarding distinctiveness of a trade mark, issuing of search certificate for use under the Copyright Act, preparation of search materials, maintenance of Register of Trade Marks, preparation of annual statistical reports, publication of Trade Marks Journal, publication of annual reports and the like. The new Trademark Rules have provisions to enable users / customers obtain Trademark Search. Report within a week.

Through a Government of India initiated project for modernisation and administration of the Trade Marks Registry with UNDP/WIPO assistance, it has resulted in the computerisation system functioning, fee receipt generation, numbering of applications, preliminary search report, examination of application, journal printing, renewal, change of name and address of registered proprietors etc. Complete database of trademarks is now available from its administrative organization.

c) Procedure for registration of trade marks

Before applying for registration of a trade mark, it is desirable to conduct a market survey through an investigating agency, etc. to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person /party in the market.

It is also desirable before applying for registration to obtain preliminary advice regarding the distinctiveness of the mark from the Registrar by making a request on form TM-55 with the prescribed fee of Rs.50/-. The request on form TM-55 can be filed at the Trade Marks Registry, Mumbai or at the regional branch offices at Delhi , Kolkata, Chennai or Ahamadabad.

Also a request on form TM-54 can be made with prescribed fee of Rs.50/- to the Trade Marks Registry, Mumbai or at the said any branches to obtain an official report to ascertain whether any identical or deceptively similar trade mark is pending for registration in respect of the same goods services. It is also possible to make a personal inspection or search through the records of the Trade Marks Registry on payment of prescribed fee of Rs.50/- per hour.

After following the above procedure, an application for a trademark may be made on form TM-1 with the prescribed fee of Rs.300/- at the appropriate office of the Trademarks Registry. The appropriate office means the office within whose territorial limits the applicant resides or has his principal place of business in India . In case of a foreign applicant, the place mentioned as address for service in India will determine the appropriate office at which the application should be filed.

An application on form TM-1 should be filed in triplicate along with fee of Rs.300/- and with 10 copies of additional representations of the mark. The additional representations shall contain the mark, name and address of the applicant, or MOA in case of a Society / Company, class, goods and date if any from which the mark has been used etc. A trademark particularly a device or figurative mark may preferably be a black and white representation on bromide prints of dimension of 8 cm x 8 cm. However if colour' is also an attribute in the Trademark for its distinctiveness, coloured photographs / print may be provided instead of said bromide paper.All the fees may be paid in cash, or Demand Draft or local cheques drawn in a scheduled bank at the place where the appropriate office is located payable in the name of the Registrar of Trademarks. An application to register a trademark should be made in respect of goods comprised in one class only.

COPYRIGHT LAW & PROCEDURE

Copyright aims at providing protection to authors (writers, artists, music composers, etc.) on their creations. Such creations are usually designated as “works”.
Topics covered under Copyright
Works covered by copyright include, but are not limited to, literary works such as novels, poems and plays; reference works such as encyclopedias and dictionaries; databases; newspaper articles; films and TV programs; musical compositions; choreography; artistic works such as paintings, drawings, photographs and sculptures; architecture; and advertisements, maps and technical drawings. Copyright also protects computer programs. Copyright does not however extend to ideas, but only to the expression of thoughts. For example, the idea of taking a picture of a sunset is not protected by copyright. Therefore, anyone may take such a picture. But a particular picture of a sunset taken by a photographer may be protected by copyright. In such a case, if someone else makes copies of the photograph, and starts selling them without the consent of the photographer, that person would be violating the photographer’s rights.
Protection accomplished automatically
Copyright protection is obtained automatically without any need for registration or other formalities. A work enjoys protection by copyright as soon as it is created.
However, many countries provide for a national system of optional registration and deposit of works. These systems facilitate, for example, questions involving disputes over ownership or creation, financing transactions, sales, assignments and transfers of rights.

Types of rights provided by Copyright
There are two types of rights under copyright:
(a) Economic rights, which allow the owner to derive financial reward from the use and exploitation of the work; and
(b) Moral rights, which highlight the personal link existing between the author and the work.
Economic rights covered by copyright
Under economic rights, the creators of a work can use their work as they see fit. They can also authorize or prohibit the following acts- in relation to a work:
- Reproduction in various forms, for example in a printed publication or by recording the work in cassettes, compact disks or videodiscs, or by storing it in computer memories;
- Distribution, for example through sale to the public of copies of the work;
- Public performance, for example by performing music during a concert, or a play on stage;
- Broadcasting and communication to the public, by radio or T.V, cable or satellite;
- Translation into other languages;
- Adaptation, for example by converting a novel or a play into a screenplay for a film;
Recent international developments also allow for works to be protected in the context of the Internet. The WIPO Copyright Treaty (WCT), concluded in 1996, addresses the challenges posed by today’s digital technology, thus ensuring that copyright owners will be adequately and effectively protected when their works are disseminated through new technology and communications systems such as the Internet.
Moral rights covered by copyright
Under moral rights, the author may claim:
- The right to have authorship recognized on the work. That is basically the right of the creator to have his or her name mentioned as the author, in particular when the work is used.
- The right to integrity of the work, that is the right to object to the work being modified, or being used in contexts that may cause harm to the reputation or honor of the author.
Exploitation of economic rights
Many creative works protected by copyright require financial investment and professional skills for their production and further dissemination and mass distribution. Activities such as book publishing, sound recording or film producing are usually undertaken by specialized business organizations or companies, and not directly by the authors. Usually, authors and creators transfer their rights to these companies by way of contractual agreements, in return for compensation. The compensation may take different forms, such as lump sum payments, or royalties based on a percentage of revenues generated by the work.Many authors do not have the ability or the means to manage their rights themselves. They often resort to collective management organizations or societies which provide for their members, the benefits of the organization’s administrative and legal expertise and efficiency in collecting, managing and disbursing royalties. These royalties are obtainedfrom the national and international use of a member’s work on a large scale, by, for example, broadcasting organizations, discotheques, restaurants, libraries, universities and schools.
Term of copyright
Copyright has a time limit: it usually lasts for the life of the author and 50 years after his death. The Berne Convention has established this rule, which is shared by the majority of countries, for the Protection of Literary and Artistic Works. Once the term has expired, the work is in the “public domain”. Thereafter, everybody will be free to use the work, without obtaining a specific authorization from the copyright owner. However, the Berne Convention allows providing for a longer period. In order to know what period of protection applies to a work in a particular country, it is advisable to read the national copyright legislation of that country.
Extent to which someone else’s work can be used without getting permission
Copyright is subject to limitations and exceptions, which take into account social, educational and other public policy considerations. International treaties, as well as national laws, allow to freely use limited portions of a work for certain purposes, such as news reporting, or making quotations in a way compatible with fair practices, or by way of illustration for teaching. Such cases of free use may vary from country to country and it is advisable to revert to the national law of that country, in order to verify whether advantage can be taken of such a possibility.
Need to protect copyright
Copyright contributes to human creativity by giving creators incentives in the form of recognition and fair economic rewards. Under this system of rights, creators are assured that their works can be disseminated without fear of unauthorized copying or piracy. This in turn helps increase access to the works and enhances the enjoyment of culture, knowledge, and entertainment all over the world.RELATED RIGHTS
Related rights provide protection to the following persons or organizations:
- Performers (actors, musicians, singers, dancers, or generally people who perform), in their performances;
- Producers of sound recordings (for example, cassette recordings and compact discs) in their recordings; and
- Broadcasting organizations, in their radio and television programs.
Sometimes, these rights are also referred to as neighboring rights.
Distinction between related rights and copyright
Copyright and related rights protect different people. Copyright protects authors of works. For example, in the case of a song, copyright protects the composer of the music and the writer of the words.In the same example, related rights would apply to:
- The musicians and the singer, who performs the song,
- The producer of the sound recording (called also phonogram) in which the song is included, and
- The organization that broadcasts a program containing the song.
Rights granted to the beneficiaries of related rights
National laws differ as to the extent of rights that are provided to performers, producers of sound recordings or broadcasting organizations.Different international treaties address this issue, such as the Rome Convention, the TRIPS Agreement, as well as the WIPO Performances and Phonograms Treaty (WPPT).Performers, in general, enjoy economic rights to prevent fixation, broadcasting and communication to the public of their live performances. Some national laws as well as the WIPO Performances and Phonograms Treaty (WPPT) grant them also rights of reproduction, distribution and rental of their performances fixed in phonograms, as well as moral rights to prevent unreasonable omission of their name, or to object to modifications to their performances included in a sound recording, if such modifications are likely to harm their reputation.Producers of sound recordings (also called phonograms) enjoy mainly the right to authorize or prohibit the reproduction and distribution of their sound recordings by others.Furthermore, the WIPO Performances and Phonograms Treaty (WPPT) ensures that producers of phonograms, as well as performers of works contained therein, are adequately and effectively protected when the sound recordings are disseminated through new technology and communications systems, such as the Internet.Broadcasting organizations are provided the rights to authorize or prohibit re-broadcasting, fixation and reproduction of their broadcasts. Related rights are subject to the same exceptions as for copyright, which would allow anyone to make free use of the performances, sound recordings or broadcasts for certain specific purposes, such as quotations, and news reporting.
Need to protect related rights
Performers are protected by reason of their creative contribution.Producers of sound recordings deserve protection because of the creative input as well as technical and financial resources needed to bring the recording to the public. Likewise broadcasting organizations have a justified interest in protecting their technical and organizational skill in programs from acts of piracy.

BASICS OF PATENT LAW INDIA

Patent law has been formulated with an objective to promote and protect the inventions and methods. The object of granting a patent is to encourage and develop science, technology and industry.
A patent can be defined as a grant of exclusive rights to an inventor over his invention for a limited period of time. The exclusive rights conferred include the right to make, use, exercise, sell or distribute the invention in India. The term of a patent is twenty years, after the expiry of which, the invention would fall into the public domain.
History
In 1957, Govt. of India appointed Justice N. Rajagopala Ayyangar examine and review the Patent law in India who submitted his report September 1959 recommending the retention of Patent System despite shortcomings. The Patent Bill, 1965 based mainly on his recommendations incorporating a few changes, in particular relating to Patents for food, drug, medicines, was introduced in the lower house of Parliament on 21st September, 1965. The bill was passed by the Parliament and the Patents Act 1970 came into force on 20th April 1972 along with Patent Rules 1972. This law was suited changed political situation and economic needs for providing impetus technological development by promoting inventive activities in the country.
Uruguay round of GATT negotiations paved the way for WTO. Therefore India was put under the contractual obligation to amend its patents act in compliance with the provisions of TRIPS. India had to meet the first set of requirements on 1- 1-1995. This was to give a pipeline protection till the country starts giving product patent. It came to force on 26th March 1999 retrospective from 1-1-1995. It lays down the provisions for filing of application for product patent in the field of drugs or medicines with effect from 01.01.1995 and grant of Exclusive Marketing Rights on those products.
India amended its Patents Act again in 2002 to meet with the second set of obligations (Term of Patent etc.), which had to be effected from 1-1-2000. This amendment, which provides for 20 years term for the patent, Reversal of burden of proof etc. came into force on 20th May, 2003. The Third Amendment of the Patents Act 1970, by way of the Patents (Amendment) Ordinance 2004 came into force on 1st January, 2005 incorporating the provisions for granting product patent in all fields of Technology including chemicals, food, drugs & agrochemicals and this Ordinance is replaced by the Patents (Amendment) Act 2005 which is in force now having effect from 1-1-2005 .
ESTABLISHMENT OF PATENT ADMINISTRATION IN INDIA
Patent system in India is administered under the superintendence of the Controller General of Patents, Designs, Trademarks and Geographical Indications.
The Office of the Controller General functions under the Department of Industrial Policy and Promotion, Ministry of Commerce and Industry. There are four patent offices in India. The Head Office is located at Kolkata and other Patent Offices are located at Delhi, Mumbai and Chennai. The Controller General delegates his powers to Sr. Joint Controller, Joint Controllers, Deputy Controllers and Assistant Controllers. Examiners of patents in each office discharge their duties according to the direction of the Controllers.
Hierarchy of Officers in Patent office
Controller General of Patents, Designs, Trademarks & GI
Examiners of Patents & Designs
Assistant Controller of Patents & Designs
Deputy Controller of Patents & Designs
Joint Controller of Patents & Designs
Senior Joint Controller of Patents & Designs
Patentable Inventions:
A patent can be granted for an invention which may be related to any process or product. The word “Invention “ has been defined under the Patents Act 1970 as amended from time to time.
“An invention means a new product or process involving an inventive step and capable of industrial application” (S. 2(1)(j))
“ new invention” is defined as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art; Where, Capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry
(S.2 (1)(ac)) Therefore, the criteria for an invention to be patentable are,
(1) An invention must be novel
(2) has an inventive step and
(3) is capable of industrial application
To be patentable, an invention should fall within the scope of patentable subject matter as defined by the patent statute. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. With regard to medicine or drug and certain classes of chemicals no patent is granted for the product itself even if new, only the process of manufacturing the substance is patentable. However, product patents would be available for drugs and food materials from 2005 as India’s obligations under the TRIPs Agreement would kick in from that point of time. If any substance falls outside the scope of patentable subject matter, it cannot be patentable.
NOT PATENTABLE INVENTIONS
There are some products and processes, which are not patentable in India They are classified into two categories in the patent act
a) Those which are not inventions (S.3)
b) Invention relating to atomic Energy (S.4)
Various types of non-patentable inventions under Section 3 are as follows-
3(a) An invention which is frivolous or which claims anything obvious contrary to well established natural laws.
Merely making in one piece, articles, previously made in two or more pieces is frivolous. Mere usefulness is not sufficient (Indian vacuum brake co. ltd vs. Laurd (AUR 1962 CAK 152).
Perpetual motion machine alleged to be giving output without any input is not patentable as it is contrary to natural law.
3(b) An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment
3(c) The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;
3(d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.
[Note: Before amendment of Section 3 (d) by the Patents (Amendments) Ordinance 2004 it reads as “mere discovery of any new property or new use for a known substance or mere use of a known process, machine or apparatus…”The insertion of the word “mere” before ‘new use for a known substance’ in this clause by the Patents (Amendment) Ordinance 2004, is for the purpose of drafting clarity only as without it the sub-section would have remained ambiguous. This does not restrict the non patentability and give rise to ambiguity and possible misuse. There is no need of giving wider meaning to it.]
3(e) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance:
3(f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
3(h) A method of agriculture or horticulture.
(i) A method of producing a new form of a known plant even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course is not patentable. (N.V. Philips Gloeiammpenfabrieken's Application 71 RFC 192).
3(i) Any process for the medicinal, surgical, curative, prophylactic diagnostic therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
Example: Clones and new variety of plants are not patentable. But process / method of preparing Genetically Modified Organisms are patentable subject matter.
3(m) A mere scheme or rule or method of performing mental act or method of playing game;
3(n) A presentation of information
3(o) Topography of integrated circuits;
INVENTIONS RELATING TO ATOMIC ENERGY (S.4)
“No Patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of section 20 of the Atomic Energy Act, 1962
Various types of Patent Applications in India
1. Ordinary application
2. Convention application
3. PCT international application
4. PCT National phase application
5. Application for Patent of addition
6. Divisional Application
Procedural requirements
An application for a patent in the prescribed form along with the prescribed fee has to be filed in the appropriate patent office. Examiners of patents scrutinize the application accompanied by a specification so that it satisfies the requirements. After examination, the Patent Office will raise objections and once the applicant convinces the Controller Of Patents will put the specification in the Official Gazette and on its acceptance without any controversy, a patent shall be granted.
A patent grant gives the patentee the exclusive right to make or use the patented article or use the patented process by preventing all others from making or using the patented article or using the patented process. The patentee can assign, grant licenses or deal for consideration.
The patent application passes through the following stages:

FILING
An application for a patent can be filed by the true and first inventor. It can also be filed the by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.
Form of Application
Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention.
Filing of a provisional specification allows the applicant to get an early application date.
Provisional Specification shall contain:
a. Title,
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
The complete specification shall contain:
a. Title,
b. Abstract,
c. Written Description,
d. Drawings (where necessary),
e. Sample or Model (if required by the examiner),
f. Enablement and BestMode,
g. Claims and
h. Deposit (Microorganisms)
Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.
Priority date is the date of reference used by the patent to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.
Place of Filing
Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.
Documents to be submitted at the time of filing
The following documents have to be submitted at the time of filing a patent application:
Form 1 - Application for the grant of patent.
Form 2 - Provisional or Complete Specification.
Form 3 - Statement and undertaking by the applicant.
Form 5 - Declaration as to inventorship.
Form 26 - Authorization of patent agent or any other person.
Priority document details have to be filed for a Convention application.
PUBLICATION
A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expires. It will also not be published if the application is withdrawn three months before publication date.
On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.
EXAMINATION
1. Request for Examination
The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.
2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements.
After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected.
The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application.
The controller has the power to reject the application, if the applicant does not comply with his requirements.
OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.
2. Post-grant Opposition
Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds:
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority date.
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesn’t satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve months from the date of convention application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.
3. Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.
GRANT OF PATENT
If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.
Assignments
A patentee may assign the whole or any part of the patent rights to the whole of India or any part thereof. There are three kinds of assignments: legal assignment, equitable assignment and mortgages. An assignment of an existing patent is a legal assignment where the assignee may enter his name as the patent owner. A certain share given to another person is called an equitable assignment and a mortgage is when patent rights are wholly or partly transferred to obtain money.
Licenses
A patentee may, by a license, permit others to make, use, or exercise, the invention which otherwise would not be allowed. The license should be in writing and the terms of which must be given in the application filed with the Controller. A license maybe given in express terms or implied from the circumstances. An exclusive license excludes all other persons including the patentee from the use of invention In a limited license the limitation may arise as to persons, time, place, manufacture, use or sale.
Compulsory Licenses and Government use of inventions
Under certain circumstances like when reasonable requirements are not satisfied, a very high royalty is quoted, when a patent cannot work without another related patent or on notification by the Central government, the Controller can grant a license to an interested person.
The Central or State government can use for a purpose of its own all patented inventions or processes either with or without royalty.
Revocation of a patent
A patent may be revoked by various modes namely revocation in the public interest by the Government or relating to atomic energy by Controller. A patent may also be revoked for non-working. The High Court may revoke a patent on noncompliance with the requirements for use of an invention or on petition by a person interested on various specified grounds.
A patentee may at any time offer to surrender his patent by giving notice to the Controller, whom after hearing the parties may revoke the patent.
Patent enforcement and Infringement of patents
Infringement of a patent is the violation of the exclusive rights of the patentee.
Determination of infringement depends on the scope of exclusive rights of the patentee, whether the infringer’s acts amount to making, using, selling or distributing a product or using a method and if in fact the acts amount to an infringement. The burden of proof is on the patent owner for proving infringement.
Defenses
The defendant in a suit for infringement may plead one or more defenses. He can claim the patent owner is not entitled to sue for infringement or deny any infringement. Any leave or license express or implied to use the invention does not amount to infringement and where infringement is invalid on certain grounds.
Acts done in connection with government use, experiment, research, education and falling within the scope of innocent infringement or done after failure to pay renewal fee or before the date of amendment of the specification do not amount to infringement. A defendant may also counter claim for revocation of patent.
Remedies
Injunctions act as a preventive relief to the patentees. The patent owner at the start of a trial can request for an interim injunction in order to restrain the infringer from continuing the infringement to prevent further losses. Permanent injunction is given based on the merits of the case at the end of the trial. A patent owner is entitled to the relief of damages as compensation to the patentee and not punishment to the infringer. The patent owner may also opt for the account of profits where he has to prove use of invention and the amount of profit derived from such illegal use.