Rights and obligations of patentee — Intellectual Property Rights I Notes

Rights and obligations of patentee

A patent looks like an absolute right to stop the whole world. It is not. Every right the patentee holds comes paired with a limitation — a compulsory licence here, a government use there — because the monopoly exists for the public, not against it.

The rights of a patentee

Once granted, a patentee has the exclusive rights in s.48, which differ for products and processes:

For a product patent — the exclusive right to prevent others from making, using, offering for sale, selling, or importing the patented product in India without consent.
For a process patent — the exclusive right to prevent others from using the process, and from using/selling/importing the product obtained directly by that process.

Flowing from s.48, the patentee may also:

exploit the invention himself (manufacture and sell it);
assign or licence the patent to others (s.68 — see Topic 10);
surrender the patent (s.63); and
sue for infringement and claim injunction, damages or account of profits (s.108).

The term is 20 years from filing (s.53).

The obligations and limitations

The rights are not absolute. A patentee is subject to:

Working the patent. The patentee is expected to work the invention in India commercially; failure invites a compulsory licence after three years (s.84) and a duty to file working statements (Form 27).
Compulsory licensing (ss.84, 92). If the reasonable requirements of the public are not met, or the invention is not available at a reasonable price, or not worked in India, a third party may obtain a licence.
Government use and acquisition (ss.99–103). The Central Government may use or acquire the patent for its own purposes, with compensation.
Payment of renewal fees (s.53). Non-payment causes the patent to lapse.
No patenting of excluded subject-matter and truthful disclosure — a patent obtained by suppression can be revoked (s.64).
Bolar/experimental use (s.107A) and parallel import — others may use the invention to develop information for regulatory approval.

Patents Act, 1970, s.48: “a patent granted under this Act shall confer upon the patentee — (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India; (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties… from the act of using that process, and from using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.”

In Simple Terms: A patentee can stop others making, using, selling or importing the invention, and can licence or sell the patent — but must actually work it in India, pay renewal fees, and yield to compulsory licences and government use when the public interest demands. Every right has a leash.

🧩 WORKED EXAMPLE — right meets limitation

Facts. A patentee of a life-saving drug refuses to licence it and prices it beyond most patients’ reach, three years after grant.

Rule. s.48 gives exclusive rights, but s.84 allows a compulsory licence where the invention is not available at a reasonably affordable price.

Apply. The patentee’s exclusive right is real, but it is limited by s.84. A third party may apply for a compulsory licence on the “not reasonably affordable” ground.

Conclusion. The right to exclude is overridden by the public-interest limitation — exactly the pairing the examiner wants: right (s.48) + its counter-limitation (s.84). This is what happened in Natco v Bayer (2012).

flowchart TD
    PT["Patentee"]:::root
    PT --> R["Rights (s.48): make, use, sell, import; licence; sue"]:::leaf
    PT --> O["Obligations / limits"]:::leaf
    O --> W["Work the patent in India (s.84)"]:::leaf
    O --> CL["Yield to compulsory licence (ss.84, 92)"]:::leaf
    O --> GOV["Yield to government use (ss.99-103)"]:::leaf
    O --> FEE["Pay renewal fees (s.53)"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Natco Pharma v Bayer Corporation (2012) — the patentee’s exclusive right is limited by s.84; a compulsory licence was granted because the drug was neither affordable nor worked in India.
F. Hoffmann-La Roche v Cipla (2012/2015) — the patentee may sue to enforce s.48 rights, but the defendant may challenge validity as a defence.

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