Penalties and reliefs under the Patents Act

Penalties and reliefs under the Patents Act

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Introduction

Chapter XX of the Patents Act, 1970 lays down the provisions on penalties under the Patent law. Section 118 to Section 124 lays down the various parameters for imposing penalties for acts which are prohibited under the Patent law. The penalties envisaged under the Act are in the form of fines, imprisonment or both.  

The primary reason for imposing penalties under the Patent law is to safeguard and protect a Patent from illegal exploitation and also preserve the interest of the patentee. Penalties under the Patent Act can be imposed in the following circumstances:

  • contravention of secrecy provisions;
  • making false entries in the register;
  • producing or tendering any false writing or entry as evidence;
  • unauthorised claim to a patent right;
  • uses the words ‘patent office’ wrongfully;
  • any person refusing or failing to supply information;
  • practice by non-registered patent agents;
  • An offence committed by companies. 

Grounds for Imposition of Penalties 

Where a person fails to comply with the directions prescribed under Section 35 related to secrecy provisions of certain inventions or where residents make an application for the grant of a patent outside India without prior permission (Section 39) is punished with imprisonment for a term which may extend to two years or with fine, or both.1 Therefore, contravention of secrecy provisions relating to certain inventions is penalized under the Act.  

The secrecy of an invention typically involves prohibiting or restricting the publication or communication of information related to the invention and the need to preserve the invention to maintain its worth. Thus, any breach of such secrecy would attract penal consequences. Moreover, a person who is a resident of India can make an application for the grant of a patent for an invention outside India only with the authority of a written permit granted by the Controller of Patents and failure to do so without prior permission shall also attract penal consequences.   

Where a person makes a false entry in any register maintained under the Patents Act or makes false writing claiming it to be a copy of an entry in the register or produces or tenders any writing or entry knowing that it is false evidence, shall be punished.2 Therefore, falsification of entries in the register etc. is punishable with imprisonment for a term which may extend to two years or with fine, or both.

Section 120 of the Act penalizes instances of unauthorised claims to patent rights. Thus, any person who falsely represents any article sold by him to be patented in India or is the subject of an application for a patent in India is punished with a fine which may extend to one lakh rupees. A person may falsely represent an article to be patented in India: 

  • if the article is stamped, engraved or impressed on or applied to with the words “patent” or “patented”; or 
  • any other word which expresses or implies that a patent for the article has been obtained in India.
  • if the article is stamped, engraved or impressed on or applied to with the words “patent applied for”, “patent pending”; or
  • any other words which imply that an application for a patent has been made in India for the article.   

Moreover, a person will be punished if he uses the words “patent office” or any other word on his place of business or any document issued by him which can reasonably lead to the belief that his place of business is officially connected with the patent office.3 Therefore, wrongful use of the words “patent office” is punishable with imprisonment for a term which may extend to six months or with fine or both.  

A person shall also be punished if he refuses or fails to provide:4

  • any information to the Central Government which he is required to furnish under Section 100 (5);
  • any information or statement to the Controller which he is required to furnish under Section 146.

Therefore, failure or refusal to supply information is punishable with fine which may extend 10 lakh rupees. Furthermore, where a person is required to furnish information and he furnishes:

  • false information or statement; or
  • The information which he knows is false; or
  • The information which he has reason to believe is false; or
  • The information which he does not believe to be true.

shall be punished with imprisonment which may extend to 6 months, or with fine or both. 

Where a person contravenes the provisions of section 129 i.e., fails to comply with the restrictions to practice as patent agents shall also be punished. Therefore, practice by non-registered patent agents attracts punishment with fine up to 1 lakh rupees in case of a first offence and up to 5 lakh rupees in the case of a second or subsequent offence.5

Where an offence is committed by a company under the Act, the company and every person who is in charge and responsible towards the business conducted by the company at the time of the commission of the offence shall be guilty of the offence and proceedings shall be initiated against the offender and punished accordingly.6 However, a person shall not be punished if he proves:

  • that the offence was committed without his knowledge; or
  • He exercised all due diligence to prevent the offence from being committed.     

Where an offence is committed by a company and it is proved that the offence has been committed:

  • with the consent or connivance of; or
  • the commission of the offence can be attributed to any neglect on the part of any director, manager, secretary or any other officer of the company;

then such a person will also be considered guilty of the offence which has been committed and proceedings shall be instituted against him and be punished accordingly.7 Therefore, offences committed by companies is punishable under the Act but no specific terms of punishment have been prescribed in case of such offences committed by a company under the Act. 

Conclusion

The category of offences which attract penal consequences under the Act include violation of secrecy provisions with respect to certain inventions (defence purposes), making false entries in the register, claiming patent rights in an unauthorised manner, using the words “patent office” wrongfully, refusal or failure to supply information, non-registered patent agents practising or where offences are committed by companies.

Therefore, the provisions related to penalty have been incorporated in the Patents Act, 1970 to safeguard and prevent a patent from being illegally misused or exploited and also to preserve the interest of the patentee who has an exclusive right over the invention which has been granted a patent. The Act prescribes punitive as well as pecuniary punishment for offences committed under the Act. 

The penal consequences are important for the larger interest of the society and the patentee to ensure respect for the law. The provisions on penalty under the Act provide the beneficiaries with a real and effective remedy for the violation of their rights. Therefore, penal sanctions have a repressive purpose and mainly serves to protect the interest of the patentee’s exclusive rights.    


Endnotes

1.  The Patents Act, 1970 (Act 39 of 1970), s. 118. 

2.  The Patents Act, 1970 (Act 39 of 1970), s. 119. 

3.  The Patents Act, 1970 (Act 39 of 1970), s. 121. 

4.  The Patents Act, 1970 (Act 39 of 1970), s. 122. 

5.  The Patents Act, 1970 (Act 39 of 1970), s. 123. 

6.  The Patents Act, 1970 (Act 39 of 1970), s. 124 (1).  

7.  The Patents Act, 1970 (Act 39 of 1970), s. 124 (2). 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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