Chapter 14
Use of patent for purposes of Government
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Use
of patent for the purpose of Government An
invention is said to be used for the purpose of Government if it is made, used,
exercised or vended for the purposes of Central Government, a State
Government or a Government undertaking. |
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Power of Central Government to use
inventions a.
Where an invention has, before the
priority date of the relevant claim of the complete specification, been duly
recorded in a document, or tested or tried, by or on behalf of the government
or a government undertaking, otherwise than in consequence of the communication
of the invention directly or indirectly, by the patentee or by a person from
whom he derives title, any use of the invention by the Central Government or
any person authorized in writing by it for the purposes of government may be
made free of any royalty or other remuneration to the patentee. b.
If and so far as the invention has
not been so recorded or tried or tested as aforesaid, any use of the
invention made by the Central Government of any person authorized by it as
above said, at any time after grant of the patent or in consequence of any
such communication as aforesaid, shall be made upon terms as may be agreed
upon either before or after the use, between the Central Government or any
person authorised by Central Government and the patentee, or, as may in
default of agreement be determined by the High Court on a reference under
Section 103. In case of any such
use of any patent, the patentee shall be paid not more than adequate
remuneration in the circumstances of each case, taking into account the
economic value of the use of the patent. c.
The authorisation by the Central
Government in respect of an invention may be given either before or after the
patent is granted and either before or after the acts in respect of which
such authorisation is given or done, and may be given to any person, whether
or not he is authorised directly or indirectly by the applicant or the
patentee to make, use, exercise or vend the invention or import the machine,
apparatus or other article or medicine or drug covered by such patent. d.
Where an invention has been used by
or with the authority of the Central Government for the purposes of
government then except in case of national emergency or other circumstances
of extreme urgency or for non-commercial use, the government shall notify the
patentee as soon as practicable of the fact and furnish him with such
information as to the extent of the use of the invention as he may, from time
to time, reasonably require. Where the invention has been used for the
purposes of a government undertaking, the Central Government may call for
such information as may be necessary for this purpose from such undertaking. e.
The right to make, use, exercise and
vend an invention for the purposes of government shall include the right to
sell on non-commercial basis, the goods which have been made in exercise of
that right, and a purchaser of goods so sold, and a person claiming through
him, shall have the power to deal with the goods as if the Central Government
or the person authorised by the Central Government were the patentee of the
invention. f.
Where in respect of a patent which
has been the subject of an authorisation, there is an exclusive licensee or
where such patent has been assigned to the patentee in consideration of
royalties or other benefits determined by reference to the use of the
invention (including payments by way of minimum royalty), the notice shall
also be given to such exclusive licensee or assignor, as the case may be, and
the reference to the patentee shall be deemed to include a reference to such
assignor or exclusive licensee. |
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Rights of third parties a.
In relation to any use of a patented invention,
or an invention in respect of which an application for a patent is pending,
made for the purposes of government
i.
by the Central Government or any
person authorised by the Central Government under section 100; or
ii.
by the patentee or applicant for the
patent to the order made by the Central Government, the provisions of
any licence, assignment or agreement granted or made, between the patentee or
applicant for the patent (or any person who derives title from him or from
whom he derives title) and any person other than the Central Government shall
be of no effect so far as those provisions—
i.
restrict or regulate the use for the
purposes of government of the invention, or of any model, document or
information relating thereto, or
ii.
provide for the making of payments in
respect of any use of the invention or of the model, document or information
relating thereto for the purposes of government and
the reproduction or publication of any model or document in connection with the
said use for the purposes of government shall not been deemed to be an
infringement of any copyright subsisting in the model or document. b.
Where the patent, or the right to
apply for or obtain the patent, has been assigned to the patentee in
consideration of royalties or other benefits determined by reference to the
use of the invention then, in relation to any use of the invention made for
the purposes of government by the patentee to the order of the Central
Government, sub-section (3) of section 100 shall have effect as if that use
were made by virtue of an authority given under that section, and any use of
the invention for the purposes of government by virtue of sub-section (3) of
that section shall have effect as if the reference to the patentee included a
reference to the assignor of the patent, and any sum payable by virtue of
that sub-section shall be divided between the patentee and the assignor in
such proportion as may be agreed upon between them or as may in default of
agreement be determined by the High Court on a reference under Section 103. c.
Where by virtue of sub-section (3) of
section 100, payments are required to be made by the Central Government or
persons authorised under sub-section (1) of that section in respect of the
use of an invention for the purposes of government, and where in respect of
such patent there is an exclusive licensee authorised under his licence to
use the invention for the purposes of government, such sum shall be shared by
the patentee and such licensee in such proportions, if any, as may be agreed
upon between them or as may in default of agreement be determined by the High
Court on a reference under section 103 to be just, having regard to any
expenditure incurred by the licensee—
i.
in developing the said invention; or
ii.
in
making payments to the patentees other than royalties or other benefits
determined by reference to the use of the invention in consideration of the
licence. |
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Acquisition of inventions a.
The Central Government may, if
satisfied that it is necessary that an invention which is the subject of an
application for a patent or a patent should be acquired from the applicant or
the patentee for a public purpose, publish a notification to that effect in
the Official Gazette, and thereupon the invention or patent and all rights in
respect of the invention or patent shall, by force of this section, stand
transferred to and be vested in the Central Government. b.
Notice of the acquisition shall be
given to the applicant, and, where a patent has been granted, to the patentee
and other persons, if any, appearing in the register as having an interest in
the patent. c.
The Central Government shall pay to
the applicant, or as the case may be, the patentee and other persons
appearing on the register as having an interest in the patent such other
compensation as may be agreed upon between the Central Government and the
applicant or the patentee and other persons; or, as may, in default of
agreement, be determined by the High Court on a reference under section 103
to be just having regard to the expenditure incurred in connection with the
invention and, in the case of a patent, the term thereof, the period during
which and the manner in which it has already been worked (including the
profits made during such period by the patentee or by his licensee whether
exclusive or otherwise) and other relevant factors. |
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Reference of disputes to High Court a.
Any dispute as to the exercise by the
Central Government or a person authorised by it of the powers conferred by
section 100, or as to terms for the use of an invention for the purposes of
government thereunder or as to the right of any person to receive any part of
a payment made in pursuance of sub-section (3) of that section or as to the
amount of compensation payable for the acquisition of an invention or a
patent under section 102, may be referred to the High Court by either party
to the dispute in such manner as may be prescribed by the rules of the High
Court. b.
In any proceedings under this section
to which the Central Government is a party, the Central Government may—
i.
if the patentee is a party to the
proceedings, petition by way of counter-claim for revocation of the patent on
any ground upon which a patent may be revoked under section 64; and
ii.
whether
a patentee is or is not a party to the proceedings, put in issue the validity
of the patent without petitioning for its revocation. c.
If in such proceedings as aforesaid
any question arises whether an invention has been recorded, tested or tried
as is mentioned in section 100, and the disclosure of any document regarding
the invention, or of any evidence of the test or trial thereof, would, in the
opinion of the Central Government, be prejudicial to the public interest, the
disclosure may be made confidentially to the advocate of the other party or
to an independent expert mutually agreed upon. d.
In determining under this section any
dispute between the Central Government and any person as to terms for the use
of an invention for the purposes of government, the High Court shall have
regard to any benefit or compensation which that person or any person from
whom he derives title, may have received, or may be entitled to receive,
directly or indirectly in respect of the use of the invention in question for
the purposes of government. e.
In any proceedings under this
section, the High Court may at any time order the whole proceedings or any
question or issue of fact arising therein to be referred to an official
referee, commissioner or an arbitrator on such terms as the High Court may
direct, and 0072eferences to the High Court in the foregoing provisions of
this section shall be construed accordingly. a.
Where the invention claimed in a
patent was made by a person who at time it was made was in the service of the
Central Government or of a State Government or was an employee of a
government undertaking and the subject-matter of the invention is certified
by the relevant government or the principal officer of the government
undertaking to be connected with the work done in the course of the normal
duties of the government servant or employee of the government undertaking,
then, notwithstanding anything contained in this section, any dispute of the
nature referred to in sub-section (1) relating to the invention shall be
disposed of by the Central Government conformably to the provisions of this
section so far as may be applicable, but before doing so the Central
Government shall give an opportunity to the patentee and such other parties
as it considers have an interest in the matter to be heard. |
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