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December 2025Q. 5(a)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Innovatech Pharma Pvt. Ltd., a registered Indian pharmaceutical company, was granted a patent in 2018 for its drug ‘Painexol’, used to treat chronic pain. In 2020, Innovatech developed an improved formula for Painexol that reduced its side effects and filed a patent of addition for this improvement. By 2022, Elixir BioCare Ltd., a competing pharmaceutical company, approached the Controller of Patents seeking a compulsory licence to manufacture and distribute a generic version of Painexol in India. Meanwhile, Innovatech failed to pay the patent renewal fees for 2023, attributing the oversight to clerical errors during financial restructuring. In March 2024, Innovatech applied for the restoration of the lapsed patent.
Elixir BioCare opposed this application, citing the delay and lack of bona fide intention and simultaneously began selling generic Painexol even before receiving a compulsory licence.
In view of the above case, answer the following questions :
(i)What advantage will Innovatech have as a patentee under the Indian Patents Act ?
Innovatech will have following Advantages as a patentee under the Patents Act, 1970 -
•Patentee have the complete rights to restrict outsider from making, operating, providing accessibility to be bought, providing or putting in the product generated by him, without his consent. He has absolute prerogative to utilize his invention and his rights that are very much ensured under the Act.
•The patentee has a privilege to file the suit for infringement of his patent and can ask for remedies like, Injunction, compensation and a settlement of profit against the individual who infringe his patent.
•Patentee can commercially exploit or pitch his creation to any skilled individual and concede permit to him to abuse his item and in this way the patentee can likewise wins benefit along these lines.
•The holder of the exclusive permit can also avail the rights given to the patentee and can bring a suit if there should arise an occurrence of any encroachment of Patent.
•A patentee gets the privilege to make changes in or alterations of an invention depicted or uncovered in the total determination of the primary innovation and get the particular right of a patent by the substantial change or patent as a matter of addition/certain adjustment.
Source: ICSI Guideline Answers, December 2025, Q. 5(a)(i) (Syllabus 2022).
June 2024Q. 5(b)(iv)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In the case of Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979) 2 SCC 511, it was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new technology and industrial progress. A limited-time grant of the only right to own, use, or sell a patented method or product encourages the development of new commercially useful inventions. The disclosure of the invention to the Patent Office, which becomes public domain after a predetermined duration of the monopoly, is the cost of the monopoly grant. In Raj Prakash Vs. Mangat Ram Choudhary AIR 1978 Delhi l, it was held that inventive creation, as is notable, is to discover something or find something not found or found by anybody previously. It isn’t essential that the invention ought to be anything confounded. The fundamental thing is that the creator was first to embrace it. The main issue in this manner, is that each basic creation is asserted, as in the form of novelty or new character, it will be considered as an invention and the cases & specifications must be perused in that light.
Section 2(1) (ja) of the Patent Act, 1970 defines the term inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art. Section 6 of the Act provides that who can make an application for a patent for an invention.
Consider the above statements, answer the questions :
(iv)State any two advantages of patent.
Advantages of Patents are as given below:
•Patentee have the complete rights to restrict outsider from making, operating, providing accessibility to be bought, providing or putting in the product generated by him, without his consent. He has absolute prerogative to utilize his invention and his rights that are very much ensured under the Act.
•The patentee has a privilege to file the suit for encroachment of his patent and can ask for remedies like. Injunction, compensation and a settlement of profit against the individual who encroached his patent.
•Patentee can commercially exploit or pitch his creation to any skilled individual and concede permit to him to abuse his item and in this way the patentee can likewise wins benefit along these lines.
•The holder of the exclusive permit can also avail the rights given to the patentee and can bring a suit if there should arise an occurrence of any encroachment of Patent.
•A patentee gets the privilege to make changes in or alterations of an invention depicted or uncovered in the total determination of the primary innovation and get the particular right of a patent by the substantial change or patent as a matter of addition certain adjustment.
Source: ICSI Guideline Answers, June 2024, Q. 5(b)(iv) (Syllabus 2022).
December 2024Q. 6A(iv)5 marksSyllabus 2022OR, alternative to Q. 6
(iv)Write short notes on the following with regard to the Patents Act, 1970 :
•Compulsory Licences
•Patent Agent.
Compulsory Licenses Compulsory licenses are authorizations given to a third-party by the Controller General to make, use or sell a particular product or use a particular process which has been patented, without the need of the permission of the patent owner. This concept is recognised at both national as well as international levels, with express mention in both Patents Act, 1970 and TRIPS Agreement. There are certain prerequisite conditions, given under sections 84-92 of the Patents Act, 1 which need to be fulfilled if a compulsory license is to be granted in favour of someone.
Grant of compulsory licence on patent could be on any of the following grounds, namely:
(a)that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
(b)that the patented invention is not available to the public at a reasonably affordable price, or
(c)that the patented invention is not worked in the territory of India.
Patent Agent The work relating to drafting of specifications, making of application for a patent, subsequent correspondence with the Patent office on the objections raised, representing the applicant’s case at the hearings, filing opposition and defending application against opposition is entrusted to a qualified Patent Agent. Sections 125-132 of the Patents Act, 1970 read with the Patents Rules dealt in with the Patent Agents.
****
Source: ICSI Guideline Answers, December 2024, Q. 6A(iv) (Syllabus 2022).
June 2025Q. 6A(iv)5 marksSyllabus 2022OR, alternative to Q. 6
(iv)How a Patent Specification is prepared ? When is an Application for patent published as per the Patent Act, 1970 ?
A patent specification can be prepared by the applicant himself or his registered and authorized agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain atleast one claim or statement of claims defining the scope of the invention for which protection is sought for.
Every application for patent is published after expiry of 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published.
(A)Application in which secrecy direction is imposed.
(B)Application which has been abandoned u/s 9(1) and i.e. when a provisional application has been filed and the complete application has not been filed with 12 months from the filing of the provisional application.
(C)Application which has been withdrawn 3 months prior to 18 months.
(5 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 6A(iv) (Syllabus 2022).
December 2023Q. 6A(i)5 marksSyllabus 2022OR, alternative to Q. 6
(i)An application for registration of patents is filled with provisional specification indicating the subject matter to which the invention relates. State the contents of specification.
A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. The provisional specification is a permanent and independent scientific cum legal document and no amendment is allowed in this. No patent is granted on the basis of a provisional specification. It has to be followed by a complete specification for obtaining a patent for the said invention.
Complete specification must be submitted within 12 months of filing the provisional specification.
Section 10 of the Patents Act, 1970 provides that every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
Every complete specification is required to:
(a)Fully and particularly describe the invention and its operation or use and the method by which it is to be performed
(b)Disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection
(c)End with a claim or claims defining the scope of invention for which protection is claimed
(d)Be accompanied by an abstract to provide technical information on the invention.
Source: ICSI Guideline Answers, December 2023, Q. 6A(i) (Syllabus 2022).
December 2023Q. 5(v)3 marksSyllabus 2022
Show the facts common to all parts of Q. 5
X Pharmaceuticals Ltd., a renowned pharmaceutical company engaged in producing new pharmaceutical drugs have developed a new drug applying the process of making, combing drugs of a chemical materials and a micro-organism. X Pharmaceuticals Ltd.
had patented this new innovative process to the Appropriate authority and got its patent registered. Whereas Y Instra Lab Pvt. Ltd. engaged in producing pharma drugs developed a drug of a combination of drug of penicillin and lactobacilli following the same process as X Pharmaceuticals Ltd. used in producing its drugs and already entered the market with their combination of drug product for quite a few months.
X Pharmaceuticals Ltd., claimed that they have developed the process of manufacturing their drugs after years of research and development as also claimed that they have evolved a new process in producing the same drug with a new process hitherto unknown to the Pharmaceutical word. X Pharmaceuticals Ltd. filed a suit against Y Instra Lab Pvt. Ltd for seeking expert ad interim injunction restraining Y Instra Lab Pvt. Ltd. from using the said process for its products and marketing them. In light of the above, answer the following questions :
(v)What relief/award/order can be provided for X Pharmaceuticals Ltd. in this instant case.
If this instant case is referred to Court for Judgment /order/relief, the Hon'ble Court will vacate ex-parte ad interim injunction and will reject the application for interim injunction due to patented process lacking and not meeting the criteria of novelty and inventive step for its patentability.
Source: ICSI Guideline Answers, December 2023, Q. 5(v) (Syllabus 2022).
June 2025Q. 6(a)5 marksSyllabus 2022
(a)Rajat, the proprietor of RC Associates, filed an application for a patent with the Controller for his new invention of a ‘‘Smart Watch.’’ However, the Controller is of the opinion that the invention cannot be performed without a substantial risk of infringement of a claim of another existing patent. What directions may the Controller issue to Rajat under Section l9 of the Patents Act, 1970 ?
Section 19 of the Patents Act, 1970 provides that if in consequence of the investigations it appears to the Controller that an invention in respect of which an application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent, be inserted in the applicant’s complete specification by way of notice to the public within such time as may be prescribed, unless
a)the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or
b)the complete specification is amended to the satisfaction of the Controller.
The reference shall be inserted in the following form, namely: “Reference has been directed, in pursuance of Section 19(2) of the Patents Act, 1970 to Patent No.......”.
Where after a reference to another patent has been inserted in a complete specification in pursuance of a direction under Section 19(1):
a)that other patent is revoked or otherwise ceases to be in force; or
b)the specification of that other patent is amended by the deletion of the relevant claim; or
c)it is found, in proceedings before the court or the Controller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant’s invention, the Controller may, on the application of the applicant delete the reference to that other patent.
(5 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 6(a) (Syllabus 2022).
December 2025Q. 5(a)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Innovatech Pharma Pvt. Ltd., a registered Indian pharmaceutical company, was granted a patent in 2018 for its drug ‘Painexol’, used to treat chronic pain. In 2020, Innovatech developed an improved formula for Painexol that reduced its side effects and filed a patent of addition for this improvement. By 2022, Elixir BioCare Ltd., a competing pharmaceutical company, approached the Controller of Patents seeking a compulsory licence to manufacture and distribute a generic version of Painexol in India. Meanwhile, Innovatech failed to pay the patent renewal fees for 2023, attributing the oversight to clerical errors during financial restructuring. In March 2024, Innovatech applied for the restoration of the lapsed patent.
Elixir BioCare opposed this application, citing the delay and lack of bona fide intention and simultaneously began selling generic Painexol even before receiving a compulsory licence.
In view of the above case, answer the following questions :
(ii)What are the Criteria of Patentability ?
An invention is patentable subject matter if it meets the following criteria –
•It should be novel.
•It should have inventive step or it must be non-obvious.
•It should be capable of Industrial application.
•It should not attract the provisions of Section 3 and 4 of the Patents Act, 1970.
Source: ICSI Guideline Answers, December 2025, Q. 5(a)(ii) (Syllabus 2022).
June 2024Q. 5(b)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In the case of Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979) 2 SCC 511, it was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new technology and industrial progress. A limited-time grant of the only right to own, use, or sell a patented method or product encourages the development of new commercially useful inventions. The disclosure of the invention to the Patent Office, which becomes public domain after a predetermined duration of the monopoly, is the cost of the monopoly grant. In Raj Prakash Vs. Mangat Ram Choudhary AIR 1978 Delhi l, it was held that inventive creation, as is notable, is to discover something or find something not found or found by anybody previously. It isn’t essential that the invention ought to be anything confounded. The fundamental thing is that the creator was first to embrace it. The main issue in this manner, is that each basic creation is asserted, as in the form of novelty or new character, it will be considered as an invention and the cases & specifications must be perused in that light.
Section 2(1) (ja) of the Patent Act, 1970 defines the term inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art. Section 6 of the Act provides that who can make an application for a patent for an invention.
Consider the above statements, answer the questions :
(i)What are the criteria for patenting the invention ?
An invention relating either to a product or process is patentable subject matter if it meets the following criteria-
•It should be novel.
•It should have inventive step or it must be non-obvious.
•It should be capable of Industrial application.
It should not attract the provisions of section 3 and 4 of the Patents Act. 1970.
Source: ICSI Guideline Answers, June 2024, Q. 5(b)(i) (Syllabus 2022).
June 2024Q. 5(b)(iii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In the case of Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979) 2 SCC 511, it was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new technology and industrial progress. A limited-time grant of the only right to own, use, or sell a patented method or product encourages the development of new commercially useful inventions. The disclosure of the invention to the Patent Office, which becomes public domain after a predetermined duration of the monopoly, is the cost of the monopoly grant. In Raj Prakash Vs. Mangat Ram Choudhary AIR 1978 Delhi l, it was held that inventive creation, as is notable, is to discover something or find something not found or found by anybody previously. It isn’t essential that the invention ought to be anything confounded. The fundamental thing is that the creator was first to embrace it. The main issue in this manner, is that each basic creation is asserted, as in the form of novelty or new character, it will be considered as an invention and the cases & specifications must be perused in that light.
Section 2(1) (ja) of the Patent Act, 1970 defines the term inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art. Section 6 of the Act provides that who can make an application for a patent for an invention.
Consider the above statements, answer the questions :
(iii)What can be Patented ?
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under sections 3 and 4 of the Act.
Source: ICSI Guideline Answers, June 2024, Q. 5(b)(iii) (Syllabus 2022).
December 2023Q. 5(i)5 marksSyllabus 2022
Show the facts common to all parts of Q. 5
X Pharmaceuticals Ltd., a renowned pharmaceutical company engaged in producing new pharmaceutical drugs have developed a new drug applying the process of making, combing drugs of a chemical materials and a micro-organism. X Pharmaceuticals Ltd.
had patented this new innovative process to the Appropriate authority and got its patent registered. Whereas Y Instra Lab Pvt. Ltd. engaged in producing pharma drugs developed a drug of a combination of drug of penicillin and lactobacilli following the same process as X Pharmaceuticals Ltd. used in producing its drugs and already entered the market with their combination of drug product for quite a few months.
X Pharmaceuticals Ltd., claimed that they have developed the process of manufacturing their drugs after years of research and development as also claimed that they have evolved a new process in producing the same drug with a new process hitherto unknown to the Pharmaceutical word. X Pharmaceuticals Ltd. filed a suit against Y Instra Lab Pvt. Ltd for seeking expert ad interim injunction restraining Y Instra Lab Pvt. Ltd. from using the said process for its products and marketing them. In light of the above, answer the following questions :
(i)Is the process developed by X Pharmaceuticals Ltd., is new and innovative ?
An invention is patentable subject matter if it meets the following criteria – ➢ It should be novel.
➢It should have inventive step or it must be non-obvious.
➢It should be capable of Industrial application.
➢It should not attract the provisions of section 3 and 4 of the Patents Act, 1970.
According to Section 2(1) (j) of Patent Act, 1970, invention as to mean a new product or process involving an inventive step and capable of Industrial application.
According to Section 2(1) (ja), of Patent Act, 1970 inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art.
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. Pursuant to section 3(d) of the Act, 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 cannot be patented.
In the present case the process of making combination drugs of a chemical material and a micro-organism is a well-accepted process. Hence, the same process which X Pharmaceuticals Ltd., claim to have developed after years of research and development is really in use since long and cannot be said to have evolved a new process hitherto unknown to the pharmaceutical world since Y Instra Lab Pvt Ltd has developed the drug by following same process and had already entered the market for quite a few months.
Source: ICSI Guideline Answers, December 2023, Q. 5(i) (Syllabus 2022).
June 2025Q. 5(a)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Universal Drugs and Pharma Limited, a multinational pharmaceutical company, was incorporated and registered in Chennai. The company filed a patent application in India under the Patents Act, 1970, for its cancer drug Glivec (Imatinib Mesylate).
The application sought to patent a beta-crystalline form of imatinib mesylate, claiming it to be a new form with improved bioavailability and efficacy.
However, the Patent Controller of India rejected the application, stating that the drug did not meet the criteria for patentability under Section 3(d) of the Patents Act, 1970. The rejection was based on the ground that Section 3(d) prohibits the patenting of new forms of known substances unless they demonstrate enhanced therapeutic efficacy compared to the original compound.
Universal Drugs and Pharma Ltd. challenged the decision before the Intellectual Property Appellate Board (IPAB), but the IPAB upheld the Patent Controller’s decision.
The company then filed an appeal before the Supreme Court of India, raising the following key legal issues :
•Whether the beta-crystalline form of imatinib mesylate qualifies for patent protection under Section 3(d) of the Indian Patents Act, 1970, given that the substance was already known but had been presented in a new form ?
•Whether the patentability criteria under Section 3(d) are consistent with international standards, or whether they are excessively restrictive ?
In view of the above case study, answer the following questions in accordance with the provisions of the Indian Patent Act, 1970 :
(i)What is meant by Patent, and what can be patented ?
Section 2(1) (m) of the Patents Act, 1970, defines the term patent as to mean a patent for any invention granted under Patents Act. Accordingly, a patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent. Patent is a monopoly grant and it enables the inventor to control the output and within the limits set by demand, the price of the patented products. Underlying economic and commercial justification for the patent system is that it acts as a stimulus to investment in the Industrial innovation. Innovative technology leads to the maintenance of and increase in nations stock of valuable, tradable and industrial assets.
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non-patentable under section 3 and 4 of this Act.
(2 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 5(a)(i) (Syllabus 2022).
December 2023Q. 6(c)5 marksSyllabus 2022
(c)You have recently been appointed as Company Secretary of the Ever Innovative Limited. Your Company receives a notice from the controller of patent that the application filled by your company for the grant of a patent of a new machine was deemed to have been abandoned. How you propose to deal with the matter ?
Time for putting application in order for grant patent (Section 21 of Patents Act, 1970):
Application for grant of patent shall be deemed to have been abandoned if applicant fails to comply with the requirements within twelve months. Failure to comply requirement may be related to complete specification or application to grant patent.
The period of twelve months starts from: -
•filling complete specification /other document or
•filling of first statement of objection If any document filed with the controller is returned by him, it will be treated as applicant deemed to have not complied with requirement unless he refiles the document. If at the expiry of above twelve months period the appeal is pending with High Court, then High Court may extend the period of twelve months by such period as it thinks fit.
If appeal is not pending before High Court time can be extended by Controller up to twelve months only.
Thus, as a Company Secretary of Ever Innovative Limited I will see that strong reasons are built up to prove to the satisfaction of the Controller to justify non-compliance attributable to the reasons beyond control and if appeal is pending before High Court advantage of that can be taken.
Source: ICSI Guideline Answers, December 2023, Q. 6(c) (Syllabus 2022).
December 2023Q. 5(ii)3 marksSyllabus 2022
Show the facts common to all parts of Q. 5
X Pharmaceuticals Ltd., a renowned pharmaceutical company engaged in producing new pharmaceutical drugs have developed a new drug applying the process of making, combing drugs of a chemical materials and a micro-organism. X Pharmaceuticals Ltd.
had patented this new innovative process to the Appropriate authority and got its patent registered. Whereas Y Instra Lab Pvt. Ltd. engaged in producing pharma drugs developed a drug of a combination of drug of penicillin and lactobacilli following the same process as X Pharmaceuticals Ltd. used in producing its drugs and already entered the market with their combination of drug product for quite a few months.
X Pharmaceuticals Ltd., claimed that they have developed the process of manufacturing their drugs after years of research and development as also claimed that they have evolved a new process in producing the same drug with a new process hitherto unknown to the Pharmaceutical word. X Pharmaceuticals Ltd. filed a suit against Y Instra Lab Pvt. Ltd for seeking expert ad interim injunction restraining Y Instra Lab Pvt. Ltd. from using the said process for its products and marketing them. In light of the above, answer the following questions :
(ii)Identify from the above case study as to whether the process adopted by X Pharmaceuticals Ltd., have been patented or ‘combination of drug’ have been patented ?
From the given case study, it is clear that whilst X Pharmaceuticals Ltd. are engaged in production of new pharmaceutical drugs by applying the process of making, combining drugs of a chemical materials and a micro-organism, they have only obtained the patent registration for the process and not for the product of such process.
Therefore, in the instant case it is found that X Pharmaceutical Ltd. has patented the process only not the combination-drug itself.
Source: ICSI Guideline Answers, December 2023, Q. 5(ii) (Syllabus 2022).
June 2025Q. 5(a)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Universal Drugs and Pharma Limited, a multinational pharmaceutical company, was incorporated and registered in Chennai. The company filed a patent application in India under the Patents Act, 1970, for its cancer drug Glivec (Imatinib Mesylate).
The application sought to patent a beta-crystalline form of imatinib mesylate, claiming it to be a new form with improved bioavailability and efficacy.
However, the Patent Controller of India rejected the application, stating that the drug did not meet the criteria for patentability under Section 3(d) of the Patents Act, 1970. The rejection was based on the ground that Section 3(d) prohibits the patenting of new forms of known substances unless they demonstrate enhanced therapeutic efficacy compared to the original compound.
Universal Drugs and Pharma Ltd. challenged the decision before the Intellectual Property Appellate Board (IPAB), but the IPAB upheld the Patent Controller’s decision.
The company then filed an appeal before the Supreme Court of India, raising the following key legal issues :
•Whether the beta-crystalline form of imatinib mesylate qualifies for patent protection under Section 3(d) of the Indian Patents Act, 1970, given that the substance was already known but had been presented in a new form ?
•Whether the patentability criteria under Section 3(d) are consistent with international standards, or whether they are excessively restrictive ?
In view of the above case study, answer the following questions in accordance with the provisions of the Indian Patent Act, 1970 :
(ii)When mere discovery of a new form of a known substance will not to be treated as new invention under section 3(d) of the Patent Act, 1970 ?
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 property or mere 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 to clause (d) of the Patent Act, 1970 clarifies that salts, esters, 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.
(2 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 5(a)(ii) (Syllabus 2022).
June 2025Q. 5(a)(iv)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Universal Drugs and Pharma Limited, a multinational pharmaceutical company, was incorporated and registered in Chennai. The company filed a patent application in India under the Patents Act, 1970, for its cancer drug Glivec (Imatinib Mesylate).
The application sought to patent a beta-crystalline form of imatinib mesylate, claiming it to be a new form with improved bioavailability and efficacy.
However, the Patent Controller of India rejected the application, stating that the drug did not meet the criteria for patentability under Section 3(d) of the Patents Act, 1970. The rejection was based on the ground that Section 3(d) prohibits the patenting of new forms of known substances unless they demonstrate enhanced therapeutic efficacy compared to the original compound.
Universal Drugs and Pharma Ltd. challenged the decision before the Intellectual Property Appellate Board (IPAB), but the IPAB upheld the Patent Controller’s decision.
The company then filed an appeal before the Supreme Court of India, raising the following key legal issues :
•Whether the beta-crystalline form of imatinib mesylate qualifies for patent protection under Section 3(d) of the Indian Patents Act, 1970, given that the substance was already known but had been presented in a new form ?
•Whether the patentability criteria under Section 3(d) are consistent with international standards, or whether they are excessively restrictive ?
In view of the above case study, answer the following questions in accordance with the provisions of the Indian Patent Act, 1970 :
(iv)Are the patentability criteria under Section 3(d) in accordance with international standards ?
The Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement is essential for facilitating intellectual property, trade settling intellectual property, trade disputes and giving WTO members the freedom to pursue their own national goals. The Trips agreement is an attempt to put these rights under common international law and to close the gap in how they are safeguarded and upheld globally. It provides minimal requirements to enforcement and protection of intellectual property owned by citizen of other WTO members by each Government.
Accordingly, the Patent Act, 1970 including section 3(d) is in compliance with India’s International obligation under Trips, as the law did not prevent the patenting of genuine innovations but instead focused on preventing the patenting of minor modification that did not offer signific therapeutic benefits in this instant case.
(2 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 5(a)(iv) (Syllabus 2022).
June 2025Q. 5(a)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Universal Drugs and Pharma Limited, a multinational pharmaceutical company, was incorporated and registered in Chennai. The company filed a patent application in India under the Patents Act, 1970, for its cancer drug Glivec (Imatinib Mesylate).
The application sought to patent a beta-crystalline form of imatinib mesylate, claiming it to be a new form with improved bioavailability and efficacy.
However, the Patent Controller of India rejected the application, stating that the drug did not meet the criteria for patentability under Section 3(d) of the Patents Act, 1970. The rejection was based on the ground that Section 3(d) prohibits the patenting of new forms of known substances unless they demonstrate enhanced therapeutic efficacy compared to the original compound.
Universal Drugs and Pharma Ltd. challenged the decision before the Intellectual Property Appellate Board (IPAB), but the IPAB upheld the Patent Controller’s decision.
The company then filed an appeal before the Supreme Court of India, raising the following key legal issues :
•Whether the beta-crystalline form of imatinib mesylate qualifies for patent protection under Section 3(d) of the Indian Patents Act, 1970, given that the substance was already known but had been presented in a new form ?
•Whether the patentability criteria under Section 3(d) are consistent with international standards, or whether they are excessively restrictive ?
In view of the above case study, answer the following questions in accordance with the provisions of the Indian Patent Act, 1970 :
(v)Will Universal Drugs and Pharma Ltd. succeed in its arguments as per the provisions of the Patents Act, 1970 ?
Section 3(d) of the Patent Act, 1970 is the key issue in this problem. It may be emphasized that owner modifications of existing compounds would not qualify for Patent Protection unless they demonstrate a significant enhancement in therapeutic efficacy. The Universal Drugs and Pharma Ltd. had failed to prove that the new form of imatinib mesylate provided a substantial increase in efficacy compared to the original substance.
Further, public interest in ensuring affordable access to essential medicines outweighed the interest of patent holders, otherwise patent of incremental innovations could lead to monopolistic pricing and prevent affordable access to medicines, especially in the case of life-saving drugs. Hence, the decision given by the Patent Controller and the Intellectual Property Appellate Board refusing to grant patent protection to the Universal Drugs and Pharma Ltd. is correct.
This case study is based upon Novartis AGL v/s Union of India, (2013) 6 SCC1 as decided by the Supreme Court of India.
(2 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 5(a)(v) (Syllabus 2022).
June 2024Q. 5(b)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In the case of Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979) 2 SCC 511, it was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new technology and industrial progress. A limited-time grant of the only right to own, use, or sell a patented method or product encourages the development of new commercially useful inventions. The disclosure of the invention to the Patent Office, which becomes public domain after a predetermined duration of the monopoly, is the cost of the monopoly grant. In Raj Prakash Vs. Mangat Ram Choudhary AIR 1978 Delhi l, it was held that inventive creation, as is notable, is to discover something or find something not found or found by anybody previously. It isn’t essential that the invention ought to be anything confounded. The fundamental thing is that the creator was first to embrace it. The main issue in this manner, is that each basic creation is asserted, as in the form of novelty or new character, it will be considered as an invention and the cases & specifications must be perused in that light.
Section 2(1) (ja) of the Patent Act, 1970 defines the term inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art. Section 6 of the Act provides that who can make an application for a patent for an invention.
Consider the above statements, answer the questions :
(ii)Are mathematical or business methods, computer programs per se, or algorithms patentable ? Explain.
Section 3 of the Patent Act 1970 provides a list in which certain inventions are not patentable.
Mathematical or business methods, computer programs per se, or algorithms is not considered an invention as per Section 3(k) of the Act and thus, not patentable.
Source: ICSI Guideline Answers, June 2024, Q. 5(b)(ii) (Syllabus 2022).
June 2026Q. 6(a)5 marksSyllabus 2022
(a)An Indian scientist Dr. Mehta, working in a private research laboratory in India, developed a new chemical process for manufacturing a pharmaceutical compound. Dr. Mehta directly filed a patent application for the invention in the United States. Later, it came to the notice of the Indian Patent Office that the invention had been developed in India and that the application was first filed abroad. Discuss whether Dr. Mehta can validly file a patent application outside India under Section 39 of the Patents Act, 1970.
Section 39 of the of the Patents Act, 1970 provides that no person resident in India shall, except under the authority of a written permit sought in the prescribed manner and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India and either no direction has been given under of section 35(1) in relation to the application in India, or all such directions have been revoked.
In the present case, Dr. Mehta neither filed a patent application for the same invention in India and waited for the expiry of six weeks, nor obtained prior permission from the Controller of Patents to file the application abroad. Therefore, his action is contrary to the requirements of Section 39 of the Patents Act, 1970.
Therefore, Dr. Mehta cannot validly file a patent application outside India without first filing in India or obtaining prior permission from the Controller, and his action is in violation of Section 39 of the Patents Act, 1970.
Source: ICSI Guideline Answers, June 2026, Q. 6(a) (Syllabus 2022).
June 2024Q. 6(a)5 marksSyllabus 2022
(a)Amit, an Indian Resident, wants to make an application outside India for the grant of a patent for an invention. Explain whether he can apply outside India as provisions of the Patents Act, 1970 ?
What will be your answer if the invention is relevant for defence purpose ?
Section 39 of the Patents Act, 1970 provides that no person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless–
(a)an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b)either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
The Controller shall dispose of every such application within such period as may be prescribed:
It may be noted that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.
Section 39 (3) of the Patent Act clarifies that the provisions of section 39 shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
In this case, yes, Amit can apply outside India subject to above conditions.
Source: ICSI Guideline Answers, June 2024, Q. 6(a) (Syllabus 2022).
December 2025Q. 6(c)5 marksSyllabus 2022
(c)Atul was granted a patent for a new water purification apparatus. Later, he discovered that a university laboratory had been manufacturing and using the apparatus for research purposes without his consent. Explain the conditions under which a patent is granted as specified in Section 47 of the Patents Act, 1970, and discuss whether the actions of the university laboratory are permissible.
Section 47 of the Patent Act, 1970, dealing with grant of patents subject to conditions provides that the grant of a patent shall be subject to the conditions that:
(1)any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2)any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3)any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4)in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.
In the present case, the university laboratory used the patented water purification apparatus solely for research purposes, which falls under the exception provided in Section 47(3). Therefore, the actions of the university laboratory are legally permissible and do not constitute patent infringement.
Source: ICSI Guideline Answers, December 2025, Q. 6(c) (Syllabus 2022).
December 2025Q. 5(a)(iv)1 markSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Innovatech Pharma Pvt. Ltd., a registered Indian pharmaceutical company, was granted a patent in 2018 for its drug ‘Painexol’, used to treat chronic pain. In 2020, Innovatech developed an improved formula for Painexol that reduced its side effects and filed a patent of addition for this improvement. By 2022, Elixir BioCare Ltd., a competing pharmaceutical company, approached the Controller of Patents seeking a compulsory licence to manufacture and distribute a generic version of Painexol in India. Meanwhile, Innovatech failed to pay the patent renewal fees for 2023, attributing the oversight to clerical errors during financial restructuring. In March 2024, Innovatech applied for the restoration of the lapsed patent.
Elixir BioCare opposed this application, citing the delay and lack of bona fide intention and simultaneously began selling generic Painexol even before receiving a compulsory licence.
In view of the above case, answer the following questions :
(iv)State the legal remedies that Innovatech can seek if Elixir began selling generic Painexol before receiving a compulsory licence ?
Any unauthorized activity that violates the exclusive rights granted to a patenteesuch as making, using, selling, or importing the patented invention without consent constitutes patent infringement under Section 48 of the Patents Act, 1970.
In such cases, the patent holder is entitled to initiate legal proceedings and seek remedies under Section 108, which include:
•Injunction: To restrain the infringer from continuing the infringing activity.
•Damages or Account of Profits: Compensation for losses suffered or recovery of profits earned by the infringer.
•Seizure or destruction of infringing goods: As part of enforcement orders.
Source: ICSI Guideline Answers, December 2025, Q. 5(a)(iv) (Syllabus 2022).
June 2025Q. 5(a)(iii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Universal Drugs and Pharma Limited, a multinational pharmaceutical company, was incorporated and registered in Chennai. The company filed a patent application in India under the Patents Act, 1970, for its cancer drug Glivec (Imatinib Mesylate).
The application sought to patent a beta-crystalline form of imatinib mesylate, claiming it to be a new form with improved bioavailability and efficacy.
However, the Patent Controller of India rejected the application, stating that the drug did not meet the criteria for patentability under Section 3(d) of the Patents Act, 1970. The rejection was based on the ground that Section 3(d) prohibits the patenting of new forms of known substances unless they demonstrate enhanced therapeutic efficacy compared to the original compound.
Universal Drugs and Pharma Ltd. challenged the decision before the Intellectual Property Appellate Board (IPAB), but the IPAB upheld the Patent Controller’s decision.
The company then filed an appeal before the Supreme Court of India, raising the following key legal issues :
•Whether the beta-crystalline form of imatinib mesylate qualifies for patent protection under Section 3(d) of the Indian Patents Act, 1970, given that the substance was already known but had been presented in a new form ?
•Whether the patentability criteria under Section 3(d) are consistent with international standards, or whether they are excessively restrictive ?
In view of the above case study, answer the following questions in accordance with the provisions of the Indian Patent Act, 1970 :
(iii)What are the rights of patentee under the Patent Act, 1970 ?
Section 48 of the Patent Act, 1970 provides that subject to the other provisions contained in the Patents Act and the conditions specified in section 47, a patent granted under the 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, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
A patentee enjoys the exclusive right to make and use the patented invention. The patentee also has the right to assign the patent, grant licences, or otherwise deal with the patent, for any consideration. These rights, created by statute, are circumscribed by various conditions and limitations as prescribed under the Patents Act, 1970.
(2 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 5(a)(iii) (Syllabus 2022).
December 2023Q. 5(iii)4 marksSyllabus 2022
Show the facts common to all parts of Q. 5
X Pharmaceuticals Ltd., a renowned pharmaceutical company engaged in producing new pharmaceutical drugs have developed a new drug applying the process of making, combing drugs of a chemical materials and a micro-organism. X Pharmaceuticals Ltd.
had patented this new innovative process to the Appropriate authority and got its patent registered. Whereas Y Instra Lab Pvt. Ltd. engaged in producing pharma drugs developed a drug of a combination of drug of penicillin and lactobacilli following the same process as X Pharmaceuticals Ltd. used in producing its drugs and already entered the market with their combination of drug product for quite a few months.
X Pharmaceuticals Ltd., claimed that they have developed the process of manufacturing their drugs after years of research and development as also claimed that they have evolved a new process in producing the same drug with a new process hitherto unknown to the Pharmaceutical word. X Pharmaceuticals Ltd. filed a suit against Y Instra Lab Pvt. Ltd for seeking expert ad interim injunction restraining Y Instra Lab Pvt. Ltd. from using the said process for its products and marketing them. In light of the above, answer the following questions :
(iii)Can the process developed by X Pharmaceuticals Ltd., be used by Y Instra Lab Pvt. Ltd. in producing its combination of drug ?
It is evident from the given case study that although X Pharmaceuticals Ltd. is producing pharmaceutical drugs through the application of a process that combines drugs made of chemical materials and microorganisms, they have only been granted patent registration for the process and not for the end product.
This clearly states that process patented by X-Pharmaceutical Ltd, was not unknown to the pharmaceutical world and was in use prior to their patent registration, since Y Instra Lab Pvt Ltd has developed drug of a combination of penicillin and lactobacilli by following the same process as X Pharmaceuticals Ltd and had already entered the market for quite a few months.
Besides this, the process that followed by X-Pharmaceutical Ltd, was patented not the combination of drug itself. So, in the instant case the Y Instra Lab. Pvt. Ltd can use the process as claimed by X Pharmaceutical Ltd.
Source: ICSI Guideline Answers, December 2023, Q. 5(iii) (Syllabus 2022).
December 2023Q. 5(iv)5 marksSyllabus 2022
Show the facts common to all parts of Q. 5
X Pharmaceuticals Ltd., a renowned pharmaceutical company engaged in producing new pharmaceutical drugs have developed a new drug applying the process of making, combing drugs of a chemical materials and a micro-organism. X Pharmaceuticals Ltd.
had patented this new innovative process to the Appropriate authority and got its patent registered. Whereas Y Instra Lab Pvt. Ltd. engaged in producing pharma drugs developed a drug of a combination of drug of penicillin and lactobacilli following the same process as X Pharmaceuticals Ltd. used in producing its drugs and already entered the market with their combination of drug product for quite a few months.
X Pharmaceuticals Ltd., claimed that they have developed the process of manufacturing their drugs after years of research and development as also claimed that they have evolved a new process in producing the same drug with a new process hitherto unknown to the Pharmaceutical word. X Pharmaceuticals Ltd. filed a suit against Y Instra Lab Pvt. Ltd for seeking expert ad interim injunction restraining Y Instra Lab Pvt. Ltd. from using the said process for its products and marketing them. In light of the above, answer the following questions :
(iv)Can X Pharmaceuticals Ltd., restrain Y Instra Lab. Pvt. Ltd. from using the process of combination of drug ?
After going through the entire material facts of the case, it is apparent that the process of making combination drugs of a chemical material and a micro-organism is a well-accepted process. Hence the process which X-Pharmaceutical Ltd. claim to have developed is really in use for a long time. So, the Company i.e., X-Pharmaceutical Ltd, cannot be said to have evolved a new process unknown to the pharmaceutical world.
The significant point is that what is patented by X-Pharmaceutical Ltd. is the "process"
and not the combination of drug itself.
If, prima facie, the process evolved by the X-Pharmaceutical Ltd., is not found to be patentable, the Y Instra Lab. Pvt. Ltd. cannot be restrained from using the said process for its products and for marketing them.
In the instant case, the Y Instra Lab, Pvt. Ltd. had already entered the market few months back. Therefore, it is not proper to restrain them from continuing to market its products.
Source: ICSI Guideline Answers, December 2023, Q. 5(iv) (Syllabus 2022).
December 2025Q. 5(a)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Innovatech Pharma Pvt. Ltd., a registered Indian pharmaceutical company, was granted a patent in 2018 for its drug ‘Painexol’, used to treat chronic pain. In 2020, Innovatech developed an improved formula for Painexol that reduced its side effects and filed a patent of addition for this improvement. By 2022, Elixir BioCare Ltd., a competing pharmaceutical company, approached the Controller of Patents seeking a compulsory licence to manufacture and distribute a generic version of Painexol in India. Meanwhile, Innovatech failed to pay the patent renewal fees for 2023, attributing the oversight to clerical errors during financial restructuring. In March 2024, Innovatech applied for the restoration of the lapsed patent.
Elixir BioCare opposed this application, citing the delay and lack of bona fide intention and simultaneously began selling generic Painexol even before receiving a compulsory licence.
In view of the above case, answer the following questions :
(v)What is the validity term of a Patent in the Indian System ?
The term of every patent granted is 20 years from the date of filing of application. However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.
Section 53(1) of the Patents Act, 1970 states that the term of every patent granted after the commencement of the Patents (Amendment) Act, 2002 shall be twenty years from the date of filing of the application for the patent.” However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.
A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period 6[or within such extended period as may be prescribed.
Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on the expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.
Source: ICSI Guideline Answers, December 2025, Q. 5(a)(v) (Syllabus 2022).
December 2024Q. 6(d)(i)3 marksSyllabus 2022
(d)Ravi holds Patents for a specific design of tamper-proof locks sold under the trade mark “Tech-Lock”. He sought an injunction against Sumit for infringement of his patented invention and restrain claiming a patent of addition. Sumit contends that patent of addition does not disclose the innovative step.
(i)State the rules relating to “Patent of Addition” as per Section 54 of the Patent Act, 1970.
Section 54 of the Patents Act, 1970 provides that where an application is made for a patent in respect of any improvement in or modification of an invention described or disclosed in the complete specification filed therefor (in this Act referred to as the “main invention”) and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.
Where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.
A patent shall not be granted as a patent of addition unless the date of filing of the application was the same as or later than the date of filing of the application in respect of the main invention.
A patent of addition shall not be granted before grant of the patent for the main invention.
Source: ICSI Guideline Answers, December 2024, Q. 6(d)(i) (Syllabus 2022).
December 2024Q. 6(d)(ii)2 marksSyllabus 2022
(d)Ravi holds Patents for a specific design of tamper-proof locks sold under the trade mark “Tech-Lock”. He sought an injunction against Sumit for infringement of his patented invention and restrain claiming a patent of addition. Sumit contends that patent of addition does not disclose the innovative step.
(ii)State with support of case law whether the application by Ravi can be rejected on the ground of innovative step ?
A patent of addition application cannot be rejected on the grounds that the disclosure in the primary application or patent lacked innovative step. However, the disclosure in the main application or patent may be used as evidence of innovation against the patent addition application.
In the matter of Ravi Kamal Bali v/s Kala Tech and others the Bombay High Court on 12th February, 2008 dismissed the defendant’s arguments that Patent of addition can only be granted if it has an inventive step over the main application.
Source: ICSI Guideline Answers, December 2024, Q. 6(d)(ii) (Syllabus 2022).
June 2024Q. 5(b)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In the case of Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979) 2 SCC 511, it was held by the Hon’ble Supreme Court of India that the object of Patent law is to encourage scientific research, new technology and industrial progress. A limited-time grant of the only right to own, use, or sell a patented method or product encourages the development of new commercially useful inventions. The disclosure of the invention to the Patent Office, which becomes public domain after a predetermined duration of the monopoly, is the cost of the monopoly grant. In Raj Prakash Vs. Mangat Ram Choudhary AIR 1978 Delhi l, it was held that inventive creation, as is notable, is to discover something or find something not found or found by anybody previously. It isn’t essential that the invention ought to be anything confounded. The fundamental thing is that the creator was first to embrace it. The main issue in this manner, is that each basic creation is asserted, as in the form of novelty or new character, it will be considered as an invention and the cases & specifications must be perused in that light.
Section 2(1) (ja) of the Patent Act, 1970 defines the term inventive step as to mean a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both that makes the invention not obvious to a person skilled in the art. Section 6 of the Act provides that who can make an application for a patent for an invention.
Consider the above statements, answer the questions :
(v)Ramchand invented a medicine and was about to apply for a patent. However, he passed away before applying. Can his legal representative apply for the patent ?
Section 6(1) (c) of the Patents Act,1970 provides that an application for a patent for an invention may be made by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
Therefore, legal representative of Ramchand can apply for the patent.
Source: ICSI Guideline Answers, June 2024, Q. 5(b)(v) (Syllabus 2022).
December 2025Q. 5(a)(iii)3 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)Innovatech Pharma Pvt. Ltd., a registered Indian pharmaceutical company, was granted a patent in 2018 for its drug ‘Painexol’, used to treat chronic pain. In 2020, Innovatech developed an improved formula for Painexol that reduced its side effects and filed a patent of addition for this improvement. By 2022, Elixir BioCare Ltd., a competing pharmaceutical company, approached the Controller of Patents seeking a compulsory licence to manufacture and distribute a generic version of Painexol in India. Meanwhile, Innovatech failed to pay the patent renewal fees for 2023, attributing the oversight to clerical errors during financial restructuring. In March 2024, Innovatech applied for the restoration of the lapsed patent.
Elixir BioCare opposed this application, citing the delay and lack of bona fide intention and simultaneously began selling generic Painexol even before receiving a compulsory licence.
In view of the above case, answer the following questions :
(iii)What is the procedure to be followed for the disposal of Innovatech’s application for restoration under Section 61 of the Indian Patents Act ?
Section 61 of the Patents Act, 1970, provides that if, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period, any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds that-
(a)the failure to pay the renewal fee was not unintentional; or
(b)there has been undue delay in the making of the application.
If notice of opposition is given within the prescribed period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before deciding the case. If no notice of opposition is given within the prescribed period aforesaid or if in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent. The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which has to be entered in the register but which has not been so entered.
Source: ICSI Guideline Answers, December 2025, Q. 5(a)(iii) (Syllabus 2022).
December 2025Q. 6A(ii)5 marksSyllabus 2022OR, alternative to Q. 6
(ii)Explain the provisions of ‘Revocation of Patents by Controller for Non-working’ as per Section 85 of the Patent Act, 1970 ?
Section 85 of the Patents Act, 1970 deals with revocation of patents by Controller for non-working and provides that where, in respect of a patent, a compulsory licence has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the Controller for an order revoking the patent on the ground that the patented invention has not been worked in the territory of India or reasonable requirements of the public with respect to the patented invention has not been satisfied or the patented invention is not available to the public at a reasonably affordable price.
Every application for revocation should contain prescribed particulars, the facts upon which the application is based, and, in the case of an application other than by the Central Government, should also set out the nature of the applicant’s interest.
The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention has not been satisfied or patented invention has not been worked in the territory of India or is not available to the public at a reasonably affordable price, may make an order revoking the patent. The controller has however been put under obligation to ordinarily decide such application within one year of its presentation.
Source: ICSI Guideline Answers, December 2025, Q. 6A(ii) (Syllabus 2022).