Chapter 7 : The Patent Act,1970

CHAPTER VII: PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

This chapter deals with inventions that are important for national security.

Section 35: Secrecy directions relating to inventions relevant for defence purposes

• (1) What it says: …it appears to the Controller that the invention is one of a class notified to him by the Central Government as relevant for defence purposes… he may give directions for prohibiting or restricting the publication of information… or the communication of such information.
  • In plain English: When you file a patent application, the Controller (or an examiner) reviews it. If they believe your invention is relevant to “defence purposes” (e.g., weapons, missiles, advanced cryptography, nuclear technology), they can issue a “secrecy direction.”
  • What this means: Your application will NOT be published at 18 months. You are legally forbidden from publishing or telling anyone (in India or abroad) about the invention. Your application is effectively frozen and hidden from the public.
  • Real-world example: You invent a new type of armor-penetrating ammunition and file a patent. The Controller sees this, flags it as “relevant for defence,” and immediately issues a secrecy direction, stopping its publication.
• (2) What it says: …he shall give notice… to the Central Government… if upon such consideration, it appears to it that the publication… would not so prejudice, give notice to the Controller to that effect, who shall thereupon revoke the directions…
  • In plain English: The moment the Controller issues a secrecy direction, they must notify the Central Government (specifically, the Ministry of Defence). The Ministry will then do a full review. If the Ministry decides the invention is not a threat (or is not useful to them), they will tell the Controller to cancel (revoke) the secrecy direction. The application then un-freezes and proceeds as normal.
  • Real-world example: The Ministry of Defence reviews your ammunition patent and finds the technology is already old or not effective. They tell the Controller it’s “not prejudicial.” The Controller revokes the secrecy order, and your application is put back in the normal queue for publication and examination.
• (3) What it says: …where the Central Government is of opinion that an invention… is relevant for defence purposes, it may… notify the Controller to that effect, and thereupon the provisions of [sub-section 1] shall apply…
  • In plain English: This works the other way, too. The Central Government can proactively tell the Controller to impose a secrecy direction.
  • Real-world example: Your patent for a new satellite imaging system is published (the Controller didn’t think it was sensitive). An official at the Defence Research and Development Organisation (DRDO) sees the publication and realizes its huge military potential. The DRDO can order the Controller to impose a secrecy direction even after publication to prevent further spread of the information.

Section 36: Secrecy directions to be periodically reviewed

This section ensures that a secrecy order isn’t permanent. It forces the government to re-evaluate the secrecy.

• (1) What it says: …shall be reconsidered by the Central Government at intervals of six months or on a request made by the applicant… and if… it appears to the Central Government that the publication… would no longer be prejudicial… it shall forthwith give notice to the Controller to revoke the direction…
  • In plain English: The Central Government (Ministry of Defence) must review every secrecy order at least once every six months to see if it’s still necessary.
  • The applicant (you) can also file a “reasonable” request to have it reviewed sooner.
  • If the government finds that the invention is no longer a threat (e.g., the technology is now common, or they’ve lost interest), they must immediately tell the Controller to cancel (revoke) the secrecy direction.
  • Real-world example: You filed a patent for a drone stabilization algorithm in 2022, and it was put under a secrecy order. In 2024, you see similar technology in commercial products. You can request a review, arguing it’s “no longer prejudicial” because the technology is now public.
• (1) (cont’d): …or in case of an application filed by a foreign applicant it is found that the invention is published outside India it shall forthwith give notice to the Controller to revoke the direction…
  • In plain English: This is a specific rule for foreign applicants. If a secrecy order is placed on their Indian application, but the government finds that the same invention has already been published in another country (e.g., their original US or European patent application), the government must cancel the secrecy order.
  • Why? It’s pointless to keep something secret in India when it’s already public knowledge everywhere else.
• (2) What it says: The result of every re-consideration… shall be communicated to the applicant…
  • In plain English: The government can’t just review your case and stay silent. They must inform you, the applicant, of the outcome of their review (e.g., “Review complete, secrecy order maintained” or “Review complete, order revoked”).

Section 37: Consequences of secrecy directions

This section details what happens to your application and your rights while it’s in this “frozen” state.

• (1) What it says: So long as any directions under section 35 are in force… (a) the Controller shall not pass an order refusing to grant the same; and (b) …no appeal shall lie from any order…
  • In plain English: While your application is secret, the Controller cannot officially refuse it (e.g., he can’t kill the application).
  • In return, you (the applicant) are not allowed to appeal any decision the Controller makes during this time. The entire application is in legal limbo, frozen by the secrecy order.
• (1) Proviso: Provided that the application may… proceed up to the stage of grant… but the application and the specification… shall not be published, and no patent shall be granted…
  • In plain English: This is the most important part. The examination of your patent can still happen in the background, in secret. The Controller can review your application, find it’s “in order for grant,” and have it ready to go.
  • BUT… It cannot be published in the official journal, and the patent cannot be officially granted. It sits in a “ready” pile, waiting for the secrecy order to be lifted.
• (2) What it says: Where a complete specification… is found to be in order for grant… during the continuance in force of the directions, then…
  • In plain English: This covers what happens if your application is “ready for grant” but is still being kept secret.
• (2)(a): if… any use of the invention is made… by the Government… the provisions of sections 100, 101 and 103 shall apply… as if the patent had been granted…
  • In plain English: If the Government (e.g., the Ministry of Defence) starts using your secret invention, they have to treat you (and pay you royalties) as if your patent had actually been granted. You don’t lose out on compensation just because they are keeping it secret.
  • Real-world example: Your patent for new tank armor is “ready for grant” but kept secret. The DRDO (a government body) starts manufacturing and using the armor. They must negotiate and pay you royalties for this use, just as if you were a full patent owner.
• (2)(b): if it appears to the Central Government that the applicant… has suffered hardship… the Central Government may make to him such payment… by way of solatium…
  • In plain English: If the secrecy order is causing you significant financial hardship (e.g., you can’t get investors, you can’t license your tech), the government may (it’s not guaranteed) give you a one-time payment called a “solatium” (a form of compensation for your hardship) to make up for it.
• (3) What it says: Where a patent is granted… in respect of which directions have been given… no renewal fee shall be payable in respect of any period during which those directions were in force.
  • In plain English: This is a big financial benefit. Patent renewal fees are due every year after grant. If your patent was kept secret for 5 years after it would have been granted, you do not have to pay the renewal fees for those 5 “lost” years.
  • Real-world example: Your patent is secretly “ready for grant” in 2020. The secrecy order is lifted, and it is officially granted in 2025. Your 20-year term still starts from your filing date (e.g., 2018). You do not have to pay the renewal fees for the 3rd, 4th, 5th, 6th, and 7th years (2020-2025). Your first renewal fee payment will be for the 8th year (2026).

Section 38: Revocation of secrecy directions and extension of time

This section explains what happens the moment the secrecy order is lifted.

• What it says: When any direction… is revoked… the Controller may… extend the time for doing anything required… whether or not that time has previously expired.
  • In plain English: The moment the secrecy order is cancelled, your application “wakes up.” But what about all the deadlines you missed while it was frozen?
  • This section gives the Controller the power to grant you an extension of time for any missed deadlines (like responding to an examination report, paying a fee, etc.).
  • Real-world example:
    1. Controller issues an Examination Report on Jan 1.
    2. A secrecy order is imposed on Jan 15.
    3. Your 6-month deadline to reply to the report (July 1) passes.
    4. The secrecy order is finally revoked on Dec 1.
    5. The Controller will now extend your deadline, giving you a new period (e.g., 3 months) to file your reply, so you don’t lose your patent.

Section 39: Residents not to apply for patents outside India without prior permission

This is one of the most critical sections for any inventor or company in India. It controls your ability to file patents in other countries.

• (1) What it says: No person resident in India shall… make… any application outside India for the grant of a patent for an invention unless —
  • In plain English: If you are a “person resident in India” (a citizen or a foreign national living in India, or an Indian company), you are legally forbidden from filing a patent application in any other country (like the USA, Europe, etc.)…
  • …UNLESS you do one of two things:
• (1)(a) & (b): (a) an application… has been made in India, not less than six weeks before the application outside India; and (b) either no direction has been given under section 35… or all such directions have been revoked.
  • This is Option 1 (The “Wait 6 Weeks” Rule):
  • In plain English: You must file your patent application in India first. Then, you must wait six weeks. This 6-week period gives the Patent Office time to screen your invention for defence/secrecy issues (under Section 35). If, after 6 weeks, you have not received a secrecy direction, you are free to file your application in any other country.
  • Real-world example: Your Indian startup invents new software. You file your Indian patent on Sep 1. You want to file in the USA. You must wait 6 weeks. On Oct 13 (more than 6 weeks later), if you haven’t heard from the Controller, you can legally file your US application.
• (1) (implied): …except under the authority of a written permit… granted by… the Controller…
  • This is Option 2 (The “Get a Permit” Rule):
  • In plain English: If you cannot or do not want to file in India first (e.g., you only want US protection), or you cannot wait 6 weeks, you must apply to the Controller for a “Foreign Filing Permit” (FFP). This is a written permission slip that officially allows you to file abroad.
  • Real-world example: Your startup is funded by a US investor who insists you file in the USA first. You must file Form 25 with the Indian Patent Office, requesting a Foreign Filing Permit. The Controller will review your invention (for defence issues) and, if it’s clear, issue the permit, usually in a few weeks. Only then can you legally file in the USA.
• (2) What it says: The Controller shall dispose of every such application [for a permit] within such period as may be prescribed…
  • In plain English: The Controller is required to process your request for a permit within a specific timeframe (the rules typically aim for 21 days).
  • Proviso: …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.
  • In plain English: If the Controller thinks your invention might be defence-related, he cannot grant you a permit on his own. He must send it to the Central Government (Ministry of Defence) for approval first.
• (3) What it says: This section shall not apply… 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 plain English: This rule does not apply to foreigners. If a person living in the USA files their first patent in the USA, they don’t need permission from India. This section only applies to people and companies resident in India.

Section 40: Liability for contravention of section 35 or section 39

This section outlines the severe penalties for breaking the secrecy or foreign filing rules.

• What it says: …if… any person contravenes any direction as to secrecy… under section 35 or makes… an application for grant of a patent outside India in contravention of section 39…
  • In plain English: This applies if you do one of two illegal things:
    1. You disobey a secrecy order (Section 35) and tell someone about your secret invention.
    2. You file a patent in another country without following the rules in Section 39 (i.e., you didn’t file in India and wait 6 weeks, or you didn’t get a Foreign Filing Permit).
• The Penalty: …the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under section 64.
  • In plain English: The consequences are catastrophic for your invention:
    1. Your Indian patent application is immediately considered “abandoned” (dead).
    2. If your Indian patent was already granted, it can be revoked (cancelled) at any time.
  • Real-world example: You invent new software, file in India on Jan 1, and—being impatient—file in the USA on Jan 10 (violating the 6-week rule). A competitor finds out. Your Indian application is “deemed abandoned.” If it was already granted, the competitor can use this fact to easily revoke your patent. (Note: This is in addition to the criminal penalties of fines and imprisonment mentioned in Section 118).

Section 41: Finality of orders of Controller and Central Government

This is a short but absolute section that closes the loop on secrecy orders.

• What it says: All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government under this Chapter shall be final and shall not be called in question in any court on any ground whatsoever.
  • In plain English: Any decision made by the Controller or the Central Government regarding a secrecy order (issuing one, maintaining one, or revoking one) is final and non-negotiable.
  • You cannot appeal this decision. You cannot sue them in a court of law to challenge it. The government’s decision on matters of national security is absolute.
  • Real-world example: Your patent application for a new encryption algorithm is put under a secrecy order. You believe this is unfair and will cost you millions. You cannot file a case in the High Court to have the secrecy order removed. Your only option is to use the review process under Section 36 and hope the government changes its mind.

Section 42: Savings respecting disclosure to Government

This section clarifies the Controller’s right to share information with the government.

• What it says: Nothing in this Act shall be held to prevent the disclosure by the Controller of information… to the Central Government for the purpose of the application… being examined for considering whether an order under this Chapter should be made…
  • In plain English: This section gives the Controller the explicit legal right to share your patent application details with the Central Government (i.e., the Ministry of Defence / DRDO).
  • This is not a breach of confidentiality. It is a necessary step in the process, allowing the government’s experts to review your invention and decide if it needs a secrecy order.
  • Real-world example: The Controller receives your application for a new type of radar-absorbing paint. He isn’t a defence expert, so he can’t be sure if it’s sensitive. This section authorizes him to securely transmit your entire application to the Ministry of Defence so their experts can analyze it and advise him on whether to issue a secrecy direction.