Chapter 15 : The Patent Act,1970

CHAPTER XIV: PATENT OFFICE AND ITS ESTABLISHMENT

This chapter outlines the official structure of the Patent Office itself.

Section 73: Controller and other officers

This section defines who is in charge of the Patent Office.

(1) What it says: The Controller General of Patents, Designs and Trade Marks… shall be the Controller of Patents for the purposes of this Act.
- In plain English: The “Controller” (the person mentioned throughout this Act) is the top boss. This one person is the head of the entire Intellectual Property office, responsible for Patents, Designs, and Trade Marks.
(2) What it says: …the Central Government may appoint as many examiners and other officers… as it thinks fit.
- In plain English: The Central Government is responsible for hiring all the other staff for the Patent Office, including the “examiners” who actually review the patent applications.
(3) What it says: …the officers appointed… shall discharge… such functions of the Controller… as he may… authorise them to discharge.
- In plain English: The Controller can delegate his powers. He is too busy to sign every document himself. He can give his authority (e.g., to “grant patents,” “issue orders,” or “hear cases”) to lower-ranking officers like “Deputy Controllers” or “Assistant Controllers.”
(4) What it says: …the Controller may… withdraw any matter pending before an officer… and deal with such matter himself… or transfer the same to another officer…
- In plain English: The Controller also has the power to manage his staff. If a case is very important or sensitive, he can pull it back (“withdraw”) from an examiner and handle it personally. He can also transfer a case from one officer to another (e.g., if one officer is overburdened or has a conflict of interest).

Section 74: Patent office and its branches

This section defines the physical (and legal) location of the Patent Office.

(1) What it says: For the purposes of this Act, there shall be an office which shall be known as the patent office.
- In plain English: This legally establishes the “patent office” as a government entity.
(2) What it says: The Central Government may, by notification… specify the name of the Patent Office.
- In plain English: The government can officially name it (e.g., “The Patent Office, Kolkata”).
(3) What it says: The head office… shall be at such place as the Central Government may specify, and… there may be established… branch offices…
- In plain English: The government names one city as the head office (which is in Kolkata). To make it easier for people all over India, the government can also set up branch offices (which exist in Delhi, Mumbai, and Chennai).
(4) What it says: There shall be a seal of the patent office.
- In plain English: The Patent Office must have an official seal (like an embossed stamp). This seal is used to make documents official and certified (like the copies from Section 72).

Section 75: Restriction on employees of patent office as to right or interest in patents

This is a critical anti-corruption and conflict-of-interest rule.

(1) What it says: All officers and employees of the patent office shall be incapable, during the period for which they hold their appointments, to acquire or take, directly or indirectly… any right or interest in any patent…
- In plain English: Anyone who works at the Patent Office (from the Controller down to the junior staff) is strictly forbidden from getting any patent rights while they are employed.
- “Directly or indirectly” means they can’t file a patent in their own name, or in their spouse’s name, or through a secret shell company.
- Real-world example: A patent examiner reviews an amazing new invention. He cannot quit his job and file a patent for a similar idea. He cannot tell his brother to file for it. He cannot buy shares in the applicant’s company.
(1) The Exception: …except by inheritance or bequest.
- In plain English: There is only one exception: if a family member dies and leaves them a patent in their will. This is an involuntary acquisition and is allowed.
- Real-world example: An examiner’s mother, who was an inventor, passes away. Her will leaves her patent to her son (the examiner). This is legal. The examiner can inherit the patent.

Section 76: Officers and employees not to furnish information, etc.

This section outlines the strict confidentiality rules that all officers and employees of the patent office must follow. They are bound to secrecy unless they are officially required or authorized to share information by the Act itself, the Central Government, the Appellate Board, the Controller, or a court order.

They are forbidden from:

(a) furnish information on a matter which is being, or has been, dealt with under this Act; or
- Plain English: A patent office employee cannot tell their friend, a journalist, or a competing company any details about a patent application they are currently examining. This includes who the inventor is, what the invention does, or what stage the application is at.
- Real-world Example: A tech blogger contacts an examiner at the patent office and asks, “I’ve heard a rumour that Apple has filed a patent for a new foldable phone. Can you confirm this?” The examiner, bound by this clause, must refuse to provide any information, as this would be an unauthorized disclosure.
(b) prepare or assist in the preparation of a document required or permitted by or under this Act, to be lodged in the patent office; or
- Plain English: A patent office employee cannot “moonlight” as a patent writer. They are not allowed to help an inventor draft their patent application, write the specification, or fill out any official forms, even in their personal time. This prevents a massive conflict of interest.
- Real-world Example: An inventor visits the patent office for information. They tell an employee, “I’m really struggling with writing my ‘claims’ section. Could I pay you to help me draft it tonight?” The employee must refuse, as this is strictly prohibited.
(c) conduct a search in the records of the patent office.
- Plain English: An employee cannot use their internal access to the patent office’s databases to run searches for personal reasons or for outside parties. Their search powers are to be used only for their official duties (like examining a patent application).
- Real-world Example: A former colleague, who now works at a private law firm, calls a patent office employee and says, “Could you quickly run a search for me to see if any patents exist for ‘self-healing concrete’? It would save my firm a lot of time.” The employee must refuse, as this would be an unauthorized search.

Chapter XV: Powers of Controller Generally

Section 77: Controller to have certain powers of a civil court.

This section gives the Controller (the head of the patent office) significant legal powers, similar to those of a civil court judge, when conducting any proceedings under the Patents Act.

(1) …the Controller… shall have the powers of a civil court… in respect of the following matters, namely:-
- (a) summoning and enforcing the attendance of any person and examining him on oath;
  - Plain English: The Controller can legally require anyone to appear at a hearing and testify under oath, just like a court.
  - Real-world Example: In a dispute over who the true inventor is (an “opposition proceeding”), the Controller can summon both individuals to a hearing, make them swear to tell the truth, and question them to determine the facts.
- (b) requiring the discovery and production of any document;
  - Plain English: The Controller can order a person or company to find and hand over specific documents that are relevant to the case.
  - Real-world Example: A company claims its patent was “obtained” wrongfully by an ex-employee. The Controller can order the ex-employee to produce all lab notebooks, emails, and employment contracts from that period.
- (c) receiving evidence on affidavits;
  - Plain English: The Controller can accept written statements made under oath (affidavits) as formal evidence in a proceeding.
  - Real-world Example: Instead of appearing in person, an expert witness living in another country can submit a signed, sworn affidavit explaining a complex technical point to the Controller.
- (d) issuing commissions for the examination of witnesses or documents;
  - Plain English: If a witness cannot travel (e.g., due to severe illness or being in a foreign country), the Controller can appoint a trusted person (a commissioner) to go to that witness, take their testimony under oath, and bring it back.
  - Real-world Example: A key witness in a patent dispute is hospitalized and cannot attend the hearing. The Controller issues a commission to an authorized legal official to visit the hospital, record the witness’s testimony, and present it as evidence.
- (e) awarding costs;
  - Plain English: The Controller can order one party in a dispute to pay the legal fees and other expenses (costs) of the other party. This is often done when one party has acted unreasonably or lost the case.
  - Real-world Example: A company files a frivolous opposition against a small inventor’s patent, causing the inventor to hire a lawyer. After dismissing the opposition, the Controller orders the company to pay the inventor’s legal costs.
- (f) reviewing his own decision on application made within the prescribed time and in the prescribed manner;
  - Plain English: The Controller has the power to “re-think” or review a decision they have already made, if someone files a proper application pointing out a clear error.
  - Real-world Example: The Controller refuses a patent application. The applicant files a review petition showing that the Controller overlooked a key piece of evidence that was already on file. The Controller can then review and potentially change the decision.
- (g) setting aside an order passed ex- parte on application made within the prescribed time and in the prescribed manner;
  - Plain English: If the Controller made a decision in a dispute where one party didn’t show up (an ex-parte order), they can cancel that decision if the absent party later provides a very good reason for their absence (like a medical emergency).
  - Real-world Example: A hearing is scheduled, but the applicant gets into a car accident on the way. The Controller, unaware of this, decides the case in their absence. The applicant later submits a police report and medical certificate, and the Controller agrees to “set aside” the order and hold a new hearing.
- (h) any other matter which may be prescribed.
  - Plain English: This is a catch-all clause that allows new, specific powers to be given to the Controller through official rules, as needed.
(2) Any order for costs… shall be executable as a decree of a civil court.
- Plain English: This is a very important part. It means the Controller’s order to pay costs isn’t just a suggestion—it has the full force of a court order.
- Real-world Example: Following the example in (1)(e), if the company refuses to pay the inventor’s legal costs as ordered by the Controller, the inventor can take that order to a regular civil court, which will enforce it as if it were its own judgment (e.g., by seizing the company’s assets).

Section 78: Power of Controller to correct clerical errors etc.

This section gives the Controller the power to fix minor, obvious mistakes in patents, applications, or any related documents.

(1) …the Controller may… correct any clerical error in any patent or in any specification or other document…
- Plain English: The Controller can fix typos, spelling mistakes, or other obvious slip-ups. This is not for changing the invention itself, only for correcting minor errors.
- Real-world Example: A granted patent certificate accidentally lists the inventor’s name as “Dr. Jane M. Smtih” instead of “Dr. Jane M. Smith.” The Controller can correct this clerical error.
(2) A correction may be made… either upon a request in writing made by any person interested… or without such a request.
- Plain English: A correction can happen in two ways: (1) The patent owner or another interested party can file a request (and pay a fee) to fix a mistake, or (2) the Controller can fix a mistake on their own if they spot one.
- Real-world Example: (1) The patentee notices the chemical formula in claim 2 has a typo (H20 instead of H2O) and files a request for correction. (2) While reviewing a file, the Controller notices the application date was mistyped as “2024” instead of “2023” in the register and corrects it proactively.
(3) Where the Controller proposes to make any such correction… otherwise than in pursuance of a request… he shall give notice of the proposal to the patentee or the applicant…
- Plain English: If the Controller decides to make a correction on their own, they must first inform the patent owner (or applicant) and anyone else involved and give them a chance to be heard.
- Real-world Example: The Controller spots what they believe is a typo in a technical drawing. Before changing it, they must send a notice to the patentee, who might respond, “That is not a typo; it is an intentional design feature.” This prevents the Controller from accidentally changing the substance of the invention.
(4) Where a request is made… and it appears to the Controller that the correction would materially alter the meaning or scope of the document… he shall require notice… to be published.
- Plain English: If someone requests a correction that is not just a simple typo and might actually change what the patent covers, the Controller must publish the proposed change. This gives the public a chance to object.
- Real-world Example: An applicant requests to change a range in a claim from “10-20mm” to “10-200mm,” claiming “200” was the original intent and “20” was a typo. This is a material alteration (it massively expands the patent’s scope). The Controller must publish this proposed change so that a competitor can see it and object, arguing that “10-20mm” was what was originally intended and examined.
(5) Within the prescribed time after… publication… any person interested may give notice to the Controller of opposition…
- Plain English: After a potentially significant correction is published (as per sub-section 4), anyone can file an “opposition,” formally objecting to the change. The Controller must then hear both sides before making a final decision.
- Real-world Example: Following the example above, a rival company files an opposition to the “10-200mm” change. They argue that the entire patent application and all its test data only supported the “10-20mm” range. The Controller would then schedule a hearing to listen to arguments from both the applicant and the rival company.

Section 79: Evidence how to be given and powers of Controller in respect thereof.

This section defines the default way evidence is submitted to the Controller and gives the Controller flexibility to ask for more.

…evidence shall be given by affidavit in the absence of directions by the Controller to the contrary…
- Plain English: The standard way to submit evidence in a patent office proceeding is through a sworn written statement (an affidavit). This is the default.
- Real-world Example: In an opposition, the opponent submits an affidavit from a university professor stating that the invention was “obvious.” The applicant then submits their own counter-affidavit from a different expert, arguing why it was not obvious.
…but in any case in which the Controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by an affidavit, or may allow any party to be cross-examined on the contents of his affidavit.
- Plain English: The Controller is not limited to just reading affidavits. They can:
  1. Take “oral evidence”: Have people testify in person at a hearing.
  2. Do this “in lieu of” (instead of) or “in addition to” affidavits.
  3. Allow “cross-examination”: Let one party’s lawyer ask questions directly to the other party’s expert about what they wrote in their affidavit.
- Real-world Example: The Controller reads the two conflicting affidavits from the professors and finds them hard to reconcile. To get clarity, the Controller “directs” that a full hearing be held, requiring both professors to attend. At the hearing, each party’s lawyer is allowed to cross-examine the opposing professor on their written statements.

Section 80: Exercise of discretionary powers by Controller.

This section establishes a fundamental principle of administrative justice: the “right to be heard.”

…the Controller shall give to any applicant for a patent, or for amendment of a specification (if within the prescribed time the applicant so requires) an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller…
- Plain English: The Controller cannot use their discretionary power to make a negative decision against an applicant (like refusing their patent application or refusing an amendment) without first giving the applicant a chance to argue their case in a hearing, if the applicant requests one.
- Real-world Example: An examiner issues a report stating that a patent application should be refused. The applicant disagrees. The applicant has a legal right to file a request for a hearing. The Controller cannot just issue the final refusal letter; they must schedule a hearing, listen to the applicant’s (or their agent’s) oral arguments, and then make a final, reasoned decision.
Proviso: Provided that the party desiring a hearing makes the request for such hearing to the Controller at least ten days in advance of the expiry of the time-limit specified in respect of the proceeding.
- Plain English: This is a procedural rule for the “right to be heard.” To get a hearing, the applicant can’t just wait until the last minute. They must formally request the hearing at least 10 days before the final deadline for that particular stage of the process.
- Real-world Example: The applicant has a final deadline of October 30th to respond to the examiner’s negative report. If they want a hearing, they must file the request for the hearing by October 20th (10 days before the deadline). If they wait until October 29th to ask for a hearing, the Controller can legally refuse to grant it.

Section 81: Disposal by Controller of applications for extension of time.

Legal Text: “Where under the provisions of this Act… the Controller may extend the time for doing any act, nothing in this Act shall be deemed to require him to give notice to or hear the party interested in opposing the extension, nor shall any appeal lie from any order of the Controller granting such extension.”
Plain English:
This section gives the Controller the final say on granting time extensions for procedural matters.
1. If an applicant requests more time to file a document (and the rules allow for an extension), the Controller does not have to notify any third party or competitor who might want to object.
2. The Controller does not have to hold a hearing to listen to anyone opposing the extension.
3. If the Controller grants the time extension, that decision is final and cannot be appealed.
Real-world Example:
An applicant is required to respond to an examination report by September 1st. Their patent agent suddenly falls ill, so they request a one-month extension from the Controller. A rival company, which is monitoring the application, wants to object, claiming the applicant is just stalling.
Thanks to Section 81, the Controller can review the request, decide it’s reasonable, and grant the extension to October 1st without ever having to listen to the rival company’s objection. The rival company cannot appeal this decision. This keeps the patenting process from getting stuck in minor procedural battles.