Rule 79 of the Patents Rules, 2003
Request under section 52(2)
Sets out how the true inventor asks the Controller for a patent after a court permits it following revocation for wrongful obtaining.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
Nothing here replaces the statute. The official wording of the provision, together with any Gazette notification that applies to it, governs. This page only explains that material in ordinary language.
What this rule requires, step by step
Sometimes the wrong person gets the patent. An employee files an invention made by a colleague, a collaborator patents a design shown to them in confidence, or a consultant files work done by the client. Section 52 addresses the aftermath. Where a patent is revoked on the ground that it was obtained wrongfully and in contravention of the rights of the petitioner, or where the High Court instead directs the specification to be amended, the court may, in the same proceeding, permit the grant of a patent to the petitioner for the whole or part of the invention.
That permission does not by itself produce a patent. The petitioner has to come back to the Controller and ask for the grant, and Rule 79 governs that request. It is made on Form 12 with the fee prescribed in the First Schedule, and the order of the court should accompany it. Rule 79 also fixes a window running from the date of the order, so check the current text of the rule for the exact period before assuming the request can wait.
The most valuable feature of section 52 is the date. A patent granted to the true inventor under it bears the same date as the patent that was revoked, so the term is not restarted and the earlier priority position is preserved. Without that, the true inventor would be pushed to a new filing date, by which time the invention would long since have been published and would fail on novelty. The section keeps the wrongdoer's timing benefit with the rightful owner.
There is a matching limit on enforcement. Rights under the new patent look forward, not backward: the true inventor cannot sue for what happened before the fresh grant. So section 52 restores the position going forward and preserves the date, but it is not a way to convert a period of wrongful ownership into damages. That is why acting promptly, both in bringing the revocation petition and in making the request afterwards, matters so much.
Why this rule matters
True and first inventors who have succeeded in showing that someone else obtained a patent on their invention.
Immediately after the High Court passes an order under section 52 permitting the grant to them.
A right to obtain a patent bearing the same date as the revoked patent, on a request made to the Controller in the manner Rule 79 prescribes.
The court order remains a piece of paper, no patent is granted, and the delay may put the request outside the window the Rules allow.
How it works in practice
Winning the revocation and then finishing the job
Ananya Rao develops a process for recovering copper from electronic waste and shares the details, under a signed confidentiality agreement, with a partner she was considering for a pilot plant. The partner files a patent application in his own name and it proceeds to grant. Ananya petitions the High Court for revocation on the ground that the patent was obtained wrongfully and in breach of her rights, producing the confidentiality agreement, her dated process notes and the correspondence in which she disclosed the method. The court revokes the patent and, in the same order, permits the grant of a patent to her for the process. Her agent then files a request on Form 12 with the prescribed fee and a certified copy of the order, well inside the period allowed. A patent is granted to her bearing the same date as the revoked patent, so she keeps the original date and the remaining term. She cannot sue for the years the patent stood in his name, but from grant onwards the process is hers.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- Section 52 applies after a patent is revoked for having been wrongfully obtained, or where the court directs amendment instead.
- The court permits the grant; the Controller makes it, on a request under Rule 79.
- The request goes in on Form 12 with the fee prescribed in the First Schedule, with the court's order.
- The new patent bears the same date as the revoked patent, so the original date and remaining term are preserved.
- No infringement action lies for anything done before the fresh grant.
- A window runs from the date of the order; verify the exact period in the current Rules.
Common mistakes and misunderstandings
- Assuming the court order is itself the patent. Until the request is made and the Controller grants, there is no patent in your name.
- Waiting to see how negotiations go before filing the request. The Rules set a limited period after the order.
- Expecting to recover damages for the period when the patent stood in the wrongdoer's name. Rights under the new patent run from its grant.
Connected provisions
This page explains a rule of the Patents Rules, 2003. A rule does not stand on its own; it works out a duty or a power that the Patents Act, 1970 has already created. The parent sections are listed separately so you can read the source of that authority.
Forms, deadlines and fees
- Form 12 (check the current Second Schedule)
The Second Schedule to the Patents Rules contains the prescribed forms. A form that has been amended will not match an older saved copy, so take a fresh download from the official site before you fill anything in.
- Rule 79 requires the request to the Controller to be made within a period running from the date of the court's order. Confirm the exact period against the current text of the rule and file well within it.
Open the deadline calculator — and have every date confirmed against the current Rules before you rely on it.
Any official fee connected with this provision is fixed by the First Schedule to the Patents Rules, not by the provision itself. The amount depends on who the applicant is and on whether the filing is made online or on paper, so no figures are reproduced here. How Indian patent fees work.
Related judgments
This part of the page is reserved for summaries of decided cases. They are added one at a time, after review by a person qualified to confirm that the summary matches the judgment. Nothing has been cleared for this provision so far, so there is nothing to show. How case notes are prepared.
Questions people ask about Rule 79
Someone patented my invention. Can I get the patent transferred to me?
Not by transfer, but there is a route to the same end. If you can show that the patent was obtained wrongfully and in contravention of your rights, the High Court can revoke it and, in the same proceeding, permit a patent to be granted to you for the whole or part of the invention. You then make a request to the Controller under Rule 79 on Form 12 with the prescribed fee and the court's order. The patent that issues bears the same date as the one revoked, which preserves your position on novelty and on the remaining term.
Why does the new patent keep the old date?
Because otherwise the remedy would be worthless. By the time a wrongfully obtained patent has been granted and then revoked, the invention has been published for years, and a fresh application would be destroyed by that very publication. Section 52 solves this by providing that the patent granted to the true and first inventor bears the same date as the patent that was revoked. The true inventor therefore inherits the original date and whatever remains of the twenty-year term, rather than starting again with an application that could never succeed.
Can I sue for the period the patent was in someone else's name?
Not under the new patent. The Act is explicit that no suit for infringement lies for anything done before the fresh grant, so the patent operates from that point onwards. That does not necessarily leave you without any remedy for the earlier period: depending on the facts, a claim for breach of a confidentiality agreement, breach of contract or breach of confidence may lie in a civil court, and those are separate proceedings with their own limitation periods. Take advice on both tracks together rather than one at a time.
Did someone else patent your invention?
MYCrave Consultancy advises true inventors on revocation for wrongful obtaining and completes the section 52 grant request.
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