Surrender and revocation of Patents

Surrender and revocation of Patents

Share this

Surrender of Patents

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can offer to surrender his patent by giving notice to the Controller.1 The offer to surrender the patent should be published by the Controller, and every person interested in the patent must also be notified of the same.2 

After the publication, any interested person can oppose the surrender, by giving notice to the Controller which should be notified by the Controller to the patentee.3 If the patentee or the opponent wants to be heard, the Controller, on being satisfied that the patent may be surrendered and after the hearing, may accept the offer and revoke the patent by order.4

The notice of opposition must be given to the Controller within a period of 3 months from the date of publication of the notice to surrender the patent.5 If the patentee’s offer to surrender the patent is accepted by the Controller, he may:6

  • direct the patentee to return the patent; and
  • on receiving the patent revoke it by order; and
  • publish the revocation of the patent. 

Revocation of Patents

Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A patent that has been granted to an invention can be revoked by the Appellate Board in the following ways:

  • on a petition filed by any interested person; or
  • on a petition filed by the Central Government; or
  • on a counter-claim in a suit for infringement of the patent by the High Court.

Grounds for Revocation of Patents

A patent may be revoked on any of the following grounds:

  • where an invention as claimed in a valid claim of earlier priority date which is included in the complete specification of another patent;
  • where the patent application was filed by a person who is not entitled under the provisions of the Act and was granted a patent on such application;
  • where the patent was wrongfully obtained and the rights of the petitioner or any person under/through whom he claims, were contravened;
  • when the subject of a claim of the complete specification is not an invention within the meaning of the Act;
  • where the invention that is being claimed is not new having regard to what was publicly known or used in India before the priority date of the claim and also having regard to what was published in any of the documents, whether in India or elsewhere;
  • where the invention that is claimed is obvious and lacks any inventive step, having regard to what was publicly known, used or published in India, before the priority date;
  • where the invention is not useful;
  • where the invention and the method by which it is to be performed is not sufficiently and fairly described by the complete specification. In other words, the description of the method or the instructions for the working of the invention as specified in the complete specification are insufficient to enable a person of average skill and knowledge of the art to which the invention relates, to operate or work the invention or where the best method of performing the invention which is known to the applicant is not disclosed;
  • where the scope of any claim is not defined properly or based on the matter which his not disclosed in the specification;
  • where a false suggestion or representation was made to obtain the patent;
  • where the subject of any claim of the complete specification is not patentable under the Act;
  • the invention that is being claimed was secretly used in India before the priority date of the claim;
  • where the information required under Section 8 has not been disclosed by the applicant of the patent to the Controller or the information that has been furnished is false to his knowledge;
  • where any direction of secrecy passed under Section 35 has been contravened by the applicant or made an application in contravention of Section 39 for the grant of a patent outside India;
  • where the permission to amend the complete specification under Section 57 or 58 was obtained by fraud;
  • the complete specification does not disclose or mentions the wrong source or geographical origin of biological material used for the invention;
  • the invention was anticipated having regard to the knowledge which was available within any local or indigenous community within India or elsewhere. 

However, where the invention claimed is not new, obvious or lacks any inventive step, having regard to what was publicly known or used in India or published in India or elsewhere, before the priority date of the claim:7

  • a personal document, secret trial or secret use shall not be taken into account;
  • where the patent is for a process or for a product that is made by a process which is claimed, the importation of the product which is made abroad by that process into India will constitute knowledge or use in India of the invention, on the date of importation. Except where the product has been imported for the purpose of reasonable trial or experiment only.

Categories of Grounds for Revocation

Broadly there are three categories of grounds for revocation of a patent, viz., 

  1. grounds relating to the rights of the patentee and his conduct
  2. grounds relating to the invention and its quality
  3. grounds relating to the description of the invention  

The grounds relating to the rights of the patentee and his conduct includes the following:

  • patentee is not entitled to the patent because the applicant for the patent was not entitled to apply;
  • The patent was obtained wrongfully as against the person entitled;
  • the patent was obtained by false suggestion or representation;
  • failure to disclose information regarding foreign applications;
  • non-compliance with directions for secrecy;
  • the amendment of the complete specification was obtained by fraud.

The grounds relating to the invention and its quality include the following:

  • where the subject of a claim is not an invention;
  • the subject of a claim is not a patentable invention;
  • the invention claimed was secretly used before the priority date;
  • the invention claimed is already a subject of a prior grant;
  • the invention claimed lacks novelty, having regard to prior knowledge or use;
  • the invention is obvious or lacks an inventive step, having regard to prior knowledge or use;
  • where the invention is not useful;
  • the invention claimed was anticipated having regard to the knowledge, oral or otherwise within any local or indigenous community in India or elsewhere.

The grounds relating to the description of the invention includes the following:

  • the invention is not described sufficiently and the best method for performing it is not disclosed;
  • the claims are not defined clearly. 

Furthermore, on a petition of the Central Government, the High Court may revoke a patent if it is satisfied that the patentee has failed to comply with the request of the Central Government, without any reasonable cause to make, use or exercise the invention which has been granted a patent for the Government’s purpose, within the meaning of Section 99 of the Act.8 The petition for revocation of a patent should be notified to all persons mentioned in the register who are proprietors of that patent or have a share or interest in the patent.9

Revocation at Instance of the Government

Section 65 of the Patents Act, 1970 deals with cases relating to atomic energy wherein, a patent is revoked or the complete specifications are amended on directions from the Government. Where after the grant of a patent, the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no patent can be granted, the Government can direct the Controller to revoke the patent. 

Therefore, if a patent has been granted to an invention in the field of atomic energy, the Central Government can direct the Controller to revoke the patent. Upon receiving the direction from the Central Government the Controller notifies the patentee and every person who has an interest in the patent and gives them an opportunity of being heard, after which the Controller revokes the patent. 

If the Controller feels that the patent can be sustained by amending something, instead of revoking the patent he can also allow the patentee to amend the complete specification in a manner which he considers necessary. Therefore, the Controller can exercise his discretion in this regard. 

The Government can also revoke a patent in the public interest.10 Where a patent or the manner in which it is exercised is mischievous to the State or prejudicial to the public, the Central Government after giving an opportunity to the patentee to be heard can make a declaration to that effect in the Official Gazette following which the patent shall be considered revoked.   

The revoking of a patent in the larger interest of the public is a fast track proceeding. It does not involve the Controller being directed by the Central Government, nor does it involve invoking any grounds of revocation.  Thus, it is the most expeditious way by which a patent can be revoked, and once the declaration is made in the official gazette, the patent stands revoked. 

Conclusion

Therefore, the revocation of a patent results in the cancellation of the exclusive rights which have been granted to the patentee with respect to an invention. Section 64 of the Act prescribes extensive grounds for revocation of a patent, which can be invoked for the revocation of a patent on a petition of any person interested or on a petition of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court. 

In the case of Dr Aloys Wobben & Anr. v Yogesh Mehra & Ors.11 the Supreme Court held that under Section 64 of the Patents Act, the revocation of a patent can be sought either by a counter-claim in a suit for infringement before the High Court or by filing a petition for revocation before the Intellectual Property Appellate Board (IPAB). 

Therefore, if a revocation petition is filed by a person under Section 64(1), before an infringement suit is instituted against him, he cannot seek revocation of the patent by way of counter-claim in a patent infringement suit. Similarly, if the defendant, in response to a patent infringement suit has sought revocation of the patent by way of counter-claim, he cannot file a petition for revocation before the IPAB.12 

This will prevent multiple proceedings since only one of the two proceedings i.e., either the revocation petition or counter-claim in a patent infringement suit will be sustained. It will also allow those opposing a patent to know exactly which forum they should approach to challenge the validity of a patent. This, in turn, will reduce the cost of litigation and also avoid conflicting decisions being given by the IPAB and the High Court.  Thus, the Supreme Court has streamlined the process of patent litigation by making the Indian Patent system more robust by avoiding multiplicity of proceedings. 


Endnotes

1.  The Patents Act, 1970 (Act 39 of 1970), s. 63 (1). 

2.  The Patents Act, 1970 (Act 39 of 1970), s. 63 (2). 

3.  The Patents Act, 1970 (Act 39 of 1970), s. 63 (3).

4.  The Patents Act, 1970 (Act 39 of 1970), s. 63 (4). 

5.  The Patent Rules, 2003, Rule 87 (2). 

6.  The Patent Rules, 2003, Rule 87 (3). 

7.  The Patents Act, 1970 (Act 39 of 1970), s. 64 (2).

8.  The Patents Act, 1970 (Act 39 of 1970), s. 64 (4).

9.  The Patents Act, 1970 (Act 39 of 1970), s. 64 (5). 

10.  The Patents Act, 1970 (Act 39 of 1970), s. 66. 

11.  Civil Appeal No. 6718 of 2013 decided on June 2, 2014. 

12.  http://www.nishithdesai.com/information/news-storage/news-details/article/supreme-court-of-india-rules-a-counter-claim-and-revocation-petition-challenging-the-validity-of-the.html


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

Leave a Reply