Section 64 of the Patents Act, 1970 provides that any interested person, the Central Government and/or a party making the counterclaim for infringement of a patent in a suit can file and initiate the revocation proceedings. Moreover, Section 2(1)(t) states that “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. Sections 64, 65, 66 and 85 of the Act provides grounds on the basis of which a granted patent can be revoked.

Further, the revocation petition can be filed at the High Court. Importantly, Section 104 of the Act states that no suit of infringement can be brought before a court inferior to the District Court having jurisdiction to try the suit and in the event of a counterclaim for revocation of the patent made by the defendant. Such a suit for infringement and the counterclaim must be transferred to the High Court.

Below is a review on important provisions relating to revocation of granted patents and the judgements from the various judicial cases.

Filing of revocation application by an “interested person”

In case of Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City, the Court stated that “Person interested’ under Section 64 would mean a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register.

In case of Dr. Aloys Wobben And Another vs Yogesh Mehra And Others, the SC reiterated and clarified that a “person interested” would include a person who has a direct, present and tangible interest with a patent, and the grant of the patent adversely affects his above rights. A “person interested” would include any individual who desires to make independent use of either the invention itself (which has been patented), or desires to exploit the process (which has been patented) in his individual production activity. Therefore, the term “any person interested” is not static. The same person may not be a “person interested” when the grant of the concerned patent was published, and yet on account of his activities at a later point in time, he may assume such a character or disposition.

Remedies available to the opponent

In case of Dr. Aloys Wobben And Another vs Yogesh Mehra And Others, the SC provided that revocation can be sought by either a counter claim in suit for infringement OR by filing a revocation petition before the IPAB, the challenger cannot attempt to simultaneously proceed against the patentee in both the matters. Attempting to seek one of the remedies would bar him from availing the other.

To prevent the wastage of judicial machinery, it was laid down by the Supreme Court in the case of Enercon (India) Ltd and Ors. v. Enercon Gmbh, that post-grant opposition proceedings and petitions or counter-claims of revocation against the same patent, cannot be simultaneously instituted. Frivolous litigation shouldn’t be encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.

Ground for revocation for not providing information under Section 8

In case of Chemtura Corporation vs Union Of India & Ors., the Delhi High Court stated that the requirement of updating the Controller about the status does not equate to merely stating the countries of filing or the status whether it is “pending or dismissed”. Further, the requirement is not fulfilled by informing once regarding filing of similar applications outside the country; rather the obligation is a continuing one to inform the Controller about any changes in the status from time to time.

Certificate of validity of specification according to Section 113 of the Act

In the case of Merck Sharp and Dohme Corp. and Ors. Vinod Jadhav and Ors., the Delhi HC clarified that a decree granted in favour of plaintiff by virtue of a certificate of validity in a previous case under section 113 makes a prima facie case in favour of the plaintiff. Moreover, the balance of convenience lies in favour of the plaintiffs by virtue of the validity certificate.

Abandoned patent application under Section 21(1)

In the case of K. Manivannan vs. The Chairman Intellectual Property Appellate Board and Ors., the Madras HC clarified that merely abandoning the application as per section 21(1) and the same being not in public domain, would not constitute prior publication.

Discretion of the Court in revocation of a granted patent

In the case of Merck Sharp and Dohme Corporation and Ors. vs. Glenmark Pharmaceuticals Ltd., the Delhi HC clarified that the provisions under Section 64 of the Act make it clear that it is not mandatory for the court to revoke the patent merely because any of the grounds mentioned in Section 64(1) are made out. It is the discretion of the court to revoke or not to revoke in the given facts and circumstances of a case. The word “may” used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out and “may” cannot be read as “shall” as contended by the defendant.

Further in case of Sukesh Behl vs . Koninklijke Philips Electronics, the Delhi HC stated that revocation is not automatic under Section 64(1)(m), but it is always open to the Court to examine the question whether the omission to furnish the information was deliberate or intentional. The revocation would follow only if the Court is of the view that the omission to furnish the information was deliberate.

Commercial exploitation of granted patent

In case of G. Srinivasan vs. Voltamp Transformers Limited and Ors., the Madras HC established that merely obtaining a patent, without commercially exploiting the same, itself will not be a ground to prevent others from doing the same business. If such a scenario is allowed by this Court, it would lead to serious consequences and also affect the development of the economy and new inventions.

Novelty of the invention underlying the grated patent

In the case of Ram Narain Kher Vs. Ambassador Industries New Delhi, the Delhi HC stated that it is equally true that even when the invention “was not itself new” but “the Particular use of it for the purpose described in combination with the other elements of the system, and producing the advantageous results”, would be a sufficient element of novelty to support the patent.