REVOCATION OF A GRANTED PATENT IN INDIA

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According to the Merriam-Webster dictionary, the term ‘revoke’ means to annul something by recalling or taking it back. Simply put “Revocation” means cancellation of something (for example a status, an act, a position, a direction, etc) that was initially conferred by virtue of its authenticity. With respect to patents, revocation means annulling the patent rights granted to the patentee.

Rights conferred on a Patentee

The Indian Patents Act, 1970 confers certain rights on the patentee upon grant of the patent. Section 48 of the Act provides that in case of a product patent, the patentee has the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Moreover, in case of a process patent, the patentee has the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

However, when the patent is sealed and/or granted, it can be thwarted throughout its life. The patent can be challenged on several grounds of revocation provided under Section 64 of the Act. As the Act does not assume that the patent granted to the patentee to be valid, the rights granted on such granted patents cannot be absolute.

Importance of provisions relating to revocation of patents

The opposition mechanisms and/or revocation proceedings are of quintessential importance to make sure that undeserving patents are not granted in contravention of the provisions of the Act and if even if any such patent is granted, it can be opposed and/or revoked. As the Act does not presume patents granted to the patentee to be valid, rights granted on such patents cannot be absolute. Also, parties requiring permission (consent) from the patentee for practicing any of the exclusive rights bestowed upon them are provided with a chance to challenge the validity of the patent.

Initiating revocation proceedings

Section 64 of the Act 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.

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.

Grounds for revocation

Fig. Sections providing grounds for revocation of a patent under the Patents Act, 1970

A) Section 64

  • The granted patent is based on another already patented invention with similar specifications granted in India with an earlier filing date or priority date;
  • The granted patent was granted to a person who was not entitled to apply for the same;
  • The granted patent was wrongfully obtained by a person other than the patentee who is actually entitled to the apply for the same or any other person known to him other than the patentee;
  • The subject matter of the complete specification of the granted patent is not an invention within the meaning of the Act;
  • The granted patent lacks novelty with regard to prior public use or prior knowledge;
  • The granted patent lacks inventive step with regard to prior public use or prior knowledge;
  • The granted patent is not useful;
  • The granted patent does not sufficiently and fairly describe the invention and the method by which it is to be performed;
  • The scope of any claim of the granted patent is not sufficiently and clearly described;
  • The granted patent was obtained on a false suggestion or representation;
  • The subject of any claim of the complete specification of the granted patent is not patentable under the Act;
  • The granted patent was secretly used in India before the priority date of the claim other than for the purpose of reasonable trial or experiment only, usage by the government or a government authorised person or by any person authorized by the patentee without the patentee’s consent;
  • The applicant for the granted patent has failed to disclose to the Controller or has disclosed false information regarding foreign applications required by section 8;
  • The applicant for the granted patent has contravened secrecy direction or has made an application for the grant of a patent outside India in contravention of the secrecy directions;
  • The permission for amendment of complete specifications of granted patent under Section 57 or Section 58 of the Act is obtained by applicant by fraud;
  • The complete specification of the granted patent does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
  • The complete specification of the granted patent was anticipated with respect to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

B) Section 65

  • The granted patent can be revoked by the Central Government after establishing that the invention specified in the Patent is related to atomic energy.

C) Section 66

  • The granted patent can be revoked by the Central Government if it is of the opinion that the granted patent or the manner in which the rights related to granted patent are exercised is disadvantageous to the public at large or the state.

D) Section 85

  • The granted patent can be revoked by the Controller if the invention which is patented is not worked within the territory of India, or if the reasonable requirements of the common public from the granted patent are not being met, or the patented invention is not available to the common public at a reasonable and affordable price.

Procedure for filing revocation application for granted patent

An application for revoking a granted patent can be instituted by any interested person by filing a petition, or in a counterclaim in a suit for infringement before the High Court on any of the grounds mentioned in Section 64.

Moreover, the application for revoking a granted patent under section 85(1) can be made in Form 19 and payment of the prescribed fees.

Remedies available for the patentee of the granted patent

The patentee of the granted patent can optionally surrender the patent upon receiving an application for revoking his granted patent by an opponent. The process relating to voluntary surrender of patents is covered by section 63 of the Patents Act and the procedure to affect such surrender is governed by rule 87 of the Patents Rules. The Patentee must notify the Controller of his offer to surrender the granted patent in writing with payment of the prescribed fee. A proper offer for the patent to be surrendered must contain a declaration that no action is pending before any court for infringement or revocation of the patent. In case such action is pending, patentee shall give the particulars of such action and its status. There is no need for the patentee to give the reason or motivation for the offer of the surrender.

Other options for challenging validity of the granted patent other than revocation proceedings

Optionally, the opponent can file a post-grant opposition under Section 25(2) within one year from the date of publication of grant of the patent.