Revocation of Patent in India - Indian Patent Act

What is Revocation of Patent?

Meaning of Revocation of Patent: – In general terms, revocation means the action of taking back something that has already been given. The same happens with patents, which, once granted, cannot be considered permanent. The term “Revocation of Patent” means cancellation of the patent rights acquired by the patentee. The revocation of patent can be applied by making a petition by any person interested or it can be also applied by the Central Government.

People other than the patent holder are given the right to file a revocation petition if there is a problem due to someone’s patent right. People here include any interested person who has legally acceptable grounds for revocation of patent and central government. However, such a person can raise his voice only by filing a petition. The final decision regarding repeal rests with the Intellectual Property Appellate Board (IPAB).

The Patent Act 1970, for a limited period, protects the inventor with an exclusive right that allows the inventor alone to exploit the invention economically.

The Breakers in the Journey of Earning Patent Protection

The line “If you want to protect your invention you must obtain patent protection” which is common and frequently used. It is easy to advise someone to obtain a patent but securing patent protection is not as easy as it looks. A person applying for a patent has to overcome two main barriers to be called a patentee. The two constraints are known as pre-grant opposition and post-grant opposition.

Pre-Grant Opposition: – First and foremost, it is important to understand what the term “pre-grant opposition” refers to. Protest can be called disagreement, enmity, animosity and most importantly, objection. Whereas the word “pre” means prior. Therefore, there would be an objection to the patent before the term “pre-grant protest” could be converted into common terms. Now the question arises that who and how and on what grounds can one object to a patent.
The concept of pre-grant opposition comes under the purview of Section 25(1) of the Patents Act, 1970. Section 25(1) of the Patents Act, 1970, and Rule 55 of the Patent Rules, 2003, deal with the pre-grant opposition procedure in India. It states that any person may oppose the grant of a patent and such opposition shall be raised after the application of the patent has been published and before the grant of the patent. It further states that such protest, if made, shall be in writing.
Since the right to oppose, a patent is granted to any person, but it does not mean that any person can oppose a patent only for entertainment, there are grounds for opposition. Such grounds are mentioned under sub-sections A to K under Section 25(1) of the Patents Act, 1970.
Following are the grounds of Pre-Grant Opposition : –
1. If the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
2. Anticipation of invention by prior publication. If the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim;
3. Anticipation by prior claim in India. If the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
4. The invention is in public use or knowledge prior to the priority date. If the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim;
5. The invention for which the applicant is seeking patent protection is not treated as an invention within the meaning of the Patent Act or is not patentable under the Act. If the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;
6. The full specification of the invention is not disclosed. If the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
7. If the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
8. The applicant failed to comply with Section 8 in The Patents Act, 1970 or showed materially false information;
9. If in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
10. If the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention
11. The claimed invention belongs to the traditional knowledge of any community, anywhere in the world.

Post-Grant Conflict: – Another obstacle to earning patent protection is post-grant opposition. Section 25(2) explains the subsequent opposition to the grant. It states that after the grant of a patent, any interested person may give notice of opposition to the Controller but such opposition shall be given before the expiry of a period of one year from the date of publication of the grant of the patent. The grounds for post-grant opposition are the same as pre-grant opposition.
Throwing some light on Section 25(2) of the Patents Act, 1970, it makes it clear that post-grant opposition can be raised only before the expiry of a period of one year from the date of publication of the grant of a patent. It is clear that if no person is opposed in the year mentioned, the patent will be granted to the applicant and the applicant can heave a sigh of relief as he will be called a patentee. “Patent once granted can be revoked later”, yes you heard that right. A patent granted to a patentee can be revoked later.

Grounds for Revocation of Patent

In order to disagree or counterclaim, one must have some grounds on which he or she can rely. The Patents Act, 1970 provides certain grounds on which an interested person can file a petition under the Intellectual Property Appellate Board (IPAB) or as a counterclaim in a suit for infringement in the High Court.

The following are the sections that provide ground for revocation of the patent: –

Section 64 (Revocation of Patent): – The following grounds are covered under Section 64 of the Patents Act, 1970: –
1. If a similar invention is protected by a patent right with an earlier filing date;
2. If the person granted with the patent is not the original owner and has obtained patent protection from misrepresentation or fraud, the original owner may seek remedy for patent revocation;
3. An obvious invention can’t be shed by patent protection.;
4. A patent can be cancelled if granted to a person who is not entitled under the Patents Act 1970;
5. If the invention fails to provide the service specified in the specification while applying for a patent;
6. As per Section 8 of the Patents Act 1970, the inventor is bound to disclose all information required by the section and if such inventor fails or misrepresents any of the requested information, the patent shall be void;
7. If the invention does not satisfy the standards of section 2(1)(j) of the Patents Act 1970, the patent granted on such invention may be cancelled;
8. Under Section 35 of the Patents Act, 1970, the controller provides for certain compliance with the confidentiality directive which must be respected, however, if an inventor fails to provide compliance, his patent may be revoked;
9. Section 57 or Section 58 of the Patents Act, 1970 talks about the permission to amend the complete specifications of the patent, however, if an inventor making fraudulent use obtains permission under the said clause, comes at the sake where it can be revoked;
10. Inventions falling under the umbrella of Section 3 of the Patents Act, 1970 are not eligible for patent;
11. If the invention claimed by the inventor is already in the knowledge of any local or native community in India;
12. The inventor is obliged to disclose the geographical origin or source of the biological material used in the invention, inviting an unwanted revocation hazard if he fails to disclose them reasonably;
13. In such instances, where the inventor obtains the invention from abroad and the invention is already known to the public of India.
Section 65: Revocation of patent or modification of full specification on directions of Government in matters relating to atomic energy: –
1. Here, this section empowers the Central Government to ask the Appellate Board or the Controller to cancel the license of the patent and every other person whose name is entered in the register as having an interest in the patent, if the patent obtained by him contradicts sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962), which states that no patent shall be granted if such patent is for an invention relating to atomic energy;
2. However, the Controller may provide an option to the recipient of the patent and every other person, whose name is entered in the register as being interested in the patent, to make a satisfactory amendment which does not hamper the sub-section (1) of section 20 of the Atomic Energy Act, 1962.
Section 85: – Revocation of patents by the Controller for non-working: –
1. This section clarifies that when a compulsory license has been granted in respect of a patent, the Central Government or any interested person may request the Controller to order cancellation of the patent on the following grounds —
  1. That the patented invention has not been worked on in the territory of India.
  2. The reasonable needs of the public with respect to the patented invention have not been met.
  3. That the patented invention is not available to the public at a reasonably affordable price.
2. Note: – Application to the Controller by the Central Government or any interested person shall be made after the expiry of two years from the date of the order of grant of the first compulsory license.
Section 66: – Revocation of patent in the public interest: –
1. The law does not allow a person to be selfish, i.e., if something you discover is of great benefit to you, but is causing harm to the public at large or the process through which it is produced is harmful to the public on large scale, so the law will not allow you to continue with your search;
2. Defined under Section 66 of the Patent Act, 1970 “the Central Government believes that something that holds the patent protection is harmful or the mode in which it is exercised is injurious i.e., it may cause prejudice to the general public, may revoke patent protection over such discovery after allowing the patentee, make a declaration to that effect in the Official Gazette”.

Who can file for the Revocation of Patent Petition?

The Patent Act, 1970, in Section 64 provides for the persons who can file the petition of Revocation of Patent. The persons are as follows: –

Any interested person;
The Central Government;
The person is making the counter-claim for the infringement of a patent in a suit.

Where can a Revocation of Patent Petition be filed?

A petition for revocation of the patent must be filed with the Intellectual Property Appellate Board (IAPB) by any person specified under section 64 of the Patents Act, 1970. As per Section 104 of the Patents Act, 1970, the jurisdiction provides for the aspect of filing the revocation of a patent petition.

Section 104 states that a revocation petition claiming infringement of a patent should not be filed in any court less than the District Court having jurisdiction to try the suit for infringement. On the other hand, if a counter-claim is filed for the revocation of the patent made by the defendant, then such counter-claim or patent infringement suit must be transferred to the High Court.

What should be changed with regards to patent opposition and revocation of a patent under public interest?

Although, the opposition is necessary to prevent the granting of patents on frivolous inventions, however, it, sometimesmakes it difficult to earn patent protection and sometimes important patents also suffer the pain.

From the viewpoint of rights holders, there has been an upsurge in anxiety surrounding the idea that potential infringers might attempt to delay the grant of those patents that conflict with their interests. This anxiety is rooted in the fact that any person can file a pre-grant opposition in a pending application, which risks prolonging the grant of a patent and may increase the burden of additional costs involved in defending this opposition.

On publication of a patent application, the applicant is deemed to acquire similar rights as would be granted on the grant of a patent on that application from the date of publication. However, the applicant cannot file any suit for infringement until a patent is actually granted. Indian law permits any person to oppose a pending application, a procedure that is more elaborate than the third-party representation found in other jurisdictions. The pre-grant opposition involves detailed pleadings where both the opponent and applicant file a statement and reply, along with elaborate evidence. The parties may thereafter opt for a hearing on such opposition and the entire exercise may take a few months before the controller gives a final decision.