India: Interplay Of Section 63 And Section 64 Of Indian Patent Act, 1970

Last Updated: 14 November 2016
Article by Khurana And Khurana

What is the effect of surrender proceedings on the ongoing opposition/ revocation proceedings? Can they be linked to each other when neither of section 63 or section 64 are subject to each other? It is important to note that both the proceedings can be initiated at any time after the grant of the Patent. Section 64 can be initiated by any person interested, central government or by the alleged infringer in counter-claim. Section 63 can be initiated by Patentee and can be opposed by any person interested. Section 63 is one of those provisions of the Indian Patent Act, 1970 that is not much utilized. Unfortunately, even case laws have not been able to provide the much needed clarity on the provisions of section 63.

Recently IPAB had an opportunity to deal with the issue. Let's see how IPAB fared at it. In this case, an offer to surrender a patent was made during pending revocation proceedings (No.29 of 2016). In these proceedings, patent under issue was IN224314, which was granted to ICOS Corporation of Eli Lily and Company.

Following grounds were used by the M/S MYLAN LABORATORIES LTD. in the instant revocation proceedings:

  1. That the invention as claimed in the impugned patent is not an invention within the meaning of the Patents Act [section 64(1) (d)];
  2. That the invention as claimed in the impugned patent is obvious or does not involve any inventive step [section 64(1)(f)];
  3. That the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention [section 64(1)(h)];
  4. That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of complete specification is not fairly based on the matter disclosed in the specification [section 64(1)(i)];
  5. That the subject of claims in the impugned patent is not patentable under the Act [section 64(1) (k)];
  6. That the First Respondent failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to its knowledge [section 64(1)(m)].

ICOS Corporation submitted as below to IPAB:

"With reference to the subject Revocation, we state that we represent respondent No.1, the patentee of the patent under dispute i.e. Patent No. 224314. We bring to the notice of this Hon'ble Board that the respondent No.1 no longer has business interest in maintaining the patent due to the presence of many generic products on the market in India. Consequently, the respondent No.1 do not intend to maintain this patent any longer and has offered to surrender the patent before the Indian Patent Office under Section 63 of the Indian Patents Act, 1970. A copy of said letter to Patent Office is enclosed herewith for your ease of reference. Under this circumstance, we see that it would be superfluous on the Board to expend its valuable time and effort on the present proceeding and we request the Board to pass suitable orders effecting the closure of revocation proceedings."

ICOS did not contend against revocation grounds. Instead chose to surrender patent. Mylan argued that surrender proceedings have to be completed through procedure as established under section 63 and also argued that as long as surrender of patent has not been accepted, patent is valid and can be subjected to opposition/ revocation.

IPAB was to ascertain whether controller can accept the patentee's plea to surrender his patent, while a revocation suit is pending before the IPAB.

IPAB revoked the patent by following explanation:

The readings of the above said provisions makes it abundantly clear that in the event of offer of surrender of a patent by a patentee, the Controller has to follow the procedure contemplated under section 63 of the Act. Therefore, as long as the said surrender proceedings are pending and unless and until the Controller accept the offer of surrender the impugned patent to be in existence and continued to be in the register. The instant application filed for revocation of the impugned patent has been filed as per provision under section 64 of the Indian Patents Act. As we have already pointed out the grounds raised by the applicant herein has not been disputed by the first respondent and more particularly the first respondent having clearly and categorically stated in their communication dated 09/02/2016 to the IPAB Registry and the Controller of Patents that they no longer has interest in the impugned patent and they are surrendering the impugned patent to the Patent Office and as such instead of allowing the Controller of Patents to follow the procedure contemplated under the section 63, as there is no legal impediment to revoke the impugned patent by this Bench and the impugned patent is liable to be revoked.

It is clear that IPAB did not want to relate surrender proceedings with revocation proceedings but did exactly the opposite by using grounds under surrender to reject revocation proceedings under section 64. It is apparent that IPAB missed an opportunity to give fair reasoning of the revocation of the Patent and delinking the cause revocation with surrender proceedings. Surrender proceedings and revocation can be correlated with each other only to an extent that a patent accepted as surrendered cannot be subjected to opposition/ revocation proceedings and vice versa.

Unfortunately, we have to wait for another case study to clarify the uncertainty created by IPAB.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.