'Revocation of Patent' is cancellation of patent rendering a patentee devoid of rights given to him for his patent. Patents can be revoked by:
- Intellectual Property Appellate Board (IPAB) considering a petition applied by any person interested based on the grounds given under section 64(1), this decision can be further challenged in High Court
- High Court, where counter-claim for legality of the patent is questioned in the case of infringement,
- High Court, on appeal by the Central Government, being satisfied that the applicant is not complying with the needs of the Central Government to use the patented product or process under section 64(4),
- Controller, on the directions of Central Government, can revoke patents if it is related to atomic energy or against public interest as given under section 65 and 66, respectively,
- Controller, considering application filed by any interested person or Central Government u/s 85, may revoke a patent after two years of the grant of the first compulsory license based on the non- fulfillment of the basic requirements like workability in the territory of India, satisfaction of public requirements andavailability at affordable price.
Judgement in the case of F. Hoffmann-LA Roche Ltd. and Ors. Vs. Cipla Ltd.8 Clarifies the fact that the mere grant of a patent does not guarantee its resistance to subsequent challenges, which can still be faced in the form of a counter claim in a suit or a petition applied on the grounds mentioned in Section 64. A patent, u/s 64(1) of the Patents Act 1970, can be revoked by High Court or IPAB on a number of matters within one year of grant of the patent9, briefly stated as under:
- Subject do not constitute invention based on non-compliance of basic requirements of novelty, nonobviousness, usefulness and sufficient disclosure
- Any of the claims is also claimed in the complete specifications of another patent with earlier priority date
- Person is not entitled to be an applicant of the application under the provisions of the act
- Patent was obtained wrongfully from petitioner or other concerned person
- Subject covered in the application is publicly known or used or anticipated from any work published before the priority or filing date of the application
- Subject matter is not patentable under the scope of the act
- Claim(s) are non-descriptive or doesn't disclose the best method of performing the process
- Scope of claim(s) not clearly defined
- Secretly used in India before the priority date of the respective claim
- Failure of disclosure of information as required under section 8
- Non-compliance of the secrecy directions provided under section 35 and/or applying for grant outside India without prior permission as directed under section 39
- Non-disclosure or false intimation of geographical origin of the biological material used in the application
- Knowledge involved in application is previously known to any local community in India or elsewhere
Revocation, as the term is used in the Patents Act 1970, is mainly a post-grant operation. But apart from the reasons stated above and the provision stated under section 65, 66 and 85, a patent is also said to be revoked under below stated conditions10:
- Cancellation of patent application and rights of a granted patent following a successful trial of pre-grant and postgrant opposition, respectively
- If not contested for post-grant opposition within a period of two months from the date of receipt of notice given by the Controller
- Patent shall also be revoked when the offer of surrender by applicant is accepted by the Controller
Although the grounds mentioned for revocation under section 64(1) are quite similar to the grounds on which pre or post-grant opposition is made (as mentioned under section 25(1) and 25(2), respectively), the same cannot be quoted for making a post grant opposition. This act of an opponent was also criticized and corrected by the opposition board in the hearing (2017) of a post-grant opposition filed by P. Sunil against G.R. Kaliaperumal having patent application number 224/CHE/2010. P. Sunil choses section 64 to be the ground for post-grant opposition, which although was not objected by the patentee but corrected by the opposition board in the course of proceedings with the corresponding clauses of section 25(2).
Many a times such sections are used in disguise by the petitioners to revoke the patent especially to get monetary benefits or to end a linked contract. Monsanto Technology LLC and Ors. vs. Nuziveedu Seeds Limited and Ors is a case11 where petition under various subsections of section 64 was filed by Nuziveedu Seeds Limited against the Monsanto Technology LLC in order to get away with the contractual license and in turn the high trait fee asked by the company. This petition was granted by the IPAB and the patent owned by Monsanto Technology LLC was revoked. But later when the decision was challenged in High Court, the decision was reversed stating that Nuziveedu Seeds Limited and Ors. did not seem to be interested in renewed arrangement with Monsanto Technology LLC and thus took the position that the grant of patent itself is bad in law and thus, asserting their right to continued use of the technology with liberty. It was ordered that the contract will be on toll as before between both the parties but with the revised rates of trait fee as decided by the Government of India.
8 F. Hoffmann-LA Roche Ltd. and Ors. vs. Cipla Ltd. (24.04.2009 - DELHC) : MANU/DE/0381/2009
11 Monsanto Technology LLC and Ors. vs.Nuziveedu Seeds Limited and Ors. (28.03.2017- DELHC) : MANU/DE/0838/2017
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