14 Jan 2020

Revocation of Patents in India

The term “Revocation” means Cancellation of the patent rights acquired to 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. In most of the cases revocation are filed on a counter claim against patent infringement suits in High Court or in IPAB (the Intellectual Property Appellate Board). The provision for Revocation of patents is mentioned under section 104.

Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for revocation as no suit of infringement can be brought before a court inferior to the District Court having jurisdiction.

Section 64: Grounds for Revocation

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation of patents. These grounds are following:

  1. Invention is obvious, lacks an inventive step or utility
  2. Invention isn’t new and, has been publicly used or published in India before the priority date or it is foreseen in light of the knowledge available within any local or native community in India or elsewhere.
  3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to invention
  4. The scope of patent specificationsis incomplete or the specifications have either been already claimed in a patent that is granted
  5. The patent was wrongfully obtained in violation of another party’s rights, such as through incorrect or false representation, or leave to modify specifications was obtained through fraudulent means
  6. The information that has been disclosed under Section 8 is known to be false by the Applicant or he has been unable to furnish the required details
  7. Complete specification omits or erroneously attributes geographical origin or biological matter used in the invention
  8. The invention was either secretly used before the date or claim or the Applicant contravened secrecy instructions under Section 35
  9. The complete specification neither describes the invention and method sufficiently nor does it disclose the best method of performing it which was known and entitled protection.

 

Other provisions for revocation of patents

A revocation petition can be filed undersection 65 if the patent granted relates to atomic energy.

If the Central Government find the facts that a granted patent has been exercising by wrong means and it is mischievous to the State or prejudicial to the public, the central government has rights in the case to revoke the concerned patent and such decision is also published in official journal of patents.

Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in the 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.

Revocation of patent under Section 85 of the Patents Act

An application for revocation of patent can be filed after 2 years of grant of compulsory license.  The grounds for revocation of a patent are same which are covered under Section 85 which mainly deal with following:-

  • reasonable price,
  • availability in the territory of India, and
  • requirements of the public not met.

Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take necessary actions that may help in better distribution of the product to the public and more profound availability at reasonable prices. Such revocations of patent are really useful to public.

For more information on revocation, please contact us at info@effectualservices.com

 

 

 

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