How Do You Revoke a Patent?

What is Revocation of Patent?

The term “Revocation” means Cancellation of the patent rights granted to the patentee. Under the (Indian) Patents Act, 1970 the validity of a patent can be challenged in any of the following ways:-

Opposition within one year from the date of publication of the grant [Section 25(2)]
Revocation petition filed with the District Court/High Court [Section 64]
Filing of a counterclaim in a Patent infringement suit [Section 64]
Revocation of a patent due to non-workability [Section 85]
Revocation of a patent in Public interest by Central Government [Section 66]
In cases relating to atomic energy on the directions of the Central Government [Section 65]

Who Can File a Suit for Revocation?

Generally, the Central Government, one who makes a counter-claim in a suit for infringement or any person who has a direct, tangible, and commercial interest who has been injured or affected by the continuance of the patent on the register or by its use (“Person Interested”) have the right to initiate revocation proceedings.

Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation of patents. The revocation of a patent can be applied for by making a petition, under Section 64 of the Patents Act, by any person interested or it can also be applied that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13¹⁵;
that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;

that the invention, so far as claimed in any claim of the complete specification, is not useful;
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, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
that the patent was obtained on a false suggestion or representation;
that the subject of any claim of the complete specification is not patentable under this Act;
that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
that leave to amend the complete specification under section 57 or section 58 was obtained by fraud;
that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

The revocation of a patent is not restricted to Section 64 only. Section 25(2) also specifies certain grounds, which could be used for post-grant opposition, which essentially means that a person claiming that a patent granted under the Act is not valid based on grounds mentioned under Section 25 and could reach the controller for revocation by way of opposition to the grant of such patent. This remedy is available until one year from the date of publication of the grant of patent. These grounds are somewhat similar to those of Section 64.

Under Section 65

Revocation of patent or amendment of complete specification on directions from Government in cases relating to atomic energy.

Here, this section empowers the central government with the right to ask the appellate board or the controller to revoke the patent of the license of a patentee and every other person whose name has been entered in the register as having an interest in the patent, if patent acquired by them contradict the sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962), which says that no patent can be granted if such patent is for an invention relating to atomic energy. However, the controller may provide the patentee and every other person whose name has been entered in the register as having an interest in the patent an option to make a satisfactory amendment which further does not hamper the sub-section (1) of section 20 of the Atomic Energy Act, 1962.

Under Section 66

Where the patent is found to be against public order and morality. It may benefit the patentee but be contrary to the public at large.

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 to be heard, make a declaration to that effect in the Official Gazette”.

Under Section 85

This section pronounces that when a compulsory license has been granted to a patent, the Central Government or any person interested may request the Controller for an order revoking the patent on the following grounds-

That the patented invention has not been worked in the territory of India.
That the reasonable requirements of the public concerning the patented invention have not been satisfied.
That the patented invention is not available to the public at a reasonably affordable price.

Application to the controller by the Central Government or any person interested shall be made after the expiration of two years from the date of the order granting the first compulsory licence.

Prevention of Multiplicity of Suits

Section 104 states no suit of infringement can be brought before a court inferior to the District Court having jurisdiction. Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in the Enercon (India) Ltd and Ors. Vs. 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 interest

In [1]Aloys Wobben and Ors V. Yogesh Mehra and Ors the SC held that if post-grant opposition is filed under Section 25 (2) then that person eclipses his right to file a petition for revocation under Section 64 or counterclaim for infringement of patent before the High Court. Section 64 would function keeping in mind conditions mentioned in other Sections. In a case where the opposition has been filed before the controller, that would mean that the right of the interested person under Section 64 is foregone. The Court held that whichever remedy is sought before the other will be valid, to be pursued and the other will be eclipsed because of res-judicata. The question about the validity of the patent could be decided in the suit for infringement through a counterclaim as well as in a petition for revocation

[2]In G. Srinivasan vs. Voltamp Transformers Limited and Ors. (14.02.2017 – MADHC): C.S. No. 373 of 2012 the Madras High Court granted revocation of a patent because the plaintiff failed to establish if the patent had been commercially exploited from the date of its inception. If such commercial exploitation cannot be proven then merely obtaining such a patent would not prevent others from using the same. The court held if patents were granted for inventions which were commercially exploited then it would be detrimental to the economy and inventions.

[3]Natural Remedies Private Limited Bangalore. Indian Herbs Research & Supply Co Ltd, O.S.NO.1 OF 2004 09 December 2011 the Karnataka High Court held that all the four herbs used by the plaintiff in preparation of Zigbir are found commonly all over India. They were known for being curative. The main embodiment of the invention lay in the herbal composition being synergistically effective in curing the ailments of the liver. The invention had no inventive step and the specification laid down the composition and method of preparing the composition however, nothing was mentioned about the synergy used in preparing the commotion It was a mere admixture. The grounds for revocation of patent as contained in Section 64 (1) (b), (e) and (f) and clause (h) were made out. So, the patent was revoked on account of being obtained by misrepresentation and lack of inventive step in the process of manufacture.

[4]Ajay Industrial Corporation v .Shiro Kanao of Ibaraki City, AIR 1983 Del 496, 1983 (3) PTC 245 the Delhi High Court granted revocation because Court held that just because a patent was granted that did not mean it could not be revoked. The respondent was found to have simply duplicated a known process without having any inventive step. The process of using two plastic for the manufacture of hosepipes was well-known knowledge.

Author: Dipanwita Chakraborty, Legal Intern at PA Legal.

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