REVOCATION OF PATENTS IN INDIA

Revocation of patents can be made under Section 64 of the Indian Patents Act 1970. A patent may be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter claim in a suit for infringement of the patent by the High Court.

Revocation thus can be:

1. On Petition of any person interested. Sec 64(1) 2. On Petition of the central government Sec 64(1) 1. if the invention relates to defense purposes, 2. if the patent is for an invention relating to atomic energy, and 3. if the Central Government feels that the patent or the manner in which it is exercised is prejudicial to public 3. On a counter-claim in suit for patient infringement Sec 64(1) 4. By high court under certain circumstances Sec 65 5. By Controller 1. If a compulsory license has been granted for a patent, and if a person applies to the Controller on the ground that the patented invention is not worked at the optimum to meet the requirements of the public. 2. If an independent patent has been granted for any modification or improvement on the main invention, the Controller on the patentees request may revoke the independent patent on modification of that invention and grant him patent of addition. 3. If the patentee surrenders the patent the Controller may revoke the patent.

A person interested must be a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register. Section 104 of the Patents Act, 1970 (as amended by Patents (Amendment) Act, 2005) expresses that no suit for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit and where, in a suit for infringement of a patent, a counterclaim for revocation of the patent is made by the defendant, the suit, along with the counterclaim is transferred to the High Court for decision. Further there is no statutory requirement that in a case where a suit for infringement is pending, revocation of patent can be sought for only by way of a counter-claim and not by way of separate and independent application.

GROUNDS FOR REVOCATION OF PATENT The grounds on which the patent can be revoked: 1. 2. 3. 4. Invention does not satisfy any of patentability requirements Sec 64 (1) (a,d-i & k) Patent granted to person not entitled under provisions. Sec 64(1) b It was wrongfully obtained from person applying for revocation. Sec 64 (1) c It was obtained by patent holder based on a false suggestion or representation. Sec 64 (1) j 5. Invention was secretly used in India before priority date of patent claim.Sec 64(1) l 6. Patent holder did not disclose necessary information , or disclosed information which was false to his information Sec 64(1) m 7. Patent holder contravened the secrecy directions or failed to take permit before foreign filing Sec 64(1)n 8. Patent holder fraudulently obtained leave to amend the specification befor controller or appellate board Sec 64(1) o 9. Holder did not disclose / wrongly disclose the source or geographical source of biological material Sec 64(1)p 10. Invention is anticipated by oral or written traditional knowledge available within any local or indigenous community in India or elsewhere. Sec 64(1)q

Cases:

1. Laxmi Dutt Roop Chand v. Nankau and OrsPatent related to process of manufacture of Hollow ware. In the infringement case the respondents (Nankau) claimed non-infringement and counter claimed for revocation on grounds of lack of novelty and inventive step. Court held that there was lack of inventive step and novelty. 2. Farbewerke Hoechst Atkiengesellschaft Varmals Meister Lucius & Bruning Corp. v. Unichem Corp Patent related to manufacture of sulphoyl urea. It was contended that the patent be revoked for lack of novelty, inventive step, insufficiency of disclosure. Held that patent did satisfy all criteria and hence was upheld so not liable for revocation. 3. Mosanto Company v. Coramandal Indag Products(P) ltd

Patent related to herbicide Butachlor. Respondent Coramandal contended that formula and use of the compound was published in report of International Rice Research Institute before the filing of patent. Court held that the patent lacks novelty and hence was revoked.

Chapter-12 Revocation of Patent

12.01 12.01.01 Revocation of Patent Revocation before High Court or Appellate Board a. Any person interested or the Central Government may make a petition on any of the grounds, specified for revocation of Patent under Section 64 of the Patents Act, before the Appellate Board. A Patent may also be revoked by the High Court on a counter-claim in a suit for infringement of patent. b. Grounds for revocation before the Appellate Board as well as the High Court are elaborated in Section 64. c. Without prejudice to the provisions contained in (a) above, a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of government within the meaning of Section 99 upon reasonable terms. 12.01.02 Revocation by Controller on direction of Central Government a. Where at any time after grant of a patent, the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no Section 65 Section 64

patent can be granted under sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962), it may direct the Controller to revoke the patent, and thereupon the Controller, after giving notice, to the patentee and every other person whose name has been entered in the register as having an interest in the patent, and after giving them an opportunity of being heard, may revoke the patent. b. In such proceedings, the Controller may allow the patentee to amend the complete specification in such manner as he considers necessary instead of revoking the patent. 12.01.03 Revocation by Central Government Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked. 12.01.04 Revocation by Controller for non-working a. Where, in respect of a patent, a compulsory licence has been granted, the Central Government or any person interested may, apply to the Controller for an order revoking the patent on the ground: that the patented invention has not Section 85 been worked in the territory of India, or ii. that reasonable requirements of the i. Section 66

public with respect to the patented invention have not been satisfied, or iii. that the patented invention is not

available to the public at a reasonably affordable price. c. Such an application can be made only after the expiration of two years from the date of the order granting the first compulsory licence. d. Such an application shall contain such particulars as may be prescribed, the facts upon which the application is based, and, in the case of an application other than the one made by the Central Government, it shall also set out the nature of the applicant's interest. e. Such applications shall ordinarily be decided within one year from the date of presentation to the Controller.