Revocation of Patents

Introduction

Patent revocation is a legal action undertaken by an external party, often an individual or an organization, challenging the validity and continuation of a granted patent. This process is based on specific criteria established by patent law. The objective of patent revocation is to reevaluate and possibly invalidate a patent if it is determined that the patentee’s claims are unjustified or if the patent was secured through fraudulent or non-compliant methods.

Grounds for revocation:

Section 64 of the Patents (Indian) Act, 1970[i] outlines various grounds for patent revocation, specifying the conditions under which patents can be revoked. A petition for revocation can be filed under Section 64 of the Patents Act by any interested party or by the Central Government. These grounds are as follows:

1. The invention was already claimed in an earlier valid patent in India.
2. The patent was granted to a person who was not entitled to apply for it under the provisions of this Act.
3. The patent was obtained in violation of the rights of the petitioner or someone they represent.
4. The subject of the patent claim does not qualify as an invention within the meaning of this Act.
5. The invention is not new because it was already publicly known or used in India, or published in India or elsewhere, before the priority date.
6. The invention is obvious or does not involve an inventive step based on what was publicly known or used in India, or published in India or elsewhere, before the priority date.
7. The invention is not useful.
8. The patent specification does not adequately describe the invention or the method for performing it, so a person skilled in the field cannot work on it out. It also doesn’t disclose the best method known to the applicant.
9. The claims in the patent specification are not clearly defined or are not based on the matter disclosed in the specification.
10. The patent was obtained through false suggestions or representations.
11. The subject of the patent claim is not patentable under the Act.
12. The invention was secretly used in India before the priority date, except as allowed by the law.
13. The applicant did not provide the required information to the Controller or provided false information knowingly.
14. The applicant violated a secrecy direction or applied for a patent outside India without permission.
15. The patent specification was fraudulently amended.
16. The specification doesn’t disclose or wrongly mentions the source or geographical origin of biological material used in the invention.
17. The invention was anticipated based on the knowledge available within any local or indigenous community in India or elsewhere.

Other Sections:

Under the Patents (Indian) Act, 1970 the validity of a patent can be challenged in any of the following ways: –

1. Opposition within one year from the date of publication of grant [Section 25(2)]:

Any person interested can oppose a granted patent within one year of its publication if they believe there are valid grounds for revocation. These grounds include situations where the patentee wrongfully obtained the invention from the opponent, the invention was previously published or claimed, it was publicly known or used before its priority date, it lacks an inventive step, or it doesn’t meet the criteria for patentability. Additionally, opposition can be based on the patent specification’s lack of clarity, the patentee’s failure to disclose required information or provision of false information, or failure to meet deadlines for convention applications. Furthermore, if the invention’s biological source or geographical origin is incorrectly disclosed, or if it was anticipated by local or indigenous knowledge, opposition can be filed. These grounds are the only valid reasons for opposition under the law.

2. In cases relating to atomic energy on the directions of the Central Government [Section 65]:

If, at any time after a patent is granted, the Central Government is satisfied that the patent is for an invention related to atomic energy (which cannot be patented according to the Atomic Energy Act, 1962), it can direct the Controller to revoke the patent. The Controller will then notify the patent holder and anyone else registered as having interest in the patent, give them a chance to be heard, and may then revoke the patent. During these proceedings, instead of revoking the patent, the Controller may also allow the patent holder to amend the patent specification as needed.

3. Revocation of a patent in public interest by Central Government [Section 66]:

If the Central Government is of the opinion that a patent or how it is being used is harmful to the state or generally prejudicial to the public, it can make a declaration this regard in the Official Gazette after giving the patent holder an opportunity to be heard. Once this declaration is made, the patent is considered revoked.

4. Revocation of a patent due to non-workability [Section 85]:

If a compulsory license has been issued for a patent, either the Central Government or any interested party can request the Controller to revoke the patent two years after the first compulsory license is granted. Grounds for revocation include non-working of the patented invention in India, failure to meet public demand adequately, or unavailability at a reasonably affordable price. The Controller may revoke the patent if they find that the public’s reasonable requirements are not fulfilled, the invention is not being worked in India, or it is not reasonably priced.

Relevant Case Law:

Philips v. Rajesh Bansal, Sole Proprietor, Manglam Technology (2017)[ii]

This was a case in which Philips took action against Rajesh Bansal for infringing its DVD-ROM patent. The defendant, Rajesh Bansal, brought a counterclaim for the revocation of the patent on the grounds of lack of inventive steps and novelty. The court ruled in favour of Philips maintaining validity of the patent. This case highlights the difficulty faced in proving lack of novelty and inventive steps for revocation under Section 64. It must be noted that only assertions are not sufficient and it is required to present robust evidence to establish the stringent requirements of revocation.

Enercon (India) Ltd. & Ors. v Enercon GMBH & Anr (2014)[iii]

Enercon India contested several patents by Enercon GMBH claiming the technology of wind generators. The challenge had been made based on a lack of novelty, inventive steps, and procedural irregularities. The Supreme Court of India reviewed the case and found it fit to revoke some patents, and some others were to be upheld. It was a critical case because it was the leading example that all patents have to go through extensive review under Section 64, especially in the field of mechanical devices. The decision reflects the court’s commitment to ensuring that patents meet essential criteria of novelty and inventive step.

Conclusions

Patent revocation in India ensures that only genuine and compliant inventions receive protection. Issues such as wrongful grants, non-compliance with public requirements, or failure to work the invention locally are tackled by this. Legal provisions provide an opportunity for interested parties and even the Central Government to file for challenging patents on various grounds in the course of protecting the public welfare and advantages so that accruing benefits of patents can lead to positive contributions to both ends.

Author:–Neha Vivek A, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

[i] The Patents Act, 1970, https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf

[ii] Philips v. Rajesh Bansal, Sole Proprietor, Manglam Technology 2017 https://indiankanoon.org/doc/156062069/

[iii] Enercon (India) Ltd And Ors vs Enercon GMBH And Anr 2014 https://indiankanoon.org/doc/146487961/