Patent Revocation

Overview on Patent Revocation

The Indian Patent Act, of 1970 was revised with the signing of the TRIPS agreement in 2005. Section 25 of the Indian Patent Act, 1970, was amended to provide the power to object after or before the issuance of a patent. The Act was amended to ensure proper Intellectual Property adoption and international harmonisation of the Patent regime. Patents are revoked when they are found to be against the Central Government's public policy or when there is patent infringement or claim by Licensors. In this essay, we will look at Patent Revocation in India.

What is Patent?

A patent is a title that grants the owner the exclusive right to prevent others from exploiting the owner's innovation, which is described in the Patent. A patent grants the owner the exclusive right to prohibit anyone from using, selling, or importing the patented innovation.

When a patent is granted, it does not mean that it will be unopposed by any party for the rest of its existence. Regardless of whether a Patent is approved, it can be challenged on a variety of grounds by anyone, either through revocation proceedings or a post-grant opposition.

A patent is granted for a specific field in a certain country for a maximum of 20 years. A patent will only be granted in the name of the inventor if the inventor completes the full disclosure of the invention and publishes the technical details of the invention.

A patent is essentially an arrangement between an inventor and the government in which the inventor is granted short-term control in exchange for enabling the invention to be made public in order to increase the general public's understanding.

The Patent Act, 1970, and The Patent Regulations, 2003 are the pieces of legislation in India that govern patent registration and protection. Significant modifications to the Patent Act of 1970 were made in 1999, 2002, and 2005. An amendment to the Protection of Product Patent for pharma, food, and chemical inventions was introduced in 2005.

To be eligible for a patent in India, an innovation or a product must meet the following criteria:

• The people should be unaware of the invention.
• The invention must be distinct from any earlier invention.
• The invention is thought to be useful.
• The originality of the innovation should not be clear to someone with some expertise of the invention's field.

What is Patent Revocation?

When a patent is sealed or awarded, it is not always the case that the Patent will be unimpeded by any person or third party throughout the duration of the Patent's life. Some individuals may question the Patent for a variety of reasons, and the Patent may be contested through the Revocation of the Patent.

Because the Patent Act does not presuppose that the granted Patents are legitimate, the rights granted on such issued Patents cannot be absolute. Third parties that are required to seek permission from the Patentee of the granted Patent before exercising any exclusive rights bestowed upon him/her are also given the ability to challenge the patent's validity.

Section 64 of the Patent Act, 1970[1] does not limit the grounds for patent revocation to simply those specified in Section 64, but Section 25 (2), which also specifies grounds for post-grant opposition actions, is restrictive in character. As a result, Section 64 cannot be considered to be exhaustive.

Who may file for Patent Petition Revocation?

Section 64 of the Patent Act of 1970 specifies who can file a petition for patent revocation. The individuals are as follows:

• Anyone who is interested.
• the Central Government.
• In a lawsuit, the person files a counterclaim for patent infringement.

Where can I submit a Revocation of a Patent Petition?

Any of the persons listed in Section 64 of the Patent Act of 1970 may file a petition for revocation of a patent with the Intellectual Property Appellate Board (IAPB). Section 104 of the Patent Act of 1970 addresses the issue of jurisdiction when filing a Revocation of Patent petition.

Section 104 provides that a revocation petition alleging patent infringement should not be filed in any court lower to the District Court with jurisdiction to hear the infringement matter. In contrast, if the defendant files a counterclaim for patent revocation, the counter-claim or litigation for patent infringement shall be referred to the High Court.

What Are the Reasons for Patent Revocation?

The following parts of the Patent Act of 1970 specify the grounds for revocation:

Section 64-Patent Revocation Reasons

According to Section 64 of the Patent Act of 1970, the following are the numerous grounds for revocation of a patent:

• An invention with similar specifications that has already been granted in India with an earlier filing date or priority date.
• The Patent was granted to someone who was not entitled to it.
• A person received the Patent illegally from another individual who is actually entitled to it. Another person who is legitimately entitled to the Patent may apply for Patent Revocation.
• According to Section 2(1)(j) of the Patent Act of 1970, the innovation claimed in the granted Patent is not actual.
• The claimed innovation in the Patent lacks novelty in terms of prior public use or prior knowledge.
• The innovation is not in use, which indicates that the Patent is not in use or is not producing the desired effects as detailed in the Patent specifications.
• The innovation is obvious in the Patent in terms of past public use or prior knowledge.
• There is no inventive step in the Patent.
• The claimed invention excludes any personal Document, secret use, or secret trace.
• The claimed invention, which was brought from abroad, is not novel in India. The innovation is widely known and in use in India prior to the publication or priority date.
• The scope of any Patent claim is not clearly or fully defined in the Patent specifications.
• The patent claim is not fairly based on the specifications of the patent.
• The Patent specification does not fully or adequately represent the Patent or the techniques by which the Patent is invented.
• The Patent was secured by deception or suggestion. The suggestion or representation should be related to any fact or statement made in conjunction with the issuance of the Patent or to any of the Patent's requirements.
• The patented innovation was claimed to be covered by Sections 3 or 4 of the Patent Act of 1970. Section 3 specifies the categories in which the invention is not patentable in India. Clause 4 on the other hand stipulates that any invention relating to atomic energy is not patentable in India.
• According to Section 8 of the Patent Act of 1970, the applicant of the Patent has not provided all of the required information. Additionally, the applicant provided misleading information about the invention.
• The applicant of the Patent has failed to comply with the Controller's secrecy directive, as required by Section 35 of the Patent Act of 1970.
• Non-compliance with the Controller's confidentiality directive for filing a patent application outside India without the Controller's prior consent.
• The applicant gained authority to change the whole specifications of a patent under Section 57 or Section 58 of the Patent Act, 1970, by deception.
• The patent specification does not fully reveal the geographical origin or source of the biological material utilised in the invention.
• The claimed invention in the Patent specification is a traditional knowledge that is available in any local or indigenous group in India or abroad.

Section 65-Revoke in Atomic Energy-Related Cases

Section 65 of the Patent Act of 1970 states that the Central Government may revoke a patent. The Central Government may cancel a Patent only after determining that the invention mentioned in the Patent is relevant to Atomic Energy. The Atomic Energy Act of 1962 limits the grant of a patent for an innovation involving atomic energy. As a result, the Central Government cannot grant a patent in India for an invention linked to atomic energy.

The Supreme Court established in the case of Enercon (India) Ltd and Ors. vs. EnerconGmbh [(2014) 5 SCC 1] that when a party institutes post-grant opposition proceedings in the Court related to a Patent, the same party cannot institute a petition of Patent Revocation or counter-claim of Patent Revocation proceeding against the same Patent concurrently.

Section 66-Patent Revocation in the Public Interest

Section 66 of the Patent Act of 1970 stipulates that if the Central Government believes that the Patent or the manner in which the rights linked to the Patent are exercised is damaging to the public at large or the State, the Patent should be cancelled. The patent holder should be given an adequate opportunity to be heard. After giving the Patent holder the opportunity and considering all facts, a decision on Patent Revocation will be made.

For example, Avesthagen Ltd. was given a patent on a product including Jamun, Chandan, and Lavangpatti that was expected to be useful in the treatment of diabetes. Avesthagen filed a patent application with the European Patent Office for the same product (EPO). The Patent was denied on the grounds that it infringed on the Traditional Knowledge Digital Library (TKDL).

When the Central Government of India learned about the patent submission in EPO, it cancelled the patent awarded to Avesthagen by the Indian Patent Office under Section 66 of the Indian Patents Act. The denial was based on the fact that the Patent is both harmful to the public interest and malicious.

The company Avesthagen argued that, while it was customary knowledge, the fact that the plants show a faster impact when employed in the specific combination indicated in the Patent. On the other hand, the Central Government contended and established that the plants described in the Patent specifications have been utilised for the treatment of diabetes for a very long time and have been known to the general public for centuries. The Central Government declared that it is self-evident that plant extracts will serve the same purpose. As a result, the Court ruled that granting a patent could not be done solely for the purpose of re-validating conventional knowledge.

Section 85- Controller Revocation for Non-Working

The Patent can be cancelled for non-working under Section 85 of the Patents Act of 1970. Any individual interested or the Government can request for the Revocation of Patent to the Controller with respect to the Patent for which obligatory licence is issued. The Patent Revocation shall be filed within two years after the obligatory licence being granted.

The following are the grounds for revocation:

• The patented invention is not operating in Indian territory.
• The Patent does not meet the reasonable requirements of the general public.
• The patented invention is not available to the general public at a reasonable, affordable price.

Any person or the government may file an application in Form 19 together with the proof supporting the revocation. If the application is made by someone who is interested, that person should state the nature of his or her interest.