Surrender and Revocation of Patents
- 1. Surrender and Revocation of Patents CS Meenakshi Jayaraman
- 2. Research Credits Iswariya BS Hari Saanthosi. R
- 3. Legends Used App. Application CS Complete Specification Govt. Government IPAB Intellectual Property Appellate Board
- 4. Presentation Schema Surrender of Patent Case law: Mylan Laboratories Limited v. ICOS Corporation Revocation of Patent Case law: Dhanpat Seth v. Nilkamal Plastic Crates Limited
- 6. Surrender of Patents Patentee may at any time surrender his patent by filing Form 14 to the Controller On such receipt of surrender offer, the controller shall publish the notice of offer given under section 63 and also notify to interested persons Person interested may within 3 months from the date of publication make an application to the Controller stating their opposition in Form 14 in duplicate If Controller is satisfied after hearing the patentee and opponent, he may allow the surrender of patent and by order, revoke the patent
- 7. Case law-1
- 8. Case law-1 Applicant M/s. Mylan Laboratories Limited Respondent M/s. ICOS Corporation Case No. ORA/31/2015/PT/CH Facts of the Case An app. was filed by the applicant for revocation of the impugned patent under specific grounds, to remove the same from the register and to award cost to applicant But, the respondent on the other hand had submitted an app. to the IPAB Registry and Controller for surrender of patent on 09/02/2016 Reason for surrender as stated by the Respondent: They no longer have business interest in maintaining the patent due to the presence of many generic products on the market in India Discussing the matters relating to surrender and revocation of Patent
- 9. Learned counsel of the applicant referred 2 similar cases which will squarely apply to said scenario • Order of revocation is open until the surrender of patent is accepted by the Controller • On the basis of pleadings and evidence, in the absence of resistance / argument, the patent is considered invalid • Thus, the patent would be ordered to be revoked • Revocation of patent sought on the grounds of lack of novelty, obviousness and insufficiency • The patentees have not filed a counter statement • The acceptance of surrender of patent by controller does not result in automatic termination of the revocation proceedings Contd. UK Patents Court In 1999 F.S.R 284 UK Patents office In Wellworthy Patent where revocation application filed by Karl Schmidt Gmb H Thus, the case was filed in IPAB to know whether the revocation application filed earlier will prevail over surrender application
- 10. Judgement by IPAB as on 11th March 2016 The judgement was made taking into consideration the above mentioned decisions The Controller of Patent is directed to remove(revoke) the impugned patent standing in the name of “ICOS Corporation” within 6 weeks from the date of receipt of order Thus, the surrender app. pending before the Controller of patent became infructuous. No costs.
- 12. Patent can be revoked by- • Interested persons on filing a petition • CG by the Appellate Board • Counter claim in a suit for infringement of the patent by High Court On the grounds specified Revocation of patents The invention in any claim of CS was claimed in a valid claim of earlier priority date in another CS of patent granted in India The patent was granted to a person who is not entitled to apply for patents under the Act The claim made in CS is not new / not clearly defined / obvious / does not involve an inventive step as it is publicly known before the priority date CS does not sufficiently describe the invention and the method by which it is to be performed / scope of any claim of CS is not clearly defined Subject is not patentable under the Act / applicant contravened Sec. 35 / Sec. 39 The invention so far claimed was secretly used in India / not useful / CS does not disclose the source / geographical origin The patent was obtained on a false suggestion / representation / leave to amend CS was obtained by fraud The applicant has failed to disclose the information required by the Controller / provides false information
- 13. Contd. If invention is not new/not having an inventive step/ which is publically known No account shall be taken for personal document / secret trial / secret use and Where patent is for a product made abroad Except: If the import is for reasonable trial / experiment Patent can also be revoked on account of public interest – mischievous to the State or prejudicial to the public If the Patent is secretly used in India before the priority date of claim, it will be revoked except the following: Reasonable trial and experiment Invention used by the Govt. or any person authorised by Govt. By any other person without the consent or acquiescence of the applicant / person from whom he derives title
- 14. Revocation of patents – in case relating to atomic energy After giving notice to the Patentee and other interested persons may revoke the Patent Way 1 Way 2 On receipt of direction Controller can- After the grant of Patent, if the Central Government is satisfied that the patent is relating to atomic energy and to which patent cannot be granted as per Section 20 of Atomic Energy Act, 1962 Direct Controller to revoke the Patent He may ask the Patentee to amend / modify the CS as he deems fit instead of revoking the Patent
- 15. Case law-2
- 16. Case law-2 Plaintiff / Petitioner: Dhanpat Seth and others Defendant / Respondent: M/s Nilkamal Plastic Crates Limited Facts Plaintiff applied for grant of patent on 24/05/2002 for a device of manually hauling of agriculture produce The said patent was granted on 11/07/2005 Accordingly to plaintiff, the defendant infringed by producing similar device and supplied the same to Dept. of Horticulture and Government in the year 2005 Thus, the plaintiff sued the defendant for damages and filed a petition for grant of temporary injunction restraining the defendant from manufacturing or selling the duplicate version of the invented device of plaintiffs Case No. OMP No. 530 of 2005 in Civil Suit No. 69 of 2005
- 17. Discussion The device is an imitation of the traditional product known as “Kilta” which is made of bamboos while the product of plaintiffs is made of synthetic polymeric material As per Section 2 (j) of Patents Act - invention means a new product or process involving an inventive step and capable of industrial application. But the device is not a new product The very name of the product is deceptive in as much as it is not a device for manual hauling, but a long basket for collection of fruits and agricultural produce Further, the defendant had prepared the design of its product which too is a “Kilta” in the year 2001, started producing the same and introduced in the market Defendant had submitted its drawings to Arries Moulding Co. Ltd. In December, 2001 Thus, the defendant alleged that it had manufactured and marketed the product much before the filing of application for patenting of product by the Plaintiff The defendant filed an application for revocation of patent, as counter-claim. Various objections raised in the written statement are:
- 18. Defendant has infringed the patent by producing a similar device and supplying the same Thus, they have sued defendant for damages and to issue mandatory injunction, directing not to infringe the patent Learned counsel of plaintiff submitted that the patent was granted by the authorities only after making an inquiry, therefore he said that the patented device is a new product He also argued that the Patentee had an exclusive right to prevent 3rd parties, who do not have consent from using / making the patented product, until the patent is revoked Thus, as per the provisions of Patent Act, 1970, Patentee is entitled to relief of injunction by mere proof of the fact that the product is patented and patent has not been revoked The learned counsel also made a submission that once a patent is registered, the Patentee complaining of infringement by filing a suit for permanent prohibitory injunction should normally be granted a temporary injunction Learned Counsel representing the plaintiff submitted that: Contd.
- 19. Decision As per Section 13(4) of the Patents Act, 1970, even after the grant of patent, there is no warranty about the validity of the Patent Claim to an invention can be challenged, even after it is patented, on a number of grounds enumerated in Section 64 of the Act Based on the discussion, it was held plaintiff had no primafacie case Thus, the petition for grant of injunction was dismissed On submission of relevant documents and inventions by the Plaintiff and Defendant, the following decision was made by the Himachal Pradesh High Court on 3rd August, 2006
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