Revocation of Patents in India

16 October 2012

Revocation of a granted patent is an important remedy available under the Indian Patents Act to an interested third party, whose rights may be directly or indirectly affected by the granted patent. A revocation proceeding may be initiated by such party or by the Central Government by way of a petition to the Intellectual Property Appellate Board (IPAB). Another mode of revocation is by way of counter-claim in an infringement suit instituted in relation to the patent in question. In the event of the defendant filing a counter-claim to the infringement suit, all proceedings are transferred to a High Court, even if the infringement suit was not instituted at the High Court in the first instance.

The Patents Act provides the following grounds on which a petition for revocation in the IPAB or a counter claim in an infringement suit may be filed:

a) In case the invention claimed in any of the claims of the granted patent was already claimed in any valid claim of another patent granted in India having an earlier priority date, the said granted patent is liable to be revoked.

b) A patent granted on an application filed by a person who was not entitled to apply for the same is liable to be revoked. For instance, an applicant not having the assignment rights from the inventor is not entitled to file the patent application.

c) A third party may challenge the granted patent presenting relevant evidence as a rightful originator of the invention.

d) Certain kinds of inventions listed under Section 3 of the Patents Act are not considered inventions, hence are not patentable. For instance, the section precludes from patentability a mere computer program per se or algorithms, a mere arrangement or rearrangement of known devices, a medical treatment or surgical process, a mere discovery of a new form of a known substance, an invention which is traditional knowledge, to name a few. In Franz Xaver Huemer v. New Yash Engineers, it was held that the patented device comprised mere arrangement or rearrangement of an already known device without any inventive input and the patent was revoked.

e) A granted patent may also be revoked on the ground that the invention claimed in any of the claims was publicly known or used in India before the priority date of the claim. In Monsanto v. Coramandal Indag Products (P), the Court observed that the plaintiffs were merely camouflaging a substance whose discovery was known throughout the world and trying to enfold it in their specification relating to the patent.

f) An invention which is obvious or does not involve an inventive step with regard to what was publicly known or used in India, or published in India or elsewhere before the priority date of the claim, is likely to be revoked. In Polar Industries v. Jay Engineering Works, it was held that the claimed patent was obvious to a skilled worker in view of the state of knowledge existing at and prior to the date of the patent and the patent was therefore revoked.

g) Under this ground, the third party may aver that the claimed invention is not useful. Particularly, the said ground relates to the industrial applicability thereof.

h) Any patent in which the complete specification does not clearly and sufficiently describe the invention has a good chance of being revoked. In Ram Narain Kher v. Ambassador Industries, the plaintiff's patent was found to be silent on the said aspect and was revoked accordingly.

i) Any patent in which the scope of any of the claims is not sufficiently and clearly defined or any of the claims is not fairly based on the matter disclosed in the specification is liable to be revoked.

j) The third party may submit that the patent was obtained on false suggestion or representation to revoke a patent. In Chemtura v. Union of India & Others, failure to disclose the prosecution details by the patentee was held to be a case of false representation.

k) The third party may aver that the subject matter of any of the claims is not patentable, specifically the claims do not satisfy requirement under Section 3 or relate to an invention relating to atomic energy.

l) Any prior secret use of the invention, except by the inventor for experimental purposes, before the priority date of the claim is a relevant ground for revocation. In Lallubhai Chakubhai v. Shamaldas Sankalchand, it was held that if by examining an article manufactured under a secret process, one can find out the secret of that manufacture, then the sale of that article would amount to public use of the process.

m) Any failure to furnish information in respect of corresponding foreign applications is a ground for revocation. The Chemtura case, referred above, is relevant to this ground also.

n) Any patent filed in contravention of provisions relating to inventions for defense purposes or regarding prior foreign filing permission is a strong ground for revocation of patent.

o) Any fraudulent amendment by the patentee in the complete specification, without specifying the true facts relating the amendment shall render the patent revocable.

p) Failure to mention the correct source or geographical origin of any biological material mentioned in the complete specification shall lead to revocation of patent.

q) Any claim of the patent being anticipated by traditional knowledge of indigenous communities is liable to be revoked.

The Indian Patent Act provides exhaustive provisions in respect of revocation of patents, leaving little scope for the applicants to err on the procedural and/or substantive requirements. Moreover, it provides means to invalidate patents which should not have been granted keeping in view the patentablity and other provisions of the Patents Act. Of late, there has been a steep rise in filing of revocation proceedings in India, and with the growing awareness about such a remedy being available to interested persons, it is likely to maintain its upwardly trend.

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