Surrender and Revocation of Patents

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can
offer to surrender his patent by giving notice to the Controller. The offer to surrender the
patent should be published by the Controller, and every person interested in the patent must
also be notified of the same.

After the publication, any interested person can oppose the surrender, by giving notice to the
Controller which should be notified by the Controller to the patentee. If the patentee or the
opponent wants to be heard, the Controller, on being satisfied that the patent may be
surrendered and after the hearing, may accept the offer and revoke the patent by order.

The notice of opposition must be given to the Controller within a period of 3 months from the
date of publication of the notice to surrender the patent. If the patentee’s offer to surrender
the patent is accepted by the Controller, he may:

 direct the patentee to return the patent; and

 on receiving the patent revoke it by order; and

 publish the revocation of the patent.

Revocation of Patents

Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A patent that has
been granted to an invention can be revoked by the Appellate Board in the following ways:

 on a petition filed by any interested person; or

 on a petition filed by the Central Government; or

 on a counter-claim in a suit for infringement of the patent by the High Court.

Grounds for Revocation of Patents

A patent may be revoked on any of the following grounds:

 where an invention as claimed in a valid claim of earlier priority date which is

included in the complete specification of another patent;
 where the patent application was filed by a person who is not entitled under the
provisions of the Act and was granted a patent on such application;

 where the patent was wrongfully obtained and the rights of the petitioner or any
person under/through whom he claims, were contravened;

 when the subject of a claim of the complete specification is not an invention within
the meaning of the Act;

 where the invention that is being claimed is not new having regard to what was
publicly known or used in India before the priority date of the claim and also having
regard to what was published in any of the documents, whether in India or elsewhere;

 where the invention that is claimed is obvious and lacks any inventive step, having
regard to what was publicly known, used or published in India, before the priority
date;

 where the invention is not useful;

 where the invention and the method by which it is to be performed is not sufficiently
and fairly described by the complete specification. In other words, the description of
the method or the instructions for the working of the invention as specified in the
complete specification are insufficient to enable a person of average skill and
knowledge of the art to which the invention relates, to operate or work the invention
or where the best method of performing the invention which is known to the applicant
is not disclosed;

 where the scope of any claim is not defined properly or based on the matter which his
not disclosed in the specification;

 where a false suggestion or representation was made to obtain the patent;

 where the subject of any claim of the complete specification is not patentable under
the Act;

 the invention that is being claimed was secretly used in India before the priority date
of the claim;
  where the information required under Section 8 has not been disclosed by the
applicant of the patent to the Controller or the information that has been furnished is
false to his knowledge;

 where any direction of secrecy passed under Section 35 has been contravened by the
applicant or made an application in contravention of Section 39 for the grant of a
patent outside India;

 where the permission to amend the complete specification under Section 57 or 58 was
obtained by fraud;

 the complete specification does not disclose or mentions the wrong source or
geographical origin of biological material used for the invention;

 the invention was anticipated having regard to the knowledge which was available
within any local or indigenous community within India or elsewhere.

However, where the invention claimed is not new, obvious or lacks any inventive step,
having regard to what was publicly known or used in India or published in India or
elsewhere, before the priority date of the claim:

 a personal document, secret trial or secret use shall not be taken into account;

 where the patent is for a process or for a product that is made by a process which is
claimed, the importation of the product which is made abroad by that process into
India will constitute knowledge or use in India of the invention, on the date of
importation. Except where the product has been imported for the purpose of
reasonable trial or experiment only.