Key Takeaways: - Voluntary surrender of patents - Revocation of patents - Grounds for revocation of patent

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

5. Surrender of Patent

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.

11. Revocation of Patents

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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