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    PATENT REVOCATION IN INDIA

    A patent can be revoked on petition of any person interested or of the Central Government or on a counter claim in a suit for infringement of the patent by the High Court. A patent may be revoked by the High Court on a petition filed by the Central Government, if the High Court is satisfied that the patent holder has without cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purpose of the Government upon reasonable terms . A notice of any petition for revocation of a patent shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein.

    Grounds for revocation of patent:

    a. The invention claimed in any claims of complete specification is already claimed in another patent granted in India with an earlier priority date or filing date.

    b. The patent was granted to a person who is not entitled to it.

    c. Patent was wrongfully obtained by a person from the person who is entitled to it, then the person entitled to apply for a patent may file a petition under this sub section for revocation.

    d. The invention claimed in the granted patent is not an invention under section 2(1)(j) i.e. the new product or process claimed in the patent does not involve an inventive step and/or have industrial applicability.

    e. Invention claimed in the patent is lacking in novelty with regard to prior knowledge or prior public use.

    f. Invention claimed in the patent is obvious with regard to prior knowledge or prior public use. The term obvious means that a "person having ordinary skill in the art" would be able to come up with the same solution for the directed problem as claimed in the patent.

    For sub-sections (e) and (f):

    • no account shall be taken of personal document or secret trial or secret use;

    • The importation of a product into India which is made in abroad by a patented process constitutes knowledge or use in India on the date of importation. It is not considered anticipation if such importation is for the purpose of reasonable trial or experiment only.

    Revocation of Butachlor Patent :
    Monsanto Company filed a suit against Coramandal Indag Products (P) Ltd. for infringing its patents “Phytotoxic Compositions” and “Grass Selective Herbicide Compositions” containing the active ingredient “Butachlor” by marketing “Delchor-50” a formulation of “Butachlor”.

    It was found that the herbicide Butachlor, common name for CP 53619 was publicly known even prior to 1968 to possess non-toxic effect on rice. Its formula was published in the report of the International Rice Research Institute for the year 1968. Also before Butachlor or any Herbicide could be used for killing weeds, it had to be converted into an emulsion by dissolving it in a suitable solvent and by mixing the solution with an emulsifying agent. The process is known as emulsification and it is publicly known.

    It was held that to satisfy the requirement of being publicly known or used as per clauses (e) and (f) of section 64(1), it is not necessary that it should be widely used to the knowledge of the consumer public. It is sufficient if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of science or men of commerce or consumers.

    In this case there was no secret about the active agent Butachlor as claimed by the plaintiffs and emulsification was the well-known and common process by which any herbicide could be used. The patent was therefore revoked under 64(1)(e) and 64(1)(f).

    g. Invention is not useful i.e. either it may not operate at all or it may not provide the desired result as mentioned in the patent specification.

    h. The complete specification of the patent does not sufficiently and fairly describe the invention and/or the method by which it is to be performed:

    the description of method or the instruction for the working of the invention as mentioned in the complete specification are not themselves sufficient for a person with average skill or knowledge in the art, to which the invention relates, to work the invention; or

    the best method of working known by the applicant of patent is not disclosed in the specification.

    i. The scope of any claim of a patent is not defined sufficiently and clearly and/or any claim is not fairly based on the matter disclosed in the patent specification.

    j. Patent was obtained by false suggestion or representation which may relate to the specification or to any fact or statement made in connection with the grant.

    k. The invention claimed in the patent is not patentable in India i.e. it falls under section 3 or section 4 of the patents act. The section 3 of the Indian Patents Act defines the categories under which if an invention lies, is not patentable while section 4 states that an invention related to atomic energy is not patentable in India.

    l. Patent may be revoked on the ground that the claimed invention was secretly used in India before the priority date unless:

    • it was for the purpose of reasonable trial or experiment only;

    • use of the invention by the Government or by Government authorized person or by a Government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorized as aforesaid or to the Government undertaking; or

    • use of the invention by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.

    m. Patent may be revoked on failure to disclose information regarding Foreign Application u/s 8 to the Controller. If the applicant obtained a patent by concealing the matters or furnished false information regarding foreign applications, the Patent may be revoked on this ground.

    Revocation of Hindustan Unilever limited’s patent :
    Hindustan Unilever Limited (HUL) was granted a patent (IN 195937) on August 26, 2005 in India for the invention “filter cartridge for use in gravity flow filtration”. On 2008, it launched water purifier named “PUREIT” in the Indian market. In the following year, Tata Chemicals Ltd. came up with a water purifier named “SWACH” against which HUL filed an infringement suit.

    Tata Chemicals Ltd. challenged the validity of the patent on various grounds, section 8 being one among others. The Intellectual Property Appellate Board (IPAB) revoked HUL’s patent on the basis violation of Section 8 of the Indian Patent Act.

    n. Non-compliance of secrecy direction issued by the Controller or filing patent application outside India without prior permission of the Controller may lead to revocation of patent. Issue of secrecy direction u/s 35 of the Patents Act means the invention has been considered relevant for Defense purpose; hence publication of information or communication of the information related to the invention is prohibited. If the applicant contravenes any such direction, the Patent granted may be revoked. If the applicant, resident in India, filed a patent application outside India without prior permission from the Controller at least six weeks before filing the application as required by section 39 of the Indian Patents Act, the patent granted for same application may be revoked.

    o. If the permission to amend the complete specification under section 57 or section 58 was obtained by fraud, it is a ground for revocation.

    p. Patent may be revoked if the applicant had wrongly mentioned or not disclosed in the complete specification the source or Geographical origin of Biological Material used for the invention.

    q. If the invention claimed in the specification is a traditional knowledge i.e. the knowledge available orally or otherwise within any local or any indigenous community in India or elsewhere, it is a ground for revocation.

    REVOCATION OF PATENT IN PUBLIC INTEREST :

    As per section 66 of the Patents Act, where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or prejudicial to the public, the patent may be revoked. The decision of revocation may be made after giving the patent holder an opportunity to be heard.

    Revocation of Jamun patent :
    Avesthagen Limited was granted a patent for “synergistic ayurvedic/functional food bioactive composition” of application number 1076/ CHE/ 2007. The patent was for the composition consisting of jamun, lavangpatti and chundun and to be used for treatment of diabetes. Avesthagen filed for a patent in European Patent Office (EPO) for the above said composition but the patent was not granted as it did infringe upon TKDL (Traditional Knowledge Digital Library).

    Government of India on getting knowledge about the same revoked the aforesaid patent granted by Indian Patent Office (IPO) using Section-66 of Patents Act, 1970 i.e. on the grounds of being mischievous and prejudicial to the public.

    Though Avesthagen argued that it is Traditional Knowledge (TK) that these plants are used for treating diabetes but it was not known that when given in combination they show an aggressive effect. The government countered the argument by saying that it was known that these plants were used for diabetes management for centuries and thus, this was not an invention. When plants are known to act against a particular disease, extracts would certainly perform the same function. Government also said that a patent cannot be granted for validating something that is part of TK.

    REVOCATION OF PATENT FOR NON-WORKING :

    A patent may be revoked for non-working as per section 85 of Patents Act, 1970, if even after two year from the date of grant of first compulsory license,

    • the patented invention has not worked in the territory of India; or

    • the reasonable requirement of the public has not been met; or

    • the patented invention is not available to the public at a reasonably affordable price. The application may be made by the Central Government or any person interested on Form 19 along with supporting evidence. Where the application is made by person interested, he has to set out the nature of his interest. The decision of revocation under this section is concluded within one year from the date of presenting the matter to the Controller.

    For more information on Revocation of Patent in India please write to us at: admin@maxipconsult.com.
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