Coverage of this Article
-Patents are the sole rights granted to inventors for their innovations, giving them the power to oversee their use, production, and sale.
The Legal Framework
-The Patents Act, of 1970, was the official name of this legislation which applied to the entire territory of India.
Revocation Of Patents
-If the invention is illegal, immoral, or against the rules of society.
Surrender Of Patents
-The Patentee's ability to enforce a valid patent is forfeited through the voluntary surrender and revocation of a patent, two different legal procedures.
A Comparative Analysis
-The process of revocation and surrender in the UK and USA is listed
-In conclusion, whereas surrendering a patent is a voluntary act by the patentee to give up their rights, the revocation of a patent is a legal process started by interested parties to question the validity of a patent.
- Patents give inventors the sole right to use, produce, and sell their ideas; they also provide trademark protection and promote innovation across a range of industries.
- The Patents Act of 1970 is the primary piece of legislation in India that governs patents.
- A patent may be revoked if it was submitted by an ineligible applicant, was unlawful or immoral, was improperly obtained, was made public before the patent application's filing date, was not used or made commercially available in India within a reasonable amount of time or lacked industrial applicability.
- The voluntary surrender and revocation of a patent, which calls for certification and the disclosure of specifics regarding any ongoing proceedings, forfeits the Patentee's right to enforce a valid patent.
- Revocation of a patent is a legal procedure initiated by interested parties while surrendering a patent is a voluntary action taken by the patentee. Both can lead to the loss of patent rights but have different processes and impacts on third parties and previous owners.
Patents are the sole rights granted to inventors for their innovations, giving them the power to oversee their use, production, and sale. They act as a form of trademark protection and promote innovation by giving creators temporary hold over their creations. Examples of patents include those for pharmaceutical drugs, such as the patent for a specific medication, technology patents for inventions like cell phones or computer code, and utility patents for innovations across a range of industries, such as technology or manufacturing techniques.
Similarly, patent revocation and surrender are critical to the integrity of the patent system. When a patent is found to have been improperly granted, it can be revoked or invalidated, whereas surrender allows patent holders to voluntarily give up their rights. The Patents Act of 1970 is the primary piece of legislation in India that governs patents. It was amended in 2005 to conform to international standards and obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The Act contains provisions concerning patentability criteria, patent application procedures, patent examination, and grant, patent rights and obligations, patent infringement, compulsory licensing, patent revocation, and other aspects of patent law. It seeks to promote innovation, protect the rights of inventors, and strike a balance between encouraging technological progress and ensuring access to important inventions.
The article highlights how revocation and surrender of patents contribute to ensuring that deserving inventions and intellectual property rights are allocated efficiently and their crucial role in maintaining a well-functioning patent system.
The Legal Framework
The Patents Act, of 1970, was the official name of this legislation which applied to the entire territory of India. It came into effect on a date determined by the Central Government through official notification in the Official Gazette.
In accordance with the Patents Act, inventions encompassed within its definition exclude frivolous inventions that are contrary to public order, and morality, or pose significant harm to human, animal, plant life, health, or the environment including-
- Discoveries of scientific principles, formulation of abstract theories, of living or non-living substances occurring naturally, discoveries of new forms of known substances that do not enhance their known efficacy, discoveries of new properties or uses for known substances, or the mere use of a known process, machine, or apparatus unless it results in a new product or employs at least one new reactant.
- Derivatives of known substances including substances obtained through mere admixture resulting only in the aggregation of properties of the components or processes for producing such substances, mathematical or business methods, computer programs per se, literary, dramatic, musical, artistic works, and aesthetic creations, mere schemes, rules, etc.
- Furthermore, inventions related to atomic energy falling within the scope of Section 20(1) of the Atomic Energy Act 1962, are not eligible for patent protection.
Revocation of Patents
Any of the following reasons could lead to a patent being revoked under Section 64 of the Indian Patents Act:
- If the invention is illegal, immoral, or against the rules of society.
- If the patented invention is not used or made commercially available in India within a reasonable period of time, which is four years from the date of filing or three years from the date of award, whichever occurs first unless an acceptable defense is put forth.
- If the patent was improperly obtained and the petitioner's rights or the rights of any other person through whom he asserts rights were violated under Section 57/58.
- If the innovation was made public before the patent application's filing date or priority date, it was no longer patentable.
- Lack of Industrial Applicability- If the innovation has no industrial application or practical utility, it cannot be regarded as a patented invention.
- Case law in point – Pfizer Products Inc. v. Union of India [2016 231 DLT 169]
The case of Pfizer Products Inc. v. Union of India, also known as the Sutent Case, involved the revocation of a patent held by Pfizer for the cancer drug Sutent. The patent was challenged by various Indian generic drug manufacturers. The Delhi High Court ruled in favor of the defendants and revoked Pfizer's patent on the grounds of lack of inventive steps and obviousness.
The patent's claimed innovation, according to the court, was evident to a person of ordinary ability in the art and did not require any technological progress. It concluded that the alleged invention only revealed a new form of an existing chemical without improving its already established efficacy.
The case made it clear that in order for a patent to be legitimate and enforceable, it must show a substantial improvement or addition to a field.
Surrender of Patents
- The Patentee's ability to enforce a valid patent is forfeited through the voluntary surrender and revocation of a patent, two different legal procedures.
- Allowing the surrender of a patent is not always an easy option- A certification confirming no ongoing legal proceedings for patent infringement or revocation is ongoing needs to be added in order to guarantee that the offer for surrender is legitimate, plus it is required to submit details of any such pending actions, including their specifics and status. The patentee can voluntarily revoke the patent through surrender to avoid invalidation. This option is faster than allowing the patent to lapse, as it would take 19 months for it to lapse and no chance of its restoration.
- Any interested person has the chance to object to the surrender within three months of the notice's publication by delivering a notice of objection to the Controller in duplicate using Form 14.
- The opposition proceedings under Section 63 shall be conducted in accordance with the rules governing the hearing of other opposition cases, including the filing of written statements, reply statements, evidence presentation, conducting hearings, and dealing with costs.
- The Controller may provide the patentee instructions to return the patent if they agree with the patentee's decision to surrender the patent. The Controller will issue an order canceling the surrendered patent after receiving it, and it will then be made public.
- The Controller of Intellectual Property can solicit opposition from anybody who might be interested in disputing the application, even if a patentee submits an application for surrender to the patent office.
- The decision to give up a patent should be carefully thought out, taking into account any possible arguments against its validity or lack of enforceability. Market factors, the potential for patent infringement, strategic business decisions, simplification of the patent portfolio, invalidity or non-enforceability, and patent flaws should all be taken into account.
- Case law in point – Orchid Chemicals & Pharmaceuticals Ltd. v. AstraZeneca AB (2015) 115 Bom LR 1465
In the case of AstraZeneca AB v. Orchid Chemicals & Pharmaceuticals Ltd, AstraZeneca, a pharmaceutical company, initiated legal proceedings against Orchid Chemicals & Pharmaceuticals Ltd. The case primarily involved the voluntary surrender of a patent by AstraZeneca. AstraZeneca requested the surrender of its patent, and Orchid Chemicals & Pharmaceuticals Ltd. did not oppose the surrender. As a result, the court accepted the surrender and subsequently revoked the patent held by AstraZeneca. The case highlights the legal process and acceptance of voluntary surrender of patents in India.
A Comparative Analysis
- The process of revocation and surrender in the UK and USA is listed as follows-
- In the UK, the UK Intellectual Property Office (UKIPO) or a judge may revoke a patent based on lack of novelty, creative step, or inadequate disclosure. A patentee may release their patent voluntarily by making a request with a formal surrender statement. If the request is approved, the UKIPO will review it and publish the surrender in the Journal of Patents.
- In the US, revocation of a patent is also known as "patent invalidation" or "patent cancellation". This can be done through post-grant processes such as inter-partes review (IPR), post-grant review (PGR), or ex-parte re-examination. Lack of innovation, obviousness, or inadequate disclosure are all grounds for revocation. Additionally, a patent holder may voluntarily withdraw one or more patent claims by submitting a disclaimer to the United States Patent and Trademark Office, which is a formal declaration that rejects the specified claims. Upon recording the disclaimer, the disclaimed claims are no longer enforceable.
- Patent rights can be lost through two different processes, including revocation and surrender. A comparison of revocation and surrender is provided below:
- Initiation: Revocation can be started by any interested party, including a rival or third party, by submitting a revocation petition to the relevant body or court. The patentee, on the other hand, initiates the voluntary surrender of a patent by sending a formal request outlining their desire to do so to the patent office.
- Control: Revocation of a patent is a process that is under the control of external parties, such as a court or the patent office, who judge the patent's validity in light of specific legal justifications. On the other hand, the patentee has discretion over the surrender of a patent and may opt to voluntarily give up their rights.
- Reasons: A patent may be revoked for a number of reasons, including a lack of originality, a lack of inventive steps, or a failure to meet the requirements for patentability. Contrarily, the decision to surrender a patent is taken by the patentee and is not based on any particular justifications, such as a lack of commercial viability or strategic concerns.
- Legal Effect: If a patent is revoked by a court or the patent office, the patent is deemed invalid as of the date of grant, robbing the patentee of any remaining exclusive rights. Once accepted by the patent office, a patent surrender causes the patent rights to immediately expire as of the specified date of surrender, without regard to prior dates.
- Impact on Third Parties: The invalidation of a patent that may have been improperly issued or that impedes innovation and competition results in third parties benefiting from the revocation of the patent. The validity of a patent is not evaluated when it is surrendered, but it does allow the patentee to voluntarily give up their rights, potentially creating chances for other market players.
In conclusion, whereas surrendering a patent is a voluntary act by the patentee to give up their rights, the revocation of a patent is a legal process started by interested parties to question the validity of a patent. While surrender is under the patentee's control, revocation entails external evaluation and control. While surrender is a choice made by the patentee for a variety of reasons, revocation is based on specific criteria. Both surrender and revocation have different procedures and effects on third parties, but both can result in the loss of patent rights.