CHAPTER XII: SURRENDER AND REVOCATION OF PATENTS
Section 63: Surrender of patents
This section explains how to voluntarily give up your patent.
- (1) What it says: A patentee may, at any time by giving notice in the prescribed manner… offer to surrender his patent.
- In plain English: As the patent owner, you can decide to “surrender” (give up) your patent at any time. You do this by filing an official form with the Controller.
- Real-world example: You have a patent on a technology that is now obsolete. You don’t want to keep paying renewal fees for it. You can file an offer of surrender to officially terminate it.
- (2) What it says: Where such an offer is made, the Controller shall publish the offer… and also notify every person… whose name appears in the register as having an interest in the patent.
- In plain English: The Controller can’t just accept the surrender immediately. He must first publish your offer for the public to see.
- He must also personally notify anyone who has a registered interest in the patent, such as a company that has a license from you or a bank that holds the patent as collateral for a loan.
- (3) What it says: Any person interested may… give notice… of opposition to the surrender, and… the Controller shall notify the patentee.
- In plain English: Any “person interested” can oppose your surrender.
- Real-world example: “BigCorp” has an exclusive license from you and has built a factory. If you surrender the patent, it becomes public property, and BigCorp’s competitors can start using it, destroying their business. BigCorp can file an opposition, arguing that the surrender harms their registered legal rights.
- (4) What it says: If the Controller is satisfied after hearing the patentee and any opponent… that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.
- In plain English: The Controller will hold a hearing, listen to both you (the patentee) and the opponent (e.g., BigCorp). If the Controller finds that the surrender is proper (for example, you and BigCorp have reached a financial settlement), he will accept the offer and issue an order revoking the patent. The patent is then officially dead.
Section 64: Revocation of patents
This is one of the most important sections in the entire Act. It lists all the legal reasons (grounds) why a patent can be cancelled (revoked) by the Appellate Board (now High Court) or in a lawsuit.
- (1) What it says: …a patent… may… be revoked on a petition of any person interested or of the Central Government… or on a counter-claim in a suit for infringement… on any of the following grounds…
- In plain English: A patent can be revoked (cancelled) in two main ways:
- Petition: A “person interested” (like a competitor) or the Central Government can file a specific case with the High Court to revoke your patent.
- Counter-claim: You sue someone for infringement. In their defence, they file a “counter-claim” in that same lawsuit, arguing that your patent is invalid and should be revoked.
- The reasons they can use are strictly limited to the list below (a to q):
- In plain English: A patent can be revoked (cancelled) in two main ways:
- (1)(a): …invention… was claimed in a valid claim of earlier priority date… in another patent…
- In plain English: Someone else patented the exact same invention before you, and their patent was granted.
- (1)(b): …patent was granted on the application of a person not entitled… to apply…
- In plain English: The person who applied (e.g., an employee) was not the true inventor and had no legal right (like an assignment) to file for the patent.
- (1)(c): …patent was obtained wrongfully in contravention of the rights of the petitioner…
- In plain English: The invention was stolen from the person filing the revocation (the petitioner).
- (1)(d): …subject of any claim… is not an invention…
- In plain English: The patent was granted for something that is not patentable under Section 3 (e.g., a scientific principle, a business method, a mere discovery).
- (1)(e): …invention… is not new…
- In plain English: The invention is not new (it lacks “novelty”). It was already publicly known or used in India, or published anywhere in the world, before your priority date.
- (1D)(f): …invention… is obvious or does not involve any inventive step…
- In plain English: The invention lacks an “inventive step” (it is “obvious”). A person skilled in the art, looking at what was already known, would have found your “invention” to be a simple, obvious next step.
- (1)(g): …invention… is not useful;
- In plain English: The invention lacks “utility” (it’s not “capable of industrial application”). It simply does not work as described in the patent, or it has no practical use.
- (1)(h): …complete specification does not sufficiently and fairly describe the invention…
- In plain English: The patent is insufficient. You didn’t provide enough detail in your specification for a “person skilled in the art” to actually make and use the invention without undue experimentation. Or, you hid the “best method” of performing the invention that you knew about.
- (1)(i): …scope of any claim… is not sufficiently and clearly defined or… is not fairly based on the matter disclosed…
- In plain English: The claims are bad. They are either vague and ambiguous (“a device for doing things…”), or they claim subject matter that isn’t actually described or supported in the main specification.
- (1)(j): …patent was obtained on a false suggestion or representation;
- In plain English: You lied to the Patent Office. You deliberately made a false statement (e.g., “I am the true inventor,” when you knew you weren’t) to get the patent granted.
- (1)(k): …subject of any claim… is not patentable under this Act;
- In plain English: This is a catch-all, similar to (d). It means the claims cover subject matter that the Act explicitly bars from being a patent (e.g., under Section 3 or Section 4).
- (1)(l): …invention… was secretly used in India… before the priority date…
- In plain English: The invention was already being used commercially in secret in India before you filed for the patent (unless it was for reasonable trial or by the government).
- (1)(m): …applicant… failed to disclose… the information required by section 8 or has furnished information which… was false…
- In plain English: You violated Section 8. You failed to tell the Indian Patent Office about your foreign applications for the same invention, or you lied about their status. This is a very common and serious ground for revocation in India.
- (1)(n): …applicant contravened any direction for secrecy… under section 35 or… made… an application… outside India in contravention of section 39;
- In plain English: You violated the secrecy provisions. You either ignored a secrecy order (Sec 35) or, as an Indian resident, you filed for a patent outside India without first getting permission or waiting six weeks (Sec 39).
- (1)(o): …leave to amend the… specification… was obtained by fraud.
- In plain English: You lied to the Controller or the Court to get an amendment approved (under Sec 57 or 58).
- (1)(p): …complete specification does not disclose or wrongly mentions the source or geographical origin of biological material…
- In plain English: Your invention uses a biological material (e.g., a plant from the Himalayas). You either failed to mention where you got it, or you lied about its source, in violation of India’s biodiversity laws.
- (1)(q): …invention… was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community…
- In plain English: The invention is just “traditional knowledge.”
- Real-world example: You get a patent for “a method of curing turmeric with milk to treat colds.” This patent can be revoked because this is traditional knowledge, known orally in Indian communities for centuries.
- (2)-(5): These sub-sections provide further clarification on the above grounds, such as what constitutes “secret use” and the process for serving notices.
Section 65: Revocation of patent… in cases relating to atomic energy
- (1) What it says: Where at any time after grant… the Central Government is satisfied that a patent is for an invention relating to atomic energy… it may direct the Controller to revoke the patent…
- In plain English: The Central Government at any time (even 10 years after grant) can discover that your patent is for an “invention relating to atomic energy” (which is forbidden under Section 4 and Section 20 of the Atomic Energy Act, 1962).
- If this happens, the Government will order the Controller to start the revocation process. After a hearing, the Controller can revoke your patent.
- (2) What it says: …the Controller may allow the patentee to amend the complete specification in such manner as he considers necessary instead of revoking the patent.
- In plain English: This provides a lifeline. If only part of your patent is related to atomic energy, the Controller can give you a chance to amend your patent (e.g., delete the problematic claims) to remove the atomic energy parts. If you do this to his satisfaction, he will let you keep the rest of the patent.
Section 66: Revocation of patent in public interest
This section grants the Central Government the absolute power to revoke a patent under extreme circumstances.
- (1) What it says: Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may… make a declaration… and thereupon the patent shall be deemed to be revoked.
- In plain English: This is the government’s “kill switch.” If the Central Government decides that a patent, or the way the patent is being used (e.g., to block critical services), is harmful to the country (“mischievous to the State”) or bad for the public, it can issue an official declaration.
- The moment that declaration is published in the Official Gazette, the patent is instantly and permanently revoked.
- (1) Proviso: …after giving the patentee an opportunity to be heard…
- In plain English: The government cannot do this in secret. It must first notify the patent owner and give them a chance to argue their case and explain why their patent is not harmful and should not be revoked.
Real-world example: A patent is granted for a new, extremely cheap-to-make water purification chemical. The patentee, instead of selling it, uses the patent to sue and shut down all municipal water treatment plants, creating a public health crisis to drive up prices. The Central Government could step in, declare the patent “prejudicial to the public,” and revoke it to get the water plants running again.