JUrISdIctIOn repOrt: IndIA
cHALLenGInG pAtent GrAnt
tHrOUGH reVOcAtIOn
manisha Singh nair
Lex Orbis Intellectual Property Practice
The process of revocation offers a means to remedy any oversight by the clearly defined or the claim is not fairly based on the matter disclosed in
examiner at the time a patent is granted, with regard to the patentability of the the specification
product in question. Considering the fallibility and lack of conclusivity of the
10. The patent was obtained on a false suggestion or representation
examination process, most jurisdictions offer the remedy of the revocation
of patents in their intellectual property regimes. The Indian Patents Act 1970
11. The subject of any claim of the complete specification is not patentable
under Section 64 allows for the revocation of a patent, whether granted before
under the Act
or after the commencement of the Act, on the petition of any interested
person or of the central government.
12. The invention was secretly used in India before the priority date of the
claim
The Indian law restricts the definition of the interested party allowed to
13. The applicant for the patent failed to disclose to the controller the
challenge a patent to “any person having a direct, present and tangible
information and undertaking regarding foreign applications or furnished
commercial interest which is injured or affected by the continuance of the
false information
patent on the register”.
14. The applicant contravened any direction for secrecy relating to inventions
Section 64 lists the grounds on which a revocation application may be filed:
relevant for defence or made/caused to be made an application for
1. The invention was claimed earlier through a valid claim contained in the
the grant of a patent outside India without prior permission from the
complete specification of another patent granted in India and having an
controller
earlier priority date
15. Leave to amend the complete specification before the controller and
2. The applicant was not entitled to apply for the patent under the provisions
Appellate Board or High Court was obtained by fraud
of the Act
16. The complete specification does not disclose, or wrongly mentions,
the source or geographical origin of biological material used for the
3. The patent was obtained wrongfully, i.e. in contravention of the rights of
invention
the petitioner or any person under or through whom he claims
17. The invention as claimed was anticipated having regard to the knowledge,
4. The subject matter of any claim is not an invention within the meaning of
oral or otherwise, available within any local or indigenous community in
the Act
India or elsewhere.
5. The claimed invention is not new by reason of anticipation by previous
The Intellectual Property Appellate Board is empowered to entertain
publication and by prior claim as referred to in Section 13
a revocation petition. However, in cases of an action for infringement
6. The invention claimed is obvious or does not involve any inventive step
of a patent, when the defendant files a counterclaim of invalidity and
in the context of what was publicly known or used in India or what was
revocation of the patent, the jurisdiction to hear the proceedings rests
published in India or elsewhere before the priority date of the claim
with the High Court.
Revocation provides a means to defend any petition for infringement of a
7. The invention as claimed is not useful
patent obtained through the abuse of the patent process. A petition for
8. The complete specification does not sufficiently and fairly describe the
revocation may be instituted at any time during the term of the patent as
invention and the method by which it is to be performed. The description
against opposition proceedings under Section 25(2), and thus it would be in
of the method or the instructions for the working of the invention are
the interest of maintaining the integrity of the patent system to employ this
not sufficient to enable a person ordinarily skilled in the art to work
power sparingly, i.e. only in instances that display a manifest abuse of the
the invention and the complete specification does not disclose the best
patent system.
method of performing the invention known to the applicant and for
which it is entitled to claim protection
Manisha Singh Nair is a partner at Lex Orbis Intellectual Property Practice.
9. The scope of any claim of the complete specification is not sufficiently and She can be reached at: manisha@lexorbis.com
www.worldipreview.com World Intellectual property review September/October 2009 61
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