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Written by : Ambrose Browman
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revocation of patents section 64 deals with the revocation of patents revocation of patents can be understood in the context of opposition of patents because opposition is a proceeding similar to revocation but that proceeding happens at the patent office and we saw that there are two types of oppositions the opposition could be to an application what we can call and patent application that is opposed before its grant it is also called pre-grant opposition or the opposition could be one year after the grant what is known as the opposition after the grant or the post grant opposition now these two types of opposition are proceedings by which you can challenge the validity of a patent before the patent office revocation are proceedings or revocation proceedings are proceedings either before the intellectual property appellate board what is called the appellate board or the high court which has taken cognizance of an infringement proceeding there is a pending infringement suit in that proceeding the high court can entertain a revocation proceeding so revocation of patents can either happen before the appellate board or in the high court they are similar to opposition proceedings because some of the grounds do overlap grounds of opposition and the grounds of revocation do overlap they are similar because these grounds could be used to challenge the validity of a patent so the common theme for opposition as well as the revocation that is section 25 and section 2064 is the fact that these proceedings can be used to check the validity of a patent or you could even cross them broadly as invalidation proceedings so invalidation proceedings which includes opposition and revocation fall into a category of proceedings where you can invalidate a granted patent infringement proceedings this is the other aspect of patents infringement proceedings are proceedings which are taken to enforce the patent so infringement proceedings are taken by the patentee or a person who is an exclusive licensee who is interested in enforcing the patent so infringement proceedings are you can look at infringement proceedings and invalidation proceedings as two sides of the same coin the coin being the patent infringement proceedings are used to enforce the patent to make people pay license fee on the patent to stop people from doing certain things covered by the patent all these proceedings are what we call infringement proceedings you want to enforce your right on the other side of the coin you have invalidation proceedings which comprises of as we mentioned opposition proceedings and revocation proceedings now invalidation proceedings are proceedings by which you can question the validity of a patent so on one side you the patentee would like to enforce the patent on the other side when a patent is being enforced you can question the patent by saying that this right should not be enforced because this right was improperly granted there is no valid right in the first place for instance a person can raise a issue that this patent lacks inventive step there is no inventive step so it was granted by the patent office but i am now questioning the inventive step or a person may say that this pattern does not have novelty it does not satisfy the requirements of novelty so in all these grounds what is essentially being done the validity of the patent is being questioned validity of a granted patent and so you will see in 64 many grounds of 64 overlap over the grounds of 25 so we understand 25 and 64 together following forming a group or or a set or a set of proceedings what we together call invalidation proceedings or validity of a patent is checked so revocation the grounds of revocation are much more expansive than the grounds of opposition so you will find that if you compare the grounds of opposition and the grounds of revocation the grounds of more expansive historically there are some reasons why the grounds are more expensive because earlier before the intellectual property was created the high court where the only codes that were vested with the power to revoke a patent the high court where the only courts are the only forum where you could challenge the validity of a patent so because the high courts could get into the matter in the form of a legal dispute they could add use expert evidence they could appoint scientific advisors and you could have trial examination cross examination because the legal procedure provided them to get into great detail about the invention and the surrounding circumstances ah one explanation is that the grounds or revocation are much more expansive than the grounds of opposition opposition happens at the patent office the patent office the controller who sits in the opposition though he has the powers of the civil court the controller may not exercise all the powers of a civil code because of certain administrative reasons and we have not known of any of the decisions from the patent controller where the patent controller has subjected a party to cross examination or where the party was cross examined in front of the controller we have not seen any decision but i just just tell that tell you that the expertise of these two bodies are different the controller who mans the patent office and the high court which is staffed by judicial members and you will see one of the reasons for challenging a patent is on the ground of fraud amendment that is carried out by fraud you you will just see it here yeah we have it here oh the leave to amend the complete specification under section 57 of 58 was obtained by fraud now this is not a ground of opposition in 25 if you see fraud cannot be pleaded as a ground for opposition again the reason lies because of the expertise of the organization the the high court and originally 67 64 was a power which was exclusively with the high court after the intellectual property appellate board was created that power part of that power was also transferred to the intellectual property appellate board and in any case the chairman of the intellectual property appellate board by law has to be a person who has been a retired high court judge so we could find that you would still be able to apply these proving fraud is difficult and there are there are procedures to be followed fraud is to be proved fraud has to be specifically pleaded and there has to be the burden of discharging proof of fraud is much higher than it is in any other case because fraud goes to the conduct of a person whereas all the other aspects we are just looking at documents and comparing state of the art with the invention whether there has been inventive step this goes to the conduct of a person the body that decides or that adjudicates on a fraud has to be ah sufficiently equipped to look into this ground so that's one explanation as to why we have more grounds of revocation than we have grounds of opposition now let's look at section 64. a host of grounds will just quickly take you through now the 64 tells us that a patent that has been granted under the act so 64 applies only for granted patents can be revoked on a petition of any person inter
Thanks for your comment Teresia Fairfield, have a nice day.
- Ambrose Browman, Staff Member
hey there welcome back to yet another episode in the journey of demystifying the parents act in the last couple of episodes we assisted our actor when the actor was faced with a situation where either a patreon application was filed or a patent got granted pertaining to a technology product or services and the actor was not thrilled about the development at all this is how we envision the situation and these are the options that we evaluated for opposing the grant of the parent during the application phase we went for pre-grant opposition as per section 25.1 however after the grant of the patent we went for post grant opposition but within the first year from the date of the grant now consider a situation where we have missed both these opportunities what options do we have to oppose a granted patent and most importantly what platform do we have to oppose such a granted patent in this video we will go over the provisions available to us to oppose a granted parent as per section 64 any person interested or central government can file a petition to revoke a patent any time after the grant of the patent but who do you approach you don't approach controller with such petitions you approach ipd which is intellectual property rights division at high court which was set up once the ipab was dissolved in the year 2021. you can also approach high courts directly in certain situations we will discuss about those situations during the later slides you may recall from our previous episodes while filing such request or petition we need to identify the grounds on which you intend to oppose the grant of the parent now what are these grounds recall our discussion from the previous episodes we took assistance from section 2 to 13 that defines various technical and procedural requirements for a patent application to be granted we found discrepancies on the applicant's part and used those as our grounds for opposing the grant of the parent let's revisit all these technical and procedural requirement in a different manner this time around let's start with the initial sections section 2 and 3. we can use the definition of section 2 to evaluate if the invention as claimed in the patent is novel or was it published or used or known to the public before the priority date of the application or if the invention has inventive step in light of the knowledge which is already available in the public domain think of the prior documents which are used as per section 13. prior publications or the indian applications which were filed before the priority date of the patent and claiming the same invention is the invention useful as per section 2-1 ac this was not one of the ground for the pre or post-grant opposition moving on section 3 can you prove if the subject matter as claimed in the patent belongs to one of those specified as per section 3 or the subject matter belongs to atomic energy which is not patentable as per section 4 but not all such prior usage or prior publication can be used as valid grounds for revocation there are few exceptions also section 64 2 and section 3 provides such an exception so prior publication by means of a personal document will not be considered as a valid ground or any prior use only for secret trial or secret use or experimental purpose will not be considered as a valid ground for revocation similarly use of the invention by or on behalf of the government will not be a valid ground further if the invention was used by another person who obtained the invention from the patentee but use the invention without the consent of the patentee such usage will not be considered as valid ground for revocation of the parent moving on to another ground which relates to who is the applicant for the patent application we can evaluate if the applicant is entitled to file an application in india as per section 134 which deals with reciprocity of rights if another country doesn't provide similar privileges to the indian resident as they provide to their own citizen then citizens of those countries are not entitled to file an application with the indian patent office similarly if the patent was wrongfully obtained or was obtained on false representation we can evaluate the patentee or the applicant with these three requirements moving on to the next ground which are related to the requirements from the specification as per section 10-5 specification should sufficiently and fairly describe the invention should also describe the best method of operation in case of biological material the source or origin should be provided accurately with regards to claims the claim should clearly define the scope of the invention and should be fairly based on the specification in case specification was amended as per section 57 and 58 we can check if there was any fraud committed to obtain permission from the controller to make such amendments next we'll identify the grounds which are related to the obligations imposed by the patent act on the applicant or patentee as you may recall foreign filing details need to be provided up to the grant of the patent in india so we can check if such a requirement was met if accurate information was provided to the patent office similarly we can check if secrecy directions were followed by the patentee the invention should not have been published or the information pertaining to the invention should not have been communicated with any other person in india or outside india similarly we can check if a patent application was filed outside india without obtaining prior permission from the patent office as per section 39 so we have discussed all possible grounds that can be used to oppose a granted patent we can choose one or more of these grounds substantiate them with appropriate evidence and prepare our preparation once the petition is prepared we can approach the ipt with the petition upon receiving such a notice ipd notifies the patentee or any other person who may be termed as interested in the patent as per the register kept at the parent office beyond this the parties would provide statements counter statements evidences responses a hearing may be conducted and thereafter the judgment may be provided by the ipt now what that judgment could be it could be either the petition is threshed or petition is accepted and the patent is revoked remember we talked about approaching high court also with such a request during certain situations so what are those situations in case an infringement proceeding is already going on at the high court between the parties in such cases one of the party basically the defendant can file a counter claim for invalidation of the patent in this case the high court will go over the submissions to decide whether the patent will be revoked or not moving on to the another party the central government that can also approach the high court with the petition to revoke the patent on the grounds as mentioned earlier or for the reason that the patentee has failed to make use or exercise the invention for the purpose of government as defined under section 99 here also an opportunity could be provided to the patent
Thanks Shaneka your participation is very much appreciated
- Ambrose Browman
About the author
I've studied classical mechanics at University of Texas Rio Grande Valley in Edinburg and I am an expert in distributed algorithms. I usually feel refreshed. My previous job was windows - draperies treatment specialist I held this position for 16 years, I love talking about pilates and archery. Huge fan of Juice WRLD I practice skydiving and collect dolls.
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