Patent revocation is a legal process through which a granted patent is canceled. Revocation may be initiated by interested parties, such as competitors, or by government authorities. This maybe necessitated for various reasons, such as, invalid claims, lack of novelty, absence of non-obviousness, non-compliance with sufficiency of disclosure norms, subject matter eligibility or wrongful grant. Any patent obtained through fraud, inequitable conduct or misrepresentation is liable to be revoked too.
Revocability ensures that only truly deserving inventions maintain exclusive rights, thereby protecting public interest and encouraging genuine innovation. Revocation—termed as ‘patent invalidation’ in some jurisdictions, such as, the US—plays a crucial role in maintaining the integrity and quality of the patent system.
The USPTO (United States Patent and Trademark Office)does not revoke patents. Instead, patent revocation, or invalidation, is dealt with by federal courts or through administrative proceedings like inter partes review (IPR) and post-grant review (PGR)before the Patent Trial and Appeal Board (PTAB).
European patents too may be revoked if it is shown that the invention lacks patentability criteria or has a non-patentable subject matter. Post grant of patent, any third party can initiate an opposition formally at the EPO (European Patent Office). Thereafter, legal action must be instituted in a court at the national level or before the Unified Patent Court (UPC).
In India too, a patent granted may be revoked by the court on a petition filed by a person interested or the Central Government; or, in a counter-claim in a suit for infringement of the patent. A typical ground for revocation is the lack of any or all patentability criteria.
In K. Manivannan vs The Chairman, Intellectual Property Appellate Board, Chennai and ORS,[1] a petition was filed seeking revocation, under Section 64 of the Patents Act, 1970, of the patent granted for an ‘improved threshing & separating machine,’ on the grounds of anticipation, lack of novelty, absence of inventive step and fraudulent misrepresentation.
.jpg)
In other words, the allegations of the petitioner were that the patent was: (a) obtained by copying the petitioner’s invention with minor alterations; and, (b) anticipated by antedated patent application, prior use and public knowledge. The court reviewed the basic principles of patent law, emphasizing that for an invention to be patentable, it must be new, useful, and non-obvious to a person skilled in the art.
The court noted that a patent comes into existence by virtue of differentiating the inventive contribution from the public domain. It enters the private domain during 'exclusivity term'. Finally, it will be a part of public domain when the period of 'Exclusivity' comes to an end
The court reiterated that the mere grant of the patent does not guarantee its resistance to subsequent challenges. However, it stated that in a petition for revocation under Section 64 of the Patents Act, 1970, the burden is fully on the shoulders of the petitioner to establish that the patent holder is not the true and first inventor of the invention and that the patent grant deserves to be revoked.
It was also held that for an invention to be reckoned as anticipated, the earlier disclosure must contain a clear description of the invented object; or, provide unambiguous and clear directions to do or make the invented object. The description or directions should be such that, if the same is done, made or carried out after the patent grant, it would ipso facto constitute an infringement.
Further, it was opined that in a comparison of the patented article with the infringing article, any and all unessential features in the infringing article are inconsequential. Then again, if the infringing goods are made with the same object as that of the patented article, then even a minor variation is not to be construed as non-infringing.
The High Court of Judicature, Madras, assessed the facts and circumstances of the case; evaluated the matter on merits in an objective manner; and, concluded that the petitioner had not made out any prima facie case for revocation. The court accepted the IPAB’s (Intellectual Property Appellate Board) legally-sound reasoning, which was found to be free from any infirmity.
Further in its judgment, the court noted that for an invention to be granted a patent, the applicant must exhibit significant addition to what already exists in the public domain. It further observed that an abandoned patent application could not constitute prior art, as it had never entered the public domain.
The court took the view that the petitioner had failed to prove anticipation, prior public use, or fraudulent conduct by the patent holder. Hence, the revocation petition was dismissed.
At BLAZE VENTURES, we have elaborate processes and qualified professionals for ensuring that patents granted for the ideas, innovations and inventions of innovators and enterprises are held non-revocable in subsequent litigation proceedings.
_____________
[1] 2017) 72 PTC 152 (DB)
