A patent grants the exclusive right to prevent others from using, making, selling, importing, or otherwise commercially exploiting the patent owner’s invention for a limited period, typically twenty years from the filing date of the patent application.

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There are, however, circumstances in which a patentee may wish to voluntarily relinquish the exclusive rights before the expiration of the patent’s standard term of 20 years. The process of such relinquishment is known as the surrender of patent.

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Reasons for Surrender of Patents

Patent surrender is a legal mechanism through which the patent holder gives up the exclusive rights associated with the patent. Once the patent office approves the filed application of the patentee for surrender, the patent stands revoked. Thereafter, the invention enters the public domain, which means, anyone can freely use, import, market, offer for sale, or manufacture it.

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Patent holders often exercise the option of patent surrender for many practical reasons, such as:

1. Cost Savings: After the grant of a patents, the owner must pay periodic maintenance fees to keep the patent active. If an invention lacks commercial value, industrial feasibility, or economic viability the owner may opt to surrender it to stop paying the applicable renewal fees.
2. Legal Challenges: At times, the patentee may realize that the patented invention is weak and expects it to be challenged (or invalidated) in a costly patent revocation or infringement lawsuit. Hence, surrendering it allows the owner to avoid gracefully potential disputes, litigation expenses,  or regulatory complications
3. Strategic Shifts: Often the invention may become obsolete or unprofitable. Besides, newer technologies or later inventions may supersede or leapfrog the invention; companies too may replace an older patented product with a newer, improved version. In such scenarios, it may be prudent to surrender the patent voluntarily and to focus entirely on new or emerging technologies.

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‍Procedure of Patent Surrender

The process for surrender differs across jurisdictions. However, in general, the procedure consists of the following steps:

• Notice to the Controller: The patent owner formally files an application for surrendering the patent with the jurisdictional patent office.
• Public Notice: Upon receipt of the application offering to surrender the granted patent, the controller publishes the proposal and invites objections from interested parties, such as, licensees, assignees, creditors, competitors, regulatory authorities, or other stakeholders.
• Opportunity to Oppose: Any interested person can oppose the surrender within a stipulated timeframe. This step also ensures that a patentee does not escape or frustrate any ongoing infringement lawsuits or invalidation actions.
• Acceptance & Revocation: If no valid opposition is received within the stipulated time period, or after duly considering objections received, the patent authority may accept the surrender and formally revoke the patent.

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Concluding Remarks

The surrender of a patent has crucial legal consequences. Once revoked, the patent ceases to exist, and the exclusive rights granted by it are extinguished. Nevertheless, a surrender does not affect liabilities or obligations that had arisen before the acceptance of the surrender and revocation of the patent.

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From a strategic perspective, patent surrender can be an effective option that businesses exercise in the management of their IP (patent) assets. Enterprises review their portfolios often to identify patents that no longer align with their business goals, corporate vision and commercial objectives. Surrender reduces patent maintenance costs and enables resource utilisation for more valuable IP assets.

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In a nutshell, surrender is a voluntary and legally regulated process available to patentees for the relinquishment of their patent rights; the process ensures that the interests of interested parties and the public are adequately safeguarded and no prejudice is caused to any third-party.

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At BLAZE VENTURES, we have elaborate processes and qualified professionals for advising inventors and enterprises on the strategic management of IP assets, and with specific regard to the surrender of patents.