LLM Group 3 Law of Intellectual Property and Information Technology Law of Patents 2024-25 Question Paper with Solutions

The procedure. The Controller PUBLISHES the offer and gives NOTICE to every person, other than the patentee, whose name appears in the register as having an INTEREST in the patent. That is the heart of the section: a licensee who has paid for rights, or a mortgagee who holds the patent as security, would be destroyed by a surrender made behind his back. Any PERSON INTERESTED may, within the prescribed period, give NOTICE OF OPPOSITION, and the Controller notifies the patentee. After hearing the patentee and any opponent, IF SATISFIED THAT THE PATENT MAY PROPERLY BE SURRENDERED, the Controller may ACCEPT THE OFFER AND BY ORDER REVOKE THE PATENT.

Why a patentee surrenders. Because the renewal fees exceed the value; because a validity challenge is pending and he prefers to end the patent on his own terms rather than have a judgment against it; or because he has been advised the patent is bad and wishes to avoid an action for GROUNDLESS THREATS under section 106.

The forum, and the change of 2021. A petition under section 64 lay to the APPELLATE BOARD. The TRIBUNALS REFORMS ACT, 2021 abolished it: SECTIONS 116, 117, 117B, 117C AND 117D WERE OMITTED and in SECTION 117A the words APPELLATE BOARD were SUBSTITUTED BY HIGH COURT. A revocation petition now lies to the HIGH COURT, and a counterclaim is decided by the High Court to which section 104 requires the suit to be transferred once the counterclaim is filed. The Delhi and Madras High Courts have created INTELLECTUAL PROPERTY DIVISIONS for this work.

Two: on post-grant opposition, section 25(4). Within TWELVE MONTHS of the publication of the grant a PERSON INTERESTED may oppose, and the Controller, on the RECOMMENDATION OF AN OPPOSITION BOARD of three examiners and after hearing the parties, may order that the patent be MAINTAINED, AMENDED OR REVOKED. This is revocation by the office rather than by a court.

Three: for atomic energy, section 65. Where the Central Government is satisfied that the invention relates to a subject within section 20(1) of the Atomic Energy Act, 1962, it may direct the Controller to revoke, after giving the patentee an opportunity of being heard.

The cases

Revocation for obviousness and prior use. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511. A patent for a device for manufacturing utensils was revoked. The method of holding the utensil body on a lathe had been in use among craftsmen before the priority date, so the invention lacked NOVELTY, and the alleged improvement was a mere WORKSHOP IMPROVEMENT within the reach of any skilled workman, so it lacked an INVENTIVE STEP. The Supreme Court also warned against judging obviousness with HINDSIGHT.

Revocation refused, and the counterclaim route. F. Hoffmann-La Roche Ltd v. Cipla Ltd, 2015 SCC OnLine Del 13619, Division Bench, 27 November 2015. Roche and OSI Pharmaceuticals sued on the patent over erlotinib and Cipla counterclaimed for revocation for obviousness, under section 3(d) and for non-disclosure under section 8. Every ground failed, the patent was upheld as VALID and found INFRINGED, though no injunction was granted because the term was nearly spent. The case shows that a counterclaim puts the whole patent in issue and that a patentee who sues must be ready to defend his grant.

No restoration. SECTIONS 60 TO 62 allow a lapsed patent to be restored where the failure to pay a renewal fee was UNINTENTIONAL. There is no equivalent for a revoked or surrendered patent: it cannot be revived, and the invention is in the PUBLIC DOMAIN.

Third parties who relied. On restoration after a lapse, section 62 protects a person who began to work the invention while the patent was void. After a revocation no such protection is needed, because there was never a valid monopoly to infringe.

And a partial outcome is possible. On a post-grant opposition the Controller may under section 25(4) order that the patent be AMENDED rather than revoked, and in a revocation proceeding SECTION 58 allows the HIGH COURT to permit the patentee to amend his complete specification on such terms as to costs and advertisement as it thinks fit. A patentee who has over-claimed may therefore save the part that is genuinely his, which is often what the litigation is really about.

The four ways a patent ends, distinguished

Conclusion. SURRENDER under SECTION 63 is offered by the patentee at any time by notice to the Controller, who publishes it and notifies every registered interest, and who may accept it and BY ORDER REVOKE THE PATENT after hearing the patentee and any PERSON INTERESTED who opposes. REVOCATION has five routes: on PETITION OR COUNTERCLAIM under SECTION 64, now in the HIGH COURT following the abolition of the Appellate Board by the Tribunals Reforms Act, 2021, on the seventeen grounds in section 64(1); on POST-GRANT OPPOSITION under section 25(4) by the Controller on an Opposition Board's recommendation; by the CENTRAL GOVERNMENT under section 65 for ATOMIC ENERGY and under section 66 where the patent is MISCHIEVOUS TO THE STATE OR GENERALLY PREJUDICIAL TO THE PUBLIC; and by the Controller under section 85 for NON-WORKING two years after the first compulsory licence. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries illustrates revocation for obviousness and prior use, F. Hoffmann-La Roche Ltd v. Cipla Ltd a counterclaim that failed, and Monsanto Technology LLC v. Nuziveedu Seeds Ltd that revocation cannot be ordered summarily.