Surrender and Revocation of Patent – In the field of intellectual property rights, patents protect our new and non-obvious inventions. Patent is an exclusive right which helps the inventor to make his invention applicable for the public and earn money by selling this.
But sometimes, it happened that the applicant need to surrender or revoke the patent application due to some reasons. This is important for a person to understand the procedure and conditions to surrender the patent or the revocation of the patent.
In this article, we will discuss the various aspects where the person can surrender his patent and about revocation of the patent.
Surrender of Patent
Surrender of patent is a process in which the person waives all his rights against his patent which was granted on his name. Now, that patent will come into the public domain where the others can use such patent without the consent of applicant of that patented product or process.
What is surrender of Patent?
Surrender of patent is a voluntary act done by the applicant of the patent in which he voluntarily waives his patent rights. Section 63 of Patent Act and Rule 87 of Patents Rules deals with the surrender of patents. There can be various reasons for the surrender of patent such as lack of commercial value of a patent or any changes in the business which was being run on that patent product or sometime, the surrender of patent can be done if the person does not want to maintain the patent.
When can a person surrender his patent?
A patentee can do the surrender of patent anytime after the grant of the patent. He must give the notice of offer to surrender a patent under section 63.
Process of Surrender
The process of surrender a patent involves formal communication with the relevant patent office where you have filed the patent application. The person who is going to surrender his patent needs to inform the patent office that he needs to surrender his patent.
Notice of Surrender
The Patentee must give the Notice in the prescribed manner to the Controller of Patents with prescribed fees which is 1000 rupees for a natural person.
There is no form for the surrender of patent so the person have to file a notice by mentioning that he wants to surrender his patent. With such Notice, the person needs to file the necessary documents related to his patent which shows the details about his patent and submit it online or offline in the patent office.
Publication
After receiving such notice from the Patentee, the controller will publish such notice in the official gazette and notify the other persons whose names are written in the register of patent.
Opposition of Notice
After the publication of such notice, any person interested in that patent can file the opposition of notice of surrender of patent within 3 months from that date of such publication. For the opposition of notice of surrender of patent, the person needs to file the form 14 with prescribed fee of 2400rupees for a natural person.
After receiving such request of opposition, the controller will inform the Patentee about that opposition against his notice.
Hearing
The controller of patent will decide a date of hearing where he will hear both the parties and then pass his order.
Order to Revoke
After hearing both the parties, if the controller of patents accepts such surrender notice, then he will direct such patentee to return the patent to the office and also ask him to provide the receipt of such patent.
After taking these documents, the controller shall order to revoke the patent and publish the revocation of such patent in the official gazette.
Pros and Cons of Surrender
There are pros and cons of surrender of patent. On one hand, the holder of patent becomes free from the obligation to maintain his patent by paying the renewal fees and now he does not need to submit the form 27 if needed by the controller. On the other hand, now the Patentee cannot claim the future benefits or rights related his patent.
Revocation of Patent
The patents protects the rights of the Inventor by providing security so that he can earn money by selling his intellectual property. However, in the middle of this journey, Revocation of patent plays a crucial role by taking all the rights given to the patent holder.
What is revocation of patent?
The revocation of patent is a legal process given in the section 64 of the Patents Act of 1970. In revocation, the validity of the patent which is either in process or granted is challenged and invalidated by other person interested on some grounds which are given under this Act.
How a Patent can be revoked?
A patent can be revoked on a petition of any person interested or the Central Government of India or in a counterclaim between two or more parties of a case of infringement of the patent and the case should be in the high court by giving the ground mentioned in the act.
Grounds of revocation of patent
There are some grounds given in the section 64 of the act. These grounds are:
- The invention claimed in the patent is already mentioned in another patent earlier.
- The person is not true or first inventor or assignee or any interested person in the invention.
- It was wrongfully obtained by the true of first inventor of such product of process.
- The invention falls under section 3 of the act. Section 3 of the act provides the condition that cannot be patented. So if your patent falls under section 3, you cannot file the patent for such an invention.
- The invention is not novel, and it is known to the public before priority date or filing date of the patent application.
- There are no inventive steps in the invention. It means your invention is just a modification of an invention which is already existing in the market.
- It is not useful in the public. If your invention cannot be made or used in the industry, then there is not industrial value of the invention.
- The complete specification of the patent application does not clearly describe the best method to perform or make the product or process.
- The scope of the claims is not particularly defined what you exactly need to secure in the claims.
- The patent was obtained on false representation or suggestions.
- There were secrecy directions imposed on the patent under section 35 of the Act and you still working on the invention.
- The invention was secretly used in India before date of filing.
- The inventor has failed to file foreign filing under section 8 and form 3.
- Inventor filed the application outside India without the permission of controller U/S 39. Because as per section 39, if any person wants to file the patent application outside India and he had did research for his patent in India, then he must take the prior permission from the patent office before filing it outside India.
- The amendment made in the Complete Specification is fraud. You cannot give false information in your patent to take the patent for such application.
- Problem with Biological material (not clearly mentioned, wrongly mentioned the source etc.).
- The inventions come under traditional knowledge. It means that if you are using any material or plants which comes under the traditional knowledge, you cannot take patent of such inventions.
Process of revocation of patent
The process of revocation of patent consist of many steps such as:
Petition
The person interested to file the revocation of a patent needs to file the petition by challenging the validity of that patent.
Mention the grounds
The person needs to mention the specific ground in that petition on which he wants to revoke the patent.
Evidence
The person needs to attach the documents or evidence supporting his petition for the revocation. This evidence could be anything such as document which shows that the person claiming the invention was not true of first inventor of such patent.
Response by Patentee
After this, the authority will ask the patentee to file the response against the grounds mentioned by the opposite party.
Hearing
After such responses, the authority will hear both the parties and can ask to produce the more necessary information related to the case.
Decision
After taking evidence and listing both the parties, the authority will give the decision. This decision will be based on the evidences given by both the parties. This person who is not satisfied by this decision can file the appeal or review for the decision.
Effect of Revocation
If the authority gives the decision in the favour of the person who has filed the revocation petition, the patent will be revoked and the rights of the person who has filed the patent shall be ceased to be in effect. He cannot claim any rights or royalties over that patent after the decision of the authority.
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Conclusion
Surrender of patent and revocation of patent are remedies for the person according to different situations. Surrendering of patent can be the solution for a person who is facing petition or cases related to infringements for his patent and the person do not want to take any type of cases, so he can surrender his patent. If he does not want to pay the renewal fee of his patent, he can go for surrender to safe his money.
On the other hand, the revocation is the remedy for the third party who needs to use the invention freely. Because sometimes, it may happen that the person has patented a thing which should not be patented, then a person interested can go for the revocation.
I hope now you have the knowledge about surrender and revocation of the patent. If you have any suggestions regarding this article, you can comment your views.