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This article has been written by Vansh Bajaj pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Prashant Baviskar (Associate, Lawsikho), and Ruchika Mohapatra (Associate, Lawsikho). 

Introduction

Every child dreams of inventing something in the future, whether it is to make their parents or to flaunt it in front of their peers, there is a good chance you dreamt of this too.  But what if your best friend steals and uses your idea of invention and impresses others instead? How would you feel? This would surely turn your dream into a nightmare.  In real life however, you and your inventions are safe. No one else can use your invention if it has been granted patent protection. Now, what is patent protection?

Patent protection

The Patent Act 1970, for a limited period, protects the inventor with an exclusive right that allows the inventor alone to exploit the invention economically.  

For example, some of the famous patent holders are as follows: –

  • Christer Fahraeus, the inventor of the C-pen, a pen that decrypts letters, numbers and figures, earned his patent right in 1998. Itcan help to transfer a scanned text to a computer.. 
  • Israel Siegel, invented a shoe, no! not a normal shoe but a shoe that activates the air-conditioner compressor as soon as the person takes a step. He earned his patent right in 1946.
  • Per-Ingvar Branemark made life easy by inventing Titanium Screws and Fixing Teeth. He obtained his patent right in 1993.

Now, we all know that the society in which we live is full of disagreement(s) and counterclaim(s). These disagreement(s) and counterclaim(s) of varying nature prevail amidst various parties. The disagreement and counterclaim(s) also hamper the concept of the patent. Yes, you heard it right. These disagreement(s) and counterclaim(s) may lead to rejection or revocation of the patent. 

The breakers in the journey of earning patent protection

The line “if you want to protect your invention you must acquire patent protection” is common and frequently used. Advising someone to acquire a patent is easy but earning patent protection is not as easy as it looks. There are two main hurdles that the person applying for the patent has to overcome to be called a Patentee. The two hurdles are known as pre-grant opposition and post-grant opposition.

  1. Pre-grant opposition: First and foremost, it is important to understand what the words “pre-grant opposition” explains. Opposition can be called disagreement, antagonism, enmity and most important, objection. Whereas the word “pre” means prior or before. So, converting the term “pre-grant opposition” in layman terms will be objecting to the patent before it is granted. Now, the question arises who can and how   and on what grounds can someone’s patent be objected to. 

The concept of pre-grant opposition falls under the ambit of Section 25(1) of the Patent Act, 1970. It states that any person may oppose the grant of the patent and such opposition shall be raised after an application of a patent has been published and shall be before the grant of the patent. It further says that such opposition, if made, shall be in writing. Since the right to oppose a patent is provided to any person but it does not mean that any person can oppose a patent just for fun, there are grounds for opposition. Such grounds are mentioned under Section 25(1) of the Patent Act, 1970 under sub-section A to K.

The following are the grounds.

  1. The applicant has wrongfully obtained the invention.
  2. Anticipation of the invention by prior publication.
  3. Anticipation by prior claiming in India. 
  4. The invention is in public use or knowledge before the priority date.
  5. The invention claimed is obvious and does not involve any inventive step.
  6. The invention for whom the applicant is seeking patent protection is not treated as an invention within the meaning of the Patent Act or is not patentable under the Act.
  7. The complete specification of the invention is not disclosed 
  8. The applicant failed to comply with Section 8 or showed materially false information.
  9. When there is a conventional application, the applicant has to make the application within twelve months from the date of the first application for protection for the invention made in a conventional country, if he fails it will constitute as a ground for pre-grant opposition.
  10. The applicant either submits the fake information about the source or geographical origin of biological material or does not disclose it completely. 
  11. The invention claimed is anticipated, anywhere in the world, concerning traditional knowledge of any community.
  1. Post-grant opposition: The second hurdle in the road of earning patent protection is post-grant opposition. Section 25(2) explains the post-grant opposition. It says that after the grant of a patent, any person interested may give notice of opposition to the Controller but such opposition has to be given before the expiry of a period of one year from the date of publication of the grant of a patent. The grounds for post-grant opposition are identical to pre-grant opposition. 

Throwing some light on Section 25(2) of the Patent Act 1970, it elucidates that the post-grant opposition can be raised only before the expiry of a period of one year from the date of publication of the grant of a patent. It is evident that if no opposition from any person is raised in the mentioned year, the patent will be granted to the applicant and the applicant can take a sigh of relief as he will be called a patentee. However, the difficulties in the journey of the patentee are not yet over. 

Patent once granted may be quashed later”, yes you heard it right. A patent granted to the patentee can be revoked afterwards. What is the real meaning of revocation, how a patent, once granted, can be revoked? Who can revoke etc.? 

Revocation of patents

Revocation, in layman terms, means the act of taking back something that has already been granted. The same happens to the patent, which even though once granted can’t be treated as permanent. People, other than the patent holder, are provided with a right of filling a revocation petition if they have issues due to someone’s patent right. Here the people include any interested person who has legally acceptable grounds for revocation of the patent and the Central Government. However, such a person may only raise their voice by filing a petition. The final decision related to the revocation relies on the Intellectual property appellate board (IPAB).

Grounds for revocation

To disagree or to counterclaim, one must have some grounds on which he can rely. The Patent Act, 1970 provides some ground on which an interested person can file a petition under the Intellectual Property Appellate Board (IPAB) or can file as a counterclaim in a suit for an infringement at the High Court.

The following are the sections that provide ground for revocation of the patent;

  1. Section 64 (Revocation of patents): The following grounds come under the ambit of Section 64 of the Patent Act, 1970.
  • If an identical invention has already been protected by the patent right with an earlier filing date.
  • If the person provided with the patent is not the original owner and has by misrepresentation or fraud obtained the patent protection, the original owner can seek the remedy of patent revocation.
  • An obvious invention can’t be shed by patent protection.
  • A patent can be revoked if granted to a person who is not entitled under the patent act 1970.  
  • If the invention fails to provide the service as specified in specification while applying for the patent.
  • As per Section 8 of the Patent Act 1970, the inventor is bound to disclose all the  information required by the section and if such inventor fails or misrepresent any of the asked information, the patent shall be revoked.
  • If the invention does not meet the standard of Section 2(1) (j) of the Patent Act 1970, the patent granted on such invention can be revoked. 
  • If an invention lacks newness about prior public use or prior knowledge in such a scenario the patent can be revoked.
  • Under Section 35 of the Patent Act, 1970, the Controller provides some compliance of the secrecy direction which has to be respected however, if any inventor fails to comply with provided compliances his patent may be revoked.
  • Section 57 or Section 58 of the Patent Act, 1970 talks about the permission for amendment of complete specifications of Patent, however, if any inventor utilizing fraud obtains the permission under the mentioned section his patent comes at the sake where it can be revoked.
  • The inventions that come under the umbrella of Section 3 of the Patent Act, 1970, are not eligible to be patented. 
  • If the invention claimed by the inventor is already in the knowledge of any local or native community in India.
  • The inventor is bound to disclose the geographical origin or source of the biological material used in the invention, if he fails to disclose them appropriately, he may invite an unwanted revocation threat.
  • In the instances, where the inventor obtains the invention from abroad and that invention is already familiar with the public of India.
  1. Section 65: Revocation of patent or amendment of complete specification on directions from Government in cases relating to atomic energy. 
  • Here, this section empowers the central government with the right to ask the appellate board or the controller to revoke the patent of the license of a patentee and every other person whose name has been entered in the register as having an interest in the patent, if patent acquired by them contradict the sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962), which says that no patent can be granted if such patent is for an invention relating to atomic energy. However, the controller may provide the patentee and every other person whose name has been entered in the register as having an interest in the patent an option to make a satisfactory amendment which further does not hamper the sub-section (1) of section 20 of the Atomic Energy Act, 1962.
  1. Section 85: Revocation of patents by the Controller for non-working.
  • This section pronounces that when a compulsory license has been granted with relation to a patent, the Central Government or any person interested may request the Controller for an order revoking the patent on the following grounds-
  • That the patented invention has not been worked in the territory of India.
  • That the reasonable requirements of the public concerning the patented invention have not been satisfied.
  • That the patented invention is not available to the public at a reasonably affordable price.

Note- Application to the controller by the Central Government or any person interested shall be made after the expiration of two years from the date of the order granting the first compulsory licence.

  1. Section 66: Revocation of patent in the public interest.
  • Law does not allow any individual to be selfish, i.e if, something you discoveris very beneficial for you, but is harming the public at large or the process through which it gets prepared is injurious for the public at large, the law won’t permit you to continue with your discovery. 

Defined under Section 66 of the Patent Act, 1970 “the Central Government believes that something that holds the patent protection is harmful or the mode in which it is exercised is injurious i.e., it may cause prejudice to the general public, may revoke patent protection over such discovery after allowing the patentee to be heard, make a declaration to that effect in the Official Gazette”. 

Relevant case laws

Section 66 of the Patent Act, 1970 came into the limelight for the first time in 1994 in the case of a repudiated US company named “Agracetus”. Here, in this case, the US-based company was granted a patent for genetically engineered cotton cell lines. However, after the heavy protest by the farmers against this patent where they stated that “such patent is affecting their basic right as cotton is the prime crop on which they rely and it is affecting the economy of India”, The Central Government decided to revoke the mentioned patent in the interest of public i.e., the central government for the first time exercised its power under Section 66 of the Patent Act,1970.

Later, after a very long period i.e., in 2012, the Central Government, for the second time, exercised their power under Section 66 of the Patent Act,1970. This time the Central Government revoked the patent of Avasthagen.  Avasthagen, a company known for producing medicines, had obtained patent protection for a medicine/tonic for controlling diabetes that includes using   Jamunlavangpatti and chundun. Later when the company applied for the patent of the same medicine/tonic in Europe, it was discovered that the patent did claim subject matter disclosed by Traditional Knowledge Digital Library (TKDL)

On becoming familiar with such report made by the European patent office, the Indian patent officer, in the interest of the public, revoked the patent of the Avasthagen by stating that “they did not have access to TKDL database that is why their examiners approved the patent and they explained that as per the traditional knowledge of India, the use of Jamun for the treatment of diabetes have been erstwhile known and is in the public domain through the Traditional Knowledge of India.

Presently, when the whole of mankind is facing unprecedented issues due to Covid-19, where the need for medicine is at its peak, an injection named “Remdesivir” attracts the attention of the medical fraternity. It is believed that the said injection may help prevent COVID. The company that develops the remdesivir named “Gilead Sciences” applied for the patent protection of such injection and has been granted under application number 201727012821 on Feb 18, 2020 in India.

Everything was going smooth till a complaint was lodged by the Cancer Patients Aid Association (CPAA), a charitable organisation, who were of the view that “ in today’s difficult situation, it may be prejudicial to the public interest, if monopoly rights were granted to Gilead Sc. Inc”. The complaint is still pending and is in motion.

At this moment, if we talk about the Cancer Patients Aid Association (CPAA), they are slightly right on their part. In the present scenario, where everyone is dying due to a deadly virus, giving monopoly of the production of medicine to one company may disbalance the public interest, however, we can’t say that it “shall” be revoked because the alternative for this is “granting Compulsory licence” under special provisions mentioned in Section 92 of the Patent Act 1970 is available and can be used.  The compulsory license of the above-mentioned medicine will help in the effective and efficient availability of the medicine. 

What should be changed with regards to patent opposition and revocation of a patent under public interest?

Although, it is very clear that opposition is necessary to prevent the granting of patents on frivolous inventions, however, it, sometimes, acts as a cruel enemy and makes it difficult to earn patent protection and sometimes important patents also suffer the pain.

From the viewpoint of rights holders, there has been an upsurge in anxiety surrounding the idea that potential infringers might attempt to delay the grant of those patents that conflict with their interests. This anxiety is rooted in the fact that any person can file a pre-grant opposition in a pending application, which risks prolonging the grant of a patent and may increase the burden of additional costs involved in defending this opposition.

On publication of a patent application, the applicant is deemed to acquire similar rights as would be granted on the grant of a patent on that application from the date of publication. However, the applicant cannot file any suit for infringement until a patent is actually granted. Indian law permits any person to oppose a pending application, a procedure that is more elaborate than the third-party representation found in other jurisdictions. The pre-grant opposition involves detailed pleadings where both the opponent and applicant file a statement and reply, along with elaborate evidence. The parties may thereafter opt for a hearing on such opposition and the entire exercise may take a few months before the controller gives a final decision.

Conclusion 

The world, in which we breathe, is full of inventions and in the same world, the concept of “stealing of others’ credits” runs at the speed of a bullet train. So, it would be wrong to say that the pre-grant opposition and post-grant opposition should be removed while granting the patent just because many vital or significant inventions suffer. Undoubtedly these oppositions have helped to knock over many waggish inventions till now. It is apparent to say that the law always works for the betterment of the people, if we talk about the Patent Act, to ensure the welfare of the general public, the law has provided a salient right to the people and the Central Government to raise a voice against a patent which they feel is inappropriate and harmful to the public interest. 

If such rights had not been available, it may be appropriate to say that farmers would never be able to grow the cotton crop as Agracetus would have had all the rights regarding  cotton crops. To wind up this particular debate “whether these laws like pre-grant, post-grant opposition and revocation are necessary or not”? The answer is as straight as an arrow “it was, it is and it will always be important to have the law(s) to monitor the privileges offered to the public, however, what is more important is to modify the laws as per the needs of the society.


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