Surrender and Revocation of Patents

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SURRENDER AND REVOCATION OF PATENTS 1. Introduction A patient has the exclusive right of making, using or selling the invention, the validity of the patent is not guaranteed by the government , as is made clear in the form of the grant itself, and in sec13 (4) of the Act. This is the basic principle of patent law accepted in all patent Acts in India as well as in England. The reason is not far to seek. A patent is a kind of limited monopoly granted to the true and first inventor as a reward for the creation of something new and useful which might ultimately benefit the public. The public is given an opportunity to challenge the validity of the grant if the patent does not fulfil any of the conditions laid down under the Act for the grant of monopoly1 A patent can be voluntarily surrendered at any time by giving a notice to the controller in the prescribed manner. The notice or the application shall contain an offer to surrender the patent. This can also be opposed by any interested person within 3months. Similarly, a patent may be revoked on a petition by any of the grounds specified in the Act. The following provisions and rules apply to the Surrender and Revocation of Patents: Section 63 : Surrender of patents. Rule 87

: Surrender of patents.

Section 64 : Revocation of patent or amendment of complete specification on directions From government in certain cases relating to atomic energy. Section 66 : Revocation of patent in public interest. Section 85 : Revocation of patent for Non-working.

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. P.S.Narayan

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2. SURRENDER OF PATENTS

A surrender of patent may be made by patentee under the following provisions and Rules: 1. Surrender of patent may be made at any time. 2. A notice of surrender may be given by the patentee in the prescribed manner, containing an after to surrender the patent-Sec 63 (1). 3. The notice of surrender may be given to the controller, i.

Who shall publish it in the Official Journal;

ii.

Notify every person other than the patentee whose name appears in the Patent Register as having an interest in the Patent – Sec 63 (2).

4. Any person interested may, within 3 months from the date of publication of notice, oppose the surrender of a patent-Sec 63 (3). 5. The opponent may give notice of opposition to the Controller in FORM 14 in duplicate-Rule 87. 6. Upon receipt of the notice of opposition, the Controller shall notify the patentee-Rule 87. 7. The procedure of opposition as specified in Rule 57 to 63 shall apply in case of Surrender of Patent as well. The procedure includes: i.

Filing of written statement ;

ii.

Reply to the written statement;

iii.

Leaving evidence;

iv.

Hearing &costs.

8. If the Controller is satisfied (after hearing the patent and the opposition) that the patent may be surrendered, he may accept the offer and revoke the patent- Sec. 63 (4). 9. While revoking the patent, the Controller may direct the patient to return the patient, and on receipt of the patent, the Controller shall publish the revocation of the patent.

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3. Revocation of patent The act provides various grounds for and modes of revocation of a patent. They may be classified as follows: a) Revocation in the public interest by the Central Government suo moto-sec.66; b) Revocation of patent relating to atomic energy by the Controller-Sec. 65; c) Revocation by Controller for non-working of the patent-Sec. 85; d) Revocation by the High Court on petition for failure to comply with the request of the Central Government to use the invention-Sec. 64 (4) and (5) and; e) Revocation by the Appellate Board on petition by a person interested or the Central Government or the High Court on a counterclaim in a suit for infringement on any of the grounds stated under Sec. 64 (1). a) REVOCATION OF PATENT IN PUBLIC INTEREST---------SEC. 66.

Where the patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may be revoked under the provisions of Sec. 66. A declaration to the effect will be made in the Official Gazette and thereupon the patent will be deemed to be revoked. ―The use of the invention by the patentee should not be contrary to the law or mischievous to the State, by raising prices of commodities at home, or hurt of trade, or generally inconvenient.”2 Revocation of a patent under Sec. 66 is final and is not appealable.3 b) REVOCATION OF PATENTS RELATING TO ATOMIC ENERGY-------SEC. 65

Sec 20 (1) of the Atomic Energy Act 1962 provides that no patent shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control or disposal of atomic energy or which relate to the production or use of any radioactive substance. The machinery for enforcement of this provision is contained in Sec-65 of the Act.4 Raytheon v controller of Patents (1976) IPLR 21. Where an application for a patent is for an invention relating to atomic energy, the Central Government may direct the Controller to refuse to proceed further with the application, and where a patent has been granted, to revoke the patent. No appeal lies against the decision of the Controller under s. 65, (Sec. 117A (2))

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.Terrell on Patents, 12 Ed.,para 6. . Sec.117A(2) an appeal shall lie to the appellate board from any decision, order or direction of the Controller or Central Govt under s.15,16,17,18,19,51,54,60,61,63,66, 4 . There was no corresponding provision under the Patents&Designs Act, 1911. But s.20(3) of the AE Act 1962 empowered the Central Govt to issue directions to the controller to refuse an application for a patent relating to atomic energy. 3

4 c) REVOCATION BY CONTROLLER FOR NON-WORKING------SEC. 89

It may so happen that in spite of the grant of a compulsory licence or the endorsement ―Licences of right‖ having been made or deemed to have been made, the reasonable requirement of the public with respect to the patented invention remains unsatisfied or that the patented invention is not available to the public at a reasonable price. In such a case the patent may be revoked by the Controller under the provisions of s. 89 on an application made to him by either the Central Government or any person interested. An application under s. 85 for revocation of a patent for non-working should be made on FORM 19accompanied by the prescribed fee. It should state the ground on which the application is made, and the facts on which it is based. The application may be made at any time after two years from the date of the order granting the first compulsory licence. d) REVOCATION BY HIGH COURT ON PETITION BY CENTRAL GOVERNMENT--------SEC. 64 (4) AND (5)

Under s. 64 (4) the Central Government may petition the High Court to revoke a patent on the ground that the patentee has failed to comply with its request to use the patented invention for the purpose of Government on reasonable terms. If the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to use the invention in question, it may order the revocation of the patent. Sec .64 (4) can be invoked only by the Central Government. Where , therefore, a patentee has refused to use the invention for any State Government or Government Undertaking, the patent can be revoked under s. 64 (4) only if the request to use was made by the Central Government.

e) REVOCATION BY APPELLATE BOARD OR HIGH COURT-------SEC 64 (1)

Subject to the provisions contained in this Act, a patent whether to grant before or after the commencement of this Act, may be revoked on the petition of any person interested or of the Central Government by the Appellate Board or on a counterclaim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say. 1. Who may apply for revocation. A patent may be revoked by the High Court on any of the grounds stated in s. 64 On the petition of any person interested; or  On the petition of the Central Government by the Appellate Board; or  On a counter-claim by the defendant in a suit for infringement. 2. Petition by “person interested”. Any person including an organisation, who has a manufacturing or trading interest in concerns manufacturing such goods, or who possesses patents relating to the same subject is considered a person interested for presenting a petition for revocation. ―Person interested‖ includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.5

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.sec.2(1)(t)

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If the opposition or application to revoke is not frivolous, vexatious or blackmailing, locus should be granted even if the patient can throw some doubt on the extent of the opponent‘s interest.6 Surajmal Rambux v Laxminarayan Raghunath AIR 1951 Nag 284 A person who is competent to petition for revocation is not restricted to the allegation which determine his competency to make the application, and can allege any of the grounds mentioned in s. 64 (1). 3. Unsuccessful opponent. A person who unsuccessfully opposes the grant of a patent cannot file a petition for its revocation.7 4. Notice to registered patentee. Where in a suit in which an unregistered assignee of a patent was a party the court ordered revocation of the patent without giving notice to the registered patentee. On a subsequent application by the patentee the register of patents was rectified by removing the entry relating to the revocation order passed by the court.8 5. Counter-claim in a suit for infringement. In a suit for infringement the defendant may counter – claim revocation of the patent on any of the grounds mentioned in s. 64 (1). Where the suit for infringement is instituted in a District Court, the suit along with the counterclaim will be transferred to the High Court for decision, as the High Court alone has power to revoke a patent under s.64. 6. Amendment of specification instead of revocation. Under s. 64 (1) the whole patent can be revoked even if only one of the claim happens to be invalid. Where the patent is held invalid, the court has the power to allow the specification to be amended instead of revoking the patent. But the scope is limited as only amendments which are in the nature of disclaimer, correction or explanation will be allowed. Windsurf International Inc v Tabur Marine Ltd. 1985 RPC 59. It would be for the court to direct whether the amendment would be dealt with prior to or at the trial. The amendment might be considered after judgment in special circumstances as when a patent was held valid in part and amendment was required to excise invalid parts—but the assertion of the monopoly unamended with knowledge of ground of invalidity were reasons for refusing the discretion to permit amendments. Obviousness. In testing for obliviousness it was essential to have regard to what was known or used, not just the scientific literature to the exclusion of what was happening in the market. No parent should interfere with obvious variants of what had been done or disclosed before. If it was obvious to be something for one purpose it did not become inventive to do it for another---Hallen Co. V Brabantia Ltd. 1991 RPC 195 at 216 (CA). 7. Standard of proof required. The court will not allow grants, which have on the evidence been proved to be invalid, to remain on the register. The court is not concerned with proof beyond reasonable doubt 6

Madcline AG’s Patent 1973 RPC 91 ,observed that the interest must be a commercial interest and that it must be a genuine interest. There must be the existence, or the likelihood, of real prejudice. Goff, L.J. observed that the prospect of prejudice must be real, not speculative or fanciful, and it must be prejudice to represent commercial interest, all quoted and applied in Ajay industrial corporation v Shiro Kanao AIR 1983 Del 496. 7 . Surajmal Rambux v Laxminarayan Raghunath decided under the Act 1911. 8 In re Hiralal Banjara AIR 1937 Cal 365, s.64(3) of the Patents &Designs Act 1911.

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which is required in criminal cases, but with the normal standard required in civil cases, namely proof based on the balance of probabilities.9 A patient should not be defeated a long lapse of time, when the challenge is based on oral testimony which is hard to check. If, therefore, the subject-matter, utility and novelty are to be found, the court will do everything to uphold a patent, and not defeat it.10 8. Onus of proof. The onus of establishing invalidity lies with the petitioner for revocation or the defendant in a suit for infringement who alleges invalidity.11 9. Procedure for revocation. The procedure for revocation of a patent before the High Court is governed by the rules made by the High Court under s. 158 and the relevant provisions of the CPC in respect of petitions in general.

Grounds for revocation of a patent

This chapter deals with the grounds under which a patent may be revoked under s. 64 (1). There are in all 17 grounds listed in the section. Broadly they may be grouped under three heads as follows: Grounds relating to the rights of the patentee and his conduct. 1. 2. 3. 4. 5. 6.

Patentee not entitled to the patent-----s. 64 (1) (b). Patent wrongfully obtained as against the person entitled---s. 64 (1) (c). Patent obtained by false suggestion or representation----s. 64 (1) (j). Failure to disclose information regarding foreign applications—s. 64 (1) (m) Noncompliance with directions for secrecy---s. 64 (1) (n). Amendment of specification obtained by fraud---s. 64 (1) (o).

Grounds relating to the invention and its quality. 1. 2. 3. 4. 5. 6.

Subject of a claim not an invention---s. 64 (1) (d) Subject of a claim not a patentable invention---s. 64 (1) (k) Invention claim was secretly used before the priority date--- s. 64 (1) (l) Invention has claimed already the subject of a prior grant----s. 64 (1) (a) Invention lacks novelty having regard to prior knowledge or prior use---s. 64 (1) (e). Invention is obvious or does not involve an inventive step having regard to prior knowledge or prior use---s. 64 (1) (f). 7. Invention not useful-----s. 64 (1) (g). 8. The invention claimed was anticipation having regard to the knowledge, oral or otherwise within any local or indigenous community in India or elsewhere, ---s. 64 (1) (q).

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Laguerre’s patent 1970 RPC 587 at 595 . Bonnington Castings Ltd. V Wardlaw(1965) AC 613. Bombay AgarwalCo. V Ramchand AIR 1953 Nag 154 at 164. 11 General Tire&Rubber Co. v firestone Tyre& Rubber Co. Ltd.1971 RPC 173 at 239. 10

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Grounds relating to a description of the invention. 1. Invention not sufficiently described----s. 64 (1) (h). 2. Claims not clearly defined and not fairly based—s. 64 (1) (I). 3. The complete specification does not disclose or wrongly mention the source or geographical origin of biological material used for the invention---s. 64 (1) (p).

1.

Patent granted to persons not entitled to apply.

Section 64 (1) (b). ―The patent was granted on the application of a person not entitled under the provisions of this Act to apply‖ The true and first inventor or his legal representative or assignee was not the applicant or one of the applicants for the patent are entitled to apply for patents. If the application for the patent was made by any other person other than those entitled, the patent is obviously bad as being contrary to the provisions of sec. 6, A person who was the communicate or the first importer of the invention in India is not a person entitled to apply under the Act. A patent obtained under the Act by an importer or communicate from abroad, it could be revoked under s. 64 (1) (b).

2. Patent wrongfully obtained. Section 64 (1) (c). ―The patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims.‖ When the petitioner happens to be the person entitled to apply for the patent and the patent was obtained wrongfully in contravention of his rights. The petitioner alleging this ground must be a person entitled to the patent.

3. False suggestion or representation. Section 64 (1) (j). ―The patent was obtained on false suggestion or representation.‖ There is no limitation as to the nature of the false suggestion or representation. It may thus relate to the specification or relate to any fact or statement required to be made in connection with the application for a patent. If the false suggestion is alleged, it must be established on the basis of the documents in which the alleged false suggestion was made, the onus being of course on the objector.12 12

Patent concern N.V. v Melotte Sale Co. Ltd. 1968 RPC263.

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Where the process claimed depends upon some chemical substance as a starting point, the patent will be invalid if it is shown that such chemical substance is not non-existent but impossible, as the claim then becomes an impossible process.13 Where the specification is addressed to a manufacturer and not to a chemist, errors in chemistry are unimportant except to the extent to which they might mislead the manufacturer.14 If the ant theory upon which the patent is found is shown to be completely wrong, the patent will be invalid.15 The mere fact that misleading statement may be found in the body of a patent specification is not sufficient to establish invalidity. What has to be established is a misrepresentation of such material that the Controller was misled into granting a patent.16 If a specification describes several processes, or several combinations of machinery, and affirms that each will produce a certain result, which is the object of the patent, and some one of the processes is wholly ineffectual and useless, the patent will be bad, although the mistake committed by the patentee may be such as would be at once observed by an ordinary workman.17

4. Failure to disclose information. Section 64 (1) (m). ―The application for the patent has failed to disclose to the Controller the information required by s. 8 or has furnished information which in any material particular was false to his knowledge.‖ Section 8 of the Act requires the application for a patent to furnish the particulars regarding any foreign applications. If the information furnished is false in any material particular, that can also constitute a ground for revocation. But the false information furnished must be known to the applicant as false. Thus where the applicant gave some information believing them to be true, although they were in fact false, such a case may not come within the scope of s. 64 (1) (m). Similarly any false information furnished by bona fide mistake may be excused.

5. Noncompliance with secrecy provisions Section 64 (1) (n). “The application contravened any direction for secrecy passed under s. 35‖. Under sec 35 of the Act the controller may issue directions imposing restrictions on the publication or communication of information relating to inventions which the Central Government has considered relevant for defence purposes. If any person fails to comply with these provisions, his application will be deemed to have been abandoned, and the patent, if granted, will be liable to be revoked under s. 64 (1) (n). Such a person is also punished with imprisonment or fine.

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Monnet v Beck 1897 14 RPC 777 at 846,847. ‘Z’Electric Lamp Manufacturing Co. Ltd. V Marples, Leach & Co. Ltd. 1910 27 RPC 737. 15 Le Rasoir Apollo’s patent 1932 49 RPC 1 at 15. 16 Intalite v Cellular Ceilings 1987 RPC 537 at 547. 17 Simpson v Holliday 12 LT(NS)99. 14

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6. Amendment of specification obtained by fraud Section 64 (1) (o). ―Leave to amend the complete specification under s. 57 or 58 was obtained by fraud‖. Section 57 empowers the Controller to allow an amendment of the specification on application made by the application for patent or by the patentee. Section 58 empowers the Appellate Board or High Court to allow amendment of a specification in a revocation proceeding. The validity of an amendment can be challenged if it was obtained fraudulently. Section 64 (1) (o) makes it a ground for revocation of the patent itself.

7.

Claim not an invention

Section 64 (1) (d). “The subject of any claim of the complete specification is not an invention within the meaning of the Act.‖ A patent can be granted only for an invention as defined in s. 2 (1) (j): invention means a new product or process involving an inventive step and capable of industrial application. Thus it is obvious that if the patent granted does not satisfy this requirement it is invalid. Section 64 (1) (d) provides a ground for rectification in such a case.

8.

Claim not patentable

Section 64 (1) (k). ―The subject of any claim of the complete specification is not patentable under the Act.‖ There is some overlap between this ground and the ground under s. 64 (1) (d), for a claim which is not an invention is obviously not patentable under the Act. But the section would appear to be applicable particularly to those cases which, while satisfying all the requirements for a patentable invention, are not patentable by the specific provisions of the Act. Use of invention contrary to law. Under s. 3 (b) an invention the primary or intended use of which would be contrary to law is not a patentable invention. The same ground can, therefore, be taken up for attacking the validity of a patent by invoking s. 64 (1) (k) as being a claim not patentable under the Act. In Pessers & Moody V Haydon & Co. 1909 26 RPC 58. It was held that an invention of an improved game of skill and apparatus for playing the same was not necessarily used for gambling, but that it required skill in playing the game successfully and the invention was not for an illegal purpose. Secret use Section 64 (1) (l). “The invention so far as claimed in any claim of the complete specification was secretly used in India; otherwise for a purpose of reasonable trial or experiment or by the government or any person authorised by the government.‖

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Secret used on a commercial scale is sufficient to invalidate a patent. If use of the invention is made in the presence of a person other than the inventor which enables them to appreciate the essentials of the invention, the user would in general constitute publication, although it was experimental only. 18 Lallubhai Chakubhai Jariwala v Samaldas Sankalchand shah AIR 1934 Bom 407 at 419. It was held that it invalidates a patent where the secret process has been used for profit or where the invention was communicated to a third person in a manner which both in law and in equity allowed him to do what he liked with the invention. J. Lucas (Batteries) Ltd. And another v Gaedor Ltd. And others 1978 RPC 297 at 384. Where the invention related to storage batteries used in automotive vehicles the alleged prior user consisted of the use of tests in defendants employees' cars. It was held that such use was secret used.

9. Prior grant and prior claim Section 64 (1) (a). ―The invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of the earlier priority date contained in the complete specification of another patent granted in India‖. Patent granted to only one person. It is the principle of Patent Law that a patent for an invention is granted only to one person. It follows therefore that a patent should be capable of being revoked if it is shown that it is the subject-matter of a prior grant. The controller has the power to refuse an application on the ground of prior grant or prior claiming. These provisions are made to avoid the grant of patent for the same invention to more than one person. Confidential information – oral disclosure whether confidential. It was inherently more likely that someone would remember the content of a lecture he had given than the content of a one-to-one conversation.19 Identity of claim necessary. In order to bring a case within the scope of s. 64 (1) (a) it must be shown : (1) that a claim in the patent sought to be revoked was the subject of an identical claim in a patent of earlier priority date; and (2) that the earlier is valid.

When the case made against a patent is that of prior grant, and not prior publication, there must be proof, not only of similarity in essentials, but of identity20. For an instance of a patent held invalid on the ground of prior grant- Rowland and Kennedy v The Air Council 1925 42 RPC 433 at 441. Equivalent of invention. Syntax S.A.’s Patent, it was held that in determining whether there was substantial equivalence between one claim and another, it was not sufficient to look merely at the form of the claims which depends on the idiosyncrasy of the draftsman. Prior particular claim included in the subsequent general claim. 18

Ganendro Nath Banerji v Dhanpal Das Gupta AIR 1945 Oudh 6 at 9. VISX Inc. v Nidek & Co. Ltd. 1999 FSR 405 at 462. 20 Blackett v Dickson & mann Ltd. 1909 26 RPC 19

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The principle involved in the claim is substantially new, the applicants are entitled to include in their claim all arrangements which the exception only. Of the arrangement claimed in the prior specification. This may be done by a suitably worded disclaimer.21 Validity of prior grant necessary. Invalidity of a patent on the ground of prior grant can be pleaded only if the prior grant is a valid one.22

10.

Lack of novelty or anticipation.

Section 64 (1) (e). ―The invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in s. 13.‖ Anticipation. The notion behind anticipation is that it would be wrong to prevent a man from doing what he has lawfully done before the patent was granted, windsurfing v Tabur 1985 RPC 59 at 77 General tires v Firestone 1972 RPC 457. These requirements are strict. It was observed in this case: ―a signpost, however clear upon the road to the patentee‘s invention will not suffice. The prior inventor must be clearly shown to have planted his flag in the precise destination before the patentee.‖ For a claim to be anticipated, the prior disclosure must contain a clear description of something or clear and unambiguous directions to do or make something that would infringe the claim if carried out after the grant of the patent. Where something within the claim had been disclosed it did not matter that the disclosure was less preferred. Validity of product claims- anticipation by prior unpublished patent application having method claims. Where it is alleged that the patent is invalid on the ground of anticipation by prior unpublished patent application having method claims; if the teaching of the earlier application was unambiguous and the teaching of the process inexorably taught the product of that process, evidence of experiment to prove that the claimants method did produce the product of the patent in suit was both relevant and admissible. Smith Kline Beecham PLC’s Patent 2003 RPC 114 (CA). It is settled law that any person is entitled to do that which is old, namely that which has been described in a prior published document and be confident that he will not infringe the patent of another. 23 The cases emphasise the importance of avoiding ex post facto analysis of the invention and the fact that the prior documents should not be read together to form a mosaic.24 State of art. The set of facts against which lack of novelty and obviousness is judged is often called the ―state of art‖. Merrell Dow Pharmaceuticals v H.N. Norton & Co. The defendant alleged that the patent was invalid on the ground of anticipation by prior disclosure but not by uninformative prior use. The fact that the public did not know how the process works or what is the product produced is irrelevant. Although nobody had known that the product existed it had still formed part of the state of the art.

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Official Rulings (c) 1922 39 RPC App p. Mica Insulator Co. v The Electrical Co. Ltd. 1898 15 RPC 489 at 495. 23 Merrell Dow v Norton 1994 RPC 1 at 13. 24 Glaverbel v British coal Corp. 1994 RPC 443 22

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Novelty essential for patent. Section 64 (1) (e) provides a ground for revocation based on lack of novelty. The definition of invention itself states that the invention must be new. Thus novelty in the alleged invention is an essential prerequisite for obtaining a patent grant under the Act. A claim may be held invalid if the matter contained therein was publicly known or publicly used in India before the priority date of the claim. In the cases of patents granted under the pervious Act documents published outside will not be taken into consideration in determining whether the claim is anticipated by prior publication. Under the present law for the purpose of determining novelty documents published anywhere in the world may be considered.

Publicly known or publicly used. Import into India before the priority date of a product made by the patented process would amount to public knowledge or public use, except where such importation was for the purpose of reasonable trial or experiment. Publication. If the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to a making available to the public.25 Public knowledge, public know and public concerned. Publication is not sufficient to establish public knowledge. On the other hand, a thing may be publicly known without been published in a document, as for example, when it has been publicly used. In order to establish that a thing is publicly known it is not necessary to show that it has been published in a document, for it may form part of the common knowledge among the public concerned, although not found in any book. To satisfy the requirement of being publicly known as used in class. (e) And (f) of s. 64 (1) it is not necessary that it should be widely used to the knowledge of the consumer public. It is sufficient if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of commerce or consumers.26 Confidential communication. If , however, the communication is made to any person or number of persons under the bond or seal of confidence, that a communication does not ensure to the benefit of the public, and there is no publication.27 The inventor is entitled to ask his friends confidentially to help him to advise him, provided they are not so many that they may be regarded as a portion of the public.28 Law of known anticipation. To establish anticipation based on what was known before the priority date of the claim it must be shown ―that in some prior publication there is to be found information about the alleged invention equal for the purpose of practical utility to that given by the patent in suit.29 In Goodyear Tire and Rubber Company Appln. Observed that a later process claim is anticipated in the strict sense if the result of carrying out a process described in a prior document in fact inevitably result in something fairly within that claim even if the description itself may not be sufficient to act as an anticipation alone.

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Bristol-Myer Co.’s Appln. 1969 RPC 146 at 155. Monsanto v Coramandal AIR 1986 SC 717. In this case the section of the public was those who as men of science or commerce were interested in knowing about herbicides which would destroy weeds but not who must have been aware of the discovery. 27 . Humpherson v Syer 1887 4 RPC 407 at 414. 28 Lallubhai Chakubhain v Chimanlal Chunilal&Co. AIR 1936 Bom 99 at 107. 29 Martin&Biro Swan Ltd. V Millwood Ltd. 1956 RPC 125 at 133. 26

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11.

Invention anticipated by traditional knowledge.

Section 64 (1) (q). “If any invention claim in complete specification is anticipated by traditional knowledge, the patent may be revoked.‖ The invention so far as claimed in any claim of the complete specification was anticipating having regard to the knowledge, oral or otherwise, available, within any local or indigenous community in India or elsewhere. This ground was introduced by the patent (amendment Act) 2002. The objection of this ground would appear to prevent the monopolization of many herbal extracts, which are used by people in India for their medicinal properties or making health care and cosmetic products, through the patent route. Examples are neem oil, turmeric etc. Similarly, there are many varieties of agricultural products like rice, pulses, fruits etc., The seeds of which or the process of manufacturing new varieties of plants which may become subjectmatter of patent protection.

12.

Obviousness or lack of inventive step.

Section 64 (1) (f). ― The invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim.‖ Obviousness. In General Tire case it was stated ―obvious is, after all, a much used word and it does not seem to us that there is any need to go beyond the primary dictionary meaning of ―very plain‖. In Parks-Gramer v Thornston 1966 RPC 407 at 417. ―Obviousness is not a concept which can be clarified by elaborate exegesis and we do not propose to cite the many cases to which we have been referred to which various judges at various times, both before and after the phrase ―is obvious and does not involve any inventive step‖ was first inserted in the patents Acts, have expressed the concept of obviousness, or lack of subject-matter, as it was previously called, various ways appropriate to the particular invention whose validity was challenged on this ground.‖ The policy behind the law in this area is that one trader should not be prevented by a statutory monopoly from doing something which, at the date of the patent, is obvious. A trader must be free to adopt a product, process or design which is the, or one of the, obvious modification over what has gone before without the need to look over his shoulder to consider whether it is protected by a patent. Obviousness is tested against the mental and development norm of a national uninventive person skilled in the art. In doing that the law is protecting not only established business which may wish to adopt new product, processes or design or modify existing ones but also the new entrant who has employed person skilled in the art to help him get into the market. Each of those categories of trader must be free to adopt what is obvious. Therefore it is legitimate to approach the prior art as if it had been collected and put on the desk of the new entrant at the priority date.30

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Brugger v Medico Aid 1996 RPC 635 at 653.

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The inventive concept. It is important to identify correctly the inventive concept which the patient must be taken to have put forward as underpinning his monopoly. For this purpose it is necessary to bear in mind that the relevant inventive step must apply to all embodiments falling within the claims which are said to have independent validity. Inventive step. The court has to make two finding of the fact; what had been included in the state of art, and whether the claimed inventive step would have been obvious to a person skilled in the art. In applying this criterion and making the findings, the court would almost invariably require the assistance of expert evidence. The evidence of properly qualified expert witness on whether the relevant step would have been obvious to a skilled man having regard to the state of the art would be the primary evidence for the court. Molnlycke A.B. v Proctor and Gamble ( no. 5) 1994 RPC 49 at 113. (CA) followed; The court would expect the experts to give evidence of what the skilled man would have known, the knowledge being common general knowledge. The court would also need evidences from the experts to establish whether any published information had become common general knowledge. It was not enough to show that a matter was known to some but not to others. Monsanto Co. V Merck and Co. Ins. 2000 RPC 709 (Patents Court). Held that the patent was not infringed that it was invalid for anticipation, obviousness insufficiency and added matter and that it was not entitled to the priority date. DSM NV’s Patent 2001 RPC 675 Patents Court. The patent was revoked on the ground of obviousness over common general knowledge and insufficiency in relation to certain claims. How obviousness to be judged. ―The matter of obviousness is to be judged by reference to the ―state of the art‖ in the light of all that was previously known by persons versed in that art derived from experience of what was practically employed, as well as from the contents of pervious writings, specifications, text books and other documents.‖31 There may be invented in a ―combination‖.32 The question of obviousness is seldom easy to decide. It must decide objectively by taking into consideration all the relevant circumstances of the case.33

13.

31

Inutility.

Allmanna Svenska Elektrisk A/B v the Burntisland shipbuilding Corp. Ltd. 1952 69 RPC 63 at 69.(CA) British Celanese Ltd. V Courtaulds Ltd.1935 52 RPC 171 at 193. 33 Neilson v Harford 1841 1 (WPC) 295 at 310. 32

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Section 64 (1) (g). ―The invention, so far as claimed in any claimed of the complete specification, is not useful.‖ One of the essential requirements of a patentable invention is that it should be useful. This follows from the definition of ―invention‖ which says that ―invention means any new and useful‖ ect. It is therefore natural that a patent which is not useful must be capable of being revoked on the ground of inutility.

Commercial utility. The element of commercial pecuniary success as no relation to the question of utility in patent law generally, though of course where the question is of improvement by reason of cheaper production, such a consideration is of the very essence of the patent itself, and the thing claimed cannot be considered an invention unless the condition is fulfilled.34 Relevant date. The utility of the patent must be judged by reference to the state of things at the date of the patent; if the invention was then useful, the fact that subsequent improvements have replaced the patented invention and rendered it obsolete and commercially of no value, does not invalidate the patent.35 Test of utility. ―Not useful‖ in the patent law means that the invention will not work, either in the sense that it will not operate at all or more broadly, that it will not do what the specification promises that it will do. If the invention will give the result promised at all, the objection on the ground of want of utility will fail. The meaning of utility is therefore useful for the purposes indicated by the patentee whether or not commercial utility is involved. It is sufficient if the invention in the hands of a competent person does what it purports to do.36 Process dangerous or impossible. Vidal Dyes v Levinstein 1912 29 RPC 245 at 271. Held , The patentee has claimed a process which is so dangerous that an expert chemist would avoid it, or even a process which an expert chemist would take to be impossible, the patent will be held invalid. All the results claimed are not produced. Turner v Winter 1 Webst.PC 82. Held, the patentee says that by one process he can produce three things and he failed in any one, the consideration of his merit, and for which the patent was granted fails.

14.

Insufficiency and Non-Disclosure of best method.

Section 64 (1) (h). ― The complete specification does not sufficiently and fairly describe the invention in the method by which it used to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification or not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of , the art to which the invention relates, to work the invention or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection.‖

34

Badische Anilin und Soda Fabrik v Levinstein 1887 4 RPC 449 at 462. (HL). Edison and Swan Electric light v Holland 1889 6 RPC 243 at 283. 36 Mallard v Philco 1935 52 RPC 261 at 287. 35

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If the patient does not properly discharge his duty in this respect his patient should be capable of being revoked on that ground section 64 (1) (h) provides for this. Section 64 (1) (h) —the patent could be revoked if the specification does not sufficiently and fairly describe the invention in accordance with the explanation contained therein. It is submitted that the expression ―fully and particularly describe‖ is wider in scope than the expression ―sufficiently and fairly describe.‖ Section 64 (1) (h) contains really two independent grounds for revocation, namely, (1) insufficiency of description of the invention and (2) non-disclosure of the best method of performing the invention known to the applicant there appears to be no substantial change in the previous law. Sufficiency must tested as on the date of acceptance of the complete specification. Where a specification has been amended the objection of insufficiency must be restricted to statements forming part of the amended specification and the relevant date for testing sufficiency of the amended document is the date of acceptance of the original specification.37 Insufficiency-ambiguity- “Ambiguity‖ is only a convenient shorthand for the statutory language it is not itself a statutory term, in Van der Lely v Ruston’s 1985 RPC 461 at 474. Insufficiency-general principal- In considering the sufficiency of a patent, the applicable principle was that the claim must equip rate with the invention. American home products Co. V Nopartis pharmaceuticals U.K. Ltd. 2001 RPC 159 (CA). Was held that if A rapamycin was construed so as to cover derivatives of rapamycin the patent could be invalid for insufficiency. It was held that ―rapamycin‖ should be construed as excluding its derivatives and on such construction rejected the attack on insufficiency and made a declaration of non-infringement. Attack on insufficiency was rejected and the apple allowed. Two kinds of insufficiency – classical insufficiency and Biogen insufficiency. Classical insufficiency exists where the teaching of the patent did not support that which the teaching specifically purported to deliver. A claim in Biogen insufficient if it was cast more widely than the teaching of the patent enabled.38 Sufficiency- The law contemplated that patents would not lack sufficient even through the claims covered inventing improvements. Otherwise there would be no room for patents which disclosed a principle of general application. The question of sufficiency had to be decided by the court through the eyes of the skilled person, who was deemed to be seeking success rather than failure. As a condition of sufficiency, section 64 (1) (h) requires in express terms that the description of the method or the instruction for the working of the invention as contained in the complete specification or by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of , the art to which the invention relates, to work the invention. In Eastman Kodak Co.’s Appln. 1970 RPC 548 there was no description of how making a product which fulfilled the full extent of the claim made. Whilford, J. Held that an application could be rejected on the basis of insufficiency, where claims were broad and indeterminate and of a speculative character. The description of the invention and the method by which it was performed were insufficient and the opposition on that ground succeeded.

37 38

Anxionnaz v Rolls-Royce 1967 RPC 419 at 471 to 472. Kirin-amgen Inc. v Roche Diagnostics GMBH 2002 RPC 1 (Pg 300 to 310).

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Conditions necessary for sufficiency. Insufficiency of description has two branches; (1) the complete specification must describe an embodiment of the invention claimed in each of the claims and that the description must be sufficient to enable those in the industry concerned to carry it into effect ‗without their making further inventions‘; and (2) that the description must be fair, i.e., It must not be unnecessarily difficult to follow.39

15.

Geographical origin not disclosed or wrongly mentioned.

Section 64 (1) (p): “The complete specification does not disclose or wrongly mentions the source of geographical origin of biological material used for the invention‖. A patent be revoked if the applicant had wrongly mentioned or not disclosed the complete specification, the source of geographical origin of biological material used in the invention. One of the object of the complete specification is that when the patent has expired any person skilled in the art must be able to produce the patented product or use the patented process of the materials furnished in the specification. The manufacture of many drugs particularly antibiotic products require as a starting point so specified biological material. It is therefore the duty of the patentee to statements in the specification where such materials will be available.

16.

Claim not clearly defined are not fairly based.

Section 64 (1) (I). ―The scope of any claim of the complete specification is not sufficient and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification.‖ Section64 (1) (I) contains really two independent grounds for revocation. They are: (1) that the scope of any claim is not sufficient and clearly defined; and (2) that the claim is not fairly based on the matter disclosed in the specification. The former is generally known as ambiguity, although the word itself is not used in the section. Fair basis. In Glaverbel v British Coal Corp. 1994 RPC 443at 498, the law is stated as follows: Whether the claim is based on the matter disclosed in the specification is a question of construction. The starting point in this inquiry is to look first at the specification to see what it is that the inventor is described as the inventive concept. In Van der Lely case at 595, May, L.J., stated that the question is whether the ―material in the specification so construed provides a fair ground or base for the claims they're made for that is, as between the patentee and the public.‖ If on a fair rendering of the specification, the claim for the invention are wider than the totality of disclosure in the specification, the claim is not fairly based on the specification. In specifying the positive requirement of a ―fair basis‖ in the Act the legislature has given recognition to the basic requirement that there must be adequate consideration for the grant. 39

Farbwerke Hoechst v Unichem Laboratories. AIR 1969 Bom 255 to 266.

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In Letraset Ltd. V Rexel Ltd. 1974 RPC 175 at 196. Graham, J. Stated : ―the intention of the legislation in introducing into the Act the concept of ‗fair basis‘ both in section 5 and in section 32 was in my judgment to try to ensure that in such cases the Court or Tribunal should hold the balance fairly as between the patentee and the public.‖ The question of fair basis is entirely a matter of construction of the Court. What some person acting on behalf of the patentees or some foreign patent office might have thought about the extent of the disclosure or the width of the claim in Nilil AD REM to what the Court had to decide.40

RELEVANT CASE LAW: 1. Low Heat Driers (p) Ltd. Vs. B. George PTC 2001 21 725, it was held that once challenging is made with regard to the patent claimed by the plaintiff and its revocation is sought for by the defendants, all further proceedings should be done only by the High Court. 2. Ajay Industrial Co. Vs. Shiro Kamas AIR. 1983 Del. 496 it was held that the specification and claims have all to be read together and reasonably and benevolently constructed. In the absence of any technical or expert evidence either indicating that these statements are wrong or that the article produced incorporates no new devices to get over these defects, it can hold that the patent embodies no new discovery or invention. 3. In AIR 1945 OUDH 6 ACP9, it was held that Section 64 (1) of the Act provides for the revocation in case the claimed invention was secretly used before the priority date. Prior secret use will invalidate the patent (except for certain conditions specified u/s 64 (3) of the Act. If the secret use is for trail or experimental purposes only, the patent will be valid. 4. In AIR 1945 order 6 at 99, it was held that ― that the dictionary meaning of the word ‗obvious‘ is ―easily perceived by the senses and grasped by the mind‖ or ―easily discovered or understood‖, or ―something which is clearly or plainly evident to a person's fair knowledge of the subject‖. 5. AIR 1986 172 SC Patent No. 125381. The plaintiff was mere camouflaging a substance whose discovery was known throughout the world and trying to enfold it in their specification relating to patent no. 125381. The patent was therefore, held to be liable to be revoked. 6. Monsanto Co. Vs. Corromandel Indal Products(p) ltd. 1986 PTC 195 SC. Ruled that ―formed beginning to the end, there was no secret and there was no invention by the plaintiff. The ingredients, the active ingredients, the solvent and the emulsifier were known, the process was known, the product was known and the use was known. The patent was therefore held liable to be revoked. 7. Star Textiles Engg. Works Ltd. Vs. J.M. holdings Ltd. And Others1973 IPR 160. The court held that the complete specification of the patients did not sufficiently and clearly described the respective method by which it is to be performed, the said specification by themselves were not sufficient to enable a person of average skill and knowledge to work the invention and that the applicants were entitled to protection, the patents would stand revoke.

40

Schering v ABM 1987 RPC 185.

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8. F. Z. Huemer Vs. New Yash Engg. 1996 PTC 16 164 Del. The court held that arrangement or rearrangement of the already known, the device does not amount to an invention. No sufficient ground exists for revocation for the plaintiff patent, the defendant has a very good defence to the plaintiff suits. 9. There are cases where it is held that when an application is filed seeking for revocation of the patent and questioning the validity of the patent the court should not grant an injunction. It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed. In this connection reference may be made to a decision of the Madras High Court in V. Manicka Thevar Vs. M/s. Star Plough Works, , wherein it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant. 10. In M/s. Niky Tasha India Pvt. Ltd. Vs. M/s. Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136 at 140 (supra) it was observed by this court that no injunction should be granted when there is a serious question of the validity of the design to be tried in the suit and an application for cancellation has been made. 11. In Hotchkiss v. Greenwood, (1851) 13 L Ed 683 at p. 691, col. 1 it was observed while considering the patent granted regarding the manufacture of a particular type of knob: -"It seems to be supposed on the argument that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metal knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob, it being enclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable. This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of wood knob, or one of bone or ivory or of other materials that might be mentioned. Now if the foregoing view of the improvement claimed in this patent to be correct, it is quite apparent that there was no error in the submission of the question presented at the trial to the jury; for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain than were possessed by an ordinary mechanic acquainted with the designs, there was an absence of that degree of skill and ingenuity which constitutes the essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor." 12. The view expressed above was followed in the case of Cuno Engineering Corporation v. Automatic Devices Corporation, (1941) 36 L Ed 58 at pp. 62 and 63 and it was further observed therein :

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"That is to say, the new device however useful it may be must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain....." It was further observed in the above mentioned case: -"A new application of old device may not be patentable if the result claimed as new is the same in character as the original result, even though the new result had not before been contemplated." 13. In the case of Rado v. John Tye & Sons Ltd., 1967 RPC 297 at p. 305 it was observed: -"The material question to be considered on a case like this is whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject; it must not be the obvious or a natural suggestion of what was obviously known." 14. In case Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corporation, (1950) 95 L Ed 162 on pp. 166 and 167 the Supreme Court of the United States expressed itself on the point thus : "Courts should scrutinise combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained, when on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skilful men. This patient has added nothing to the total stock of knowledge but has merely brought together segments of prior art and claims them in the congregation as a monopoly." 15. In Corpus Juris Secundum Vol. 29, p. 268 (para 54) the point has been summed up like this: -"Not every improvement is an invention. While superior utility is a circumstance to be considered in determining the question of invention (as discussed) the attainment of comparative superiority or greater excellence in that which is already known does not of itself amount to invention. There must be something more than a mere carrying forward or more extended application of a known principle or an original idea of another, a better doing of that which has already been done, the attainment of a more perfect result by the same methods, or the correction of a more or less obvious defect or fault, such as might be expected of a skilled mechanic in the particular art. As frequently stated, the perfection of workmanship, however much it may increase the convenience, extend the use, diminish expense, is not patentable. An advance step which would occur to one skilled in the art when investigating is not invention..... An improvement of old device or method is not patentable merely because it permits a product to be produced more cheaply, or because it produces something which is more merchantable, or more compact or more efficient, or more attractive in appearance. While a greater degree of control may be an improvement, such a change, in the absence of a performance of a new function, generally is not regarded as invention."

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