An unclear precedent : Accept the offer to surrender or revoke the patent? (IPAB order 29 of 2016)

Sribindu Chivukula recently wrote a post for us on the IPAB order relating to revocation proceedings where an offer to surrender the patent was also previously made. Sribindu concluded that “While the Act does not categorically state/forbid patentee from surrendering a patent through opposition/revocation proceedings, the IPAB’s ruling in the present case clearly established that a surrender is possible only when there are no proceedings pending with respect to the patent. If, however, any such proceedings are pending at the time of surrender, then the applicant should contest the proceeding before bailing out by surrendering the patent. Alternatively, all the parties involved in the opposition/revocation proceeding must be amenable to the patentee’s decision to surrender the patent”.

In continuation, we have for our readers Krishnaraj Pundareekam Chinniah’s interpretation and take on this order.

Krishnaraj is a mechanical engineer by education. He started working in the field of patents in 2010. After having worked on varied patent related assignments for three and half years in Gurgaon and Bangalore, he moved to Munich to pursue his masters in Intellectual Property and Competition Law. He is currently training at a law firm in Munich to become a European patent attorney.

An unclear precedent: Accept the offer to surrender or revoke the patent? (IPAB order 29 of 2016) 

by Krishnaraj Pundareekam Chinniah

By its order no. 29 of 2016 (hereinafter referred to as “the Order”) the Intellectual Property Appellate Board (IPAB) (hereinafter referred to as “the Board”) of India revoked patent numbered 224314 (hereinafter referred to as ‘314 patent) assigned to “ICOS Corporation” (see, paragraph 18 of the Order).

‘314 patent relates to free β-carboline drug and a method of manufacturing thereof (see, e.g., the title of the patent). The grounds for revocation raised by the Applicant were under Section 64 (1) (d), (f), (h), (i), (k), and (m) of the Patents Act, 1970 (hereinafter referred to as “the Act”). By the Order, the Board revoked patent no. ’314. However, in arriving at its conclusion, the Board’s decision does not clearly answer the question of whether the offer to surrender a patent by the Patentee has any effect on revocation proceedings of the same patent.

According to Section 63 of the Act, a patentee may offer to surrender his/her patent by giving notice in the prescribed manner. Particularly, section 63 of the Act is clearly worded and deals with “Surrender of patents” and the procedure associated with the same. This is also rightly acknowledged by the Board in paragraph 15 of the Order –“the Controller has to follow the procedure contemplated under Section 63 of the Act” [emphasis added]. Such a reading follows naturally from the language of Section 63 of the Act which unambiguously and explicitly states that the Controller shall publish the offer to surrender and also when there is a notice of opposition to the offer of surrendering a patent, the Controller shall notify the patentee of the same. Section 63 also clearly states – “[i]f the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent”. [emphasis added]

It should be noted that when certain terms under Section 63 of the Act are to be interpreted, definitions provided within the Act are to be used. For instance, the terms “patentee”, “patent”, “person interested”, “prescribed manner” and the like are defined under section 2 of the Act.  While cross references to the definition section of the Act are evident, it is pertinent to note that the Act deals with “surrender” of patents separately without reference to Section 64 of the Act which deals with “revocation” of a patent.

Given the scheme of the Act, it is logical to conclude that the “surrender” of a patent as a procedure is independent of “revocation” of a patent.

However, paragraph 15 of the Order, appears to mix-up the two concepts of surrender and revocation. The following points will explain why the Board’s uncertain language in paragraph 15 of the Order sets an unclear precedent on the issue of whether an offer to surrender a patent by the patentee affects revocation proceedings of the patent.

Of particular importance is the Board’s language in paragraph 15 which reads:

“[t]he instant application filed for revocation of the impugned patent has been filed as per provision under section 64 of the Indian Patents Act. As we have already pointed out the grounds raised by the applicant herein has not been disputed by the first respondent and more particularly the first respondent having clearly and categorically stated in their communication dated 09/02/2016 to the IPAB Registry and the Controller of Patents that they no longer has interest in the impugned patent and they are surrendering the impugned patent to the Patent Office…” [emphasis added]

While reading the above paragraph, one understands that the Board has clearly taken the reasoning provided in the letter addressed to the IPAB as well as the Controller of there being no interest in the impugned patent, into consideration while arriving at the conclusion of revocation. The Board should have ended its reasoning at –“..[g]rounds raised by the applicant herein has not been disputed by the first respondent…” Furthermore, taking the letter submitted to the Controller into consideration which is necessarily a letter to offer to surrender the patent under Section 63 of Act is not applicable to the “revocation” proceedings of the patent whatsoever.

Moreover, the Board has stated that the principles laid down in two decisions i.e., U.K. patents court decision and the U.K. patent office’s decision in the matter of patent 1527418, relevant excerpts of which are cited in paragraph 16 of the Order, are “squarely applicable”. Both the decisions cited in paragraph 16 of the Order approximate their teaching to: revocation proceedings of the patent cannot be mixed with the offer to surrender by the patentee. However, on reading the above cited excerpt of paragraph 15 of the Order, clearly what has been stated is exactly opposite to what the cited decisions have held.

In conclusion, the Board’s rationale in paragraph 15 of the Order leads to uncertainty in determining whether the offer to surrender a patent by the patentee has any effect on the revocation proceedings of that patent. In the context of Indian patent law, where we have a dearth of case law interpreting certain sections of the Act, it is undoubtedly important to have clear and assertive orders. Unfortunately, this does not appear to be the case in the present Order.

Aparajita Lath

Aparajita graduated from the WB National University of Juridical Sciences, Kolkata. She was formerly an editor of the NUJS Law Review. She is a lawyer based in Bangalore. All views expressed by her on the blog are her personal views.

One comment.

  1. Preston

    For all practical reasons, the decision suffices the requirements of both the parties involved, as they got the result they set out to achieve. The patentee got out of the proceeding without having to discuss the merits of his patent which would create file history and possibly affect them in other jurisdictions. The opponent also got the patent revoked without having to go through arguments on merits or having to wait for the process of surrender at the Patent Office.

    For academic purposes, the decision leaves a lot to be desired.

    While surrendering and revocation of a patent are two different processes under the Indian Patent Act, there would in principle set out to achieve the same end-result (i.e. patent is revoked (Art. 63 (4) and 64 (1)).

    The above is also true in other jurisdictions. For example, in the EPO, Art.105(a) EPC allows the patent proprietor to revoke his patent, with the similar result as that in the opposition proceedings (Art. 101 (b) EPC). While EPO and UK provide for a stay of the request to surrender, there is no statute in India when a request for surrender is made during the revocation proceedings are pending.

    In India, the patent can be revoked on one of the grounds 64(a) to (q). The decision does not go through the reasonings under each of the grounds for revocation.

    However, the Board notes in item 15 that since the “grounds raised by the applicant herein has not been disputed by the first respondent… there is no legal impediment to revoke the impugned patent by this Bench.” My understanding of this statement is that the patent is revoked on the grounds raised by the Opponent since the respondent did not dispute it.

    So, of the three possibilities that were available to the Board the board took the middle path.

    They could have stayed the surrender request and continue with the revocation proceedings. However, there is no defined power of the Board to stay the surrender proceeding at the patent office and such a decision would have just stretched the already overburdened Board into deciding on the merits of the patent.

    The other option would have been to stay the revocation proceedings and continue with the surrender process. Although the IPAB has the power to stay the proceeding, it would have shifted the balance of interest against the opponent who would have to wait for the procedure to be completed.

    The middle path which the Board took is optimal solution considering the already overburdened IPAB who decided to revoke the patent without going into the merits of the case because there was no rebuttal to the grounds raised.

    For a purely academic debate, what if the request for revocation of the patent was made by the patentee as “an interested party” on a ground that invention was “not useful” (g)? Before dismissing the hypothetical question, note that the term “useful” is used only once in the entire act in this section. Therefore, why not use it in a broader interpretation of this term to also mean not commercially useful to the patentee?


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