Patent

Guest Post: IPAB dismisses a patentee’s plea to surrender his patent


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We are happy to bring to you a guest post by Sribindu Chivukula. She graduated in Chemistry from State University of New York, Buffalo in the year 2012. She is a registered Indian patent agent and is presently associated with a leading law firm based out of Delhi. All the views expressed in the post are her personal views.

Title: IPAB dismisses a patentee’s plea to surrender his patent

Author: Sribindu Chivukula

Section 63 of the Patents Act entitles a patentee to surrender a patent at any time after the grant of a patent. This post deals with the situation where an offer to surrender a patent was made during pending revocation proceedings (No.29 of 2016). The IPAB dismissed the patentee’s plea to surrender the patent; and further directed the Controller to revoke the patent. 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.

Facts of the case:

ICOS Corporation of Eli Lily and Company was granted a patent, IN224314, on free β-carboline drug, and its method of preparation thereof. Mylan laboratories, herein referred to as the Applicant, has filed for revocation of the impugned patent on grounds of lack of inventive step, failure to disclose other foreign applications, among other grounds, listed under section 64 of the Act, before the Intellectual Property Appellate Board (IPAB).

ICOS corporation, herein referred to as the respondent, has neither disputed nor contradicted the grounds raised by the Applicant, but instead communicated to the IPAB, and to the Controller general of Patents, that they no longer have any business interest in maintaining the patent due to the presence of many generic products in the market. The respondents further stated that they do not intend to maintain the impugned patent for this reason, and offered to surrender the patent in accordance with section 63 of the Act.

The offer to surrender and the revocation action were evaluated in the same form, i.e., the IPAB, to ascertain if the Controller can accept the patentee plea to surrender his patent, while a revocation suit is pending before the IPAB.

Relevant provisions:

Section 63 of the Act provides provisions for surrender of a patent. Under this provision, a patentee may offer to surrender his patent by giving a notice in the prescribed manner to the Controller. On receipt of such an offer the Controller publishes the offer in the Official Journal and also notifies every person (other than the patentee) whose name appears in the register as having an interest in the patent. An opposition against the offer to surrender the patent may be filed by any person interested in Form 14 within 3 months from the date of publication of such offer in the Official Journal. The Controller shall inform the patentee on receipt of such notice. If 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.

Ruling:

At the IPAB, the Applicant’s arguments were hinged on the following:

Firstly, the Applicant’s argued that the respondents have not contested the grounds for revocation by either denying or resisting the grounds raised in the application for revocation. In the absence of any such counter statement, the Applicant’s contented that they have established the case, and as a result the impugned patent would become invalid.

Secondly, the Applicant contended that the respondents chose to bring a closure to the patent by making an offer to surrender the patent. However, such an offer to surrender is clearly contingent on Controller’s acceptance, whereby the Controller has to follow the procedure contemplated under section 63 of the Patents Act, 1970. The Applicant further relied on two decisions of UK Patents Court and UK Patents Office reported in [1999] F.S.R.284, where it was held that the patent remained in existence until the Controller decided to accept that offer for surrender. Till such a time, the patent was open for challenge by way of opposition/revocation. In light of the above arguments, the Applicants requested the IPAB to revoke the patent.

The decision of the IPAB was in favour of the Applicant. The board directed the Controller to revoke the patent within a period of six weeks from the date of receipt of the order.

Surrender of a patent is an option that rarely exercised by the patentee to avoid a litigation suit, among other reasons. With a sparse case history available, the present case can be used as a precedent, where it is clearly established that surrender cannot be used as a route to circumvent a potential revocation suit. Any contention that challenges the patent at the time of surrender must be disposed of before the patent can be surrendered.

5 comments.

  1. AvatarKrishnaraj

    I have to cite the excerpt from this blog:

    “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.”

    My goodness, what is the basis for such a conclusion.

    Firstly, the IPAB has made it clear that the procedure for surrender under Sec. 63 of the Patent Act is to be followed. That is more or less a common sense. See, example, the usage of word “shall” after the word “the Controller” in the section 63. That is law 101. Everyone in the field knows the importance of the word “shall”.

    Secondly, there is no link between sections 63 and any other section of the Patent
    Act. If there is a link, it will be expressly mentioned. So the conclusion provided in the above excerpt -” 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” is baseless to say the least. I wonder where this conclusion comes from.

    Thirdly, both the cases from U.K. cited (even though not necessary to be used in the decision by the IPAB to substantiate their rationale) approximates to: absence or failure to provide counter arguments for revocation would render the patent revoked under “revocation” proceedings. Also, the acceptance of a surrender by the Controller does not result in the automatic termination of revocation proceedings. In other words, they both canNOT be combined or mixed.

    I think a more careful reading of the descision as well as the sections is required by the author and some check has to be done for ensuring quality.

    My personal opinion:

    IPAB was grossly wrong, not in arriving at the decision, but the rationale used.

    They have used the submission or letter from the patentee dated Feb- 09, 2016 which was a request to surrender the patent under SECTION 63 of the Patent Act to “revoke” the patent (see para 15 of the decision).

    Such a mix-up of surrender petition by both the patentee as well as the IPAB will create confusion.

    Funny anectode: they used the UK cases which actually tried to avoid such a mix-up to actually mix both of them up. 🙂

    All the best.

    Reply
    1. Shamnad BasheerShamnad Basheer

      You nailed it! Even I was a tad bit taken back by this ruling and its purported reasoning. Glad you exposed it so lucidly? Could you please do a guest post for us on the same lines as your comment with a little more fleshing out. Would be of great value to readers. THanks in advance!

      Reply
      1. AvatarKrishnaraj

        Thank you! I will do that. I will send it to both the email ids provided in the Contact page.

        Best regards,
        Krishnaraj

        Reply
    2. AvatarSribindu Chivukula

      If you look at the EP courts, the law is very clear that a patentee may not be able to surrender his patent in opposition proceedings. (http://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_vii_6_4.htm). Although, the Act does not link section 63 with any other provision, but on a more practical level, surrender and revocation are linked to an extent simply because you cannot surrender a revoked patent. Also, the effect of a revocation order on the patent is different from surrender, in terms of the date in which the patent ceases to have an effect. So, the conclusion was written with an intention to suggest the recourse that can be taken by practitioners in similar situations. You may want to refer to Genetech’s case – a similar situation where all the parties were amenable to the patentee’s decision to surrender.

      Reply

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