Revocation and surrender of patents — Intellectual Property Rights I Notes

Revocation and surrender of patents

A patent granted is not a patent guaranteed. If it turns out the “invention” was already known, or already claimed by someone earlier, the patent can be struck off — even years later. In gene therapy, Anand’s Indian patent fell exactly this way when a prior US patent surfaced.

Two ways a patent ends early

A. Surrender — s.63

A patentee may, at any time, offer to surrender his patent by notice to the Controller. It is voluntary — the patentee gives up the patent himself (e.g. because he cannot pay renewal fees or the patent is weak). The Controller advertises the offer; interested persons may oppose; if accepted, the patent is revoked.

B. Revocation — s.64

Revocation is the cancellation of a patent, on petition to the High Court (or as a counter-claim in an infringement suit), by any interested person or the Central Government. The grounds in s.64 include:

the invention was not novel — already publicly known or used, or anticipated by prior publication;
the invention was already claimed in an earlier patent of prior priority date (prior claiming);
the invention is obvious / lacks inventive step;
the invention is not patentable (falls under s.3/s.4);
the specification does not sufficiently describe the invention or the claims are unclear;
the patent was obtained by false suggestion or misrepresentation;
the applicant was not entitled to apply (wrong person);
non-disclosure of foreign filings (s.8) or wrongful obtaining.

Under s.65, a patent for an invention later found to relate to atomic energy may be revoked.

Patents Act, 1970, s.64(1): “a patent… may, on the petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent, be revoked by the High Court on any of the following grounds…” — including want of novelty, prior claiming, obviousness, insufficiency of description and false suggestion.

In Simple Terms: Surrender is the owner voluntarily handing the patent back (s.63). Revocation is a court cancelling it (s.64) because it should never have been granted — it was not new, was already claimed by someone earlier, was obvious, or was obtained by a lie.

🧩 WORKED EXAMPLE — the prior-claiming problem

Facts. Anand obtains an Indian patent in gene therapy. Six months later Maggie, a US citizen, shows the same invention was already the subject of a US patent with an earlier priority date.

Rule. s.64 — a patent may be revoked if the invention was already claimed in a patent of prior priority date (prior claiming) or was not novel.

Apply. The prior US patent has an earlier priority date and claims the same invention, so Anand’s invention was not novel / was already claimed. This is a ground for revocation.

Conclusion. Anand’s patent is liable to be revoked under s.64 on the prior-claiming / lack-of-novelty ground.

flowchart TD
    END["Early end of a patent"]:::root
    END --> SUR["Surrender (s.63) — voluntary, by the patentee"]:::leaf
    END --> REV["Revocation (s.64) — by the High Court"]:::leaf
    REV --> N["Not novel / prior claiming"]:::leaf
    REV --> O["Obvious / not patentable"]:::leaf
    REV --> F["False suggestion / wrong applicant"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1979) — a patent lacking novelty or inventive step is liable to be revoked.
Novartis AG v Union of India (2013) — a patent claiming non-patentable subject-matter (s.3(d)) is invalid and cannot stand.

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