The Patents Act,1970
Section 64. Revocation of patents
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, 1[be revoked on a 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
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the pa tent was granted on the application of a person not entitled under the provisions of this Act to apply therefor: 2[xxxx]
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that 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 section 13 : 2[xxxx]
(f) that 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; 2[xxx]
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is 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 are 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;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly, based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35 3[or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;]
(o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
3[(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as clai
med in any claim of the c
omplete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.]’
(2) For the purposes of clauses (e) and (f) of sub-section (1),
(a) no account shall be taken of 4[personal document or secret trial or secret use]; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the invention
(a) for the purpose of reasonable trial or experiment only; or
(b) by the government or by any person authorised by the government or by a government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the government or person authorized as aforesaid or to the government undertakings; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the , invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interest therein and it shall not be necessary to serve a notice on any other person.
To be entitled to the grant of an ad interim injunction, the plaintiff has to show existence of a prima facie case, balance of convenience in his favour, and irreparable injury. Sec. 107 of the Act clearly provides that in any suit for injunction, every ground on which it may be revoked shall be available as a ground of defence. Franz Zaver Huemer v. New Yesh Engineers 1996 PTC (16) (Del) 164
To satisfy the requirement of being publicly known as used in clauses (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 science or men of commerce or consumers. Monsanto Company v. Coramandal Indag Products (P) Ltd. AIR 1986 SC 712
There is a distinction maintained as between the defence raised to a suit for infringement of a patent (vide s. 107) on the one hand and the revocation sought of a patent on the other (vide s. 64). The grounds may be the same, but still there is no inconsistency on account of the suit being defended as liable to dismissal in a particular case and a case where the
defendant seeks also that the patent asserted by the plaintiff be revoked. It is only when there is a counterclaim seeking revocation of the patent that the jurisdiction of the District Court is ousted. The proviso to s. 104 being in the nature of an exception to the general rule, it has to be strictly construed. There is no express claim on the part of the defendant for revocation whereof infringement is alleged by the plaintiff. Th
at the defendant pleads that the patent set up by the plaintiff is invalid amounts only to the defendant raising a ground for the relief sought by the plaintiff being declined; it does not follow necessarily that the defendant also seeks by way of a counterclaim that the patent be revoked. The defendant has not asserted in the pleadings anywhere that they are the patentee or that they are entitled to be registered as such. The grounds raised are cumulatively and also individually by way of defence to the plaintiff’s action. Fabcon Corporation v. Industrial Engineering Corporation AIR 1987 All 338
In Ram Narain Kher v. Ambassador Industries PTC (Suppl.) (1) 180 (Del), the defendant pleaded that the invention and the advantages claimed by the plaintiff had not been adequately described in the patent and adequately claimed in the claim to bring it within the ambit of the term “invention” within the meaning of the Act. The High Court held that the defendants having specifically raised the ground that claims made by the plaintiff in the patent were vague and did not describe the invention clearly and properly, are competent to claim revocation of the patent on that ground in the terms of section 64(1) of the Act.
1. Substituted for “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” by the Patents (Amdt.) Act,2005, w.e.f. the date to be notified.
2. Proviso omitted by Patents (Amdt.) Act,2002, w.e.f. 20-5-2003 vide S.0.561(E), dt. 20-5-2003.
3. Inserted by Patents (Amdt) Act,2002, w.e.f. 20-5-2003 vide S.0.561(E), dt. 20-5-2003.
4. Substituted for “secret use”, ibid.