Section 64 of the Indian Patents Act outlines circumstances under which a granted patent can be revoked. Following are the primary grounds based on which patents can be invalidated during the legal course of action or during due-diligence activities while commercializing the relevant product.
1) Novelty Grounds: The claimed invention is anticipated by a single publically known reference. If the claimed invention is lacking novelty with regards to the earlier disclosed knowledge or prior use, this can invalidate the patent.
2) Obviousness Grounds: Claimed invention is obvious to any person skilled in the art and does not involve any inventive step can be invalidated on the basis of obviousness. If a person skilled in the art, such as an expert appointed by the court for testimony, considers the claimed invention to be evident and easily discoverable as of on the priority date of the claimed invention, then the claim of the patent can be invalidated on the grounds of obviousness.
3) Subject of the claim of the patent is not an invention: Patent Offices of different countries have patent laws, which define patentable subject matter. A claimed subject matter that does not fall within the criteria of the patentable subject matter such as defined by Section 3 of the Indian Patent Act, can be invalidated on the grounds that the subject matter is not an invention according to the patent law of that country.
4) Patent wrongfully obtained: Applicants of the patent should be the inventors who have worked on the invention. Insufficient disclosure of inventors’ details or disclosure of a person as an inventor who is wrongfully mentioned to be the inventor can form basis of invalidation of the patent. The issue here is that a patent may be invalidated or revoked in many jurisdictions, if the patent applicant or inventor is not the true and first inventor.
5) Insufficient disclosure of the invention: It is the duty of the inventors to disclose all material information relating to the invention, including the best mode to accomplish the invention, all material art known to the inventor, and any information that might render the invention unpatentable, such as a public use or published description of the invention occurring more than one year prior to the filing date of the patent application. Any deliberate efforts for insufficient disclosure or description of information related to the invention can form the basis for invalidation of the patent. Another basis of invalidation of patent is false suggestion or representation to any fact or statement made in connection to the grant of the patent.
6) The claims included in the patent are not fully substantiated by the description provided.
7) Failure to disclose information relating to foreign applications as required under Section 8 of the Indian Patent Act.