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What is the effect of surrender proceedings on the ongoing opposition/ revocation proceedings? Can they be linked to each other when neither of section 63 or section 64 are subject to each other? It is important to note that both the proceedings can be initiated at any time after the grant of the Patent. Section 64 can be initiated by any person interested, central government or by the alleged infringer in counter-claim. Section 63 can be initiated by Patentee and can be opposed by any person interested. Section 63 is one of those provisions of the Indian Patent Act, 1970 that is not much utilized. Unfortunately, even case laws have not been able to provide the much needed clarity on the provisions of section 63.
Recently IPAB had an opportunity to deal with the issue. Let’s see how IPAB fared at it. In this case, an offer to surrender a patent was made during pending revocation proceedings (No.29 of 2016). In these proceedings, patent under issue was IN224314, which was granted to ICOS Corporation of Eli Lily and Company.
Following grounds were used by the M/S MYLAN LABORATORIES LTD. in the instant revocation proceedings:
(1) That the invention as claimed in the impugned patent is not an invention within the meaning of the Patents Act [section 64(1) (d)];
(2) That the invention as claimed in the impugned patent is obvious or does not involve any inventive step [section 64(1)(f)];
(3) 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 [section 64(1)(h)];
(4) That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of complete specification is not fairly based on the matter disclosed in the specification [section 64(1)(i)];
(5) That the subject of claims in the impugned patent is not patentable under the Act [section 64(1) (k)];
(6) That the First Respondent failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to its knowledge [section 64(1)(m)].
ICOS Corporation submitted as below to IPAB:
“With reference to the subject Revocation, we state that we represent respondent No.1, the patentee of the patent under dispute i.e. Patent No. 224314. We bring to the notice of this Hon’ble Board that the respondent No.1 no longer has business interest in maintaining the patent due to the presence of many generic products on the market in India. Consequently, the respondent No.1 do not intend to maintain this patent any longer and has offered to surrender the patent before the Indian Patent Office under Section 63 of the Indian Patents Act, 1970. A copy of said letter to Patent Office is enclosed herewith for your ease of reference. Under this circumstance, we see that it would be superfluous on the Board to expend its valuable time and effort on the present proceeding and we request the Board to pass suitable orders effecting the closure of revocation proceedings.”
ICOS did not contend against revocation grounds. Instead chose to surrender patent. Mylan argued that surrender proceedings have to be completed through procedure as established under section 63 and also argued that as long as surrender of patent has not been accepted, patent is valid and can be subjected to opposition/ revocation.
IPAB was to ascertain whether controller can accept the patentee’s plea to surrender his patent, while a revocation suit is pending before the IPAB.
IPAB revoked the patent by following explanation:
The readings of the above said provisions makes it abundantly clear that in the event of offer of surrender of a patent by a patentee, the Controller has to follow the procedure contemplated under section 63 of the Act. Therefore, as long as the said surrender proceedings are pending and unless and until the Controller accept the offer of surrender the impugned patent to be in existence and continued to be in the register. The 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 and as such instead of allowing the Controller of Patents to follow the procedure contemplated under the section 63, as there is no legal impediment to revoke the impugned patent by this Bench and the impugned patent is liable to be revoked.
It is clear that IPAB did not want to relate surrender proceedings with revocation proceedings but did exactly the opposite by using grounds under surrender to reject revocation proceedings under section 64. It is apparent that IPAB missed an opportunity to give fair reasoning of the revocation of the Patent and delinking the cause revocation with surrender proceedings. Surrender proceedings and revocation can be correlated with each other only to an extent that a patent accepted as surrendered cannot be subjected to opposition/ revocation proceedings and vice versa.
Unfortunately, we have to wait for another case study to clarify the uncertainty created by IPAB.