Revocation of patents can be made under Section 64 of
the Indian Patents Act 1970.
Revocation means:
 Cancellation of the rights granted to a person by the
grant of a patent.
 The patent can be revoked on petition of any person
interested or of the Central Government or on a
counter claim in a suit for infringement of the patent
by the High Court or on the basis of the grounds
mentioned in section 64.
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Platforms For
Patent
Revocation
Intellectual
Property
Appellate Board
(Chennai) IPAB
High Court
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Grant
Publication of
Grant
<12 months- life of patent
Revocation
Proceedings
Revocation hearing
successful
Patent
revoked
Revocation
Petition in IPAB
Writ
Revocation Overruled
petition
to High
Court
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Notice for
revocation
Patent deemed No reply
to be revoked
2 months
Patentee replies to
the notice
2 + 1 months
Evidence in support
to Revocation
2 + 1 months
Evidence in Support
of Application
1+ 1 months
Reply Evidence
Further Evidence
Hearing
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1.
2.
3.
4.
5.
The Claims are invalid;
The Patentee is not entitled for the
patent;
Wrongful obtainment of patent;
The subject of any claim is not an
invention;
The subject of the invention is not new;
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6. The subject claimed is obvious;
7. The subject claimed is not useful;
8. The description of the invention as
disclosed in the specification is not
elaborate;
9. The scope of invention disclosed in
claims is insufficient;
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10. The patent was obtained on a false
suggestion or representation;
11. The subject in claim not patentable
matter;
12. The invention was secretly used in India
before the priority date;
13. The details under section 8 not been
disclosed or wrongfully disclosed;
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14. Secrecy direction has been issued against
the invention;
15. The amendment of patent application
stands outside the section 57 or section 58;
16. The origin of biological material was
wrongfully disclosed or not disclosed;
17. The invention claimed is anticipated by
prior knowledge in any local community;
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1. Central Government :
Central Government directs the Controller to revoke the
patent,
 if the invention relates to defence purposes,
 if the patent is for an invention relating to atomic energy,
and
 if the Central Government feels that the patent or the
manner in which it is exercised is prejudicial to public
2. Revocation of patents in the High Court as counter
claim in an infringement suit
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3.
Controller:
 If a compulsory license has been granted for a patent,
and if a person applies to the Controller on the ground
that the patented invention is not worked at the
optimum to meet the requirements of the public.
 If an independent patent has been granted for any
modification or improvement on the main invention,
the Controller on the patentee’s request may revoke
the independent patent on modification of that
invention and grant him patent of addition. {S.54(2)}
 If the patentee surrenders the patent the Controller
may revoke the patent.
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An invention is considered to be infringed when:
• Any immaterial variation in the invention
• Mechanical equivalents
• Colorable imitation of an invention
• Imitation of essential features of the invention
An act is considered to be an infringement when:
 The patented product is made, used, distributed, sold or
imported
 The patented process has been used, or used, offered for sale,
sold or imported the product directly obtained by that
process
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 A suit for infringement has to be filed in a District or
High court within whose territorial jurisdiction the
cause of action has arisen, However as soon as a
counter claim for revocation of patent is filled against
the suit for infringement of patent, only high court has
the jurisdiction of entertain the matter and the matter
has to be transferred to high court for decision.
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 TRIPS Article 34- Burden of proof would lie on the infringer
 With accordance to TRIPS agreement, in 2002 Section 104-A was
introduced.
In any suit for infringement of a patent, where the subjectmatter of patent is a process for obtaining a product, the Court
may direct the defendant to prove that the process used by him
to obtain the product, identical to the product of the patented
process, is different from the patented process if, (a) the subject-matter of the patent is a process for obtaining a
new product;
(b) there is a substantial likelihood that the identical product is
made by the process, and the patentee or a person deriving
2) In considering whether a party has discharged the burden
imposed upon him by sub-section (1), the court shall not require
him to disclose any manufacturing or commercial secrets, if it
appears to the court that it would be unreasonable to do so. 14
1)
 Application seeks revocation of the patent No: IN203552
for an invention titled “Method monitoring a sensor”
 The first independent granted claim of the specification
states:
A method of monitoring a sensor for detecting a flow
speed of a medium, comprising the steps of detecting
the flow speed of the medium by a sensor, comprising
the flow speed of the medium detected by the sensor. With
at least one operating parameter of a wind power
installation or a hydroelectric power generator driven by
the medium to determine whether the sensor operates
correctly.
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 The Bench also heard the Miscellaneous petition
No.86 of 2012 , in respect of EP patent No. EP14544058,
was filed for submitting a copy of the decision of the
opposition Board.
 The respondent had amended the claims 1, 3, and 4
since the EP opposition Board had found the original
claims were not novel in view of prior art.
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 The amended claim 1:
A method of monitoring a sensor for detecting a
flow speed of a medium, comprising the steps of
detecting the flow speed of the medium by a
sensor,
Comparing the flow speed of the medium detect by
the sensor, with at least one operating parameter of a
wind power installation driven by the medium to
determine whether the sensor operates correctly,
wherein the flow speed is the wind speed and
wherein a blade angle is used as the operational
parameter if the wind speed is above the nominal
wind speed.
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 The amended Claim 2:
Wind power installation, comprising: A plurality of
rotor blades driven by a medium, a sensor for detecting the
flow speed of the medium and a comparison device for
comparing the flow speed of the medium detected by the
sensor to at least one operating parameter of the wind
power installation to determine whether the sensor
operates correctly, where the flow speed is the wind
speed and wherein the power produced by the wind
power installation is used as the operational
parameter when the wind speed is below the nominal
wind speed and wherein a blade angle is used as the
operational parameter if the wind speed is above
nominal speed.
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 The applicant raised a preliminary ground that having
accepted the EP objections the patentee cannot be heard to
say that the claims as granted will stand.
 The respondent submitted that they would be defending the
claims as amended
 The amended claims were sent to the Controller who has
given his opinion that the amendment doesn’t fall within
S. 59. opinions were also furnished to both the parties for
there oral and written submission
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 The applicant sought revocation on many grounds:
Anticipation
Obviousness
Novelty
Person skilled in the art
Main ground of attack is that the invention is obvious
in view of evidence of documents provided:
A) Bonus –Info newsletter dated 1998
B) U.S. patent 5,289,041
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The council for the applicant submitted the following grounds:
1. Obviousness: The applicant submitted that it is a matter
of common knowledge that the wind speed variation and
the blade pitch control are related. The power generated is
relevant until the nominal power is reached and that the
blade pitch angle is used to evaluate the accuracy of the
sensor’s measurement.
He submitted that the given proposed claims are not
patentable since there is no inventive step and the
amendment should not be allowed both on ground of
delay and because it falls foul of S.59.
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Anticipation: The applicant submitted that the granted
claim 1 had 4 steps:
I. Detect the wind speed by sensor,
II. Measure power generated
III. Derive wind speed from power so generated, and
IV. Compare actual wind speed
The granted claim 1 had been given up and the expert
was of the opinion that subject matter of claim 1 is not
novel, and hence the above mentioned features
must be accepted as prior art.
2.
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The Applicant reasoned further that the patent
‘041clearly shows the relationship between the blade
pitch angle and the wind speed is well known.
According to the applicant, the respondent’s expert
has neither shown why the claims are patentable nor
has he met the evidence of the applicants experts.
The patent must be revoked
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1. Obviousness: According to the respondent the test
of obviousness is a subjective one and as the
applicant has not let in any evidence, he cannot be
said to have proved the case of obviousness. The
patent has been granted in 65 countries, and
therefore the revocation must be dismissed.
Respondent added that a piece of particular
knowledge does not become common knowledge
merely because it is widely read and accepted
without question by the bulk of those who are
engaged in the particular art.
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 The respondent submitted that the amended claim 1 was
not only restricted to the operational parameter but to a
method of monitoring a sensor for detecting the wind
speed. He submitted that the amendment cannot be
disallowed merely because of the delay and that the
Controller has not seen if the amendment was within the
frame of S. 59 but had instead examined the
patentability.
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2.
Person Skilled in the Art: According to the respondent
the applicant should prove that the person skilled in the art
knew each and every prior art, read every text book and the
prior art must be widely read, and even if it is in a patent text
book it does not mean that it is known, and also that this
person skilled in the art is working in India.
Roche V. Cipla , says one need not add further qualities
and that one must “presuppose that the said person would
have the knowledge and the skill in the said field of art and
will not be unknown to a particular field of art and it is from
that angle one has to see that if the said document which is
prior patent if placed in the hands of the said person killed
in the art whether he will be able to work upon the same
workshop and achieve the desired result leading to patent
under challenge.”
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 He made clear in the context of enablement, the person
whom the complete specification are addressed is a person
“who has average skill and average knowledge.”
 Neither of these attributes has been assigned by the act.
We do not intend to visualize a person who has super skills,
but we do not think we should make this person skilled in
the art to be incapable of carrying out anything but basic
instructions.
 The Act makes distinction between the person skilled
in the art (the obvious person) and the person who
has average skill (enablement man)
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The bench found the dismissed the amendment
application but since there was a an inventive step we
directed the respondent to file amendment claim
confirming to our finding
2. On the ground of delay the patent is revoked reason being
patentee sought amendment in Sept 2012 without
prejudice to his right to sustain his granted claims, But
they had already filed in the EP Opposition proceedings in
Jan 2010 their auxiliary petition. Yet they kept their
unamended claims until the hearing. Here , the bench
found the invention as obvious.
3. Prior art submitted, stated the invention’s proposed claims
to be obvious.
1.
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 The revocation petition is for patent no concern is
IN194620 (782/Del/1996) titled “ An improved metal
fixture useful for holding electrical bulb”
 Grounds for revocation were:
Not an invention S.64(d)
Anticipation
Novelty
Obviousness
Insufficiency
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 The patent applicant firm was engaged in the business
of production and manufacturing of Bakelite Bulb
holder brass rings for several years and that they are
the true owner. The impugned patent relates to an
improved metal fixture useful for holding electrical
bulb and provides a method and technology for
manufacture of metal fixture. The patentee is not
the inventor. The same was known in the prior art
several years prior to the filling of the disputed
patent.
 All claims are forged, Fictitious, incorrect and illegal
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• On the date of date of filing for the revocation, the
plaintiff/applicant is the sole proprietor of the firm
M/s Ganesh Enterprises was closed
• Hence the applicant is not engaged in any such
business of production or marketing of Bakelite Bulb
holder brass rings at the time of filling of this
application for revocation and hence is not a person
interested or aggrieved by the grant of the patent.
• In this view , the question of inventive step or
inventiveness does not arise
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1.
2.
3.
The claims in the complete specification is not an invention.
As in accordance to S2(1) 9j) all three pre-requisites of an
invention i.e. novelty, inventive step and industrial application
should be satisfied for an invention.
The impugned patent is neither novel nor does it involve
any inventive step. And there for liable to be revoked under
S64(1) (d). The impugned patent is not new since it was
publically known and used in India before the priority date of
claim. The patent is liable to be revoked under section (1) (e)
The present invention does not involve future technical
advance over the existing state of art. Thus the invention is
obvious to all persons skilled in the art. The patent is invalid
and is liable to be revoked under section 64(1) (f) of the Act.
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1.
Invention patentable: As per s2(1)(j) of the Act,
“Invention means a new product or process involving an
inventive step and capable of industrial application”.
Invention relates to new product which never existed in
any of the prior art document. The inventive step in this
patent is the use of brass rings without any joints and
thickness of ‘J’ section which ensures that the bulb is held
by a ring firmly and does not get twisted, distorted or
loose by innumerable application of stress and pressure.
Thus it provides lifetime durability to the ring.
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The utility of the ring is that the ‘J’ section will never
get twisted or distorted as the ring does not have joint
which can be separated by stress and also because
lower portion of the ring towards the ‘J’ section has
been deliberately kept thickest in width and gauge as
compared to the upper portion which gets fixed to the
Bakelite holder. The patent is thus a valid
invention.
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2. Novelty:
The respondent submitted that the
invention is novel and is not in publically known and
used in India before the priority date of the claim.
The novelty lies in the use of an improved metal
fixture comprising seamless molded metal sheet
having variable thickness of the ‘J’ section which
ensures that the bulk is held by the ring firmly and
does not get twisted, distorted or loose by
innumerable applications of stress and pressure.
Thus the patent is not liable to be revoked under
64(1)(e) of the Act.
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3. Obviousness: There were no teaching or prior art
available which would enable a person skilled in the
art to arrive at a improved metal fixture useful for
holding the electrical bulb having all the inventive
features required by claim 1 of the Indian Patent No.
194620. hence is not liable to be revoked under
S64(1)(f) of the Act.
4. Anticipation: No prior art is cited. No ground for
revocation has been substantiated.
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The respondents filed a suit against the parties
mentioned by the applicants and obtained an interim
injection. The interim injunction was vacated on
the ground that the patent was not granted on the
date of hearing of interim application.
The matter was listed for hearing on 31/08/2012 and
Shri Surya Senthil, learned counsel for the applicant
and Shri Sachin Gupta, Learned counsel for the
respondent argued the matter.
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 The counsel for the applicant submitted that the
application for grant of patent was filed on 11/04/1996.
The patent granted is in contravention of the provisions
of section 64 of the act. The specifications are already
in existence. There is slight variation and nothing more.
The patent is obvious to the people who are in trade. The
patent therefore ought to be revoked.
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 The counsel for the respondent submitted that
there is no proof to say that it is in public domain.
Though the applicants state that there is nothing new
or novel and that it is already known, they have not
cited any prior art in proof for the same. Therefore,
the application has to be dismissed.
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 The bench heard both the sides pleadings
and
documents.
 The applicants main contention was that they are carrying
on business of manufacturing and marketing of Bakelite
Bulb holding brass rings and that the impugned patent
affected them.
 The applicant argued the invention was not novel, but not
filed any document on evidence in support of their
contentions.
 No evidence was found by the bench in support of their
connection that they are carrying on business in the same
field.
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