Revocation of Patents :
Any Interested person including the government can file a petition on any of the grounds specified for revocation of a patent under Section 64 of the Patents Act. Section 64 dealing with revocation of patents stipulates that a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by this Appellate Board or on a counterclaim in a suit for infringement of the patent by the High Court on any of the following grounds namely:
(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 patent was granted on the application of a person not entitled under the provisions of this Act to apply therefore;
(c) that the patent was granted on the application of a person not 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:
(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:
(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 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;
(p) that the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
Section 64(2) says that for the purposes of clauses (e) and (f) of sub-section (1), –
(a) no account shall be taken of 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.
Section 64 (3) provides that for the purpose of clause (l) 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 undertaking; 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.
Without prejudice to the provisions contained in sub-section (1), a patent maybe 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 99upon reasonable terms.
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 interests therein and it shall not be necessary to serve a notice on any other person.
Aloys Wobben v. Enercon (India) Limited & anr [Mad] Case No : W.P.No.20165 of 2010 & M.P.Nos.1&2 of 2010 M.Y.Eqbal, CJ & T.S.Sivagnanam, JJ. [Decided on 08.09.2010]
Brief facts:
The first respondent herein (hereinafter referred to “as the Company”) had filed 18 Original Revocation Applications before the Tribunal for revocation of the patent granted in favour of the writ petitioner under Section 64 of the Patents Act. In the said original revocation application, the writ petitioner filed the miscellaneous petitions for dismissal of the original petitions. The case of the writ petitioner was that he is the owner of the various Patents, pursuant to the grant of Patent by the Patent office during 2006 and the first respondent company filed original applications for revocation of the Patents and these applications were pending before the second respondent Tribunal. In those applications, the writ petitioner has filed individual miscellaneous petitions with the prayer to dismiss the revocation petition filed by the first respondent company and to fix an early date for hearing the miscellaneous petitions challenging the maintainability of the revocation petition.
The main ground on which the miscellaneous petitions were filed is by stating that in terms of the Articles of Association of the first respondent company Mr.Yogesh Mehra lacks the competence to file the petition for revocation of the Patents and reliance was placed on Articles 128(1), 157, 158(1), 170(14) and 171(4) of the Articles of Association of the company. It was further contended that even assuming without admitting Mr.Yogesh Mehra had such a power, the same are not unfettered and that the applicant has initiated proceedings before the Company Law Board (CLB) and the same is pending and the Company Law Board by its order dated 24.09.2007 in petition No.121 of 2007 in C.A.No.484 of 2007 has granted an order of status quo to be maintained with regard to all issues pending in the proceedings and no further action could be taken without leave of the Board, in terms of the subsequent order dated 19.05.2008. In the above stated background, the writ petitioner sought for dismissal of the revocation petition.
Decision : Petition dismissed.
Reason :
Admittedly, the preliminary issue raised by the petitioner before the Tribunal does not relate to the jurisdiction of the Tribunal, but rather the locus standi of one Mr.Yogesh Mehra, to maintain the application for revocation. On the one hand, the said Mr.Yogesh Mehra relied on a Board resolution dated 27.04.2007, which according to them authorized him to institute suits and proceedings on behalf of the company. This is contraverted by the writ petitioner by stating that such resolution dated 27.04.2007 is void and non-est. Therefore, to decide as to whether the Managing Director of the company has locus standi to maintain the application for revocation before the Tribunal, it is essential that the factual aspects have to be gone into.
Therefore, in such circumstances, the Hon’ble Supreme Court while laying down the practice and procedure to be adopted where several issues are raised before Court and there is possibility of appeal, the Court must deal with all issues instead of disposing of the case on only one issue. In fact the decision by the Hon’ble Supreme Court in the case of M/s. Fomento Resorts and Hotels Ltd v. Gustavo Ranato Da Cruz Pinto andOthers, 1985 2 SCC 152, specifically took note of the fact that when, there is a possibility of appeal all issues have to be taken up and decided. The facts of the case clearly indicates that there is a definite possibility of appeal against the decision of the Tribunal and the present writ petition itself is one such illustration. Therefore, in our view, the Tribunal rightly directed the miscellaneous petitions to be considered along with the respective Original Revocation Applications and also directed the case to be posted on a specific date and the hearing to be continuous on day to day basis.
Hence, we find no good grounds to interfere with the order passed by the Tribunal. Accordingly, the writ petition stands dismissed.