Section 64 of Patent Act lists reasons why a patent can be canceled or revoked in order to ensure that only valid inventions get exclusive rights. Section 64 prohibits people from misusing patents and protects the public’s interest. It balances the need to encourage new ideas with fair competition by allowing the revocation of patents that don’t meet legal standards or were granted by mistake. Section 64 applies to all patents, whether granted before or after the Act started in 1970. It allows people with a stake in the patent, the Central Government, or courts to challenge a patent’s validity. They can do this through a direct request or as part of a defense in a patent infringement lawsuit. This section tackles issues like lack of originality, fraud, or poor descriptions of the invention. This article explains Section 64 by covering its grounds, process, and importance for legal professionals and students.
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What is Section 64 of Patent Act?
Section 64 of Patent Act, 1970 is organized into clear parts to explain how revocation works. Subsection (1) lists the main reasons for revoking a patent. Subsections (2) and (3) clarify exceptions, like prior use or knowledge, that don’t count against a patent.
Subsection (4) allows the government to request revocation in specific cases. Subsection (5) requires notifying everyone affected by the revocation.
In simple terms, Section 64 says a patent can be revoked by the Intellectual Property Appellate Board or a High Court.
This can happen if an interested person, the Central Government, or someone defending an infringement lawsuit files a request.
The reasons for revocation ensure patents meet the Act’s goals of supporting real inventions.
Grounds for Revocation under Section 64
Section 64 of Patent Act lists 17 reasons a patent can be revoked under subsection (1). These reasons are broad but not the only ones possible. They cover things like originality, creativity, proper disclosure, and following legal rules. Below is a table summarizing each reason, followed by simple explanations.
Ground | Description |
(a) Prior Claim in Another Patent | The invention was already claimed in an earlier, valid Indian patent with an earlier filing date. |
(b) Lack of Entitlement | The patent was given to someone who wasn’t allowed to apply for it under the Act. |
(c) Wrongful Procurement | The patent was obtained by violating the rights of the person challenging it or their predecessors. |
(d) Not an Invention | The invention doesn’t qualify as a true invention, like if it can’t be used in industry. |
(e) Lack of Patent Novelty | The invention was already known, used, or published in India or elsewhere before its filing date. |
(f) Obviousness or No Inventive Step | The invention is obvious to someone skilled in the field based on existing knowledge or publications. |
(g) Not Useful | The invention doesn’t work or can’t achieve what it claims to do. |
(h) Insufficient Disclosure | The patent’s description doesn’t fully explain the invention or how to make it work. |
(i) Unclear or Unfair Claims | The patent’s claims are vague or not based on the invention described. |
(j) False Suggestion or Representation | The patent was granted based on misleading or false statements. |
(k) Non-Patentable Subject Matter | The invention is something the Act doesn’t allow to be patented, as outlined in Sections 3 or 4. |
(l) Secret Use | The invention was used secretly in India before its filing date, except for certain allowed uses. |
(m) Non-Disclosure or False Information | The applicant didn’t provide required information or gave false details under Section 8. |
(n) Secrecy Violation | The patent violated secrecy rules under Section 35 or was filed abroad without permission under Section 39. |
(o) Fraudulent Amendment | Changes to the patent’s description were made through fraud under Sections 57 or 58. |
(p) Biological Material Disclosure Failure | The patent didn’t mention or incorrectly listed the source or origin of biological material used. |
(q) Anticipation by Indigenous Knowledge | The invention was already known through local or indigenous community knowledge in India or elsewhere. |
Explanations of Grounds
Each reason in Section 64 of Patent Act serves a specific purpose. For example, grounds (e) and (f) focus on originality and creativity, which are essential for a patent to be valid. Subsection (2) explains that certain uses, like experimental trials, government-approved tests, or imports for testing, don’t count as prior knowledge. Subsection (3) protects patent holders from challenges based on unauthorized use of their invention.
Grounds (h) and (i) ensure the patent clearly explains the invention so someone skilled in the field can recreate it without too much trouble. Grounds (p) and (q) protect India’s biodiversity and traditional knowledge by preventing patents that misuse biological materials or indigenous knowledge.
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Procedure for Revocation under Section 64 of Patent Act
Section 64’s process for revoking a patent is designed to be fair and efficient. Revocation can happen in two ways: through a direct petition or as a defense in an infringement lawsuit.
Who Can File?
Any “person interested,” meaning someone with a real business interest, like a competitor affected by the patent.
The Central Government, especially for public interest reasons.
Someone being sued for patent infringement, as a defense.
Forums and Steps
Revocation cases are usually handled by a High Court or, before 2021, the Intellectual Property Appellate Board (IPAB). Now, High Courts take most cases due to recent changes. The process includes:
Filing a petition or defense claim, explaining the reasons and providing evidence.
Notifying the patent holder and anyone else with a registered interest in the patent (per subsection 5).
Holding a hearing where both sides present their case, and the challenger must prove the reasons for revocation.
If the challenge succeeds, the patent is revoked, and the decision is published in the Official Gazette.
For government-requested revocations under subsection (4), the High Court steps in if the patent holder unfairly blocks government use of the patent. The law discourages filing both a revocation petition and a post-grant opposition at the same time to avoid overlapping legal processes.
Timeline and Evidence
Revocation cases rely on documents, expert statements, and sometimes cross-examinations. The decision must be clear and based on evidence. The challenger has to prove their case, but the patent holder can defend by adjusting their patent claims if allowed. Appeals can go to higher courts if needed.
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Related Provisions and Broader Context
The following sections work together with Section 64 of Patent Act in order to create a strong system for challenging patents. For example, in the Avesthagen’s “Jamun Patent” case, the government used Section 66 to revoke a patent for misusing traditional knowledge, showing how revocation protects India’s resources.
Section 65: Revokes patents related to atomic energy that conflict with the Atomic Energy Act, 1962.
Section 66: Allows the Central Government to revoke a patent if it harms the public or the country, after giving the patent holder a chance to explain.
Section 85: Revokes patents that don’t work or meet public needs, even after compulsory licensing.
Examples Illustrating Application of Section 64
Courts often use Section 64 of Patent Act in patent disputes. In infringement lawsuits, defendants frequently argue for revocation, claiming things like obviousness. For example, in pharmaceutical cases, courts have revoked patents for lacking creativity when they were based on already-known compounds. These cases show that Section 64 ensures patents are not absolute and encourages true innovation while limiting unfair monopolies.
Summary
Section 64 of Patent Act provides reasons and a fair process for challenging invalid patents. It supports genuine innovation, by ensuring that patents meet standards like originality and proper disclosure. For lawyers and students, understanding this section is essential for advising clients on patent strategies, defenses or challenges. Section 64 of Patent Act helps create a balanced system where true inventions succeed, benefiting both society and the economy. As patent law evolves, this section remains a key tool to prevent patent misuse and uphold the system’s purpose.
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Section 64 of Patent Act: FAQs
Q1. Who can file a revocation of a patent?
Any interested person or the government can file for patent revocation.
Q2. What are the 4 types of patents?
Utility, design, plant, and provisional patents.
Q3. What is Section 63 of the Patent Act?
It allows surrender of a patent by the patentee with approval from the Controller.
Q4. What is Section 65 of the Patent Act?
It permits revocation of a patent if it conflicts with atomic energy laws.
Q5. What is Section 64 of the Patent Act 1970 pertains to the validity of a patent?
It lists grounds like prior art or lack of novelty for revoking a patent.
