Revocation of Patents
Law of Patents in India · Unit IV · Topic 14 of 17 · 6 min read
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Cases checked to exist. Read the judgment before quoting a holding.
Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.
1. Why revocation
A patent is granted after examination, but examination is not a guarantee of validity (s.13(4)). The public interest requires that invalid patents can be removed, since each one restrains competition without giving anything in return. TRIPS Article 32 requires that an opportunity for judicial review be available for any decision to revoke or forfeit a patent.
2. The routes
| Route | Who | Forum | Section |
|---|---|---|---|
| Post-grant opposition | Person interested, within 1 year of grant publication | Controller (Opposition Board) | 25(2) |
| Revocation petition | Person interested or Central Government | High Court | 64(1) |
| Counter-claim | Defendant in infringement suit | High Court | 64(1), 104 |
| Non-compliance with government use | Central Government | High Court | 64(4) |
| Non-working after compulsory licence | Central Government or person interested | Controller | 85 |
| Atomic energy | Controller on Government direction | Controller | 65 |
| Public interest | Central Government | Gazette notification after hearing | 66 |
| Surrender | Patentee | Controller | 63 |
3. Section 64: the grounds
A patent may be revoked on a petition of any person interested or the Central Government, or on a counter-claim in a suit for infringement, on any of the following grounds:
- (a) the invention was claimed in a valid claim of earlier priority in another Indian patent;
- (b) the patent was granted on the application of a person not entitled to apply;
- (c) the patent was wrongfully obtained in contravention of the rights of the petitioner;
- (d) the subject of any claim is not an invention within the Act;
- (e) the invention is not new, having regard to what was publicly known or used in India before the priority date or published in India or elsewhere;
- (f) the invention is obvious or does not involve an inventive step;
- (g) the invention is not useful;
- (h) the complete specification does not sufficiently and fairly describe the invention and the method, or the best method;
- (i) the scope of any claim is not sufficiently and clearly defined or not fairly based on the disclosure;
- (j) the patent was obtained on a false suggestion or representation;
- (k) the subject of any claim is not patentable under the Act;
- (l) the invention was secretly used in India before the priority date, other than for reasonable trial or experiment or by the Government;
- (m) failure to disclose information under s.8, or furnishing materially false information;
- (n) contravention of a secrecy direction (s.35) or of the foreign filing restriction (s.39);
- (o) leave to amend was obtained by fraud;
- (p) the specification does not disclose or wrongly mentions the source or geographical origin of biological material;
- (q) the invention was anticipated having regard to knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
The grounds are wider than the opposition grounds of s.25. They include utility, false suggestion, secret prior use and fraud, which suit a court with evidence and cross-examination rather than the Controller.
4. The cases
Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1978 INSC 258, remains the leading Supreme Court decision on revocation: a patent for making brass utensils was revoked for want of novelty and inventive step, and the Court rejected the argument that grant raised a presumption of validity. The question of validity is a mixed question of law and fact, to be decided on evidence of the state of the art.
In Dr. Aloys Wobben v. Yogesh Mehra (Supreme Court, 2014), the defendants in infringement suits had filed both counter-claims in the suits and revocation petitions before the IPAB on the same patents. The Court held that the same person cannot pursue both a revocation petition and a counter-claim on the same patent; having chosen one, the other is closed to him. The decision prevents multiplicity, but it also forces an early choice of forum.
5. Section 66: revocation in the public interest
Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, declare the patent revoked by notification in the Official Gazette. Its breadth raises a constitutional question under Articles 14 and 300A (if patents are property), which is why the hearing requirement and judicial review are important.
6. Section 85: revocation for non-working
Where a compulsory licence has been granted and two years have passed, the Central Government or any person interested may apply to the Controller for revocation on the ground that the invention has not been worked in India or the reasonable requirements of the public have not been satisfied, or it is not available at a reasonably affordable price. The Controller must decide ordinarily within one year. This follows Paris Article 5A(3), which allows forfeiture only when compulsory licensing has failed.
7. Surrender (s.63)
The patentee may offer to surrender the patent by notice to the Controller. The offer is published, any person interested may oppose, and the Controller, after hearing, may accept it and revoke the patent. Patentees surrender to avoid fees or to escape a pending challenge, which is why the Controller considers the interests of licensees.
8. Forum after 2021
From 2003 (patents from 2007) revocation petitions went to the Intellectual Property Appellate Board, while counter-claims were transferred to the High Court (s.104). The Tribunals Reforms Act, 2021 abolished the IPAB and replaced it with the High Court in s.64, so both now lie to the High Court. The Delhi High Court's Intellectual Property Division Rules, 2022 and similar rules in Madras allow a revocation petition and an infringement suit on the same patent to be heard together, reducing the risk of inconsistent results that troubled the earlier split.
- Breadth: the seventeen grounds in s.64, including the TK and biological source grounds, are among the widest anywhere, matching India's emphasis on patent quality.
- Multiplicity: opposition, petition, counter-claim and s.85 proceedings could run in different forums; Wobben and the 2021 reforms reduce this, but the post-grant opposition before the Controller still sits alongside the High Court route.
- Presumption: India gives no presumption of validity (unlike 35 U.S.C. §282 in the US, where invalidity must be proved by clear and convincing evidence, Microsoft v. i4i, 2011). This makes interim injunctions harder for patentees, and has led courts to look at whether a patent has survived opposition when deciding interim relief.
- Executive power: s.66 is broad and vague; its rare use and the hearing requirement are the only safeguards.
- Comparison: the UK (Patents Act 1977, s.72) has five grounds; the EPC allows central revocation through opposition, and the Unified Patent Court (2023) allows central revocation for participating EU states.
How this is examined
Q4 of 2024. Begin with the table of routes, list the s.64 grounds (group them if short of time: entitlement, patentability, specification, conduct, TK), then ss.66, 85, 63, the forum after 2021, the cases, and the evaluation. The evaluation is what “critically” asks for.
Now try the real questions: Law of Patents in India past question papers.