Surrender of Patents

By Bhargavi Thakkilapati
Patent issued by PTO based on Invention must be Novel, Non-obviousness and Industrial applicability; most of the countries are giving right to patentee for making, using, selling, or distributing the patented invention for 20 years duration from the date of file. But, full rights acquire from the date of grant.

Patent holder can enjoy his full rights from date of grant to till term completion (i.e 20 years from the date of first filing date.). Patent holder have right to enjoy his rights, at the same time patentee can surrender his patent to PTO before term completion under certain conditions; this is called Surrender or Nullity of patent.

A patent may be surrendered by patentee at any time through an application in prescribed format, be a total surrender or limited to one or more claims of the patent. In that situation the Controller will publish the offer in the Official journal.

Few grounds to surrender of patents:

1. Surrender of an entire patent is made by a failure to pay the annuities prescribed by law which results in the laps of patent.

2. In connection with the business transactions:
• To avoid a declaratory judgment of nullity of the patent
• To eliminate a defense to an action for infringement, wishes to forfeit the patent or any claim there under, with immediate effect.

3. Reissue of defective patents

The patentee/patent holder can offer to surrender his patent at any time through an application in prescribed format under section 63 of Indian Patent Act 1970, along with fees (Four thousand for legal entity; Refer PTO site for updated fees).

Any interested person (including licensee) can give notice of opposition to the surrender of Patent within 3 months from the date of publication of the notice in the Official journal. The notice of opposition should be in form 14 with prescribed fee (Six thousand for legal entity; Refer PTO site for updated fees).

Surrender may be prejudicial to licensee who have made preparation for or engaged in, in such cases the licensee should have a chance to safeguard his interests by being notified of the intended surrender & given an opportunity to oppose the surrender.

An opponent can send written statement describing the opponent's interest and the facts upon which he is opposing. The opponent can also submit evidences within 3 months from the date of publication of the notice in the Official journal.

The Controller will inform the Patentee on receipt of opposition notice. If the patentee doesn't respond within two months after he receiving opposition notice, the patent will be deemed to revoke. If the patentee withdraws the patent after opposition filed, the controller can decide whether cost should be awarded to the opponent.

The patentee has to respond within two months from the date of opposition receipt received by him. The patentee has to submit a statement that explains the grounds upon which the opposition is contested. The opponent has to reply within one month after receiving the statement of patentee. The opponent can also submit further evidences to support his case.

After evidence presentation or recommendation of Opposition board, the controller will fix time and date for hearing the opposition. If neither patentee nor opponent desires to hear the opposition the controller will decide the opposition and will publish his decision. If Patentee or opponent desires to hear, they should give notice to the controller within ten days along with the fee.

Either Patentee or opponent intends to rely on any publication at the hearing, not already submitted, can give to the other party and to the controller not less than five days notice of his intention, along with the details of the publication.

If the Controller accepts the Patentee's offer to surrender the patent, he directs the patentee to surrender the patent and revoke the patent. The revocation will be published in the Official journal.