This Article has been written by Ms. Isha Anand, a final year student of IFIM Law School, Bengaluru.

Abstract

A patent is a grant of exclusive rights that allows inventors to protect their inventions from being used, made, sold, or imported by others for a specified period. However, these exclusive rights are not absolute, and the patent system includes provisions to challenge a patent’s validity or enforceability under certain circumstances. Challenging a patent in India is a legal process governed by the Indian Patents Act, 1970 that can be initiated through mechanisms such as pre-grant opposition, post-grant opposition, revocation petitions, and infringement suits. There are several grounds upon which a granted patent can be challenged to ensure that only deserving and genuinely innovative inventions receive patent protection. These grounds include lack of novelty, which arises in cases where there had already been a prior invention. The other grounds are obviousness, insufficiency of disclosure, non – patentable subject matter, false representation during filing of application, violation of public order or morality, flawed examination process, anticipation, and non-compliance with formal requirements.

Keywords: Inventions

Introduction

The word patent originates from the Latin word ‘patere’, which means “to lay open” which can also mean to make available for public inspection.

A Patent is a legal document granted by government that gives an exclusive Intellectual Property right to a holder over a specific invention. It helps an inventor to produce or sell their inventions. It basically means that no one can use the invention for commercial purposes without the consent of the owner. When an inventor obtains a patent, they secure the right to exclude other people from using, their product or method of use for 20 years. 

Patents have been used since 1500s. Some of the examples of patent includes The Telephone, which is patented by Alexander Graham Bell in 1876, The Lightbulb, patented by Thomas Edison in 1876.

In India a patent is protected by “Patents Act, 1970”. In this act, Patent is described as one of the tangible forms of property under Intellectual Property. The grant of patent must follow the tests of novelty, non–obviousness and utility, only then the patent can be granted to the true and first inventor of the patent. 

Grounds for challenging a Patent in India

In India, challenging a patent is a complex legal process, that can be initiated for various reasons. These grounds are based on the Indian Patents Act, 1970. 

Lack of Novelty

• It is given u/s 25(1)(b) of Indian Patents Act, 1970.
• One of the fundamental requirements for granting a patent is novelty. A patent can be challenged if it is proven that the invention was not new at the time of filing the patent application. This involves prior publications, public knowledge, or prior use of the invention. To challenge a patent on these grounds, the party must demonstrate that the invention was disclosed or known before the patent application’s priority date.
• In case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (AIR 1982 SC 1444), the Supreme Court held that if a product or process claimed in a patent is not new or lacks novelty, it cannot be considered inventive. The Court emphasized that for an invention to be patentable, it must not be anticipated by prior knowledge or prior art.

Obviousness

• It is given u/s 25(1)(e) of Indian Patents Act, 1970.
• A patent can be challenged if the invention lacks an inventive step, meaning it would have been obvious to a person skilled in the relevant field. To succeed in such a challenge, one must show that the invention’s combination of elements or features was predictable based on prior knowledge or practices.
• In case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (AIR 1982 SC 1444), the Supreme Court addressed the issue of obviousness in this case. It highlighted that an invention that is a mere aggregation of known elements or obvious modifications of prior knowledge cannot be considered invention.

Insufficiency of Disclosure

• It is given u/s 25 (1)(d) of Indian Patents Act, 1970.
• The patent specification must provide sufficient information for a skilled person to carry out the invention. If it is found that the patent lacks an enabling disclosure or that a person skilled in the art would be unable to implement the invention, the patent can be challenged.
• In case of Bristol-Myers Squibb Co. v. Natco Pharma Ltd. (2013 (54) PTC 117 (Del)), the Delhi High Court discussed the importance of enabling disclosure. The Court held that a patent specification must provide sufficient details and guidance for a person skilled in the art to practice the invention without excessive experimentation.

Non – Patentable Subject Matter

• It is given u/s 3 of Indian Patents Act, 1970.
• Certain categories of inventions are explicitly excluded from patent protection in India. These include inventions that are contrary to public order, morality, inventions relating to atomic energy, traditional knowledge, methods of agriculture, and mathematical or business methods. Challenging a patent based on non-patentable subject matter involves demonstrating that the invention falls into one of these excluded categories.
• In landmark case of Novartis AG v. Union of India (AIR 2013 SC 1311), it focused on the patentability of pharmaceutical compounds and the section of the Patents Act dealing with non-patentable subject matter. The Supreme Court clarified the criteria for patentability and emphasized that patents should not be granted for known substances, mere admixtures, or new uses of known compounds.

Misleading or False Representation

• It is given u/s 20(4) of Indian Patents Act, 1970.
• If the applicant for a patent has provided false information or made material misrepresentations during the application process, the patent can be challenged on these grounds. This includes cases of false claims or withholding relevant information.
• The case Dow AgroSciences LLC v. Union of India (2009 (41) PTC 1 (Del)), dealt with issues related to incorrect information provided in the patent application. The Delhi High Court emphasized the need for full and honest disclosure during the patent application process and held that the withholding of material information can result in the invalidation of a patent.

Violation of Public Order or Morality

• It is given u/s 3(b) of Indian Patents Act, 1970.
• If the invention is considered to be against public order or morality, it can be challenged. This can be subjective and may vary based on societal norms and legal interpretations.

Inadequate or Flawed Examination Process

• In some cases, a patent may be challenged on the grounds that the examination process was flawed, leading to the grant of an unjustified patent. This may involve procedural issues or errors made by the patent office during examination.

• The case Hindustan Unilever Ltd. v. Reckitt Benckiser India Ltd. (2007 (34) PTC 364 (Del)) highlighted the importance of a clear and definite specification. The Delhi High Court held that if the specification is vague or ambiguous, it can create uncertainty and hinder the understanding of the invention, which may lead to the patent’s invalidity.

Anticipation 

• Anticipation occurs when a single piece of prior art completely anticipates all the elements of the claimed invention. To challenge a patent on the grounds of anticipation, the challenger must demonstrate that the prior art, when properly interpreted, discloses all the elements of the claimed invention.
• In case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (5) SCC 73), the Supreme Court discussed the significance of prior public knowledge and use in the context of patents. The Court held that if an invention is already in public use or known before the priority date, it lacks novelty and is not patentable.

Non-Compliance with Formal Requirements 

• Failure to meet various formal requirements under the Patents Act, such as incorrect or incomplete filings, missed deadlines, or incomplete documents, can be grounds for challenging a patent.

Procedures for Challenging a Patent in India

In India, the patent law provides multiple avenues for challenging the validity of a patent. The primary procedures for challenging a patent are as follows:

Pre-Grant Opposition

• It is given u/s 25(1) of Indian Patents Act, 1970.
• Before the grant of a patent, any person can file a pre-grant opposition to challenge the patent application. This opposition is filed with the Controller of Patents and should be submitted before the grant of the patent. Pre-grant opposition primarily focuses on the conditions of patentability, such as lack of novelty, obviousness, or non-patentable subject matter.

Post-Grant Opposition

• It is given u/s 25(2) of Indian Patents Act, 1970.

• After the grant of a patent, any interested person can file a post-grant opposition within one year from the date of publication of the grant. Post-grant opposition can be based on a wide range of grounds, including those mentioned earlier, such as lack of novelty, obviousness, and non-patentable subject matter.

Revocation Petition 

• It is given u/s 64 of Indian Patents Act, 1970.
• A revocation petition is a formal application made to the Intellectual Property Appellate Board (IPAB) or the relevant High Court for the revocation of a granted patent. This can be done on various grounds, such as non-patentable subject matter, insufficient disclosure, or the other grounds mentioned earlier. A revocation petition is a more comprehensive and formal challenge that requires specific legal procedures. 

Infringement Suit

• It is given u/s 104A of Indian Patents Act, 1970.
• If a party believes that a granted patent is being infringed upon, they can file a suit for patent infringement. During the infringement suit, the validity of the patent can also be challenged by the defendant. The court may decide both infringement and validity in such cases. This procedure allows for the concurrent resolution of infringement and validity issues.

 

Burden of Proof
In any challenge to a patent’s validity, the burden of proof is typically on the challenger. They must provide sufficient evidence to substantiate their claims. The level of proof required is usually the preponderance of probabilities, which means that the challenger must show that it is more likely than not that the patent is invalid. The strength and quality of evidence are crucial factors in the success of a challenge.

Key Considerations for Challenging a Patent

Evidence: Challenging a patent often requires strong evidence to support the grounds for opposition or revocation. This may include documentation, expert opinions, and prior art references.

Timelines: The timing of opposition or revocation is critical. Pre-grant opposition must be filed before the patent is granted, and post-grant opposition must be filed within one year of grant. Revocation proceedings can be initiated during the patent’s term.

Legal Representation: It is highly advisable to seek legal representation from a qualified patent attorney or intellectual property lawyer when challenging a patent. They can guide you through the legal process, prepare necessary documents, and present a strong case on your behalf.

Costs: Challenging a patent can involve legal fees and other associated costs. It’s essential to consider the financial aspects and potential risks before proceeding.

Conclusion

Challenging a patent in India is a legal process that requires a clear understanding of the grounds for opposition or revocation, evidence to support the challenge, and compliance with procedural requirements. The Patents Act, 1970, provides various provisions for challenging a patent’s validity, and the choice of procedure depends on the specific circumstances and timing. It’s crucial to consult with a patent attorney to navigate the complexities of challenging a patent and to assess the likelihood of success based on the grounds for opposition or revocation.

The grounds for challenging a patent are well-defined and encompass issues such as lack of novelty, obviousness, insufficiency of disclosure, non-patentable subject matter, misleading or false representation, violation of public order or morality, flawed examination processes, anticipation, and non-compliance with formal requirements. To initiate a challenge, one can follow specific legal procedures, including pre-grant opposition, post-grant opposition, revocation petitions, and infringement suits. However, the burden of proof falls on the challenger, necessitating substantial evidence to substantiate their claims.

Key considerations when challenging a patent involve the need for strong evidence, adherence to critical timelines, seeking legal representation from experienced patent attorneys, and careful evaluation of associated costs and risks. Ultimately, navigating the complexities of patent challenges requires a comprehensive understanding of the grounds for opposition or revocation, diligent evidence gathering, and adherence to procedural requirements.

Challenging a patent is a vital aspect of maintaining the integrity of intellectual property rights, ensuring that patents are granted based on genuine innovation and adhering to the legal and ethical standards outlined in the Patents Act, 1970. It is an essential mechanism for safeguarding the interests of inventors, businesses, and the broader public.

 

References

1. This article was originally written by Sutapa Jana published on Acura IP website. The link for the same is herein.

https://acuraip.com/challenging-a-patent-application-or-a-patent-in-india/

1. This article was originally written by Vatsala Sood published on Legal Bites website. The link for the same is herein.

https://www.legalbites.in/grounds-of-patents-opposition/

1. This article was originally written by Dr. Anju Khanna published on Lawyer Monthly website. The link for the same is herein.

https://www.lawyer-monthly.com/2023/02/excelling-in-patent-prosecution-in-india/

1. This article was originally written by Shalini Singh published on ipleaders website. The link for the same is herein.

https://blog.ipleaders.in/procedure-patent-enforcement-invalidity-india/