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1 1992

PATENTS ACT, 1992

CHAPTER VIII

Revocation

Application for revocation of patent.

57. —(1) Subject to the following provisions of this section and section 58 , any person may apply to the Court or the Controller for revocation of a patent.

(2) An application for the revocation of a patent on the ground mentioned in section 58 (e) may be made only by a person found by the Court pursuant to section 81 (2) to be entitled to be granted that patent or to be granted a patent for part of the matter covered by the patent, or, in case more than one person is found to be so entitled, by all those persons.

(3) An application under this section may be filed even if the patent has lapsed.

(4) The application for revocation of a patent shall be made in the prescribed manner and it shall not be deemed to have been filed until the fee prescribed in relation to such applications has been paid.

(5) Where proceedings with respect to a patent are pending in the Court under any provision of this Act, no application may be made to the Controller under this section in relation to the patent without the leave of the Court.

(6) Where the Controller has not disposed of an application made to him under this section, the applicant may not apply to the Court under this section in respect of the patent concerned unless either—

(a) the proprietor of the patent agrees that the applicant may so apply, or

(b) the Controller certifies in writing that it appears to him that the question whether the patent should be revoked is one which would more properly be determined by the Court.

Grounds for revocation.

58. —An application for revocation of a patent may be made only on the grounds that—

(a) the subject-matter of the patent is not patentable under this Act;

(b) the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed, or, if the patent was granted on an application which by virtue of section 24 or 81 is deemed to have been filed on the date of filing of an earlier application, it extends beyond that disclosed in the earlier application as filed;

(d) the protection conferred by the patent has been extended by an amendment of the application or the specification of the patent;

(e) the proprietor of the patent is not entitled thereto under section 16 (1).

Examination of application for revocation.

59. —(1) If the application for revocation of a patent is admissible, the Court or the Controller, as may be appropriate, shall consider whether the grounds for revocation mentioned in section 58 prejudice the maintenance of the patent.

(2) If on an application for revocation of a patent the Court or the Controller considers that the grounds for revocation mentioned in section 58 prejudice the maintenance of the patent, the Court or the Controller, as may be appropriate, may by order unconditionally revoke the patent.

(3) If on an application for revocation of a patent the Court or the Controller considers that the grounds for revocation mentioned in section 58 affect the patent only in part, the Court or the Controller, as may be appropriate, may make an order for the revocation of the patent unless within a time specified by the Court or the Controller the relevant specification is amended, under section 38 , to the satisfaction of the Court or the Controller.

Controller's power to revoke patents on his own initiative.

60. —(1) If it appears to the Controller that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 11 (3), he may on his own initiative by order revoke the patent, but he shall not do so without giving the proprietor of the patent an opportunity of making any observations and of amending the specification of the patent in accordance with section 38 so as to exclude any matter which formed part of the state of the art as aforesaid.

(2) If it appears to the Controller that—

(a) a patent under this Part and a European patent designating the State have been granted for the same invention, and

(b) the applications for both patents have the same date as their date of filing or, where priority was claimed, their date of priority, and

(c) the applications for both patents were filed by the same applicant or his successor in title,

the Controller shall give the proprietor of the patent under this Part an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the Controller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, he shall revoke the patent.

(3) The Controller shall not take action under subsection (2) before—

(a) the end of the period for filing an opposition to the European patent designating the State under the European Patent Convention, or

(b) if later, the date on which any opposition proceedings under the Convention are finally disposed of;

and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.

Circumstances in which validity of patent may be put in issue.

61. —(1) Subject to the following provisions of this section, the validity of a patent may be put in issue only on a ground which is one of the grounds specified in section 58 , and, in addition to the foregoing, such validity shall be raised only—

(a) by way of defence in proceedings for infringement under section 47 or 56 , or

(b) in proceedings under section 53 or 57 , or

(c) pursuant to section 77 .

(2) No determination shall be made in any proceedings mentioned in subsection (1) on the validity of a patent which any person puts in issue on the ground specified in section 58 (e) unless—

(a) it has been determined, either in entitlement proceedings commenced by that person or in the proceedings in which the validity of the patent is in issue, that the patent should have been granted to him and not some other person; and

(b) except where it has been so determined in entitlement proceedings,

(i) the proceedings in which the validity of the patent is in issue are commenced before the end of the period of two years beginning on the date of the grant of the patent, or

(ii) it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.

(3) In subsection (2)entitlement proceedings”, in relation to a patent, means proceedings, whether by way of a reference under section 81 or otherwise, to determine the question whether a patent was granted to a person not entitled to it.

(4) It is hereby declared that, for the purposes of this Act, the validity of a patent is not put in issue by reason only of the fact that the Controller considers its validity in order to decide whether or not to revoke it under section 60 .

Controller to be given notice of Court proceedings.

62. —The Controller shall be given notice in writing by the plaintiff or proprietor, as the case may be, of any proceedings for infringement under section 47 or 56 or of any proceedings before the Court where, under section 61 , the validity of a patent is put in issue and of the decision of the Court in respect of any such proceedings.