An Analysis of Section 64 of the Indian Patents Act, 1970: Grounds and Procedures for Patent Revocation

An Analysis of Section 64 of the Indian Patents Act, 1970: Grounds and Procedures for Patent Revocation

Introduction

Section 64 of the Indian Patents Act, 1970 (hereinafter "the Act"), stands as a critical provision safeguarding the integrity of the patent system in India. It provides the statutory basis for the revocation of a granted patent, thereby ensuring that patents which do not meet the stringent criteria of patentability, or have been obtained improperly, can be challenged and nullified. This article undertakes a comprehensive analysis of Section 64, delving into its legislative framework, the various grounds for revocation, key judicial interpretations by Indian courts, and its interplay with other provisions of the Act. The analysis draws heavily upon landmark judgments and statutory text to provide a scholarly overview of this pivotal section.

Legislative Framework of Section 64 of the Patents Act, 1970

Overview and Purpose

Section 64(1) of the Act stipulates that a patent, whether granted before or after the commencement of the Act, may be revoked on a petition of "any person interested" or of the Central Government by the High Court (previously the Intellectual Property Appellate Board - IPAB), or on a counterclaim in a suit for infringement of the patent by the High Court (Merck Sharp & Dohme Corporation v. Glenmark Pharmaceuticals Ltd., Delhi High Court, 2015, Reference 10). The provision begins with the crucial phrase, "Subject to the provisions contained in this Act," indicating that its application must be harmonized with other sections of the Act (Aloys Wobben And Another v. Yogesh Mehra And Others, Supreme Court Of India, 2014, Reference 8).

The primary purpose of Section 64 is to ensure that patents granted are valid and do not unjustly monopolize inventions that are not novel, lack an inventive step, are not useful, or suffer from other legal infirmities. It acts as a post-grant check on the validity of patents, complementing pre-grant and post-grant opposition procedures outlined in Section 25 of the Act.

Grounds for Revocation under Section 64(1)

Section 64(1) enumerates an exhaustive list of grounds upon which a patent can be revoked. These grounds, as detailed in Aloys Wobben And Another v. Yogesh Mehra And Others (Supreme Court Of India, 2014, Reference 8), include, inter alia:

  • (a) Prior claiming: The invention was claimed in a valid claim of earlier priority date in another Indian patent.
  • (b) Non-entitlement: The patent was granted to a person not entitled under the Act.
  • (c) Wrongful obtaining: The patent was obtained wrongfully in contravention of the rights of the petitioner.
  • (d) Not an invention: The subject of any claim is not an invention within the meaning of the Act.
  • (e) Lack of novelty: The invention is not new, having regard to prior public knowledge, public use in India, or prior publication in India or elsewhere (Tvs Motor Company Limited v. Bajaj Auto Limited, Madras High Court, 2009, Reference 9).
  • (f) Obviousness/Lack of inventive step: The invention is obvious or does not involve any inventive step, considering prior public knowledge, public use in India, or prior publication (Tvs Motor Company Limited v. Bajaj Auto Limited, Madras High Court, 2009, Reference 9).
  • (g) Lack of utility: The invention is not useful.
  • (h) Insufficient disclosure: The complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed.
  • (i) Ambiguity in claims: The scope of any claim is not sufficiently and clearly defined or any claim is not fairly based on the matter disclosed in the specification.
  • (j) False suggestion or representation: The patent was obtained on a false suggestion or representation (Tvs Motor Company Limited v. Bajaj Auto Limited, Madras High Court, 2009, Reference 9).
  • (k) Subject of claim not patentable: The subject of any claim is not patentable under the Act.
  • (l) Secret use: The invention was secretly used in India before the priority date, other than for reasonable trial or experiment.
  • (m) Non-disclosure under Section 8: Failure to disclose information required by Section 8 or furnishing false information (Tvs Motor Company Limited v. Bajaj Auto Limited, Madras High Court, 2009, Reference 9).
  • (n) Non-compliance with secrecy directions: Contravention of secrecy directions or unauthorized application for patents outside India.
  • (o) Fraudulent amendment: Leave to amend the complete specification was obtained by fraud.
  • (p) Wrongful disclosure of source/origin of biological material: The complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.
  • (q) Anticipation by traditional knowledge: The invention was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Key Judicial Interpretations and Principles

Locus Standi: The "Person Interested"

A crucial prerequisite for filing a revocation petition under Section 64 (or a post-grant opposition under Section 25(2)) is that the challenger must be a "person interested." The Act, in Section 2(1)(t), defines "person interested" to include a person engaged in, or in promoting, research in the same field as that to which the invention relates. The judiciary has interpreted this term broadly. The Supreme Court in Aloys Wobben and another v. Yogesh Mehra and Ors. ([2014] 15 SCC 360, Reference 21) affirmed this inclusive definition. The Delhi High Court in Ucb Farchim Sa v. Cipla Ltd. & Ors. (2010 SCC ONLINE DEL 523, Reference 19) highlighted that unlike pre-grant opposition which can be filed by "any person," a post-grant opposition and a revocation petition require the locus of a "person interested."

Further, in Dr. Reddys Laboratories Limited And Another v. Controller Of Patents And Others (2022 SCC ONLINE DEL 1040, Reference 15), the Delhi High Court reiterated the dynamic and broad definition of 'person interested,' stating that a revocation petition could be filed at any point when such a person's interest arises or continues during the life of the patent. However, in Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr. (Delhi High Court, 2025, Reference 14), it was observed that if no live patent subsists, the petitioner might no longer qualify as a 'person interested'.

Interpretation of Specific Grounds for Revocation

Novelty and Public Knowledge/Use (Section 64(1)(e))

The ground of lack of novelty, as enshrined in Section 64(1)(e), is fundamental to patent law. The Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979 SCC 2 511, Reference 1) laid down foundational principles, emphasizing that an invention, to be patentable, must be new and not previously known or publicly used. The Court invalidated the patent in question, finding it to be a mere workshop improvement without substantial innovation, already publicly known and used. This judgment underscored that "novelty in application is essential, requiring ingenuity beyond mere new purpose adoption" (citing Rickmann v. Thierry (1896)).

The Madras High Court in Tvs Motor Company Limited v. Bajaj Auto Limited (2009 SCC ONLINE MAD 901, Reference 5) also dealt with revocation on grounds of prior art and obviousness, ultimately finding the respondent's patent to suffer from these vices. Similarly, in Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. (1999 SCC ONLINE DEL 417, Reference 18), the Delhi High Court held that if the nature and manner of construction were publicly known and practiced in India prior to the patent date, there is no novelty.

Inventive Step and Obviousness (Section 64(1)(f))

Section 64(1)(f) allows revocation if the invention is obvious or lacks an inventive step. An inventive step requires that the invention must not be obvious to a "person skilled in the art" (POSA). In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (Reference 1), the Supreme Court clarified that beyond mere novelty, an invention must involve an inventive step – an advancement signifying a meaningful improvement. The Court found the alleged improvements in that case to be trivial and within the common knowledge of skilled workers.

The Delhi High Court in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (2015 SCC ONLINE DEL 13619, Reference 3) extensively discussed inventive step, referencing the POSA standard and international jurisprudence like KSR International Co. v. Teleflex Inc. (2007, USA). The Court evaluated whether a specific chemical modification was a non-obvious step for a POSA, concluding that a routine modification without enhanced therapeutic efficacy lacked inventive step.

Subject Matter Not an Invention (Section 64(1)(d))

This ground often intersects with Section 3 of the Act, which lists what are not inventions. For instance, in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (Reference 3), the interpretation of Section 3(d) was pivotal. The court upheld a restrictive interpretation, aligning with Novartis AG v. Union of India (2013), stating that minor modifications of known substances must demonstrate enhanced therapeutic efficacy to qualify for patent protection, and by extension, to survive a revocation challenge under Section 64(1)(d) if they fall foul of Section 3(d).

Insufficiency of Disclosure (Section 64(1)(h))

Section 64(1)(h) permits revocation if the complete specification does not sufficiently and fairly describe the invention and the method of performing it. In Communication Components Antenna Inc. v. Mobi Antenna Technologies (Shenzhen) Co Ltd (Delhi High Court, 2022, Reference 13), the Delhi High Court observed that insufficiency of a patent is not purely a question of law decidable only by patent specifications. It may require determination and enquiry into further facts, and the opinion of an expert/person skilled in the art may become relevant. The Court cited Terrell on 'Law of Patents', noting that sufficiency is a question of fact, highly sensitive to the nature of the invention and the attributes of the skilled person.

False Suggestion or Representation (Section 64(1)(j))

A patent obtained on a false suggestion or representation is liable for revocation under Section 64(1)(j). This ground, as listed in Tvs Motor Company Limited v. Bajaj Auto Limited (Madras High Court, 2009, Reference 9), targets patents granted based on misleading or untrue statements made during the application process.

Non-Compliance with Section 8 (Section 64(1)(m))

Section 64(1)(m) provides for revocation if the applicant fails to disclose information required by Section 8 (regarding foreign patent applications) or furnishes false information. In F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (Reference 3), while this ground was alleged, the Delhi High Court found that Roche had made substantial compliance efforts, and no material prejudice was caused by any non-disclosures, thereby not revoking the patent on this ground. This suggests a judicial inclination towards assessing the materiality of the non-compliance.

Procedural Dynamics of Revocation

Forum for Revocation: High Court and Counterclaims

Section 64(1) provides two primary avenues for seeking revocation: a petition to the High Court (formerly IPAB) or a counterclaim in an infringement suit before the High Court (Merck Sharp & Dohme Corporation v. Glenmark Pharmaceuticals Ltd., Delhi High Court, 2015, Reference 10). The Supreme Court in Aloys Wobben And Another v. Yogesh Mehra And Others (2014 SCC 15 360, Reference 2 and 16) extensively clarified the procedural aspects. The Court held that a party cannot simultaneously pursue revocation through a counterclaim in an infringement suit and a separate revocation petition before the (then) Appellate Board for the same patent on the same grounds. The Court reasoned that initiating a counterclaim would preclude a separate revocation petition, based on principles analogous to res judicata, to ensure procedural efficiency and prevent conflicting judgments.

The Madras High Court in Aloys Wobben Argestrasse 19 v. Enercon (India) Limited (2010 SCC ONLINE MAD 4668, Reference 4) affirmed the IPAB's jurisdiction to hear miscellaneous petitions within ongoing revocation applications. In Dr. Aloys Wobben v. Intellectual Property Appellate Board (Madras High Court, 2013, Reference 22), the court discussed the scope of the IPAB's jurisdiction in entertaining applications under Section 64, noting its powers are ancillary to the substantive power related to the main revocation case.

The "Subject to other provisions" Clause: Interplay with Section 25

The opening words of Section 64(1), "Subject to the provisions contained in this Act," were significantly interpreted by the Supreme Court in Aloys Wobben And Another v. Yogesh Mehra And Others (Supreme Court Of India, 2014, Reference 8). The Court opined that this phrase means that if any proceedings have been initiated by "any person interested" under Section 25(2) (post-grant opposition), the same would "eclipse" the right of the same person to file a "revocation petition" under Section 64(1) or to file a "counterclaim" for revocation in an infringement suit. This interpretation aims to prevent multiplicity of proceedings by the same party on the same issues.

The distinction between pre-grant opposition (Section 25(1)), post-grant opposition (Section 25(2)), and revocation (Section 64) was also elaborated in Ucb Farchim Sa v. Cipla Ltd. & Ors. (Delhi High Court, 2010, Reference 19), particularly regarding the locus standi ("any person" v. "person interested") and the procedural framework.

Limitation Period for Revocation Petitions

A significant procedural aspect is the absence of a prescribed limitation period for filing a revocation petition under Section 64. The Delhi High Court in Dr. Reddys Laboratories Limited And Another v. Controller Of Patents And Others (2022 SCC ONLINE DEL 1040, Reference 11 and 15) and subsequently in Thyssenkrupp Rothe Erde Germany GMBH v. The Controller Of Patents & Anr. (Delhi High Court, 2022, Reference 12) definitively held that since no limitation is prescribed in the Patents Act or Rules, a limitation period cannot be read into Section 64. A revocation petition can be filed by a "person interested" at any point during the life/term of the patent when their interest arises or continues. The Court distinguished the Calcutta High Court's decision in Bayer AG v. Controller of Patents (AIR 1982 Cal 30), which concerned Section 71 (rectification of register) and not Section 64.

Section 64 in Relation to Other Statutory Provisions

Section 107: Defences in Infringement Suits

Section 107(1) of the Act states that in any suit for infringement of a patent, every ground on which it may be revoked under Section 64 shall be available as a ground for defence. In Rotela Auto Components (P) Ltd. & Anr. v. Jaspal Singh & Ors. (Delhi High Court, 2001, Reference 20), the Delhi High Court, drawing an analogy with the Designs Act, noted that grounds available under Section 64 could be raised as defence irrespective of whether the defendant has applied for revocation. More recently, in Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr. (Delhi High Court, 2025, Reference 14), the court differentiated the legal and practical consequences of a defence under Section 107 versus a revocation petition/counterclaim under Section 64, suggesting that Section 107 does not, by itself, entitle a defendant to seek revocation but enables them to seek a declaration of invalidity as a defence.

Section 13(4): Examination and Validity

Section 13(4) of the Act clarifies that the examination and investigations conducted by the Patent Office shall not be deemed to warrant the validity of any patent. This was affirmed in Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. (Delhi High Court, 1999, Reference 18), where the court noted that the grant of a patent does not guarantee its validity, reinforcing the importance of Section 64 as a mechanism to challenge and revoke invalid patents post-grant.

Section 48: Rights of Patentees and Presumption of Validity

While Section 48 confers exclusive rights upon the patentee, these rights are contingent upon the patent's validity. In B. Braun Melsungen Ag v. Rishi Baid (2009 SCC ONLINE DEL 868, Reference 17), the Delhi High Court discussed the argument that after amendments to Section 48, a granted patent ought to be prima facie presumed valid until revoked under Section 64. However, this presumption is rebuttable, and Section 64 provides the very grounds for such rebuttal.

Conclusion

Section 64 of the Patents Act, 1970, is a cornerstone of Indian patent law, providing a robust mechanism for challenging and revoking patents that fail to meet the statutory requirements of patentability or were improperly obtained. The extensive grounds for revocation, coupled with judicial interpretations concerning "person interested," procedural synchronicity with Section 25, and the absence of a limitation period, ensure that the patent register reflects genuinely valid and meritorious inventions. Landmark judgments, particularly Bishwanath Prasad Radhey Shyam and Aloys Wobben, have significantly shaped the jurisprudence surrounding Section 64, clarifying the substantive standards for patent validity and the procedural pathways for revocation.

The provision strikes a balance between protecting the rights of genuine patentees and preventing the continuation of unwarranted monopolies that could stifle innovation and public interest. As such, Section 64 remains a vital tool for maintaining the quality and integrity of the patent system in India, ensuring that patent rights serve their intended purpose of fostering technological advancement and economic development.