How to Surrender Patents?

The procedures of the surrender of the patent are regulated by the provisions under Sec. 63 of the Patents Act 1960 and Rule 87 of the Patent Rules. Patents can be revoked in two methods, one by submitting an application for surrender and another by non-payment of the renewal fee. The revocation by application follows a step-by-step official formality where the Controller passes the order sanctioning the surrender of the patent only when there is no valid opposition.

What is the surrender of a patent?

The surrender of a patent is an action through which a patentee loses its right to enforce a valid patent. To surrender the patent, it can be initiated by applying to the patent office. The Controller shall publish the notification of the application made for the surrender by the patentee to invite any opposition from a person having contrary interest to the application made. 

How is the surrender of patents regulated?

The procedure of surrender and revocation of the patent is regulated under the provision of Sec. 63 of the Patent Act 1960. However, this provision does not prevent a patentee from opting out of ownership of the patent through non-payment of the renewal fees. 

What are the procedures for surrendering the patent?

The surrender of a patent can be conducted by these two methods - following the provisions under Sec. 63 of the Act or by non-payment of the renewal fee. These two procedures are not only distinct from each other but also have a very different outcome on the execution of the past and future infringement procedures. 

If a patent lapses due to non-payment of the renewal fees, or if the patent is surrendered in the general procedure, the revocation shall not have a retrospective result. On the other hand, if a patent is invalidated by the tribunal in any counterclaims for revocation, such revocation has a retrospective effect, in other words, it shall be considered as it never existed. 

The procedure to accomplish such a surrender is regulated by rule 87 of the Patents Rules. The procedure is as follows:

  • Step One: The patentee is obliged to notify the Controller of their proposal to surrender a patent in a written application in the prescribed format with payment of the prescribed fee. The application for the surrender of the patent must contain a declaration that no action is pending before any court for violation or annulment of the patent. If there are any, the details of the same. 
  • Step Two: Upon receiving the application for surrender, the Controller shall publish the application and inform every person having an interest in the patent other than the patentee who applied for the surrender. 
  • Step Three: The person having an interest in the patent is granted three months from the date of such publication, to issue a notice to the Controller opposing the surrender of the patent. If the Controller agrees to accept the reason mentioned for such opposition, he calls the parties for a hearing. 
  • Step Four: After hearing the patentee and the opponent, as required instruct for the proper surrender of the patent. The Controller may believe the proposal and direct the patentee to return the patent. Upon acceptance of such patents, the Controller shall by passing an order revoke it and announce the revocation of the patent.

What is the status of a revoked or surrendered patent?

When the patent is surrendered, it shall be considered that the patent has never existed and thus ending all the financial agreements made based on the patent. However, experts advise that on surrendering a patent, it would be necessary to protect the interest of a patentee and other persons having interest. This would be an engaging resolution to a patentee when licence payments have earlier been made, rather than endangering the revocation of an existing patent.

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