Patent issued by PTO according to Invention must be Novel, Non-obviousness and Industrial applicability; most of the countries are giving right to patentee to make, 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 take advantage of his full rights from date of grant to till term completion (i.e twenty years from the date of first filing date.). Patent holder have directly to enjoy his rights, concurrently patentee can surrender his patent to PTO before term completion under certain conditions; this is known as Surrender or Nullity of patent.
A patent might be surrendered by patentee at any time via an application in prescribed format, become a total surrender or confined to one or more claims in the File A Patent. In this situation the Controller will publish the offer inside the Official journal.
Few grounds to surrender of patents:
1. Surrender of your entire patent is produced with a failure to pay for the annuities prescribed by law which results in the laps of patent.
2. In relationship with the business transactions:
• To avoid a declaratory judgment of nullity in the patent
• To get rid of a defense with an action for infringement, would like to forfeit the patent or any claim there under, with immediate effect.
3. Reissue of defective patents
The patentee/patent holder will offer to surrender his patent at any time through an application in prescribed format under section 63 of Indian Patent Act 1970, together with fees (Four thousand for legal entity; Refer PTO site for updated fees).
Any interested person (including licensee) may give notice of opposition towards the surrender of Inventhelp New Inventions within 90 days through 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 might be prejudicial to licensee that have made preparation for or involved in, in these cases the licensee should have a chance to safeguard his interests when you are 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 that he is opposing. The opponent can also submit evidences within 3 months from the date of publication from the notice within the Official journal.
The Controller will inform the Patentee on receipt of opposition notice. In the event the patentee doesn’t respond within sixty days after he receiving opposition notice, the patent will be deemed to revoke. When the patentee withdraws the patent after opposition filed, the controller can decide whether cost needs to be awarded towards the opponent.
The patentee must respond within two months from your date of opposition receipt received by him. The patentee has to submit an announcement that explains the grounds upon which the opposition is contested. The opponent vmgefo to reply within one month after receiving the statement of patentee. The opponent can also submit further evidences to aid his case.
After evidence presentation or recommendation of Opposition board, the controller will fix time as well as date for hearing the opposition. If neither patentee nor opponent desires to learn the opposition the controller will decide the opposition and can publish his decision. If Patentee or opponent desires to hear, they should give notice for the controller within ten days together with the fee.
Either Patentee or opponent intends to count on any publication in the hearing, not already submitted, can give for the other party and to the controller not under five days notice of his intention, combined with the information on the publication.
In the event the Controller accepts the Patentee’s offer to surrender the New Product Idea, he directs the patentee to surrender the patent and revoke the patent. The revocation is going to be published inside the Official journal. The decision or direction of the Controller under section 63 is appealable in Appellate Board.