Patent issued by PTO based on Invention should be Novel, Non-obviousness and Industrial applicability; a lot of the countries are giving right to patentee to make, using, selling, or distributing the patented invention for 25 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 through 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, be considered a total surrender or limited to one or more claims from the Inventhelp Intromark. In this situation the Controller will publish the offer in the Official journal.
Few grounds to surrender of patents:
1. Surrender of an entire patent is produced by way of a failure to cover the annuities prescribed legally which leads to the laps of patent.
2. In connection with the company transactions:
• To prevent a declaratory judgment of nullity in the patent
• To get rid of a defense with an action for infringement, wishes to forfeit the patent or any claim there under, with immediate effect.
3. Reissue of defective patents
The patentee/patent holder can 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 for the surrender of Idea Patent within 90 days from your date of publication in the notice within the Official journal. The notice of opposition needs to be in form 14 with prescribed fee (Six thousand for legal entity; Refer PTO site for updated fees).
Surrender may be prejudicial to licensee that have made preparation for or involved in, in these cases the licensee should are able to safeguard his interests when you are notified of the intended surrender & given a chance 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 could also submit evidences within 90 days 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. In the event the patentee withdraws the patent after opposition filed, the controller can decide whether cost should be awarded to the opponent.
The patentee must respond within sixty days from the date of opposition receipt received by him. The patentee must submit an announcement that explains the grounds upon in which the opposition is contested. The opponent vmgefo to reply within 30 days after receiving the statement of patentee. The opponent could also submit further evidences to aid his case.
After evidence presentation or recommendation of Opposition board, the controller will fix some time and date for hearing the opposition. If neither patentee nor opponent desires to learn the opposition the controller will decide the opposition and will publish his decision. If Patentee or opponent desires to know, they should give notice for the controller within 10 days together with the fee.
Either Patentee or opponent plans to depend on any publication in the hearing, not already submitted, can provide towards the other party and to the controller not less than five days notice of his intention, together with the information on the publication.
If the Controller accepts the Patentee’s offer to surrender the Invention Ideas, he directs the patentee to surrender the patent and revoke the patent. The revocation will be published in the Official journal. The choice or direction of the Controller under section 63 is appealable in Appellate Board.