Page 53 - A&A Patents&Design Rewind-2016

PATENT REVOKED BY THE IPAB WHILE ITS

SURRENDER APPLICATION WAS PENDING

Mylan Laboratories Ltd., filed an application The bench primarily agreed with the findings of
for revocation of patent No. 224314, the UK Patents Court in [1999] F.S.R.284, which
assigned to ICOS Corporation. ICOS held that “(1) Where a patentee offered to surrender

Corporation instead of filing a Counter Statement his patent in the course of revocation proceedings in

to the revocation application, sent a communication court, section 29 of the Patents Act 1977 provided that

to the IPAB stating that they no longer have the patent remained in existence until the Comptroller

business interest in maintaining the patent due decided to accept that offer. Until then it remained open

to the presence of many generic products in the to the court to order its revocation.

market. They also applied for surrender of their (2) On the basis of the pleadings and evidence, and in

patent under section 63 of the Patents Act before the absence of any resistance or argument in court from

the Indian Patent Office. the respondent, the petition was well founded and the

patent was invalid on the grounds pleaded.”

Mylan Laboratories argued that the Patentee did

not file any Counter Statement to the revocation The IPAB also directed the Patent office to remove

application disputing the statements and grounds the impugned patent from the register of Patents

raised in the application and therefore, instead rendering the surrender proceedings pending

of allowing the Patentee to proceed with their before the Controller of Patents infructuous.

surrender petition before the Patent office, the

IPAB should allow the revocation application and The order can be accessed at:-

revoke the impugned patent. http://www.ipabindia.in/pdfs/Order-29-2016-ORA-

31-2015-PT-CH.pdf

The IPAB held that in the absence of filing any

Counter Statement by the Patentee, the Applicant

has established their ground/case and as a result the

impugned patent would become invalid.

Patents & Design | 53