Patent issued by PTO according to Invention has to 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 20 years duration from the date of file. But, full rights acquire through the date of grant.
Patent holder can take advantage of his full rights from date of grant to till term completion (i.e two decades from the date of first filing date.). Patent holder have straight to enjoy his rights, at the same time patentee can surrender his patent to PTO before term completion under certain conditions; this is known as Surrender or New Inventions.
A patent might be surrendered by patentee anytime through an application in prescribed format, be a total surrender or restricted to a number of claims in the patent. Because situation the Controller will publish the offer within the Official journal.
Few grounds to surrender of patents:
1. Surrender of the entire patent is created with a failure to cover the annuities prescribed by law which results in the laps of patent.
2. In exposure to the organization transactions: To avoid a declaratory judgment of nullity in the patent. To eliminate a defense for an action for infringement, desires 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 New Invention Idea anytime via 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 Patent within three months through the date of publication of the notice inside 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 who may have made preparation for or involved in, in such instances the licensee should are able to guard 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 also the facts upon which he is opposing. The opponent may also submit evidences within 90 days through the date of publication of the notice in the Official journal.
The Controller will inform the Patentee on receipt of opposition notice. When the patentee doesn’t respond within two months after he receiving opposition notice, the patent is going to be deemed to revoke. If the patentee withdraws the patent after opposition filed, the controller can decide whether cost should be awarded to the opponent.
The patentee needs to respond within sixty days through the date of opposition receipt received by him. The patentee has to submit a statement that explains the grounds upon in which the opposition is contested. The opponent has to reply within one month after finding the statement of patentee. The opponent may 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 hear the opposition the controller will decide the opposition and can publish his decision. If Patentee or opponent desires to know, they ought to give notice for the controller within ten fvijrm together with the fee.
Either Patentee or opponent promises to count on any publication at the hearing, not already submitted, can provide for the other party and to the controller not under five days notice of his intention, together with the specifics of the publication.
If the Controller accepts the Patentee’s offer to surrender the How To Pitch An Invention To A Company, he directs the patentee to surrender the patent and revoke the patent. The revocation will likely be published inside the Official journal. The decision or direction of the Controller under section 63 is appealable in Appellate Board.