Patent from PTO based upon Invention should be Novel, Non-obviousness and Industrial applicability; a lot of the countries are giving right to patentee for making, 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 enjoy his full rights from date of grant to till term completion (i.e two decades through the date of first filing date.). Patent holder have straight to enjoy his rights, simultaneously patentee can surrender his patent to PTO before term completion under certain conditions; this is known as Surrender or How To Start An Invention Idea.
A patent could be surrendered by patentee anytime through an application in prescribed format, be a total surrender or restricted to several claims in the patent. 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 created by a failure to pay the annuities prescribed legally which results in the laps of patent.
2. In exposure to the company transactions: In order to avoid a declaratory judgment of nullity in the patent. To eliminate a defense with 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 will offer to surrender his Inventhelp Patent Services at any time via an application in prescribed format under section 63 of Indian Patent Act 1970, along with fees (Four thousand for legal entity; Refer PTO site for updated fees).
Any interested person (including licensee) can provide notice of opposition to the surrender of Patent within 3 months from the date of publication in the notice inside the Official journal. The notice of opposition ought 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 who have made preparation for or engaged in, in such instances the licensee should have a chance to guard his interests by being notified from the intended surrender & given the opportunity to oppose the surrender.
An opponent can send written statement describing the opponent’s interest as well as the facts upon which he is opposing. The opponent could also submit evidences within 90 days from your date of publication from the notice within the Official journal.
The Controller will inform the Patentee on receipt of opposition notice. If the patentee doesn’t respond within 2 months 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 ought to be awarded towards the opponent.
The patentee has to respond within sixty days from the 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 has to reply within 1 month after finding the statement of patentee. The opponent can also submit further evidences to support 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 will publish his decision. If Patentee or opponent desires to know, they should give notice towards 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 towards the other party as well as the controller not lower than five days notice of his intention, together with the specifics of the publication.
If the Controller accepts the Patentee’s offer to surrender the Patent An Idea, he directs the patentee to surrender the patent and revoke the patent. The revocation will be published inside the Official journal. The choice or direction of the Controller under section 63 is appealable in Appellate Board.