Patent from PTO based upon Invention must be Novel, Non-obviousness and Industrial applicability; most 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 also enjoy 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 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 Inventhelp Patent Invention.
A patent could be surrendered by patentee anytime with an application in prescribed format, become a total surrender or restricted to several claims in the patent. In this situation the Controller will publish the offer inside the Official journal.
Few grounds to surrender of patents:
1. Surrender of the entire patent is produced by way of a failure to pay for the annuities prescribed legally which leads to the laps of patent.
2. In connection with the company transactions: In order to avoid a declaratory judgment of nullity of 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 Inventhelp Office whenever you want with 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) may give notice of opposition for the surrender of Patent within 3 months from your date of publication of the notice inside 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 who have made preparation for or engaged in, in such instances the licensee should have a chance to guard his interests when you are notified from the intended surrender & given the 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 may also submit evidences within 3 months through the date of publication of the notice inside the Official journal.
The Controller will inform the Patentee on receipt of opposition notice. If the patentee doesn’t respond within two months after he receiving opposition notice, the patent is going to 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 needs 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 that the opposition is contested. The opponent needs to reply within 1 month after getting 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 will publish his decision. If Patentee or opponent desires to learn, they need to give notice towards the controller within ten fvijrm together with the fee.
Either Patentee or opponent plans to depend on any publication at the hearing, not already submitted, may give towards the other party and to 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 Inventhelp Store, 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 from the Controller under section 63 is appealable in Appellate Board.