The revocation of patents

Business

The revocation of patents

Legal Notes

with PETER GOLDSON

Wednesday, May 13, 2020

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THE rights granted to a patent holder are amongst the strongest of intellectual property rights because they include the monopoly right to utilise or license the patent for a stated term.

However, patent rights may be lost before the normal term expires. Under the current Patent Act (which dates back to 1857!), the term is 14 years but will be 20 years under the new Act.

The new Patent and Designs Act (passed but not yet in force at the time of writing) provides for the revocation of patents on much broader grounds and with greater clarity than the old Act.

Under the new Act, any interested person may apply to the Registrar of Industrial Property (at JIPO) for the revocation of a patent.

The basis for revocation includes the following:

a) the patent was granted on the application of a person who was not entitled under the provisions of the Act to apply for it;

b) the patent was obtained in contravention of the rights of the interested person who has made the application to the registrar, or of any person under through whom that person claims;

c) the invention was not patentable by virtue of Section 4 of the Act which provides that an invention is only patentable if it is new; it involves an inventive step; it is capable of industrial application; and it does not fall within the exclusions of patentable subject matter under the Act;

d) the specification does not describe the invention in a manner which is clear and complete enough for it to be performed by a person skilled in the art;

e) the scope of any claim of the specification is not sufficiently and clearly defined, or is not based on the matter disclosed in the specification;

f) the patent was granted on false information or a false representation; or g) the patent was granted contrary to law.

In relation to paragraph (c) above, a German patent on a connecting element on an electrical line and a corresponding procedure were revoked by The Federal Patent Court in the area of production engineering. Ultrasonic welding technology was obvious as the only way for the process to work, although the patent claim was not directed at it, and therefore the patent was not new and did not involve an inventive step and was therefore revoked.

Similarly, the European Patent Office (EPO) which administers patents under the European Patent Treaty has acted to revoke a patent granted earlier regarding a fungicide derived from the Indian medicinal tree, neem.

The applicants for revocation had demanded the invalidation of the patent on the ground that the fungicide qualities of the neem tree and its use has been known in India for over 2,000 years, and for use to make insect repellents, soaps, cosmetics and contraceptives.

In accepting the challenge and revoking the patent, the EPO agreed that the patent amounted to biopiracy and that the process for which the patent had been granted had been actually in use in India from time immemorial.

An Indian Government challenge in the United States led to the revocation of a patent on another Indian plant, turmeric, whose medicinal qualities have been known for centuries.

That challenge was accepted as a result of India showing that the knowledge had been found in the Indian pharmacopoeia. There may be lessons here to be learnt for the Jamaican Government.

Interestingly, in relation to paragraph (c) above (non-patentable subject matter), the new Act provides that a patent shall not be granted in respect of the following:

*plants and animals, (including DNA and cells), other than microorganisms;

*essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes; plant and seed varieties;

*the human body in all its developmental stages and all its elements, in whole or in part;

*inventions, the implementation of which would be contrary to public order or morality or which would cause serious prejudice to the environment or cause injury to human, animal or plant life or health;

*methods of surgical or therapeutic treatment and of diagnosis applied to the human body or to the bodies of animals;

*a discovery, scientific theory or mathematical method;

*a scheme, rule or method for performing a mental act, doing business, playing a game or a computer programme;

* a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; or the presentation of information.

It is expected that the impending implementation of the new Act will encourage an increased number of patent applications and, possibly also, patent disputes and litigation actions.

Peter Goldson is a partner at Myers, Fletcher & Gordon and head of its Intellectual Property Department. He is the chairman of JIPO and a former chairman of the Jamaican Bar Association's Intellectual Property Subcommittee. Peter may be contacted via peter.goldson@ mfg.com.jm or www.myersfletcher. com. This article is for general information purposes only and does not constitute legal advice.


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