It is a foundational principle of Indian patent law that a patent should not remain a dead monopoly. When a patentee fails to “work” the invention in India, the law allows revocation under Section 85, by way of Form 19. This is not merely a procedural step - it is a tool through which an “interested person” or the Government can invoke cancellation of patent rights to safeguard public interest. Precision in drafting, factual support, timing and strategic planning are essential for success.
Below, you will find:
Legal basis & statutory trigger for Form 19
Eligibility, timing and grounds of revocation
Key contents & drafting approach
Post-filing procedure and decision
Judicial insights, risks and best practices
Legal Basis & When Revocation is Permissible
Statutory Authority: Section 85 & Rule 96
Section 85(1) of the Patents Act, 1970 empowers any person interested (or the Central Government) to apply to the Controller for revocation of a granted patent on the ground that the invention has not been “worked” in India to the sufficient extent.
Rule 96 of the Patents Rules, 2003 prescribes Form 19 as the format for making that application. The heading of the form explicitly states “Application for Revocation of a Patent for Non-Working.”
Thus, Form 19 is exclusively tied to revocation for non-working (i.e. failing the duty to work), not to other grounds of invalidity (those fall under Section 64, post-grant opposition, or High Court revocation).
Timing & Precondition: After a Compulsory Licence & Two Years
A key precondition (reading the statute and legislation together) is that revocation under Section 85 is available only after the first compulsory licence has been granted and two years have passed from that grant. In other words, one cannot immediately apply for revocation upon non-working; the mechanism presumes a widened timeframe once compulsory licensing becomes operative.
The logic is that compulsory licensing first deals with non-working by compelling the patentee (or a third party) to work the patent; revocation is a stronger remedy, to be used only later if non-working persists.
Hence, in practice:
A compulsory licence under Section 84 must exist (typically granted earlier).
After two years from that grant, Form 19 may be filed.
The burden of proof lies on the applicant to show that non-working persists despite the licence regime.
If no compulsory licence was ever granted, Section 85 cannot be invoked for revocation on non-working grounds.
Who Can File & What Counts as “Interested Person”
“Any person interested” includes a third party (e.g. a manufacturer, competitor, public interest group) who alleges actual interest in seeing the patent revoked.
The Central Government may itself file Form 19, especially in sectors of public interest.
If the applicant is not the original patentee or licensee, proof of interest (commercial standing, competing business, public health interest) should accompany the application.
The application need not be filed only in the immediate vicinity; the Controller has national jurisdiction over patents.
Key Contents & Drafting Strategy of Form 19
The statutory Form 19 (published by the Indian Patent Office) lays out fields to be filled.
Here is how you should approach each major section, with drafting tips:
Section in Form | What should be included | Tips & pitfalls |
Applicant details | Name, address, nationality, status (whether government or private) | If applicant is “interested person,” also attach supporting documents of interest |
Patent particulars | Patent number, title, date of grant, corresponding details | Ensure accuracy; any mismatch invites rejection |
Grounds & facts in support | Detailed factual narrative showing non-working: volume, market reach, demand gap, import volumes, absence of domestic exploitation, steps taken by patentee (if any) | Use credible data, reports, surveys, import statistics, working statements (Form 27), licenses, statements filed earlier |
Efforts by applicant / licensee | If applicant was already a licensee or attempted to work the invention, describe efforts to do so (if any) | This strengthens your interest and case; absence of such efforts is not necessarily fatal if you are an independent third party |
Reliefs sought | Request for revocation of the patent; any ancillary orders (e.g. direction to the Controller, variation of existing licences) | Be clear and precise in what you pray for |
Verification / declaration | Sworn statement that facts are true to the best of applicant’s knowledge | Must be signed by applicant or authorized agent |
Supportive Annexures are critical. These may include:
Copies of working statements (Form 27) filed by patentee or licensee
Market studies, import/export data, industry reports
Correspondence or notices to patentee
Evidence of failure or under-utilisation
Any existing compulsory licence order
The narrative should be persuasive, linking each fact to the statutory standard: “working to the sufficient extent.” Avoid vague assertions like “not worked properly” without numbers.
Procedure After Filing Form 19
Controller’s admissibility check
The Controller first examines whether the application is in proper form and if prima facie grounds exist. He may reject outright if formality is lacking or no arguable case is made.Notice to Patentee & Publication
If the application is admitted, notice is issued to the patentee and interested parties; a notice is also published in the Official Journal inviting counter-submissions.Counterclaim / Opposition by Patentee
The patentee can respond with evidence, explanations of working, or remedial steps taken. He may challenge the allegation of non-working.Hearing, Evidence & Submissions
Both sides present evidence (affidavits, documents, expert reports) and appear for hearings before the Controller. The Controller may frame issues and direct cross-examination or requests for additional data.Decision
The Controller can accept the revocation and order the patent be revoked, or reject the application, possibly with reasons. The decision often includes reasoning whether the patentee’s steps were adequate to count as “working to the sufficient extent.”Appeal / Review
The Patents Act does not explicitly provide for an appeal against a revocation under Section 85. However, in practice, a Letters Patent Appeal in the High Court of the jurisdiction may be available against the High Court’s judgment in a revocation petition (if the matter is at High Court stage).Order takes effect
If revocation is allowed, the patent ceases to exist from the date specified (often retrospectively or from the date of order). Rights of third parties may be recognized as per the order.
Judicial & Practical Insights
The concept “sufficient extent” has no bright-line benchmark; the Controller exercises discretion based on industry standard, market conditions, technical complexity and capacity required.
Courts emphasize revocation as an extreme remedy: only where the patentee consistently fails to work despite being given opportunity, and working is feasible, should revocation be granted.
The working statements filed by patentees under Section 146 / Rule 131 (Form 27) are powerful documentary evidence. Non-compliance with Form 27 can create a presumption of non-working, which aids revocation claims.
Once a compulsory licence is granted under Section 84, if the patentee still fails to work, the threshold to show continuing non-working becomes more compelling. The applicant must show that even under licence regime the working has not improved.
Revocation petitions are relatively rare in India; compulsory licensing is more commonly used to remedy non-working.
Best Practices & Risks to Watch Out
File only after compulsory licence: Premature revocation (when no licence exists) will lead to immediate rejection.
Collect strong empirical data: Use market reports, trade data, surveys, internal reports, import statistics.
Verify working statements: Scrutinize patentee’s Form 27 statements over years—contradictions help your case.
Assess feasibility: Ensure in your geographical or technical field, “working” is practically possible; if technical/skill barriers exist, Controller may accept excuse.
Anticipate defensive arguments: Patentees may argue underinvestment phases, scale up trajectory, licensing, or technical glitches. Pre-empt them in your narrative.
Jurisdiction & appeals: Choose the right office; understand that appeals may require High Court litigation.
Collateral risk: If revocation fails, the patentee may argue misuse of process or counterclaims in suits.
