Form 19 — Application for Revocation of a Patent for Non-Working
Form 19 asks the Controller to revoke a patent that has still not been worked in India after a compulsory licence was granted.
What Form 19 is for
Compulsory licensing is the first response when a patented invention is not worked in India or is not reasonably available to the public. Section 85 provides the second. Where a compulsory licence has been granted and the underlying problem persists, the Central Government or any person interested may apply to the Controller for the patent to be revoked. Form 19 is that application, and Rule 96 covers applications of this kind.
The grounds mirror the compulsory licensing grounds but are directed at the continuing position. In substance, the applicant argues that the patented invention has not been worked in the territory of India, or that the reasonable requirements of the public with respect to the invention have not been satisfied, or that the invention is not available to the public at a reasonably affordable price, despite the compulsory licence having been granted.
This is a rare and serious remedy. Revocation removes the patent altogether rather than allowing another party to work under it. Because of that, the proceeding is contested, the patentee is heard, and the Controller decides on evidence about what has actually happened in the market since the licence was granted. The application may only be made after the period Section 85 fixes has run from the grant of the first compulsory licence, and because that period is fixed by the Act, the current text of the section should be checked before an application is prepared.
Who files it, and when
The Central Government may apply, and so may any person interested. In practice the applicant is usually a party already active in the field, often the compulsory licensee or another manufacturer, who can speak from direct knowledge about supply, demand and pricing in India. The patentee is the respondent and is entitled to be heard before any order is made.
The application can only be made after a compulsory licence has been granted in respect of the patent, and after the period Section 85 fixes has elapsed from the date of the order granting the first compulsory licence. That period is set by the Act itself, so it must be read from the current text of Section 85 rather than assumed. There is no advantage in applying before the period has run, because an early application will not be entertained, and the evidence about continuing non-working needs the intervening period to accumulate anyway.
How it is filed
- Confirm that a compulsory licence has been granted in respect of the patent and identify the date of that order.
- Check the current text of Section 85 for the period that must elapse before an application may be made.
- Gather evidence of the position since the licence, covering manufacture in India, supply volumes, pricing and unmet demand.
- Frame the grounds against the statutory tests rather than as general criticism of the patentee.
- Complete the current Form 19 and file it with the statement of case and the evidence.
- Pay the fee prescribed in the First Schedule.
- Take part in the contested stages, including the patentee's response, the evidence timetable and the hearing.
What the form asks for
- The number of the patent, the patentee's name and the date on which it was granted.
- Particulars of the compulsory licence already granted, including the date of the order.
- The applicant's interest, or the fact that the application is made by the Central Government.
- The grounds relied on, tied to non-working, unmet public requirements or affordability.
- Evidence of the position in India since the compulsory licence, such as production, import, supply and price data.
- The relief sought and the facts supporting it.
Described in general terms. Form contents are prescribed in the Second Schedule and change — download the current version from the Patent Office rather than working from any summary, including this one.
Common mistakes with Form 19
- Applying before the period Section 85 requires has elapsed from the first compulsory licence order.
- Filing where no compulsory licence has been granted at all, when the correct route is an application for a compulsory licence.
- Relying on the same evidence used in the earlier compulsory licence proceeding, when the question is what has happened since.
- Treating revocation as a bargaining tool, without the market evidence to support the statutory grounds.
- Confusing this route with revocation before the High Court under Section 64, which rests on entirely different grounds such as lack of novelty or insufficiency.
What happens if it goes wrong
If no application is made, the patent continues for its term, with the compulsory licence in place and the patentee still receiving royalty. If the application is made without adequate evidence, it is likely to fail and the patent stands. If it succeeds, the patent is revoked, which means the invention becomes free for anyone to work in India for the remainder of what would have been the term. That is a far greater consequence than a licence, which is why the threshold and the timing are strict.
A licensee returns to the Controller about a filtration patent
This is a simplified illustration. A compulsory licence is granted over a patent covering an industrial filtration medium, allowing Malwa Filtration Pvt Ltd of Indore to manufacture in India. The patentee itself continues to supply only small imported quantities. After the period Section 85 requires has passed from the licence order, an industry association whose members buy the medium applies for revocation for non-working. It puts in evidence covering the intervening period: national demand estimates drawn from tender records, the patentee's declared import volumes, price comparisons between imported and locally made product, and statements from three buyers who could not obtain supply. The patentee responds with its own account of supply arrangements and pricing. The Controller weighs the evidence about what actually happened in India since the licence, and hears both sides before deciding whether the statutory grounds are made out.
Simplified illustration only. Actual outcomes depend on the facts.
Questions about Form 19
How is this different from revocation under Section 64?
Section 64 revocation is about whether the patent should have been granted at all, and it is decided by the High Court, or raised as a counter-claim in an infringement suit, on grounds such as lack of novelty, obviousness, insufficiency, wrongful obtaining or non-compliance with the requirement to disclose foreign applications. Revocation for non-working is different in kind. It does not question validity. It says the patent, valid or not, is not being used in India in the way the Act expects, and it is decided by the Controller.
Must a compulsory licence have been granted first?
Yes, this route follows a compulsory licence. The scheme of the Act is graduated: where an invention is not worked or is not reasonably available, the first remedy is to let someone else work it under a compulsory licence. Only if the position still has not improved after the period the section fixes does revocation become available. A person facing non-working with no licence in place should be looking at the compulsory licence route rather than at revocation, since the two are sequential rather than alternative.
Who can apply for revocation for non-working?
Either the Central Government or any person interested can bring the application. A person interested includes those engaged in or promoting research in the same field, and in practice manufacturers, importers, sellers and industry bodies whose commercial position is affected. The applicant should be ready to state the basis of the interest, because standing is examined. Applicants who are already active in the market are usually best placed, since they can give direct evidence of demand, supply and pricing in India.
What evidence matters most in a non-working case?
Evidence about the Indian market during the relevant period. That means production and import figures, distribution and supply records, tender documents showing unmet demand, price comparisons, and testimony from buyers who could not obtain the product. Statements made by the patentee in its own working statements filed with the Patent Office are also relevant, because they are the patentee's own account of how the invention has been worked. General argument without this kind of material rarely establishes the statutory grounds.
Concerned about a patent that is not worked in India?
MYCrave Consultancy & Services explains how the compulsory licence and non-working routes fit together.