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RULES AND REGULATIONS ON
INTER PARTES PROCEEDINGS
[PETITION FOR CANCELLATION OF A MARK, PATENT, UTILITY MODEL,
INDUSTRIAL DESIGN, OPPOSITION TO REGISTRATION OF A MARK AND COMPULSORY LICENSING]
FULL TEXT
 
 
 
RULE 3 
CANCELLATION OF PATENTS


Section 1.  Cancellation of patents;  Grounds.  
    (a)  Any interested party may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following: 
      (i) that what is claimed as the invention is not patentable;  

      (ii) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art;  

      (iii) that the patent is contrary to public order or morality;  

      (iv) that the patent includes matters outside the scope of  the disclosure contained in the application as filed. 

    (b) Cancellation by person having right to the patent.  A person declared by final court order or decision as having the right to the patent may, within three (3) months after the decision has become final, seek cancellation of the patent, if one has already been issued.  

     (c) Interested party.  A party interested in the patent shall include any person including a person declared by final court order or decision to be the true and actual inventor. 


Section 2. Partial cancellation.  Where the grounds for the cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only in which case, the Office shall reissue the amended patent.  


Section 3. Requirement of the petition.  The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts relied upon, and filed in triplicate with the Bureau. Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in the English language.  


Section 4. Notice of hearing.  The Hearing Officer shall serve in the name of the Director, notice of the filing of the petition upon the patentee and all persons having grants or licenses, or any other right, title or interest in and to the patent  and the invention covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon on such persons and the petitioner.  Notice of the filing of the petition shall be published in the IPO Gazette.  


Section 5. (a)  The Committee of Three.  In cases involving highly technical issues, on motion of any party, the Director may order that the petition  be heard and decided by a committee composed of the Director as chairman and two (2) members who have the experience or expertise in the field of technology to which the patent sought to be cancelled relates.  

(b) Cancellation of the patent by the Committee.  If the Committee finds that a case for cancellation has been proved, it shall order the patent or any specified claim or claims thereof cancelled.  

(c) Amendment made by the patentee during the cancellation proceedings.  If the Committee finds that, taking into consideration the amendment made by the patentee during the cancellation proceedings, the patent and the invention to which it relates meet the requirement of  the IP Code, it may decide to maintain the patent as amended : Provided, that the fee for printing of a new patent is paid within one (1) month from the date of the decision of the committee.  If the fee for the printing of the new patent is not paid in due time, the patent shall be revoked at the expiration of the period for payment.  

(d) Publication of the amended patent. If the patent is amended per decision of the committee, the Bureau shall, at the same time as it publishes the mention of the cancellation decision, publish the abstract, representative claims and drawings indicating clearly what the amendments consist of.  


Section 6. Effect of cancellation of patent or claim.  The rights conferred by the patent or any specified claim or claims cancelled shall terminate.  Notice of the  cancellation shall be published in the IPO Gazette.  


Section 7. Patent found invalid may be cancelled.  If, in an action for infringement filed before the court, the court finds the patent or any claim to be invalid, it shall cancel the same.  Such order of cancellation shall be forwarded to the Director who shall cause the recording and publication of notice of such order in the IPO Gazette upon receipt of the final judgment of cancellation by the court.  Such recording shall be made in the appropriate register of the Office.    


 










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