Revocation of Patents #indianlaws

If “any person interested” has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act.

Appellant in the instant matter claimed to be owner and holder of various intellectual property rights, which includes about 100 patents in India and is also engaged in the manufacture of wind-turbines. According to the Appellant despite the termination of all intellectual property licence agreements with Respondents, they continued the use of the Appellant’s patents without due authority in extreme detriment to the Appellant, as his technical know-how was by them without consideration or authorisation. Respondents had filed 19 “revocation petitions” before the Intellectual Property Appellate Board under Section 64(1) of the Patents Act, 1970 (Act) and on being dissatisfied with the action of Respondents, in having approached the “Appellate Board”, Appellant had filed a number of “patent infringement suits” before the High Court wherein the Respondents also filed “counter-claims” in response to some of the “infringement suits”.

Following were the issued based on contentions of parties:

• Where a “counter-claim” is instituted in response to a suit for infringement of a patent in the High Court, whether there can be no further proceeding in the “revocation petition” filed before the “Appellate Board”.

• The jurisdiction of a High Court to decide a “counter-claim” for revocation, is exclusive, and could not be taken away, by initiating proceedings simultaneously, before the “Appellate Board” and accordingly whether the proceedings before the High Court in furtherance of the “counter-claim”, would negate all similar proceedings against the same patent, on the same grounds, before the subordinate forum (the “Appellate Board”), for the simple reason, that the inferior forum would have to make way for the superior forum.

• Whether the jurisdiction vested with the High Court, to decide a “counter-claim” seeking revocation of a patent in a suit for infringement, could not be taken away by an independent petition for revocation, of the same patent, and on the same grounds, pending before the “Appellate Board”.

• When a “counter-claim” for revocation is instituted, whether High Court alone would be vested with the charge for determining the merits of the plea of revocation.

The Court while dealing with the provision of Section 64(1) of the Patents Act observed that the provision vests the liberty to raise a challenge to a patent in three different circumstances. Firstly, on a petition by “any person interested”. Secondly, on a petition of the Central Government. In case of the above two options, the petition for revocation would lie before the “Appellate Board”. Thirdly, by way of a “counter-claim” in a suit for infringement of a patent. The third option is adjudicable only by the jurisdictional High Court.

While interpreting Section 64(1) a reference was also made to provisions of Section 25 of the Act, the same being another provision of the Act wherein the grant of patent can be assailed other than Section 64. A challenge to the grant of a patent, through a “notice of opposition” is available, on all the grounds of challenge permitted to oppose, an application for the grant of a patent under Sub-section (1) of Section 25. There is however a substantial difference in the locus, for raising such a challenge, after the patent has been granted. On the subject of locus, therefore, Section 25(2) and Section 64(1) are alike, inasmuch as, the locus to raise a challenge to a patent granted lies with “any person interested” in both of these provisions. A challenge to the grant of a patent can also be raised by a Defendant in a “patent infringement suit”. This can be done by the Defendant by filing a “counter-claim” in a “patent infringement suit”. When a challenge is raised at the pre-grant stage, under Section 25(1), the same is liable to be determined at the hands of the “Controller”. An order passed by the “Controller” can be assailed by way of an appeal before the “Appellate Board”. When a challenge is raised under Section 25(2), it must be raised within one year of the publication of the grant (of patent). The same has to be examined, in the first instance, by an “Opposition Board” contemplated under Section 25(3). The recommendations made by the “Opposition Board” are then to be placed before the “Controller” for consideration. After issuing notice to the patent-holder, and after affording an opportunity of hearing to the patent-holder, the “Controller” is required to pass the final order, on a notice of opposition filed under Section 25(2). Such order passed by the “Controller” is assailable by way of an appeal, before the “Appellate Board”. A challenge raised by “any person interested”, under Section 64(1), is liable to be adjudicated, at the very first instance, by the “Appellate Board”. If in response to an “infringement suit”, the Defendant files a “counter-claim” seeking the revocation of the concerned patent, the said process of adjudication would lie before the jurisdictional High Court. The provisions contained in Section 64 are subservient to all the other provisions contained in the Patents Act. If there is any provision under the Patents Act, which is in conflict with the mandate contained in Section 64, Section 64 of the Patents Act would stand eclipsed, and the other provision(s), would govern the field under reference.

The Court in regard to issues raised held as under:

• If “any person interested” has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a “revocation petition” in the capacity of “any person interested” (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a Defendant through a “counter-claim” (also Under Section 64(1) of the Patents Act).

• If a “revocation petition” is filed by “any person interested” in exercise of the liberty vested in him under Section 64(1), prior to the institution of an “infringement suit” against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an “infringement suit” has been filed against him) through a “counter-claim”.

• Where in response to an “infringement suit”, the Defendant has already sought the revocation of a patent (on the basis whereof the “infringement suit” has been filed) through a “counter-claim”, the Defendant cannot thereafter, in his capacity as “any person interested” assail the concerned patent, by way of a “revocation petition”.

[Dr. Aloys Wobben and Anr. vs. Yogesh Mehra and Ors.]
(SC, 02.06.2014)