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10 July 2014
In a landmark judgment dated June 2, 2014, the Supreme Court of India has decisively settled the controversy concerning multiple remedies that can be adopted in proceedings for revocation of patents. The Supreme Court set aside the order dated January 20, 2012, in Dr Aloys Wobben and Anr v. Yogesh Mehra & Ors, passed by the Delhi High Court, which was the subject of challenge in the special leave petition.
The provisions of the Patents Act, 1970 interpreted by the Supreme Court are:
a) Section 25(2) of the Patents Act 1970, i.e. a post grant opposition which can be filed within one year of the grant of a patent.
b) Section 64(1) of the Patents Act, which provides for an original revocation petition before the Intellectual Property Appellate Board (IPAB) or a counterclaim seeking revocation in a suit for infringement before the High Court.
The Supreme Court, in its wellreasoned order, held the following:
Where there is a post grant opposition filed under the provisions of Section 25(2) of the Patents Act, it would eclipse Section 64 as also a counter claim. In other words, once there is a post grant opposition, no revocation before the IPAB or a counter claim in an infringement court can be entertained;
The use of the expression ‘or’ in Section 64 implies that either a revocation before the IPAB or a counter claim before the High Court will lie but certainly not both;
If there is a revocation filed before the IPAB prior to infringement suit, then such a revocation would continue and a counter claim before the infringement court would not lie;
If, on the other hand, an infringement suit has been filed first, then only a counter claim can lie but a subsequent revocation petition would be barred on the principles of res judicata;
The High Court is a superior court to the IPAB;
The Apex Court also elaborated on the concept of “person interested” under Section 2(t) of the Act, holding the same to be a dynamic term; and
The parties can by consent decide to take their disputes before a specific forum and, in light of this, the consent order dated September 1, 2010, was fully justified.
This is an extraordinary judgment as it affects all infringement actions and related counter claims and/or revocation petitions. It also affects post grant oppositions and creates a balanced regime which harmonizes post grant oppositions, revocation before the IPAB and infringement actions and counter claims.
Anand and Anand represented the petitioners, Dr Aloys Wobben and WPG, before the Supreme Court.
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