In a landmark judgment the Supreme Court has sought to correct the trend of simultaneous assailment of a patent in different forums. The Hon'bleCourt held that simultaneous remedies to assail the same patent are not available under the Indian Patents Act and under Section 10 of the Code of Civil Procedure (CPC), 1908 read with Section 151 of the CPC.
To give a short background, a dispute over certain Licensing agreements led to a long drawn legal struggle between Dr. Aloys Wobben and Enercon India Limited being fought in multiple forums. This long standing dispute between Dr. Aloys Wobben (Appellant) versus Yogesh Mehra (Respondent) came to the Supreme Court for resolving (2014 Indlaw SC 370). The appellant had filed 19 infringement suits, and the respondents had filed 23 revocation petitions. The respondents had also filed counter-claims to the patent infringement suits filed by the appellant.
The main contentions that the Court dealt with were concerned with the issue of a patent faced with attacks from multiple forums:
- One issue was that if a counter-claim was instituted in response to a suit for infringement of a patent in the High Court, could there be further proceeding in the revocation petition filed before the Intellectual Property Appellate Board (IPAB), whether prior to or after the filing of the suit for infringement.
- The second issue was: could the jurisdiction of a High Court to decide a counter-claim for revocation, which was exclusive, could be taken away, by initiating proceedings simultaneously, before the IPAB.
The Court emphatically held that "if a "revocation petition" is filed by "any person interested" in exercise of the liberty vested in him under Section 64(1) of the Patents Act, 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 "infringementsuit" has been filed against him) through a "counter-claim"".
(It is pertinent to add here that section 64 of the Indian Patents Act, 1970 provides for revocation of a patent any time after grant on the grounds listed therein, either on a petition of any person interested or of the Central Government by the Intellectual Property Appellate Board (IPAB) or on a counter-claim in a suit for infringement of the patent by the High Court).
The Court further held that "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 "counterclaim", the defendant cannot thereafter, in his capacity as "any person interested" assail the concerned patent, by way of a "revocation petition"". This was based on the provisions of Section 10 of the Code of Civil Procedure (CPC), 1908 read with Section 151 of the CPC that provide that "where an issue is already pending adjudication between the same parties, in a Court having jurisdiction to adjudicate upon the same, a subsequently instituted suit on the same issue between the same parties, cannot be allowed to proceed"
The third issue, in the same vein as the two above, was that the use of the word "or" in Section 64(1) demonstrated that the liberty granted to any person interested to file a revocation petition, to challenge the grant of a patent to an individual, could not be adopted simultaneously by the same person, i.e., firstly, by filing a revocation petition, and at the same time, by filing a counter-claim in a suit for infringement.
The Court held that "though more than one remedy was available to the respondents in Section 64 of the Patents Act, the word "or" used therein separating the different remedies provided therein, would disentitle them, to avail of both the remedies, for the same purpose, simultaneously. On principle also, this would be the correct legal position".
- The fourth issue in this regard that came up before the Supreme Court was that if a patent had already been challenged under section 25(2) (opposition to the grant of patent within a year of grant) does the very same person have a right to challenge it again under section 64(1) (revocation proceedings and counter claim in infringement proceedings). (It is pertinent to add here that section 25(2) under the Indian Patents Act, 1970 provides for opposition to a patent on the grounds listed therein, within one year of grant).
The Court averred "that 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)".
- The fifth issue was the consent order passed by the High Court wherein the respondents ( a s defendants) had agreed, that the suits and "counterclaims" pending between the parties should be consolidated and should be heard by the High Court itself.
The Hon'ble Court averred that "it would be open for them by consent, to accept one of the remedies, out of the plural remedies, which they would have to pursue in the different cases, pending between them, to settle their dispute.Having consented to one of the available remedies postulated under law, it would not be open to either of the consenting parties, to seek redressal from a forum in addition to the consented forum"
The Hon'ble Court concluded by saying that "We have already concluded hereinabove, that having availed of any one of the above remedies, it is not open to the same person to assail the grant of a patent by choosing the second alternative available to him".
To summarize, the Supreme Court has directed as follows:
- Once a patent has been opposed under section 25(2) of the Indian Patents Act and has been granted thereafter, it cannot be attacked again, by the same person, for revocation under section 64(1) of the Indian Patent Act, either as revocation proceedings under the Act or as a counter claim against infringement claim.
- If a revocation proceeding has been initiated against a patent by a person, the same person would be disentitled to file revocation as a counter claim in infringement proceeding against him with regard to the same patent.
- If a defendant had already availed of revocation as remedy in a counter claim against an infringement proceeding, the same person would be disentitled to file a separate revocation proceeding in front of another authority.
This judgment will have far-reaching effect upon the current scenario where the hapless patentee is attacked from multiple forums and has no choice but to either give up on his patent or fight in front of multiple authorities. It is a moot point that after years of such battles, what would be the motivation left for the patentee to innovate further and how it effects the overall innovation environment in the country in the long run. Though there are several questions left unanswered still in this context, the effect will certainly help in improving the overall innovation environment in the country.
Bombay HC dismisses challenge to Nexavar Compulsory License
The Bombay High Court dismissed a challenge by Bayer AG to the ' to grant Natco a compulsory license to manufacture and distribute a generic version of Bayer's patented kidney cancer drug, Nexavar. The court opined that, "We don't see a reason to interfere with the order passed by IPAB and, therefore, the case is dismissed." Further in upholding the Nexavar compulsory license, generic versions of the drug can continue to be manufactured at Rs 8,800 per month, rather than the patented price of Rs. 2.8lakh per month. There still lies an appeal to the Supreme Court if Bayer wishes to take this up, which the Supreme Court will take up only if it believes a question of law is to be decided upon. Public health issues and price difference between the patented drug and its generic counterpart were taken into account while dismissing the said Writ.
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