India: Multiplicity Of Proceedings In Patent Disputes

Last Updated: 12 February 2015
Article by Jaya Moorjani


Patent disputes in India often involve multiple proceedings in different jurisdictions. The same patent may form the subject matter of opposition proceedings before the Controller, revocation proceedings before the Intellectual Property Appellate Board ("IPAB"), patent infringement suit filed by the patent holder in a district court and a counter claim filed by the defendant before the High Court, seeking revocation of the patent. In patent disputes, the stakeholders are usually large corporate with deep pockets who exploit the statutory provisions and deliberately launch multiple proceedings, wasting the precious time of the already overburdened legal system. In a welcome development, the Supreme Court of India has rationalized the procedure for revocation of patents in India by delivering a judgement that bars opponents from challenging the validity of patents before multiple forums simultaneously. It has held in the case Dr. Alloys Wobben and Another v. Yogesh Mehra and Others1that revocation of a patent can be sought either by filing a revocation petition before the IPAB or by filing a counter claim in a patent infringement suit before the High Court – the opponent cannot exercise both the options.

1. Background

Under the Patents Act, 1970 ("Act"), the validity of a patent may be challenged in the following manner:

  1. Through a pre-grant opposition under Section 25(1)2
  2. Through a post-grant opposition under Section 25(2)3
  3. Through a revocation petition filed before IPAB under Section 64(1)4
  4. Through a counter claim before the High Court filed in a suit for infringement of the patent, also under Section 64(1)

Often, an interested party challenges the validity of a patent by filing a revocation petition before the IPAB. When the same party is made a defendant in a patent infringement suit, it also files a counter claim before the High Court, seeking revocation of the patent. This gives rise to two separate and parallel revocation proceedings before two different forums. In the case cited above, the Supreme Court dealt with this problem and provided a solution which is examined in this bulletin.

2. Facts of the case

Dr. Alloys Wobben ("Appellant") filed a suit against Enercon India Ltd., Yogesh Mehra and Ajay Mehra, ("Respondents"). The Appellant was a scientific engineer in the field of wind turbine generators and wind energy convertors, owning 100 patents in India and had been carrying on business incorporating the patented processes under the name Enercon GmbH ("Enercon"). In India, he had a joint venture partnership with M/s Yogesh Mehra and Ajay Mehra through a joint venture company called Enercon India Limited ("EIL"), formed in 1994. The licences to use the technical know-how were granted by Enercon through written intellectual property licence agreements with EIL. However, the last license agreement dated September 29, 2006 was terminated by the Appellant on December 8, 2008, due to non-fulfilment of obligations by the Respondents. The Appellant contended that even after the termination of the agreements, the Respondents continued to use the patents, without any authority. This gave rise to a dispute between the two parties. The Respondents filed 23 revocation petitions before the IPAB in 2009, 2010 and 2011, praying for revocation of the Appellant's patents. The Appellant filed 19 patent infringement suits against the Respondents before the Delhi High Court. In response, the Respondents also filed counter-claims in some of the infringement suits, seeking revocation of the Appellant's patents. The question which arose was which of the two forums (IPAB or the High Court), should continue with the revocation proceedings. Although the High Court had passed a consent order whereby all patent disputes were to be consolidated before the High Court, yet the Respondents continued to pursue the revocation petitions before the IPAB. Eventually, the litigation reached the SC for determination of the correct course of action to be followed by the Respondents.

3. Contentions

The Appellant raised the following points before the Supreme Court:

  1. Where a counter-claim is filed in response to an infringement suit in the High Court, there can be no further proceedings in the revocation petition filed before the IPAB, irrespective of whether such proceedings were instituted before or after the filing of the infringement suit.
  2. If the Respondents had filed a revocation petition before the institution of an infringement suit, they cannot file any counter-claim for the same cause of action, since counter-claim is also an independent suit.
  3. The jurisdiction of a High Court to decide a counter-claim for revocation of patent is exclusive and could not be taken away by initiating parallel proceedings simultaneously before the IPAB. If any revocation petition is filed before IPAB and then any counter-claim is also filed before the High Court for the same patent on the same grounds, the case will have to be transferred to the High Court for determination. The inferior forum (IPAB) will have to make way for the superior forum (the High Court). Hence, the proceedings before the High Court would negate all similar proceedings against the same patent before the IPAB.
  4. There was a consent order passed by the Delhi High Court on September 1, 2010, wherein, the Respondents had agreed that the suits and counter-claims pending between the parties would be consolidated and heard by the High Court itself. Yet, the Respondents had continued to pursue their revocation petitions before the IPAB.

4. Judgement

The Supreme Court determined the issues as follows:

  1. If "any person interested" has filed proceedings under Section 25(2) of the Act (i.e. post grant opposition), the same would eclipse all similar rights available to the very same person under Section 64(1) of the Act. This would include the right to file a "revocation petition" in the capacity of "any person interested" (under Section 64(1) of the 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 Act). This was because Section 64 is prefaced by the words "Subject to the provisions contained in this Act,....." and not by the words, "Without prejudice to the provisions contained in this Act.....", or "Notwithstanding the provisions contained in this Act...". The words with which the legislature has prefaced Section 64, necessarily lead to the inference, that the provisions contained in Section 64 are subservient to all the other provisions contained in the Patents Act.
  2. If a revocation petition is filed by "any person interested" in exercise of the liberty vested in him under Section 64(1) of the Act, prior to the institution of an infringement suit against him, he would be disentitled in law from seeking the revocation of the patent giving rise to the infringement suit, through a counter-claim. This denial of the remedy available by way of a "counter-claim" under Section 64(1) of the Act is based on the principle of res judicata crystallized in Section 10, read with Section 151 of the Code of Civil Procedure, 1908. Since a counter-claim is of the nature of an independent suit, a counter-claim cannot be allowed to proceed, where the defendant has already instituted a suit against the plaintiff (by way of revocation proceedings before the IPAB) on the same cause of action.
  3. Where in response to an infringement suit, the defendant has already sought the revocation of the patent in question 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 before the IPAB. This denial of remedy available by way of a revocation petition under Section 64(1) of the Patents Act, is also based on the same principle of law, i.e. res judicata.
  4. It would be convenient for the parties concerned as well as the adjudicatory authorities, if they agree to resolve their disputes before a singular adjudicatory authority. Having consented to one of the available remedies postulated under law (by way of the consent order passed by the Delhi High Court on September 1, 2010), it would not be open to either of the consenting parties, to seek redressal from a forum in addition to the consented forum. Therefore, the revocation of patents in the instant case should be decided by the Delhi High Court, in view of the consent order passed by it.


While the Supreme Court decision is welcome since it has streamlined the patent revocation procedures, it has left a few questions unanswered. According to the judgement, when a suit for infringement is filed against a party that has already initiated revocation proceedings before the IPAB, that party cannot challenge the patent through a counter-claim. Does this mean that proceedings before the High Court shall continue unabated, notwithstanding the fact that the validity of the patent itself is under challenge before the IPAB? What will happen if the High Court grants an injunction but later, the IPAB revokes the patent? Unlike the Trademarks Act, 1999, the Act5 does not expressly provide for stay of the infringement suit in the event the validity of the patent in question is challenged in the suit. Although this point was raised before the Supreme Court, it refused to deal with it on the ground that the point was raised only because the Appellants did not desire parallel proceedings and the Court had already given its decision on the issue of parallel proceedings.


1 Judgment of Hon'ble SC in civil appeal no. 6718 of 2013 decided on June 2, 2014

2 According to Section 25(1), any person may oppose a patent application after its publication but before the grant of patent

3 According to Section 25(2), any interested person may oppose a patent within one year of the grant of patent

4 According to Section 64(1), any interested person or the Central Govt. may seek revocation of patent by way of a revocation petition filed with IPAB or by filing counter-claim with High Court

5 The Patents Act, 1970

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Obhan & Associates
Vaish Associates Advocates
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Obhan & Associates
Vaish Associates Advocates
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions