India: Grant Of Patents Does Not Guarantee Validity

Last Updated: 14 May 2007
Article by Manisha Singh

The Patent Act, 1970 warrants that a patent shall be granted as expeditiously as possible provided the application for a patent has been found to be in order for grant. But the moot question is whether the grant of patent attaches any presumption in favour of validity of patent. Section 13 (4) of the Patents Act, 1970 expressly provides that the examination and investigation conducted under the Act, shall not in any way deemed to warrant the validity of the Patents. An interesting question that was addressed in Bilcare Ltd. v. Supreme Industries Ltd 2007 (34) PTC 444(Del.) is whether there is any presumption in favour of the validity of the patent for grant of temporary injunction in favour of patentee.

Facts of the Case

Bilcare Ltd/Appellant/Plaintiff is engaged in the manufacturing and marketing blister films made out of plastic material including PVC for packing pharmaceutical products since 1997. Bilcare Ltd claims to have developed a process and a film that protects the medicines from moisture and unique that, it was translucent which enabled easy identification of the tablets. Bilcare Ltd claims to have invented the film in the year 2004 and the patent application for the same was filed in the same year and no opposition was made with in the statutory period and hence patent was granted. The grievance of Bilcare Ltd is that they found Supreme Industries/Respondents/Defendants to be manufacturing the PVC metalised film thereby infringing the registered patents. Aggrieved by the said activity, Bilcare Ltd filed two sets of suits against each respondents and obtained an ex parte order restraining them from manufacturing, marketing, selling utilizing, buying or offering for sale any metalised PVC pharmaceutical film that infringes the impugned patent. Supreme Industries Ltd. moved for vacation of the ex parte order and contented that opposition has already been filed against the patent on the grounds of lack of novelty, inventive step, prior knowledge, prior art and wrongful obtaining. They also contented that the patent is for multi layered as against the two layered film of Supreme Industries Ltd. The Trial Court after hearing the parties vacated the ex parte injunction order. Aggrieved by the said order, Bilcare Ltd preferred appeal.


Bilcare Ltd contented that it had proved the essentials for obtaining a temporary injunction viz

  1. prima facie case
  2. balance of convenience in its favour, and
  3. it would suffer irreparable injury if injunction is not granted.

A number of cases were cited for buttressing that it is not possible for any court to hold a mini-trial at the stage of grant of temporary injunction. It was further argued that as a rule of prudence, for the purpose of temporary injunction, if the patent is a new one a mere chance at the bar would be sufficient for refusal of temporary injunction, but if the patent is sufficiently old and has been worked, the patent is to be presumed to be valid. Further Bilcare Ltd. placed reliance on M/S Metro Plastics Indusries v. Galaxy Footwear, New Delhi AIR 2000 PTC (20) 1 (Del.) (FB), where it was held that merely because the registration is recent, injunction shall not be refused on that ground.

Supreme Industries Ltd placed reliance on a book titled "Packaging Foods with plastics" which was published in the year 1991 and deals with multi-layered films. Further Bishwanath Prasad Radhey Shyam v. H.M. Industries, A I R 1989 SC 1444 was placed for substantiating that the fundamental principle of law is that the patent must be granted only for an invention which is new and useful. If it is an improvement or combination, the same must produce a new or better or cheaper article than before. The above case along with a catena of cases was relied for buttressing that there is no presumption as to the validity of patent granted by the controller. It was also pointed out that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and revocation petition has been filed.


The Court held that the two years of use of patent cannot be figured as sufficiently old and that there exist tangible grounds for suspicion of alleged invention. The Court further opined that it would not be proper to upset the well-reasoned judgment of the trial court at that particular stage. The Court also found that the prima facie case, balance of convenience and irreparable loss leans towards Supreme Industries and hence dismissed the appeal.

There is no set parameter for determining the validity of patent. The grant of patent neither awards such presumption. But the Judicial precedents in the matter points that if the patent is more than six years old and there has been actual use of it, it would be safe for the court to proceed with the presumption of validity.

© Lex Orbis 2007

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.

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