Revocation Of Patents Under Indian Patent Law: An Overview Of The Macleods Pharmaceuticals Ltd v. The Controller Of Patents Case

Under Section 64 of the Patents Act, Act no. 39 of 1970, a patent may be revoked in India. The statute allows a person interested in the patent to take an action against the validity of the patent. A revocation petition can be filed on of number of grounds including, among others, if the patent was granted without novelty and/or without inventiveness and/or without industrial applicability, or if the patent does not meet other basic requirements for grant. As a rule, a revocation petition can be filed as a separate petition in High Court or as a counter-claim in a patent infringement suit.

In MacLeods Pharmaceuticals Ltd v. The Controller of Patents & Anr., the petitioner, MacLeods Pharmaceuticals Ltd, filed a revocation petition under Section 64 of the Patents Act against Indian Patent IN 243301 granted to the respondent, Boehringer Ingelheim Pharma, for a medicinal product, Linagliptin. The respondent, Boehringer Ingelheim, has filed an infringement suit against MacLeods in the Himachal Pradesh High Court claiming infringement of the subject patent. At the time of the interlocutory proceedings, the patent was claimed to have expired and the Respondent continued with its infringement action (although, the patent had expired). MacLeods filed an interlocutory application to dismiss the revocation petition on the basis of expired patent making the revocation infructuous. The court that the Revocation petition could still be maintained.

Decision

The Court considered the differences between a petition for revocation under Section 64 and a defence of invalidity under Section 107. The Court determined that these two proceedings were separate and for different purposes:

1. A revocation petition under Section 64: Section 64 sets out the grounds under which a patent may be revoked. It permits any interested person to file a revocation petition, either as a petition on its own or as a counter-claim in an infringement action. The High Court has jurisdiction to entertain such petitions.
2. A defence of invalidity under Section 107: Section 107(1) states that in any suit for infringement of a patent, the defendant may raise a defence of invalidity based on any of the grounds under Section 64 for revocation of the patent. This provision enables a party accused of infringement to attack the validity of a patent as part of the infringement action.

The court found that the revocation petition that MacLeods had filed was separate from the Défense raised in the Himachal Pradesh infringement suit. The petitioner had not made a counter-claim for revocation in the infringement suit and the revocation petition was filed before the infringement action commenced.

The Court also observed that the Patents Act provides a right to seek revocation as well as the defence of invalidity in an infringement suit, and that the Patents Act does not in any way circumscribe this, nor force MacLeods to choose one or the other. The Delhi High Court held that a petition for revocation can still be maintained beyond the term of the patent, provided that the petitioner has a viable cause of action. In the recent case, the court noted that Boehringer Ingelheim's infringement case was still pending and, if the patent was revoked, the infringement suit could be dismissed with no damages awarded. Given that the patent was largely irrelevant to the revocation petition, there was no reason that it could not proceed. The court dismissed the applications to dismiss the revocation petition and held that the petition could proceed even though the patent had expired.

The Ayyangar Committee's Recommendations

1. Introduced by members of the Indian patent law community in 2002 to rethink the whole issue of patents and added value.
2. They recommended that revocation petitions be heard only by a High Court as High Courts have territorial jurisdiction over the Office of Patents.
3. They suggested removal of counter claims on the action of infringement in infringement actions to keep the validity of a patent in a separate action.
4. However, Parliament did not advocate these concepts in entirety.
5. Under Section 104 of the Patents Act courts are limited regarding where to establish jurisdiction to hear patent infringement actions.
6. Courts can hear the actions in a District Court or High Court depending on the circumstances of case.
7. Section 151(2) of the Act allows for these entries in the register and they would serve as public notice of the results in infringement proceedings.

Conclusion

The MacLeods Pharmaceuticals Ltd v. The Controller of Patents & Anr. case illustrates, as well as affirms, the differences between revocation petitions and invalidity defences under Indian patent law, importantly finding that revocation petitions under Section 64 can proceed, even after the expiry of the patent term, where there is a valid cause of action under Section 64. The case also reaffirmed the differing procedures between a Section 64 revocation petition and a Section 107 infringement suit, while also highlighting the difference in consequences of a revocation petition versus a defence of invalidity put into play by way of a defence in an infringement suit.

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