In a recent case, the Supreme court was required to consider the legal contentions revolving around opposition, revocations and counter claims under the Patents Act and more specifically if the Defendant in an "infringement suit", has raised a "counter-claim" seeking revocation of a patent as a defense in a High Court, does the "Appellate Board" thereafter cease to have the jurisdiction to adjudicate upon the validity of the patent.

In order to address this, the Court made an endeavor to examine the controversy and the wording of Section 64 of the Patent Act which governs the circumstances for revoking a granted patent and provides grounds on which a revocation of a granted patent could be sought. The court observed that the words with which the legislature has prefaced Section 64, necessarily leads to the inference that the provisions contained in Section 64 are subservient to all the other provisions contained in the Patents Act.

Agreeing to the Appellants contention that the use of the word "or" in Section 64(1) demonstrated the liberty granted to any person interested to file a "revocation petition", to challenge the grant of a patent to an individual, cannot be adopted simultaneously by the same person, the Court stated that even though more than one remedies are available to the Respondents under Section 64 of the Patents Act, the word "or" used therein separating the different remedies provided therein, would disentitle them, to avail both the remedies, for the same purpose, simultaneously.

Finally the Supreme Court culled out the following principles of law based upon the factual matrix of the case –

1. If "any person interested" initiated post grant opposition proceedings under Section 25(2), 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" as "any person interested" and, the right to seek the revocation of a patent as a Defendant through a "counter-claim" in a suit for patent infringement.


2. If a "revocation petition" is filed by "any person interested" under Section 64(1), 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 "infringement suit" has been filed against him) through a "counter-claim".


3. 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 "counter-claim", the Defendant cannot thereafter, in his capacity as "any person interested" assail the concerned patent, by way of a "revocation petition".

This is a welcome decision and would considerably reduce the multiple challenges mounted by parties in different forums thus delaying the decision. The ruling has laid down clear guidelines on the course of action to be followed in patent litigation to avoid multiplicity of proceedings.