Supreme Court says NO to multiple proceedings on same issues in Patents
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 –
- 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.
- 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".
- 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.