• Author: Dr. Mohan Dewan

The Indian patent system has the unique distinction of having an elaborate system in place to ensure that a patent is not wrongly granted for a “questionable” invention.

The four-pronged attack includes;

(i) A pre grant representation procedure available to any person, during the entire prosecution process of a patent application from the date of its publication;

(ii) A post grant opposition procedure available to an ‘interested’ person which such a person can initiate, within a one year period commencing from the date of publication of the grant of a patent;

(iii) An independently available revocation process which can be initiated by an ‘interested’ person from the date of grant of a patent during its entire term; and

iv) A counter claim for revocation available to a defendant in an infringement action.

Hitherto, these provisions were being used by alleged infringers to hassle a patent holder/inventor at all stages of a patent application or after the patent was granted. Frequently, the post grant, revocation, and counter-claim prongs were used simultaneously to attack a patent in different venues across India. For instance, a patent holder who either files an action for infringement or threatens to sue an infringer may have to face post-grant opposition proceedings before the controller at Mumbai, an action for revocation filed at the Appellate Board at Chennai and counter claim in an infringement suit filed at the High Court of Delhi.

Apart from the obvious strain caused to patent holders and their attorneys, this resulted in a multiplicity of proceedings for the same issue because the validity of a patent is always an issue in these types of proceedings.

In the landmark case of Dr. Alloys Wobben v. Yogesh Mehra, the Supreme Court of India has attempted to rationalize the system by laying down certain guidelines for attacking a patent, as follows:

(i) If a post-grant opposition is filed under section 25(2) before the Controller, this will eclipse the right of the same party from filing an application for revocation under section 64(1) before the Appellate Board or a counterclaim.

(ii) The grant of a patent is crystallized only after a period of one year of the publication of its grant, provided opposition proceedings are not filed under section 25(2) in the interim.

(iii) Only the culmination of proceedings under section 25(2) bestows the final approval on a patent.

(iv) In an action for infringement, if the defendant chooses to attack the patent he must select either one of two options: (a) file a counterclaim in the suit itself or (b) approach the Appellate Board with a petition for revocation, but he cannot select both options.

(v) If an action for revocation is filed before the filing of an infringement suit, the defendant in the suit cannot file a counterclaim, and

(vi) If the defendant chooses to file a counterclaim in a patent infringement suit he cannot have recourse to filing a revocation action under section 64(1) before the Appellate Board.

On the one hand, the Supreme Court has given marginal relief to patent holders and inventors by ensuring that they will not have to suffer parallel proceedings in multiple jurisdictions. However, it appears that the honourable judges were not explained the ground realties and the possibility of misuse of the edicts that they have laid down.

For instance, the honourable Court has created a new concept of crystallization of a patent. An unscrupulous infringer can take advantage of this principle by filing opposition proceedings under section 25(2) and thwart the rights of a patent holder for a significant period. In India, it takes at least 4-5 years for a patent to be granted. By law, the term of the patent commences not from the date of filing of the application in India but from the priority date. Therefore, in the ordinary course when a patent is granted in India, already at least 6-7 years of the patent term are lost. If a patent holder is prevented from taking an action against an infringer immediately after the grant of the patent, this would severely hinder the patentee’s rights. Directing that the patentee can file an infringement action only after the culmination of post-grant opposition proceedings under section 25(2), further truncates the period in which a patentee can prevent violation of its patent. The Supreme Court seems to be oblivious of the ground realities that these opposition proceedings under section 25(2) can take upwards of 5 years and even more, if opponents resort to appeals right up to the Apex Court. It would be palpably unfair for a patent holder to be restrained from excersizing its rights under a patent till the culmination of the opposition proceedings.

The other ground reality that the Supreme Court does not appear to have considered is that if a patentee files for infringement and the defendant files an application for revocation of the patent at the Appellate Board, the court hearing the infringement suit is now debarred from framing an issue relating to invalidity as this will have to be considered only by the Appellate Board. Therefore, the only issue to be decided by the Court is whether or not the defendant has infringed the plaintiffs’ patent. In patent suits, this can be decided relatively easily and swiftly. On the other hand, deciding the issue on the invalidity is often a complicated technical exercise and may take years before this can be settled, if the principle jurisdiction of the Appellate Board has to be considered and all the avenues of appeal available to either party. The Apex court is significantly silent on how this problem should be dealt with: should the trial court hold that there is infringement and issue an injunction or should it wait for the findings of the Appellate Board on the invalidity of the patent? It would be paradoxical if the trial court decides in favour of a patent holder and the Appellate Board decides to revoke the patent.

Again, the Apex court in its wisdom failed to consider another important issue when counterclaims are filed. The Apex court was not apparently made aware of the fact that infringement suits can be filed in any of the district courts in India. In fact, outside the cities of Delhi, Chennai, Mumbai and Kolkata, patent infringement suits can only be filed before a district court. In such an event, defendants often file a counterclaim only to ensure that the venue of the trial shifts to the High Court excersizing jurisdiction over that district. If therefore, revocation proceedings are filed before the Appellate Board, and the directions of Supreme Court are followed, such trials will be stuck at the district courts; even though, the defendant may want to plead the invalidity of the suit patent. Unfortunately, therefore, although the Apex court granted marginal relief to patent holders, it has potentially created considerable confusion in the patent scene in India and also potentially jeopardized the legitimate rights of patentees.


Keep yourself acquainted with the latest in IP news. Subscribe to our free newsletter to get regular updates.

Copyright © 2022 R. K. Dewan & Co.