Patents granted in India can be challenged by way of:
1. a post-grant opposition within a year from the date of publication of grant; or
2. by way of a petition for revocation before the IPAB anytime after grant; or
3. by a counterclaim for revocation in a patent infringement suit before a Court. (When a counterclaim for revocation is filed by a defendant in a suit for patent infringement, the suit along with the counterclaim is transferred from the District Court to the High Court)
The funny thing about situations 2 and 3 is that in these cases, both the IPAB and the High Court exercise *original jurisdiction over the validity of the patent. (*original jurisdiction refers to the original power of a body to rule on an issue and examine it from scratch)
Since both IPAB and the HC have original powers with respect to patent validity, the sanctity of the IPAB’s jurisdiction in a petition for revocation is the same as the sanctity of the High Court’s power in a counterclaim for revocation.
The conundrum posed by vesting two bodies with original powers over the same issue, namely validity, is that one of these bodies i.e. the High Court, may also reverse the decision of the IPAB on merits in a writ proceeding (strictly speaking this ought not to happen) or a counterclaim.
In a way, this erodes the very purpose of establishing an expert body such as the IPAB to rule on validity of patents. Simply put, the “Chevron Deference” which would otherwise be available to the IPAB’s decisions on patent validity is rendered less inviolable thanks to vestation of the same power in the High Court which can also overturn the IPAB’s decision in appeal or even in a counter-claim.
“Chevron Deference” is a US doctrine that traces its roots to the US Supreme Court’s decision in Chevron USA v. National Resources Defense Council. In this decision, the US Supreme Court formulated the “Chevron Deference” according to which, in cases where the language of the statute is ambiguous, Courts shall defer to the interpretation of an expert body constituted under the statute to carry out the express intent of the statute.
Applying this doctrine to the IPAB and the HC, in an ideal world if the power to rule on validity of patents had been vested in the IPAB alone, then the HC would have had to defer to the IPAB’s ruling on the issue of validity. This would have meant that the HC could rule only on the issue of infringement since validity wouldn’t have been within its realm of adjudication.
However, we live in a not-so-ideal world where it is possible to file a counterclaim of revocation before the High Court even after the IPAB upholds the validity of the patent!
Imagine a situation where the IPAB upholds the validity of a patent X held by Patentee A in a petition for revocation filed by B. Subsequently, when A files a suit for infringement of patent X by B, B could again file a counterclaim for revocation before the HC notwithstanding IPAB's decision. Not just that, B could also file a writ against IPAB’s decision of validity.
What this translates to is that the High Court would be simultaneously exercising its original powers in B’s counterclaim for revocation, and would also be sitting in a writ over the decision of the IPAB. Does the Act provide a solution to this hypothetical? I am not sure...
The best way out is to amend the Act to do away with the provision for counterclaim before the High Court, and leave it to the sole jurisdiction of the IPAB...but then again, that would lead to bifurcated litigation i.e. validity would be decided by the IPAB, and infringement would be decided by a District Court.