Saturday, March 23, 2013

Mere Presence in the Patents Register despite Revocation Insufficient to Continue Injunction

Yesterday, Amshula had succinctly captured the gist of the Delhi High Court’s order vacating the ex parte order of interim injunction granted in favour of Sugen Inc against NATCO with respect to Sugen’s patented drug Sutent (IN209251).

The issue before the Court was whether the ex parte interim injunction against NATCO must continue in light of the revocation of Sugen’s patent on Sutent by the Controller again in February 2013. According to the Plaintiff, Sugen Inc., the order of revocation had been appealed against and although the IPAB had not stayed the order of revocation, the order was kept in abeyance with respect to removal of the patent from the Register of patents.

In other words, the limited relief granted by the IPAB until disposal of the appeal was that the patent would not be struck off from the Register of patents. According to the Plaintiff, this warranted continuance of the ex parte interim injunction against NATCO.

The High Court took the view, and rightly so, that had a stay been granted against the order of revocation, the Court was entitled to consider continuing the ex parte injunction. However, since the order of revocation had not been stayed, the revocation remained in force and consequently, for all practical purposes, the erstwhile patent could not be enforced in the suit proceedings until disposal of the IPAB appeal in favour of the Plaintiff.

Placing reliance on the Snehlata Gupte decision, the Court held that recordal of the patent in the Register is a mere ministerial act, and true significance lay in the grant or revocation of the patent, not the subsequent act of giving effect to such grant/revocation by entering or removing the recordal from the Register of patents. The Court also relied upon the definition of “patent” under Section 2(1)(m) which defines a patent as one “granted” under the Act, and not as one “entered” in the Register.

We will keep our readers posted on the proceedings in the appeal before the IPAB. 

No comments:

Post a Comment