Recently, I had the occasion to interpret the judgment of the Supreme Court in Dr.Aloys Wobben & Anr. v. Yogesh Mehra & Ors., wherein it was seized of the following issue- whether under Section 64 of the Patents Act, 1970, a ‘person interested’ has the option of concurrently invoking the jurisdictions of both the High Court in a counterclaim for revocation of a patent, and the IPAB in a revocation petition against the same patent? I had earlier blogged on the dispute here and here.
Although the central findings of the Supreme Court’s decision have been touched upon elsewhere by others, I intend to make sense of lesser-discussed observations of the Apex Court. The discussion of the Court begins at Paragraph 17. In the said paragraph, the Court interprets the contingent clause in the preamble of Section 64 (“Subject to the provisions contained in this Act…”) to mean that the provision is subservient to other provisions of the Act. In other words, it is not the sequence of initiation of proceedings that would dictate the outcome/conclusion, but the existence of a conflict between a proceeding under Section 64 and a proceeding initiated under any other provision of the Act.
For instance, if a person interested institutes a post-grant opposition under Section 25(2) against the grant of a patent, he is barred under law from challenging the vires of the patent again in a subsequent revocation petition or counterclaim under Section 64. This explains the Court’s observation in paragraph 18 that “If any proceedings have been initiated by “any person interested”, under Section 25(2) of the Patents Act, the same will eclipse the right of the same person to file a “revocation petition” under Section 64(1) of the Patents Act. And also, to invoke the right granted under Section 64(1) of the Patents Act, to file a “counter-claim” (in response to an “infringement suit”, to seek the revocation of a patent).”
The same conclusion has been reiterated in paragraph 26 wherein the Court has observed as follows:
“Firstly, if “any person interested” has filed proceedings under Section 25(2) of the Patents Act, 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” in the capacity of “any person interested” (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a defendant through a “counter-claim” (also under Section 64(1) of the Patents Act).” (Emphasis supplied)
What is to be critically noted is that a post-grant opposition under Section 25(2) eclipses only “similar rights/grounds” which are available under Section 64 and not those grounds which are not provided for in the former but are available in the latter. Although the Court has not dealt with such an eventuality, it could be argued (not necessarily successfully) that a person interested may concurrently institute a post-grant opposition and also file a counterclaim on grounds not available under Section 25(2).
Yet another matter of concern are the observations of the Court in paragraph 18 since the Court seems to have come to the conclusion that the grant of a patent is merely the finalization of the Controller’s decision to bestow a patent on an applicant, but does not translate to the grant of a right to an applicant. In other words, according to the Court, a patentee, although having been granted a patent, does not have a right worth enforcing until the expiry of the post grant opposition period i.e. a year from the date of publication of grant of the patent. Does this mean that a patentee with a patent in his name in the register of patents cannot institute a suit for infringement of the patent until the expiry of the post grant opposition period? On this point, following is the observation of the Court:
“Therefore, it is unlikely and quite impossible, that an “infringement suit” would be filed, while the proceedings under Section 25(2) are pending, or within a year of the date of publication of the grant of a patent.”
Unfortunately, the above conclusion is ambiguous since it does not appear to be based on the law and seems to be driven more by “practical” considerations which may not even hold water in all situations. Further, in arriving at this conclusion, the Hon’ble Apex Court has not discussed those provisions of the Act which deal with institution of suits for infringement, leaving its “practical” finding bereft of concrete statutory support.
It remains to be seen in the times to come if the decision of the Court has raised more questions than it has answered. Comments and corrections are welcome.