Patent Revocation Through Counterclaims: Trends And Practices In India

Author:Utkarsh Kumar Mishra
Profession:Khurana and Khurana

We at Khurana & Khurana, have received numerous queries regarding the filing of counterclaims to evoke revocation of patents in India. To address the same, Utkarsh Mishra & Abhijeet, our interns have analyzed a few exemplary judgments to make the trend and the position clear with respect to such revocations. It is pertinent to mention here that all the grounds available to challenge the validity of the patent are available as defense against an infringement action. For this reason, it's observed that a Defendant alleged to be infringing on a Plaintiff's patent, usually resorts to the grounds mentioned under section 64 to revoke the plaintiff's patent. It should also be noted that section 64 does not restrict grounds to be used in revocation to only those provided in section 64, but also considers the grounds for post-grant opposition as mentioned in section 25(2). The table below discusses a few exemplary cases in which revocation was pleaded by way of counter-claim or appeal and the grounds laid down by the Courts in adjudicating revocation petitions.

S.No. Name of the Case Court Decision Ground(s) Judgment/Order 1 Dhanpat Seth and Ors. Vs. Nilkamal Plastic Ltd, IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA, Civil Suit No. 69 of 2005 and Counter Claim No. 20 of 2006 Himachal Pradesh HC Revocation Granted The revocation was granted on the Ground that "Kilta" a device used for the purpose of storage or collection of agricultural produce does not qualify as an invention as it does not include any "inventive step" and as a result does not lead to any technological advancement or any economic significance. It was held by the Hon'ble Court that mere replacement or substitution, of, the patented product, reinforcingly, does not either add or enhance, the traditional knowledge, with, respect to manufacturing of Kilta. The "Kilta" which was patented by the plaintiffs' was a traditional knowledge, which the plaintiffs' have converted into a new form without any enhancement in its efficacy. Link here 2 Nuziveedu Seeds Ltd . and Ors . vs . Monsanto Technology LLC and Ors . ( 11 . 04 . 2018 - DELHC ) Delhi HC Revocation Granted The revocation was granted by the Hon'ble Court by relying on Section 3(j) of the Patents Act, 1970 and the observation to that effect which stated that considering the nature of the invention, it should be protected under Plant Variety Act and not under the Patent Act. Link here 3 UPL Limited v. Pradeep Sharma and Ors. (21.02.2018 - DELHC) Delhi HC Revocation Not Granted The Revocation was not granted in this case and the Delhi High Court observed that the Defendant's product is very similar to the product of the Plaintiff except that it does not contain the stabilizing agent and the Court after analyzing the facts, evidence and circumstances held that the balance of convenience lies in favour of the plaintiff and restrained the defendants' to indulge in any activity which infringes the plaintiff's registered Patent. Link here 4 Merck Sharp and Dohme Corp. and Ors. Vinod Jadhav and Ors., CS(OS) 3132/2014, CC 71/2015, I.A. 20105/2014 and 14072/2015 Delhi HC Revocation Not Granted The revocation was not granted in this case by virtue of a decree granted in favour of Plaintiff in Merck Sharp & Dohme & Anr. v Glenmark Pharmaceuticals Ltd. CS(OS) 586/201 because of which a certificate of validity under section 113 of the Patents Act, 1970 was issued. The Hon'ble Court relied on this certificate and held that the balance of convenience is in favour of plaintiffs. Link here 5 K. Manivannan vs. The Chairman Intellectual Property Appellate Board and Ors. (18.08.2017 - MADHC) : W.P. No. 11951 of 2011 Madras HC Revocation Not Granted Revocation was not granted by the Madras High Court as it observed that mere abandoning the application as per section 21(1) and the same being not in public domain, would not constitute prior publication. Hence, the writ petition was dismissed. Link here 6 Monsanto Technology LLC and Ors. vs. Nuziveedu Seeds Limited and Ors. (28.03.2017 - DELHC): CS (Comm.) 132/2016 and IA Nos. 2406, 9070 and 4277/2016 Delhi HC Revocation Not Granted The revocation was not granted as the Court observed that the counter-claim is not based on conflict of suit patent with the...

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