M.P. Nos. 50 and 68 of 2014 in ORA/21/2013/PT/CH. Case: Wockhardt Ltd. and Ors. Vs Novartis AG and Ors.. Intellectual Propery Appellate Board Cases

Case NumberM.P. Nos. 50 and 68 of 2014 in ORA/21/2013/PT/CH
Party NameWockhardt Ltd. and Ors. Vs Novartis AG and Ors.
JudgesK.N. Basha, J. (Chairman) and D.P.S. Parmar, Member (T)
IssueCode of Criminal Procedure, 1973 (CrPC) - Section 195; Constitution Of India - Article 300-A, ; Indian Penal Code 1860, (IPC) - Sections 193, 196, 228; Patents Act, 1970 - Sections 117B, 117D, 117H, 159(2) (xiic), 64, 64(1), 64(1) (m), 64(1)(m), 64(5), 8, 8(1), 8(2), 92(1), 92(2); Trade Marks Act, 1999 - Sections 11, 22, 84, 87, 92, 92(1), 95, 96
Judgement DateMarch 11, 2015
CourtIntellectual Propery Appellate Board Cases

Order:

K.N. Basha, J. (Chairman)

  1. ORA/21/2013/PT/CH was filed by the applicant for revocation of the Patent No. 212815 registered in the name of "NOVARTIS - AG". M.P. No. 50 of 2014 is filed by the applicant seeking for the relief of taking additional grounds and producing additional documents for evidence as well as expediting the hearing of the main revocation application pending before this Bench.

  2. On the other hand, the first respondent herein filed M.P. No. 68 of 2014 seeking dismissal of the applicant's M.P. No. 50 of 2014 by raising objections regarding its maintainability. Therefore we have taken up the M.P. Nos. 50 of 2014 and 68 of 2014 for hearing and disposal.

  3. In M.P. No. 50 2014 it is pleaded by the applicant that much after filing the revocation application the first respondent filed an infringement suit against the applicant/petitioner herein before the Hon'ble Delhi High Court in CS (OS) No. 646 of 2014 for infringement of Patent "IN - 212815". On receipt of the copy of the plaint filed by the first respondent herein certain facts were revealed which the applicant/petitioner was unaware at the time of filing the application for revocation. The first respondent suppressed the filing of certain Patent application covering inventions in which Vildagliptin is the active ingredients responsible for the therapeutic benefit and the same were not disclosed to Patent Office in compliance of mandatory provisions under Section 8 of the Indian Patent Act, 1970 (hereinafter referred to as the Act). The said application for patent which is admitted by the first respondent as substantially the same as in the impugned patent. The first respondent failed to furnish the details relating to the application filed in foreign countries and thereby committed breach of Section 8 of the Act. The applicant/petitioner also relied on a list of documents numbering in 37 as Exhibits A-1 to A-37. The applicant/petitioner stated that the failure to disclose information under Section 8 substantially the same invention would attract Section 64(1)(m) of the Act and the impugned patent of the first respondent is liable to be revoked. It is stated that the additional documents relied on by the applicant along with the petition to be treated as part of the pleading under the ground of Section 64(1)(m) of the Act part and parcel of the original revocation application. The petitioner stated that the information to be provided by the applicant is not limited to foreign equivalents but also extends to those applications relating to substantially the same invention. The petitioner also pointed out the detailed specifications in respect of filing of similar applications which were not disclosed by the first respondent to the authority including the applications filed out side India have not been disclosed by the first respondent to the authority. The applicant/petitioner by mentioning the details of each and every documents which were not submitted by the first respondent herein to the Patent office during prosecution of the Patent pleaded that there has been a breach of Section 8(2) due to which the Patent ought to be revoked as per Section 64(1)(m) of the Act. Therefore it is prayed that the documents filed along with the miscellaneous petition in M.P. No. 50 of 2014 has to be taken on record.

  4. The first respondent herein also filed a detailed counter to the M.P. No. 50 of 2014 filed by the applicant/petitioner refuting the pleas and averments made in the petition. It is stated in the counter that the present petition is not maintainable under any of the provisions of the Act or the IPAB (Patents Procedures), Rules, 2010 or the Patent Appeals (Appeals & Applications to the IPAB), Rules, 2011. A fresh pleading of the applicant/petitioner as part of the revocation application is not permissible in law. The inherent power cannot be applied by the IPAB Bench, in respect of the powers and procedures already prescribed by the Act and Rules.

  5. The first respondent also denied any admission made in the plaint filed in the suit for infringement. It is further stated that the documents sought to be relied on by the applicant/petitioner pertains to overseas prosecution history of the Patent applications which are irrelevant for examining patentability of Vildagliptin.

  6. The first respondent also stated the cited Patent applications are different from those of the impugned Patent IN 212815 and they cannot be equivated "same or substantially same inventions" as the compound Vildagliptin and the reliance placed by the applicant/petitioner on the said cited applications for the purposes of Section 8 of the Act compliance is wholly misconceived and untenable. It is further stated that the present application is an afterthought which has been generated by the applicant/petitioner to raise additional pleas for alleged non-compliance of Section 8 of the additional applications cited by the applicant/petitioner were in public domain and the applicant/petitioner was well aware about that and no ground is made out to raise these additional pleadings and produce additional documents at such a belated stage of the proceedings. Accordingly, the first respondent sought for the rejection of the M.P. No. 50 of 2014 on the ground of maintainability.

  7. On the basis of the pleas raised in the petition and the counter to the petition, we heard the arguments of Mr. T.V. Ramanujan, the learned senior counsel for the applicant/petitioner and Mr. Sunil Gupta, the learned senior counsel and Mr. P.S. Raman, the learned senior counsel for the first respondent.

  8. Mr. T.V. Ramanujan, the learned senior counsel would vehemently contend that the first respondent cannot shut down the applicant/petitioner from filing the M.P. No. 50 of 2014 seeking for the relief of raising additional grounds and producing additional evidence. It is contended that this Bench is vested with enormous power under Section 92 of the Trade Marks Act, 1999 which are applicable to the Patents Act, 1970, in respect of the powers of the IPAB in the discharge of its function under the Patents Act, 1970. The learned counsel would contend that the IPAB Bench is vested with the powers to regulate its own procedure by considering the principles of natural justice. Section 117H of the Patents Act, 1970 confers the powers to the IPAB Bench to make rules consistent with this Act to the conduct and procedure in respect of all proceedings under the Act. It is pointed out that Rule 2(1) of the IPAB (Patents Procedure), Rules, 2010 provides for filing "Miscellaneous Petition". Under Section 64 of the Act, IPAB Bench is having vested with the powers to deal with the revocation of Patent and there is no limitation of powers to be exercised by the IPAB and no substantive right of the applicant/petitioner has been taken away. Rule 14 of IPAB (Patents Procedure) Rules, 2010 deals with filing of Additional documents in appeal, and the IPAB Bench retain its power under Section 64 in respect of dealing with the miscellaneous petition filed for production of additional documents and raising additional grounds. The...

To continue reading

Request your trial