Source: Delhi High Court 

Why in News? 

The Delhi High Court ruled that a revocation petition under Section 64 of the Indian Patents Act, 1970 can be filed or sustained even after the expiry of a patent's term. Justice Amit Bansal clarified that the expiration of a patent does not render related legal proceedings, including infringement suits or revocation petitions, infructuous.  

• The Court distinguished the scope of revocation petitions from the defence of invalidity under Section 107, stating that only High Courts can entertain standalone revocation petitions. 

What was the Background of Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr. Case? 

• Macleods Pharmaceuticals Ltd., engaged in manufacturing and marketing pharmaceutical products including anti-diabetic drugs, filed a revocation petition under Section 64(1) of the Patents Act, 1970, challenging Indian Patent IN 243301. 
• The patent in question, registered to Boehringer Ingelheim Pharma GmbH & Co. KG (a German company), pertained to a medicinal product called 'LINAGLIPTIN', an anti-diabetic product. 
• The subject patent was granted to Boehringer on 5th October 2022, with a priority date of 21st August 2002. 
• Macleods filed the revocation petition on 17th February 2022, just before their planned commercial launch of generic LINAGLIPTIN on 22nd February 2022. 
• Subsequently, Boehringer filed an infringement suit against Macleods before the High Court of Himachal Pradesh on 19th February 2022. 
• The term of the subject patent expired on 18th August 2023. 
• Boehringer filed multiple applications:  
  • One is seeking dismissal of the revocation petition claiming it was filed twelve years after the patent grant. 
  • Another requesting transfer of the revocation petition to Himachal Pradesh High Court. 
• Macleods subsequently filed a transfer petition before the Supreme Court seeking transfer of the Himachal Suit to Delhi High Court, which remains pending. 

What were the Court’s Observations? 

• The Court distinguished between the scope of a revocation petition under Section 64 and the defense of invalidity under Section 107 of the Patents Act, noting their fundamentally different legal implications and procedures. 
• The Court observed that while District Courts can adjudicate patent infringement suits and related Section 107 defenses, only High Courts have the authority to entertain revocation petitions. 
• The Court noted that a successful revocation petition results in complete removal of the patent from the Register as if it never existed, whereas a finding of invalidity under Section 107 requires additional steps for register rectification. 
• The Court observed that findings in an infringement suit operate in persona (binding only the contesting parties), while patent revocation operates in rem (affecting all parties universally). 
• The Court determined that a party has the independent choice to either file a revocation petition or file a counter-claim in a pending suit, with no statutory limitation curtailing this choice. 
• The Court recognized that the expiry of a patent does not automatically render a revocation petition infructuous, particularly when related infringement proceedings claiming damages are pending. 
• The Court affirmed that a "person interested" under Section 2(1)(t) of the Patents Act retains standing to maintain a revocation petition even after patent expiry, especially when they face potential liability in pending infringement proceedings. 

What are Revocation Petitions? 

• About:  
  • A revocation petition is a legal mechanism to challenge and potentially invalidate a granted patent. 
  • It is a statutory remedy provided under Section 64 of the Patents Act, 1970. 
• Filing Authority: 
  • Revocation petitions can only be filed before the High Court. 
  • They cannot be filed before lower courts or any other authority. 
• Legal Standing: 
  • Can be filed by "any person interested" as defined under Section 2(1)(t) of the Patents Act. 
  • Can be filed by the Central Government. 
  • Can be filed as a counter-claim in an ongoing patent infringement suit. 
• Timing Aspects: 
  • Can be filed during the term of the patent. 
  • Can continue even after patent expiry if there are pending infringement proceedings. 
  • No statutory time limit is prescribed for filing revocation petitions. 
• Effect of Successful Petition: 
  • Results in complete removal of the patent from the Register of Patents. 
  • Operates in rem (affects all parties universally). 
  • Makes the patent void ab initio (from the beginning). 
• Procedural Requirements: 
  • Must be served on all registered patent proprietors. 
  • Must be served on all persons having registered interest in the patent. 
  • Must specify grounds of revocation under Section 64. 
• Distinguishing Features: 
  • Different from invalidity defense under Section 107 in infringement suits. 
  • Broader in scope than invalidity challenges in infringement proceedings. 
  • Can challenge the entire patent rather than specific claims. 
• Burden of Proof: 
  • The petitioner must establish at least one ground for revocation under Section 64. 
  • The standard of proof is on balance of probabilities. 
  • Technical evidence may be required to support the grounds of revocation. 

What is Section 64 of the Act? 

• Fundamental Purpose: 
  • Section 64 provides grounds for revocation of patents, applicable to patents granted both before and after the Act's commencement. 
• Who Can File: 
  • Revocation petitions can be filed by:  
    • Any person interested 
    • The Central Government 
    • As a counter-claim in a patent infringement suit before the High Court 
• Main Grounds for Revocation:  
  • Prior Claims and Entitlement: 
    • The invention was already claimed in another Indian patent with earlier priority date. 
    • The patent was granted to a person not entitled to apply. 
    • The patent was obtained wrongfully, violating others' rights. 
  • Technical Validity: 
    • The subject matter is not an invention under the Act. 
    • The invention lacks novelty (not new). 
    • The invention is obvious or lacks inventive step. 
    • The invention is not useful. 
  • Disclosure Issues: 
    • Insufficient or unfair description of the invention and its method. 
    • Unclear or inadequately defined claim scope. 
    • Failure to disclose the best known method of performing the invention. 
  • Procedural Violations: 
    • Patent obtained through false suggestion or representation. 
    • Failure to disclose required information to Controller. 
    • Violation of secrecy directions. 
    • Amendment of specification obtained by fraud. 
• Special Considerations: 
  • For novelty and obviousness assessment, personal documents or secret trials/use are not considered. 
  • Imported products made by patented processes constitute knowledge/use in India from the date of importation. 
• Government Rights: 
  • The Central Government can petition for revocation if the patentee fails to comply with government requests to use the invention for public purposes. 
• Procedural Requirement: 
  • Notice of revocation petition must be served to all registered patent proprietors and those with registered interests in the patent. 
• Additional Grounds: 
  • Non-disclosure or wrong mention of biological material's source/origin. 
  • Anticipation based on knowledge available in local/indigenous communities. 

What is Section 107 of Patent Act,1970? 

• Fundamental Purpose: 
  • Section 107 provides the available defenses in patent infringement suits. 
  • It provides two distinct categories of defenses available to defendants. 
• Primary Defense - Revocation Grounds: 
  • Every ground that could be used for patent revocation under Section 64 can be used as a defense. 
  • This includes grounds like lack of novelty, obviousness, insufficiency of disclosure, etc. 
  • The defendant can challenge patent validity without filing a separate revocation petition. 
• Secondary Defense - Permitted Uses: 
  • Relates to activities permitted under Section 47 of the Patents Act. 
  • Applies to making, using, or importing machines/apparatus. 
  • Extends to using processes or importing/using/distributing medicines or drugs. 
  • Activities conducted in accordance with Section 47 conditions serve as valid defense. 
• Legal Effect: 
  • Success on Section 107(1) defense may invalidate specific patent claims. 
  • Unlike revocation, does not remove patent from register. 
  • Finding of invalidity operates in persona (between parties only). 
• Jurisdictional Aspect: 
  • Can be raised before any court having jurisdiction over patent infringement suits. 
  • Unlike revocation petitions, not restricted to High Courts. 
  • District Courts can adjudicate these defenses. 
• Procedural Distinction: 
  • Does not require separate petition or counter-claim. 
  • Can be raised in written statement/defense pleadings. 
  • No requirement to serve notice on all patent proprietors. 
• Scope Limitation: 
  • Finding of invalidity under Section 107 requires additional steps for register rectification. 
  • Does not automatically result in patent revocation. 
  • Valid claims can still be enforced against third parties.