Revocation Petition Can Be Filed Or Sustained After Expiry Of Term Of Patent: Delhi High Court

The Delhi High Court has ruled that a revocation petition can be filed or sustained after the expiry of the term of the patent. While dealing with a patent infringement suit, Justice Amit Bansal observed that just because the term of the patent has expired, it would not mean that the suit has become infructuous, as the cause of action still survives. “Applying the same rationale, it cannot be argued that a revocation petition cannot be filed or will not survive (if filed earlier) after the term of the patent has expired,” the Court said. Justice Bansal also adjudicated the question as to whether a revocation petition can be held to be not maintainable if the petitioner has filed a written statement, taking a defence of invalidity of the suit patent under Section 107 of the Patents Act.On this, the Court said that the scope of a petition under Section 64 (dealing with revocation of patents) of the Patents Act is entirely different from the defence of invalidity under Section 107 of the Patents Act. “Under Section 64 of the Patents Act, a petition for revocation of the patent can be filed on a stand-alone basis or by way of a counter-claim in an infringement suit. The power to entertain such a revocation petition has been given only to a High Court,” the Court said. It added: “On the other hand, in terms of Section 104 of the Patents Act, a patent infringement suit can be adjudicated by a District Court as well. Consequently, defence under Section 107 of the Patents Act can also be adjudicated by the District Court. However, where a counter-claim has been filed in a patent infringement suit seeking revocation of the patent by the defendant, in terms of proviso to Section 104 of the Patents Act, the suit along with the counter-claim has to be transferred to the High Court.”Justice Bansal further said that it is the choice of a party whether to file a revocation petition on a stand-alone basis under Section 64 of the Patents Act or file a counter claim in a pending suit.The Court held that there is no limitation in the Patents Act to curtail the said choice of the party. “There is nothing in the Patents Act to suggest that once a suit for infringement is filed, the defendant can only use the defence under Section 107 of the Patents Act or file a counter-claim in the suit,” the Court said. The Court was dealing with a revocation petition filed by Macleods Pharmaceuticals Ltd., engaged in manufacturing and marketing of diverse pharmaceutical products including anti-diabetic drugs, against Boehringer Ingelheim Pharma GmbH & Co. KG, an entity engaged in developing, manufacturing and marketing pharmaceuticals worldwide including India.The petition was filed in 2022 seeking revocation of a patent registered in the name of Boehringer in respect of a medicinal product called 'LINAGLIPTIN', an anti-diabetic product. Subsequently, Boehringer filed an infringement suit against Macleods Pharmaceuticals before the Himachal Pradesh High Court alleging infringement of the subject patent.An application was filed last year by Boehringer stating that since the subject patent expired in August 2023, nothing survived in the revocation petition and the same must be dismissed.Subsequently, in November, 2024, another application was filed by Boehringer seeking dismissal of the revocation petition on the ground that the Macleods Pharmaceuticals had filed a written statement seeking invalidity of the subject patent in the Himachal Suit.Finding the revocation petition as maintainable, the Court observed that there was a valid cause of action in favour of Macleods Pharmaceuticals to pursue the revocation petition.Simply because the life of the patent has expired, would not mean that the present petition becomes infructuous, the Court said as it dismissed the two applications filed by Boehringer. Counsel for Petitioner: Mr. G. Nataraj and Mr. Rahul Bhujbal and Mr. Yash Raj, AdvocatesCounsel for Respondents: Mr. Sandeep Sethi, Sr. Adv. with Dr. Sanjay Kumar, Ms. Arpita Sawhney, Ms. Meenal Khurana, Ms. Pallavi Kiran, Mr. Arun Kumar Jana, Mr. Priyansh Sharma, Ms. Pratiksha Varshney, Mr. Sumer Seth and Ms. Riya Kumar, Advocates for R-2Title: MACLEODS PHARMACEUTICALS LTD v. THE CONTROLLER OF PATENTS & ANR.Citation: 2025 LiveLaw (Del) 41Click here to read order

Revocation Petition Can Be Filed Or Sustained After Expiry Of Term Of Patent: Delhi High Court

Nupur Thapliyal

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