Delhi High Court rules that a revocation petition survives even for an expired patent if an infringement suit seeking damages is pending.
A single judge of the Delhi High Court held that the mere fact that the Petitioner, Macleods Pharmaceuticals Ltd’s (“Macleods”), had raised a defence of patent invalidity in an infringement suit filed by the Respondent No. 2, Boehringer Ingelheim Pharma GmbH & Co. KG(“Boehringer”), or that the patent lapsed during the proceedings, does not render the revocation petition either untenable or infructuous, and dismissed the two motions filed by Boehringer seeking dismissal of the revocation petition.
Boehringer asserted that the prayers sought in the revocation petition and the infringement suit pending before another High Court, are similar, and hearing of the revocation petition could lead to conflicting judgements. It was further argued that since the patent had lapsed, no cause of action survived for the continuation of the revocation petition.
Macleods countered Boehringer’s assertions and stated that a defence of invalidity in an infringement suit does not directly result in the revocation of a patent, whereas a revocation petition does, and hence both are different. As regards the revocation becoming infructuous post the patent’s lapse, it was argued that if the claim for damages continues in an infringement suit even after the lapse, the revocation petition shall survive too.
As regards the first issue, after analyzing the provisions under the patent law, the court held that the scope and the effect of a revocation petition is totally different from that of a defence of invalidity in an infringement suit. The court, in this regard, noted that, once a revocation petition is allowed, the patent is effaced from the Register of Patents, whereas a judgement/decree regarding invalidity of a patent in an infringement suit merely provides a right to the defendant in the suit to take further steps for rectification of the Register of Patents.
On the second issue, the court concurred with Macleods’ averments and held that since Boehringer’s infringement suit is still active and seeks damages for infringement of the lapsed patent during its validity, the cause of action for the revocation petition persists.
In light of the above, the court found no merits in Boehringer’s motions to dismiss the revocation petition and dismissed both motions.
Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr. [C.O.(COMM.IPD-PAT) 38/2022] Judgements dated January 15, 2025
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