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Revocation petition can be sustained even after expiry of patent: Delhi High Court

Gireesh Babu, New Delhi
Wednesday, January 22, 2025, 08:00 Hrs  [IST]

The High Court of Delhi has observed that a revocation petition filed prior to expiry of a patent can be sustained even after expiry of the subject patent, while considering an interlocutory application filed by German pharma major Boehringer Ingelheim Pharma GmbH (BI) against domestic manufacturer Macleods Pharmaceuticals.

The matter came up in connection to the patent rights of the German company for its antidiabetic drug linagliptin, which has seen its patent (in the present dispute) expired on August 18, 2023.

The patent was granted in favour of BI on October 5, 2022, with priority date of August 21, 2002, and Macleods Pharma filed a revocation petition before the Delhi High Court in February, prior to the commercial launch of its generic drug. BI approached the High Court of Himachal Pradesh with an infringement suit against the Indian firm, alleging infringement of this patent.

BI's specific application raised two grounds that Macleods Pharma in a written statement in the High Court of Himachal Pradesh has mentioned that the said patent is invalid, under Section 107 of the Patents Act, and that the revocation petition cannot sustain after the expiry of the term of the patent.

Justice Amit Bansal, in an order issued on January 15, observed that BI has filed a patent infringement suit in which it has claimed damages for the alleged infringement of its patent by Macleods during the life of the patent. Just because the term of the patent has expired, it would not mean that the suit has become infructuous, as the cause of action, insofar as damages are concerned, 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 patent has expired," observed the Judge.

If Macleods pharma succeeds in the revocation petition filed at the Delhi High Court, the suit of BI in the High Court of Haryana would be liable to be dismissed.

"Therefore, there is a valid case of action in favour of the petitioner (Macleods Pharma) to pursue the present petition and simply because the life of patent has expired, would not mean that the present petition becomes infructuous. Therefore, I am of the opinion that the present petition can be sustained even after the expiry of the subject patent," said the Court while dismissing the application.

The Court also observed that the scope and effect of a revocation petition filed under the Section 64 of the Patents Act and the defence of invalidity taken under Section 107 of the Act in an infringement suit is entirely different and the revocation petition before the Delhi High Court is maintainable.

BI argued that in the infringement suit filed by the company against Macleods before the High Court of Himachal Pradesh, the latter has taken a defence that the patent is invalid under Section 107 pf the Patents Act. BI argued that there is no difference between a finding of invalidity returned in an infringement suit or counter-claim or in a revocation petition and with this, the revocation petition before the Delhi High Court would be an exercise in futility.

Macleods argued that a defence under Section 107 of the Patents Act in an infringement suit is different from a revocation petition under Section 64 of the Patents Act. The Section 107 at best, only enables to seek a declaration that one or more claims are invalid and the patent is liable to be revoked.

A petition under Section 64 or in a counter-claim can only be made by a High Court, whereas a decision on invalidity based on a defence under Section 107 of the Patents Act can be taken by a District Court.

The Court, considering the question on 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, in an infringement suit filed by the patentee, made similar observations in its analysis.

"In the present revocation petition, the petitioner (Macloeds Pharmaceuticals) is seeking revocation/removal of the subject patent from the Register of Patents. However, in the Himachal Suit, the petitioner is praying for declaration of invalidity which would render the subject patent 'liable to be revoked and removed from Register of Patents' which implies that the defendant/ petitioner herein would need to take additional steps for getting the patent revoked/removed from the Register of Patents," said the Delhi High Court in its order.

 

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