Case law India – patent enforcement during post-grant opposition period

patent enforcementIn February 2020 the Single Judge (“SJ”) of the Delhi High Court (“DHC”) passed a decision on the contentious issue of patent enforcement during post-grant opposition period. Section 25(2) of Indian patent law provides one year period from the date of publication of grant of a patent for giving a notice of opposition.

The decision came as the SJ dismissed an application filed by the defendant in a patent infringement suit titled CDE Asia Ltd. vs. Jaideep Shekhar & Anr. [CS(COMM) 124/2019] seeking rejection of the plaint on the grounds, inter alia, that the same is barred under Section 25(2) of the Patents Act, 1970 (as amended).

This decision was interesting as it came post the Supreme Court (“SC”) judgment in the landmark case of Dr. Aloys Wobben and Anr. Vs. Yogesh Mehra and Ors., (2014) 15 SCC 360, wherein the SC held, inter alia, that:

“…If and when, challenges raised to the grant of a patent are disposed of favourably to the advantage of the patent-holder, the right to hold the patent can then and then alone, be stated to have crystallised. Likewise, if no notice of opposition is preferred within one year of the date of publication of the grant of a patent, the grant would be deemed to have crystallised. Thus, only the culmination of procedure contemplated under Section 25(2) of the Patents Act bestows the final approval to the patent. Therefore, it is unlikely and quite impossible, that an “infringement suit” would be filed, while the proceedings under Section 25(2) are pending, or within a year of the date of publication of the grant of a patent.”

The SJ was faced with an issue as to whether a suit for patent infringement within one year of grant of the patent would be maintainable or not in view of the interpretation of Section 25(2) of the Patents Act by SC in Dr. Aloys Wobben.

The SJ held that such suit would be maintainable and would not be liable to be rejected as premature. 

In the instant case, the suit patent IN307249 (IN’249) was granted on February 12, 2019 and the suit was filed on March 6, 2019 i.e. within one month of the grant of the patent. The defendant argued, inter alia, that the rights of the patent holder do not crystallize on mere grant of patent but do so only after the lapse of one year period provided for giving a notice of opposition under Section 25(2) of the Patents Act and thus, the present suit filed on the strength of grant of patent IN’249 is not maintainable in view of the interpretation of Section 25(2) of the Patents Act by SC in Dr. Aloys Wobben. The SJ, however, distinguished SC judgment in Dr. Aloys Wobben by holding as follows:

“…It is for the reason that two parallel remedies cannot be invoked by a party which may result in conflicting decisions and the fact that “any person interested” had a right to file a post-grant opposition within one year of the grant of patent, Supreme Court held that by grant of patent itself the rights in favour of the patent holder do not crystallize finally, for the reason “any person interested” can issue a notice of opposition within one year of the date of publication of grant of a patent and, if and when challenge raised to the grant of patent are disposed of favourably to the advantage of the patent holder, the right to hold patent can then and then alone be stated to have crystallized…However, the situation where infringement of the suit patent occurs or is alleged soon after the grant of patent was not discussed by the Supreme Court, the same being not an issue before the Supreme Court, thus it did not hold that a suit for infringement within one year of grant of the patent would not be maintainable and would be liable to be rejected as premature.”

The SJ further held that the plaintiff has a right as a patent holder under Section 48 of the Patents Act and said right is not affected during the pendency of a post-grant opposition. The SJ added that as the rights in favour of a patentee enure to its benefit on grant of the patent under Section 48 of the Patents Act, even though the said right may not have finally crystallized, pending post-grant opposition, in view of the subsistence of the right of the patentee, and there being an alleged infringement, the patentee is not required to wait for one year period to sue for infringement. 

Author: Dinesh Sharma
Patent & Trademark Attorney
Adclivis Legal

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