In This Issue

How Indian Judiciary will handle multiplicity of
proceedings issues in Patent Dispute?

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How Indian Judiciary will handle multiplicity of proceedings issues in Patent Dispute?


Recently, the Hon'ble Supreme Court of India pronounces the verdict in Dr. Aloys Wobben Vs. Enecon India Limited, Yogesh Mehra & Others (The Supreme Court of India, Civil Appeal No. 6718 of 2013) that if opponent has one of the available remedies to him then, the opponent is not allowed to seek compensation from the another authority in addition to the consented authority.

In India a patent can be invalidated by following ways:

Provision Who can File? Time Limit Competent Authority

Pre-grant Opposition

U/S 25 (1)
Any Person Before grant of the Patent The Controller i.e. Patent Office

Post-grant Opposition

U/S 25 (2)
Any Person Interested Within one year of the publication of the grant of patent The Controller i.e. Patent Office


U/S 64 (1)
Any Person Interested - The Appellate Board i.e. IPAB
“Counter-claim” seeking the revocation The defendant in response to an “infringement suit” - The High Court

Dr. Aloys Wobben (Appellant) terminated of all intellectual property license agreements with Enercon India Limited (Respondent), despite of that the respondents continued the use of the appellant's patents.

Enercon India Limited filed 19 "revocation petitions" before the Intellectual Property Appellate Board. As a counter action Dr. Aloys Wobben filed 10 patent infringement suits. Enercon India Limited further filed 4 revocation petitions before the IPAB. Hence, in total the respondents filed 23 "revocation petitions" before the IPAB and exactly the same prayer has been made by the contesting respondents by the way of the "counter-claims" filed in response to the "patent infringement suits".

In order to solve question of multiplicity of proceedings and for a harmonious interpretation for the relevant provisions of the Patent Act, the Hon'ble Supreme Court has concluded as follows:

Firstly, if "any person interested" has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a "revocation petition" in the capacity of "any person interested" (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a defendant through a "counter-claim" (also under Section 64(1) of the Patents Act).

Secondly, if a "revocation petition" is filed by "any person interested" in exercise of the liberty vested in him under Section 64(1) of the Patents Act, prior to the institution of an "infringement suit" against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an "infringement suit" has been filed against him) through a "counter-claim".

Thirdly, where in response to an "infringement suit", the defendant has already sought the revocation of a patent (on the basis whereof the "infringement suit" has been filed) through a "counter-claim", the defendant cannot thereafter, in his capacity as "any person interested" assail the concerned patent, by way of a "revocation petition".


   Contributed by : Ms. Nilam Gadani – Patent Attorney
   Designed By : Vikash Singh

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