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Indian Patent (IN) 243301 was granted to Boehringer on October 5th, 2022, with a priority date of August 21th,2002 for the pharmaceutical product Linagliptin. On February 17th, 2022, Macleods filed a revocation petition in the High Court of Delhi, under Section 64(1) of the Patents Act, seeking revocation of IN'301. Two days thereafter, Boehringer filed a suit in the High Court of Himachal Pradesh alleging that Macleods had infringed IN'301. Macleods, in its written statement in the said suit, pleaded invalidity of IN'301, thereby invoking Section 107(1) of the Patents Act. The patent expired on August 18th, 2023 by efflux of time.
The lis raises two pure questions of law: (i) Whether a revocation petition, under Section 64 of the Patents Act 1970, can be instituted or can survive after the petitioner has pleaded invalidity of the patent as a defence under Section 107(1) in a suit instituted by the patentee? (ii) Whether a revocation petition can be instituted or can continue after the patent has expired?.
Both questions have been answered in the negative by a learned Single Judge of this Court vide judgment dated January 15th , 2025. The learned Single Judge found that taking of a Section 107 invalidity defence would not inhibit the defendant in a suit from pursuing revocation proceedings under Section 64 of the Patents Act. The expiry of the suit patent, therefore, it was held, would not have any effect on the revocation proceedings. Aggrieved thereby, Boehringer is in appeal.
The Division Bench agreed with the learned Single Judge on both the issues. Applying, to the word "patent" in Section 64(1), the definition of "patent" in Section 2(m), a patent remains a patent for the purposes of Section 64(1), even after it expires. The expiry of the life of the patent merely renders it unenforceable, and does not denude it of its character as a "patent granted under" the Patents Act. Revocation acts in rem and retrospectively from the date of grant. A revocation petition would be maintainable, and would continue to survive, even after the patent of which revocation is sought expires by efflux of time.
Furthermore, revocation, and an invalidity defence under Section 107, are fundamentally and obviously different. A revocation petition, if it succeeds, removes the patent entirely from the register of patents, and invalidates the very grant of the patent. As noticed by the learned Single Judge, a revocation petition, if it is succeeded, would, by operation of Section 151(1), require the order to be transmitted to the Controller, who would make suitable entry in the Register of Patents, effacing, from the register, the patent, as if it had never existed. As against this, a Section 107 plea is merely a defence in the infringement suit. If defence succeeds, the highest that would result in the suit would be dismissed. As noticed by Leaned Single Judge, an invalidity plea raised against under Section 107, if it is succeeded, would be required to be transmitted to Controller of Patents under Section 151(2), who would make a suitable entry in the supplemental record. The decision on an invalidity defence under Section 107 operates in personam, whereas the decision in a revocation petition under Section 64 operates in rem. A revocation petition can be instituted even after a Section 107 invalidity defence is taken in the infringement suit. The appeal, therefore, fails and is dismissed.
Prepared by : - Shah Saumya
Designation: Patent Analyst
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