Dr. Alloys Wobben and Anr. v. Yogesh Mehra and Ors.;
02.06.2014; Supreme Court of India
A Question of law came up before the Supreme Court on the issue of Multiplicity of proceedings for Revocation of Patent.
The question was framed as follows, In case, there is already a revocation petition filed by an entity against the grant of patent, then in that case if the patentee files a suit for infringement of patent against the very same entity and that entity files a counter claim towards revocation of patent, which of the two proceedings will prevail?
The Supreme Court mainly relied on the doctrine and principle of res judicata and held that:
• If “any person interested” has filed proceedings towards post-grant opposition, the same person would not be entitled to file a “revocation petition” in the capacity of “any person interested” and would also be barred to seek the revocation of a patent in the capacity of a defendant through a “counter-claim” in a suit for infringement of Patent; and
• If a “revocation petition” has been filed by “any person interested” in prior to the institution of suit for infringement of patent against him, he would be disentitled from revoking the patent through a “counter-claim”; and
• If in a suit for infringement of patent, the defendant has already moved a counter claim seeking revocation of patent, the defendant cannot thereafter, in his capacity as “any person interested” file a revocation petition before the Intellectual Property Appellate Board.