What we usually discuss in patent classes is about enforcement of the patent rights by the patentee against any person under Section 48 of the Indian Patents Act, 1970 (hereinafter referred to as ” the act”). However, we hardly ever discuss enforcement of rights of a patentee against another patentee in the cases of patent infringement. One such rare question is discussed below in light of the matter of Hindustan Unilever Limited V. Eureka Forbes Limited & Anr.[1]
A closely related intriguing question concerning the rights of the patentee and maintainability of the infringement suit arose before the court way back in the year 2008 which took more than a decade to be finally settled on 19th February 2019.
The issue presented was as follows:
“Whether a suit for a permanent injunction is maintainable by one patentee against another patentee under the provisions of the Patents Act, 1970?”
This question must have triggered another question in your mind which poses a serious doubt regarding the procedure of the Patent office wherein two proprietors have been conferred with patent over the same inventions? How did both the parties get the registration?
Well in the present matter, the plaintiff [Hindustan Liver] secured the Patent concerning a water purifier [Patent No. 198316] which was allegedly infringed by the defendant’s [Eureka Forbes] patent over a similar water purifier [Patent No. IN 195421][2]. In this context, the plaintiff highlighted the glitches that they faced in opposing the grant of defendant’s Patent. It was avered that because of the late publication of the Patent Journal, the plaintiffs were deprived of an opportunity to oppose. Particularly, though they opposed the grant of patent but were informed that the defendant had already been granted a patent and due to which the plaintiff had to then avail the post-grant opposition.
Meanwhile, a suit was also filled by the plaintiff on 3rd May 2006 but no ex parte injunction was granted. In response, the defendant requested for the rejection of the suit under Order VI Rule 11 of CPC, inter alia on the ground that no suit for infringement can lie against a registered proprietor. However, the contention for the rejection of the suit by the defendants was rejected vide judgment dated 10th August 2007 with the reasons:
- That the rights of the patentee are ‘Exclusionary Rights’, the meaning of which can be deciphered from Section 48 of the Act, which grants an exclusive right to a patentee to prevent the third party from doing an unauthorized act of making, using, offering for sale, selling etc the patented product in India, but it does not confer an exclusive right on the patentee to make use of, offer for sale, sell or otherwise exploit the patented product in India.
- Further, Section 107 of the Act entitles the defendant to defend himself on all the grounds of revocation enumerated under Section 64 of the Act which includes, questioning the validity of the patent on the group of an earlier existing patent, but this does not entitle the defendant to seek rejection of the suit on the ground that no suit of infringement is maintainable against a registered patentee. This can only act as a defence on merits.
- Also, Section 107A of the Act, while enumerating the acts that do not constitute an infringement of a valid patent, does not provide that use of a patent by a patentee does not constitute an infringement of the patent.
- Section 108 enables the plaintiff to file a suit for infringement and request for the relief of injunction against the defendant.
The court stated that accepting the defendant’s argument would mean that plaintiff should first exhaust their right to oppose the patent before the IPAB and only once they succeed they become entitled to seek relief of injunction, such an interpretation would lead to absurd result in as much as by the time the defendant’s patent is revoked, the plaintiff’s suit may itself become barred by the time which consequently would cause irreparable damage to the plaintiff.
Defendants filed the appeal before the Division Bench which was also dismissed holding that at the stage of Order VII Rule 11 of the CPC, the averments in the plaint are to be believed to be correct and the question of law, as had arisen, could not be decided and hence the question of law was left open. Defendants also approached the Supreme Court by way of SLP[C] No.5528/2008 which was also dismissed in limine on 14th March 2008 and stated that the question was required to be decided as a preliminary issue.
After the orders of the Supreme Court in the year 2008, the issue was framed which had been languishing in the court for the last ten years and finally on 19th February 2019, the High Court of Delhi decided the preliminary issue. In response to the issue, the plaintiff referred to Mohan Lal, Proprietor of Mourya Industries Vs. Sona Paint & Hardwares[3] to support the maintainability of the suit against the registered patentee. The case though relates to the Designs Law, they tried to draw an analogy by stating that the design and structure of both the legislations are more or less similar. In the cited case, the full bench held that the suit for infringement is maintainable by a proprietor of a registered design against another and hence the preliminary issue should be decided in his favour.
The defendants, on the other hand, argued that in a suit for patent infringement, the defendants can take the defence by challenging the validity of the patent of the plaintiff but vice versa is not possible, thus the plaintiff cannot question the validity of the defendant’s patent by filing a suit in the court of law, the only remedy that they have is before the Controller of Patents. Further, the grant of an injunction is an equitable relief, however, such injunction cannot be granted in contravention of the statutory rights of the defendant under Section 48 of the Act. Also, the case of Mohan Lal cited by the Plaintiff cannot be applied in their matter since the scheme of two Acts is entirely different.
One interesting enquiry regarding in whose favor the patent was granted earlier in point of time, revealed that the plaintiff applied earlier than the defendants but the grant in favour of the defendants was made earlier in point of time. However, reading this along with Section 45 of the Act would mean that the grant in favour of the plaintiff would relate back to the date of application and thus the grant of patent in favor of Plaintiff is earlier in point of time.
On being questioned that if the patentee is first asked to proceed with the revocation proceedings before the Patent Office and then approach the court, will it not defeat the rights of the patentee given the fact that patent is granted only for 20 years? The defendant replied that this is a legislative lacuna which is to be filled up by the legislature and not by the courts. However, the court did not agree with the argument of the defendant and held that even if it is a legislative lacuna, then also the court must interpret the provisions to uphold the rights conferred by the law.
The court repetitively emphasized how unfortunate it is that despite the purely legal question being decided nearly twelve years back, no progress has been made in the suit in the past twelve years. The counsel for the defendant has not been able to effectively counter the reasoning which prevailed for dismissing the application that they filed under Order VII Rule 11 of the CPC. Court further stated that no provisions have been cited that bars the suit of infringement against another patentee by the defendant. In the absence of such provisions, the plaintiff is entitled to file a suit of infringement even if the another has also obtained the registration.
It was further stated by the court that the fact that the defendant’s patent was granted without opposition owing to the late publication of the journal is itself a violation of the statute and statutory rules and should have been corrected administratively by undoing the registration. Hence, equity rather rests with the Plaintiff.
There are a lot of issues yet to be discussed particularly related to the similar patents that are granted to both parties. Nothing much has happened since then and the last date of hearing was listed to be held on 20th March 2020.
The pertinent question to think and reflect is why did it take twelve long years for the court to only decide on whether the suit is maintainable or not? Given the fact that patents are only granted for 20 years, is it not the responsibility of the authorities to speed up the process and decide on the relief claimed at the earliest possible.
Even the grant of the patent to the defendants is highly questionable given the fact that the plaintiff was deprived of their right to oppose the grant due to delay in publication fo the Patent Journal. Intellectual property by its very nature requires utmost attention as far their enforcement and protection is concerned, as it carries both the commercial and time-bound importance.
One such case will be soon briefed by Krishnam in his next post.
[1] Cs(Comm) No.236/2018
[2] The patent of the plaintiff is informed to be valid till June, 2022 and the patent of the defendants is stated to be valid till 29th March, 2024.
[3] AIR 2013 Del 143
Well articulated showing clearly how well the rights of patent holder can be preserved and protected
NO matter how farsighted and cautious one tries to be while legislating laws, it is always interesting to find cases that highlight such loopholes. Loved this article. Waiting to read more on it.
Good article. I was not clear on sec. 48..as in if it can be interpreted in its corollary to say that only the patentee can exploit the patent. While dealing with a client I also came across a query…Query: can a co-owner make and sell the patented product without consent of other co-owner(s) and if there is no agreement in place between the co-owners does the co-owner earning the benefits through his efforts of marketing, selling etc HAS to share the profits equally with other co-owners?
Re first question, Yes, if there is no agreement between the co-owners of a patent, then both the patent proprietors can sell the patented products separately without requiring the other co-ower’s consent; check Section 50 of the patents act, 1970
Regarding the second question, whoever is selling the products obtained by the patent would enjoy the undivided profits.
However, the profit earned by the sale, licensing or assignment of patent itself will be shared equally between the co-owners.