Macleods Pharmaceuticals Ltd. Vs. The Controller of Patents & Anr.

IP ADJUTOR: EPISODE 20

Is a revocation petition maintainable after the expiry of the patent?

Case Title: Macleods Pharmaceuticals Ltd. vs. The Controller of Patents & Anr.

Date of Judgment: 15.01.2025

Case Number: C.O. (COMM.IPD-PAT) 38/2022

Neutral Citation: 2025:DHC:158

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Introduction

This case addresses the legal intricacies of revocation petitions under Section 64 of the Patents Act, 1970, and the interplay between such petitions and defenses raised under Section 107 in patent infringement suits. The petitioner sought the revocation of a patent related to the pharmaceutical product LINAGLIPTIN, owned by the respondent.

Parties Involved:

Petitioner: Macleods Pharmaceuticals Ltd., engaged in the manufacture and marketing of pharmaceutical products, including anti-diabetic drugs.  Respondent No. 2: Boehringer Ingelheim Pharma GmbH & Co. KG, a German pharmaceutical company holding the patent for LINAGLIPTIN. Subject Patent:  Indian Patent No. IN 243301 for LINAGLIPTIN, granted on 5th October 2022 with a priority date of 21st August 2002.  The patent expired on 18th August 2023.

Proceedings Timeline:

17.02.2022: Petitioner filed a revocation petition under Section 64 of the Patents Act.19.02.2022: Respondent filed a patent infringement suit in the High Court of Himachal Pradesh. 2024: Various interim applications and objections were raised concerning the maintainability of the revocation petition post-patent expiry.

Brief Facts of the Case:

The petitioner filed a revocation petition alleging invalidity of the respondent's patent, claiming it was filed in anticipation of launching a generic version of LINAGLIPTIN. Respondent No. 2 contested the maintainability of the revocation petition on grounds including: Expiry of the patent. Filing of a defense under Section 107 in the infringement suit. Potential for conflicting judgments from two High Courts.

Issues Raised:

Can a revocation petition under Section 64 be maintained if the petitioner has already raised a defense of invalidity under Section 107 in an infringement suit? Is a revocation petition maintainable after the expiry of the patent?

Reasoning of the Judge: Scope of Section 64 vs. Section 107:

A revocation petition under Section 64 operates in rem and, if successful, removes the patent from the register entirely. A defense under Section 107, raised in an infringement suit, operates in personam and affects only the parties to the suit.

Maintainability Post-Patent Expiry:

The term of the patent does not restrict the filing or continuation of a revocation petition. Expiry does not render the petition infructuous, as the petitioner can still seek to prevent enforcement actions, including claims for damages.

Concurrent Jurisdiction and Conflicting Judgments:

The petitioner retains the choice to file a standalone revocation petition or a counterclaim in an infringement suit. The possibility of conflicting judgments is mitigated by the pending transfer petition before the Supreme Court.

Decision

The Court dismissed the respondent’s objections to the maintainability of the revocation petition. The revocation petition was deemed maintainable and listed for further proceedings on 24th February 2025.

Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539

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