No specific limitation period prescribed for seeking revocation under Section 64 of the Patents Act.

ORDER

Prathiba M. Singh, J. (Oral). - This hearing has been done through hybrid mode. I.A. 5674/2022 in C.O.(COMM.IPD-PAT) 3/2021

2. This is an application by the Petitioners seeking to place on record affidavits of the expert, Dr. Jeffrey A. Stafford. The said affidavits, annexed to the present application, are taken on record, subject to any objections of the Petitioners, who may wish to controvert the same by way of their own affidavits, if required.

3. Accordingly, I.A. 5674/2022 is disposed of. I.A. 3419/2022 in C.O.(COMM.IPD-PAT) 3/2021

4. This is an application seeking dismissal of the present revocation petition on the ground that it is barred by limitation. The patent in this case of which revocation is sought is Indian Patent 268846 (hereinafter "IN'846") titled 'Glucopyranosyl-substituted Benzenol derivatives, drugs containing said compounds, the use thereof and method for the production thereof' granted on 18th September, 2017 and published in the official gazette by the Patent Office, on 25th September, 2017. The present petition was filed on 16th October, 2021.

5. The submission of Mr. Sethi, ld. Senior Counsel appearing for the Defendant-Patentee is that the time period for the post grant opposition expired on 25th September, 2018 and the time period to file the revocation petition expired on 25th September, 2020, by applying Section 137 of the Limitation Act, 1963 (hereinafter "Limitation Act"). He relies upon the decision of the Calcutta High Court in Bayer AG v. Controller of Patents, AIR 1982 Cal 30, to argue that in such a case, the limitation period as per the Limitation Act would commence once the cause of action has arisen, and the Petitioner cannot choose to approach the Court at any time during the life of the patent.

6. On the other hand, Mr. Sai Deepak, ld. Counsel appearing for the Petitioner, submits that the only two pre-conditions for filing of the revocation petition under Section 64 (2)(b), of the Patents Act, 1970 (hereinafter "Patents Act") are (i) that the person who approaches the Court is a 'person interested' and (ii) that the patent continues to remain on the Patent Register. If these two conditions are satisfied, the revocation petition under Section 64 can be filed any time during the life of the patent.

7. Heard and perused the record. The issue that arises in this application is whether revocation petitions are subject to any limitation period under the Limitation Act. At the outset, this Court notes the procedure for revocation. In the scheme of the Patents Act, the patent application once filed and examined, is granted under Section 43. Upon the grant of the patent, the exclusive rights vest in the Patentee in terms of Section 48 of the Patents Act. The term of the patent however, is for a period of 20 years from the date of priority or date of application in terms of the provisions of the Patents Act. The patent continues to remain in the register for the entire period of the life of the patent which is 20 years.

8. Upon the grant of a patent, there are various remedies available to a person interested for seeking to challenge the grant of the Patent. The first remedy would be a post grant opposition which could be filed within the time prescribed under Section 25(2) of the Patents Act read with the Patent Rules, 2003 (hereinafter "Patents Rules"). The second remedy, is under Section 64 of the Patents Act. Under Section 64, any 'person interested' can prefer a revocation petition in the following manner:

1. As an independent petition seeking revocation.

2. By way of a counter claim in a suit for infringement.

9. In both these circumstances, the 'person interested' would be permitted to seek revocation on any of the grounds mentioned in Section 64, so long as such a person is in some way 'interested' if the patent continues on the register. Section 2(1)(t) of the Patents Act defines a 'person interested' as:

(t) "person interested" includes a person engaged in, or in promoting, research in the