A revocation petition under Section 64 of the Patents Act can be maintained even after the patent's expiry, as the petitioner qualifies as a 'person interested' and the cause of action for damages survives.

JUDGMENT :

AMIT BANSAL, J.

I.A. 7635/2024 (under Section 151 of CPC) I.A. 46685/2024 (under Section 151 of CPC)

1. The captioned applications have been filed by the respondent no.2 seeking dismissal of the present petition.

2. The following issues arise for adjudication in the two applications:

(i) Whether a revocation petition can be held to be not maintainable if the petitioner has filed a written statement, taking a defence of invalidity of the suit patent under Section 107 of the Patents Act, in an infringement suit filed by the patentee.

(ii) Whether a revocation petition can be filed or sustained (if already filed) after the expiry of the term of the patent.

PREFATORY  FACTS

3. The petitioner, Macleods Pharmaceuticals Ltd., is engaged in manufacturing and marketing of diverse pharmaceutical products including anti-diabetic drugs.

4. The respondent no. 2, Boehringer Ingelheim Pharma GmbH & Co. KG, is a company organized and existing under the laws of Germany. It is engaged in the business of developing, manufacturing and marketing pharmaceuticals worldwide including India.

5. The present revocation petition was filed by the petitioner under Section 64(1) of the Patents Act, 1970 (hereinafter the ‘Patents Act’) seeking revocation of Indian Patent IN 243301 registered in the name of the respondent no. 2 in respect of a medicinal product called ‘LINAGLIPTIN’ an anti-diabetic product (hereinafter ‘the subject patent’). The subject patent was granted in favour of the respondent no. 2 on 5^th October, 2022 with the priority date of 21^st August, 2002.

6. The present petition was filed on 17^th  February, 2022 just before the intended date for the commercial launch of the petitioner’s generic ‘LINAGLIPTIN’ product, i.e. 22^nd  February, 2022.

7. Subsequently, on 19^th February, 2022, the respondent no.2 filed an infringement suit against the petitioner herein before the High Court of Himachal Pradesh (COMS 3/2022), alleging infringement of the subject patent (hereinafter the ‘Himachal Suit’).

8. The term of the subject patent expired on 18^th August, 2023.

9. On 4^th May, 2022, the respondent no. 2 filed an application being I.A. 5611/2022 under Order VII Rule 11 of the Code of Civil Procedure, 1908 (‘CPC’) seeking dismissal of the present revocation petition on the ground that it was filed twelve years after the grant of the subject patent. This Court vide oral judgement dated 27^th July, 2022 dismissed the said application on the ground that there is no prescribed time limit to file a revocation petition.

10. The respondent no. 2 had also filed an application being I.A. 13077/2023 seeking transfer of the present revocation petition to the High Court of Himachal Pradesh, to be consolidated with the Himachal Suit. However, the said application was also dismissed by the Predecessor Bench vide order dated 20^th July, 2023.

11. On 2^nd April, 2024, I.A. 7635/2024 has been filed on behalf of the respondent no. 2 stating that since the subject patent has expired on 18^th August, 2023, nothing survives in the present revocation petition and, therefore, the same should be dismissed.

12. Thereafter, on 8^th May, 2024, the petitioner filed a transfer petition bearing no. T.P.(C) 1412/2024 before the Supreme Court seeking transfer of the Himachal Suit to this Court, which is pending before the Supreme Court.

13. Subsequently, on 25^th  November, 2024, I.A. 46685/2024 has been filed on behalf of the respondent no. 2 seeking dismissal of the present revocation petition on the ground that the petitioner has filed a written statement seeking invalidity of the subject patent in the Himachal Suit.

SUBMISSIONS ON BEHALF OF THE  RESPONDENT  NO. 2

14. Mr. Sandeep Sethi, Senior Counsel appearing on behalf of the respondent no.2 has made the following submissions:

14.1. The defence of invalidity under Section 107 of the Patents Act has already been taken by the petitioner in its written statement filed in the Himachal Suit. The prayers sought by the petitioner in the presen