Is the 'Doctrine of Election' applicable in case of Patents? This is the bone of contention in one of the recent-most case of Dr. Aloys Wobben Vs. Shri Yogesh Mehra and Ors. [Decided on 06.12.2010] [complete judgment may be read here http://judg-mental.blogspot.com/2011/03/dr-aloys-wobben-vs-shri-yogesh-mehra.html].
Before moving onto the case and its analysis, I would like to discuss the basic tenets of the Doctrine of Election. For the applicability of the Doctrine of Election, there is a pre-requisite of the presence of three elements of election - existence of two or more remedies; inconsistencies between such remedies; and choice of one of them. All three elements are necessary and if any one of the three elements is not there, doctrine does not apply. And as per the doctrine – the petitioner can avail only one of the remedies available and not all of them simultaneously. The 'doctrine of election' is based on the rule of estoppels and thus bars a person from availing two or more remedies simultaneously.
In this case, the defendant sought for: (a) revocation/rectification of the plaintiff’s patent, in a proceeding before the Intellectual Property Appellate Board (IPAB), under provisions of Section 117G (basically a revocation petition under section 64 of Patents Act); and (b) cancellation of the said patent, as defence under Section 107 of the Act, before the Court, in the suit for infringement.
A revocation/rectification petition could be filed under section 64 of the Patents Act, 1970 before the IPAB. Section 117G is only with regard to the transfer of pending proceedings for revocation of patents from High Courts to the IPAB. Section 64 basically lists out 17 grounds (a-q) for revocation of patent. As per section 107, all these grounds are also available as a defence in a suit for infringement. In the present case, the plaintiff urged the court to stop the defendant from availing both the options simultaneously and relied on the doctrine of exercise.
The Hon’ble Court denied the plaintiff’s application and allowed the defendant to pursue both the remedies simultaneously. The reasoning given by the Hon’ble court is as:
“Though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before, he may prefer an application before the Board for cancellation or revocation. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable, or alternatively, he is asked not to raise the ground of cancellation in his written statement, his defence would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy; that would be plainly against public policy.” (emphasis provided)
The reasoning provided by the Hon’ble Court seems quite perfunctory to me. Let’s first discuss the applicability of the Doctrine of Exercise in the present case.
The remedy available in both the cases to the defendant is same (not because of the common grounds of section 64, but because of the common result) viz. the revocation/cancellation of the plaintiff’s patents. Secondly, it is quite possible that the IPAB and the High Court, while deciding upon the same issue parallely, may reach to different conclusions and issue conflicting orders (although in that case, the order of High Court shall prevail, but it will make the IPAB’s exercise perfectly futile), whereby one forum may revoke the patents and the other may upheld the validity of patents. Thirdly, in case a suit for infringement is pending against the defendant, it certainly has the choice to opt any of the options viz. to file a petition for revocation for patents at IPAB or to file a counterclaim for revocation in the suit. Thus, it seems that the doctrine should be applicable in the present case.
The Hon’ble Court erroneously construed it to interpret that availing of its rights before one forum will render the defendant devoid of its rights to be used before the other forum, which is certainly not the case. It is agreed that the right to file a counterclaim of revocation before High Court and right to file a petition for revocation before IPAB are statutory rights and cannot be taken away from the defendant, however, the Court could have suspended simply suspend one of the proceedings until the other one is pending, as otherwise it amounts to multiplicity of proceedings. Such an order will not take away the rights of the defendant, but will only suspend its exercising of those rights for the time being they are being pursued at a different forum. Apparently, unlike the Trade Marks Act 1999, there is no clear cut provision in the Patents Act, 1970, to this effect. Section 113 (2) of the Trade Marks Act, 1970 clearly provides that:
Where before the institution of a complaint of an offence referred to in sub-section (1), any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the tribunal, the court shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark. (emphasis provided)
Not only this, as per section 113(1) of the Trade Marks Act, 1999, the Court, if satisfied that such defence is prima facie tenable, provides 3 months time to accused to file a rectification before the Appellate Board.
Although, there are no corresponding provisions in the Patents Act, the Court can certainly decide to suspend one of the proceedings (where the rights and remedies are identical and the parties involved are also the same), in order to avoid a situation of possibly conflicting decisions. This could be further extended to a hypothetical situation, where within one year period of grant of patent, a person (interested) could file - a post-grant opposition under section 25(2) (to be decided by the Opposition Board); a petition for revocation of patent under section 64 (to be decided by the IPAB); and supposing a case of infringement has been filed by the Patentee against the person, he can also file a counterclaim of revocation under section 107 (based on any ground under section 64) (which matter than will be decided by the High Court). The grounds under section 25(2) and section 64 are almost similar with very minor changes.
Thus, in such situation, it is very much possible that the person is seeking same remedy viz. revocation of patents, effectively before three different forums, while relying on the same grounds. If allowed to proceed simultaneously, the outcome could be three different decisions by three different forums. The Hon’ble Court, therefore, ought to have suspended one of the proceeding, until pendency of the other.
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