While a detailed
analysis of the latest decision in the Enercon
case [viz. judgment dated
June 2, 2014 of the Hon’ble Supreme Court of India in Dr. Aloys Wobben and
Anr. v.Yogesh Mehra and Ors.] is long overdue [and I wish to cover it in
greater detail in subsequent post(s)], in this post I’d like to put spotlight on a critical
piece of the finding by the Hon’ble Supreme Court in this judgment, which
according to me is in stark contravention with the provisions of the patents
act as well as the universal patents practice and standards.
The relevant excerpt from para 18 of the judgment
is reproduced below:
“Therefore,
it is unlikely and quite impossible, that an "infringement suit"
would be filed, while the proceedings Under Section 25(2) are pending, or
within a year of the date of publication of the grant of a patent.”
[For those who are not aware, “proceedings
Under Section 25(2)” refers to the post-grant opposition proceedings, which
could be initiated by any ‘person interested’ within a period of one year from
the date of publication of grant of patent. Disposal of these proceedings is
not time bound.]
Although the above finding is an obiter
dictum in the context of this case, it has a significant bearing on the
rights of patentee under the Patents Act, 1970. A direct understanding from the
above quoted para is that a patentee is not entitled to file a suit for
infringement until expiry of the deadline to file post-grant opposition (viz.
one year from the date of publication of grant of patent) or until disposal of
post-grant opposition, if any, filed during that period, whichever is later.
This, in effect, translates into a delay in culmination of the rights of
patentee under the Patents Act, 1970 by at least one year (assuming no
post-grant opposition is filed). In case a post-grant opposition is filed, the
rights will be deemed suspended indefinitely [viz. until disposal of the
post-grant proceeding(s), which presently takes a few years].
The excerpted observation is in direct
conflict with the general near-universal position that the right of a patentee
to sue for infringement crystallizes immediately upon grant of patent. The
proviso to Section 11A (7) of the Indian Patents Act, 1970 also declares this
to be true position in India, although couched in negative phraseology – “…the
applicant shall not be entitled to institute any proceedings for infringement
until the patent has been granted.” Uptil now, it has been commonly
understood that the position in India is the same as almost everywhere in the
world viz. that a patentee is entitled to institute a suit of infringement
directly and immediately upon grant of patent.
This part of the judgment, therefore, clearly
undermines the rights of patentees under the Patents Act and I’m not sure of
the aftermaths. Any suggestions, inputs or updates are welcome!
