Enercon – Jeopardizing Patentees’ Rights

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!