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Is a revocation petition maintainable after the expiry of the patent?

By Ajayamitabh7 | Views 16043

Parties Involved:
- Petitioner: Macleods Pharmaceuticals Ltd., engaged in the manufacture and marketing of pharmaceutical products, including anti-diabetic drugs.
- Respondent No. 2: Boehringer Ingelheim Pharma GmbH & Co. KG, a German pharmaceutical company holding the patent for LINAGLIPTIN.
- Subject Patent: Indian Patent No. IN 243301 for LINAGLIPTIN, granted on 5th October 2022 with a priority date of 21st August 2002. The patent expired on 18th August 2023.
Proceedings Timeline:
- 17.02.2022: Petitioner filed a revocation petition under Section 64 of the Patents Act.
- 19.02.2022: Respondent filed a patent infringement suit in the High Court of Himachal Pradesh.
- 2024: Various interim applications and objections were raised concerning the maintainability of the revocation petition post-patent expiry.
Brief Facts of the Case:
- The petitioner filed a revocation petition alleging invalidity of the respondent's patent, claiming it was filed in anticipation of launching a generic version of LINAGLIPTIN.
- Respondent No. 2 contested the maintainability of the revocation petition on grounds including:
  - Expiry of the patent.
  - Filing of a defense under Section 107 in the infringement suit.
  - Potential for conflicting judgments from two High Courts.
Issues Raised:
- Can a revocation petition under Section 64 be maintained if the petitioner has already raised a defense of invalidity under Section 107 in an infringement suit?
- Is a revocation petition maintainable after the expiry of the patent?
Reasoning of the Judge:
- Scope of Section 64 vs. Section 107:
  - A revocation petition under Section 64 operates in rem and, if successful, removes the patent from the register entirely.
  - A defense under Section 107, raised in an infringement suit, operates in personam and affects only the parties to the suit.
- Maintainability Post-Patent Expiry:
  - The term of the patent does not restrict the filing or continuation of a revocation petition. Expiry does not render the petition infructuous, as the petitioner can still seek to prevent enforcement actions, including claims for damages.
- Concurrent Jurisdiction and Conflicting Judgments:
  - The petitioner retains the choice to file a standalone revocation petition or a counterclaim in an infringement suit.
  - The possibility of conflicting judgments is mitigated by the pending transfer petition before the Supreme Court.
Decision:
- The Court dismissed the respondent’s objections to the maintainability of the revocation petition.
- The revocation petition was deemed maintainable and listed for further proceedings on 24th February 2025.