Parallel Proceedings - Revocation of Patents in IPAB and High Court (as Counter Claim in an Infringement Suit)

 An interesting judgment was delivered by the high court of Delhi in “Dr. Aloys Wobben vs Yogesh Mehra & Ors” on January 20, 2012. The issue revolved on whether a party should be permitted to continue the prosecution of proceedings for revocation of patents (instituted by the party) in a Patent Appellate Board when the party has elected to prosecute their counter claims for revocation of the same patents in an infringement suit in a court.

Section 64 of the India Patents Act 1970 is directed towards revocation of patents. Section 64 essentially states that revocation can be brought in two forums – The Intellectual Property Appellate Board, where a petition for revocation can be filed by any person interested or by the central government and in the High court as counter claim in an infringement suit.

In Dr. Aloys Wobben vs Yogesh Mehra & Ors, the respondents (defendants) had filed petitions for revocation of patents and were also contesting counter claims in high court for an infringement suit brought against them. The question to be answered was whether proceedings in two separate forums be allowed.

Some interesting observations in the judgment:

• Parallel proceedings in two separate forums (IPAB, High Court) for revocation of the very same patents could not proceed if, they were found to be inconsistent with each other.
• If the nature of the challenge in the two forums was materially different, it was quite possible to contend that proceedings could continue concurrently both before the IPAB and the High Court.
• Concurrent or even cumulative proceeding can continue till satisfaction is obtained via either proceeding. Satisfaction sets up a bar as, it results in an advantage to one party and disadvantage to another.

 It was concluded that two concurrent proceedings can proceed unimpeded till a stage of satisfaction is reached.

Parallel proceedings:

At the EPO (source: Wikipedia):

If a third party files an opposition to a European patent with the EPO and also, in parallel, initiates a revocation action (also called "nullity action" or "validity proceedings") against the same patent before a national court, the national court (at least in England) may exercise its discretion to either

• stay the national proceedings, in order to wait the outcome of the EPO opposition proceedings, or
• allow the revocation proceedings to go ahead, without waiting the outcome of the EPO proceedings.

 At USPTO (source: USPTO)

If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination.