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(III) The Aloys Wobben controversy

12. The second ground on which Mr. Khera seeks dismissal of the present suit is based on para 19 of the judgment of the Supreme Court in Aloys Wobben v. Yogesh Mehra2, which reads thus:

19. If any proceedings have been initiated by ―any person interested‖, under Section 25(2) of the Patents Act, the same will eclipse the right of the same person to file a ―revocation petition‖ under Section 64(1) of the Patents Act. And also, to invoke the right granted under Section 64(1) of the Patents Act, to file a ―counterclaim‖ (in response to an ―infringement suit‖ to seek the revocation of a patent). This, in our view, would be the natural effect of the words, ―Subject to the provisions contained in this Act ...‖, appearing at the beginning of Section 64(1) of the Patents Act.

―19. If any proceedings have been initiated by ―any person interested‖, under Section 25(2) of the Patents Act, the same will eclipse the right of the same person to file a ―revocation petition‖ under Section 64(1) of the Patents Act. And also, to invoke the right granted under Section 64(1) of the Patents Act, to file a ―counter-claim‖ (in response to an ―infringement suit‖, to seek the revocation of a patent). This, in our view, would be the natural effect of the words, ―Subject to the provisions contained in this Act.....‖, appearing at the beginning of Section 64(1) of the Patents Act. And if, the above meaning is not to be assigned to the words ―Subject to the provisions of this Act.....‖, they would be redundant and superfluous. It is however not necessary to pay a serious thought to the situation referred to above. The above situation, in our considered view, is unlikely to ever arise. This is because, Section 25 of the Patents Act, inter alia, provides for the procedure, for the grant of a patent. The procedure commences with the filing of an application. The second step contemplates publication of the details of the patent sought. The next step envisages, the filing of representations by way of opposition (to the grant of the patent). This advances into a determination by the ―Controller‖, to grant or refuse the patent. The decision of the ―Controller‖, leads to the publication of the grant (of CS(COMM) 101/2022 Neutral Citation Number : 2023:DHC:3337 the patent). This process finalises the decision of the grant of the patent. All the same, it does not finally crystalise the right of the patent holder. After the grant is published, ―any person interested‖, can issue a notice of opposition, within one year of the date of publication of the grant of a patent. If and when, challenges raised to the grant of a patent are disposed of favourably, to the advantage of the patent holder, the right to hold the patent can then and then alone, be stated to have crystallized. Likewise, if no notice of opposition is preferred, within one year of the date of publication of the grant of a patent, the grant would be deemed to have crystallized. Thus, only the culmination of procedure contemplated under Section 25(2) of the Patents Act, bestows the final approval to the patent. 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.‖ (emphasis added)

27. Having examined the four contentions advanced at the hands of the learned counsel for the appellants (delineated in para 10 of the instant judgment) and the fifth contention (noticed in para 22 of our instant determination), we are of the view that the following conclusions emerge therefrom:

27.1. Firstly, if ―any person interested‖ has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all CS(COMM) 101/2022 Neutral Citation Number : 2023:DHC:3337 similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a ―revocation petition‖ in the capacity of ―any person interested‖ [under Section 64(1) of the Patents Act], as also, the right to seek the revocation of a patent in the capacity of a defendant through a ―counterclaim‖ [also under Section 64(1) of the Patents Act].
27.2. Secondly, if a ―revocation petition‖ is filed by ―any person interested‖ in exercise of the liberty vested in him under Section 64(1) of the Patents Act, prior to the institution of an ―infringement suit‖ against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an ―infringement suit‖ has been filed against him) through a ―counterclaim‖. This denial of the remedy granted to him by way of a ―counterclaim‖ under Section 64(1) of the Patents Act, is based on the principle of law narrated in para 25 above.