Delhi High Court allows for multiple proceedings before IPAB and High Court on similar points of law

In a recent judgment, Justice Ravindra Bhat has rejected an application filed by Dr. Alloy Wobbens seeking either dismissal or a stay of revocation petitions filed, by Enercon India, before the IPAB against certain patents, which are also the subject of counter-claims for revocation before the Delhi High Court. We had earlier blogged about a related petition in the same matter before the Madras High Court over here.
Due to terrible drafting of the Patents Act, 1970 it is possible for the same person to file a revocation petition before the IPAB, file a counter-claim for revocation before the High Court and also a post-grant opposition before the Patent Office against the same patent. This same issue has cropped up in the case of Bayer v. Cipla before the Delhi High Court where Cipla had a post-grant opposition pending before the Patent Office when it also filed a counter-claim for revocation before the Delhi High Court. In that case Bayer moved an application seeking a stay of the post-grant opposition. However the High Court was not required to pass an order in that case because Cipla itself agreed to adjourn the matter before the Patent Office.

In this present case, while Enercon India is suing for the revocation of multiple patents belonging to Enercon GmBH, the latter has filed multiple infringement suits before the Delhi High Court on the same point. In its application Enercon GmBH has claimed that Enercon India was barred by the ‘Doctrine of Election’ from following multiple proceedings before multiple forums and that it was required to ‘elect’ only one such forum. Justice Bhat however dismissed the application with surprisingly perfunctory reasoning, atleast by his otherwise erudite standards. Recording the reasons for his dismissal Justice Bhat states that patent rights are different from other rights and that the Parliament has consciously provided for multiple forums for revocation and to over-ride those rights by invoking the ‘Doctrine of Election’ would be against the interests of public policy especially since staying the counter-claims for revocations would seriously prejudice the defence in the infringement suits. He also cites Supreme Court case law which states that the ‘Doctrine of Election’ does not act as ‘estoppel’ against the statute.

Could the Plaintiffs have got a stay on the basis of the doctrine of res-subjudice?
I’m a little curious as to why the Plaintiffs did not request for a stay on the grounds of the doctrine of res-subjudice which basically allows for the stay of certain proceedings on the grounds that the same issues, under the same title and parties are pending before another Court. This doctrine is best encapsulated under Section 10 of the CPC which applies to Civil Suits and also Section 124 of the Trade Marks Act which requires trial courts to stay all proceedings in an infringement suit if in case the trademark itself is challenged before the IPAB. Surprisingly the Patents Act, 1970 does not have a similar provision despite providing for a similar jurisdictional framework. Given the unique nature of patent rights and the flexibilities of common law the Court may have been more inclined to stay atleast one set of proceedings on the grounds of res subjudice.

The constitutionality of multiple proceedings
Given the fact that the Supreme Court has recognized intellectual property rights as Constitutional Rights it may bode well for somebody to challenge the constitutionality of the ridiculous jurisdictional scheme of the Patents Act which allows for the same right to be challenged before multiple bodies which in themselves are staffed by differently qualified persons. I had earlier highlighted the nature of such a challenge in a post over here.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).


  1. AvatarAnonymous

    S 104 relating to the jurisdiction say that where the counterclaim for the revocation in an infringement case has been made, the same has to be transfered to the high court.

    Do this applies to the pending revocation case in the appellate board?

    Secondly, can infringement and revocation be said as the same proceeding?


  2. AvatarAnonymous

    Dear SKG,

    By writing this post you want to emphasize that only a single proceeding to knock down a patent should exist under out patent law.

    This seems to be little shaky.

    Because in a hypothetical situation, If
    A files a Post-grant Opposition for a patent and
    A was also sued for an infringement of the same patent. A has the right to file a counter-claim of invalidity at the high court as well as a separate revocation petition under s. 64 at IPAB.

    If the same Opponent A files a revocation petition without filing post-grant even if he can, then the patentee may argue that the opponent has not exhausted all his remedies before he can go for revocation and hence not eligible to file a revocation at this point of time.

    In my opinion the current multi-tired process of patent opposition and revocation is justified and is good for those who believes that an X patent is not worth to be in the register of patents.

    Even if an opponent who has lost a post-grant opposition and revocation under s. 64 at IPAB, he can still file a new revocation petition under s. 64 at IPAB.


  3. AvatarAnonymous

    Dear Anon,

    Regarding your first Q., it is bit ambigious and unclear.

    About your second Q., In my opinion:

    Infringement proceeding along with counter claim of invalidity and a revocation under Sec. 64 at IPAB are both seperate proceedings cannot be same.

    Plz refer to my comments made before this.


  4. AvatarDilip Trasi

    In my opinion, in view of prior pendency before IPAB and technolegal nature of case, opinion of board is an important consideration influencing subsequent proceedings in higher courts.

  5. AvatarSurendra

    I think the doctrine of election between remedies will not be applicable. Because such doctrine is applicable only when one claim before a forum has been brought to judgment. This was held by Lord Atkin in case of United Australia Ltd v Barclays Bank Ltd [1941] AC 1


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