Del HC Clarifies that No Infringement Action is Maintainable in Respect of a Revoked Patent

A recent decision by Justice Prathiba Singh of the Delhi High Court, in the case brought in by Novartis AG against Natco this year, reiterates the black letter law regarding non-maintainability of infringement actions in respect of unregistered or revoked patents.

Section 62(2) read with Section 11A(7) of The Patents Act, 1970 provides that “No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of publication of the application for restoration of the patent.”

Justice Singh, in para 8 of the judgement notes:

The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is further clear from a reading of Section 62(2) and Section 11A(7) of The Patents Act, 1970. Even if a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed till the patent is granted, though damages can be sought with effect from the date of publication.  Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked.

Procedural History

Novartis AG had filed a suit for permanent injunction, damages, rendition of accounts, etc. in respect of its granted patent, Indian Patent No. 276026 titled ‘Novel Pyrimidine Compounds and compositions as Protein Kinase Inhibitors‘ (hereinafter, ‘026 patent). Novartis’ case is that it had been granted the ‘026 patent for a novel and inventive compound Ceritinib.  This is a drug meant for treatment of non-small cell lung cancer.  The ‘026 patent was filed as a PCT application claiming priority since 2007, and was granted on 28.09.2015.

Natco filed a post grant opposition within the statutory period under Section 25(2) of The Patents Act, 1970. Initially, the Opposition Board gave a favourable opinion in Novartis’ favour, but later Natco produced additional documents because of which the Board ultimately revoked the patent on 16.08.2019 on the grounds that the ‘026 patent lacked novelty (in view of disclosure in patents IN 240560 and IN 232653).

Taking note of the revocation of the patent, the court held:

…[R]ights in a patent are only for the life of a patent which remains granted and has not been revoked. The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights in patents. Patent infringement actions are maintainable only in respect of granted and live patents.

The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is further clear from a reading of Section 62(2) and Section 11A (7) of The Patents Act, 1970. Even if a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed till the patent is granted, though damages can be sought with effect from the date of publication. Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked.

This is a good decision that clearly sets out proper application of the black letter law.