Patent infringement actions are maintainable only in respect of granted and live patents
On Aug. 20, 2019, High Court of Delhi Passed order that “Patent infringement actions are maintainable only in respect of granted and live patents.”
Plaintiff: Novartis AG & ANR. .
Defendant: Natco Pharma Ltd.
The suit concerns the Plaintiff’s patent number IN 276026 titled ‘Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors” relating Ceritinib drug for treating non-small cell lung cancer.
On 16th August 2019, in the post-grant opposition proceeding, Controller of Patents, passed order that that the suit patent lacks Novelty and the patent has been revoked.
The Defendant has filed two applications – one under Order VII, Rule 11 CPC and the second one under Order XXXIX, Rule 4 CPC seeking dismissal of the present suit and vacation/suspension of the interim injunction operating in the present case on the ground that the patent granted in favour of the Plaintiffs has been revoked in the post grant opposition proceedings.
Plaintiff’s Counsel, submits that the order passed in the post grant opposition proceedings has been appealed against by the Plaintiffs and the same was listed before the Intellectual Property Appellate Board (hereinafter, „IPAB‟) on 19th August, 2019. On the said date, the IPAB has directed that the matter be listed on 21 st August, 2019 at 2:30 PM. He accordingly requests that no order be passed till 22nd August, 2019, which is the next date before Court in this matter.
Court while passing the order mentioned that “Though the appeal is stated to have been filed by the Plaintiffs immediately after the passing of the order dated 16th August 2019, rights in a CS (COMM) 229/2019 Page 6 of 6 patent are only for the life of a patent which remains granted and has not been revoked.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 Plaintiffs are, however, granted liberty to seek appropriate orders if any orders are passed in favour of the Plaintiffs by the IPAB.
