Patent Revocation Petition Does Not Constitute Suit Under CPC: Delhi HC

In an order dated August 3, 2023, the Delhi High Court dismissed the application filed by respondent no. 2, Boehringer Ingelheim International GmbH, seeking a stay of proceedings in respect of the revocation petition filed by the petitioners under Section 64 of the Patents Act, 1970[1].

The petitioners filed a petition before the Delhi High Court for revocation of respondent no. 2’s patent for an anti-diabetic drug. The same was done electronically through the Court’s e-filing portal on October 16, 2021. Since it was a Court holiday on the said date, the petition was registered five days later, on October 21, 2021. In the meantime, respondent no. 2 filed a suit before the Himachal Pradesh High Court on October 19, 2021, alleging infringement of its patent by the petitioners[2]. An ex parte stay was granted in this regard, after which respondent no. 2 filed another suit in which a stay was granted in the same month[3].

Considering the said circumstances, respondent No. 2 filed an interim application requesting a stay of the proceedings before the Delhi High Court to avoid the possibility of conflicting decisions. The same was filed under Section 10 of the Code of Civil Procedure (CPC), 1908, which deals with the stay of suits and proscribes Courts from proceeding with the trial of any suit where the matter in issue is directly and substantially in issue in a prior suit between the same parties.

Regarding the date of institution of the revocation petition, the Court observed that a suit is registered under Order IV Rule 2 of CPC only after it is instituted (by presentation of the plaint) under Order IV Rule 1. It was pointed out that if a plaint is not in compliance with Orders VI and VII of the CPC, the date of the suit’s institution wouldn’t get postponed to when compliance occurs. With this, the Court held that in the present case, the revocation petition was instituted on the same day, i.e., October 16, 2021.

Further, the Single Judge Bench of Justice C Hari Shankar observed that a revocation petition cannot be deemed to be a suit in the absence of any provision under which a revocation petition under Section 64 of the Patents Act may be considered a suit. It was also stated that even while Section 10 of the CPC was in effect, the Court in charge of the subsequent suit could still issue interlocutory orders in accordance with Order XXXIX of the CPC and related provisions.

[1] Dr. Reddys Laboratories Limited & Anr. v. The Controller of Patents & Ors. [IA 5896/2023 in CO(COMM.IPD-PAT) 3/2021]

[2] COMS 5/2021

[3] COMS 7/2021