Jurisdiction - India
India – Intellectual Property Updates.

17 July, 2014


Legal News & Analysis – Asia Pacific – India – Intellectual Property 


SC, on June 2, 2014, in the case of Dr. Alloys Wobben & Anr v. Yogesh Mehra & Others1 delivered a significant decision, which seeks to streamline the patent dispute resolution process in India, with an aim of preventing multiplicity of proceedings.

Enercon India Limited (‘EIL’) had filed 23 revocation petitions before the Intellectual Property Appellate Board (‘IPAB’) under Section 64(1) of the Patents Act, 1970 (‘Patents Act’), against Dr. Alloys Wobben’s (‘Wobben’) patents in India. Wobben has filed 19 patent infringement suits (‘Infringement Suits’), inter alia, against EIL for infringement of its patents in the Delhi High Court. Pursuant thereto, EIL had also filed “counter claims” to the Infringement Suits. The prayers in the revocation petitions filed by EIL were identical to those in the counter claims filed in response to the Infringement Suits.

SC held that the remedies available under Section 64 of the Patents Act for filing a revocation petition before the IPAB or a counter-claim in an infringement suit before any jurisdictional High Court are disjunctive and not conjunctive and, therefore, the concerned person must choose one of the above remedies. In case both the IPAB (for revocation) and the jurisdictional High Court (counter-claim) have already been approached, SC laid down that:

i. If a revocation petition is filed before the filing of a counter-claim in an infringement suit, the defendant is disentitled to seek revocation of the patent in the infringement suit through a counter-claim; and

ii. if revocation of a patent has already been sought in an infringement suit by way of a counter-claim, the defendant is disentitled to file a revocation petition before the IPAB.

SC clarified that a counter-claim is essentially a suit filed by the defendant and has to be treated like a plaint. Since a counter-claim is an independent suit, it cannot be allowed to proceed, where the defendant has already initiated action in another forum, on the same cause of action by virtue of Sections 10 and 151 of the Civil Procedure Code, 1908. Therefore, where an issue is already pending adjudication between the same parties in a Court having jurisdiction to adjudicate, a subsequently instituted suit on the same issue between the same parties cannot be allowed to proceed.

SC further held that, as both the parties had already agreed that the suits and the counter claims pending between them should be consolidated and heard by the Delhi High Court, and due to a consent order dated September 1, 2010 already having been passed by the Delhi HighCourt, it will now not be open to either of the parties to seek redressalfrom a forum that is in addition to the agreed forum.

SC affirmed that the consent order passed by the Delhi High Court on September 1, 2010, being on the subject of procedure, and being before a forum that had statutory jurisdiction to deal with the same, was fully justified in the facts and circumstances of the case.


End Notes:


1 Civil Appeal No. 6718 of 2013




For further information, please contact:


Zia Mody, AZB & Partners
[email protected]


Abhijit Joshi, AZB & Partners 
[email protected]

Shuva Mandal, AZB & Partners 
[email protected]


Samir Gandhi, AZB & Partners
[email protected]

Percy Billimoria, AZB & Partners 
[email protected]


Aditya Bhat, AZB & Partners 
[email protected]


Comments are closed.