Rights in a patent are only for the life of a patent which remains granted and has not been revoked.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.
In the recent decision by Justice Prathiba M. Singh (Delhi High Court) in NOVARTIS AG & ANR. Vs. NATCO PHARMA LIMITED, CS (COMM) 229/2019 (delivered on August 20, 2019), held that “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.”
In the present case, Novartis AG has filed the present suit seeking permanent injunction, damages, rendition of accounts and delivery up in respect of its granted patent, Indian Patent No. 276026 titled ‘Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors”. The case of the Plaintiff is that it has been granted the suit patent for a novel and inventive compound Ceritinib which is a drug meant for treatment of non-small cell lung cancer (NSCLC).
The suit patent was filed as a Patent Convention Treaty (hereinafter, ‘PCT’) application claiming priority since 2007, and was granted on 28th September, 2015. The Defendant – Natco Pharma Ltd. filed a post grant opposition within the statutory period under Section 25 (2) of The Patents Act, 1970. The Opposition Boardheld that the suit patent lacks Novelty and the patent has thereafter been revoked.
Rejecting the claim of the petitioner, the Hon’ble court observed that the rights in a patent are only for the life of a patent which remains granted and has not been revoked.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.