Whether the suit for infringement filed by the patentee is maintainable, when there is a pending post-grant opposition in view of the subsistence of the right of the patentee under Section 48.
Short description of Patent: Patent related to product “FM 120 CONEXUS”
Plaintiff has filed the present suit, inter alia, praying for a decree of permanent injunction against the defendant, their directors, servants, agents, licensee, distributors, etc. restraining them from making, manufacturing, using, offering for sale, selling and/or importing the impugned product
Summons in the suit were issued to the defendant 2019 and the Court granted an ex-parte ad-interim injunction. On service of summons defendant No. 2 filed the present application seeking the rejection of the plaint inter alia on the ground that the same is barred under Section 25(2) of the Patents Act and also on the ground that no cause of action has arisen within the jurisdiction of this Court and thus the plaint is also liable to be returned
SUBMISSION BY PLAINTIFF
The defendants were engaging in manufacturing, offering for sale, selling impugned products, similar to the subject instant patent and were intending to exhibit the same in an exhibition. The design of the products offered for sale by the defendants was also similar to the plaintiff’s product COMBO thus amounting to infringement of the plaintiff’s rights in the patent.
The defendant’s product is an imitation of the plaintiff’s design and has copied all features more particularly the shape and configuration which makes the registered design of the plaintiff novel.
SUBMISSION BY RESPONDENTS
It is claimed by respondent that Section 25(2) of the Patent Act provides that at any time after the grant of patent but before the expiry of period of one year from the date of publication of patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the grounds detailed in Section 25(2) of the Patents Act. It is claimed that the rights of the patent holder do not crystallize on mere grant of patent but do so only after the lapse of one year period provided for giving a notice of opposition under Section 25(2) of the Patents Act.
Section 48 of the Patents Act which governs the right of the patent holder under the Patents Act is subject to the other provisions contained in the Act which would include Section 25(2) Patents Act as well
The Court held that as the rights in favour of a patentee ensure to its benefit on grant of the patent under Section 48 of the Patent Act, even though the said right may not have finally crystallized, pending post-grant opposition, in view of the subsistence of the right of the patentee, and there being an alleged infringement, the patentee is not required to wait for one year period to sue for infringement and thus the present suit cannot be held to be not maintainable and liable to be dismissed as premature.
Therefore, the application is dismissed.
Citation CS(COMM) 124/2019