Ferring BV v Precise Bio Pharma Pvt Ltd (2022)

Summary

"Present suit has been filed by the Plaintiffs under Section 48 read with Sections 108 and 11A(7) of the Patents Act, 1970(hereinafter referred to as Act) seeking inter alia permanent injunction against the Defendants as well as damages, delivery, disclosure, recall of the infringing products and deposit of sale proceeds alleging infringement of the patent IN 387567 for the period 31.10.2014 to 03.03.2022." (para 1) "The patent was granted vide order dated 27.01.2022 by the Assistant Controller of Patents, dismissing the pre-grant opposition, filed by Defendant No.1 herein." (para 3) "Vide order dated 03.03.2022, the Court set aside the order dated 27.01.2022 on the ground that it was bereft of any reason and was a non-speaking order." (para 5) The plaintiffs contended that "any act of manufacturing, using, selling or offering for sale etc. of the infringing product, while the patent was in force clearly amounts to infringement of the patent under Section 48 of the Act." (para 7)

The Court found "merit in the contentions raised on behalf of the Defendants." (para 11) It held that "It is also explicitly clear from a reading of the first Proviso to Section 11A(7) that an infringement action cannot lie until the grant of the patent." (para 11) and that "The inevitable consequence of setting aside of the order granting the patent is that there is no valid patent in favour of the Plaintiffs and thus the Plaintiffs are not entitled to file the present suit for infringement." (para 12) "The suit is accordingly disposed of as withdrawn granting liberty to the Plaintiffs to take recourse to remedies available, in accordance with law." (para 14)

What the court decided

1. The exclusive right under section 48. "Plain reading of Section 48 of the Act leaves no doubt that the exclusive right of a patentee to prevent third parties from manufacturing, selling etc. the products or using the process, as the case may be, being the subject matter of the patent, only arises once the patent is granted." (para 11)
2. The proviso to section 11A(7). The defendants contended that "under Section 11A (7) of the Act on and from the date of publication of the application for the patent and until the date of grant of a patent, the applicant has the like privileges and rights as if the patent for the invention had been granted on the date of application, however, Proviso to Section 11A(7) clearly provides that the applicant shall not be entitled to institute proceedings for infringement until the patent is granted." (para 9) The Court held: "It is also explicitly clear from a reading of the first Proviso to Section 11A(7) that an infringement action cannot lie until the grant of the patent." (paras 9, 11)
3. A grant set aside relates back. Counsel for the second defendant submitted "that once the order granting the patent has been set aside, the order will relate back to the date of grant and it cannot be argued by the Plaintiffs that the patent was valid for a limited period entitling them to sue for infringement on that basis." (para 10) The Court held: "In the present case, the order granting the patent in favour of the Plaintiffs, admittedly stands set aside in a writ petition and as rightly contended by the Defendants, the order of the Court would relate back to the date of grant of the patent. The inevitable consequence of setting aside of the order granting the patent is that there is no valid patent in favour of the Plaintiffs and thus the Plaintiffs are not entitled to file the present suit for infringement." (paras 10, 12)
4. Expired and lapsed patents distinguished. Relying on Astra Zeneca AB and Anr. vs. Natco Pharma Ltd. and Sotefin SA vs. Indraprastha Cancer Society and Research Center, the plaintiffs contended "that if infringement has occurred during the lifetime of the patent, the infringing good would not be kosher on expiry of the patent and the Plaintiff would be entitled to seek restraint with respect to the infringing products, which were made or imported at the time when the suit patent was valid and subsisting." (para 8) The Court held: "The judgments relied upon by the learned Senior Counsel for the Plaintiffs are distinguishable on facts inasmuch as in the said cases the patents had expired or lapsed and the issue was regarding the rights of a patentee during the period of validity of the patents." (paras 8, 12)
5. Procedure. Withdrawal with liberty. The plaintiffs sought "to withdraw the present suit with liberty to take recourse to legal remedies after the decision is rendered by the Assistant Controller of Patents and Designs." (para 13) "The suit is accordingly disposed of as withdrawn granting liberty to the Plaintiffs to take recourse to remedies available, in accordance with law." (paras 13–14)

What the court did not decide

"It is made clear that this Court has not expressed any opinion on the merits of the case." (para 15)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 1 October 2026.