Novartis AG v Natco Pharma Limited (2020)

Summary

"The plaintiffs and the defendant are litigating, on the issue of alleged infringement of the suit patent." (para 3) On 2 May 2019 the Court "restrained the defendant, by way of interim relief, 'from carrying out any fresh manufacturing of pharmaceutical preparations comprising of the active pharmaceutical ingredient (API)" (para 4). On 20 August 2019 the Court "was apprised that, in the interregnum, the post-grant opposition, preferred by the defendant against the suit patent, had been allowed by the Controller of Patents, and that the suit patent stood revoked." (para 6) "In view of the mandate of Sections 62(2) and 11A(7) of the Patents Act, 1970, wherein no infringement action is maintainable against a revoked patent, this Court, given the aforesaid facts, suspended the operation of its earlier order" (para 7).

"Vide order dated 20th July, 2020, the learned IPAB" ("Intellectual Property Appellate Board") "has stayed the operation of the order dated 16th August, 2019, of the Controller of Patents, revoking the suit patent, till the decision on the appeal pending before it." (para 8) The Court held that "The operation of the said order was merely eclipsed by the issuance of the order dated 16th August, 2019, of the Controller of Patents and, with the passing of the order dated 20th July, 2020 of the learned IPAB, that eclipse has now been removed. The original order, dated 2nd May, 2019 has, therefore necessarily to revive." (para 14) It ordered: "Accordingly, the present application is allowed. The order dated 2nd May, 2019, stands revived, and the ad interim relief granted, by the said order, restored." (para 18)

What the court decided

1. Revoked patents and infringement actions. Recording its order of 20 August 2019, the Court stated: "In view of the mandate of Sections 62(2) and 11A(7) of the Patents Act, 1970, wherein no infringement action is maintainable against a revoked patent, this Court, given the aforesaid facts, suspended the operation of its earlier order" (para 7)
2. Publication, grant and damages. The order of 20 August 2019, reproduced by the Court, held: "The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is further clear" and "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." (para 7)
3. Revival when revocation is stayed. The order of 2 May 2019 "had been suspended, by the subsequent order dated 20th August, 2019, only because of the revocation, in the interregnum, of the suit patent, by the Controller of Patents, on 16th August, 2019." (para 12) "In any event, in view of the order dated 20th July, 2020, there can be no reasonable ground to reject the prayer for revival of the order of ad interim relief, dated 2nd May, 2019, passed by this Court. The operation of the said order was merely eclipsed by the issuance of the order dated 16th August, 2019, of the Controller of Patents and, with the passing of the order dated 20th July, 2020 of the learned IPAB" ("Intellectual Property Appellate Board") ", that eclipse has now been removed." (paras 12, 14)
4. Objections to the stay order. The defendant contended "that the plaintiffs were guilty of suppression in the appeal preferred before the learned IPAB" ("Intellectual Property Appellate Board") (para 10) and "that, given the difference in price between the drugs manufactured by the plaintiffs and by the defendant, it was in public interest that the defendant be allowed to manufacture and sell its drug." (para 11) The Court held: "These, however, in my view, are not aspects which can impact the disposal of the present application, which essentially seeks revival of the order dated 2nd May, 2019 supra, passed by this Court." (para 12) "The submissions advanced by Mr. Tripathi, qua the order dated 20th July, 2020, and the validity thereof, would essentially have to be urged either in opposition to the prayer, of the present plaintiffs for interim relief, or while contesting the suit. They cannot constitute a legitimate basis to oppose the prayer in the present application, for revival of the order dated 2nd May, 2019." (paras 10–12, 15)
5. Procedure. Early hearing of a pharmaceutical patent. "In view thereof, and as the issue in controversy deals with a pharmaceutical patent, it would be in public interest that I.A. 6386/2019 is taken up and decided on an early date." (para 17)

Subsequent treatment

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