Doctrine of Election - Patents

ByShelley Anandhavalli. E

Advocate

Altacit GlobalEmail: info@altacit.com Website: www.altacit.com

INTRODUCTION

• Basic tenets of the Doctrine of Election

Three elements of election – • existence of two or more

remedies; • inconsistencies between such

remedies; • choice of one of them.

Doctrine of Election - Patents

Andhra Pradesh Financial Corporation V/s Gar Re-rolling Mills [1994 (2) SCC 647

• The Doctrine of Election clearly suggest that when two remedies are available for the same relief, the party to whom the said remedies are available has the option to elect either of them.

• But that doctrine would not apply to cases where the ambit and scope of the two remedies is essentially different.

CASE LAW

Dr. Aloys Wobben Vs.

Shri Yogesh Mehra and Ors. [Decided by 1963/2009

High Court of Delhi on 06.12.2010]

IA No. 12638/2010 IN CS(OS)NO.

Is the 'Doctrine of Election' applicable in case of Patents?

The Delhi High Court recently dealt with the question of maintainability of proceedings for the revocation of patents before the Intellectual Property Appellate Board (IPAB).

This was filed by the same party whose counter-claim for revocation of same patent is pending before a High Court in a patent infringement suit.

Facts of the case

• The defendant sought for:

• (a) revocation/rectification of the plaintiff ’s patent, in a proceeding before the Intellectual Property Appellate Board (IPAB), under provisions of Section 117G (basically a revocation petition under section 64 of Patents Act);

• (b) cancellation of the said patent, as defense under Section 107 of the Act, before the Court, in the suit for infringement.

Cntd..

• A revocation/rectification petition could be filed under section 64 of the Patents Act, 1970 before the IPAB.

• Section 117G is only with regard to the transfer of pending proceedings for revocation of patents from High Courts to the IPAB.

• Section 64 basically lists out 17 grounds (a-q) for revocation of patent.

• As per section 107, all these grounds are also available as defence in a suit for infringement.

• In the present case, the plaintiff urged the court to stop the defendant from availing both the options simultaneously and relied on the doctrine of election.

• The question for examination by the court was whether recourse to both the defence of revocation in a suit as well as an application seeking cancellation of the patent in the suit filed by the plaintiff for infringement could be taken at the same time.

• The Court considered the question as to whether the ‘Doctrine of Election’ would be applicable under these provisions of the law.

Plaintiff’s Contention

It was the contention of the plaintiff that, • once the defendant had availed its statutory right for

revocation/rectification of the patent before the IPAB, it was barred from taking the same defence in the suit for infringement.

• The plaintiff urged that the applications for revocation before the IPAB either be withdrawn or not be considered while the subject suit is pending as it would unnecessarily hamper the progress of the suit.

Defendant’s Contention

• The defendant however contended that the legislature has consciously and independently provided these statutory remedies under the Act and thus it cannot be taken away. It was argued that the Doctrine of Election couldn’t waive or oust the statutory remedies.

• The Court went ahead and examined, placing reliance on two Supreme Court judgments of 2004 and 2005 to the effect that the doctrine of election does not apply as an estoppel against the statute. The Court referred to the matters of MD, Army Welfare Housing Organisation V/s Sumangal Services (P) Ltd. [(2004) 9 SCC 619] and Deasahayam (Dead) By Lrs. V/s Savithramma [2005 (7) SCC 653] wherein it was held:

• “The doctrine of approbate and reprobate is a species of estoppel. However, there cannot be any estoppel against a statute.”

Decision

• The Hon’ble Court denied the plaintiff ’s application and allowed the defendant to pursue both the remedies simultaneously. The reasoning given by the Hon’ble court is as:

• “Though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before, he may prefer an application before the Board for cancellation or revocation. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable, or alternatively, he is asked not to raise the ground of cancellation in his written statement, his defence would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy; that would be plainly against public policy.”

Applicability of the Doctrine of Exercise in the

present case. Applicability of the Doctrine of Exercise in the present case. • The remedy available in both the cases to the defendant is same

- the revocation/cancellation of the plaintiff ’s patents.• Secondly, it is quite possible that the IPAB and the High Court,

while deciding upon the same issue parallely, may reach to different conclusions and issue conflicting orders, whereby one forum may revoke the patents and the other may upheld the validity of patents.

• Thirdly, in case a suit for infringement is pending against the defendant, it certainly has the choice to opt any of the options viz. to file a petition for revocation for patents at IPAB or to file a counterclaim for revocation in the suit.

• Thus, it seems that the doctrine should be applicable in the present case.

Cntd..

• The Hon’ble Court erroneously construed it to interpret that availing of its rights before one forum will render the defendant devoid of its rights to be used before the other forum, which is certainly not the case.

• It is agreed that the right to file a counterclaim of revocation before High Court and right to file a petition for revocation before IPAB are statutory rights and cannot be taken away from the defendant.

• the Court could have suspended simply one of the proceedings until the other one is pending, as otherwise it amounts to multiplicity of proceedings.

• Such an order will not take away the rights of the defendant, but will only suspend its exercising of those rights for the time being they are being pursued at a different forum.

CONCLUSION

• Although, there are no provisions in the Patents Act, the Court can certainly decide to suspend one of the proceedings (where the rights and remedies are identical and the parties involved are also the same), in order to avoid a situation of possibly conflicting decisions.