Impact of Post Grant Opposition on Rights of a Patentee

Law gavel on white.

An interim order of the High Court of Delhi in Novartis AG Vs. Natco Pharma Limited dealt with rights of a patent owner when the patent is subjected to post grant opposition. The judgment can be downloaded here

Natco had filed a post grant opposition on a patent granted to Novartise. The Opposition Board has reserved its order on April 10, 2019. In the meantime, Natco launched a product under the mark NOXALK even before the decision on the post grant opposition could be issued. In response, Novartise brought a suit seeking permanent injunction alleging infringement of its patent by Natco.

From a patent law perspective, the issue to be decided was whether a patent owner can initiate infringement proceedings when a post grant opposition is pending.

Natco relied on the decision of the Supreme Court in Aloys Wobben and Anr. vs. Yogesh Mehra and Ors. AIR 2014 SC 2210 to argue that once a post grant opposition is filed, the rights therein are yet to be crystallized, since the post grant opposition is pending. The Supreme Court in Aloys Wobben (supra) had held that right of a patent holder crystallizes only after challenges (post grant opposition) raised to the grant of a patent are disposed of favorably, to the advantage of the patent holder. Natco contended that, in the absence of such crystallization, the rights available to the patent holder under Section 48 of the Patents Act does not exist. In other words, Natco contended that since the decision in the post grant opposition is pending, Novartis lacks the right to initiate a patent infringement suit.

The judgment can be downloaded here

The High Court of Delhi, while acknowledging the decision of the Supreme Court, made a distinction that that although the rights are not crystalized, the rights still subsists even during the pendency of post grant opposition. The High Court further added that “Section 48 of the Patents Act grants rights in favour of a patentee, which are not affected during the pendency of a post-grant opposition.” Furthermore, the High Court observed that the facts of the present case in which an allegedly infringing product is launched prior to the decision in the opposition by the entity opposing the Patent, did not arise in the facts of Aloys Wobben (supra). In view of the foregoing, the High Court of Delhi passed an order restraining Natco, for the time being, from carrying out any fresh manufacturing of pharmaceutical preparations comprising of the active pharmaceutical ingredient (API), “Ceritinib”.

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