The Plaintiff in the instant case- Novartis AG, had filed the present suit before the Hon’ble Delhi High Court against the defendant – Natco Pharma Ltd., seeking permanent injunction, damages, rendition of accounts and delivery up in respect to its granted patent, Indian Patent No. 276026. The Patent had been granted for a novel and inventive compound ‘Certinib’; a drug invented for the treatment of non-small cell lung cancer.

Circumstances surrounding the dispute:

Novartis filed for a patent as a Patent Convention Treaty (PCT) application claiming priority since 2007 and the said patent was granted on 28th September 2015. As soon as the plaintiff filed for a suit of infringement the Defendant filed a post grant opposition within the statutory period enumerated under Section 25 (2) of the Patents Act, 1970. (hereinafter referred to as ‘Act’).

In the meantime, while the post-grant opposition was yet to be decided, Natco launched the product. The plaintiff prayed that an interim injunction deserved to be granted in the present case, as the defendant had chosen to launch the product despite the decision in the same being pending. The Court after hearing both sides said that it was the admitted position that the post-grant opposition was pending decision with the Patent Office and the question as to whether the patent is to be maintained or not was to be decided therein.

The said opposition was referred to the Opposition Board for consideration, which initially gave a report in favour of the Plaintiff. In the meantime, the drug license for the defendant’s product marketed under the mark “NOXALK (Ceritinib)” was granted in January 2019 soon after the post grant opposition was filed, and the Opposition Board had made its recommendations.

Subsequently, the Board reversed its decision and revoked the order granted to the patent of Novartis in this matter on the grounds that the same lacked novelty upon submission of additional evidence by the defendant.

Court’s analysis and findings:

Although the appeal against the Board’s order of revocation dated 16th August 2019 was filed by the Plaintiffs was within the prescribed period of limitation, the Court opined that any rights in respect of a patent only subsists during its lifetime and not when it has been revoked.

The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights.

Section 62(2) read with Section 11A(7) of the Patents Act, 1970 provides that

No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of publication of the application for restoration of the patent.

Upon a thorough examination of the aforementioned provisions, the Court concluded that if a patent has not been renewed, no action for infringement would lie. Similarly, once the patent is published, no infringement action can be filed until 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.

Thus, subsequent to the passing of the order revoking the said patent, the interim order restraining the defendant from carrying out any fresh manufacturing of pharmaceutical preparations comprising of ‘Ceritinib, stood suspended.

This judgement of the Delhi High Court reiterates to us the importance of the concept of novelty when it comes to Patents. The judgement also re-emphasizes on the aspect of statutory rights a Patent is vested with while indicating the non-existence of common law rights. It is this perspective that has turned the table in the present case. A Novel case and a Novel Approach indeed.

Summary