For a patent-holder, “revocation” is the dreaded word — and it can be sought in two forums at once, a loophole deep-pocketed litigants have exploited. The Supreme Court closed it: you must pick one road.
Note: The IPAB was abolished in 2021; revocation petitions now lie with the High Courts. The one-forum principle below still applies — a party can’t simultaneously pursue a revocation petition and a counter-claim on the same patent.
Two roads to revocation
A patent can be revoked via a petition (historically to the IPAB, now the High Court) or by a counter-claim in an infringement suit. Under Section 104, once a counter-claim for revocation is made, the suit and counter-claim transfer to the High Court. So revocation could proceed in two fora — a provision litigants with vested interests and deep pockets exploited.
The case: Aloys Wobben v. Yogesh Mehra
A business arrangement gone sour. Dr Aloys Wobben held patents in wind turbine/energy technology, licensed to Enercon India (EIL):
- Dec 2008 — the licence to EIL was terminated for breach; EIL kept using the know-how.
- Jan 2009 — EIL filed 19 revocation petitions at the IPAB against Wobben’s patents.
- 2009–2010 — Wobben filed 10 infringement suits at the Delhi HC; EIL responded with counter-claims for revocation.
- 2010–2011 — EIL filed 4 more revocation petitions at the IPAB.
The SC noted EIL had re-agitated issues (some petitions already decided by the IPAB) in its HC counter-claims — over overlapping patents.
The law and the ruling
Section 64 says a patent may be revoked on a petition by the Appellate Board or on a counter-claim by the High Court. The word “or”, the SC held, means revocation can be sought by one route or the other — availing one disentitles you from the other. A counter-claim is a cross-suit (an independent suit), so pursuing revocation in both fora is barred by res sub judice (no simultaneous trial of the same issues between the same parties).
The SC laid down:
- Infringement suit first + counter-claim for revocation → the High Court decides revocation; the defendant can’t also file a revocation petition on the same patent.
- Revocation petition first + later infringement suit → the defendant can’t counter-claim revocation; the petition is decided.
The open questions
The decision leaves gaps. If a revocation petition is filed first, the later infringement-suit defendant is limited to defending infringement — is that enough? And if avoiding multiplicity was the point, shouldn’t the second-in-line proceedings (a later suit, or later petition) be stayed to avoid conflicting decisions? Time will tell how it shapes patent litigation.
The takeaways
- Pick one forum — a revocation petition or a counter-claim, not both.
- “Or” means “or” — availing one route disentitles you from the other (res sub judice).
- Order matters — whichever was filed first fixes where revocation is decided.
- Open questions remain — on staying second-in-line proceedings and the scope of defence.
Frequently asked questions
How can a patent be revoked in India? By a revocation petition (now to the High Court, formerly the IPAB) or by a counter-claim in an infringement suit — but, per Aloys Wobben, not both simultaneously.
Can I pursue revocation in two forums at once? No — the Supreme Court held that availing one route disentitles you from the other, barred by res sub judice.
What decides which forum hears the revocation? Whichever was initiated first — if the infringement suit and counter-claim came first, the High Court decides; if the revocation petition came first, that petition is decided.
Where are revocation petitions filed now? Before the High Courts, since the IPAB’s abolition in 2021.
Legislation referred to
- The Patents Act, 1970