A patentee with an injunction is in a strong position — until the patent behind it is revoked. Then, as the Delhi High Court put it, continuation of the injunction even for a day is not permissible. Patent rights are statutory and nothing else.
The dispute
Novartis AG sued Natco Pharma Ltd. before the Delhi High Court seeking a permanent injunction, damages, rendition of accounts and delivery up in respect of Indian Patent No. 276026, covering ceritinib — a compound for treating non-small cell lung cancer.
Novartis had filed as a PCT application claiming priority from 2007, with the patent granted on 28 September 2015.
The sequence
As soon as the infringement suit was filed, Natco filed a post-grant opposition within the statutory period under Section 25(2).
While the opposition remained undecided, Natco launched the product. Novartis argued an interim injunction was warranted precisely because the defendant had launched despite the pending decision.
The court noted the admitted position: the post-grant opposition was pending before the Patent Office, and whether the patent should be maintained fell to be decided there.
The opposition went to the Opposition Board, which initially reported in Novartis’s favour. Meanwhile, the drug licence for Natco’s product, marketed as NOXALK (Ceritinib), was granted in January 2019, shortly after the opposition was filed and the Board had made its recommendations.
The Board then reversed itself, and the patent was revoked on the ground that it lacked novelty, following submission of additional evidence by the defendant.
The holding
Novartis appealed the revocation order of 16 August 2019 within the limitation period. But the court held that rights in respect of a patent subsist only during its lifetime — not once it has been revoked.
The reasoning rests on a proposition worth stating plainly: patent rights are merely statutory rights; there are no common law rights in a patent. Unlike a trademark, where passing off protects goodwill independently of registration, a patent has no unregistered equivalent. Remove the grant and nothing remains underneath it.
The court read Section 62(2) with Section 11A(7), under which no suit or proceeding may be commenced or prosecuted for infringement committed between the date a patent ceased to have effect and the date of publication of an application for its restoration.
From those provisions it concluded that:
- if a patent has not been renewed, no infringement action lies;
- once an application is published, no infringement action can be brought until the patent is granted — though damages may be sought from the date of publication; and
- accordingly, continuation of an injunction even for a day is impermissible once the patent is revoked.
The interim order restraining fresh manufacture of ceritinib preparations therefore stood suspended.
What it means practically
Three things follow for anyone litigating a patent in India.
Revocation is the complete answer. A defendant facing an injunction has, in the post-grant opposition, a route that does not merely defend the infringement claim but removes its foundation. The Opposition Board’s reversal here did more than any argument on infringement could have.
A pending appeal does not preserve the right. Filing within limitation kept the challenge alive; it did not keep the patent alive. Whatever the appeal’s eventual outcome, the injunction could not continue in the interim.
Novelty remains where pharmaceutical patents are most vulnerable. The revocation turned on lack of novelty on additional evidence — a reminder that the prior art search that mattered was the one the opponent conducted, not the one the Patent Office did before grant.
A note on forum: appeals of this kind then lay to the IPAB, which was abolished in 2021. They now lie to the High Courts.
The takeaways
- Patent rights are purely statutory — there is no common law fallback.
- An injunction cannot outlive the patent, even pending appeal.
- Post-grant opposition can remove the basis of a suit, not merely defend it.
- Damages run from publication, but a suit awaits grant.
Frequently asked questions
Can an injunction survive revocation of the patent? No — the court held that rights in a patent subsist only during its lifetime, so continuation of an injunction even for a day is impermissible once revoked.
Does filing an appeal against revocation preserve the patent? No — an appeal filed within limitation keeps the challenge alive but does not revive the patent in the interim.
Are there common law rights in a patent? No — patent rights are purely statutory, unlike trademarks where passing off protects goodwill independently of registration.
Can damages be claimed for the period before grant? Damages may be sought from the date of publication, but a suit cannot be brought until the patent is granted.