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7th Symbiosis-B.

Krishna Memorial National IPR Moot Court Competition, 2015


Team code SK39
BEFORE THE HIGH COURT OF MUNAIN, REPUBLIC OF BHARANESIA
O.S. No. 707/2014
1. B.Z. Mate University ..Plaintiff
v.
1. Bristo Pharmaceuticals Pvt. Ltd. and Bristo Pharmaceuticals Inc ....Defendants
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB) OF
BHARANESIA
OA/7/2014/PT/DH
1. Bristo Pharmaceuticals Pvt. Ltd. .....Appellant
v.
1. B.Z. Mate University
2. Controller of Patents, Bharanesia .......Respondents
AND
ORA/14/2014/PT/DH
1. Bristo Pharmaceuticals Pvt. Ltd. ....Applicant
v.
1. B.Z. Mate University ...Respondent

Memorial for the Defendant

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Table of Contents
TABLE OF CONTENTS

1. List of Abbreviations.............3
2. Index of Authorities..................4
3. Statement of Facts ........................6
4. Issues Presented ................................8
5. Statement of Jurisdiction ...........9
6. Summary of Arguments.............10
7. Arguments Advanced............................................................13
Before the High Court of Munain, Republic of Bharanesia
i.

If a pre-grant opposition is filed and dismissed, is the aggrieved party stopped from
filing a post-grant opposition on primarily the same grounds? .....12

ii.

Can a quia timet injunction be granted to a party for a patent whose validity is under
challenge before various bodies? .......................14

Before the Intellectual Property Appellate Board (IPAB) of Bharanesia


i.

The obligation to provide a Proof of right if the assignment is not in place and if
the inventors are not traceable. Whether the Patent Office can conclude on
ownership of a patent from other circumstances? .............18

ii.

Obviousness in case the level of skill is high. .............24

iii.

Whether prior publication by the inventors can defeat novelty? ...........................28

iv.

If a Post Grant opposition has been filed, can the same party file for a revocation
and also challenge the patent in a counter claim for infringement.30

8. Prayer.....................................................37
Memorial for the Defendant
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
List of Abbreviations
LIST OF ABBREVIATIONS

1.

AIR

All India Reporter

2.

Anr

Another

3.

Ch

Chapter

4.

Corpn.

Corporation

5.

CTC

Current Tamil Nadu Cases

6.

Del

Delhi

7.

DLT

Delhi Law Tribunal

8.

IPAB

Intellectual Property Appellate Board

9.

JIPR

Journal of Intellectual Property Rights

10.

Ltd

Limited

11.

Mad.

Madras

12.

Nag

Nagpur

13.

OA

Original Application

14.

Ors

Others

15.

OS

Original suit

16.

PTC

Patent & Trade Marks Cases

17.

RPC

Reports of Patent, Design and Trade Mark Cases

18.

SC

Supreme Court

19.

SCC

Supreme Court Cases

20.

v.

Versus

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Index of Authorities
INDEX OF AUTHORITIES

CASES:
1. Aloys Wobben and anr. v. Yogesh Mehra and ors, A.I.R. 2014 S.C. 2210
2. American Cyanamid Co v. Ethicon Ltd.
3. Andhra Pradesh Financial Corporation v. Gar Re-rolling Mills, 1994 (2) S.C.C. 647
4. Beloit Technologies Inc.; Beloit Walmsley Limited v. Valmet Paper Machinery Inc. and
Valmet pazper Machinery (U.K.) Limited, (1997) E.W.C.A. Civ. 993
5. Bilcare v. Amartara Pvt. Ltd., M.I.P.R. 2007 (2) 42
6. Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, A.I.R. 1982 S.C. 1444
(8)
7. B.T.H. v. Metropolitan Vickers, (1928) 45 R.P.C. 1
8. Canadian general electric company v. Fada radio, A.I.R. 1930 P.C. 1
9. F. Hoffmann-La Roche Ltd. and anr. v. Cipla Limited, 148 (2008) D.L.T. 598
10. Flour Oxidising v. Carr, (1908) 25 R.P.C. 428
11. General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited
and ors., (1972) R.P.C. 457
12. Helitune Ltd v. Hughes Ltd, [1991] F.S.R. 171, 202
13. Hills v. Evans, (1862) 4 De G.F. & J. 288
14. J. Mitra and Co. Pvt. Ltd. v. Asst. Controller of Patents and Design and ors, A.I.R. 2009
S.C. 405
15. K. Manivannan, Proprietor, Trading as Kumar Industries v. Shri M. Mani, Proprietor
Valasumani Lathe Works, 2009 (41) P.T.C. 561 (I.P.A.B.)
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Index of Authorities
16. Manicka Thevar v. Star Ploro Works, A.I.R. 1965 Mad. 327
17. Mars Incorporated v. Kumar Krishna Mukerjee and ors, 2003 (26) P.T.C. 60 Del
18. Motor Corpn v. Hollister Inc, [1993] R.P.C. 7, 13 (C.A.)
19. National Research and Development Corporation of India v. Delhi Cloth and General
Mills, A.I.R. 1980 Del. 132
20. Pope Alliance Corporation v. Spanish Siver Pulp & Paper Mills Ltd., A.I.R. 1929 P.C. 38
21. Smith v. Grigg Ltd., (1924) 1 K.B. 655)
22. Surendra Lal Mahendra v. Jain Galzers, 1981 P.T.C. 112
23. Transcore v. Union of India, (2008) 1 S.C.C. 125
24. Valensi v. British radio corpn, [1973] R.P.C. 337
BOOKS:
1. Pharmaceutical, Biotechnology and chemical Inventions: World protection and
exploitation (Duncan Bucknell ed., Oxford University Press).
2. V.K. Ahuja, Intellectual Property Rights in India 934 (LexisNexis 2009).
STATUTES:
1. Indian Patents Act, 1970.
2. Manual of Patents Practice and Procedure, 2011.
3. The Code of Civil Procedure, 1908.
4. Patent Rules, 2003.
ARTICLES:
1. Sindhura Chakarvarty, Importance of Assignment Agreement under Intellectual

Property laws in India, 14(6) J.I.P.R. 513 (Nov. 2009).


2. Employer v. Employee invention: IPR issues in R&D organizations, 5(5) J.I.P.R 246

(Sept. 2000).
Memorial for the Defendant
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Statement of Facts
STATEMENT OF FACTS

1.

B.Z. Mate University (hereinafter referred to as Mate) is a University based in the


Republic of Bharanesia. Its Constitution, Laws, Institutions and Social Ethos are
substantially similar to that of Union of India. Bristo Pharmaceuticals Pvt. Ltd.
(hereinafter referred to as Bristo) is a company registered under the laws of Bharanesia.
Bristo is a wholly owned subsidiary of Bristo Pharmaceuticals Inc., registered under the
laws of Federation of Pandora whose constitution, laws and social ethos are substantially
similar to that of the United States of America.

2.

Mate filed patent application 8456/MN/2009 on June 5, 2009 titled Abc receptor
antagonist for the treatment of chronic pain. The inventors named in the application
were Vaidya M. and Bhattacharya P. both employed by Mate. On objection to the grant
of patent, Mate, responded to the First Examination Report. It stated that the inventors
whereabouts are not known. The Standing Rules of the Contract of Employment (which
has the force of law) specifically stipulates that only the University will be the owner of
any IP generated by their employees in the course of their employment. Subsequently,
Bristo filed a pre-grant opposition against the grant of a patent.

3.

Mate responded with similar submissions as before. A hearing was held and both parties
argued. Based on Mates submissions, the Controller of Patents dismissed the pre-grant
opposition proceedings filed by Bristo. A patent was granted which was given the Patent
No. 1234567 on January 11, 2013.

4.

Bristo filed a post grant opposition to the Patent claiming that the piperidine derivates
were obvious to a person skilled in the art. Meanwhile an RTI application by Mate
revealed that Bristo had applied for a manufacturing licence manufacturing abc bulk
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Statement of Facts
drug. Also, their website listed abc in their product list under developed antagonist
APIs. Mate, sent a letter through their Attorneys to Bristo and Bristo Inc. which inter
alia stated that Mate is the owner of the patent, the impugned product is identical to the
one under challenge and that they should abstain from such advertising or production.
5.

After receiving no response, subsequently Mate filed a quia timet suit for infringement
before the District Court of Suriya for restraining Bristo and Bristo Inc. from using in
any way the impugned product. The Honble District Court, granted a quia timet ex-parte
injunction restraining Bristo and Bristo Inc. from manufacturing, marketing or in any
way using the impugned product in and exporting the same outside Bharanesia.

6.

In the opposition proceedings, the Controller of Patents constituted an Opposition Board.


Both parties made their submissions along with evidence by experts. The Opposition
Board accepted relative novelty. Nonetheless, the Controller, maintained the patent.

7.

Bristo further appealed the decision at the IPAB. Simultaneously, it also filed for a
revocation of the patent at the IPAB on grounds that it was prior art and lacked inventive
step - the issue of missing signatures was also raised wherein Bistro provided the actual
whereabouts of the Inventors who were claimed to be untraceable by Mate.

8.

Since the appeal and the application for revocation involved the same patent, both the
matters were taken up simultaneously at the IPAB. Bristo also challenged the claims of
the patent in a counter-claim of infringement. The suit, along with the counter- claim got
transferred to the High court of Munain.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Issues Presented
ISSUES PRESENTED

Before the High Court of Munain, Republic of Bharanesia


1. If a pre-grant opposition is filed and dismissed, is the aggrieved party stopped from
filing a post-grant opposition on primarily the same grounds?
2. Can a quia timet injunction be granted to a party for a patent whose validity is under
challenge before various bodies?

Before the Intellectual Property Appellate Board (IPAB) of Bharanesia


1. The obligation to provide a Proof of right if the assignment is not in place and if the
inventors are not traceable. Whether the Patent Office can conclude on ownership of a
patent from other circumstances?
2. Obviousness in case the level of skill is high.
3. Whether prior publication by the inventors can defeat novelty?
4. If a Post Grant opposition has been filed, can the same party file for a revocation and
also challenge the patent in a counter claim for infringement.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Statement of Jurisdiction
STATEMENT OF JURISDICTION

Before the High Court of Munain, Republic of Bharanesia


The High Court exercises its jurisdiction conferred on it by the virtue of S. 104 of the Patents
Act, 1970 wherein if a counter-claim for revocation of the patent is made by the defendant,
the suit, along with the counter-claim, shall be transferred to the High Court for decision.

Before the Intellectual Property Appellate Board (IPAB) of Bharanesia


The IPAB exercises its jurisdiction to hear all cases against any order or decision of the
controller and all cases pertaining to revocation of patent other than on a counter claim in a
suit for infringement and rectification of registers and all such cases which were pending
before the High Court stood transferred to the IPAB by virtue of S. 117-G of the Patents
(Amendment) Act, 2005.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Summary of Arguments
SUMMARY OF ARGUMENTS

Before the High Court of Munain, Republic of Bharanesia


1. If a pre-grant opposition is filed and dismissed, is the aggrieved party stopped from
filing a post-grant opposition on primarily the same grounds?
If a pre grant opposition is filed and dismissed, the aggrieved party is not stopped from filing
a post grant opposition on the same grounds because, pre grant opposition and post grant
opposition are two different stages in Patent Procurement procedure, they only differ in the
procedural aspects. Further, under pre grant opposition it is not necessary for the controller to
hear both the parties, whereas he is obliged to do so in the post grant opposition. Hence, it is
only logical to conclude that the grounds for opposition in pre grant and post grant opposition
for a party in a genuine case would not change. Post grant opposition is merely an additional
shield to aid better scrutiny in the grant of patent, change in the very grounds of such
opposition will only indicate a vexatious defence as opposed to a genuine one. Lastly there is
also no express provision in the Indian Patents Act, 1970 - that bars such an action.
2. Can a quia timet injunction be granted to a party for a patent whose validity is
under challenge before various bodies?
A quia timet injunction cannot be granted to a party whose patent is under challenge before
various bodies. The standard for granting a quia timet injunction was laid down in F.
hoffmann-La Roche Ltd. and anr v Cipla Ltd. which stipulates three preconditions - firstly,
the approach indicated in American Cyanamid, secondly, a rule of caution whereby
presumption of validity must not be based on the mere fact that the defendant is challenging
it, and lastly the defence must be genuine. All three preconditions have been summararily

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Summary of Arguments
satisfied. Finally, the grant will not succeed because of the "presumption of invalidity" that
has became the standard with the courts.

Before the Intellectual Property Appellate Board (IPAB) of Bharanesia


1. The obligation to provide a proof of right if the assignment is not in place and if the
inventors are not traceable. Whether the patent office can conclude on ownership of
a patent from other circumstances?
The counsel humbly submits that If the assignment is not in place and inventors are not
traceable, there must not be an obligation to provide a proof of right specifically, providing
credible proof of proprietary interest would suffice or else the purpose of protecting the true
owner gets defeated. In absence of any provision under Indian law, reliance can be placed on
U.S. law wherein it is sufficient to show the proprietary interest, non-traceability, promise or
obligation to assign patent and probability of irreparable damage. Moreover, as a matter of
practice employment contracts in India are considered sufficient proof of ownership.
2. Obviousness in case the level of skill is high.
The claimed invention is not obvious because it is structurally and functionally different from
the known compounds and technically advanced. Not only the efficacy of the compound has
substantially improved but has economic significance too. Also the inventive step is not
obvious to the person skilled in the art. The obviousness of an invention is to be tested on the
standards of a "person skilled in the art". The personal level of skill of the inventors should
not affect the standards of examination.
3. Whether prior publication by the inventors can defeat novelty?

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Summary of Arguments
Prior publication by the inventors can defeat novelty only if it can be anticipated. The
defendants claim is not equivalent to what has been disclosed in prior publication by the
same inventors. For anticipation to occur the antecedent document must contain clear and
unmistakable directions to do what the patentee has claimed in the claim under consideration.
It is not enough to prove that an apparatus described in an early specification could have been
used to produce this or that result. It must also be shown that the specifications contain clear
and unmistakable directions as to use it. While in the present case the inventors had only
comprehended the possibility of such a product.
4. If a post grant opposition has been filed, can the same party file for a revocation and
also challenge the patent in a counter claim for infringement.
The counsel humbly submits that if a post grant opposition has been filed by a party and the
same is still pending, it will eclipse all or any other remedy available under section 64(1). In
fact, section 64 is applicable only after proceedings under section 25(2) culminate. If the
same has been dismissed, it will still attract the doctrine of matter sub-judice. Moreover, the
revocation application and counter claim of infringement suit are clearly disjunctive remedies
indicated by the term or used in the provision. Furthermore, the doctrine of election would
also apply here and thus, both the remedies cannot be taken simultaneously.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
ARGUMENTS ADVANCED

BEFORE THE HIGH COURT OF MUNAIN, REPUBLIC OF BHARANESIA


1. IF A PRE-GRANT OPPOSITION IS FILED AND DISMISSED, IS THE
AGGRIEVED

PARTY

STOPPED

FROM

FILING

POST-GRANT

OPPOSITION ON PRIMARILY THE SAME GROUNDS?


The Counsel humbly submits that if a pre grant opposition is filed and dismissed, the
aggrieved party is not stopped from filing a post grant opposition on the same grounds as:
Different Stages in Patent Procurement Procedure
It is humbly submitted that pre grant opposition and post grant opposition are two different
stages in Patent Procurement procedure. Although, the grounds for the two are same, they
differ in procedural aspect as explained by the Hon'ble Supreme Court of India, in the case of
J. Mitra and Co. Pvt. Ltd. v Asst. Controller of Patents and Design and ors.1
"The ground of challenge under Section 25(1) is identical to Section 25(2) of the said
1970 Act. However, Section 25(1) is wider than Section 25(2) as the latter is available
only to a "person aggrieved". The main difference between Section 25(1) and Section
25(2), as brought about by Patents (Amendment) Act, 2005, is that even after a patent
is granted, "post-grant opposition" can be filed under Section 25(2) for a period of
one year. The reason is obvious. In relation to patents that are of recent origin, a
higher scrutiny is necessary.
Moreover, under pre grant opposition it is not necessary for the controller to hear both the
parties, whereas he is obliged to do so in the post grant opposition. Thus, it can be rightly said
that it is a two tier protection system to ensure better scrutiny of the patents to be granted as
1

A.I.R. 2009 S.C. 405.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
well as the interests of the interested parties, that the post grant opposition was introduced
post 2005 amendment wherein post grant opposition was introduced. Therefore, the same
party has been given the right under statute to pre grant as well as post grant opposition.
Grants for opposition in these two levels remain unchanged in genuine petition
Moreover, it is humbly submitted that it is only logical to conclude that the grounds for
opposition in pre grant and post grant opposition for a party in a genuine case would not
change. An analogy to this effect would satisfy the Hon'ble court - i.e. an insanity plea in a
defence for murder will remain the same in an appeal at a higher adjudicatory forum,
It is submitted that post grant opposition is an additional shield to aid better scrutiny in the
grant of patent, change in the very grounds of such opposition will only indicate a vexatious
defence as opposed to a genuine one.
No Express Prohibition in the Act
It is pertinent to note that there is no provision provided in the Act that precludes a party from
filing a post grant opposition on same grounds after an unsuccessful attempt at pre grant
opposition. Thus, in absence of such express prohibition the parties cannot be denied the
independent statutory remedy of filing post grant opposition.
Also, it can be concluded from the case of Surajmal Rambux & Ors v Laxminarayan
Raghunath2 that if there are two proceedings of different levels and in absence of an express
prohibition, an unsuccessful attempt at one of the proceedings would not bar the party from
initiating other proceeding.
2. CAN A QUIA TIMET INJUNCTION BE GRANTED TO A PARTY FOR A
PATENT WHOSE VALIDITY IS UNDER CHALLENGE BEFORE VARIOUS
BODIES?

A.I.R. 1951 Nag. 284.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
The counsel humbly submits that a quia timet injunction cannot be granted to a party whose
patent is under challenge before various bodies.
Injunctions are granted as relief in suit for infringement under Section 108(1) of the Indian
Patents Act, 19703
Definition of Quia Timet Injunction
In Mars Incorporated vs. Kumar Krishna Mukerjee and ors4, it was held by the Delhi High
Court that:"This is a Quia Timet suit i.e. action against apprehended or threatened invasion... In
legal terminology it has been defined in Osborne's Concise Law Dictionary (London:
Sweet and Maxwell, 8th edn. 1993, Bone and Rutherford) as an action by which a
person may obtain an injunction to prevent or restrain some threatened act being
done which, if done, would cause him substantial damage, and

for which money

would be no adequate or sufficient remedy......." (emphasis supplied)


The Counsel would like to draw the attention of the Hon'ble court to the phrase - "for which
money would be no adequate or sufficient remedy" (emphasis supplied) as held by the
Hon'ble Delhi HC. The counsel contends that, in the present circumstances any damage can
easily be made good (monetary compensation as the honourable court deems fit) by the
defendants, in the off chance of the case falling in the plaintiff's favour.
Standard Test for granting a Quia Timet Injunction - F. Hoffmann-La Roche Ltd. and
anr. v Cipla Limited
The celebrated 2008 judgement of the Delhi High Court - F. Hoffmann-La Roche Ltd.
anr. v Cipla Limited5 laid down a standard test for the grant of a Quia Timet injunction :"To summarize, on the issue of interlocutory injunctions:
3

Indian Patents Act 108(1).


(2003) 26 P.T.C. 60 (Del).
5
(2008) 148 D.L.T. 598.
4

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
(i) In patent infringement actions, the courts should follow the approach indicated in
American Cyanamid, by applying all factors;
(ii) The courts should follow a rule of caution, and not always presume that patents
are valid, especially if the defendant challenges it;
(iii) The standard applicable for a defendant challenging the patent is whether it is a
genuine one, as opposed to a vexatious defense. Only in the case of the former will the
court hold that the defendant has an arguable case."
The American Cynamide Approach
Relying upon the celebrated English decision reported as American Cyanamid Co v Ethicon
Ltd.6 to say what are the guiding principles which courts have to adopt in cases involving
infringement of patent and copyright cases held as follows:
"As to that, the governing principle is that the court should first consider whether, if
the plaintiff were to succeed at the trial in establishing his right to a permanent
injunction, he would be adequately compensated by an award of damages for the loss
he would have sustained as a result of the defendant's continuing to do what was
sought to be en joined between the time of the application and the time of the trial. If
damages in the measure recoverable at common law would be adequate remedy and
the defendant would be in a financial position to pay them, no interlocutory injunction
should normally be granted, however strong the plaintiff's claim appeared to be at
that stage.
Bristo in the present case being competent enough to make good any loses in the unlikely
event of the suit falling in favour of the plaintiff, it would be unwise to attempt even to list all

[1975] A.C. 396.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
the various matters that may need to be taken into consideration in deciding where the
balance lies, let alone to suggest the relative weight to be attached to them.
Presumption in favour of Invalidity
The Counsel also urges that the nature of presumption that can be drawn in cases of patent
infringement is limited. The court can ask the defendant in the case of infringement action
involving process patent, to prove or disprove any fact, prescribed, under Section 104A. The
absence of such condition in relation to product patents was a significant omission. This had
to be viewed with the opening expression in Section 48 'subject to provisions of the Act' to
mean that unlike in the case of trademarks and copyrights, the grant itself did not guarantee
per se protection. The Act, after amendment, envisions scrutiny of the patent at five different
stages
It is submitted that, in several judgments in India, it has been consistently held that where the
patent is of recent origin and its validity has not been tested, the courts should not grant
injunctions where infringement is alleged; it has also been held that if the defendant alleges
that the patent cannot be sustained, the injunction should be refused (See Manicka Thevar v.
Star Ploro Works7; Surendra Lal Mahendra v. Jain Galzers8 ; National Research and
Development Corporation of India v. Delhi Cloth and General Mills9)
This rule, or practice, which appears to have been consistently followed stems from the
English decision in Smith v. Grigg Ltd.10 This Court has also indicated, in National Research
and Development Corporation's case11 that if the patent is not less than six years old,
injunction should not be granted. The present case clearly fails the six year test.

A.I.R. 1965 Mad. 327.


1981 P.T.C. 112.
9
A.I.R. 1980 Del. 132.
10
(1924) 1 K.B. 655.
11
National Research Development Corporation v. Commissioner of Patents, (1959) 102 C.L.R. 252.
8

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
The counsel hence submits that the Hon'ble court kindly consider the 'six-year' rule
preventing courts in India from granting interim injunction. The six-year rule can be traced
back to the V. Manicka Thevar v Star Plough Works12 and subsequently picked up in other
judgments to be developed into a universal rule. The rule can be explained to be one of
caution that patent infringement actions stand on a slightly different footing, (from other
cases) where the courts should not automatically grant injunction on prima facie satisfaction
of infringement, since patents can be challenged, even in defence.
Furthermore in a recent Delhi HC judgment Bilcare v Amartara Pvt. Ltd.13 it has been
observed by the Hon'ble Court that the mere grant of a patent doesnt guarantee its validity;
in case an opposition is filed by the defendant and that if the counter claim of the defendant is
based on that opposition, there cant be any presumption in favour of validity of the patent.
Genuine Challenge
It is contended that the present case can be well envisaged under the peculiarities which
comes in the way of the grant of such an injunction. In a suit alleging patent infringement,
the court ought not to grant any interim injunction in cases where the defendant presents a
credible challenge to either the validity of the patent or to the factum of infringement.
Rather, the matter ought to go to the trial for a final decision on the merits. This suggestion
stems from the counsel's assumption that in most IP cases, the interim stage decision seals the
fate of the dispute. Any wrong decision at

this stage has colossal consequences, making it

imperative that courts try and get the right result at the interim stage. However, in a
complicated patent dispute, it is virtually impossible to make the right assessment within the
short window normally available during an interim phase. Particularly so, when Indian courts

12
13

A.I.R. 1965 Mad. 327.


(2007) 2 M.I.P.R. 42.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
are relatively inexperienced with patent disputes, increasing the likelihood of wrong
decisions at the interim stage; a fact borne out by the Roche vs Cipla14 case.
To summarise the counsel contends with respect to the above cited facts that granting a quia
timet injunction when there is a prima facie presumption of invalidity is not only irregular but
a highly utopian demand and hence should not be granted. The counsel thus maintains
submission on the issue.
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB) OF BHARANESIA
1. THE OBLIGATION TO PROVIDE A PROOF OF RIGHT IF THE ASSIGNMENT
IS NOT IN PLACE AND IF THE INVENTORS ARE NOT TRACEABLE.
WHETHER THE PATENT OFFICE CAN CONCLUDE ON OWNERSHIP OF A
PATENT FROM OTHER CIRCUMSTANCES?
The Counsel humbly submits that if the assignment is not in place and the inventors are not
traceable, there must not be an obligation to provide a proof of right but merely giving
sufficient evidence of such a right of inventor would suffice and ownership of Patent can thus
also be concluded from other circumstances or any other document.
Purpose of Proof of right
It is humbly submitted that the purpose for proof of right like assignment deed etc is that the
rightful owner of the Intellectual Property so generated must be protected against being
defrauded15 and to ensure that the inventors of a particular patent are recognised and given
due credit for their work. Thus, what in fact must be proven is the right to apply and not the
proof of right to apply which would serve the same purpose.

14

(2008) 148 D.L.T. 598.


Sindhura Chakarvarty, Importance of Assignment Agreement under Intellectual Property laws in India, 14(6)
J.I.P.R. 513 (Nov. 2009).
15

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Under the Indian Patent Filing system and as per the Manual of Patent Office practice and
procedure, a proof of right can be provided in form of an endorsement in the Application
Form i.e. Form 1 or by way of an assignment deed.16 However, difficulty arises when the
inventors are ex-employees and more so when they are not traceable and the assignment deed
is not in place. In such a situation, patent cannot be simply refused if the applicant provides
enough evidences to show that the applicant in has a right to apply but does not have required
documents or else the whole purpose of protecting the rights of the real owner.
Under patent laws of other countries, it is permitted
It is humbly submitted that the Indian Patent laws do not have any provision to deal with a
situation where the inventors are missing or not traceable or refuse to sign the assignment in
great detail and thus reliance must be placed on certain relevant provisions from the Manual
of Patent Examination Procedure, Chapter 0400, Section 409 that read as follows:
409.03 Unavailability of Inventor - Application Filed Before September 16, 2012 [R11.2013]
35 U.S.C. 118 pre-AIA Filing by other than inventor
Whenever an inventor refuses to execute an application for patent, or cannot be found
or reached after diligent effort, a person to whom the inventor has assigned or agreed
in writing to assign the invention or who otherwise shows sufficient proprietary
interest in the matter justifying such action, may make application for patent on
behalf of and as agent for the inventor on proof of the pertinent facts and a showing
that such action is necessary to preserve the rights of the parties or to prevent
irreparable damage; and the Director may grant a patent to such inventor upon such

16

The Manual of Patent Office Practice and Procedure, 2011 3.04.11.

Memorial for the Defendant


20

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
notice to him as the Director deems sufficient, and on compliance with such
regulations as he prescribes.
409.05 Application for Patent by an Assignee, Obligated Assignee, or a Person Who
Otherwise Shows Sufficient Proprietary Interest Application Filed On or After September
16, 2012 [R-11.2013]
37 C.F.R. 1.46 Application for Patent by an Assignee, Obligated Assignee, Or a Person who
otherwise shows sufficient Proprietary Interest in the matter.
(a) A person to whom the inventor has assigned or is under an obligation to assign
the invention may make an application for patent. A person who otherwise shows
sufficient proprietary interest in the matter may make an application for patent on
behalf of and as agent for the inventor on proof of the pertinent facts and a showing
that such action is appropriate to preserve the rights of the parties.17
Thus, as per these provisions if any of the inventors is not traceable, a person to whom the
inventor has assigned or was under an obligation to assign the invention can make the
application for patent. However, the applicant needs to prove the following:
1. The inventors could not be reached even after diligent efforts.
2. Inventors had assigned or agreed to assign or were under obligation to assign their patent.
3. Applicant has sufficient proprietary interest in the matter.
4. Proof of pertinent facts and that such an action is appropriate to preserve the rights of
parties or to prevent irreparable damage.
Although there are few differences in the application filed before and after September 16,
2012, however, the basic criteria remains the same and if the abovementioned elements are
proved, the applicant can be granted patent on behalf of the inventors.
17
Ownership/Assignability of Patents and Applications, The United States Patent and Trademark office,
http://www.uspto.gov/web/offices/pac/mpep/s301.html (last updated March 27, 2014).

Memorial for the Defendant


21

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
In the present case as well, Mate University had tried to reach the inventors but they were
untraceable as they had terminated their respective employment with the University and
moved to a company outside Bharanesia and their whereabouts were not known.18 The patent
application was in fact originally filed by the researchers only19 and the non- signing of Form1 was only due to an oversight. Also, the inventors were the employees of the University and
were on its rolls when the medicine was invented. They had also signed the employment
contract and the standing rules of the Contract of Employment (which has force of law)
specifically stipulated that any IP generated by the employees in the course of their
employment would belong to the University20. It is in fact a general principle that if the
invention was done in the course of employment and the employee had agreed to transfer the
ownership of such by virtue of an employment contract21. Thus, the applicant here i.e. the
Mate University has sufficient proprietary interest and is the rightful owner of the patent and
there are documents available with the Patent Office to the fact that the same inventors,
during the past, had assigned all their inventions to the Mate University.22 Moreover, it is
necessary that the Applicant must be allowed to file the application as a lot of money, time
and years of research of the professors of the University has been invested in this invention
and if the patent is not granted only on the ground of want of proof of right, it will cause
grave injustice to the applicant as it will lose out on revenue, market share, reputation etc if it
fails to get a patent and other companies would try to copy and launch this medicine. Bristo
Pharmaceuticals Inc. has in fact already applied for marketing approval with the FDA of
Pandora and has even advertised its intention of launching the product abc in India and

18

Moot Proposition 6.
Moot Proposition 4.
20
Moot Proposition 6.
21
Employer v. Employee invention: IPR issues in R&D organizations, 5(5) J.I.P.R 246 (Sept. 2000).
22
Moot Proposition 6.
19

Memorial for the Defendant


22

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Pandora through various media23 thus, there is a risk of irreparable damage that it can suffer.
Therefore, by all standards the ownership can be concluded from all these circumstances and
the University need not provide any other proof of Right.
A General Practice
It is relevant to note that even in India, as a matter of practice the ownership is concluded
through documents and circumstances other than the Assignment Deed or an endorsement in
Form 1. Various articles written by practicing advocates are a proof of the same. Following
are excerpts from a few of them:
In the case of inventors who are ex-employees, filing of the certified copy of the
employment contract may usually be sufficient provided that the contract states in
clear terms that any invention made by the employee during the period of the contract
is the property of the employer. This employment contract can be supported by any
other recordal of right such as under the PCT or in the application filed in the
priority country.24
Usually Form-1 signed by inventors in favor of applicant is sufficient or else file
certified/ notarized copy of assignment deed/ employment contract/ national law copy
is acceptable if the same provides rights to inventions/ patents vest in employer, then
we can file national law copy with certified/ notarized copy of employment
agreement).25
The issue of the proof of right can be overcome by submission of an executed Form 1
or by the submission of an assignment. It is expected that a certified copy of the
employment agreement stipulating that the rights to the Intellectual Property

23

Moot Proposition 9.
Dr Neeti Dewan, Inventorship and proof of right to apply, R. K. Dewan
http://www.rkdewan.com/articledetails.php?artid=128 (accessed Jan. 14, 2015).
25
Patent, Chadha & Chadha IP, http://www.candcip.in/patent.html (accessed Jan. 10, 2015).
24

Memorial for the Defendant


23

&

Co.,

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
including the rights to file an application for a Patent are assigned to the employer,
may be acceptable as the proof of right.26

Reference to Manual of Patent Office Practice and Procedure and the Patent Rules,
2003
Moreover, it is humbly submitted that when the Examiner vide his letter December 12, 2011
objected the grant of patent on the ground that no credible proof of ownership was supplied
by the applicant, the University replied to the same supporting its contention with the
Contract of Employment and the documents proving that all the past patents were filed by the
inventors in the name of University and the patent was granted to Mate University as the
applicant himself27 had sought the withdrawal of the objection. Again, when the Opposition
Board raised the opposition, the Controller concluded that the fact that the original inventors
have not objected on the grounds of wrongful obtaining in Patent Office and thus, the Patent
Office may well within its rights hold that the fact and duration of full employment is proved
and thus, no other proof of right is required. This is permissible because the act or the rules
does not provide that proof of right must be furnished in form of an endorsement in Form 1 or
an assignment deed. This is provided by the Manual of Patent Office Practice and Procedure,
which expressly states that
It must only be considered as a practical guide for effective prosecution of patent
application in India but it does not constitute rule making and hence does not have the force
and effect of law.
Also, Rule 91 of the Patent Rules, 2003 identifies that even the documents other than the
assignment can be an evidence of transfer of a patent or affects the proprietorship of a patent.
26

Proof
of
right
for
filing
patent
application
in
India,
IP
Newsletter,
http://www.krishnaandsaurastri.com/pdfs/Newsletters/IP_INDIA_NEWSLETTER_NOV2014.pdf?utm_source=
Mondaq&utm_medium=syndication&utm_campaign=View-Original (accessed Jan. 10, 2015).
27
Exhibit C 1.

Memorial for the Defendant


24

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Thus, in circumstances like the case at hand, the ownership can be concluded from other
circumstances and documents provided they give credible proof of such interest and
employment contract and past patent application would rightly fall under this ambit.
2. OBVIOUSNESS IN CASE THE LEVEL OF SKILL IS HIGH.
The respondents humbly submit that the Patent No. 1234567 does involve an inventive step
as has been accepted by the Honble court in pre grant as well as the post grant proceedings.
The contention of the appellant that since the inventors Vaidya M and Bhattacharya P were
working on pain receptor antagonists for many years and hence their level of skill in the art
was high, it was obvious for them to come up with the claimed piperidine derivatives when
earlier compounds were known, is frivolous and should be rejected.
It is contended by the appellant that the Patent No. 1234567 should be revoked on the
grounds of obviousness as provided in sec 3 (d) of the Indian Patents Act. Also Section 2(ja)
defines inventive step. On conjoint reading of the Section 64 read with Section 2 (ja), it is
clearly discernible that there are certain essential ingredients of Section 2 (ja) in order to call
any invention to qualify the threshold of inventive step. The said ingredients are
a) That the said invention involves a technical advancement as compared to existing
knowledge or economic significance or both; and
b) That makes the invention non obvious to the persons skilled in art.28
These are conjunctive requirements under Section 2 (ja) which means that not merely there
should be a technical advancement in the invention but at the same time, it should not be
obvious to the person skilled in art. Therefore, both the requirements are to be satisfied
conjunctively. It is noteworthy here again that beyond the said two ingredients, there is no

28

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, A.I.R. 1982 S.C. 1444.

Memorial for the Defendant


25

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
further ingredient which should be read into in order to enlarge or limit the scope of the
Section.
The said view propounded by Honble Supreme Court in Biswanath Prasad29 holds the field
till date and has been followed from time to time by this Court till recently without any
variance. It is in consonance with the observations of Court of appeal that the obviousness
has to be tested on the basis of technological advancement and what has been known to the
person skilled in art and nothing beyond the same.
The Patent No. 1234567 fulfils both the conditions as explained below:
The said invention involves a technical advancement as compared to existing knowledge
or economic significance or both.
Structural and functional difference
The line of pharmaceutical products claimed in the patent application is much more
technically advanced than the present knowledge in the concerned field. Compound I is
different from Compound T as they are composed of different compounds, different
properties and Compound I is more efficacious. Compound T does not have methylbenzene
attached with the cyclopentane ring.
The methylbenzene group is not a derivative of a methyl but of benzene. Indeed, what may
appear to be even minor changes in substituents between structurally similar compounds may
result in significant differences in their suitability as a drug for use in humans, as is
overwhelmingly demonstrated in the clinical outcomes reported for Compound I. This is
similar to the case of F. Hoffman Roche v. Cipla30 where the court refused the contention of
regarding the replacement of methyl with ethynyl (which is not a derivative of methyl) as a
non-inventive step.
29
30

Supra note 28.


(2008) 2 M.I.P.R. 35.

Memorial for the Defendant


26

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Efficacy and economic significance
Also, according to the controller of Patents, Compound of formula I is more efficacious and
has more beneficial properties than other known antagonists. Apart from relief in pain, mood
elevation, lack of side effects and withdrawal symptoms are also observed as demonstrated in
the patent specification and based on independent expert evidence submitted by Mate.
In view of the multiple advantages (interfering with pain transmission and mood elevation)
which the employment of a receptor and an antagonist to block the receptor has, it solves an
existing problem which the person skilled in the art did not earlier know. Absence of
withdrawal symptoms and possibility of paediatric and geriatric prescription of the same
compound substantially increases the ease of administration and could revolutionize, in
future, the treatment to pain.31 This marks the economic significance of the same.
That makes the invention non obvious to the persons skilled in art.
The Indian Patents act does not define the term skilled addressee or person skilled in the
art, a person skilled in the art is an average worker in the field of technology who has
common knowledge in the art. He is presumed to have access to everything in the state of
the art. He is not a person of exceptional skill and knowledge and he is not expected to
exercise any invention or prolonged research, enquiry, or experiment, although he must be
prepared to display a reasonable degree of skill and common knowledge of the art in making
trials and correcting obvious errors in the specification if a means of correcting them is
readily found.32
Compound T as taught by Hensky was known for years. Had the inventive step in this case
been obvious, the researchers would have come up with the claimed product years ago. A

31

Exhibit D.
Valensi v. British radio corporation, [1973] R.P.C. 337; Helitune Ltd v. Hughes Ltd, [1991] F.S.R. 171, 202;
Motor Corporation v. Hollister Inc, [1993] R.P.C. 7, 13 (C.A.) as cited in Pharmaceutical, Biotechnology and
chemical Inventions: World protection and exploitation (Duncan Bucknell ed., Oxford University Press).
32

Memorial for the Defendant


27

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
person skilled in the art knows that the smallest change in a molecule can have dramatic
effects and can totally change the efficacy of a molecule. Many examples in the
pharmaceutical industry show that a small change in an active molecule can lead to an
inactive or toxic molecule. Thus, changing the smallest Chemical group or a molecule cannot
be seen as obvious. The person skilled in the art a priori never considers that it would have
been obvious to change a Chemical group for another.33
The obviousness of an invention should be tested on the standards of a "person skilled in the
art" who should be presumed to be a skilled practitioner in the relevant field of technology,
who is possessed of average knowledge and ability and is aware of what was common
general knowledge in the art at the relevant date.
It is similar to the reasonable man's standard in civil law. The personal level of skill of the
inventors should not affect the standards of examination. Here, the Controller of Patents, who
is an Organic Chemist and has substantial experience in examining pharmaceutical
compositions can be said to qualify the standards of a person skilled in art. And according to
him the patent for the claimed invention cannot be rejected on the grounds of obviousness.
Patent has been granted after elaborate technical verification. Indeed, all these arguments
have already been taken into account in the pre grant and post grant opposition proceedings
and the patent was granted nonetheless. The defendant has not brought any new prior art
document or argument in this respect.
In F Hoffman Roche vs. Cipla34, the court held that the Defendant's position about
availability of post grant opposition pointing to dilution of prior stages including scrutiny and

33
34

F. Hoffmann-La Roche Ltd. and anr. v. Cipla Limited, (2008) 148 D.L.T. 598.
Supra note 33.

Memorial for the Defendant


28

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
pre-grant or their being irrelevant is erroneous. It is submitted that post grant opposition does
not efface the validity of scrutiny.35
Hence on fulfilling the two conditions laid down by the test for obviousness, and in absence
of any satisfactory evidence by the appellant to show that the invention is obvious and based
on prior art, the contention of the appellant should be rejected.
3. WHETHER PRIOR PUBLICATION BY THE INVENTORS CAN DEFEAT
NOVELTY?
According to the decision of Intellectual Property appellate board, Chennai in K.
Manivannan,

Proprietor,

Trading

as

Kumar

Industries

Vs. Shri M. Mani, Proprietor Valasumani Lathe Works36, generally the following "Criteria
for prior claiming" may be taken into consideration while examining a patent application:
The comparison must be made between (and limited to) the claims in the relevant
specifications that is to say, it does not suffice to support an objection to show that
what is claimed in the respondent's application as a subject matter for protection is to
be found somewhere comprehended or described in the earlier specification. For the
purpose of justifying a finding of prior claim one must find a distinct claim in the
earlier specification, which, as a matter of substance, is equivalent to the claim in the
applicants' specification.
In the problem at hand, the appellant has not shown that how the defendants claim is
equivalent to what has been disclosed in the prior publications by the same inventors. As per
the law laid down by the court, it is not sufficient if the claim is merely comprehended in the
subject matter of the publications being referred to. It is to be satisfactorily concluded that the

35
36

F. Hoffmann-La Roche Ltd. and anr. v. Cipla Limited, (2008) 148 D.L.T. 598.
(2009) 41 P.T.C. 561 (I.P.A.B.).

Memorial for the Defendant


29

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
defendants claim in the patent application is distinctly same as disclosed in the prior
publication. If not, then anticipation by prior publication does not exist.
It shall be seen whether the prior publication by the inventors anticipates the respondent's
invention claimed in his claim. Firstly when such anticipation can arise is to be seen. When
any prior publication in the form of a document shall fully and completely anticipate the
invention claimed in the later specification, the invention claimed later on becomes
anticipated by way of prior publication.37
In words of the Sachs LJ in General Tire38:
To determine whether a patentee's claim has been anticipated by an
earlier publication it is necessary to compare the earlier publication with the
patentee's claim... If the earlier publication, so construed, discloses the same device
as the device which the patentee by his claim, so construed, asserts that he has
invented, the patentee's claim has been anticipated, but not otherwise.
And Lord Westbury in Hills v. Evans,39: The information given by the prior
publication must, for the purposes of practical utility, be equal to that given by the
subsequent patent.
In words of Lord Justice Aldous, To anticipate the patentee's claim the prior
publication must contain clear and unmistakable directions to do what the patentee claims
to have invented.40
In this case, the publications of the inventors dated June 5, 2008 merely concluded the
possibility of a pain killer employing ABC Receptor antagonists. However the application for
patent was filed for a line of such pharmaceutical products for the treatment of chronic pain.
37

(2009) 41 P.T.C. 561(I.P.A.B.).


(1972) R.P.C. 457, 485.
39
(1862) 4 De.G.F. & J. 288, 301.
40
Beloit Technologies Inc., Beloit Walmsley Limited v. Valmet Paper Machinery Inc. and Valmet pazper
Machinery (UK) Limited (1997) E.W.C.A. Civ. 993.
38

Memorial for the Defendant


30

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
With regard to the sufficiency of knowledge, the earlier publication must give the requisite
knowledge clearly, and it was not enough that it merely gave the means of attaining such
knowledge. It must give sufficient information to a workman skilled in the particular art or
craft in order to enable him to carry out the invention.41
Where the question is solely one of prior publication, it is not enough to prove that an
apparatus described in an early specification could have been used to produce this or that
result. It must also be shown that the specifications contain clear and unmistakable directions
as to use it.42
While in the present case the inventors had only comprehended the possibility of such a
product. Hence on the above mentioned grounds it can be concluded that prior publication by
the inventors cannot defeat novelty.
4. IF A POST GRANT OPPOSITION HAS BEEN FILED, CAN THE SAME PARTY
FILE FOR A REVOCATION AND ALSO CHALLENGE THE PATENT IN A
COUNTER CLAIM FOR INFRINGEMENT.
If a post grant opposition is filed, can the same party file for revocation and also challenge the
patent in a counter claim for infringement.
The counsel humbly submits that if a party has filed a post grant opposition under section
25(2) of the Patents Act, 1970, the same party cannot simultaneously file for revocation under
section and also challenge the patent in a counter claim for infringement under section 64(1)
of the Patents Act, 1970.
A. If the post grant opposition is filed and pending
Section 25(2) eclipses remedies available under Section 64(1)

41
42

V.K. Ahuja, Intellectual Property Rights in India 934 (LexisNexis 2009).


Canadian General Electric Company v. Fada radio, A.I.R. 1930 P.C. 1.

Memorial for the Defendant


31

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
The counsel humbly submits that if section 64 is closely analyzed, it uses the phrase Subject
to the provisions contained in the Act.. and not the words Notwithstanding anything
contained in this Act. The words used by the legislature clearly connotes its intent and
necessarily leads to the inference that the provisions contained in section 64 are subservient
to all other provisions in the Act i.e. if there is any other provision that conflicts with the
remedies contained in the Section 64, the provisions of this section will get eclipsed and the
other provision will govern the matter in hand.
Thus, if any proceeding under section 25(2) has been initiated by a party, it will eclipse the
right of that party to file a revocation petition or a counter claim in infringement suit under
Section 64(1) as the remedy that can be granted under these sections could be conflicting and
contradictory at times and thus these rights cannot be exercised simultaneously.
This was opined by the Honble Supreme Court in the case of Dr. Aloys Wobben and anr. v
Yogesh Mehra and ors.43 in following words:
If any proceedings have been initiated by any person interested, under Section 25(2) of the
Patents Act, the same will eclipse the right of the same person to file a revocation petition
under Section 64(1) of the Patents Act. And also, to invoke the right granted under Section
64(1) of the Patents Act, to file a counter-claim (in response to an infringement suit, to
seek the revocation of a patent). This, in our view, would be the natural effect of the words,
Subject to the provisions contained in this Act.., appearing at the beginning of Section
64(1) of the Patents Act. And if, the above meaning is not to be assigned to the words
Subject to the provisions of this Act.., they would be redundant and superfluous.
Section 64 would be applicable only after the proceedings under section 25 (2) are
concluded.

43

A.I.R. 2014 S.C. 2210.

Memorial for the Defendant


32

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
The counsel humbly submits that as per the Honble Supreme Court, the right to hold the
patent is said to be crystallized only after the proceedings under section 25(2) have been
disposed in the favour of the patent holder or if no notice of opposition is preferred within
one year of publication of the grant of the patent, it shall be deemed to be crystallized and
only the culmination of such procedure contemplated under Section 25 of the Act, finally
bestows the final approval to the patent.44 Moreover, it is pertinent to note that although the
term revocation has not defined anywhere in the Act, the ordinary meaning of revoke
relates to an act of repealing, annulling, withdrawing, rescinding, cancelling, and so on45
and thus only a patent whose grant has been crystallized and has been finally approved can be
revoked. Similarly, it in the words of the Honble Supreme Court in the landmark case of Dr.
Aloys Wobben and anr. v Yogesh Mehra and ors.46,
It is unlikely and quite impossible that an infringement suit would be filed, while the
proceedings are pending, or within a year of the publication of the grant of patent.
B. If the post grant opposition is filed and dismissed
Doctrine of matter Sub-Judice
It is humbly submitted that if a party has filed a post grant opposition under section 25(2) of
the Patent Act 1970 and the same is still pending before the IPAB, the same party cannot file
an application for revocation or challenge the patent in a counter-claim for infringement suit
simultaneously as it will attract the doctrine of matter sub-judice.

44

Aloys Wobben and anr. v. Yogesh Mehra and ors, A.I.R. 2014 S.C. 2210.
The WTO Agreement on Trade- Related Aspects of Intellectual Property Rights: A Commentary by Justin
Malbon 519 (Charles Lawson & Mark Davison eds., Edwin Elgar Publishers 2014).
46
A.I.R. 2014 S.C. 2210.
45

Memorial for the Defendant


33

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
As per the Blacks Law Dictionary, the term sub-judice means under judicial
consideration' or in court and not yet decided47 This accepted principle of law is crystallized
in Section 10 of the Code of Civil Procedure, 1908 (hereinafter CPC).
Thus, if an issue is already pending adjudication between the parties in a Court having
jurisdiction to adjudicate the matter between them and if subsequently a suit is instituted
between the same parties on the same grounds, it cannot be allowed to proceed.
It is pertinent to note that a counter claim can be filed a party to any suit under Rule 6-A (1)
of Order VIII of the Code of Civil Procedure and it has been held by the Honble Supreme
Court as well that for all intents and purposes, a counter suit must be considered a suit, filed
by one who has been impleaded as the defendant in the infringement suit and it has the same
effect as a counter suit and is therefore governed by all the rules that govern plaints. Since,
counter-claim is an independent suit, it cannot be allowed to proceed if another suit is already
pending against the plaintiff, on the same cause of action.
Moreover, the revocation application in itself is an independent suit filed by any interested
party on the grounds listed in section 64(1) of the Patents Act which is similar to the grounds
for revocation under counter claim in infringement suit. The remedy that flows from both
the provisions is essentially same and as far as the present case is concerned the cause of
action as well as the expected remedy from both the revocation application as well as the
counter claim for infringement is same i.e. order for invalidation of grant of patent. Thus, if a
party has filed a revocation application before the IPAB to challenge the validity of a patent,
it cannot file a counter claim in an infringement suit for the same purpose and whichever of
the two is instituted later on is not allowed to proceed, implying that both the remedies
available under section 64(1) cannot be availed by the same party simultaneously. The

47

Blacks Law Dictionary 1277 (5th ed. 1979).

Memorial for the Defendant


34

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Honble Supreme Court in Dr. Aloys Wobben and anr. v Yogesh Mehra and ors.48 case,
concluded on similar lines that a revocation petition and a counter claim in a infringement
suit cannot be filed simultaneously by the same party and the one that is instituted
subsequently will not be allowed to proceed. The Court even went on to say that The above
conclusion is imperative for the harmonious construction of the relevant provisions of the
Patent Act.49
In the present case as well, Bristo had filed an appeal against the post grant opposition before
the Appellate Board and it simultaneously filed for a revocation of patent IN 1234567 at the
IPAB50 and while the matters at IPAB were pending Bristo challenged the claims of patent
1234567 in a counter-claim of infringement.51 Thus, Bristo cannot file for revocation and also
challenge the patent in the counter-claim of infringement.
Disjunctive remedies
The counsel humbly submits that although section 64(1) of the Act provides for more than
one remedy in the form of revocation application and counter claim for infringement.
However, the word or as used in the Section connotes the intent of the legislature behind
enacting this provision i.e. any interested person may either approach the IPAB by filing a
revocation application or the High Court by filing a counter claim in the infringement suit in
order to challenge the patent after . However, the person interested cannot concurrently
pursue proceedings before both the forums.
It must be noted that the word or is clearly disjunctive, and cannot be read as conjunctive.
Thus, the above remedies, expressed in Section 64(1) of the Patents Act cannot be availed of

48

A.I.R. 2014 S.C. 2210.


A.I.R. 2014 S.C. 2210.
50
Moot Proposition 13.
51
Moot Proposition 13.
49

Memorial for the Defendant


35

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
by the same person, simultaneously and the concerned person must choose one of the above
remedies.
The Honble Supreme Court in case of Dr. Aloys Wobben and anr. v Yogesh Mehra and
ors.52 has also held that the remedies available under section 64 cannot be exercised
simultaneously by the same party in following words:
We do not have the slightest hesitation in accepting the above contention (fifth in the
series of contentions), that even though more than one remedies are available to the
respondents in Section 64 of the Patents Act, the word or used therein separating
the different remedies provided therein, would disentitle them, to avail of both the
remedies, for the same purpose, simultaneously. On principle also, this would be the
correct legal position.
Doctrine of election of remedies
The Counsel humbly submits that the Supreme Court in the case of Andhra Pradesh
Financial Corporation v Gar Re-rolling Mills 53 had placed reliance the doctrine of election
of remedy and discussed its scope as follows:
"The Doctrine of Election clearly suggests 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."
In the recent judgement of Transcore v Union of India54, the Apex Court clearly enunciated
the elements of doctrine of election as follows:

52

A.I.R. 2014 S.C. 2210.


(1994) 2 S.C.C. 647.
54
(2008) 1 S.C.C. 125.
53

Memorial for the Defendant


36

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
There are three elements of election, namely, existence of two or more remedies;
inconsistencies between such remedies and a choice of one of them. If any one of the
three elements is not there, the doctrine will not apply.
In the case at hand, the aggrieved party has two remedies at hand i.e. revocation application
and counter claim of infringement and the ambit of both the remedies is essentially the same
as the grounds for filing both of them are same and in fact, the result that they expect to
achieve is also same i.e. order for invalidation of the granted patent. The only difference is in
the forums before which the remedy is being sought. However, there is a potentiality of
conflict between the remedies that can be granted under these two proceedings i.e. the patent
may be held as valid in one and invalid in the other. There is also a clear choice between both
the options available as even the statute uses the term or in section 64 that includes the
provision for both revocation application and counter-claim of infringement. Moreover, it
must be kept interpretation contrary to this, would lead to, not only, a multiplicity of
proceedings, but also, cause inconsistency and conflict, with each other.
Thus, the doctrine of election is clearly applicable in the present case and thus, the revocation
application and counter-claim of infringement cannot be filed simultaneously and the party
must choose one of the remedies available to it.

Memorial for the Defendant


37

7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Prayer
PRAYER
In the light of the arguments advanced and authorities cited, the Plaintiff humbly submits that
the Honble Court be pleased to adjudge and declare that:
Before the High Court of Munain, Republic of Bharanesia
1. If a pre-grant opposition is filed and dismissed, is the aggrieved party is not stopped from
filing a post-grant opposition on primarily the same grounds.

2. That a quia timet injunction cannot be granted to a party for a patent whose validity is
under challenge before various bodies.

Before the Intellectual Property Appellate Board (IPAB) of Bharanesia


1. The employment contract is enough a proof of right to apply for the patent and the
respondent need not supply any other proof of right.
2. The ownership of patent can be concluded from other circumstances such as employment
contract.
3. The novelty of the patent in dispute cannot be defeated on the grounds of obviousness of
the invention.
4. Validity of a patent should not be adjudged by the level of skill of inventors but by a
person skilled in art.
5. As the claimed invention cannot be said to be anticipated by the prior publication, hence
novelty is not defeated.
6. If a Post Grant opposition has been filed, the same party cannot file for a revocation and also
challenge the patent in a counter claim for infringement.

All of which is respectfully affirmed and submitted


Counsel for Defendant
Sd/Memorial for the Defendant
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