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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 Plaintiff

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? .....13

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? .............20

ii.

Obviousness in case the level of skill is high. .............23

iii.

Whether prior publication by the inventors can defeat novelty? ...........................25

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.28

8. Prayer...................................................33

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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. Daiichi Sankyo v. Apotex, 501 F.3d 1254 (2007)
2. Dalpat Kumar and anr. v Pralhad Singh and others, A.I.R. 1993 S.C. 276
3. F. Hoffmann-La Roche Ltd. and anr. v. Cipla Limited, 148 (2008) D.L.T. 598
4. Fletcher v. Bealey, (1884) [28 ChD. 698]
5. General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited
and ors., (1972) R.P.C. 457
6. Jawahar Engineering Co. and ors. v. Javahar Engineering Private Ltd., A.I.R. 1984
Delhi 166
7. Mars Incorporated v. Kumar Krishna Mukerjee and others, 2003 (26) P.T.C. 60 Del
8. Matrix Laboratories Limited, Secunderabad v. F. Hoffman La Roche Limited and anr,
2012 (1) C.T.C. 381
9. Novartis AG and Ors v. Alembic Pharmaceuticals Ltd, C.S.(O.S.) 1051/2014
10. Novartis AG and Ors v. Bajaj Healthcare Ltd, C.S.(O.S.) 1053/2014
11. Novartis AG and Ors v. Glenmark Generics, C.S.(O.S.) 1054/2014
12. Novartis AG v. Cadila Healthcare, C.S.(O.S.) 1052/2014
13. NTT Docomo v. the Controller of Patents and Designs, Order no. 252 of 2013, O.A.
39/2011/P.T./C.H
14. Surajmal Rambux & Ors v. Laxminarayan Raghunath, A.I.R. 1951 Nag. 284
15. Transcore v. Union of India & anr., (2008) 1 S.C.C. 125

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Index of Authorities
BOOKS:
1. V.K. Ahuja, Intellectual Property Rights in India 934 (LexisNexis 2009).
2. Black's Law Dictionary, 4th edition.
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. Lath, Aparajita: Pitfalls of Indian patent injunctions based on fear of infringement, 19
J.I.P.R. 253, 253-259 (2014).
2. Jay M. Mann & Curtis A. Jennings, Quia Timet": A Remedy For The Fearful Surety,
20 (4) The Forum, 685-710 (1985).

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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 professors employed by Mate. On objection to
the grant of patent, Mate, responded to the First Examination Report. Mate 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. The decision of grant was published in the journal on
March 10, 2013.
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Statement of Facts
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
drug. Also, Bristo Inc.s website has listed abc in their product list under developed
antagonist APIs. Mate, sent a letter through their Attorneys addressed 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?
Although there is nothing in the act that precludes an aggrieved party from filing a post grant
opposition on primarily, the same grounds, such a practice must be abhorred from because
the interest of general public must be taken into consideration. Moreover, in the interest of
speedy and fair justice to the Applicant from whom such litigation not only increases the
costs but also delays and unnecessarily obstructs the grant of patent and during this extended
time, the chances of infringement of the patent that is in the process of being granted also
increases. It merely shows prima facie malicious intent on part of the plaintiffs and is nothing
but a legal stunt to buy time.
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 can be granted to a party whose patent is under challenge before
various bodies. In this case the three requisites for granting an injunction i.e.

irreparable

damage, prima facie case and balance of convenience is in favour of the plaintiff has been
summarily satisfied. Further, not responding to a legal notice served Bistro shows malafide
intentions which tilts the "balance of convenience" in our favour. Further, if the injunction is
denied, it would seem as if quia timet injunctions were never meant to be applied. This
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Summary of Arguments
arguments stems from the deduction that if a party having intentions of infringing a patent
wanted to stop a quia timet action from hampering their illegal enterprise they can simply file
challenges before various judicial/quasi-judicial forums and then can then carry on with the
infringing act unhindered. Such a provision would amount to abuse of process.
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 inventors are not traceable and there is no assignment
in place, providing credible evidence of the right to ownership of patent would suffice. If in
such a situation, emphasis is laid on providing proof of right strictly, it would defeat the
purpose of patent of protecting the rightful owner against defrauds etc. Moreover, in absence
of any Indian law on this point, reliance can be placed on U.S. laws wherein on proving
proprietary interest, agreement or obligation to assign, chances of irreparable loss if patent is
not granted etc, application can be filed by a party on behalf of its inventors. Also as a matter
of general practice, employment contract as in the present case are used as proof of right.
Moreover, the list that the Patent Manual provides cannot be said to be exclusive.
2. OBVIOUSNESS IN CASE THE LEVEL OF SKILL IS HIGH.
Since the inventors had been working in the same field for several years and had publications
to their name regarding the same invention, their skill level was very high and it was obvious
for them to slightly modify the known compound. Also in Indian law, the standard test for

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Summary of Arguments
obviousness is a person skilled in art and not person ordinarily skilled in art. Hence high
skill level of inventors will defeat novelty.
3. WHETHER PRIOR PUBLICATION BY THE INVENTORS CAN DEFEAT
NOVELTY?
The availability of the information in public domain rendered the invention of that
pharmaceutical obvious and anticipatory. In both the cases the novelty is defeated. Reliance
has been placed on decisions which establish that disclosure of chemical composition of the
invention in the prior art is not necessary. Even if the prior art and the patent application
disclose the same invention, it is said to be anticipated.
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 party has filed a post grant opposition and it is still
pending before the Board, it cannot file revocation application or counter claim of
infringement suit as remedy under Section 25(2) eclipses all other remedies available under
section 64(1). Moreover, remedies under Section 64(1) can be availed only after proceedings
under section 25(2) are concluded. If the post-grant opposition has been filed and dismissed,
both the remedies available under 64(1) cannot be availed simultaneously as counter claim is
considered a suit in itself and it would attract the doctrine of matter sub-judice. Moreover,
these are disjunctive and alternate remedies as indicated by the term or in the provision and
thus, attracts the doctrine of election.

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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 although there is nothing in the act that precludes an
aggrieved party from filing a post grant opposition on primarily, the same grounds, however
such a practice must be abhorred from because of the following reasons:
Interest of General Public as well as Applicant
It is pertinent to note that the interest of general public must be taken into consideration while
granting any patent as was held so in the case of Bayers Corporation v Union of India1.
Moreover, in the interest of speedy and fair justice to the Applicant from whom such
litigation not only increases the costs but also delays and unnecessarily obstructs the grant of
patent and during this extended time, the chances of infringement of the patent that is in the
process of being granted. It merely shows prima facie malicious intent on part of the plaintiffs
and is nothing but a legal stunt to buy time by the interested parties i.e. mainly the
Competitors.
In light of the above the counsel maintains submission.
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. 2014 Bom. 178.

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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 can be granted to a party whose
patent is under challenge before various bodies.
Injunctions can be granted under Section 108(1) of the Indian Patents Act, 19702
"108. Reliefs in suit for infringement.(1) The reliefs which a court may grant in any suit for
infringement include an injunction (subject to such terms, if any, as the court thinks fit) and,
at the option of the plaintiff, either damages or an account of profits."

What is Quia Timet Injunction?


Quia Timet Injunctions are a type of Interim injunctions. Quia Timet is a Latin phrase
the

in

Black's Law Dictionary3 defined as - "Because he fears or apprehends." In equity

practice it is the technical name of an equitable remedy filed by a party who seeks the aid of a
court of equity, because he fears some future probable injury to his rights or interests.4
In Mars Incorporated v. Kumar Krishna Mukerjee and others, it was held by the Delhi High
Court that:"This is a Quia Timet suit i.e. action against apprehended or threatened invasion.......
Quia Timet is actually a Latin word which means "because he fears or apprehends".
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

Indian Patents Act 108 (1).


Blacks Law Dictionary 1415 (4th ed.).
4
Jay M. Mann & Curtis A. Jennings, Quia Timet": A Remedy For The Fearful Surety, 20 (4) The Forum, 685710 (1985).
3

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
being done which, if done, would cause him substantial damage, and

for

which

money would be no adequate or sufficient remedy......."5


In the 2011, Madras HC in Matrix Laboratories Limited, Secunderabad v F.Hoffman La
Roche Limited and anr. observed that:
"As the saying goes, the evil should be nipped in the bud so is the nature of Quia Timet
Action where the injury is apprehended and the invasion is threatened though

no

actual

injury or damage has been caused."6


Further In the case of Jawahar Engineering Co. and ors. v. Javahar Engineering Private Ltd.7
the Delhi HC reiterated that "When an injunction is sought, it is not necessary that the threat
should have become a reality. It can even be sought for a threat that is still to materialise. An
injunction being prohibitive in nature is intended to prevent something that is likely to
happen."
Grounds for Quia Timet Injunction
The grounds of assessment of granting injunctions are now well settled and the in multitudes
of past case laws, the following has been qualified to be the yardsticks of granting the same8 irreparable damage, prima facie case and balance of convenience is in favour of the plaintiff.
The grounds for granting a quia timet injunction though similar to an ad interim one,9

the

essential factor remains that an injury must be apprehended, and an invasion threatened.

(2003) 26 P.T.C. 60 (Delhi).


(2012) 1 C.T.C. 381.
7
A.I.R. 1984 Del. 166.
8
Dalpat Kumar & anr. v. Pralhad Singh & others, A.I.R. 1993 S.C. 276.
9
Lath, Aparajita: Pitfalls of Indian patent injunctions based on fear of infringement, 19 J.I.P.R. 253, 253-259
(2014).
6

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Further in Fletcher v Bealey10 the courts for the first time laid down the standards for a quia
timet injunction, i.e. "proof of imminent danger, proof that the threatened injury will

be

practically irreparable and proof that whenever the injurious circumstances ensue, it will be
impossible to protect plaintiff's interests, if relief is denied."
If we were to examine the facts of the present case with respect to the above "While the post-grant opposition proceedings were going on, an RTI application by
Mate revealed that Bristo had applied for a manufacturing licence before the Drug
Controller Licensing Authority, Munain for manufacturing abc bulk drug. Also, Bristo
Inc.s website has listed abc in their product list under developed antagonist APIs.
Mate also realized that Bristo Inc. had applied for marketing approval with the FDA
of Pandora and has advertised its intention of launching the product abc in India and
Pandora through various media."11
If conformity is checked with respect to the standards laid down in Fletcher v Bealey12 it
satisfies the grant of a quia timet injunction on all three counts, i.e. i.

Proof of imminent danger - this condition is prima facie satisfied because Bistro's
actions, i.e. applying for a drug licence and advertising a product very similar to the
one concerning the present patent under consideration is cause for alarm.

ii.

Proof that the threatened injury will be irreparable - the counsel submits that the
Hon'ble court observe this condition to a two pronged way, firstly it is submitted that
a lot of money has been pumped into the R&D of the patent and that the plaintiff
suffers losses for the every day that the product doesn't go into production any further
infringement will lead to more litigation and further delay the production. Secondly

10

(1884) 28 Ch.D. 698.


Moot Factsheet, Para 9.
12
Supra note 8.
11

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
from a public point of view any sub-standard product that might be launched by
Bistro will affect the good will even before we start with the production. The damage
thus will be irreparable.
iii.

It will be impossible to protect plaintiff's interests, if relief is denied - the same can be
inferred from the above two counts.

The following fact further puts the "balance of convenience" in favour of the plaintiffMate, sent a letter dated September 15, 2013 through their Attorneys addressed to Bristo and
Bristo Inc. which inter alia contained the following:
a. that Mate is the owner of the patent bearing no. 1234567 which is registered with the
Bharanesian Patent Office, in relation to Compound of formula I and compositions thereto;
b. that the impugned product is identical to the product which forms a part of the subject
matter of Patent bearing No. 1234567 and the actions of Bristo and Bristo Inc. clearly amount
to infringement of the said Patent;
c. that Bristo and Bristo Inc. should immediately cease and desist from advertising,
manufacturing, marketing and using in any way the impugned product;
The said letter was not responded to by Bristo and Bristo Inc. Not responding to a legal notice
served Bistro shows malafied intentions which tilts the "balance of convenience" in the
plaintiffs favour, thus the final condition is to this extent satisfied.
In strikingly similar cases Novartis has been successful in obtaining multiple quia timet
injunctions. As recently as April 2014, the Delhi High Court granted a host of interim quia
timet injunctions to Novartis against several generic manufacturers such as Bajaj

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Healthcare13, Alembic Pharmaceutical14, Glenmark Generics15, and Cadila Healthcare16
over the anti-diabetic drug- Vildagliptin on the above mentioned grounds.
Quia Timet Injunction can be granted even when the validity is under question
The counsel humbly submits that a qui timet injunction can be granted even when the validity
of patent is under question.
In the present context there appears to be prima facie a malicious case, and grave injustice
will be done if the injunction is denied. The counsel requests the court to kindly observe the
peculiarities of the present case. The patent has been challenged at three forums - appeal at
the IPAB against the post grant opposition, revocation application before the IPAB and a
third challenge in a counter claim for infringement. A common thread that links all these
challenges is that, it has been filed by the defendant themselves against whom we seek the
injunction.
Furthermore, the act of the defendant not replying to the legal notice served by us with
respect to such infringement shows malafide intent on their part.
Thus, if the injunction is denied, it would seem as if quia timet injunctions were never meant
to be applied. This arguments stems from the deduction that if a party having intentions of
infringing a patent wanted to stop a quia timet action from hampering their illegal enterprise
they can simply file challenges before various judicial/quasi-judicial forums and then can
then carry on with the infringing act unhindered. Such a provision would then become a

13

Novartis
Novartis
15
Novartis
16
Novartis
.
14

AG
AG
AG
AG

and Ors v. Bajaj Healthcare Ltd , C.S.(O.S.) 1053/2014.


and Ors v. Alembic Pharmaceuticals Ltd , C.S.(O.S.) 1051/2014.
and Ors v. Glenmark Generics , C.S.(O.S.)1054/2014.
v. Cadila Healthcare, C.S.(O.S.)1052/2014.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
loophole and pave the way for abuse of process to the detriment of the principles of natural
justice.
A similar stance was taken by the plaintiff counsel in the case of F. Hoffmann-La Roche Ltd.
and anr. v. Cipla Limited17"Dr. Abhishek Manu Singhvi, learned counsel for the Plaintiffs submitted that the
materials clearly justify the plaintiff's entitlement for interim relief. They relied on the
copy of the Controller of Patent's order dated 04.07.2007, the FDA approval,
magazines to show the effectiveness of Tarceva, and the other approvals secured by
the Plaintiffs, to submit that there is a strong prima facie case. He drew the attention
of the Court to the fact that a patent under the Act is granted after scrutiny at three
levels; first, under Sections 11A, 12 and 14, then at the stage of pre-grant opposition
under Section 25(1) and finally, under Section 43 when the patent is granted subject
to satisfaction of the two pre-conditions. Given that in the present case the patent has
been granted after elaborate technical verification, it cannot be summarily and
certainly not at the stage of arguments on interim injunction be held as invalid.
Further, it would not be appropriate that the remedy of injunction prescribed under
Section 108 of the Act is denied to the Plaintiff merely because the Defendant as
raised a defense of invalidity of the patent."
Thus on the grounds cited above the counsel maintains submission on the issue.

BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB) OF BHARANESIA

17

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

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
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 there is an obligation to provide a proof of right even if the
assignment is not in place and the inventors are not traceable and the patent office cannot
simply conclude on ownership of a patent from any other circumstances.
Proof of Right is mandatory
It is pertinent to note the relevant provisions of the Patents Act as well as Patent Rules as
mentioned hereunder:
Section 7(2): Where the application is made by virtue of an assignment of the right
to apply for a patent for the invention, there shall be furnished with the application,
or within such period as may be prescribed after the filing of the application, proof of
the right to make the application.
Rule 10: Period within which proof of the right under section 7(2) to make the
application shall be furnished: where, in an application for a patent made by virtue
of an assignment of the right to apply for the patent for the invention, if the proof of
right to make the application is not furnished with the application is not furnished
with the application, the applicant shall within a period of three months after filing of
such application furnish such proof.
Reading these provisions makes it abundantly clear that if the applicant is not the inventor of
the patent, a proof of right should be provided to prove such an assignment. This proof of
right can either be provided with the application or within the permitted time limit as
Memorial for the Plaintiff
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
mentioned in Rule 10. The provisions use the term shall that indicates the mandatory or
compulsory nature. Thus, in all circumstances a proof of right has to be provided by the
applicant where he is not the inventor. The Act does not provide for any exception here.
In other words, there is simply no exception as to when a proof of right need not be provided
when the applicant is not the inventor himself. The IPAB in the case of NTT Docomo v the
Controller of Patents and Designs clearly held that:
The reading of the said provision makes it crystal clear that if the application is made by the
virtue of an assignment of the right to apply for the patent for an invention, the appellant
shall produce or furnish within such period as may be prescribed from the date of filing
application the proof of right to make the application.18
Right is not enough, Proof of right has to be submitted
It must be noted that the position regarding filing of Proof of Right was further clarified by
an order passed in the case of NTT Docomo v the Controller of Patents and Designs19,
wherein the IPAB refused to accept the contention of the appellant that the authorities must
be concerned with the right to apply and not the proof of such right and thus in a conventional
application it need not provide any further proof of right.
Similarly, in the present case, the Mate University has shown that the inventors had entered
into a contract of employment that stated that any intellectual property generated in the
course of Employment would belong to the University. This was a general promise to assign
and not an assignment under section 68 of the Patents Act. Moreover, assignment clause
contained in earlier applications would not ipso facto convey the right to file patent

18

NTT Docomo v.The Controller of Patents and Designs, Order no. 252 of 2013, O.A. 39/2011/P.T./C.H.
(I.P.A.B. Chennai, Oct. 28, 2013).
19
Supra note 17.

Memorial for the Plaintiff


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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
application as was also observed by the Opposition Board. Thus, in every case, Patent Office
have a right to demand proof of right, irrespective of the fact that whether the inventors are
traceable or not and the assignment is in place or not.
The logic behind the same being that if a separate of proof of right is not asked for, the
employers may tyrannically use the standard form of contract to deprive the employee of any
kind of right over any invention done by him and acquire all the rights related to inventions
that have not been done as yet.

What constitutes Proof of Right?


It is noteworthy that the Manual of Patent Office Practice and Procedure explicitly provides
for what constitutes proof of right in the following provisions:
3.01 Applicant
Wherever, the inventor(s) is/are not the applicant, a proof of right to apply by way of an
endorsement in the Application form (Form 1) or an assignment deed shall be submitted.
03.04.01 Content of Patent Application
2. Applicant has to obtain a proof of right to file the application from the inventor. The Proof
of Right is either an endorsement at the end of the Application Form 1 or a separate
assignment.
Thus, there is no provision that leaves a room for any other document to be considered as a
proof of right and thus the ownership can be concluded from any other circumstance or
document except for proof of right in form of an endorsement in form 1 or an assignment.
Moreover, the Controller has not been given any such power under the Patents Act, 1970 or
the Patent Rules, 2003.
Memorial for the Plaintiff
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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
In the present case, the University has failed to either obtain the signatures of the inventors on
the form at the time when the application was filed and in fact the whereabouts and details of
the inventors are known to Mate University. However, they have made false submissions
before the Patent Office. The said employment contract would not constitute an assignment
under Section 68 and thus, no proof of right has been provided by the University.

2. OBVIOUSNESS IN CASE THE LEVEL OF SKILL IS HIGH.


It is humbly submitted before the honourable board that the claimed compound in Patent No.
1234567 is obvious in view of earlier disclosures and inventors own publications relating to
neuropathic antagonists.
It is worth mentioning here that the inventors Dr. M. Vaidya and Dr. P. Bhattacharya are the
most active researchers and have many inventions to their names. They had been working on
development of a pain killer for the treatment of chronic pain and had published the
provisional conclusion of their research in a leading publication concluding the possibility of
a pain killer employing ABC receptor antagonists. Exactly after a year they filed a patent
application titled ABC receptor antagonist for the treatment of chronic pain.
The appellants hereby contend that the claimed compound is obvious and lacks any inventive
step. It is structurally and functionally similar to the compounds already known (Compound
T as taught by Hensky) and is just a new form of the same.

Memorial for the Plaintiff


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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Also the inventors had been working in this field for quite a long time and had several
publications also on the same. Hence their level of skill was very high. It was very obvious
for them to make slight modifications in the compound given their extensive knowledge and
research.
According to the Indian Patents Act, 1970 the standard for testing obviousness is that of a
person skilled in art and not a person ordinarily skilled in art20 like other jurisdictions.
Hence while testing obviousness; the high skill level of the inventor should definitely be kept
in mind.
The same was done in the case of Daiichi Sankyo v. Apotex21. Here, the CAFC found that the
lower court erred by picking a paediatrician as the PHOSITA in creation of compounds to
treat ear infections without damaging a patients hearing. Rather, the skill level should be an
otologist who is engaged in developing pharmaceutical formulations. The court primarily
based its PHOSITA Skill Level on the inventors skill level and the skill level of their peers
(which, almost by definition will be the same).
Based on the high level of skill in the art, the CAFC concluded that an otologist would have
found the patented method obvious.
Similarly in the present case too, the claimed invention should be declared obvious in view of
the high skill level of the inventors.
3. WHETHER PRIOR PUBLICATION BY THE INVENTORS CAN DEFEAT
NOVELTY?
The appellant humbly submits before the jurisdiction of this board that prior publication or
disclosure of the invention by the inventors can defeat its novelty.
20
21

Manual of Patent Examining Procedure 2011, 02.02.04.


501 F.3d 1254 (2007).

Memorial for the Plaintiff


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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
What is prior art or prior publication?
As per Section 08.02.03 of the Manual of Patent Practice and Procedure,
a) An invention is considered as new if it is not anticipated by prior publication, prior
use or prior public knowledge. An invention is new (novel) if it has not been disclosed in
the prior art, where the prior art means everything that has been published, presented or
otherwise disclosed to the public before the date of filing of complete specification.

Will prior publication by inventors defeat novelty?


This question deals particularly with situation where the prior publication of inventors is the
alleged source of the anticipation of the invention. Neither the Patents Act of 1970 nor the
Patent Rules provide for such a case. However, the draft Manual of Patent Practice and
Procedure clearly says in Chapter 3 that:
3.5 General Precaution for the Applicant
It is a common experience that through ignorance of patent law, inventors act
indiscreetly and jeopardize the chance of obtaining patents for their inventions. The
most common of these indiscretions is to publish their inventions in newspapers or
scientific and technical journals, before applying for patents. Publication of an
invention, even by the inventor himself, would (except under certain rare
circumstances) constitute a bar for the subsequent patenting of it.22
In the present case, the inventors had published a paper in a leading publication which was
available to public on June 5, 2008. It contained their provisional conclusion on the
possibility of a pain killer employing ABC Receptor antagonists. Within a year they filed an
22

Manual of Patent Practice and Procedure (draft), 2005 chapter 3.5.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
application claiming for the patent of a line of pharmaceutical products which also employ a
receptor and an antagonist titled Abc receptor antagonist for the treatment of chronic pain.
In other words, the anticipation of the invention had been published and thus became public.
The availability of the information in public domain rendered the invention of that
pharmaceutical obvious and anticipatory. In both the cases the novelty is defeated.
Sachs LJ in his classic statement in the case of General tire23:
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. The earlier publication must, for this purpose, be interpreted as at the date of
its publication, having regard to the surrounding circumstances which then existed,
and without regard to subsequent events. ...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
In the present case the publication contains the provisional conclusion on the possibility of
a particular pharmaceutical product, while the patent application also claims the same
pharmaceutical product. Hence the patentees claim can be said to be anticipated and
therefore novelty is defeated.
Also in the case of Merrell Dow in the House of Lords which focussed on the informational
nature of inventions under the modern law, Lord Hoffmann, giving the opinion in which
the other members of the House concurred said this:

23

(1972) R.P.C. 457.

Memorial for the Plaintiff


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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
...provisions of the act do not purport to confine the state of the art about products to
knowledge of their chemical composition. It is the invention which must be new and
which must therefore not be part of the state of the Article. It is therefore part of the
state of the art if the information which has been disclosed enables the public to know
the product under a description sufficient to work the invention.
In absence of the full text of the inventors publication in the journal and according to the
known facts of the case, the professors disclosed their provisional conclusion of a possible
pain killer employing Abc receptor and antagonist. The patent application also claims the
same product24, the only difference being the disclosure of chemical composition and similar
specifications of the same compound.
Also if inventors own prior publication is not considered to defeat novelty, then it would
lead to malpractice of filing numerous patent applications with only a slight modification in
the previous art each time.
Hence it can be safely concluded that prior publication of the inventors in the present case has
defeated the novelty of the claimed invention. Thus on the above ground the counsel
maintains submission on the issue.
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 under section 25(2) has been filed
by a party, it can still file for a revocation and also challenge the patent in a counter claim for
infringement under section 64(1) of the Patents Act, 1970.

24

Abstract, exhibit B.

Memorial for the Plaintiff


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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
Grounds for revocation or counter claim in infringement suit and opposition of grant
are different and simultaneous proceedings are not barred
It is pertinent to note that opposition of grant and revocation of patent are different stages in
the patent application and procurement process. In fact the grounds for post grant opposition
under section 25(2) and revocation or counter claim of infringement suit under section 64(1)
are different as there are several grounds that are not present in section 25(2) but are to be
found in section 64(1) for example sub- clause (g), (j), (l), (n), (o) etc. Moreover, there is no
provision in the Statute that restricts filing of a revocation petition or counter claim by the
same party on same grounds. This contention has in fact been approved by the Honble
Nagpur High Court in Surajmal Rambux & Ors v Laxminarayan Raghunath25 case wherein
the court clearly laid down the law as follows:
7. Further, Section 26 deals with the revocation of a patent, while Section 9 deals
with opposition to the grant of a patent. These are different stages, and at least in so
far as the grounds are different and in the absence of any prohibition, it cannot be
said that a person who has unsuccessfully opposed the grant of a patent cannot file an
application for its revocation.
Thus, when a post grant opposition is filed, a revocation petition or counter claim of
infringement suit can be filed.
Doctrine of election not applicable
The counsel humbly submits that these remedies provided by the statute under section 64(1)
and section 25(2) are not inconsistent remedies and the party need not choose one of them as

25

A.I.R. 1951 Nag. 284.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
the doctrine of election is not applicable in the present case. This doctrine has been explained
by the Honble Supreme Court in these words:
"The Doctrine of Election clearly suggest 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."
Whereas the judgment of the Supreme Court in Transcore v Union of India & anr.26 lays
down the criteria for application of the doctrine of election as follows:
"64. In the light of the above discussion, we now examine the doctrine of election.
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.
Concurrent or cumulative and consistent remedies: The doctrine of election of
remedies does not apply where the available remedies are concurrent or cumulative
and consistent. Where the remedies are not inconsistent, but are alternative and
concurrent there is no bar until satisfaction has been obtained, unless the plaintiff has
gained an advantage or the defendant has suffered a disadvantage. Because
satisfaction is the bar, in some cases, parties have been allowed to take judgment
independently on more than one remedy on the same set of facts."
In the issue at hand, as has already been established, the ambit of the remedies available
under section 25(2) and section 64(1) is essentially different as there are different grounds as

26

(2008) 1 S.C.C. 125.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
Arguments Advanced
well as forums as far as the counter claim is concerned. Thus, the doctrine of election does
not apply there.
In order to answer the question that whether a revocation petition and counter claim of
infringement of suit can be filed by same party on same grounds, reliance must be placed on
the test as laid down in the Transcore v Union of India & anr.27 case. According to the test,
all three elements of doctrine of election must be present. However, the remedy of revocation
application and counter claim of infringement suit are not inconsistent but alternative and
concurrent as the end result that can be obtained from both of them is somewhat similar and
the party has an option to choose from the two and these were not initiated simultaneously
but concurrently. Moreover, Counter claim of the infringement suit cannot be regarded as a
separate suit instituted at will by the Appellant as it can be instituted only in response to an
infringement suit filed by the other party that a statutory right arises in favour of that party to
file a counter claim. Moreover, it could not have been instituted suo motu as per the
provisions of Patent Act or The Code of Civil Procedure. Thus, the filing of both the
revocation application and counter claim in infringement suit cannot be said to be
simultaneous proceedings and that they were filed in order to multiplicate the proceedings.
Instead, the counter claims can also be filed as defense and in certain cases challenging the
patent is probably the only strongest defence and thus putting any kind of restriction would
be unfair for that party. Prohibiting a party from filing revocation petition and counter claim
would amount to restricting the independent remedies granted by the Statute and such
remedies granted by statute cannot be taken away or reduced in any way.

27

(2008) 1 S.C.C. 125.

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7th Symbiosis-B. Krishna Memorial National IPR Moot Court Competition, 2015
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Thus, in such cases, there is no bar in such remedies till the satisfaction has been obtained
and the plaintiff has gained some advantage over the other party, which is not the case here
and thus parallel proceedings of revocation and counter-claim of infringement suit.
Express mention by the legislature when they want to restrict one of the parallel
proceedings
It is humbly submitted that there is no provision in the Patent Act 1970 that expressly
prohibits parallel proceedings in order to avoid a potential conflict between them. Such
provisions are present in other legislations where legislature conferred a power to stay one of
the proceedings in order to avoid a potential conflict between the two and this is done by
expressly conferring such a power in the court. An example of the same is in the Trademarks
Act 1999, wherein section 124 clearly states that the court can stay, a suit pending before it in
the eventuality of an application for revocation of the trade mark being adjudicated, either
before the Registrar or, before the IPAB. Section 124 of the Trademarks Act reads as follows:
124. Stay of proceedings where the validity of registration of the trade mark is
questioned, etc.
(1) Where in any suit for infringement of a trade mark
(a) The defendant pleads that registration of the plaintiffs trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30
and the plaintiff pleads the invalidity of registration of the defendants trade mark, the
court trying the suit (hereinafter referred to as the court), shall,
(i) if any proceedings for rectification of the register in relation to the plaintiffs or
defendants trade mark are pending before the Registrar or the Appellate Board, stay
the suit pending the final disposal of such proceedings;

Memorial for the Plaintiff


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However, no such provision is present in the Patents Act. It must further be noted that this
provision was included only after the amendment in the year 2005 and before that a person
could file both a revocation petition as well as a counter claim of a defence in a High Court.
However, no such amendment was done in section 64(1) of the Patent Act that could confer a
power on the court to stay one of the parallel proceedings. This clearly indicates the intent of
the legislature that in patents, such kind of parallel proceedings must be allowed. Such a
difference can be justified on the ground that in Patent, the presumption is in the favour of
invalidity rather than validity.

Memorial for the Plaintiff


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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. That if a pre-grant opposition is filed and dismissed, the aggrieved party cannot file a
post-grant opposition on primarily the same grounds.
2. That a quia timet injunction can 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 respondents are obliged to provide a proof of right to apply for the patent and
ownership cannot be concluded from any other circumstances.
2. The claimed invention is obvious given the high skill level of the inventors and their
prior publications.
3. The patent claiming invention of Compound I should be revoked.
4. If a Post Grant opposition has been filed, the same party can 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 Plaintiff
Sd/-

Memorial for the Plaintiff


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