D.P.S. Parmar - (1.) THIS application u/s. 64 read with section 117D of the Patents Act, 1970 is filed for revocation of patent No. 200608 (herein referred to as 608) granted to Aloys Wobben for invention "A Wind Power Installation". This application for revocation was filed by Enercon India Limited. From the records in Intellectual Property Appellate Board (IPAB), it was observed that this matter was heard by the earlier Board on 19.10.2010 and orders were reserved. Since the Hon'ble Technical Member Shri Chandrasekaran retired on 02.12.2010, decision was not issued. So this case was listed to be heard again. In the meantime, the matter was transferred to the new counsel for the respondents. On completion of all the formalities, the matter was heard on 07.06.2012 and 08.06.2012.
(2.) MR . R. Parthasarathy, learned counsel appeared for the applicant and Mr. Praveen Anand learned counsel represented the respondent. Both the counsel, besides arguing the matter at length, have also filed their written submissions on the preliminary issue as well as on merits. Preliminary objections by respondent locus standi Mr. Praveen Anand learned counsel for the respondent raised the issue of locus standi and licensee estoppel. So far as the preliminary objection taken by the respondent questioning the locus -standi of the applicant to move the revocation application as a "person interested" under S. 64 of the Patents Act, 1970 is concerned this question has already been decided against the respondent by this Board in the cases between the same parties in ORA/43/2009/PT/CH and others by order dated 16.11.2010. We will call it the First Batch. This application forms part of the Second Batch which had to be heard again. The Board was pleased to hold that the applicant has "a known and general interest" together with "commercial interest" by the grant of the patent in question and therefore, they are definitely "persons interested". All the revocation applications in the First Batch were allowed and the patents were revoked. The respondent has challenged these orders in the Hon'ble Madras High Court and the writ petitions are pending. In ORA/6/2009/PT/CH this Board has already decided that the applicant is a 'person interested'. (Para 10) 10. Here, the applicant as an interested person has been enjoying the benefit of the technical know -how of the respondent. There is no denial that the applicant has established an industry on the basis of this. If the licence has been removed or revoked, then, the applicant in the course of business will be prevented from selling the machinery, and the respondent is already suing for infringement. If the applicant succeeds in demolishing the patent in accordance with law, then the infringement suit must fail and the applicant's commercial interest will be secured. Therefore, the applicant herein passes the test of Ajay Industrial Corporation case. In any event, the definition of 'person interested' is not restrictive, but inclusive. Therefore, unless it is shown that the challenge to the patent is frivolous and with a view to extract more money from the patent holder, we are bound to examine the patentability of the invention. We are not sure how far the conduct of the party will weigh with us while deciding a revocation petition. Though S. 64 used the words, 'may be revoked', if the revoking applicant proves obviousness under section 64(1)(f) or that the invention does not involve any inventive step, the IPAB cannot say that it is true that the invention is obvious but since S. 64 gives us the discretion, we will not revoke the patent. That will set the Patent Law on its head. Therefore, the fact that the applicant has not behaved in an unexceptional fashion towards the respondent will not weigh with us if the applicant proves that the invention is not patentable, on the ground that either it is not an invention under S. 3 or since the invention is anticipated or that it does not satisfy the definition of S. 2(1)(j) and 2(1)(ja) or if the grounds under S. 64 are made out. The patent monopoly is not given lightly. If the applicant has not paid the royalty or has displayed bad faith, the respondent can sue the applicant for compensation elsewhere. On that ground an inventor cannot have an unworthy patent protected. We are therefore satisfied that the applicant has the locus standi to file this revocation application. We are not inclined to differ from the views of the earlier Bench in his regard. We are adopting this decision as the facts and circumstances of this case are same. Licensee estoppel
(3.) THE issue of licensee estoppel was also raised in ORA/6/2009/PT/CH. We are not dealing with this issue here as we have already dealt with it in ORA/6/2009/PT/CH and we adopt the same in this case. (para 16) 16 ...So we have the Act which says that the conditions which restrict the right of a licensee from challenging the patent are illegal and we have the opinion of the U.S. Supreme Court explaining why a licensee is entitled to invalidate the patent. This restriction imposed by S. 140, is another indicator of the public interest angle in patent law. While the law shall protect the rights of the property owner, it will not restrict the rights of the interested person to challenge the grant, so that unworthy patents are restored to the public domain. Because of the costs of the litigation and the very special nuances of the technology, it may very well be that the licensee alone is capable of challenging the patent. He has the funds and the knowledge to launch the attack on the subject matter of the invention. This is why the U.S. Supreme Court held that it would be inequitable to restrict him from attacking the patent by any condition in the contract. The Parliament has specifically introduced this provision in our Patents Act which is a special enactment as far as patents are concerned and hence it will prevail over the general rules relating to contract. Therefore no licensee can be estopped from challenging the patent. This objection is rejected. Respondent's MP for additional documents;