On 20th July, a bench of Delhi High Court consisting of Justices Rajiv Sahai Endlaw and Amit Bansal, held that the rights of a patentee, unlike that of the proprietor of a trade mark, are not natural or common law rights, but are a creation of law i.e. are statutory rights. Thus, for a patentee to enjoy protection, the rights have to be within. The four corners of the statute i.e. the Patents Act and there are no rights independently thereof or inherent or common law rights of an inventor or patentee.
In the present case where the court found that where the appellants/plaintiffs while claiming one invention only i.e. DAPA, were claiming two patents with respect thereto, with infringement of both, by the respondent(s)/defendant(s). The same alone in the view of the court strikes at the very root of the claim of the appellants/plaintiffs and disentitles the appellants/plaintiffs from any interim relief.
Facts of the case:
In the present case the AstraZeneca AB, Sweden and AstraZeneca Pharma India Ltd (plaintiff/appellant) have argued nine appeals and challenged the orders/judgments which were pronounced within a span of 16 days, with both, independently of each other, on the same facts, concluding that the appellants/plaintiffs, during the pendency of the suits for permanent injunction to restrain infringement of patent in manufacturing DAPA, a drug to treat people suffering from type-II diabetes mellitus, are not entitled to any interim injunction restraining respondent(s)/defendant(s) from manufacturing and selling the pharmaceutical products which are alleged to be in breach of the patent of the appellants/plaintiffs.
Contention of the Plaintiff:
The learned counsel for the petitioner submitted the following contention:
- It was submitted that both, IN 147 and IN 625 were granted to Bristol Myers Squibb Company, which vide Assignment Deed dated 1st February, 2014, assigned the rights therein to the appellant/plaintiff AstraZeneca AB, Sweden, which stood registered as the patent holder qua the said patents.
- It was argued that that DAPA, being the subject matter of the two patents, is used worldwide, to treat people suffering from type-II diabetes mellitus and that IN 147 is the genus patent and IN 625 is the species patent. It was also stated that the appellants/plaintiffs have been granted patent for DAPA, in approximately 70 countries.
- It was also submitted that that DAPA is not obvious from IN 147 because IN 147 has a million possibilities; any attempt to reach DAPA from the Markush structure of IN 147 is nothing but an attempt to take recourse to hindsight, which is discouraged under Patent Law.
- It was contended that that neither of the respondent(s)/defendant(s) have carried out any research and development and are merely piggybacking on the inventions of the appellants/plaintiffs concerning DAPA.
Contention of the Respondents/defendants:
The respondents submitted the following contention:
- It was submitted that that IN 147 expired on 2nd October, 2020 and there could thus be no interim injunction qua IN 147.
- It was also contended that the respondent(s)/defendant(s) have raised a credible challenge to the validity of IN 625 and once the Court finds that the respondent(s)/defendant(s) have a credible challenge to the validity of IN 625, no interim injunction can be granted.
- It was also submitted that the appellants/plaintiffs having agreed to the term of US patent equivalent of IN 625 to be the same as that of US patent equivalent of IN 147, cannot make a case contrary thereto in India.
- It was stated that that DAPA would be obvious to a person skilled in the art, on account of the manner in which he would appreciate the contents of IN 147 and that IN 625 is also vulnerable to challenge because the appellants/plaintiffs did not inform the Indian Patent Office about the status of all the corresponding foreign patent applications.
- It was further submitted that Sun Pharma Laboratories Limited and Abbott Healthcare Private Limited had also obtained licenses qua IN 625, demonstrating that the appellants/plaintiffs are not exclusively marketing DAPA in India but are willing to monetise the patent via licensing.
Observation and judgement of the court:
The Hon’ble bench of the court observed the following:
- The bench was of the opinion that with respect to one invention, there can be only one patent.
- Rights of a patentee, unlike that of the proprietor of a trade mark, are not natural or common law rights, but are a creation of law i.e. are statutory rights.
- For the grant of a patent with respect to an article, as DAPA is, it was essential that it is a a new product, technically advanced, capable of industrial application, not obvious to a person skilled in the art, not been used at any time before filing of patent application, not a mere discovery of a new form of a known substance etc.
- A patent, vide Section 48 of the Act, confers a right on the patentee of a product patent, as DAPA is, to, during the life of the patent which is s limited, whereafter, notwithstanding the new product having been invented by the patentee, patentee no longer has exclusive right to make, use or offer for sale the same and anyone else interested can also make, use or offer for sale the new product.
- In our opinion, a single formulation as DAPA, is incapable of protection under two separate patents having separate validity period. The appellants/plaintiffs, in their pleadings, are not found to have pleaded the difference; save for pleading that DAPA was discovered by further research.
Based on the above the court that once the appellants/plaintiffs, before the USPTO applied for and agreed to the validity period of US patent equivalent of IN 625 ending on the same day as the validity period of the US patent equivalent to IN 147, the appellants/plaintiffs, in this country are not entitled to claim different periods of validity of the two patents.
Thus, finding no merit in the appeal, it was dismissed.
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