P.S. Narayana, J.
1. Heard Sri Y.J. Trivedi, the learned Counsel representing the petitioner and Sri Rajeev Naiar, Counsel representing the respondent.
2. Sri Y.J. Trivedi, the learned Counsel representing the petitioner made the following submissions. The learned Counsel would maintain that the Original Petition is filed by Hyderabad Chemical Supplies Limited, Hyderabad, Andhra Pradesh, praying for revocation of the patent. The learned Counsel also would maintain that Section 107 of the Patents Act, 1970, hereinafter in short referred to as 'Act' for the purpose of convenience, deals with suits for infringement of patents. The Counsel also would maintain that the restraint order which is passed in relation to the breach of earmark in C.S. No. 25-A/2004 by the District Court, Indore is totally for a different purpose and the scope and the ambit of the said suit also being different, the said order would not come in the way of granting suspension as prayed for in the present application. The learned Counsel also had explained the meaning of the word or expression 'patent' and had drawn the attention of this Court to Section 9(3) and Section 9(4) of the Insecticides Act, 1968. The Counsel would further maintain that in the light of the clear provisions specified under Section 64 of the Act, this O.P. is maintainable only before this Court and this Court is having jurisdiction also to entertain the O.P. Merely because a Suit had been instituted on the file of the District Court, Indore, that does not mean that this Court has no jurisdiction especially in view of the fact that the petitioner-Hyderabad Chemical Supplies Limited, Hyderabad is within the jurisdiction of this Court and likewise the 1st respondent-United Phosphorous Limited, Mumbai is having its branch of operation office at Hyderabad. The learned Counsel placed reliance on certain decisions also to substantiate his contentions. While further elaborating his submissions, the learned Counsel had drawn the attention of this Court to para-6 Ground (K) and would contend that in the light of the specific stand taken inasmuch as it is not a new invention or is not a novelty hence the same would not fall under 'patent' and in that view of the matter, the Certificate to be suspended pending the main O.P. The learned Counsel while further making his submissions would contend that it may be that in relation to trademarks an Appellate Board had been constituted at Chennai and as far as patents are concerned the same had not been notified. Even otherwise, the learned Counsel would contend that in the light of the clear language of Section 117G of the Act, it is highly doubtful whether matters of this nature can be transferred at all to the said Appellate Board. The learned Counsel placed reliance on certain decisions also in this regard.
3. Per contra, Sri Rajeev Naiar, the learned Senior Counsel made the following submissions. Initially the Counsel would maintain that the O.P. itself is not maintainable inasmuch as the Appellate Board had been constituted and the same is functioning and in view of the same and also n the light of the language of Section 117G of the Act all these matters pending on the file of the respective High Courts also to be transferred to the Appellate Board. The learned Counsel also had taken this Court through the language of Section 64, Section 117C, Section 117D, Section 117G, Section 116 of the Act and had explained the scope and ambit of the Act and also would maintain that the Intellectual Property Appellate Board at Chennai alone would have jurisdiction at present to adjudicate upon the question in controversy which is the subject matter of the present O.P. and hence the O.P. is liable to be transferred atomatically. The counsel also while further making his submissions had taken this Court through the relevant portions of the plaint and also written statement and the stand taken by the respective parties and would contend that the 1sl respondent is the plaintiff in the said Suit pending on the file of District Court, Indore wherein a restraint order was obtained as against the petitioner herein as respondent/defendant in the said Suit and the same was carried even by way of Appeal wherein also the said party was unsuccessful. With all emphasis, the learned Counsel would contend that conflicting orders cannot be passed and in fact certain of the facts had been suppressed. The fact relating to the disposal of the matter by High Court, Indore Bench had not been specifically pleaded nor it was brought to the notice of this Court and it would amount to suppression of fact. The learned Counsel also would maintain that the substance of the pleading may have to be taken into consideration and the revocation of the patent also had been made the lis between the parties before the District Court, Indore and in the light of the same it cannot be said that the subject matter is something different or the reliefs prayed for would be something different and if the substance is taken into consideration when a Suit virtually claiming for the same relief at least in substance is pending on the file of the District Court, Indore, it is not just and proper on the part of the petitioner to approach this Court by filing O.P. under Section 64 of the Act stating that the grounds are different or the reliefs prayed for also are different. The learned Counsel also had pointed out to the rejoinder filed and the contents thereof. While further elaborating his submissions, the learned Counsel raised the aspect of operation of estoppel and placed reliance on a decision in this regard. While elaborating his further submissions the Procedure for revocation had been well explained and the Counsel also would further contend that Section 64 of the Act does not contemplate interim suspension and when the main relief which had been prayed for and the interim relief which had been prayed for virtually would be one and the same, it would be always just not to grant any relief and the better way would be to dispose of the main O.P. itself. The learned Counsel also made it clear that it would be proper for the parties to let in further evidence if they choose to do so and it would be just to dispose of the main O.P. itself after recording such evidence if necessary inasmuch as the knowledge relating to the patent being a question of fact it is a matter to be decided on recording evidence and proper findings and the Certificate in relation to Indofil Chemical Company and other aspects may have to be gone into at the appropriate stage and not at this stage. The learned Counsel also had relied upon an order made in the Writ Petition on the file of Delhi High Court where certain directions had been given in relation to the appointment of Members of the Intellectual Property Appellate Board.
4. Heard both the Counsel and perused the respective pleadings of the parties in the main O.P. and also in the affidavit filed in support of the application and the counter affidavit filed in relation thereto.
5. 0.P. No. 1/2005 is filed by the petitioner under Section 64 of the Act praying for the main relief of revocation of the patent in question. Several of the details which had been narrated at length in the respective pleadings of the parties need not detain this Court any longer and it is suffice to state that this Court is deciding the application praying for interim suspension. Inasmuch as notice had been ordered on the application, a counter affidavit had been filed and the Application is being disposed of at the request of both the Counsel.
6. In the Application the relief prayed for is for suspension of Patent No. 185229 pending O.P. No. 1/2005 and to pass such other suitable orders. The main ground of attack in relation to which submissions at length were made by both the parties is the ground which had been specified in para-6 (K) which is as hereunder:
The complete specification of the present patent application which was filed by the patentee-respondent No. 1 was already applied for manufacturing by the other Company in India before Central Insecticide Board, Ministry of Agriculture to obtain necessary registration under Section 9(4) of the insecticides Act. The said formulation was applied by the third party even prior to the date of patent application made by the respondent No. 1, which clearly establishes that on the date of application of the patent filed by the patentee the said formulation was known publicly and was available hence, it is not new, as defined under the Act and it is not in respect of the patentable invention. The subject matter of the invention was known to the public and publicly available hence, the patent is required to be revoked....
It is no doubt true that it is also stated that a copy of the Central Insecticides Board's Licence issued to Indofil Chemicals Company had been annexed as Annexure No. P-13. This is the main ground on which it is stated that there is a strong prima facie case in favour of the petitioner and hence the petitioner is entitled for suspension pending the Original Petition. It is needless to say that it is a question of fact. Adduction of evidence in relation thereto may be essential. Merely because a Certificate is produced, by that itself it cannot be inferred that the ingredients or the definition of 'patent' are satisfied or are not satisfied. It is a matter to be gone into at the appropriate stage. This Court is not inclined to express any further opinion relating to the other merits and demerits of the matter.
7. It is no doubt true that several contentions were made in relation to the maintainability of the O.P. also. It is needless to say that the O.P. had been entertained Under-section 64 of the Act. Section 64 of the Act reads as hereunder:
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say-
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor;
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what as publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in Sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required by Section 8 or has furnished information which in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under Section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of Section 39;
(o) that leave to amend the complete specification under Section 57 or Section 58 was obtained by fraud;
(p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
(2) For the purpose of Clauses (e) and (f) of Sub-section (1)-,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only.
(3) For the purpose of Clause (1) of Sub-section (1) no account shall be taken of any use of the invention-
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a Government undertaking, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to the Government or person authorised as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title.
(4) Without prejudice to the provisions contained in Sub-section (1) a patent may be revoked by the High Court on the petition of the Central Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Central Government to make, use or exercise the patented invention for the purposes of Government within the meaning of Section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person.
Section 116 of the Act deals with Appellate Board. Section 117A deals with Appeals to Appellate Board. Section 117B deals with Procedure and Powers of Appellate Board. Section 117- deals with bar of jurisdiction of Courts. Section 117D deals with Procedure for revocation etc., before Appellate Board. Section 117E deals with Appearance of Controller in legal proceedings. Section 117G of the Act on which strong reliance was placed deals with Transfer of pending proceedings to Appellate Board and the said provision reads as hereunder:
All cases of appeals 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 register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novoor from the stage it was transferred.
It is doubtful whether the Original Petitions of this nature also would be covered by the said provision. Even otherwise both the Counsel had furnished the information to this Court. It is brought to the notice of this Court that the Intellectual Property Appellate Board at Chennai is not conferred with the power or jurisdiction to entertain the case relating to the patents as on to-day. It is also no doubt brought to the notice of this Court that the Delhi High Court in W.P. No. 13034/2005 dated 20.10.2005 made an order in relation to the Technical Member of the Intellectual Property Appellate Board issuing certain directions. No doubt there is some controversy between the parties that these directions relate to appointment in the context of trademarks and not in relation to patents. This question also need not be further gone into while disposing of the present Interlocutory Application for the reason that there is no controversy between the parties at least to the extent that the patents cases are not being dealt with by the intellectual Property Appellate Board at Chennai. As already referred to supra, even in the light of the language of Section 117G of the Act, it is doubtful whether the O.Ps. of this nature can be transferred to the said Board or not. On the aspect of the jurisdiction of this Court to entertain the O.P. strong reliance was placed on Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City AIR 1983 Delhi 496. The learned Counsel for the petitioner also placed strong reliance on Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries : 2SCR757 to explain what a patent means. There cannot be any two opinions or any controversy relating to the same. The learned Counsel for the petitioner also placed strong reliance on Bengal Waterproof Limited v. Bombay Waterproof Manufacturing Company : AIR1997SC1398 which is no doubt in relation to the infringement of a trademark or passing of action and would maintain that inasmuch as it is a continuing cause of action the question of delay would be of no consequence. As far as the principle laid down by the Apex Court in the said decision is concerned, there cannot be any serious controversy in relation thereto. Chapter XVIII of the Act deals with Suits concerning infringement of patents. Section 104 of the Act deals with Jurisdiction, Section 104A of the Act deals with burden of proof in cases of suits concerning infringement, Section 105 deals with Power of Court to make declaration as to non-infringement. Section 106 deals with power of Court to grant relief in case of groundless threats of infringement proceedings, Section 107 deals with Defences etc., in suits for infringement, it is brought to the notice of this Court that except defence before the District Court, Indore, no specific counter-claim in fact had been made. In Fabcon v. Industrial Engineering Corporation : AIR1987All338 , the learned Judge of Allahabad High Court held:
Having heard learned Counsel for the parties I do not find merit in the revision. Section 104 of the Patents Act provides that a suit for any relief under Section 106 for infringement of a patent shall be instituted in the District Court and not in any Court inferior thereto. The proviso lays down that where 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. The question is whether there is in this case a counter claim set up by the defendant. Learned Counsel for the revisionist argues that in the written statement filed for the defendant it is prayed at the end that the trial Court be pleased to dismiss the suit of the plaintiff in favour of the defendant and the patent No. 140164 be held as invalid on the basis of the submission contained in the written statement. It is urged that since the defendant has asserted that the patent in question be held invalid this be taken to be a counter-claim for revocation within the meaning of the aforesaid proviso. This is not acceptable. According to Section 107(1) in any suit for infringement of a patent, every ground on which it may be revoked under Section 64 shall be available as a ground for defence. Section 64 enumerates the grounds for revocation of patent. Under the scheme of the Act itself, therefore, there is a distinction maintained as between the defence raised to a suit for infringement of a patent (vide Section 107) on the one hand and the revocation sought of a patent on the other (vide Section 64). The grounds maybe the same, but still there is no inconsistency on account of the suit being defended as liable to dismissal in a particular case and a case where the defendant seeks also that the patent asserted by the plaintiff be revoked. It is only when there is a counter-claim seeking revocation of the patent that the jurisdiction of the District Court is ousted. The proviso to Section 104 being in the nature of an exception to the general rule, it has to be strictly construed. There is no express claim on the part of the defendant for revocation of the patent whereof infringement is alleged by the plaintiff. That the defendant pleads that the patent set up by the plaintiff is in valid amounts only to the defendant raising a ground for the relief sought by the plaintiff being declined; it does not follow necessarily that the defendant also seeks by way of a counter-claim that the patent be revoked. The defendant has not asserted in the pleadings anywhere that they are the patentee or that they are entitled to be registered as such. The grounds raised are cumulatively and also individually by way of defence to the plaintiff's action.
In Kirin-Amgen v. Hoechst 2005 (1) All E.R. 667 the Houses of Lords had an occasion to consider the aspect of infringement and the validity of patent in the context of the Patents Act 1997 and Convention on Grant of European Patents 1973.
8. Inasmuch as the main O.P. is pending, this Court is not inclined to express or touch the other merits and demerits of the matter since those are all evidentiary details to be ultimately decided after recording of the evidence, if any if the parties choose to do so. No doubt the Counsel for the 1st respondent placed strong reliance on Bhanu Kumar Jain v. Archana Kumar and Anr. : AIR2005SC626 which is in relation to issue estoppel and res judicata. There cannot be any quarrel in relation to the settled propositions of law in the context of the doctrine of issue estoppel or res judicata as the case may be.
9. An elaborate counter affidavit was filed narrating several of the details. It is suffice to state that inasmuch as suspension of an interim order is being prayed for, in substance, when a suit had been filed by the opposite party-1sl respondent i.e., C.S. No. 25-A/2004 on the file of District Court, Indore and when there is a restraint order operating as against the the present petitioner, in a way the said order having attained finality the same having been confirmed by the appellate Court, High Court of Indore Bench, this Court is of the considered opinion that conflicting orders cannot be passed. No doubt a serious attempt was made by the learned Counsel representing the petitioner that the reliefs are not same, the subject matter also is not one and the same. These are all details which may have to be gone into at the time of final disposal of the O.P. This Court is concerned with only prima facie case whether suspension as prayed for to be granted or not at this juncture and not beyond thereto. Apart from this aspect of the matter, it is also pertinent to note that the main relief prayed for is revocation of the patent and the interim relief which is being prayed is for suspension of patent. When the effect of the interim order may virtually amount to the granting of the final relief, the Courts are expected to be slow and cautious while making such orders on Interlocutory Applications. Thus in the light of the said settled principles though under exceptional cases such orders can be made, this Court is of the considered opinion that this is not such an exceptional case where interim suspension to be granted pending the main O.P. Hence this Court is not inclined to grant the interim suspension on the Interlocutory Application. It is made clear that all other contentions touching the merits and demerits of the matter can be agitated by the parties after the parties letting in necessary evidence if they choose to do so. In the facts and circumstances of the case and also in the light of the urgency pleaded, let the matter appear in the list immediately after vacation. It is made clear that the parties are at liberty to adduce necessary evidence if they choose to do so and further proceed with the matter. It is also made clear that the matter will be taken up on day-to-day basis and would be disposed of at the earliest point of time. Except making these directions no other relief can be granted in favour of the petitioner at this juncture.
10. Accordingly the application is hereby dismissed subject to the above directions. No costs.