In a recent landmark decision, the Supreme Court may have unwittingly taken the sting out of the charge that India’s IP laws are anti-IP and biased against multinationals. In Enercon vs Yogesh Mehra, the apex court ruled that a patent opponent cannot take multiple shots at challenging the same patent, but must choose between the various options spelt out in India’s Patent Act. If she chooses to challenge the patent in a post-grant opposition proceeding (to be filed within one year of the patent grant), she cannot then seek to revoke it later before the Intellectual Property Appellate Board (IPAB)—India’s specialised IP tribunal—before which any patent can be challenged. If she chooses to file a revocation proceeding before the IPAB, she cannot then challenge the validity before a High Court through a counter-claim (a claim filed in response to a lawsuit for patent infringement).
While all of this may sound a bit technical, its impact is enormous from an efficiency perspective. Up until this decision, multiple patent challenges were the order of the day, resulting in enormous wastage of resources; the only winners were lawyers who would charge by the hour for each one of these multiple proceedings.
Through infirm on a few minor counts, the court’s decision essentially paves the way for a leaner IP dispute resolution framework. However, efficiency considerations notwithstanding, this decision is vastly significant for another reason. It may have blunted the current critique against India’s allegedly-biased IP framework. For this decision is clearly in favour of the patentee, a German multinational in the business of creating technologically advanced wind turbines and other ecofriendly instruments. Indeed, Enercon’s victory comes after a series of losses at the hands of the IPAB, where 19 of its patents were invalidated. The Supreme Court ruling could also arguably mean that the IPAB invalidations do not count any more, but that this issue must now be decided by the High Court.
Juxtapose this decision favouring Enercon against an earlier Supreme Court decision denying Novartis the right to patent its breakthrough anti-cancer drug Glivec. Multinational pharmaceutical companies and their governments were up in arms lambasting India for its outrageous IP theft and playing spoiler on the international innovation landscape. Never mind that the decision itself hinged on the specific facts of the case, and may have been spookily similar to a US decision some years ago, where the court denied a patent to Pfizer’s hypertension