The Bombay High Court’s division bench has set aside the order of the IPAB revoking Chemtura’s patent IN213608 and has directed the Controller of Patents to restore the patent on the e-register ( Order dated 19-06-2017 ).
IPAB had earlier revoked Chemtura’s Patent for non compliance of section 8 and lack of inventive step. Chemtura filed a writ against the decision in the Bombay High Court.
The facts of the case are as follows: –
- Uniroyal Chemical Company Inc. (the predecessor of Chemtura) filed a National Phase Patent Application being IN/PCT/2001/00752/MUM before Patent Office with respect to the invention titled ‘A Bearing Pad Assembly’
- IPO on 9th January, 2008 granted patent to Chemtura after examining the same
- Revocation Petition being ORA/14/2009/PT/MUM was filed before the Intellectual Property Appellant Tribunal (IPAB). Chemtura filed its counter Statement along with the Affidavit to the petition on 21st August, 2009
- On 27th August, 2009, the petitioner counsel sent a letter to IPAB seeking withdrawal of the revocation petition being ORA/14/2009/PT/MUM. On 12th October, 2009 the Registry on behalf of IPAB sent a letter calling upon petitioner to file a Miscellaneous Petition seeking withdrawal of the said revocation petition
- Thereafter on 7th October, 2010 a hearing on the said revocation petition came to be posted under the caption ‘FOR WITHDRWAL’. However, due to some administrative reasons the matter was adjourned to 1st June, 2011. On 1st June, 2011 the matter was again adjourned to 28th November, 2011.
- On 28th November, 2011 when the matter was posted for hearing the counsel for Petitioner submitted that he had oral instructions to argue the Revocation Petition being ORA/14/2009/PT/MUM and in light of the said submission IPAB directed the parties to argue the matter on merits
- On 26th May, 2012, Petitioner filed a Miscellaneous Petition seeking withdrawal of the said revocation petition and subsequently, on 11th June, 2012 amended and again filed another Miscellaneous Petition seeking unconditional withdrawal of ORA/14/2009/PT/MUM.
It was argued by Chemtura that the order revoking the patent was passed despite a Miscellaneous Petition being M.P No. 107 of 2012 filed by Party seeking revocation and is therefore not maintainable. It was also contended by Chemtura that once a revocation petition has been withdrawn the Vakalatnama executed in favor of the Advocate ceases and the application cannot be heard. The counsels of Chemtura also relied upon the decision of the Supreme Court in Shiv Prasad v. Durga Prasad  1 SCC 405] which observed that every applicant has the right to unconditionally withdraw his application and his unilateral act in that behalf is sufficient and that no order of the Court is necessary permitting him to withdraw the application. The Court may make a formal order disposing of the application as withdrawn but the withdrawal is not dependent on the order of the Court. The act of withdrawal is complete as soon as the applicant intimates to the Court that he withdraws the application.
The Bombay High Court applied the ratio in Shiv Prasad (Supra) that the application should have been treated as withdrawn as of that date i.e on 25th July, 2009 and if not, at least as on date of filing Miscellaneous Petition namely 11th June, 2012. Bombay High Court further held that the IPAB erred in proceeding with the hearing in the face of the said application for withdrawal. In the circumstances, the Bombay High Court quashed the impugned order of the IPAB dated 24th August, 2012. Patent No. 213608 has also been restored on the Register of patent.