Following up on his discussion of Macleods Pharmaceuticals v. The Controller, SpicyIP Intern Bharathwaj Ramakrishnan further discusses the statutory duty under Section 151 of the Patents Act to record revocations or invalidations – and has trouble finding this! Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur, and loves books and IP. His previous posts can be accessed here.
by Bharathwaj Ramakrishnan
In my previous post, I discussed Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr, and the post also discussed Section 151, which requires the Controller to update the register and maintain a supplementary record whenever a patent is revoked or invalidated. Section 151 usually does not appear in discussions, cases, or academic papers. Discussions might revolve around Section 3, Section 2(1)(ja) or Section 64, but rarely do you find a mention of Section 151. But then Section 151 was pivotal in Macleods wherein the Court cited it as one of the reasons to state that the Patent Act provides for both a defence of invalidity claim under Section 107 and a right to file revocation petition under Section 64 either as a standalone petition or as part of a counter-claim. Section 151, as the judgement noted, imposes a two-fold statutory obligation on the Controller. The question that comes to mind is whether this statutory obligation is being fulfilled, and this post will attempt to look into this question.
Time for some Background
While I was discussing the previous post with Swaraj, there was some uncertainty on whether a defence of invalidity under Section 107, if successful, would automatically or, through some mechanism, lead to the revocation of the patent.
I argued that the Ayyangar committee report, seeking to prevent a multiplicity of rulings on the patent’s validity, had recommended that such a finding of invalidity be binding only on the parties to the suit. I also argued that as an improvement to the system, it has also provided for the maintenance of a supplementary record, which serves a public notice function informing potential licensees or buyers of any adverse finding in a court of law on questions related to patent validity.
Then Swaraj asked, “Is this list available anywhere?” and “How public is this public notice?”. I froze as these questions never came to me and thus started the search to find out how the statutory obligation under Section 151 is being fulfilled..
Section 151 Explained
The Section’s headnote states that it deals with the transmission of orders to the Controller. The first sub-section deals with transmitting orders/judgements relating to revocation, including certificates of validity, to the Controller, who is then expected to enter the details and update the register.
The second sub-section deals with transmitting Court judgments to the Controller wherein the Court finds any claim or claims invalid in an infringement proceeding. The Controller then is to make an entry in a supplemental record regarding that order, which had declared any claim or claims in the patent invalid.
Thus, from a plain reading of the Section, the Controller is expected to update the register whenever the Court issues a revocation or certificate of validity. Likewise, maintain a supplemental record to make note of judgments/decrees/orders which had declared a claim or claims in a patent invalid in an infringement proceeding.
Is the statutory duty under Section 151(1) being fulfilled?
With the obligation under Section 151 made clear, the next question is whether the statutory duty under Section 151 is being fulfilled. To make it clear at the start, I will focus on revocation and invalidity as these decisions by the Court change the legal status of an invention. Even though the details of the Court issuing the Certificate of validity need to be updated in the register as per the section, it does not change the legal status of the Patent, which is not the case with revocation and invalidity.
Through my very limited research, I could find three instances where the Courts have revoked a patent, and the details are not reflected in the e-register. There could also be more such revocations since, as per the DHC IPD Second Annual Report 2023-24, around 45 Patent revocation petitions were disposed of by the DHC during 2022-24 Likewise, other High Courts would have also disposed of revocation petitions in the said period.
The first case was a recent one, a revocation done by the Madras HC in Ollos Biotech Private Limited vs Omega Ecotech Products India Limited, delivered on March 2024; the second one is a revocation done by the Himachal Pradesh High Court in Dhanpat Seth, And Others vs M/S Nilkamal Plastic Ltd delivered on 2018 and finally the Delhi High Court again in Ericsson vs Lava also delivered on March 2024 in which the Court out of eight patents that were asserted revoked one.
In all three cases, the e-register does not display any information regarding their revoked status, which might violate Section 151(1) of the Patents Act. In contrast, a Patent revoked through a post-grant opposition proceeding has the legal status of “Revoked” in the register.
The patent (No. 411774) revoked in Ollos, pronounced in March 2024, has an “Inforce” legal status.
The patent (No. 195917) that was revoked in Dhanpat Seth was done so in 2018, but has no information on this fact! Instead, it simply states, “Term Expired”. Which gives the impression the Patent was valid.
The patent (No. 203034) that was revoked in Ericsson vs Lava in March 2024 still shows the legal status mentioned as “Term Expired” when the legal status should have been “Revoked”.
Interestingly, in the case of Sintex Industries vs Controller (August 2023, Delhi High Court), the patent (no. 197086) was revoked through the post-grant opposition route, and the legal status in the e-register is “Revoked”.
With three instances of the e-register not being updated upon a preliminary search, including one from 8 years ago, one wonders what exactly is going on here. Is the Controller not updating the register or e-register, as per Section 151(1), or is there a delayed or erratic update of information in the e-register? Likewise are the orders/judgments being transmitted to the Controller as required by law? Anyways, it raises serious questions about whether the statutory duty under Section 151(1) is being fulfilled.
What about the statutory duty under Section 151(2) – Supplementary Record?
Section 151(2), as discussed earlier, requires the Controller to maintain a supplemental record and note all judgements wherein the claim or claims have been declared invalid in an infringement suit. After hours of frantic searching, I cannot find any information on this “supplemental record” or its existence. The IPO website does not seem to have any info on this. I am unsure where to find this “supplemental record” or whether it exists. From what was discussed above, it is also possible that the Patent Office might not be keeping records or notes of patents being revoked by the Courts. Are they also not maintaining a supplemental record?
Likewise, is a separate record made in the e-register for individual patents when they get invalidated by the Courts? At the moment, it’s unclear to the author how the supplementary record is being maintained. To remind readers, the supplemental record, as per the Ayyangar Committee report at least, was to serve a public notice function informing the public and interested people on details regarding cases wherein the claims of the Patent have been declared invalid.
It would be an immense boost to transparency if the Patent Office maintained the supplemental record with details of judgements that have invalidated patents in an easily accessible manner. The same argument applies to an updated register with judgements and details on revocation proceedings. From personal experience, tracking and finding cases in which patents have been revoked is a bit difficult. In contrast, the Patent Office is best placed to provide that information in a consolidated and easily accessible manner due to the existence of Section 151, which allows them to get copies of judgements from the Courts directly by operation of law.
Conclusion
Thus, questions have to be raised about whether the statutory duty imposed under Section 151 is being fulfilled. But then there is always a substantial argument to be made that only when the Controller gets a copy of these judgments would he be required by law to update the register or the supplementary record. It’s unclear whether this transmission of judgment/orders/decrees actually happens. Regardless of whether the judgements are being transmitted, it’s pretty clear there are questions to be raised and a more detailed analysis to be done about whether the obligations under Section 151 are being fulfilled. The author also requests more informed readers to comment on any information they might have regarding the supplementary record and how the Patent Office updates its register when the Courts revoke a patent and also to let us know if the Patent Act has any other similar requirements that have similar questions attached to them.
The author wishes to thank Swaraj for his valuable input on the post.