INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
Further, Rule 6 of the Delhi High Court (Original Side) Rules 2018 states that the court, on its own motion or on an application of any party, may permit an expert witness to testify by way of recording of their testimony, which includes techniques such as “hot-tubbing”, whereby expert witnesses give evidence simultaneous- ly, in each other’s presence and in front of the judge. This enables identification of key issues of a dispute, and allows common resolution. This mechanism was also re-affirmed by Rule 16 of the Intellectual Property Division Rules, 2022 (specifically catering to IP disputes), as well as Rules 8 and 9 of the Patent Suit Rules, which provide for the recording of evidence by way of hot-tubbing. 3.7 Procedure for Construing the Terms of the Patent’s Claim No formal mechanism exists in India for a “Mark- man” hearing such as in the USA, as there is no separate procedural step for claim construction. Instead, claim construction is handled as part of the trial. Any disputes concerning the construc- tion of claims are framed as issues during the case management hearing. Notably, the Delhi High Court’s Patent Suit Rules require the parties to file a claim-construction brief before the case management hearing, to enable courts and parties to assess whether there are any disputes in relation to the construc- tion of the claims. 3.8 Procedure for Third-Party Opinions While the Act specifically provides for an inde- pendent scientific expert, the court has, in some cases, also appointed amicus curies to assist with questions of law. However, this is the pre- rogative of the court and not of any party.
Section 64 of the Act allows for a party to file either a counterclaim for revocation/invalidation of a patent in the infringement action itself or to initiate separate proceedings for revocation by filing a revocation petition. The revocation peti- tions can be filed even without an infringement suit, by any person interested. However, a party cannot avail of both mechanisms simultaneous- ly, as the right to initiate separate proceedings by a revocation petition is necessarily eclipsed once the accused infringer files a counterclaim for revocation within an infringement action, and vice versa. This position has been confirmed by the courts in various decisions. The only exception to the above is in a situation where a patent infringement action is filed before a District Court and the counterclaimant seeks to file a revocation. As mentioned in 2. Initiating a Lawsuit , and as provided under Section 104 of the Act, a counterclaim for revocation lies only before the High Court. In view of this, the matter must necessarily be transferred to the relevant High Court for adjudication. If the infringement action is filed within the time- line permitted for filing a post-grant opposition, the defendant would have the choice of either filing a counterclaim in the infringement action or pursuing post-grant opposition proceedings before the Patent Office. 4.2 Partial Revocation/Cancellation Partial revocation or cancellation of a patent is possible under Indian patent law. The Act allows for the revocation of a patent on specific grounds, as enumerated in Section 64. The court may revoke a patent in part if certain claims are
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