Patent revocation remedies in the alternative: simultaneous revocation petition and counter-claim cannot proceed together.

A person interested challenging a patent cannot pursue both a revocation petition and a counter-claim for the same patent validity issue at the same time, because Section 64 uses alternative remedies and parallel adjudication on the same cause is impermissible. The text further states that the order of institution matters: if revocation is filed first, a later counter-claim on the same cause cannot proceed; if the suit and counter-claim come first, a later revocation petition by the same person is barred. It also notes that a consent order consolidating proceedings for convenience and expedition was consistent with statutory jurisdiction and orderly procedure.

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Issues: (i) whether a person interested could simultaneously pursue revocation of the same patent by filing a revocation petition under Section 64 of the Patents Act, 1970 and a counter-claim in an infringement suit; (ii) whether the remedy to be pursued depended on the order in which the revocation petition and the infringement suit or counter-claim were instituted; (iii) whether the consent order consolidating the suits and proceedings was legally justified.

Issue (i): Whether a person interested could simultaneously pursue revocation of the same patent by filing a revocation petition under Section 64 of the Patents Act, 1970 and a counter-claim in an infringement suit.

Analysis: Section 64(1) permits revocation in different capacities and before different fora, but the remedies are expressed in the alternative. The opening words of Section 64 make the provision subject to the rest of the Act, and the use of the word "or" indicates that the same person cannot pursue both remedies for the same purpose at the same time. A counter-claim is treated as an independent suit and, by accepted principles analogous to Section 10 and Section 151 of the Code of Civil Procedure, 1908, parallel adjudication on the same cause is impermissible.

Conclusion: The same person cannot simultaneously maintain both remedies for revocation of the same patent.

Issue (ii): Whether the remedy to be pursued depended on the order in which the revocation petition and the infringement suit or counter-claim were instituted.

Analysis: Where a revocation petition is filed first, the later counter-claim cannot proceed on the same cause of action. Where the infringement suit and counter-claim are instituted first, a later revocation petition by the same person is barred. The controlling principle is that the earlier proceeding on the validity issue must be pursued, while the later duplicative proceeding cannot continue.

Conclusion: Priority of institution determined which proceeding could be continued, and the later parallel challenge was not maintainable.

Issue (iii): Whether the consent order consolidating the suits and proceedings was legally justified.

Analysis: Procedural rules are handmaids of justice, and parties may, by consent, agree to pursue one available forum or remedial track for convenience, provided the forum has statutory jurisdiction. The consent order for consolidated and expedited trial did not offend the Act and was consistent with orderly procedure.

Conclusion: The consent order was valid and justified.

Final Conclusion: The impugned order was set aside and the appeal succeeded by affirming that only one of the alternative revocation remedies could be pursued at a time, with the earlier-instituted proceeding governing the challenge to patent validity.

Ratio Decidendi: Where a statute provides alternative remedies in the disjunctive for challenging the same patent, the same person cannot prosecute both remedies simultaneously; the later proceeding on the same validity issue must give way to the earlier one to avoid duplicative adjudication.

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