Patents – Restoration application when to precede post-grant revocation

The Calcutta High Court has set aside an order revoking a patent, holding that the Controller could not decide on a post-grant revocation petition while the patentee’s restoration application was still pending. Controller’s objection that the statute does not provide for any embargo in taking up the revocation application during the pendency of the restoration application was thus rejected.

The patent had lapsed due to non-payment of renewal fees. Pursuant to an order of the High Court of Orissa, the company filed a restoration application, which was directed to be considered within two months. However, before deciding the restoration application, the Controller revoked the patent on a post-grant challenge filed by a third party.

According to the Court, proceeding with the revocation application during the pendency of the restoration proceedings effectively rendered the restoration application infructuous and undermined the Orissa High Court’s directions. The Court also noted that the patent challenger (respondent here) had earlier consented to an adjournment of the revocation proceedings pending consideration of the restoration application.

Accordingly, the Court in Green Energy Resources v. Joint Controller of Patents and Designs and Ors. quashed the revocation order and directed the Controller to first decide the restoration application. It was also stated that the post-grant revocation proceedings, if necessary, may be taken up thereafter with due opportunity of hearing to the parties.