In a first, the Delhi High Court has held the patent of the plaintiff, Merck, valid and infringed upon by Glenmark in what is a welcome decree for innovators The decision passed by Hon'ble Justice A. K. Pathak of the Delhi High Court on October 7, 2015, decreeing the suit in favour of the Plaintiff/ Patentee in Merck Sharp & Dohme Corp. & Anr. V Glenmark Pharmaceuticals Ltd., not...
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In a first, the Delhi High Court has held the patent of the plaintiff, Merck, valid and infringed upon by Glenmark in what is a welcome decree for innovators The decision passed by Hon'ble Justice A. K. Pathak of the Delhi High Court on October 7, 2015, decreeing the suit in favour of the Plaintiff/ Patentee in Merck Sharp & Dohme Corp. & Anr. V Glenmark Pharmaceuticals Ltd., not only vindicates the patent law system of the country but also appears to be a silver lining in the cloud for innovators. This decision where the Hon'ble Court held the patent of the Plaintiff valid and infringed is the first of its kind passed in favour of a Plaintiff/patentee ever since the enactment of the Patents Act, 1970.
The patentee Merck Sharp & Dohme Corp. (Merck), along with its licensee Sun Pharmaceutical Industries Ltd., filed a patent infringement law suit against Glenmark Pharmaceuticals Ltd. in April 2013, when the latter marketed competitor drug products which infringed Merck's patent for Sitagliptin and its pharmaceutically acceptable salts.
When the matter initially came up before the Hon'ble Single Judge, he refused to grant an interim injunction and disposed of the application of the Plaintiffs seeking interim injunction. The Plaintiffs preferred an appeal against this decision of the Hon'ble Single Judge and the Hon'ble Division Bench of the Delhi High Court (Ravindra Bhatt and Najmi Waziri, JJ) reversed this decision vide their order dated March 20, 2015, by way of a speaking order which held the Plaintiffs' patent to be prima-facie valid and infringed by the Defendant's product.
This order of the Hon'ble Division Bench was challenged by the Defendant before the Hon'ble Supreme Court, which vide order dated May 15, 2015 not only re-instated the interim injunction granted by the Division Bench of the Delhi High Court, but also took cognizance of the "commercial" nature of the matter and the delay already caused in the matter, and passed strict directions expediting the suit.
As a result of the "one of a kind" directions passed by the Hon'ble Supreme Court (Ranjan Gogoi and N. V. Ramana, JJ), evidence recorded in the matter, which involved crossexamination of seven witnesses – three of whom were foreigners, was concluded in around one and a half months. Further, in less than five months from the ordering of an expedited trial in the matter, the Judgement had been finally delivered.
In this case Merck had a basic patent for Sitagliptin and its pharmaceutically acceptable salts. It had also applied for a separate improvement patent application for the Sitagliptin Phosphate Monohydrate salt, which it had subsequently abandoned. The Court found that the Defendant's infringing product containing Sitagliptin Phosphate Monohydrate was squarely covered by Merck's basic patent.
This decision of the Delhi High Court indicates that the Indian Judiciary (and the Indian Legislature in view of the recently enacted Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015) is cognizant of the urgent need for a proper, effective and efficient system to safeguard Intellectual Property, including patents, so as to foster a conducive commercial environment in the country, and are implementing measures to provide for such a system.
Disclaimer - The views expressed in this article are the personal views of the author and are purely informative in nature.