Can an accused infringer attack a patent through a separate patent revocation petition while the patentee’s infringement suit is already pending? The Madras High Court’s Intellectual Property Division answered that question in a review petition decided on 9 September 2026, and the answer shapes how defendants plan their validity challenges.<\/p>\n
M\/s Arunachalaa Enterprises (“Arunachalaa”), a Karur-based firm, sued for infringement of its patent in a District Court. M\/s R. Sukumar, proprietor of M\/s Sri Sustainable Recycling (“Sukumar”), did not plead revocation as a counterclaim in that suit. Sukumar instead filed a revocation petition before the Madras High Court, naming the Office of the Controller General of Patents, Designs and Trade Marks (“Patent Office”) as the second respondent. Sukumar then applied to move the infringement suit from the District Court to the High Court so that both proceedings could be heard together. By an order dated 22 July 2026, the High Court allowed the transfer. Arunachalaa sought review of that order, together with a stay of further proceedings, and argued that the transfer rested on a misreading of the Patents Act, 1970 (“Patents Act”). The review petition and the stay application came up together for decision.<\/p>\n
The court noted that Section 64 of the Patents Act lets a defendant seek revocation of a patent on the listed grounds either through an independent petition or by way of a counterclaim in the infringement suit. The court held that this statutory right cannot be whittled down by forcing a litigant into the counterclaim route alone. On this reading, a patent revocation petition filed after the patentee’s suit remains a valid way to challenge the patent.<\/p>\n
The court observed that the proviso to Section 104 of the Patents Act requires a suit to move to the High Court having jurisdiction when a counterclaim for revocation is made, because only the High Court can decide revocation. The court reasoned that once a revocation claim is raised in a forum, the District Court loses its hold on the infringement suit and transfer becomes mandatory.<\/p>\n
The court further observed that the same logic applies to a patent revocation petition pending before the High Court. In this dispute, the suit was already pending in the District Court when Sukumar filed the petition. The court found that, if transfer were refused, the District Court would have to wait for the High Court to decide revocation, which defeats the purpose of the proviso.<\/p>\n
The court stated that the Supreme Court decision relied upon arose from a suit filed in the Delhi High Court itself, where the defendant had made a revocation counterclaim. That ruling held that, once a counterclaim exists, a separate revocation petition before an appellate tribunal is not maintainable. The court noted that the proviso to Section 104 was never in play there, since no transfer was needed.<\/p>\n
The court opined that the Gujarat and Allahabad rulings turned on their own facts. In the Gujarat matter, the written statement contained no revocation counterclaim, and the court was exercising revisional power over a transfer request. In the Allahabad matter, no pleading on revocation existed. The court found that Arunachalaa’s dispute differed because a revocation petition was pending before the very court asked to take the suit.<\/p>\n
The court observed that the legislative scheme seeks to avoid driving a litigant to different forums for the same dispute, and that hearing the suit with the revocation petition serves this aim. The court held that the power to transfer flows from the proviso to Section 104 and also from Clause 13 of the Letters Patent, which governs the Madras High Court.<\/p>\n
The court found no material error in the earlier order and declined to reopen it. On Arunachalaa’s objection about the maintainability of the original petition, the court stated that the point had in fact been argued and pressed, and added that it was not necessary to decide it. The patent revocation counterclaim route therefore stays open, but it is not the only one.<\/p>\n
In view of the observations and the arguments presented by both the parties, the Madras High Court held that:<\/p>\n