In This Issue

Enercon India Ltd. V. Alloys Wobben

Enercon India Ltd. V. Alloys Wobben

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Enercon India Ltd. V. Alloys Wobben

A patent application was filed on 12th of November 2002, claiming a priority date of 12th May, 1999. The patent was granted on the 2nd of February 2007 for the invention titled &"Azimuth Driver for Wind Energy Plants”.

A subsidiary of Enercom GmbH, Germany applied for the revocation of the patent on the following grounds:
  1. Subject matter of patent is obvious and does not involve inventive step (Sec. 64 (1)(f)
  2. Scope of the claims is not sufficiently and clearly defined. (Sec. 64 (1)(i)

The Applicant claims to be the foremost leader in wind energy sector in India, manufacturing & installing wind turbines all over India and is therefore considered as interested person within Sec. 64 of the Act. On the other hand, the Respondent challenged the competency of the signatories to the application. The Applicant is a joint venture company in the manufacturing of wind turbine generators and setting up wind farms on a turnkey basis. Shareholders are Enercon GmbH, Germany, holding 56% share and Mehra Family from India holding 44%.

The arguments of the Respondents are such:
  1. The Board Resolution dated 26 April 2007, which authorized Mr. Yogesh Mehra to file proceedings on behalf of the Applicant is bad in law or is not lawful since it falls out of the order dated 29 October 2007 and 19 May 2008, passed by the Company Law Board.

  2. The Board Resolution only authorizes Mr. Mehra to manage the day-to-day activities of the company, under the general powers to defend the company and file suits on behalf of the company on matters relative to contractual laws, corporate & taxation or any statutory acts but not to initiate revocation proceedings.

  3. Mr. Mehra having filed a suit in a derivative capacity in Bombay High Court could not now file revocation proceedings on behalf of the applicant company.

  4. The validity of the board resolution has been challenged before the Company Law Board.

  5. The Appellate Board, having been formed substituting for the High Court as regards finalizing the applicants for revocation of patents, like the High Court, has the power to decide on all matters of law and those connected matters of legal dispute.

The Applicant refuted the statements of the Respondent. Mr. Mehra was authorized by the Board Resolution dated 26 April 2007to sign pleadings like the revocation application. In addition, the Appellate Board cannot decide on the validity, legality and propriety of the board resolution. In the absence, therefore, of any judgment or order of a competent court of law, the Appellate Board has to proceed on the basis and directions given therein, assuming that the said resolution dated 26 April 2001 is valid and legal.

The Counsel for the Respondent urge grounds that the resolution dated 26 April 2007 was not proper and legal. However, as has been stated already, the legality and validity of the Board Resolution cannot be questioned because the present proceedings are instituted under the provisions of Sec. 64 of the Act. To test the validity and legality of the Board Resolution does not rest with the Appellate Board. Therefore by virtue of the Board Resolution dated 26 April 2007, Mr. Mehra is empowered to sign the suits and pleadings including the revocation applications. It was further contended by the Counsel for the Respondent that the proceeding is not a suit, thus, Mr. Mehra is not empowered to sign the same.

The High Court considers that there is no substance in the contention of the Respondent that Mr. Mehra has no authority to sign pleadings; that the applicant company cannot maintain the present revocation applications and that the present proceeding is not a suit. In this case, since the Counsel of the Respondent argued that the Appellate Board is a Court for all practical purposes, it contradicts its own statement that the present proceeding is not a suit. In Patel Roadways Ltd. V. Birla Yamaha Ltd.(2000) 4 SCC91, the Honorable Supreme Court, in Paras 48 and 49 observed that “suit is not a term of wider significance than action; it may include proceedings on a petition.” Furthermore, “suit” is not to be strictly construed but construed in the manner in which it is used. Therefore, the admission for the Counsel of the Respondent that the Appellate Board is a Court clearly establishes that the proceedings before this Appellate Board would also be in the nature of a suit and as it is clear that Mr. Mehra is competent to sign the present revocation application. Reliance of the respondent on the interim orders passed by the Company Law Board dated 29 October 2007 and 19 May 2008 are completely misconceived and misconstrued for the reason that these orders have been passed after the resolution dated 26 April 2007 and cannot, in any manner have any relevance in the issue.

The arguments of the Applicant are grounded on the definition of “patent” as under Sec. 2(1)(m), “invention” as under Sec. 2(1)(j), “inventive step” as under Sec. (2)(1)(ja) of the Act. Since the Respondent has not moved any amendment in the claim, the patent should be revoked as it does not involve an inventive step and the omnibus claim does not clearly define the scope of the invention. By identifying the claims and assessing the features claimed in the claims, it was observed that none of the features could be identified therefore ascertaining that it lacks inventive step and obvious to the person skilled in the art.

Inventive step is a feature of an invention, while invention is identified by the claim which involves technical advance and economic significance as compared to existing knowledge.

No difference in the invention claimed in the claim of the impugned patent could be perceived when compared with US patent 4 514 677 , granted on 30th April 1985. It is also obvious to the person skilled in the art. Therefore taking into consideration the European Patent 0266715 and US Patent 4514677, as well as published non-patent literatures, the application for the revocation of the patent was allowed.

Patent No. 202885 was removed from the register of patents.


Contributed by : Lisa Pineda Gacuma - Technical Expert
Editor in Chief : Roshni Parikh
Designed By : Vikash Singh

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