The Calcutta High Court has emphasised that a pending patent restoration application cannot be rendered meaningless by proceeding with revocation before deciding restoration, particularly when another High Court has directed that restoration be considered within a specified period.
Background: Two Proceedings, One Critical Sequence
In M/S. Green Energy Resources v. Joint Controller of Patents and Designs, Patent Office, Kolkata and Others (IPDPTA/9/2026), decided on 27 August 2026, the Calcutta High Court examined the sequence in which proceedings concerning restoration and revocation of a patent should be considered.
Green Energy Resources’ patent had ceased following non-payment of the renewal fee, which was due in September 2021. On 12 February 2026, the Orissa High Court permitted the company to file a restoration application within 30 days and directed that the application be considered within two months of filing. Green Energy Resources subsequently filed its restoration application on 24 February 2026.
While the restoration application remained pending, the Controller allowed a post-grant revocation application filed by respondent no. 4. The resulting order, dated 29 July 2026, was challenged before the Calcutta High Court.
The Central Issue
The principal question was whether the Controller could decide the revocation application while the restoration application remained undecided, despite the Orissa High Court’s direction to consider restoration within a prescribed period.
The respondents argued that the Patents Act, 1970, did not prohibit revocation proceedings from continuing during the pendency of restoration proceedings. They also relied on the fact that the revocation application had been filed earlier and contended that the restoration application had been made beyond the ordinary 18-month period under Section 60(1).
Why the Court Intervened
Justice Arindam Mukherjee held that the delay in seeking restoration was no longer determinative in light of the Orissa High Court’s order. That order remained operative and had not been set aside or modified. Once Green Energy Resources filed its restoration application within the permitted period, the authority was required to consider it within the timeframe directed.
The Court reasoned that allowing revocation while leaving restoration undecided could render the restoration proceedings infructuous. It also considered significant that the parties had agreed to an adjournment of the revocation proceedings because the restoration application was pending.
In the Court’s view, the Controller had exceeded his jurisdiction by proceeding with and allowing revocation in these circumstances. The Court therefore set aside the order dated 29 July 2026.
What Happens Next?
The Controller was directed to decide the restoration application first. The post-grant revocation application may then be taken up, depending on the outcome of restoration and, if necessary, after providing Green Energy Resources a proper opportunity of hearing.
The Court further directed that the appropriate Controller should either decide both applications in the prescribed sequence or assign them to an officer before whom neither application was already pending.
Importantly, the Court expressly refrained from deciding the merits of either application. Both remain open for independent consideration.
Practical Significance
The decision emphasizes the necessity of following operative judicial directions and maintaining the proper sequence when related proceedings affect the validity of a patent. A provisional decision prejudging the position of the patent before restoration should not deprive the pending application for restoration of its status. The decision stresses the significance for patent owners to pursue restoration expeditiously and to comply with the statutory requirements.
For the Patent Office, it stresses the importance of considering the binding directions of the courts and the procedural effects of deciding interrelated applications out of order. The ruling does not state that restoration must always be done before revocation in every case. What is important in the case are the facts of the case before the Court including the operative direction of the Orissa High Court and the conduct of the parties.
To summarize, the Calcutta High Court decision in Green Energy Resources is a reminder that the order of procedure is a critical factor in the administration of patents. The Court’s focus on restoration allowed it to preserve the effectiveness of the ongoing proceedings without reaching a premature conclusion about the patent’s eventual re-instatement or annulment.
Disclaimer: This article is intended for general educational and informational purposes only and does not constitute legal advice. The law and applicable procedures may change, and readers should seek professional advice based on their specific circumstances.