Challenging the Controller’s Pre-grant Opposition Decisions at IPAB

08 November 2012

In a recent order of February 8, 2010, the Delhi High Court paved a way to Appeal the orders of the Controller refusing the grant of patent in a pre-grant opposition filed under Section 25(1) of the Patents Act, 1970. Justice S Muralidhar delivered the order after consolidating writ petitions filed by UCB Farchim, Colorcon, Yeda Research & Development and Eli Lilly.

The order clarifies the law with respect to appeal to the Controller’s decision in a pre-grant representation, which was earlier deemed not appealable at the Intellectual Property Appellate Board (IPAB). Earlier, in the J Mitra & Co case, the Supreme Court held that after April 2, 2007, the Appellate Board is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e. in cases of orders passed in “post-grant opposition.” It was such decision which set the grounds for challenging the Controller’s decision in the High Court and not before the IPAB.

The IPAB, which was constituted in 2003, was extended to patent law in 2007 to hear appeals against the decisions and orders of the Controller of Patents for the opposition. One of the objectives for the setting up the IPAB was speedy disposal of appeals and rectifications of applications pending in various High Courts. As per the provisions available under section 116(2) of Patents Act, 1970 (the principal Act), any decision of the Controller on the opposition was appealable before the High Court. It is interesting to note that, as per the Patents Act, 1970, there was only one type of opposition to patents, which was after the acceptance of the patent application but before the grant of a patent.

After India signed the General Agreement on Trade and Tariffs (GATT) in 1994 and became party to the TRIPS Agreement in 1995, a series of amendments was made to the Indian Patents Act, 1970 to revise several aspects of its patent regime in the process of meeting the TRIPS obligation. The Indian Parliament, however, also introduced new features to the Act, which were not obligations under TRIPS. One such amendment is the concept of ‘pre-grant’ and ‘post-grant’ oppositions, which were introduced in 2005.

Pre-grant opposition can be filed by “any person” by way of representation after publication of the application until the grant of the patent, whereas postgrant opposition can be filed only by “interested person” (a person or company engaged in the same field of research) within 12 months from the date of publication of the grant of the patent. The decision of the Controller on postgrant opposition is given under Section 25(4) of the Patents Act 2005. Unlike post-grant opposition, in the Patents Act there is no separate section specifically for refusing or granting the patent after considering the pre-grant opposition representation and hearing. The representation for pre-grant opposition can be rejected or accepted by the Controller under Rule 55(6) of the Patents (Amendment) Rules, 2006.

As per the Section 117A of the patents act (amended in 2005), the decision of the Controller given under Section 25(4) for the post-grant opposition can be appealed at the IPAB. However, as there is no separate proviso specified for the Controller’s decision for pre-grant opposition, naturally Section 117A does not include the same. Thus, it may appear that the decision of the Controller for pre-grant opposition cannot be appealed at the IPAB. This was echoed in the J Mitra & Co case.

Such specific exclusion of the proviso to appeal the pre-grant decisions of the Controller at the IPAB seems to be the balancing act of Indian patent law to preclude the undue delay in the prosecution and grant of the patent. In an instance where the Controller’s decision is against the opponent who is an interested person, the opponent has additional opportunity for post-grant opposition as well as for revocation of the granted patent. The same is brought out in the Delhi High Court order.

With regard to challenging the Controller’s decision when the opponent is “any person,” it is mentioned in the Delhi High Court’s order that “this Court would like to observe that the power under Article 226 of the Constitution is wide and can be exercised on the facts and circumstances of a given case where it appears to this Court that there is no other efficacious remedy available or that the interests of justice require this Court to interfere.” Thus, it is implied that the decision of Controller for such opponents can be appealed at High Court.

Further, the order has also set the record straight for those applicants who find their patent applications rejected after a pre-grant opposition. Now they have a remedy in appeal at the IPAB. As per the Delhi High Court’s order, a rejection by the Controller based on a pre-grant representation under Section 25(1) would be a decision under Section 15 of the Patents Act and therefore may be appealed to the IPAB under Section 117A.

The decision of the Delhi High Court is commendable because it provides a much sought-for remedy to the applicants in case of rejection and puts an end to arguments revolving around the basis of challenging the Controller’s decision at the IPAB.

Krishna & Saurastri

K.K. Chambers, 1st Floor,

Sir P.T. Marg, Fort,

Mumbai 400 001, India

T: +91 22 2200 6322

F: +91 22 2200 6326

E: info@krishnaandsaurastri.com

W: www.krishnaandsaurastri.com

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Challenging the Controller’s Pre-grant Opposition Decisions at IPAB