Challenging Pre Grant Orders through Writs: Whither "Alternative Remedies"?

We have a very interesting guest post from Adithya Reddy, a bright patent litigator from Chennai. He argues that a post grant opposition is an efficacious alternative remedy and that therefore High Courts ought not to entertain writ petitions against pre-grant opposition decisions. Here goes:

The Bombay High Court’s recent decision regarding Cadilla Health Care’s patent claim and requirements of Section 3(d), commented upon in an earlier post by Prakruthi, revisits a question that was left unexplained by the Madras High Court in Indian Network for People living with HIV/AIDS Vs. Union of Indian & Others, MIPR 2009 (2) 36 (related to Hoffman-La Roche’s patent over Valganciclovir).

As was explained by Prakruthi, the Bombay High Court decided upon a Writ Petition filed by Golchem Industries (Petitioner) against the decision of the Asst Controller to grant a patent pertaining to Clopidogrel Besylate pursuant to an application filed by Cadila Healthcare Ltd (Respondent). One of the grounds of challenge was that the evidence produced by Respondent was inadmissible and therefore the Controller should not have relied on the same.

The subject matter of the present comment pertains to one of the defenses taken by the Respondent, namely that he Petitioner had alternative and efficacious remedies in the form of post-grant opposition under section 25 (2), suo motu revocation under Section 64 and remedy under section 104 to file a counter-claim in a suit for infringement. A similar defense was taken by Hoffman-La Roche before the Madras High Court when the grant of patent was challenged on the ground that the Controller failed to give a hearing to the Petitioners at the time of considering their pre-grant opposition.

The Madras High Court held that “the remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage.” However, without explaining further the Court proceeded on the footing that even if they are alternative remedies they do not operate as a bar on the High Court’s powers under Article 226 as there was a clear case of violation of natural justice. Another factor that might have weighed in the mind of the Court was the fact that a remedy under Section 25 (2) is available only to a ‘person interested’ whereas a pre-grant opposition can be filed by ‘any person’. The Petitioners in the case being NGOs, the Court might have felt that they do not fall within the category of ‘persons interested’ and therefore were disentitled to file post-grant oppositions (It ought to be noted that it is not clear from available authorities as to whether ‘interest’ for the purpose of Section 25 (2) means only ‘commercial interest’ or even other interest).

As far as the case before the Bombay High Court is concerned, the question of distinction between ‘person interested’ and ‘any person’ does not arise as the Petitioner was very much a commercial competitor. However, the Court did find that the decision of the Asst Controller was not in conformity to principles of natural justice and that it was manifestly erroneous (though I personally am not fully convinced on this). In view of such a finding, the Court observed-“it is not necessary for us to examine the argument of the Petitioners that the remedy of pre-grant opposition is qualitatively different than the remedy of post-grant opposition.” The basis of this argument of the Petitioner appears to be that “in the pre- grant opposition, the onus is on the patent applicant to show that the alleged invention would result in enhancement of the known efficacy of the stated substance; whereas in the post-grant opposition, the onus will be on the objector to show that the alleged invention does not result in enhancement of the known efficacy of the stated substance.”

Therefore, both of the above decisions do not, in categorical terms, lay down the law as to whether proceedings under Section 25 (2) & 64 can be considered to be alternative remedies to a Writ Petition. It is purely a principle of self-imposed prudence and not one of jurisdiction that a Court sitting under Article 226 will not entertain a matter when the remedy sought for can be obtained by alternate means. Such an alternative remedy need not always be by way of appeal. The exceptions to this rule are cases where there is violation of natural justice, violation of fundamental rights, jurisdictional error etc. Another requirement for application of the rule is that the alternate remedy should be effective and should not render the efforts of Petitioner futile due to undue delay etc.

In my view, when the result/ relief that comes out of post-grant opposition and revocation proceedings is invariably similar to the relief claimed by any petitioner in a Writ Petition challenging the decision of Controller granting a patent after pre-grant oppositions i.e. invalidation of the patent, there is no reason why such remedies cannot be considered to be alternative to filing of a Writ Petition. Intellectual Property laws are unique in the manner in which dispute resolution is contemplated. The only clear decision that I have come across on the issue was passed by the First Bench of the Madras High Court in the context of a right of a person to give notice of opposition to the registration of a trade mark beyond the period prescribed under Section 21 of the Trade Marks Act, 1999 (MANU/TN/2246/2009).

A Writ Petition was filed by one Allied Blenders and Distillers Limited against the decision of the Deputy Registrar of Trademarks refusing to entertain its opposition to registration of a trademark of Marks and John Distillers Ltd on the ground that it was sent after the time prescribed under Section 21. The court held in categorical terms that: “an effective alternative remedy is very much available to the petitioner under the statute by filing a rectification application under Section 57 of the Act, which the petitioner has already filed. The only difference between the two proceedings will be that in the rectification proceedings the burden of proof will be on the petitioner, whereas in the opposition proceedings the burden of proof will be on the respondent- 3.” Therefore, the contention of Golchem Industries before the Bombay High Court that in pre- grant opposition, the onus of proof is on the applicant whereas in the post-grant opposition, the onus will be on the objector, and therefore the latter is not an alternate remedy, stands rejected.

The above principle should apply with full force to cases pertaining to the Patents Act. While, it cannot be disputed that in cases of violation of natural justice and other manifest errors, the bar of alternative remedy does not apply, it should be firmly established that normally a failed pre-grant objector should not approach the High Court under Article 226 against the decision of the Controller.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

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