This post has been split in 2 parts for the convenience of readers.
To understand this post better, following is a reproduction of the relevant provisions of the Act:
Section 15: Power of Controller to refuse or require amended applications in certain cases (1) Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.
Section 25(1) (Before 2005 amendment): “At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act (or within such further period not exceeding one month in the aggregate as the Controller may allow on application made to him in the prescribed manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds…”
Section 25(1) (After 2005 amendment): “Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground…”
Section 116 (Before 2005 amendment): Appeals:
(2) Save as otherwise expressly provided in sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, sub-section (3) of section 69, section 78, section 84, section 86, section 88(3), section 89, section 93, section 96 and section 97.
Section 117A (After 2005 Amendment): Appeals to the Appellate Board:
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or the Central Government under section 15, section 16, section 17, section 18, section 19, section 20, sub-section (4) of section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, Section 66, sub-section (3) of section 69, section 78, sub-section (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.
In a decision delivered on February 8th on a slew of writ petitions, the Delhi High Court has ruled that an appeal may lie under Section 117A(2) of the Patents Act from an order of rejection of a patent application in a pre-grant opposition proceeding under Section 25(1). Such orders are appealable since they are orders of refusal of a patent application given by the Controller under Section 15 of the Act for non-compliance with the requirements of the Act.
The decision was pronounced in view of 6 write petitions raising the same issue. The parties to these petitions were UCB Farchim, Cipla, ColorCon Inc, Ideal Cures Pvt Ltd, Yeda Research and Development, NATCO Pharma, Eli Lilly, Ajanta Pharma and Ranbaxy.
Though this decision settles the law (at least for now, unless the IPAB still takes a contra view), by and large, quite a few practitioners (including me) feel that what ought to have been an obvious interpretation of the Act and hence a non-issue, had become an issue because of IPAB’s view that such appeals were not maintainable (this I say from first-hand experience).
Stated otherwise, the IPAB was hitherto of the view that there did not lie an appeal before it from an order of rejection of a patent application in a pre-grant opposition proceeding. Thanks to this view, the usual recourse of the patent applicant was a writ petition before the appropriate High Court under Article 226 of the Constitution.
In ruling in favour of maintainability of the appeal under Section 117A(2), the High Court adopted the following line of logic:
Effect of 2005 Amendment on Sections 25(1) and 117A(2): The HC compared the version of S.25(1) prior to the 2005 amendment and post the amendment. This comparison also happens to be one of the primary underpinnings relied upon in Span Diagnostic v. Asst. Controller of Patents, to rule against maintainability of appeals before the IPAB.
The argument furthered in Span Diagnostics was that, prior to the 2005 Amendment, Section 25 found mention in Section 116(2) of the Act, whereas only Section 25(4) finds mention in Section 117A(2) after the amendment. However, a lot of us, including me, have consistently taken the view that this decision was based on an erroneous interpretation of the scheme of the Act and the nature of patent prosecution framework.
The reasons for the same are as follows:
Prior to the 2005 Amendment, Section 25(1) provided for opposition of a patent specification which was found to be in order for grant. Such opposition had to be instituted within four months of advertisement of such acceptance of the specification. Post the 2005 amendment, Section 25(1) provides for a representation of opposition of the patent application anytime after publication but before grant.
On comparison of these 2 versions of Section 25(1), strictly speaking, one could say that the pre-2005 provision was not in the nature of a pre-grant opposition in the sense we refer to it today. To put it simply, there was no pre-grant opposition provided for in the pre-2005 Act. In fact, the earlier version is closer in nature to a post-grant opposition, since under the earlier version the patent application was already found in order for grant by the Patent Office.
Such being the case, there was no need for a provision of appeal from a “pre-grant” opposition before 2005 amendment, because a “pre-grant” opposition was non-existent. However, since the 2005 amendment introduced the pre-grant opposition procedure, it was but natural that a provision for appeal too had to be made for in the Act.
Further, the 2005 amendment also brought with it the inception of IPAB for patent appeals. Consequently, it would only make sense to provide for an appeal before the IPAB under Section 117A(2) from an order of rejection of a patent application from a pre-grant opposition. It must be clarified that there exists an appeal before the IPAB from a rejection of a patent application only, but not from a rejection of the opposition application. This was clarified in the J.Mitra v. Asst. Controller by the Supreme Court.
The reason why there cannot or should not be an appeal from the rejection of an opposition representation is because the pre-grant opponent always has the option of post-grant opposition. Providing him with an appellate forum in the pre-grant stage would only serve to delay the examination of the patent application, and consequently its grant. (Precisely for this reason, the pre-grant opposition procedure was being phased out in several countries in the very year India introduced it).
Sometime back, Aditya Gupta, a student of NLU Jodhpur, raised this interesting question as to why the principle of res judicata would not apply to prevent a pre-grant opponent from raising the same grounds of opposition in a post-grant opposition. A tentative answer to his question is that a post-grant opposition proceeding, in a way, is a statutory exception to the principle of res judicata.
In the next post, I shall discuss the rest of the arguments to support maintainability of appeals before the IPAB.
The reason why there cannot or should not be an appeal from the rejection of an opposition representation is because the pre-grant opponent always has the option of post-grant opposition.
I beg to differ with the observations above. How can one assume that the pre grant opponent always has the option of post grant opposition? there could be situation wherein the patent has not been granted by the controller after publication and examination. The pre grant opposition could be filed after publication and before the grant of the patent. At the time of publiation there is no right accruing to the applicant but the rights if granted could be exercised from the date of publication. Hence if the patent is rejected on the grounds of novelty, inventive step or utility, where will be the right of post grant opposition. Hence I feel that both the remedies are independent and should not be connected to each other as both are available to different persons and at different sitautions. Therefore it is not correct to say that the reason why there cannot or should not be an appeal from the rejection of an opposition representation is because the pre-grant opponent always has the option of post-grant opposition as this assumption itself is totally incorrect.
Further to my comments earlier I also beg to differ with the following observation
“Providing him with an appellate forum in the pre-grant stage would only serve to delay the examination of the patent application, and consequently its grant”
The pre grant oppostion and examination are two different actions. The only condition for examination of the application is the request and its publication which can occur by two ways i.e mandatory after 18 months or earlier at the request of applicant. In many cases the application is filed along with publication and examination requests. Once the publication is caused, the channel for pre grant opposition is open but that doest not prevent Controller from referring the application to the examiner under rule 24(B)(2). The examination could go in separate channel. Hence there need not be delay in examination. Yes, if there is an appeal provided against the decision in the pre grant opposition, the grant of the patent u/s 43 may be delayed till such opposition is decided or six months from the date of publication whichever is later.
Dear Mr.Kulkarni,
These points have been subsequently dealt with in the following post:
http://spicyipindia.blogspot.com/2010/05/person-interested-how-is-inclusive.html
Bests,
Sai.