Guest Post: Challenging Pre-Grant Orders Through Writ Petitions: Delhi HC Clarifies

Readers may recollect that I had posted a comment on the practice of challenging Pre-Grant orders through writs in the light of a decision of the Bombay High Court on Cadilla Health Care’s patent claim (Golchem Industries Ltd Vs. Cadila Healthcare Ltd). I had remarked that as a matter of principle a failed pre-grant objector should not be allowed to approach the High Court under Article 226. My discussion centered around the Golchem case and the decision of the Madras High Court in Indian Network for People living with HIV/AIDS Vs. Union of Indian & Others, MIPR 2009 (2) 36 (case pertaining to Hoffman-La Roche’s patent on Valganciclovir).

I just wanted to bring to everyone’s attention, the latest judgment of a division bench of the Delhi High Court in UCB Farchim SA Vs. Cipla Ltd & Others (MANU/DE/0297/2010), deciding a batch of Writ Petitions that delve into the issue of maintainability of Writ Petitions against the orders passed by the Controller. In the Court’s own words-

“the challenge in these writ petitions is two types of orders of the Controller in a pre-grant opposition filed under Section 25(1) of the Patents Act. One allowing such opposition and refusing the grant of patent. The other, rejecting the opposition and granting the patent.” With respect to the former i.e. orders by a which pre-grant opposition is allowed, the Court took little effort to hold that-“in the considered view of this Court where the grant of patent is refused by the Controller after accepting a pre-grant opposition under Section 25(1) of the Patents Act, the applicant for a patent will have a remedy by way of an appeal to the IPAB under Section 117A of the Patents Act. The refusal to grant patent is in fact relatable to and should be understood as an order by Controller under Section 15 of the Act which order is in any event appealable to the IPAB under Section 117 A.”

Therefore, the Court refused to entertain the Writ Petitions challenging such orders holding that Section 117 A provides for an express alternate remedy.

However, it was while dealing with Writ Petitions against orders rejecting pre-grant oppositions, that the Court made some very interesting observations. The Court enlisted all the differences between the nature of proceedings under Section 25 (1) and 25 (2) and came to the conclusion that “where the pre-grant opposition is rejected, it is apparent from the decision in J. Mitra and from a reading of Section 25 with Section 117A that as long as the person who has filed that opposition happens to be a person interested, he would,… have the remedy of filing a post-grant opposition. He can,…, also file an application before the IPAB under Section 64 of the Patents Act for revocation of the patent. He in fact has two remedies.” Therefore, to that extent the law on the point has been clarified in a manner not done by any of the earlier judgments.

The Court specifically dealt with observations of the Bombay High Court in the Golchem Case and observed pointedly that “to this Court it appears that the settled law as explained in several decisions of the Supreme Court (which incidentally have not been adverted to by the Bombay High Court in Glochem) makes it clear that this Court should not entertain the writ petition, not because it does not have the power or jurisdiction, but because the petitioner has an efficacious alternative statutory remedy to exhaust.”

There is a crucial point to be noted in the Delhi High Court’s decision vis-à-vis certain observations made by the Division Bench of the Madras High Court in the Hoffman-La Roche case. I wish to clarify that though on an appeal filed by Roche, the Supreme Court passed certain orders (directing the Controller to decide upon the post-grant oppositions within a time-frame, after the Controller confirmed the grant of patent at the pre-grant stage), it did not touch upon or expressly reject any of the legal observations of the Madras High Court.

One such observation of the Madras High Court was that “the third respondent (i.e. the Controller while deciding a pre-grant opposition) functions as a quasi-judicial tribunal and has to decide the lis namely, the right of the objector raised on a wider perspective as against the claim of patent by the fourth respondent (Hoffman-La Roche).” (portions in brackets added). The Madras High Court specifically negatived Roche’s contention that the “Controller merely acts in an administrative capacity and in such a situation he does not decide any ‘lis’.”

In my view, the Delhi High Court has clearly differed from this view by observing that “the pre-grant opposition is in fact ‘in aid of the examination’ of the patent application by the Controller.” If that is the case, it is difficult to say that the Controller is deciding a ‘lis’ or a dispute in a quasi-judicial sense between two parties.

As discussed in the earlier post, the issue of natural justice violation that arose before the Madras High Court did not arise before the Bombay or Delhi High Courts, and to that extent the ratio of the Roche decision with respect to maintainability of Writ Petition is not relevant. But the difference in opinion between the Courts on the precise nature of pre-grant proceedings will make an extremely interesting subject for further study.

The Delhi High Court was equally categorical in observing that a failed pre-grant objector should not be allowed to file a Writ Petition, on the ground of availability of alternative remedies, only if he is an “interested person”. In my view, there is no reason to assume that “interested persons” need to be commercial competitors. Though, an elaborate discussion on the point requires more study and space, I wish to point out the Delhi High Court’s observation, that the Supreme Court in Roche’s Appeal from the Madras High Court, allowed the pre-grant opposers to participate in the post-grant stage.

This is relevant because the pre-grant opposers were NGOs claiming to be working for people affected with HIV/ AIDS. To that extent, the Delhi High Court’s view that unsuccessful pre-grant objectors should choose post-grant opposition as a remedy over filing a Writ Petition, would hold good for NGOs and other such groups who claim to be affected by grant of the patents.