In response to my earlier post on the procedural issues in the Valcyte post-grant opposition I received unconfirmed information, from parties familiar with the matter, that the recommendations of the Opposition Board were not even made available to the parties. I would be grateful if we could get a confirmation on that from parties who participated in the matterImage from here. Title of the work: The Anatomy Lesson of Dr. Nicolaes Tulp; Artist: Rembrandt. A musical accompaniment (Bach’s Tocatta & Fugue in D Minor) to this post can be accessed here..
As explained in my earlier post, the procedure prescribed by the Patents Act and Patent Rules requires the constitution of an Opposition Board consisting of three members including an examiner. The recommendations of the Opposition Board are then required to be considered by the Controller along with the oral arguments of the parties before he renders a reasoned decision on the merits of the case. As stated in the earlier post, although the Controller is not bound by the recommendations of the Opposition Board, he is still required by law to state his reasons for agreeing or dis-agreeing with their recommendations.
Two questions arise in this backdrop:
(a) Is the composition of the Board of the Opposition made known to the patentee and the opponent and is there any requirement under law to make this information public?
(b) Is it necessary for the Controller to serve a copy of the recommendations of the Board of Opposition on both parties?
Can any of readers provide us with any information on official guidelines/customary practice in this regard? What was the procedure followed in other post-grant oppositions like the one against Roche’s Pegasus? Procedural goof-ups in a quasi-judicial proceedings can result in the decision being set-aside. I’ll outline a couple of hypothetical scenarios below:
(i)If the composition of the Opposition Board was not made known to either party then in that case the patentee could easily argue before a writ court that he did know that the same Examiner who dealt with the patent application was also on the Opposition Board and hence could not have objected to the appointment until the same was made public knowledge thereby effectively countering any argument on delay/laches.
(ii)If the recommendations of the Opposition Board are not made available to either party but are still considered by the Controller then in that case the Controller is in effect passing an Order, ex-parte i.e. without hearing the arguments of the parties on the recommendations of the Opposition Board. Any piece of evidence or ‘recommendations’ being heard by the Controller, have to necessarily be made available to both parties, so as to enable them to lead arguments against the same. To pass an order without providing it to the parties would result in prejudicing the party against whom the recommendations have been made. In fact this the most basic rule of natural justice – audi alteram partem.
If the answer to question (a) is negative and the answer to question (b) is positive then in that case an appeal by Roche to a writ court would almost inevitably lead to the post-grant Order of the Patent Office being set aside with directions to the Patent Office to re-hear the entire matter.
The irony lies in the fact that an established precedent to the above prognosis lies in the history of this very case. In December 2008, a Division Bench of the Madras High Court had set aside the Order of the Patent Office in the first pre-grant opposition on the grounds that the Patent Office was compelled to hear the pre-grant opposition against the patent application. We had blogged about that Order over here. The Order itself is available on the website of the Lawyer’s Collective over here. In pertinent part the Madras High Court had stated the following in its judgment:
51.There is another age old principle which enjoins when statutes provides for dong something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable.
61. Therefore, we can safely draw the line as between cases where it was obligatory on the part of the authority to afford a fair opportunity which he fails to offer and cases where there are certain defects in affording such opportunity, in which case the extent of fairness may have to be tested vis-a-vis the extent of prejudice caused. In cases where there was total failure in affording the opportunity obligated upon, the resultant order would be a nullity. Here there is total denial of opportunity of hearing . So following the ratio in State Bank of Patiala we hold that the decision to grant patent is a nullity and not an irregularity which is to be cured.
Conclusions: If and the operative word is IF, my assessment of the matter is true, then in that case, in my personal opinion, it is most likely that the Order of the Controller will be set aside and the matter remanded to the Patent Office with directions that it be heard afresh. Such an outcome would be extremely tragic, given the time, money and energy poured into this case by all the parties involved especially the NGOs who may already have limited resources. Once again I would like to reiterate that it is no use heaping the blame only on the Patent Office, the burden has to be shared by both the parties.
well, IF your ‘unconfirmed information’ is correct, then it certainly is a serious procedural error apparent on the face of it. n in that case, both of your options (i) n (ii) r correct.
in this sense, your conclusion, too seems right that all 3 (the ipo and the counsels of all the parties) sides r to b blamed. but as i commented in another post at spicyip, that its easier to comment sitting outside. what happens inside the ring has 1001 shades, many of which never come to light. i ll give u just one example of this – roche might ve deliberately not raised objection to Mr. Subramaniam’s presiding over the affairs at ipab, too. but, who knows? it might ve been a real failure on the part of counsel, too. so, one shud try to see all aspects of a case n not be judgmental on others, at least not so fast. in this sense, your post is sensible/fair that it has qualified its ‘conclusion’ with a big ‘IF’.
-aditya kant
Prashant,
As per IPA rule 62, it is the obligation on the part of the Controller that after hearing both the parties, the recommendations of the Opposition Board is communicated to both the parties, giving reasons.
Dear Manish
I think u are doing wrong in misinterpreting the rule 62. Nowhere it is written the recommendation of opposition board should communicated to both the parties rather to be communicated to the controller.
Dear Manish,
Rule 62 does not specify that the Controller has to communicate the recommendations of the Opposition Board to the parties concerned. It may be an implicit requirement but it is definitely not stated so in the Act.
Prashant