Debating the law of patent opposition: An appeal by any other name would smell just as sweet?

As our regular readers are aware, we have done several posts on the Patent Office, the Patent Office procedures, and more recently decisions of Courts that affect the Patent Office procedure.

The UCB Farchim decision delivered by Justice S. Muralidhar is one of them [UCB Farchim SA Vs. Cipla Ltd & Others (MANU/DE/0297/2010)].

While I will not go into a more detailed analysis of the order (that has already been done here, here and here– phew!), I will paraphrase the part of the judgment that this paragraph from the judgment that this post will attempt to problematize.

(Image of the balcony scene of Romeo & Juliet from here)

Where a pre-grant opposition is rejected, the aggrieved person- as with any quasi judicial authority- previously had the option of approaching the Court under Article 226 to seek a correction of the order. However, in light of the amendment in 2005, according to Justice Muralidhar, where there exists another efficacious remedy in the form of a post-grant opposition, a writ would not lie before the Court until all other remedies available where exhausted.

This would imply (as most lawyers/ patent agents will tell you) that the post grant opposition would be pretty much your only remedy from a pre-grant opposition – not counting of course, cases where there has been a violation of principles of natural justice, or technically where the opponent is not a “person interested”.

Several practitioners (and about 37 hours ago, myself included), also believe that this implies that a post grant opposition in practice acts as an “appeal” from a pre-grant order.

However, yesterday, (during the course of what we would like to call brainstorming), my colleague and I had a little repartee as to the law of oppositions under the Patents Act as it stands now.

This colleague of mine laid out some very interesting ideas for me to consider, and while I played devil’s advocate, I realised I probably could not counter all her arguments. At least not without the views of our extensive readership!

I said that Justice Muralidhar’s order was extremely straightforward- don’t come to Court unnecessarily on the same grounds for the same patent, when you can technically go before the Patent Office to challenge the same patent again in a post grant opposition.

Her point, very simply, was this- just because a remedy was offered to you as an alternative to a writ proceeding, it would not make the same an appeal. Justice Muralidhar’s judgment has only gone on to exclude one route by which an opponent could challenge a patent- which was technically, not barred by the statute.

To bolster her arguments, she rattled off certain points that I place before you for an easy comparison.

Perhaps our readers can shed some light on what they think the true import of Justice Muralidhar’s order is. Is the post grant opposition now just an appellate proceeding? Or have some of us understood it wrong?

Hat tip: Tusha Malhotra.


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15 thoughts on “Debating the law of patent opposition: An appeal by any other name would smell just as sweet?”

  1. Hi,
    I think your friend is right and this is something (coincidentally) I discussed with a few practitioners (meaning thereby that most of us have understood right the true import of Justice Muralidhar’s order, unless proven otherwise). The gist of our discussion goes something like this:

    A pre-grant opponent does not have a right of appeal (under Section 117A) to the IPAB from an order rejecting his opposition. However, to cite the presence of a post-grant mechanism as a means of appeal to reject his petition under Article 226 is not correct for two reasons:

    1. the post-grant option isn’t exactly an appeal as your friend correctly holds and
    2. more importantly, even assuming that the post-grant option is an appeal, the Court seems to say that if an appeal is provided for, a writ cannot lie. This is not in line with a few Supreme Court decisions where it has been categorically held that, notwithstanding a provision for an appeal, if a petitioner can satisfy the Court that the writ is a more efficacious remedy with regard to the specific factual matrix of the case, the same may be entertained.

    Not just that, the Court also should have considered another point. If the Act seems to draw a distinction between “any person” under Section 25(1) and a “person interested” under Section 25(2), it means there are a few under the first category who cannot avail the post-grant option. Therefore, such persons are legitimately entitled to invoke the writ jurisdiction of the High Court.

    Although the judgment is largely right, the Court would have done well to consider SC rulings on writ powers.


  2. in my humble view, the discussion is misplaced, as it misses one fundamental aspect. the jurisprudence is dynamic n it keeps on changing over time. but as per the current writ jurisprudence, the crucial aspect for consideration is not the avalability of ‘appeal’ per se, but the avalaibility of ‘efficacious remedy(ies)’. n that ‘remedy(ies)’ may b in any form/fora/alternative. appeal is just one form of such ‘remedy(ies)’. the pivot here is whether its ‘efficacious/effective’ remedy. if yes, no writ lies, normally (obviously, one must remember that writs r discretionery n they r always available under certain circumstances, as some of u ve already pointed out).
    -aditya kant

  3. I agree with Sai and ur friend, krutika!!! A post-grant opposn isnt an appeal for sure!!!

    Post-grant is def diff from an apopeal- an alternate proceeding. As sai points out, the diff b/w “person” and “person interested”. As the Roche valcyte case deals with the ground of locus standi, the Controller used the defn as in the Act and the ruling of Ajay Industriual that deals with person interested in a revocation.

    What comes to my mind is, in the course of proceedings w.r.t oppositions, the Court ordered that DNP+ be allowed to make its represn in the post-grant proceedings. Goping by the defn of interested person under the Act and Ajay industrial… an NGO/ Rts Activist may not qualify as a person interested. Am confused… in view of the provisions cited to decide the issue in Post-grant, was this instance a special case because they weren’t heard in the pre-grant (even though they dint be party to the post-grant) or is this a final position? or, is my limitedly enlightened mind missing a point???

  4. I’m inclined to agree with Aditya,

    The standard is not to look for the availability of an “appeal” per se, but to look for the presence of an alternative efficacious remedy.

    A post grant offers, in my view, a reasonably efficacious alternative remedy. And given that a pre-grant opponent has already come forward and challenged the patent once, my guess is that it would be pretty difficult to now hold that he is not a “person interested”.

    Particularly after the patent office has taken an expansive view of the term “interest” in the Roche Valcyte case. And assuming this standard does not get overturned by courts in future.

    The interesting question though in all of this is the scope of “res judicata”? Can one agitate the same issue in both oppositions, despite the matter being decided in the first opposition? What about a writ before the court? Clearly, a writ jurisdiction is limited and courts cannot review all issues de novo.

  5. Dear Sir,
    Would every person who falls within the definition of “any person” under Section 25(1) also qualify as a “person interested” under Section 25(2) merely because he was a pre-grant opponent?

    Also, it is true that the definition of a “person interested” is inclusive because s.2(t) says it “includes” a person, engaged in or in promoting research in the same field to which the invention relates. However, the nature or character of categories identified in the sub-section could be indicative of other persons who could be brought within the ambit of this species. An inclusive definition still has to retain the common thread reflected in the specific entities identified. Therefore, it is possible that a pre-grant opponent is not entitled to invoke section 25(2) because he is not a “person interested”.

    As for res judicata, although the post-grant opponent may raise the same ground as the one raised by him in a pre-grant stage, he could submit new material which was not cited in the pre-grant stage to oppose the patent. If this is possible, I assume he is entitled to agitate the same issue in pre and post-grant stages.

    As for the Court’s mandate under its writ powers, as you have said, a writ power is usually not in the nature of an appellate power because the Court has a limited window wherein it can set aside an impugned order which has been appealed against and the matter may be remanded back to the lower forum for re-appreciation. Therefore, if an opponent wants re-determination of factual findings, it might help his cause to file a writ, get the Court to set aside the pre-grant decision and remand the matter to the pre-grant forum. This would still have no bearing on the post-grant opposition because the opposition is treated afresh.


  6. I would think so Sai,

    Under a liberal interpretation of “person interested”, the moment someone has actively taken recourse to the pre-grant route and challenged a patent, lost and has again made the effort to challenge it under the post grant procedure, he/she should certainly qualify as someone interested. It demonstrates the lack of “frivolity” in raising the opposition, and a good judge should not (at least in my view) let a strict technicality stand in the way, but should rather opt for a more liberal interpretation to permit such person to oppose.

  7. @ all: Thank you all so much. Leads me to conclude that Justice Muralidhar’s focus at least in that part of the judgment tended probably more towards weeding out “frivolous” writs rather than expressing what the nature of a post grant is.

    @ Shamnad: Don’t you think such an expansive liberal interpretation may be troublesome? The Legislature has to have had some specific intent in mind in using different terms in Sections 25 (1) & (2).

  8. Hey Kruttika,

    Forgive me since my query is not directly related to this post. But your post led me to this query, so here goes.

    Consider a situation where a revocation petition is filed by a person interested (let’s call this party ‘A’) under Section 64 of the Patents Act, 1970 before the IPAB. The petition is rejected by the IPAB (i.e. the patent is valid
    according to the IPAB).

    Subsequently, the patentee files an infringement suit against ‘A’ in the High Court. Can ‘A’ now again raise issues relating to invalidity of the patent as a counter claim for the revocation of the patent in this infringement suit? If yes, what will be the status of the patent if the High Court decides to revoke the patent.

  9. Dear Aditya,
    I am assuming it would be alright for me to attempt to answer your query. Section 113 of the Patents Act may answer your question. Under S.113(1), where a claim in a patent is upheld either by the IPAB or the High Court in a revocation proceeding under sections 64 or 104, the IPAB or the High Court may certify that such claim was upheld. S.113(2) states that if again in a subsequent proceeding for infringement or revocation, the patentee relies on the certificate of validity to get an award in his favour, he is entitled to full costs… and so on and so forth. Sub-section 2 indicates that regardless of the certificate of validity in a prior revocation proceeding, it is open for a defendant to challenge validity of the patent again.

    But let’s go further and look at a few situations:
    1. A combined reading of sections 64 and 104 tells us that there cannot be two simultaneous revocation petitions i.e. if a revocation petition is filed by the defendant before the IPAB prior to the filing of the suit of infringement by the patentee, then the defendant cannot file a revocation petition by way of counterclaim to the suit of infringement again. I must clarify that this applies only when the revocation petition is pending at the time of the filing of the suit for infringement. This interpretation is based on the premise that if section 104 is to prevail over section 64, then the IPAB’s constitution would be rendered useless. Only where a revocation petition has not been filed prior to the suit for infringement, a counterclaim of revocation may be filed before the Court. Further, it would be consistent to conclude that a defendant may choose to file revocation petition before the IPAB even after a suit for infringement is filed. In other words, if IPAB is seised of the revocation petition, the High Court may deal only with the issue of infringement.

    2. However, if the revocation petition is shoved into the wheelie bin by the IPAB, i am not sure if invalidity can be raised as a counterclaim. But this may not stop the defendant from appealing from the decision of the IPAB by way of a writ. It could be possible that the writ and the suit for infringement may be consolidated and heard together since they relate to the same subject matter.

    Having said that, since the Act does not bar a revocation petition as a counterclaim, even after it has been rejected by the IPAB, i would assume that it is possible to file it. After all, the High Court can still claim to be the final adjudicator of the law.


  10. Thanks for your response Sai.

    At the end of your comment, you have stated that since there exists no statutory bar on the filing of a revocation petition as a counterclaim, it is possible to file it.

    If that be the case, and the High Court does hear the petition and declares the patent as invalid, what in your opinion will be the status of the patent. In such a case, we will have conflicting judgments from two different authorities. Whose judgment will prevail over the other especially considering the fact that here the HC is not acting in its supervisory capacity and both the authorities have exercised their original jurisdiction?

  11. Hi Aditya,
    I would assume that the power of a High Court to review the decision of a tribunal like IPAB is plenary in nature and would prevail over the decision of the IPAB. I would say the Chandra Kumar decision of the Supreme Court on Article 226 and the power of High Court over decisions of tribunals would apply in such cases.

    Come to think of it, here’s another situation that could be come about. Let’s assume that a suit for infringement is filed in a state where the High Court, unlike the Delhi High Court, does not have the pecuniary jurisdiction to act as the Court of first instance. In such a situation, it could so happen that the suit for infringement would lie before the District Court (under Section 104). And if in the same case, the revocation petition was filed before the IPAB and subsequently goes to the High Court under a writ upon rejection by the IPAB, the suit for infringement would lie before the District Court and the revocation petition before the High Court. To avoid this, we could probably amend the Act to state that whenever the High Court is seised of the revocation petition regardless of how it reaches the High Court, the suit for infringement too must be transferred to the High Court so that infringement and validity of the patent may be adjudicated together. Just a thought..


  12. oh double whammy, i answered a different question i guess 🙂 As to your question, i honestly have no idea. I am just guessing here now and I am contradicting my first opinion…since the situation you describe could lead to a legal conundrum, although there is no express statutory bar, the Court may not entertain another revocation petition in the form of a counterclaim since it would mean giving the defendant 2 opportunities before two fora of equal standing as far as the revocation petition is concerned. That said the Court may be open to reviewing IPAB’s decision under 226. This is a very tentative reply. Please let me know in case you get a more concrete reply.


  13. Hi,

    I know its very late to open this discussion again but in light of the ‘not’ recent decision of J. Bhat in the case of Alloy Wobbens v. Yogesh Mishra (blogged abt it here: where Bhat argued that in case the revocation proceedings are decided in favor of the patentee, there has to be a remedy thereafter and hence the defendant can raise same defences in the infringement suit.

    Can some one advice me on the current stand.. I was researching on some topic for my class presentation when I chanced on this discussion.. The reason for this late comment !

  14. Pranay Prabhugaunkar

    I was just going through the post and comments related to the post. One thought that comes in my mind is what would happen if third party (opponent) appeals at the High Court as well as files a post-grant oppostion (considering the opponent is person interested). Consider that the controller rejects the post grant opposition and hence the third party files an appeal with IPAB or files revocation of Patent. Can the same matter be pending with High court and IPAB at the same time? What if the IPAB uphold decision of controller based on appeal and the court reverses the decision of the controller at the same time? The situation just becomes complicated.

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