IPAB, Pre-Grant Oppositions and the Onset of a "Heard" Mentality

A wonderful order by the Madras High Court affirming the UCB vs Farchim decision that pre-grant rejections can be appealed–as the rejection is effectively made under section 15 of the Indian Patents Act. However, the court goes further and holds that the winning pre-grant opponent must necessarily be “heard” in any appeal before the IPAB.

A well reasoned and succinct judgment–and most importantly, a “fair” one.

The facts of the case are also interesting, since it is one of the few cases dealing with software patents/business methods. Yahooo Inc filed a patent for “System and method for influencing a position on a search result list generated by a computer network search engine” (this was amended to “A method of operating a computer network search apparatus”).

For those interested, the International Application No.PCT/US00/14753 entered the National Phase as National Phase Application No.IN/PCT/2001/01652/CHE.

Given that the Indian patents act excludes software and business method patents, this was naturally rejected by the Controller. The IPAB however refused to hear the appeal, stating that there was no statutory provision for appeal from a pre-grant order.

The court now mandates the IPAB to hear the appeal as under:

“The writ petition is allowed by setting aside the order of the respondent No.1 [IPAB] and consequentially a direction is issued to the respondent No.1 to number the appeal and decide the same on merits and in accordance with law, within a period of three months, from the date of receipt of a copy of this order, after affording an opportunity to the respondent No.4 [rediff] and by considering its opposition. No costs.

….. we are of the opinion that the respondent No.4 [rediff] will have to be heard in the appeal filed by the petitioner. Further if the appeal is allowed without hearing the respondent No.4 then the very purpose of the enactment of Section 24(1) of the Act which provides for Pre-grant Opposition itself would become redundant. Therefore, we hold that the respondent No.4 has got a legal right to be heard in the appeal filed by the petitioner.”

Congratulations to all counsels involved, as it was a victory for almost all of them, barring the government counsel representing the IPAB.

Feroz Ali and Arvind Datar represented Yahoo Inc and convinced the court that they had a right to appeal their clients’ patent rejection to the IPAB.

Sunita Sreedharan of SKS Law Associates who appeared on behalf of the winning respondent, Rediff, persuaded the court that pre-grant opponents (in this case, her client Rediff) must be heard in any appeal before the IPAB.

Patent jurisprudence is certainly maturing in India…thanks to all these counsels who are helping push the frontiers of the law.