The Sugen v. Cipla post-grant opposition: The lost art of legal writing in the Patent Office

As Madhulika earlier blogged, the Patent Office after a circus of appeals filed by Sugen, once again revoked Sugen’s patent no. 2092951 on the grounds that it would be obvious, to a person skilled in the art, in light of the prior art produced by the opponent. Be that as it may, I would like to comment on the manner in which the opinion was written by the Controller and the deference or lack thereof to the precedents of higher judicial forums like the IPAB or the High Courts. The decision itself can be accessed over here.
(i) Section 8 – Non-disclosure of foreign patent filings: One of the main grounds of opposition raised by Cipla was the violation the requirements of Section 8 by Sugen since the latter had not filed all the corresponding foreign patent documents with the Indian Patent Office. Cipla produced a long list of documents which had not been submitted to the Patent Office under Section 8 of the Patent Act and the Patentee argued against this proposition by relying on an interpretation of various precedents of the IPAB and the High Courts.
The Controller ultimately disposes this issue in favour of the patentee in merely 5 lines which I reproduce as follows “I opine that the objection of the opponent that patentee have not complied with the requirement of Section 8 is not agreeable. I observe that the patentee has fulfilled its duty to furnish all the information’s required u/s 8. The details cited by the opponent are from the WIPO website and espacenet which is freely available to the controller and examiner. Therefore the ground of section 8 is not maintainable.”
The first problem with this conclusion is that the Controller does not cite any authority or precedent to back up his/her conclusion. The only difference between creative writing and legal writing is that the latter requires to be backed by authority not personal opinions or imagination. When both sides have discussed precedents on Section 8, the Controller has no choice but to provide reasons on why those precedents are either relevant or not. In this case, there were several relevant precedents like the Chemtura decision, the Tata Chemicals decision. Yet, the Controller simply ignores all precedents.
The second problem with this conclusion is the fact that the Controller came to the wrong conclusion with regard to Section 8. The IPAB decision in the Tata Chemicals case was quite clear on the fact that whether or not the examiner had independent access to the document was irrelevant since the test under Section 8 was whether or not the patentee had filed the document with the patent office. The Controller has no option but to follow the precedents of the IPAB, which is a superior judicial forum.
(ii) American, European or Indian law?
In the final analysis, on obviousness and lack of inventive step, the Controller cites three authorities: (i) A European judgment (ii) an American judgment and a (iii) P. Narayana on Patent Law. Once again, why is there no reference to the recent precedents of the IPAB? The Indian Patent Office is not bound by European or American case law but it is bound by the decisions of the IPAB. At the most European and American case-law can only have persuasive value on the Indian Patent Office. More importantly, should the Patent Office actually be citing American and European case law indiscriminately, when the concepts of obviousness are different in both jurisdictions?
Also please note that the Controller does not cite a single precedent of either the IPAB or any other Indian forum. How can this be? After 6 years of hearing patent cases, the IPAB surely has provided the patent office with at least a few good precedents on the point.
Why does the Controller have this ‘devil-may-care’ attitude about the precedents laid down by the IPAB?
(iii) Inventive step and the apparent irrelevance of ‘commercial success’: In a decision, where the Controller revoked a patent for the lack of an inventive step, one would actually expected the Controller to make reference to the definition of ‘inventive step’ in Section 2(1)(j) of the Patents Act, 1970. I take the liberty of reproducing the provision as following “”inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”.
Please note the use of the phrase “economic significance” as a standalone ground to establish the inventive step in an invention. Yet, the Controller, without even referring to the wording of Section 2(1)(j) comes to the conclusion that “I observe that when as the instant claims are clearly obvious to a skilled artisan, so, the commercial success of the instant product (Sunitinib) as submitted by the patentee cannot be considered as an evidence of a patentable invention.” The Controller does cite Narayan on Patent Law to establish this point but an excerpt from Narayan is of no relevance unless it is backed by judicial precedent.
Conclusion: Controllers need basic training in legal writing
This is not the first time that we have pointed out to the extremely poor quality of decisions coming from the Patent Office. Shamnad and Rajiv have made similar points on this blog over here. The problem thus is not with this particular Controller but the entire IPO. These officers, performing quasi-judicial need specific workshops or classes in legal writing. As I had mentioned in one of my earlier posts, “Legal writing and reasoning are not the toughest of skills to acquire but they are still skills that are required to be taught and learnt.” The Controller General should seriously think of organizing some kind of training for his officers with either a University or a Judicial Academy to ensure we have orders that are better reasoned.

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9 thoughts on “The Sugen v. Cipla post-grant opposition: The lost art of legal writing in the Patent Office”

  1. I want to ask prasanth one thing. Controller himself is a quasi-judicial official he shall apply his mind and give judgment he need not always cite the higher courts judgments or case laws. Controller had acted within his limit. And if his application of section is wrong you may bring out the logic where he had went wrong and how. instead generalizing the judgment will degrade the Controller.

  2. Thats too harsh Prashant

    avoid denouncing controllers (publicly) for lack of legal drafting skills, as they do not belong to legal background they are bound to make such errors.

    But you should respect the position of Controllers and avoid such posts

  3. I have nothing against the Controllers of the Patent Office. Like I said in my post, it is not the fault of the Controllers but the Patent Office which is not equipping them with the legal skills required to adjudicate complex contentious patent litigation.


  4. @Kumar – Sorry – but the Controller is bound as a quasi-judicial body/authority to follow orders of superior fora such as the IPAB and the High Court – even if they disagree. Not doing so, for whatever reason, is an act of judicial indiscipline. In fact, even if either party has not cited the relevant precedent of the IPAB or any High Court, the Controller is expected to be aware of these and issue directions according to such precedents.

    Whether we like it or not, precedents are an inextricable part of our judicial system – and Controller’s do not really have untrammeled powers to “think” – and not follow directions/orders of superior fora.

    @Anon – Would agree with Prashant – it is high time greater emphasis was given to enhancing legal drafting skills for entrants to the Patent Office (and indeed even to attorneys).

    Secondly, it is a little difficult to believe that Controller’s are unaware of either the Chemtura or the Tata Chemicals decisions. They certainly seem to be very aware of the LG Chemicals decision on divisional applications.

    I do not think the objective of Prashant’s post was to denigrate any individual Controller – but was more of a statement of regret at the state of the system.


    Occasionally Anonymous

  5. Before going for such advanced trainings, I think they should first be taught “how to pick phones and reply to them” I have been trying to reach all the four patent offices since last 3 days and have not been able to establish contact with a single person despite trying whole day. Either “madam” or “sir” is on leave or is not at desk..or they just don’t pick up phones. Indian patent office and also other indian governmental offices are disappointing. These buggers need to be told that they are going to deal with some professionals and they are expected to behave as one too not like ponchy sarkari babus idling away their time.

  6. I am one of the “buggers” ! For my academic interest I seek your guidance for inventive step. Which decision of IPAB can be used as a standard like Windsurfing (pozzoli),Graham or Problem Solution pl. Once again I am sincerely eager to know.

  7. Folks:

    In all these diatribes, I think we’re losing out the larger message that Prashant intended to convey. There is a sheer dearth of training programmes for patent examiners and controllers and we need to find ways to redress this. Unless we do this, there is no point in pointing fingers at the quality of patent office decisions and their writing skills. Could the scope of the National Judicial Academy (NJA) be expanded to include training for quasi judicial authorities (such as patent officials) as well? This might be a decent starting point. Of course, there is only so much that can be taught. The rest has to come from learning on the job….which is one of the reasons I’m a huge fan of India’s opposition machinery. Really gives a great opportunity for training patent officials, given that they are subject to an intense adversarial process. The CG must find ways of having more examiners participate in the opposition proceedings and be privy to the adversarial process and the various arguments marshalled by counsels.

  8. Could not resist my little two-bit:

    for Occasionally [email protected] – would tend to agree

    for [email protected] PM – the sentiment is understandable – the language could perhaps have been moderated a bit!

    For [email protected] PM – please see Ramesh Nana Mhatre vs. Airmaster. This is just one example of the IPAB setting forth guidelines on what constitutes obviousness, even if it adopts and adapts Windsurfing.

    Even though it is in the context of a mechanical invention, the basic principles would apply to all technology fields. There are several other decisions of both the IPAB, various High Courts, and of the Supreme Court. Considering these, Narayanan should ideally be the last resort.



  9. @Nataraj

    I quote para 30 from Armster, after quoting from Windsurfing, IPAB simply says:
    “Here the inventive concept was not obvious to the normally skilled man, since what was there in the matter cited did not anticipate the alleged invention and even what was known then when given to a skilled man the differences would not have been obvious”. I am confused ! It was not clear to me how Windsurfing was adopted or adapted. Perhaps we should read the decisions of UK courts to see how the Windsurfing is applied, i.e., how to don the mantle of the skilled person, how to impute the CGK upon him and how without the benefit of the knowledge of the invention the skilled person can determine the question of obviousness.I have not seen such structured approach in any decisions so far. One thing we must bear in mind is that the determination of Windsurfing is contingent upon what is “obvious”, and Windsurfing does not reply to that. Later on many indices were developed by UK courts. Nataraj refers to decisions of High Courts and of SC. So far as I know Hon’ble SC discussed the matter in Biswanath Prasad Rahesyam case (in Coromondal Intag ? perhaps no), but from Radhesyam also we did not get any structured approach.
    I shall appreciate if Nataraj gives some citation from High Courts in respect of methodology of inventive step applied properly in any specific case. A mere reference of foreign case law will not suffice.

    I could not understand reservation against Narayanan. If I am not wrong, Hon’ble Delhi HC quoted from Naryanan recently, in Roche vs Cipla

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