Dissecting Contrasting Rulings: Examining Madras High Court’s Dual Pronouncements on Intervention in Post-Grant Opposition Proceedings

[This post is authored by SpicyIP intern Kevin Preji. Kevin is a second-year law student at NLSIU Bangalore. His passion lies in understanding the intersection of economics and public health with intellectual property rights. His previous posts can be accessed here.]

Recently, the Madras High Court delivered two seemingly contradictory judgements (on the same day by the same judge!) regarding whether the High Court by way of judicial review under Article 226/227 could interfere with the recommendations of the Opposition Board due to improper examination of evidence or lack of due regard for procedure etc. In the case of Ashok Leyland vs Controller of Patents and Design (Ashok Leyland Case), the Court held that as long as the materials which the Opposition Board is required to examine under Rule 56(4) of the Patent Rules, 2003 are made available to it, then the extent to which the evidence are considered and appreciated by the Opposition Board is left to the Opposition Board and therefore the Court in exercise of its jurisdiction under Article 226/227 of the Constitution cannot examine the adequacy of such recommendations. On the other hand, in E.R Squibb vs Controller of Patents (Squibb Case), the Court held that the recommendations of the Opposition Board may have to be interfered with, not because it is not warranted due to it recommendatory character, but because its recommendations appear to be a product of improper and/or incomplete scrutiny of materials which it is mandated to consider under Rule 56(4). This post aims to deconstruct the apparent contradiction and delineate the extent of judicial review of the High Court under Article 226/227 with respect to the recommendations of the Opposition Board. 

The Contradiction

In the Ashok Leyland Case, the petitioners had alleged that the Opposition Board had failed to consider the evidence of both parties. The respondents countered by stating that the Opposition Board did consider their evidence but without reference to the names of those who have given the evidence along with approving just one of the five objections of the respondents, belying the allegations of mere cut pasting and lack of application of mind by the Opposition Board. What’s important to note is that the zone of disagreement is regarding the extent of consideration of the evidence by the Opposition Board and not the fact that evidence was presented before the Opposition Board. 

Meanwhile in the Squibb Case, the petitioners alleged that the Controller entertained a rejoinder filed by the respondents when Rule 59 enables only filing of the evidence answering the evidence produced by the patentee under Rule 58 as well as not taking a call on the application filed by the petitioner seeking leave of the Controller for the production of the additional evidence under Rule 60. A close scrutiny at the allegations points us to the fact that the zone of disagreement is with regards to the non-consideration of the evidence itself. This is different from the previous case which was with regards to the extent of consideration of the evidence by the Opposition Board. 

Importance of The Opposition Board’s Recommendations

The Respondents in the Ashok Leyland Case vehemently argued that the recommendations of the Opposition Board, although important, were only recommendatory in nature and the Controller still possesses the opportunity to accept or reject the recommendations. Essentially, the argument required the petitioners to argue before the Controller regarding the validity of the Opposition Board Recommendations and not the High Court under Article 226/227. After all, if the Opposition Board’s Report was merely recommendatory in nature, it would seem fruitless to file a writ petition against the same. 

The Apex Court in  Cipla Ltd vs Union Of India had placed emphasis on the importance of the Report of the Opposition Board in the decision process, stating that it is a foundational document in the decision making of the Controller. Additionally, in the context of providing copies of the recommendations to the parties, the Court also held that the passing of the order by the Controller under Section 25(4) of the Patents Act, 1970 must adhere to the principles of natural justice. With regards to the evidence considered in the recommendations, the Madras High Court in Optimus Drugs Private Limited vs Union Of India held that natural justice clearly required that the additional evidence be placed on record by both parties and should be considered by the Opposition Board, thus requiring the Opposition Board to be reconstituted. Therefore, despite the argument that the recommendations of the Opposition Board are merely recommendatory in nature, multiple courts have held that it can be a crucial document in the decision making process and have intervened in cases where they found lapses in the prescribed procedure for Opposition Board’s recommendations. This brings us to our next question – what is the extent of judicial review by the High Courts under Article 226/227 in cases concerned with recommendations of the Opposition Board?

The Extent of Judicial Review

The Supreme Court in Cipla Ltd vs Union Of India did shed light upon the significance of the Report/Recommendations of the Opposition Board in a post-grant opposition proceeding. Nevertheless, the Delhi High Court in Willowood Chemicals Private Ltd vs Assistant Controller of Patents and Designs highlights the emphasis placed by the Apex Court on the fact that it is upon the discretion of the Controller whether to rely on or waiver from the said report while pronouncing his final decision under Section 25(4) of the Act read with Rule 62(4) of the Rules. (Read more about the procedure here) The Delhi High Court finally held that the Petitioner cannot be permitted to challenge the recommendations of the Opposition Board on merits under Article 226/227 of the Indian Constitution since the Indian legal framework does not permit an appeal against the Opposition Board’s recommendation or scrutinizing the validity of the Report and declaring it unsustainable when the Act, under Section 117A(2), provides for an appeal once the Controller takes a final decision in the matter. What’s important to note is that the Court refused to interfere ‘on merits’, given that the controller could take the final decision and an appeal lies to the same. In Cipla Ltd vs Union Of India and Optimus Drugs Private Limited vs Union Of India, the Court’s interference wasn’t related to the merits of the Opposition Board Recommendations. The Court in Panacea Biotec Ltd. v. Union of India clearly makes the same distinction, stating that it would only interfere when there exists a violation of natural justice and not on the grounds of merit. 

As per Rule 56, the statutory duty of the Opposition Board broadly points towards considering materials that are filed by the parties under Rules 57 to 60 as well as providing its recommendations post the examination of the materials provided to it. In the case of Pharmacyclics Llc vs Union Of India, the Court delineates the list of materials that are statutorily mandated to be considered by the Opposition Board (Aparajita talks more about the procedure here). The Squibb Case depicts a clear violation of the same where the Controller failed to reject the re-joinder despite the fact that there exists no procedural space for such filing as well as failing to produce the further evidence filed under Rule 60 to the Opposition Board. 

A closer scrutiny of the Ashok Leyland Case depicts that the dispute lied in extent of reliance on the materials. Since this isn’t a natural law violation on account of departure from procedure, there lies no space for interference by the High Court by way of its powers of Judicial Review under Article 226/227. The Petitioners would have an opportunity to bring their contentions to light before the Controller who may recognise the inadequacy of the report in thoroughly examining the evidence presented before them as well as an appeal against the Controller under Section 117A(2).  On the other hand, a closer examination of the Squibb Case displays a clear natural law violation on account of evidence wrongly being considered (in the form of rejoinder) as well as evidence (leave for which was filed under Rule 60) not forwarded to the Opposition Board and thus warrants interference by the High Court.

Conclusion

While the two orders might seem contradictory on the face of it, a closer scrutiny displays the difference in the violations alleged against the Opposition Board. Courts in India have recognised the importance of the Opposition Board Recommendations and interfere before it even reaches the Controller for the final decision on account of natural law violations such as non-consideration of evidence etc. On the other hand, this distinction has to be made clear by Courts in their judgements, emphasising that the Court would not interfere with the Opposition Board Recommendations on merits since the petitioners have opportunities to present their arguments before the Controller as well as through an appeal under Section 117(A)(2) of the Patent Act.