INTRODUCTION
Recently, in
BACKGROUND, FACTS AND ARGUMENTS SUBMITTED (in Writ Petition)
In the instant case, a patent vide Patent No. IN387429 was granted to
The appellant prayed to quash the report of the Board and requested the IPD to direct Respondent No. 1 to reconstitute a fresh Opposition Board as the Board failed to consider the evidence submitted by both parties while preparing the report and it merely cut-copied-pasted the portions from the written submissions and the reply statement of the appellant and the Respondent No. 2 respectively. The appellant relied on
However, Respondent No. 2 argued that the Board has duly considered the evidence without making any such reference in the report, as out of five grounds only one ground was considered by the Board in the report that deprives any possibility of non-applicability of mind in preparation of the report. Further, Respondent No. 2 also argued that the report of the Board is not binding on Respondent No. 1 since it has only a recommendatory value.
The IPD dismissed the petition by stating that due to the recommendatory nature of the report, the recommendations of the Opposition Board is not binding on the Controller.3 However, the IPD also held that if the Controller during the final hearing found that the Opposition Board had failed to consider the evidence of the experts, then the Controller can reconstitute the Opposition Board to present fresh recommendations by considering the evidence document. Aggrieved by the dismissal of the writ petition, the appellant filed an appeal to the Division Bench of Hon'ble
COURT DECISION
After considering all the facts, findings, and arguments of the appellant and the respondents submitted during the hearing before the IPD, the Division Bench set aside the order of the IPD. The Division Bench directed Respondent No. 1 to reconstitute the Board and the Board shall consider the evidence and documents as mentioned in Rule 56(4) while conducting a de novo examination to submit afresh recommendations in accordance with Sections 25(2) & 25(3) of the Patents Act by
The Division Bench observed that the procedure adopted by the Opposition Board in preparing the report and the correctness thereof cannot be left to the Controller in the final hearing stage. The Court mentioned that the Board must submit recommendations with reasons on each ground after examining and evaluating the documents including evidence under Rule 56(4) of the Patents Rules. It was held that the recommendations of the Board are important in deciding the validity of the patent document on the grounds raised by the opponent. Therefore, it is desirable to reconstitute the Board to provide fresh recommendations by considering the evidence documents submitted by parties.
However, the Bench denied any judicial review of the procedure adopted by the Opposition Board, and held that "We make it clear that the impugned order is set aside for the purpose of facilitating de novo drill by the Board to be reconstituted by said Controller and on merits we have expressed only one view and that view pertains to paragraph 5 of the impugned order wherein we have said that this Court is not denuded of constitutional powers of judicial review qua recommendation of said Board or the procedure to be followed by said Board".
ANALYSIS
Section 25(3) requires the Controller to constitute an Opposition Board and refer notice of opposition and documents (as submitted by patentee and opponent) to the
The Opposition Board examines the notice of opposition on the grounds mentioned therein based on the documents including evidence submitted by the patentee and the opponent(s). The participating parties to the opposition proceedings rely on evidence to support or oppose the challenges raised against the grant of a patent under Section 25(2) of the Patents Act. It is understood that the post-grant opposition provides an opportunity to a person interested whose rights may get affected due to the grant of a patent, and it allows him to bring any residual issue(s) that were overlooked by the granting authority during the prosecution process.
What will happen if the grant of a patent by an official authority fully crystallizes a patentee's rights against the whole world without thoroughly reviewing the documents submitted by the opponent and the patentee during the opposition proceedings? As Sir
Footnotes
1. 2024:MHC:1768 (W.A. No.1181 of 2024), Order passed by Division Bench of
2. AIRONLINE 2012 SC 363
3. (W.P.(IPD) No.1 of 2024) Order passed by
4. Page 80, Report on the revision of the Patents Law, September, 1959 (Ayyangar Committee report on Patents), Accessible at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/1959-_Justice_N_R_Ayyangar_committee_report.pdf
5. AIR 2014 SUPREME COURT 2210
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