Summary
In the case of Saathi, Inc. v. Office of the Controller General of Patents, Designs and Trade Marks and Anr., the Bombay High Court set aside an order revoking Patent No. IN365526 in post grant opposition proceedings. The Court found that the Controller had passed an unreasoned order, failed to explain the departure from the Opposition Board’s recommendation, did not deal with the opponent’s locus as a person interested, and relied on documents that were not supported by an affidavit of evidence. The decision dealt with four procedural requirements that went to the validity and maintainability of post grant opposition proceedings under the Patents Act, 1970 and the Patents Rules, 2003.
Background
Post Grant Patent Revocation Proceedings
Saathi, Inc. held Indian Patent No. IN365526 relating to an invention titled “Absorbent Article Having Natural Fibres.” A post grant opposition was filed against the patent under Section 25(2) of the Patents Act, 1970.
The Opposition Board constituted in the proceedings recommended rejection of the opposition. The Controller, however, allowed the opposition and revoked the patent by an order dated 17 July 2025.
Saathi challenged that decision before the Bombay High Court under Section 117A of the Patents Act. The petition raised four principal objections to the manner in which the post grant opposition had been decided.
The respondents did not appear before the High Court despite service. The Court therefore considered the petitioner’s submissions, the material on record, and the authorities cited before deciding the petition.
Questions Before the Court
- Whether an order revoking a patent in post grant opposition proceedings could stand when it did not contain independent reasoning dealing with the rival submissions, prior art, claims and material on record.
- Whether the Controller could depart from the recommendation of the Opposition Board without explaining the reasons for doing so.
- Whether an opposition under Section 25(2) could proceed without deciding whether the opponent qualified as a “person interested” under Section 2(1)(t) of the Patents Act.
- Whether documents annexed to a post grant opposition, without an affidavit of evidence, could qualify as evidence under Section 79 of the Patents Act.
Arguments Presented By the Parties
The petitioner challenged the revocation on four grounds:
- Absence of reasons: The petitioner argued that the Controller had substantially reproduced the opponent’s submissions and revoked the patent without undertaking an independent analysis. Though the order repeatedly used expressions referring to “findings,” it did not contain findings supporting the conclusions reached.
- Opposition Board recommendation: The Opposition Board had recommended rejection of the opposition. The petitioner argued that Rule 62(5) required the Controller to consider that recommendation and that a decision taking a contrary position required reasons explaining the disagreement.
- Locus of the opponent: The petitioner had specifically objected that the opponent, who claimed to be a medical practitioner, had not established that the opponent was a “person interested” within Section 2(1)(t). According to the petitioner, this issue concerned the very maintainability of the post grant opposition and had to be decided at the threshold.
- Absence of affidavit evidence: The petitioner submitted that the opponent had merely annexed documents to the opposition without filing an affidavit of evidence. It argued that Section 79 required evidence to be given by affidavit and that unsupported documents could not constitute evidence.
The respondents did not appear before the High Court despite service and therefore did not advance arguments before it.
Court’s Analysis
Revocation Required Independent Reasons
The Court first considered the manner in which the Controller had dealt with the merits of the opposition. It found that the impugned order was wholly unreasoned.
According to the Court, the Controller had largely reproduced portions of the opponent’s submissions and then proceeded to revoke the patent without independently analysing the rival contentions or the material on record. The conclusions were therefore not supported by discernible findings.
The Court also took into account the nature of post grant opposition proceedings. The patent had already passed through substantive examination and multiple rounds of scrutiny and amendment before grant. In those circumstances, an order taking away the granted patent had to engage with the competing submissions, prior art, amended claims and other material before the Controller.
The impugned order did not undertake that exercise. The Court consequently found that it failed the requirement of a reasoned decision, particularly when valuable patent rights were being taken away and the affected party had a statutory right of appeal.
Opposition Board Recommendation Could Not Simply Be Ignored
The Court next dealt with Rule 62(5) of the Patents Rules.
The Opposition Board had recommended that the opposition be rejected, while the Controller ultimately allowed it. The Court made it clear that the Opposition Board’s recommendation did not bind the Controller. The Controller could disagree with it.
However, the Controller had a duty to consider the recommendation. When the Controller reached a conclusion different from that of the Opposition Board, the decision had to provide reasons or at least an indication explaining why the recommendation was not accepted.
Without that requirement, the statutory process of constituting an Opposition Board and requiring consideration of its recommendation would lose its purpose.
The Court also referred to the internal contradiction in the impugned order. Though the Controller stated that the Opposition Board recommendation was important, the Controller allowed the opposition despite the Board having recommended its rejection. The Court treated this contradiction as demonstrating non application of mind.
Documents Without Affidavit Did Not Qualify as Evidence
The Court also accepted the objection relating to Section 79 of the Patents Act.
The record showed that the opponent had annexed documents to the opposition but had not filed an affidavit of evidence supporting them.
The Court stated that such documents would not qualify as evidence under Section 79. It accepted the petitioner’s reliance on Akebia Therapeutics Inc. v. Controller General of Patents on this issue.
Locus Had to Be Decided at the Threshold
Finally, the Court dealt with the opponent’s locus.
Section 25(2) permits a post grant opposition to be instituted by a “person interested.” The petitioner had specifically challenged whether the opponent, who claimed to be a medical practitioner, satisfied that requirement or had any nexus with the patent relating to an absorbent article having natural fibres.
The Controller had not decided that objection.
The Court stated that the objection went to the root of maintainability. The Controller was therefore required to decide the issue at the threshold rather than leave it unanswered while deciding the opposition on merits.
Findings
The findings of the Court are as follows:
- The order revoking the patent was unreasoned and did not disclose independent analysis supporting revocation.
- A post grant revocation order had to engage with the rival submissions, prior art, amended claims and material on record, particularly because the patent had already undergone substantive examination before grant.
- The Opposition Board’s recommendation was not binding on the Controller, but Rule 62(5) required the Controller to consider it.
- If the Controller disagreed with the Opposition Board, reasons or indications explaining the disagreement had to be provided.
- The contradictions concerning the Opposition Board recommendation demonstrated non application of mind and were sufficient to vitiate the order.
- Documents merely annexed to the opposition without an affidavit of evidence did not qualify as evidence under Section 79.
- The question whether the opponent was a “person interested” under Section 2(1)(t) concerned maintainability and had to be decided at the threshold.
- The petition was allowed in terms of prayer clauses (a) and (b), with no order as to costs.
Relevant Paras
Paragraph 17, Points A to H
A. A perusal of the Impugned Order leaves little doubt that the same is wholly unreasoned. Respondent No. 1 has largely reproduced portions of the submissions advanced by Respondent No. 2 and thereafter proceeded to revoke the Patent without undertaking any independent analysis of the rival contentions or the material on record. Beyond recording conclusions, the Impugned Order discloses no independent reasoning to support the finding that the Patent was liable to be revoked under Section 25(2)(e) of the Act.
B. Although the Impugned Order repeatedly states “therefore, in view of the above findings”, there are, in fact, no discernible findings that precede or support such conclusions. In my view, the Impugned Order is therefore contrary to the well-settled requirement that an order must, after due consideration of the submissions made and the material on record, furnish reasons for the conclusion arrived at, particularly where valuable rights are affected and the affected party has a statutory right of appeal.
C. Also, the fact that the proceedings in question were in respect of a post-grant opposition under Section 25(2) of the Act is of significance since the Patent had already been granted after substantive examination and, as the record indicates, had undergone multiple rounds of scrutiny and amendment before grant. In such circumstances, any order revoking the Patent was necessarily required to engage with the rival contentions, the prior art relied upon, the amended claims and the material available on record. The Impugned Order, as noted above, fails to do so.
D. Hence, in the context of what has been noted in (A) to (C) above, the Petitioner's reliance on the decisions in Saurabh Arora v. Deputy Controller of Patents & Anr., Medipack Global Ventures (P) Ltd. v. Assistant Controller of Patents & Designs and Dolby International AB v. Controller of Patents & Designs is therefore entirely apposite.
E. Equally significant is the fact that the Opposition Board had recommended rejection of the Opposition, despite which Respondent No. 1 proceeded to allow the opposition without furnishing any reasons for disagreeing with the findings of the Opposition Board. In doing so, Respondent No. 1 has not acted in conformity with Rule 62(5) of the Rules, which expressly provides that the Controller shall decide the opposition after considering the recommendations of the Opposition Board. While the Controller is undoubtedly not bound by such recommendations, the Controller is duty bound to consider them. Hence, in cases where the Controller does not accept the recommendations of the Opposition Board, it is incumbent upon the Controller to give some reasons and/or indications as to why the recommendations of the Opposition Board are not being accepted. To hold otherwise would effectively mean that the Controller can simply ignore the recommendations of the Opposition Board, which would really defeat the very objective of the provision for the constitution of an Opposition Board and also render the requirement of consideration under Rule 62(5) largely otiose.
F. Also, and crucially, Respondent No. 1 has in the Impugned Order observed that the “Opposition Board recommendation is also important” and yet proceeded to allow the Opposition notwithstanding the Board's recommendation to reject it. To my mind, such contradictions in the Impugned Order, on the face of the record, reflect a complete non-application of mind on the part of Respondent No. 1, which is sufficient to vitiate the Impugned Order. The Petitioner's reliance on Pharmacyclics, LLC v. Controller General of Patents is therefore well-founded.
G. I also find merit in the contention that the Opposition Proceedings stand on the ground that Respondent No. 2 had not filed any Affidavit of Evidence as mandated under Section 79 of the Act. The record reflects that Respondent No. 2 had merely annexed documents to the opposition, which would not qualify as evidence under the provisions of Section 79. In this context, the Petitioner's reliance upon the decision of the Delhi High Court in Akebia Therapeutics Inc. v. Controller General of Patents would squarely apply.
H. Equally, failure to consider the aspect of locus in the facts of the present case would also be sufficient to vitiate the Impugned Order. Section 25(2) permits the institution of a post-grant opposition only by a “person interested” within the meaning of Section 2(1)(t) of the Act. The Petitioner had specifically contended, both in its Reply and in its post-hearing written submissions, that Respondent No. 2, who claimed to be a medical practitioner, had failed to demonstrate how Respondent No. 2 satisfied this requirement or established any nexus whatsoever with the Patent in question, namely “Absorbent Article Having Natural Fibres”. Despite this specific objection, which went to the root of the maintainability of the Opposition, the Impugned Order is entirely silent on whether Respondent No. 2 possessed the requisite locus to institute these proceedings. In my view, Respondent No. 1 was required to decide this issue at the threshold, as it concerned the very maintainability of the Opposition. The reliance placed by the Petitioner upon the decision of the Hon'ble Supreme Court in Aloys Wobben v. Yogesh Mehra & Ors. is therefore well founded and would squarely apply.
Note: Point G above has been retained as extracted from the supplied judgment, including the expression “Opposition Proceedings stand on the ground”. No correction or reconstruction has been made to that sentence.
Case Citation
Saathi Inc. v. Office of the Controller General of Patents, Designs & Trade Marks, 2026:BHC-OS:13304 (Bom. HC June 15, 2026), https://indiankanoon.org/doc/135608085/ (last visited Aug. 8, 2026).
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog based on user inputs and prompts.