In a recent decision, the Delhi High Court gave clarity about how amended claims during opposition proceedings have to be dealt with by the Controller of Patents. In the case, four claim sets were filed by Novartis, the Patent Applicant, from the PCT filing stage, and the opponent in the case, NATCO, filed a pre-grant representation based on a pre-final claim set. Later, the claims were amended by the Patent Applicant, and a final set was submitted along with expert affidavits. However, the opponent in the case was not given an opportunity to respond to the final claim set and cross-examine the experts. Aggrieved, the opponent filed a writ before the Delhi High Court seeking an opportunity to respond to the final claim set, and to cross-examine/respond to the expert witnesses.
After reviewing the facts, the High Court ordered as follows:
“21. The Applicant justifies filing of the expert’s affidavit on the ground that the Opponent had filed certain additional documents. Be that as it may, the fact is that three substantive affidavits have been filed by the Applicant along with an amended set of claims on 6th June, 2021. Rulings on the amendment are yet to be issued by the Patent Office. Thus, in the opinion of the Court, an opportunity ought to be granted to the Opponent to rebut the evidence of the Applicant. The Opponent- Natco has agreed to not insist on its prayer seeking cross examination of Applicant’s witnesses- Dr. Michael Motto, Dr. Allan S. Myerson and Dr. Gauri Billa, if it is given an opportunity to file affidavits of its own experts in rebuttal. The said arrangement is not objected to by the Applicant. In the above background, and in order to expedite the decision on the application and the pre-grant opposition, the following directions are issued:
i) the Opponent is permitted to file affidavits of its own experts in rebuttal to the three expert affidavits filed by the Applicant, within a period of four weeks.
ii) If any documents are filed by the Opponent along with the said expert affidavits, the same shall be dealt with by the Applicant by way of additional written submissions within one week thereafter, without any further documents being filed by the Applicant.
iii) The Opponent is also permitted to file its additional written submissions within two weeks after filing of additional written submissions by the Applicant. The written submissions filed by both the parties shall be considered by the Controller for final decision in the pre-grant opposition;
iv) Parties shall appear before the Patent Office on 12th September, 2022 at 2:30 p.m. Both the Applicant and the Opponent shall be given one hour each to make their submissions.
v) The situation as it exists today is that there has been no ruling on any of the amendments which have been filed by the Applicant. Thus, before the commencement of oral hearing in the pre-grant opposition, the Controller shall communicate orally to both the parties as to which of the amendments are being allowed and which would be the final set of claims which is being considered for grant.
vi) On the said date, after hearing the parties for one hour each, the final decision on the application/pre-grant opposition shall be given by the Patent Office on or before 15th November, 2022. The final decision rendered shall be communicated to all the parties and shall also be uploaded on the website of the Patent Office;
vii) It is clarified that the hearing of any other opposition proceeding which has already concluded is not being re-opened by this Court;
22. The observations made in respect of amendments in the present order shall not be applicable to amendments directed by the Controller under Section 15 of the Act.”
Some important Paras of the judgment outlining principles to be followed in opposition proceedings are as follows:
“16. Heard ld. counsels for the parties. The chronology of events, in the present writ, clearly shows that the proceedings in the patent application and the pre-grant opposition have been delayed substantially. Blame for the delay cannot be attributed to any one factor or reason, but in the opinion of this Court both parties are to blame. On the one hand, the applicant continues to amend its claims from time to time over a period of five years between 2016 to 2021. On the other hand, the patent application has been exposed to multiple oppositions by several parties due to delay in the examination process. In the opinion of this Court, there ought to be a systematic manner in which proceedings in pre-grant oppositions are conducted. Repeated filing of pre-grant oppositions due to non-existence of any time limits for filing a pre grant opposition and delay in adjudication of pre-grant opposition, usually results in further pre-grant oppositions being filed leading to further delays in grant of patent. The patent application has the chance of being caught up in the swirl of pre-grant oppositions by Opponents. Amendments by the Applicant who gets wiser with each objection being taken, leads to further delays.
17. It is the settled position in law, as held in M/s UCB Farchim SA v. M/s Cipla Ltd. [W.P.(C) No. 332/2010 order dated 08th February, 2010] that a pre-grant opposition proceeding is in aid of the examination of the patent application. The relevant part of this judgment is set out below:
“Distinction between pre-grant and post-grant opposition
13. In the first instance a distinction has to be drawn between a pre-grant opposition and a post-grant opposition. While a pre-grant opposition can be filed under Section 25 (1) of the Patents Act at any time after the publication of the patent application but before the grant of a patent, a post-grant opposition under Section 25(2) of the Patents Act has to be filed before the expiry of one year from the date of the publication of the grant of patent. A second significant difference, after the amendment of 2005, is that a pre- grant opposition can be filed by ‘any person’ whereas a post-grant opposition under Section 25(2) can be filed only by ‘any person interested’. It may be noticed that the application for revocation of a patent in terms of Section 64 of the Patents Act can also to be filed only by ‘any person interested’. In other words, the post-grant opposition and the application for revocation cannot be filed by just about any person who is not shown to be a person who is ‘interested’. A third significant difference is that the representation at the stage of pre-grant is considered by the Controller himself. Rule 55 of the Patents Rules requires the Controller to consider the ‘statement and evidence by the applicant’ and thereafter either refuse to grant the patent or require the complete specification to be amended to his satisfaction. Of course, in that event notice will be given to the applicant for grant of patent who can file his reply and evidence. This Court finds merit in the contention that the pre-grant opposition is in fact ‘in aid of the examination’ of the patent application by the Controller. The procedure is however different aspect as far as the post-grant opposition is concerned. There in terms of Section 25 (3), the Controller has to constitute an Opposition Board consisting of such officers as he may determine and refer to such Opposition Board the notice of opposition along with other documents for its examination and recommendations. After receiving the recommendations of the Opposition Board, the Controller gives the patentee and the opponent an opportunity of being heard. The Controller then takes a decision to maintain, amend or revoke the patent. The fourth major difference between the pre-grant and the post-grant opposition is that while in terms of Section 117 A an appeal to the IPAB is maintainable against the order of the Controller in a post-grant opposition under Section 25(4) of the Patents Act, an appeal has not been expressly been made available against an order made under Section 25(1) of the Patents Act.”
18. The language used in Section 25(1) of the Act is in contrast with the language used in Section 25(2) of the Act. A pre-grant opposition is a representation by way of opposition’ in writing by “any person”. Whereas, Section 25(2) of the Act is a `notice of opposition’ by “any person interested”. A Representation under Section 25(1) of the Act does not strictly follow the norms laid down under the Code of Civil Procedure. However, since Rule 55(4) of the Rules contemplates filing a reply Signature Not Verified Digitally Signed By:Devanshu Signing Date:18.07.2022 21:35:20 statement and evidence, if the applicant wishes to, it can be said that the proceedings is adjudicatory as the same is adversarial in nature.
19. The proceeding in a pre-grant opposition and simultaneous examination of a patent application, however, cannot also result in a situation where the pre grant opponent is kept in dark about the developments taking place in the examination process. For example, when amendments are filed by the Applicant, an immediate decision ought to be taken on allowing or disallowing the amendment so that there is transparency and clarity as to what are the claims being considered by the Controller. A short and brief order should be passed in respect of the amendments which should be uploaded on the website of the Patent Office so that everyone concerned would know the decision on the amendment. In any event, if an amendment is being carried out during the pendency of a pre-grant opposition, the ruling on the amendment ought to be sent to the pre-grant opponent as well. Sometime amendments are carried out during the course of hearings across the table as well, when the patent agent of the Applicant attends the hearing before the Controller. In such a scenario, the Controller ought to examine the said amendments and convey the decision to the Applicant, and if the Opponent is present, even to the Opponent.”
Citation: Natco Pharma Limited vs Union Of India & Ors., Decided by Delhi High Court on 12 July, 2022, available at: https://indiankanoon.org/doc/58391198/, visited on 21st July, 2022.
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