In a recent decision, the Delhi High Court has reiterated the principles to be followed with respect to patent oppositions, and has once again explained the context, approach, and pace of such proceedings. The Court has reiterated the principles that have to be followed by the Opposition Board, Patent Office, and parties in opposition proceedings based on principles laid down in the Pharmacyclics case. While doing so, the Court emphasized the need to expedite post-grant opposition proceedings, and the need for the patent office to abide by the provisions of the Patents Act and Rules.

Some important principles laid down by the Court are as follows:

  1. Post-Grant opposition proceedings are adversarial proceedings, which require the patent office to strictly comply with principles of natural justice with respect to consideration of evidence, sharing of reports, and hearings.
  2. Parties have to submit evidence within timelines provided under the Patent Rules, and cannot delay proceedings or seek adjournments based on additional evidence.
  3. The Opposition Board and the Patent Office have to strictly follow the timelines, and have to stick to the evidence filed by the parties while arriving at their decisions/recommendations in compliance with applicable rules.
  4. The recommendations of the Opposition Board are only persuasive, but crucial in post-grant opposition proceedings. They must be shared with the parties before a hearing is scheduled. The names of members of the Opposition Board must be provided on the cover page and signature pages clearly.
  5. The Opposition Board has to give its recommendations based only on the evidence filed by the parties, and parties can file additional evidence only with the leave of the Controller hearing the proceeding. However, this is not applicable to publications, which may be filed five (5) days before the date of hearing.
  6. The Patent Office has to give a comprehensive decision based on pleadings/evidence of parties, applications filed by the parties, and recommendations of the Opposition Board. The decision may be to grant the patent, amend the patent, or revoke the patent.
  7. The recommendations of the Opposition Board, and the decision of the Controller of Patents must only be based on grounds raised by the parties and evidence submitted by them.

Para 31 of the case, which crystallizes evidence related principles reads as follows:

“i. The Opponent and the Patentee have adequate freedom to file their initial pleadings and evidence by relying upon all the documents and expert testimonies that they wish to;
ii. The Opponent’s rejoinder in Rule 59 ought to be strictly confined to the Patentee’s evidence;
iii. Once the Opposition Board is constituted and the material is transmitted to the Board, further evidence is not permissible;
iv. Under Rule 60, if any further evidence comes to light which either party wishes to rely upon, the same can only be done prior to the issuance of notice of hearing, with the leave of the Controller;
v) Under Rule 62(4), only publicly available documents i.e. publications, can be considered provided they are served to the opposing party, five days prior to the hearing and the date/time of the publications as also the relevant portions are highlighted, so that the opposite side can deal with the same at the time of hearing. Any document the authenticity of which is in doubt would not be entertained;
vi) The hearing, in the opposition would be usually granted upon request and Opposition Board Members may also be present in order to elicit their views and assist the Controller in deciding the post-grant oppositions”

Relevant paragraphs:

“19. Heard. The Court has considered the matter and has perused the record. The scheme of filing pleadings, evidence, documents and the manner of hearings to be conducted in a post-grant opposition has been laid down by this Court in detail in the judgment of Pharmacyclics (supra). The relevant portions of the said judgment are set out below:
“17. Under the existing scheme of the Patents Act, 1970 (hereinafter referred to as the “Act”, oppositions can be filed at two stages i.e. at the pre-grant stage – i.e., before the grant of patent and at the post-grant stage – i.e., after the grant of patent. The grounds for filing pre-grant oppositions are stipulated in Section 25(1) of the Act. The grounds for filing post-grant oppositions are stipulated in Section 25(2) of the Act. A pre-grant opposition can be filed by any person whereas a post-grant opposition can be filed by any “person interested”

XXX XXX XXX

23.From the settled judicial precedents quoted above and the provisions of the Act, the difference in the procedures to be followed between pre-grant and post-grant oppositions is well established. A post-grant is a proceeding that can be filed within one year after the publication of the grant of the patent. In a post-grant opposition, upon the filing of the post-grant opposition and the pleadings/evidence being completed, an Opposition Board is constituted which submits recommendations to the
Controller. The said recommendations are not binding in nature’. However, upon receipt of the recommendations of the Board and after giving hearing to the parties, the Controller may –
1. maintain the grant; or
2. amend the claims; or
3. revoke the patent.

[Sugen Inc v. Controller General of Patents, Design, Trademark and Geographical Indications 2013 SCC OnLine IPAB 76.]

24. The Rules however, lay down the detailed procedure to be followed in oppositions. Rule 55 stipulates the procedure to be followed in a pre-grant opposition. Rules 55A to 63 govern post-grant oppositions. Prior to the constitution of the Opposition Board under Rule 56, the following steps are to be followed:
i) The Opponent has to file the written statement of opposition (Opposition) along with his evidence; ii)The Patentee, if it wishes to contest the opposition has to file the reply statement (Patentee’s Reply) along with its evidence within a period of two months after receiving the opponent’s opposition. If the patentee does not contest or file a reply/ evidence, the patent would be deemed to be revoked;
iii. Upon the Patentee filing its reply statement, the opponent has the opportunity to file the reply evidence (hereinafter ‘Opponent’s Rejoinder) within one month upon receiving the patentee’s reply. However, the said rejoinder would have to be strictly confined to the matters which have been raised in the patentee’s evidence. Thus, there is no permissibility for the opponent to expand the scope of the rejoinder beyond the reply filed by the Patentee;
iv. The Opposition Board constituted under Rule 56 would then consider all the documents filed by the parties and submit a report along with its joint recommendation to the Controller.
Thus, the scheme of the Rules envisages that the Opposition Board ought to consider all the pleadings and documents prior to giving its recommendations. Further, the timelines which have been stipulated in the Rules also show that the same ought to be followed strictly. From the time when the patent is granted, therefore, the expectation would be that if a post-grant opposition is filed, the same would be decided in an expeditious manner.
25. Rule 61 requires that all the documents which are filed are done so in duplicate in order to ensure that the Opposition Board and the Controller have their respective copies of all the filings. Subsequent to the completion of presentation of evidence and after receiving the recommendations of the Opposition Board, a hearing is fixed under Rule 62. The notice of hearing would be issued and delivered to parties at least ten days prior to the hearing. At the hearing, the Controller may require Members of the Opposition Board to be present at the hearing. If either of the parties wishes to be heard, the fee would be paid to the Controller along with giving a notice. If no notice is received for a party to attend the hearing, the Controller can decide the opposition without a hearing but the order shall however contain the reasons for the decision. However, in oppositions, owing to the nature of the proceedings being adversarial, hearings ought to be granted, unless they are follow-on oppositions.
26. So far, there appears no ambiguity. However, Rules 60 and 62(4) have resulted in ambiguities in view of additional evidence which is sought to be filed by either the Opponent or the Patentee. As per Rule 60, after the completion of the pleadings and documents under Rule 57 to 59, a party is permitted to seek leave for filing of further evidence. Rule 60 provides that such leave can be sought only prior to the hearing being fixed. The language used in the Proviso reads: “Provided that such leave or direction is prayed before the Controller has fixed the hearing under Rule 62″
This makes it clear that filing of additional evidence would be permissible in exceptional cases with the leave or direction of the Controller, but in any event, the said filing can be done only prior to the hearing being fixed under Rule 62. Once the hearing is fixed, thus, parties are not permitted to seek leave to file further evidence.
27. The next window for evidence is provided in view of Rule 62(4) which provides that, five days prior to the hearing, a party can rely upon ‘any publication’ which may have not been filed earlier, provided five days’ notice is given to the other party together with details of such publication.
28. The question that has, therefore, arisen is whether after the completion of the pleadings i.e. Opposition, Patentee’s reply and Opponent’s rejoinder (Rules 57 to 59) along with the evidence thereof, can any party file further evidence or rely on further documents.
29. On an overall reading of the scheme of Rules 55A to 63, it is clear that the Rules contemplate a two-stage decision making. Stage one is reference to the Opposition Board of all the pleadings and the evidence. Stage two is decision by the Controller which is to be rendered after receiving the recommendations of the Opposition Board and after affording a hearing, if sought. Thus, at the stage of the Controller taking a decision, the Controller is expected to have all the pleadings, documents and evidence relied upon by the parties and the recommendations made by the Board on the basis of the said material and oral submissions by the parties.
30. Thus, it is clear that under usual circumstances, there should not be any variation between the material being considered by the Opposition Board and the Controller. All the material to be relied upon by the parties ought to be presented to the Opposition Board and thereafter to the Controller.”

20. After laying down the scheme of the Act and the Rules to be followed in post-grant opposition, as set out above, the Court also culled out the general principles to be followed in post-grant oppositions which are extracted below:
“39. Therefore, the following general principles ought to be followed while dealing with a post-grant opposition:

i. The Opponent and the Patentee have adequate freedom to file their initial pleadings and evidence by relying upon all the documents and expert testimonies that they wish to;
ii. The Opponent’s rejoinder in Rule 59 ought to be strictly confined to the Patentee’s evidence;
iii. Once the Opposition Board is constituted and the material is transmitted to the Board, further evidence is not permissible;
iv. Under Rule 60, if any further evidence comes to light which either party wishes to rely upon, the same can only be done prior to the issuance of notice of hearing, with the leave of the Controller;
v. Under Rule 62(4), only publicly available documents i.e. publications, can be considered provided they are served to the opposing party, five days prior to the hearing and the date/time of the publications as also the relevant portions are highlighted, so that the opposite side can deal with the same at the time of hearing. Any document the authenticity of which is in doubt would not be entertained;
vii) The hearing, in the opposition would be usually granted upon request and Opposition Board Members may also be present in order to elicit their views and assist the Controller in deciding the post-grant oppositions.
40. In this background, the last question that arises is whether, if a hearing is adjourned, further evidence ought to be permitted or not prior to the next hearing. Clearly from the scheme of the Act, filing of further evidence would not be permissible after the first notice of hearing is issued. Thus, in terms of Rule 60, the hearing as contemplated in the said Rule would be the first notice of hearing. Such an interpretation would ensure that parties do not unduly delay the hearing of oppositions by seeking adjournments and utilising the adjourned period to dig up more evidence, especially as such evidence would in any case have not been considered by the Opposition Board.
41. The filing of further evidence prior to the hearing or reliance on publications under Rule 62(4) would not ordinarily permit an adjournment of the hearing. In the Controller’s discretion, within a reasonable time, parties may be permitted to support their oral arguments with written submissions which would again be transmitted simultaneously and would not again be treated as documents to which responses can be filed.
42. Though the Rule does not stipulate any timelines for fixing the date of hearing, considering that patent rights have a limited term, the Opposition Board ought to give its recommendations within three months after the final Opponent’s rejoinder is received under Rule 59. After the receipt of the recommendations of the Opposition Board, a hearing ought to be fixed within three months thereafter. An endeavour ought to be made by the Patent Office to ensure that post-grant oppositions are decided expeditiously as pendency of post-grant oppositions delays adjudication of infringement suits, if any, in respect of the patent and also keeps the rights of the Patentee under a cloud or in doubt.”

21. In the above scheme, there is no scope for parties being given repeated opportunities to file affidavits in evidence, documents, additional documents, etc. The Patent Office and the parties have to strictly adhere by the scheme of the Act and the Rules as the clear legislative scheme is that post-grant oppositions have to be decided in an expeditious manner. Even insofar as the recommendation of the Opposition Board is concerned, Rule 56(4) of the Rules makes it clear that upon the pleadings and evidence, as contemplated in Rules 55 and 57 to 60, being completed, the recommendation of the Board has to be given within three months from the date on which the documents are forwarded.

23. … Post-grant oppositions are extremely time sensitive which is clear from various provisions of the Act and the Rules which lay down as under:
i. The post-grant opposition is to be filed within one year;
ii. The pleadings have to be completed within a total period of three months as prescribed in Rules 57 to 60 of the Rules;
iii. As per Rule 56(4) of the Rules, the Opposition Board has to submit its recommendations within three months from the date on which the documents are forwarded to it.
24. Thus, from the date of the grant of the patent, the intention of the legislature is to ensure that the post grant opposition is filed within a period of one year and within 12 to 18 months thereafter, the Patent Office ought to endeavour to conclude the proceedings in the post-grant opposition. However, long number of years are taken in post-grant oppositions due to repeated filings by parties and the liberal attitude of the Patent Office. In the opinion of the Court, this state of affairs is contrary to the scheme of the Act and the Rules.

25. It is also the settled legal position that the Opposition Board is to merely give a recommendation to the Controller under Sections 25(3) and 25(4) of the Act. The said recommendation has a persuasive value but the ultimate decision is that of the Controller. The recommendations of the Opposition Board are not binding on the Controller. However, the recommendation of the Opposition Board forms a crucial part of the material to be considered by the Controller. The Supreme Court in Cipla (supra) has held as under:
“The aforesaid provisions indicate that the Opposition Board has to conduct an examination of notice of opposition along with the documents filed under Rules 57 to 60 and then to submit a report with reasons on each ground taken in the notice of opposition. The Opposition Board has, therefore, to make recommendation with reasons after examining documents produced by the parties as per Rules.

Section 25 (4) of the Act says that on receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent. The procedure to be followed by the Controller is provided in Rule 62 of the Rules, which reads as follows:”

26. The Supreme Court has also considered the manner in which the powers of the Controller are to be exercised in post-grant opposition proceedings and has laid down as under:
“Sub-rule (1) of Rule 62 confers power on the Controller to require members of Opposition Board to be present in the hearing after receiving recommendation of the Opposition Board. The Controller, after hearing the parties if they so desire and after taking into consideration the recommendation of the Opposition Board, has to decide the opposition giving reasons. Provisions of the Act and the Rules, therefore, clearly indicate that the Opposition Board has to make its recommendations after considering the written statement of opposition, reply statement, evidence adduced, by the parties with reasons on each ground taken by the parties. Rule 62 also empowers the Controller to take into consideration the reasons stated by the Opposition Board in its Report. In other words, the Report of The Opposition Board has got considerable relevance while taking a decision by The Controller under Section 25 (4) of the Act read with Rule 62 (5) of the Rules.
The Opposition Board in a given case may make recommendation that the patent suffers from serious defects like lack of novelty, lack of inventive steps etc., so also it can recommend that the patent shall be granted since the invention has novelty, inventive steps etc. Such recommendations are made after examining the evidence adduced by the parties before it. Unless the parties are informed of the reasons, for making such recommendations they would not be able to effectively advance their respective contentions before the Controller. Section 25 (3) (b) read with Rule 56 (4) cast no obligation on the Opposition Board to give a copy of the Report to either of the parties. So also no obligation is cast under Section 25(4) or under Rule 62 on the Controller to make available the report of the recommendation of the Opposition Board. But considering the fact that the Report of the Opposition Board can be crucial in the decision making process, while passing order by the Controller under Section 25 (4), principles of natural justice must be read into those provisions of the Report/recommendation of Opposition Board, therefore, should be made available to the parties before the Controller passes orders under Section 25(4) of the Act.”

27. Thus, in terms of the judgment of the Supreme Court in Cipla (supra), the Opposition Board’s recommendation has to be given to the parties. Since the  Opposition Board is to be constituted of three members, there is no reason whatsoever as to why the names of members of the Opposition Board should either be masked or missing from the said recommendation. As is seen in the present case, the initial recommendation of the Opposition Board did not contain the  names of the members constituting the Board. Their signatures were also not visible in the document. In the final recommendations which are on record, only the name of Chairperson of the Opposition Board has been mentioned. This would be completely non-transparent and would result in proceedings being filed and challenges being made to the recommendation. Moreover, in order to preserve the integrity of the recommendation of the Opposition Board, it is necessary to ensure that the names of the members constituting the Opposition Board are clearly reflected both on the cover page and on the final page where the members should append their signatures to the recommendation. It is, accordingly, directed that henceforth the ld. Controller General of Patents, Designs and Trade Marks (CGPDTM) shall ensure that the names of the members constituting the Opposition Board are clearly mentioned on the cover page and the recommendations are duly signed by the members of the Opposition Board.

31. This position in law is also clear from paragraph 39 of Pharmacyclics (supra) which is extracted below:
“39. Therefore, the following general principles ought to be followed while dealing with a post-grant opposition:

i. The Opponent and the Patentee have adequate freedom to file their initial pleadings and evidence by relying upon all the documents and expert testimonies that they wish to;
ii. The Opponent’s rejoinder in Rule 59 ought to be strictly confined to the Patentee’s evidence;
iii. Once the Opposition Board is constituted and the material is transmitted to the Board, further evidence is not permissible;
iv. Under Rule 60, if any further evidence comes to light which either party wishes to rely upon, the same can only be done prior to the issuance of notice of hearing, with the leave of the Controller;
v. Under Rule 62(4), only publicly available documents i.e. publications, can be considered provided they are served to the opposing party, five days prior to the hearing and the date/time of the publications as also the relevant portions are highlighted, so that the opposite side can deal with the same at the time of hearing. Any document the authenticity of which is in doubt would not be entertained;
vi. The hearing, in the opposition would be usually granted upon request and Opposition Board Members may also be present in order to elicit their views and assist the Controller in deciding the post-grant oppositions”

Note: This case has been converted using a screen reader used by persons with blindness, and may have typographical errors. We have tried our best to correct them, but some errors may continue to subsist.

Citation: Novo Nordisk vs. Union of India & Ors., decided by Delhi High Court on 5th July, 2022, available at: https://indiankanoon.org/doc/78879147/, visited on 20th July, 2022.

 


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