First Publication Date: 10th February 2010
In a decision delivered on February 8th, 2010, the Delhi High Court held that an applicant aggrieved by the rejection of his application by the Controller based on a pre-grant representation may file an appeal to the Intellectual Property Appellate Board (IPAB). The court delivered the decision after consolidating writ petitions filed by UCB FARCHIM, COLORCON, YEDA RESEARCH & DEVELOPMENT and ELI LILLY. As per the Court, a rejection by the Controller based on a pre-grant representation under Section 25(1) would be a decision under Section 15 of the Patents Act and therefore may be appealed to the IPAB under Section 117A (though the said section does not specify section 25(1) among the list of sections from which an appeal is possible).
To give a background of the law, the related sections read as follows:
Section 15 reads, “Power of Controller to refuse or require amended applications in certain cases. (1) Where the Controller is satisfied that the application or any specification filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may either-
(a) refuse to proceed with the application; or
(b) require the application, specification or drawings to be amended to his satisfaction before he proceeds with the application. …”
Section 25(1) reads, ” At any time within four months from the date of advertisement of the acceptance of a complete specification under
this Act (or within such further period not exceeding one month in the aggregate as the Controller may allow on application made to him in the prescribed
manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds, namely …”
Section 117A reads, ” … (2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Government under section 15, section
16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94. …”
After analyzing the aforesaid sections, the court divided appeals from pre-grant representations into two categories:
i. Appeals from rejection of pre-grant representation; and
ii. Appeals from rejection of a patent application based on pre-grant representation.
With respect to appeals from the rejection of a pre-grant representation, the court stated that it may entertain an appeal under Article 226 of the Constitution if an effective alternative remedy is not available to the appellant. However, with respect to the second scenario, where the Controller rejects an application based on a pre-grant representation, the court stated that such a rejection is in effect a rejection under Section 15 of the Act and therefore an appeal would lie to the IPAB under 117A because the said section provides for such an appeal. While stating so, the court observed that a rejection based on pre-grant representation under Section 25(1) would be considered as a rejection under Section 15 because a pre-grant representation is considered as an opportunity given to the general public in order to aid the Controller in the examination process and the Controller would have the discretion to accept or reject the pre-grant representation. Therefore, though Section 25(1) is not listed among the sections from which an appeal is possible to the IPAB under Section 117A, the Court stated that an appeal would be possible in case of rejection of application under Section 15, which is listed as appealable under the section. In the light of its decision, the Court allowed the patent applicants petitioners), whose applications have been rejected based on pre-grant representation to file an appeal to IPAB within two weeks.
The decision of the Delhi High Court is commendable because it clarifies the law with respect to appeals from the rejection of Controller based on pre-grant representation, which was earlier deemed to be not appealable to be IPAB. The decision paves way for a remedy to the patent applicants in case of rejection and puts an end to arguments revolving around the basis of rejection by the Controller.
Some say that appeal against the rejection of Controller on pre-grant opposition by way of post-grant opposition to the same controller is a resjudicata . Ca you clarify the position.