[SPICY IP] Delhi HC Rules Pre-grant Patent Applications Appealable before the...
J. Sai Deepak
This post has been split into 2 parts for the convenience of readers.
To understand this post better, following is a reproduction of the relevant provisions of the Act:
Section 15: Power of Controller to refuse or require amended applications in certain cases (1) Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.
Section 25(1) (Before 2005 amendment): “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…”
Section 25(1) (After 2005 amendment): “Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground…”
Section 116 (Before 2005 amendment): Appeals:
(2) Save as otherwise expressly provided in sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, 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, sub-section (3) of section 69, section 78, section 84, section 86, section 88(3), section 89, section 93, section 96 and section 97.
Section 117A (After 2005 Amendment): Appeals to the Appellate Board:
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or the Central Government under section 15, section 16, section 17, section 18, section 19, section 20, sub-section (4) of 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-section (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.
In a decision delivered on February 8th, the Delhi High Court has ruled that an appeal may lie under Section 117A(2) of the Patents Act from an order of rejection of a patent application in a pre-grant opposition proceeding under Section 25(1). Such orders are appealable since they are orders of refusal of a patent application given by the Controller under Section 15 of the Act for non-compliance with the requirements of the Act.
Though this decision settles the law (at least for now, unless the IPAB still takes a contra view), by and large, quite a few practitioners (including me) feel that what ought to have been an obvious interpretation of the Act and hence a non-issue, had become an issue because of IPAB’s view that such appeals were not maintainable (this I say from first-hand experience).
Stated otherwise, the IPAB was hitherto of the view that there did not lie an appeal before it from an order of rejection of a patent application in a pre-grant opposition proceeding. Thanks to this view, the usual recourse of the patent applicant was a writ petition before the appropriate High Court under Article 226 of the Constitution.
In ruling in favour of maintainability of the appeal under Section 117A(2), the High Court adopted the following line of logic:
1. Effect of 2005 Amendment on Sections 25(1) and 117A(2): The HC compared the version of S.25(1) prior to the 2005 amendment and post the amendment. This comparison also happens to be one of the primary underpinnings relied upon in Span Diagnostic v. Asst. Controller of Patents, to rule against maintainability of appeals before the IPAB.
The argument furthered in Span Diagnostics was that, prior to the 2005 Amendment, Section 25 found mention in Section 116(2) of the Act, whereas only Section 25(4) finds mention in Section 117A(2) after the amendment. However, a lot of us including of me, have consistently taken the view that this decision was based on an erroneous interpretation of the scheme of the Act and the nature of patent prosecution framework.
The reasons for the same as follows:
Prior to the 2005 Amendment, Section 25(1) provided for opposition of a patent specification which was found to be in order for grant. Such opposition had to be instituted within four months of advertisement of such acceptance of the specification. Post the 2005 amendment, Section 25(1) provides for a representation of opposition of the patent application anytime after publication but before grant.
On comparison of these 2 versions of Section 25(1), strictly speaking, one could say that the pre-2005 provision was not in the nature of a pre-grant opposition in the sense we refer to it today. To put it simply, there was no pre-grant opposition provided for in the pre-2005 Act. In fact, the earlier version is closer in nature to a post-grant opposition, since under the earlier version the patent application was already found in order for grant by the Patent Office.
Such being the case, there was no need for a provision of appeal under Section 25(1) of the Act before 2005 amendment. However, since the 2005 amendment introduced the pre-grant opposition procedure, it was but natural that a provision for appeal too had to be made for in the Act.
Further, the 2005 amendment also brought with it the inception of IPAB for patent appeals. Consequently, it would only make sense to provide for an appeal before the IPAB under Section 117A(2) from an order of rejection of a patent application from a pre-grant opposition. It must be clarified that there exists an appeal before the IPAB from a rejection of a patent application only, but not from a rejection of the opposition application. This was clarified in the J.Mitra v. Asst. Controller by the Supreme Court.
The reason why there cannot or should not be an appeal from the rejection of an opposition representation is because the pre-grant opponent always has the option of post-grant opposition. Providing him with an appellate forum in the pre-grant stage would only serve to delay the examination of the patent applicant and consequently its grant. (Precisely for this reason, the pre-grant opposition procedure was being phased out in several countries in the very year India introduced it).
Sometime back, Aditya Gupta, a student of NLU Jodhpur, raised this interesting question as to why the principle of Res Judicata would not apply in preventing a pre-grant opponent from raising the same grounds of opposition under a post-grant opposition. To answer his question, a post-grant opposition proceeding, in a way, is a statutory exception to the principle of res judicata.
In the next post, I shall discuss the rest of the arguments to support maintainability of appeals before the IPAB.
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Posted By J. Sai Deepak to SPICY IP at 2/10/2010 04:08:00 AM
J. Sai Deepak
In the last post, I had discussed the Delhi HC’s decision on appealability of pre-grant patent rejections before the IPAB. The post discussed the effect and import of the 2005 amendment on Section 25 and Section 117 of the Act. In this post, the combined interpretation of Section 15, Section 25(1) r/w Rule 55, 117A and 117G has been dwelt upon.
Section 15, Section 25(1), Section 117A and Section 117 G: Though it is clear that there must be an appeal provided for from a pre-grant rejection of a patent application, the question to be answered is, under which section would the order of rejection/refusal fall? Section 15 would be the obvious provision thanks to its broad phraseology. The reasons for same are as follows:
The current Section 25(1) begins as follows:
“Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground…”
And concludes thus:
“but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.”
Section 25(1) speaks of disposal of representation in “such manner” and “such period as may be prescribed”. This again must refer to delegated legislation- Patent Rules, 2003. Rule 55 deals with the procedure for dealing with a pre-grant opposition representation. Sub-rule 6 states that acceptance of the representation would simultaneously translate to refusal of the patent application and vice versa.
Since Rule 55(6) speaks of refusal of the patent application and Section 15 also deals with the power of the Controller to refuse a patent application for any form of non-compliance with any requirement of the Act, the refusal of a patent application pursuant to a pre-grant opposition must fall within the ambit of Section 15.
The above conclusion is supported by a combined reading of Section 15, Section 117A, Section 117C and Section 117G. A provision of appeal from an order of refusal under Section 15 has been provided in Section 117A to provide the applicant with a forum which has the authority to reverse any unreasonable order of the Controller which violates principles of natural justice or which reflects non-application of mind by the Controller or which contravenes the provisions of the Act.
Also, if it cannot be denied that, in the absence of a pre-grant opposition, a “normal” order of refusal of a patent application under Section 15 is appealable before the IPAB under Section 117A(2) of the Act, why should the conclusion be any different merely because the rejection of the application is the consequence of a pre-grant opposition proceeding?
In other words, a pre-grant opposition does not in any manner alter the nature of examination of an application and consequently, ought not to be deemed as changing the nature of the Controller’s order of refusal of the patent application.
There is a relevant report of Standing Committee on the Law of Patents of the World Intellectual Property Organization (WIPO) on precisely the same point, which none of the parties in the judgement seem to have relied upon. This report dated December 11, 2009 clearly states in paras 17, 18, 22 and 23 that a pre-grant opposition is intended to merely aid the process of examination of a patent application. Further, the report also states that there must be an appeal from an order passed by the administrative forum (Controller) in a pre-grant opposition.
Moving on to Section 117G, it reads thus:
“All cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred”
As I had stated earlier in a comment to a post by Mr.Basheer, Section 117G is the surest indication that an appeal would lie before the IPAB from an order of refusal of a patent application in a pre-grant opposition. Proof to this is the case of Novartis AG v. Union of India and Ors. (M.P. Nos 1 to 5/2007 in TA/1 to 5/2007/PT/CH).
In this case, Novartis, which was the patent applicant, filed Writ petitions before the Madras High Court from the order of the Controller under Section 25(1) read with Rule 55 pursuant to a pre-grant opposition. Upon coming into force of the provisions of the Patents Act relating to the IPAB, pending writ petitions such as the Novartis petition were transferred from Madras High Court to the IPAB.
This was pursuant to the transitional provision Section 117G of the Act; the effect of the transitional provision is of the essence here, since not only does it have the effect of transferring pending appeals from High Courts to the IPAB, but also empowers and stipulates that prospective appeals from any decision of the Controller, including rejection of patent applications in pre-grant proceedings, shall lie before the IPAB.
If prospective appeals are not meant to lie before the IPAB, it defeats the very purpose of the transfer of the pending proceedings, not to mention rendering nugatory the purpose of the constitution of the IPAB.
This is further supported by the concluding portion of Section 117G which permits the IPAB to start pending appeal proceedings de novo or afresh. If the IPAB can look into pending proceedings afresh, the only logical conclusion that one may arrive is that it is the sole authority before which fresh proceedings may lie.
This receives credence from Section 117C of the Act which speaks of bar on jurisdiction of Courts. Section 117C reads thus:
“No Court or other authority shall have or, be entitled to, exercise any jurisdiction, power or authority in relation to the matters referred to in sub-section (2) of Section 117(A) or Section 117(D).”
The consequence of Section 117C is that any order or decision from which an appeal lies before the IPAB, shall not be appealable before the High Court.
The decision of the Delhi HC is a welcome one and should hopefully reduce the woes of patent applicants.
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Posted By J. Sai Deepak to SPICY IP at 2/10/2010 04:16:00 AM