Section 25(2) of the Indian Patents Act, 1970 and Rules 55A-62 of the Indian Patents Rules, 2003, deal with Post-grant opposition. Post-grant opposition can be filed by any interested person who may give notice of Opposition to the Controller at any time after the grant of the Patent but before the expiry of a period of one year from the date of publication of the grant of the Patent in the prescribed manner on any of the grounds prescribed under Section 25(2) of the Indian Patents, Act 1970.
As per the provisions of the Patents Act, 1970 and Rules made thereunder, along with the notice of Opposition, the Opponent has to submit a written statement setting out the nature of the Opponent’s interest, the facts upon which he bases his case and relief which he seeks and evidence, if any and has to deliver a copy thereof, to the Patentee. If the Patentee desires to contest the Opposition, he/she shall file a reply statement setting out fully the grounds upon which the Opposition is contested and evidence, if any, within a period of two months from the date of receipt of the copy of Opponent‘s written statement and evidence, if any, and also deliver a copy to the Opponent. If the Patentee does not file his reply and evidence within two months, the patent shall be deemed to have been abandoned. After receipt of a reply from the Patentee, the Opponent may file his evidence in reply, strictly confined to the matters in the Patentee’s evidence, within one month from the date of delivery to him of a copy of the Patentee’s reply statement and evidence.
After receipt of a notice of opposition, an Opposition Board is constituted by the Controller, to examine such notice including all documents and evidence filed by the Opponent as well as Patentee. The Opposition Board consists of three members with one of them as Chairman. The Examiner who has dealt with the application for a patent during the prosecution proceedings for the grant of a patent cannot be included as a member of the Board. The Board submits the report with reasons on each ground taken in the notice of opposition, after examining the notice along with all statements, documents and evidence submitted by the parties as a joint recommendation within three months from the date on which all such documents were forwarded to them. On completion of the presentation of evidence, if any, and after receiving the recommendation of the Opposition Board, the Controller appoints a date and time for the hearing of the opposition and informs the parties at least ten days in advance. On receipt of the notice of hearing, if either party desires to be heard, he informs the Controller by a notice along with the prescribed fee. After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing and after taking into consideration the recommendation of the Opposition Board, the Controller gives his final decision.
In a recent judgment by a single bench of the Delhi High Court in the matter of Willowood Chemicals Private Limited v. Assistant Controller of Patents and Designs & Anr , it has been held that the legal framework does not permit an appeal against the Opposition Board’s recommendation or scrutinizing of the validity of the Report and declaring it unsustainable. However, there is a provision for filing an appeal against the orders passed by the Controller prescribed under Section 117A(2) of the Indian Patents Act, 1970.
Facts of the Case
The Applicant, Willowood Chemicals Private Limited had filed an ordinary patent application titled “Synergistic Fungicidal Composition” in the Indian Patent Office on December 31, 2013.
A pre-grant opposition was filed by Haryana Pesticides Manufacturers’ Association in the Indian Patent Office on January 11, 2019, which was later quashed and the Ld. Controller upheld the validity of the subject matter of the present application.
After due prosecution, the patent was thus granted on July 20, 2020. Thereafter, on August 28, 2020, a post-grant opposition was filed by Respondent No. 2 (Safex Chemicals India Ltd.) under Section 25 (2)(b), (d), (e),(f), and (g) of the Indian Patent Act, 1970. The respective parties filed their written statement and evidence along with the requisite documents in the Indian Patent Office. Thereafter, the Opposition Board issued their recommendation in Report dated November 29, 2022.
Aggrieved by the report of the Opposition Board, the Petitioner filed a writ petition under Article 226/227 before the Hon’ble High Court of Delhi, against the Report of the Opposition Board given in respect of post-grant opposition as well as the additional evidence filed by the Opponent.
Issues before the Court
The main issue before the Court was whether the Applicant can challenge the Report/recommendations of the Opposition Board by invoking Article 226/227 of the Constitution of India.
Relevant Rules and/or Law
According to Section 25(2) of the Indian Patents Act, “at any time after the grant of patent but before the expiry of a period of one year from the date of publication of the grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—
- that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—
- in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January 1912; or
- in India or elsewhere, in any other document: Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
- that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
Explanation.—For the purposes of this clause, an invention relating to a process for which a patent is granted shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;
- that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;
- that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
- that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;”
Further, according to Section 25(3):
- Where any such notice of opposition is duly given under sub-section (2), the Controller shall notify the patentee.
- On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.
- Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed.
Furthermore, according to the remaining sub-sections of Section 25,
- 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.
- While passing an order under sub-section (4) in respect of the ground mentioned in clause (d) or clause (e) of sub-section (2), the Controller shall not take into account any personal document or secret trial or secret use.
- In case the Controller issues an order under sub-section (4) that the patent shall be maintained subject to amendment of the specification or any other document, the patent shall stand amended accordingly.
Contentions of the Petitioner
The Petitioner contended that the Opposition Board had, without any convincing reason, departed from the Controller’s decision. The majority of the documents cited by Respondent No. 2 in the notice of post-grant opposition had already been considered by the Controller while deciding the pre-grant opposition and granting the subject patent in the Petitioner’s favour. Thus, the Opposition Board had committed a fundamental error in concluding that the subject patent lacks novelty in view of the prior art documents.
The Petitioner also stated that the expert affidavit was submitted but was not considered by the Opposition Board. The Petitioner further stated that as per Rule 56(4) of the Patent Rules, 2003, the Opposition Board must submit their report within three months from the date on which relevant documents were forwarded to them; however, the impugned Report in the present matter was delivered after almost one year from the date of filing of all documents.
Further, Respondent No. 2 filed additional evidence after the hearing date had been fixed by the Assistant Controller, which was not permissible and therefore should not be considered. Apprehending that Respondent No. 1 (Deputy Controller of Patents) will be unduly influenced by the misconceived and untenable findings of the Opposition Board and pass an adverse order, the Petitioner was constrained to file the present petition for quashing the Report and constitution of a new Opposition Board.
Contentions of the Respondent
The Respondent strongly contested the present petition on the ground of the availability of an efficacious remedy against a final decision of the Controller under Section 25(4) of the Act. The Respondent argued that the Opposition Board only makes recommendations and challenges and therefore should not be entertained at this stage, particularly since the grounds urged by Petitioner touch upon the merits of the Opposition Board’s decision.
The Respondent submitted that this Court cannot sit in appeal over these recommendations, and Petitioner can urge their grievances before the Controller at the time of hearing/ consideration of the impugned Report.
Observation and Decision of the Court
The Court relied on the decision of Cipla Ltd. v. Union of India, where the Supreme Court had commented upon the relevance of recommendations of the Opposition Board in the following terms: “Provisions of the Act and Rules, therefore, clearly indicate that the Opposition Board has to make its recommendations after considering the written statement of opposition, reply statement and 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 Court stated that while considering the report/recommendations of the Opposition Board and deciding the post-grant opposition under Section 25(4) of the Patents Act read with Rule 62(5) of the Patents Rules, 2003, the Controller is required to employ independent thought in determining whether to uphold, modify, or revoke the patent. The Court held, “Regardless, the legal framework does not permit an appeal against the Opposition Board’s recommendation or scrutinizing the validity of the Report and declaring it unsustainable. The Act, under Section 117A(2), provides for an appeal once the Controller takes a final decision. Petitioner cannot thus be permitted to challenge the recommendations on merits under Article 226/227 of the Constitution”.
The Court, while disposing of the petition, noted that the Controller has not finally yet rendered his decision against Safex’s opposition, and therefore, Petitioner has the opportunity to satisfy the Controller regarding the validity of the patent, at the time of the hearing.
Thus, the Court directed that the Controller shall decide the post-grant opposition on its own merits after hearing all the stakeholders, and render a final decision in terms of Section 25(4) of the said Act.
Analysis and Conclusion
This judgment has brought in necessary clarity concerning the Patentee’s rights with regard to the Report/recommendations of the Opposition Board. In this instance, the Court made it clear that the Patentee cannot file an appeal or challenge the validity of the Report/recommendations of the Opposition Board. The Controller’s final order either to maintain or to amend or to revoke the patent in a Post grant Opposition proceeding, can however be appealed under Section 117A(2) of the Patents Act.
Further, the judgment also clarifies that while the report of the Opposition Board has got considerable relevance, the Controller is required to employ independent thought in determining whether to uphold, modify, or revoke the patent.
 W.P.(C)-IPD 15/2023 & CM No. 34-35/2023
 SC, Civil Appeal 8479-8480, 2012