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India – Court Rules On Pre-Grant Opposition

Recently the Delhi High court decided on an important question of law concerning the maintainability of a writ petition under Article 226 of the Constitution of India against an order of Controller of Patents either allowing or rejecting a pre-grant opposition under Section 25(1) of the Patents Act 1970.  The case is UCB FARCHIM SA v. Cipla Ltd. and Ors and Colorcon Inc v Ideal Cures Pvt Ltd and Ors and Yeda Research and Development Co Ltd v Natco Pharma Ltd and Ors and Eli Lilly and Co v Ajanta Pharma Ltd Ors WP (C) Nos 8393, 12006 and 13295 of 2009 and WP (C) No 332 of 2010 along with WP (C) Nos. 8388 and 8392 of 2009. The Court combined the six writ petitions presented before it for determination to clarify the position of law as regards the remedy available to a person against the unfavourable orders of the Controller in pre-grant proceedings.

The Court discussed the provisions of the Patents Act dealing with opposition, orders of the controller and appeal to the Intellectual Property Appellate Board and noted that while an appeal lay to the Appellate Board against orders in post-grant opposition, no provision for appeal was provided in case of pre-grant opposition. The court elaborated upon both oppositions provided for in the Patents Act, detailing the purpose and distinction between them. It then proceeded to evaluate the position of the opponent and the applicant and the remedies available to them in pre-grant proceedings. It held that in the case of an opponent who is a “person interested” and whose pre-grant opposition has been rejected, there is already a remedy in the nature of post–grant opposition under Section 25(2), as well as filing for revocation under Section 64.

If he is not a person interested, then the Court observed: “The power under Article 226 is wide and can be exercised on the facts and circumstances of a given case where it appears to this court that there is no other efficacious remedy available or that the interests of justice require this Court to interfere.” However, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person.

At the same time, the court observed that in the present instance in the writ petitions filed before it, all opponents were “persons interested.” Hence, it averred that in case of an applicant whose application has been rejected on a pre-grant opposition, an efficacious remedy by way of appeal to the Appellate Board exists under Section 117A of the Act, since the decision is relatable to a decision under Section 15.

In another recent case of Glochem v. Cadilla, the Delhi High Court had held that “it is a matter of prudence and discretion as to whether this court should entertain the writ petition or not.”

The court decided upon the writ petitions in accordance with the above, referring the cases to IPAB in appeal or asking the parties to pursue post-grant opposition, wherever appropriate.

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