As the Indian patent regime continues to be in a state of flux,
a wave of instances, lately, have significantly indicated the
settling of law in some select areas from the view of patent
practice. The Indian courts have shown a gradual progression with
regard to adjudication of IP disputes. The judicial temper has led
to filling up of numerous gaps in the law and rules governing the
practices over the years, but witnessing the current crop of
judicial decisions, there would be no gainsaying in the fact that
the present time is now ready to have a critical mass of judicial
precedents to sustain this chain reaction. In one such instance,
Acme Tele Power Ltd. Vs The Controller General of Patents
and Designs (S.R. No. 529/2009/PT/IPAB; IPAB Circuit
Bench, Delhi) before the Intellectual Property Appellate Board (the
Board), the Registry of the Board sought clarification from the
appellant as how the order passed under section 25(1) of the
Patents Act, 1970 (the Act) is admissible or appealable before the
Hon'ble Board as any decision issued by the Controller under
section 25(1) of the Act is not appelable under section 117A(2) of
the Act. The Appellant had been refused grant of patent in a
pre-grant opposition and thus had appealed against the order of the
Controller of Patents refusing grant under section 25(1) of the Act
on the Indian Patent Application.
The Appellant's contention was that the appeal is
maintainable as the acceptance of a representation made in a
pre-grant opposition under Section 25(1) of the Act would amount to
a refusal of the subject application under Section 15 of the Act
under which an appeal lies as per section 117A(2) of the Act. The
appellant also sought to reinforce the argument by the legislative
logic recognized by the Hon'ble Supreme Court in J.Mitra &
Co Vs Asst Controller of Patents (2008) 10 SCC 368. The Hon'ble
Supreme Court in the instant case had held that an order rejecting
a representation of a pre-grant opposition proceeding is not
appelable since the opponent aggrieved, if he is a person
interested (and in most cases they are), has the option of filing a
post-grant opposition or a revocation under section 25(2) and
section 64 of the Act respectively. But since the refusal of a
patent application pursuant to a pre-grant opposition would be
treated as a refusal order under Section 15 of the Act which is
appealable before the Hon'ble Appellate Board, there was no
need for the legislature to include Section 25(1) in Section
117(A)(2) to cover the cases where a patent application has been
refused pursuant to a representation in a pre-grant opposition. The
appellant reasoned that, the pre-grant opposition is only an
extension of the examination process of a patent application by the
examiner with the assistance of a third party (the opponent) and
also referred to the Rule 55(6) of the Patent Rules 2003, which
clearly stipulates that in case the representation of the opponent
in a pre-grant opposition is allowed, it has the result of refusal
of the patent application and consequently such refusal of the
patent application would fall only under an order of refusal as per
Section 15 of the Act.
The Board perused the sequence in the grant of a patent and
remarked that unlike the opposition proceeding (pre-grant) where
three parties are involved, the publication and examination of a
patent application is between two parties. Also, taking into
consideration the legislative intent behind the function and result
of the two proceedings, the Board viewed that the opposition
(pre-grant) proceeding is a stage subsequent to the examination of
a patent application and hence are un-relatable to each other.
However, the Board took recourse to a ruling given by the Delhi
High Court in Writ Petition (Civil) 332 of 2010 which found merit
in the contention that a pre-grant opposition is in fact 'in
aid of examination' of the patent application by the Controller
and therefore the refusal to grant a patent is in fact relatable to
and should be understood as an order by the Controller under
section 15 of the Act which order is appealable to the IPAB under
section 117A of the Act. Thus based on the considered ruling along
with the interest of natural justice agreed that an aggrieved
applicant in a pre-grant opposition proceeding under Section 25(1)
of the Act may prefer an appeal before this Appellate Board.
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