Once a patent application has been refused by the Controller of Patents, the applicant still has an opportunity to get a grant. This can be done in the following two ways-
- Appeal in the Intellectual Property Appellate Board
- Review application before the Controller of Patents.
This article aims to lay down the scope and limitation of both these options.
I. APPEAL IN THE INTELLECTUAL PROPERTY APPELLATE BOARD
In case, the grant of patent is refused by the Controller, the applicant has the option of appealing this decision to the Intellectual Property Appellate Board. The Board was established by the Central Government in 2003 to hear and decide all appeals from the decisions and orders of the Registrar which earlier came within the jurisdiction of the High Courts and with Section 116 of the Patents Act, 1970, this Board is also the Appellate Board for the purposes of this Act1.
WHEN CAN THE BOARD HEAR AN APPEAL
Section 117A of the Patents Act, 1970 deals with when appeals shall lie to the Appellate Board against any decision, order or direction that is made or issued under the Act by the Central Government or from any act or order of the Controller. For the scope of this article, we shall only focus on orders or decisions made by the Controller. The section lays down all the instances under which an appeal can lie to the Board from the decision of the Controller. The relevant instance for the scope of this article lies in Section 15 and Section 25(4) of the Patents Act, 1970. Section 15 deals with the power of the controller to refuse applications for grant of patent and Section 25(4) states that after giving an opportunity to the applicant and the opponent of being heard, the Controller shall order either to maintain or to amend or to revoke the patent. In other words, this means that after the controller gives the applicant the required time for making the necessary amendments as well as conducting a hearing of both the parties and feels that the requirements of the Act have not been complied with or a pre-grant opposition of the patent holds merit and is successful, he may pass an order refusing grant of patent to the applicant. This order refusing the grant can be appealed against by the applicant to the Appellate Board2.
TIME FOR FILING AN APPEAL
Furthermore, under Section 117A(4) of the Act, for an appeal to be heard by the Board it shall be made within 3 months from the date of decision. The appeal can be made at a further time as well but this will be subject to the rules, if any, made by the Board itself. A recent interpretation of a circuit Bench of the Board further clarified that the three month period must begin from the date of receipt of communication of the order and not from the date the decision is made.3 According to Section 117A(3), the appeal must be accompanied by a copy of the order appealed against and the prescribed fees for the same.
CAN THE DECISION OF THE BOARD BE FURTHER CHALLENGED ?
Now that we have established the power of the Intellectual Property Appellate Board to hear and decide appeals, the question that arises is what next? Can the applicant further appeal against this order of the Board? Here, it is important to pay attention to Section 117C of the Act which clearly states that no court or other authority shall have the jurisdiction in relation to the matters that have been referred to under Section 117A. This means that once the Board has given its decision on an appeal against the order of the Controller refusing grant of patent, no further appeal can lie to the High Court or the Supreme Court. The order passed by the Appellate Board is communicated to the Controller under Section 117D of the Act and the Controller shall give effect to the same as is required.
II. REVIEW APPLICATION BEFORE THE CONTROLLER OF PATENTS
Apart from filing an appeal in the Intellectual Property Appellate Board, the applicant has another recourse in case his application is refused by the Controller. The applicant has the option of filing a Review Application before the Controller of Patents. In this case, the Controller who has passed the decision has to review his/her decision and is allowed to alter his/her judgment under extraordinary circumstances or circumstances which are unusual. This power which has been vested in the Controller is governed by Section 77 (1) (f) of The Patents Act, 1970.
"Section 77. Controller to have certain powers of a civil court –
(1) Subject to any rules made in this behalf, the Controller in any proceedings before him under this Act shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908 (5 of 1908), in respect of the following matters, namely: —
(f) reviewing his own decision on application made within the prescribed time and in the prescribed manner;"4
The power conferred under section 77 is one which is analogous to the powers of a Civil Court (under section 114 of the Code of Civil Procedure, 1908) and one which widens the scope of the Controller's powers. This power enables the Controller to hear and decide a suit which falls under the Code of Civil Procedure, 1908 with regard to Section 77 (1) (f) of The Patents Act, 1970.
Section 77 (1) (f)
Clause (f) of Section 77 (1) of The Patents Act, 1970 basically deals with the power of the Controller to review his own decisions. This clause makes it possible for an applicant to file a review application before the Controller under Form 24 of the Patent Rules, 2003.
Such an application has to be filed within a period of one month from the date of communication of such decision to the applicant or within such period not exceeding one month thereafter as the Controller may on request made in Form 4 allow. Where the decision in question concerns any other person in addition to the applicant, the Controller has immediately transmit a copy of each of the application and the statement to the person concerned.5
GROUNDS FOR REVIEW
Since the power granted under section 77 (1) (f) is similar to the power granted under Section 114 of the Code of Civil Procedure, 19086, both the provisions share the same grounds for review. The following can be the grounds o review for an application for review-
- Discovery of new and important matter or evidence;
- On account fo some mistake/ error apparent on the face of the record; or
- For any other sufficient reason.
No appeal can lie from a decision of review that has been given by the Controller under Section 77 (1) (f).7
DIFFERENCE BETWEEN REVIEW AND APPEAL
Thus, if we compare the difference between reviews under Section 77 and appeals under Section 117A of the Act, we find that appeals to the Board are allowed only for certain specific circumstances while review is more general in nature.
The rationale of behind the creation of the Appellate Board was a speedy disposal of cases and to reduce the burden over the High Courts. It also solves the problem of lack of technical knowledge which is required while hearing such appeals. The applicant, however, must note that the decision of the Appellate Board is final and unappealable.
In the case of Review Applications, it can be inferred that wide powers have been conferred upon the Controller under the provision of Section 77 and such power is equal to that conferred under the Code of Civil Procedure, 1908. Although this provision ensures that justice is served upon the aggrieved party, there is space for prejudice since the review application is filed before the same Controller who first gave the decision.
1 Harshad Pathak, The Jurisdictional Dilemma Surrounding the Intellectual Property Appellate Board, JIPR, Vol 20, 2015
2 UCB Farchim v CIPLA Ltd. 2010 (42) PTC425 (Del).
3 Alstom Technology Limited Vs The Controller General of Patents & Designs and Ors. SR NO.350/2014/PT/DEL
4 Section 77, The Patents Act, 1970.
5 Rule 130 (1) of the Patent Rules 2003.
6 Section 114 read with Order 47 of the Code of Civil Procedure, 1908.
7 Section 117 A of The Patents Act, 1970.
10 Harshad Pathak, The Jurisdictional Dilemma Surrounding the Intellectual Property Appellate Board, JIPR, Vol 20, 2015
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.