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Is Opinion Of Patent Board In Post Grant Opposition Proceeding Is Subject To Interference In Writ Jurisdiction?

This factum can not be disputed that order of sub ordinate authority , court or tribunal can be challenged to the High Court in India through a writ petition filed under Article 226 of the Indian Constitution. Can it be said that the High Court has the power to interfere with the Patent Board's decision in Writ jurisdiction?

The writ petition may be filed on various grounds, including but not limited to, jurisdictional errors, procedural irregularities, violation of principles of natural justice, errors of law or fact, or any other ground that the High Court deems appropriate.

Under Section 25(4) of the Indian Patents Act, 1970, the Patent Board may, after hearing both the applicant and the Controller of Patents, make a recommendation to the Controller for the grant or refusal of a patent application.

While the recommendation of the Patent Board is not binding on the Controller of Patents, it is usually given significant weight and consideration. The Controller of Patents is required to consider the recommendation of the Patent Board before making a final decision on the patent application.

However, the Controller is not bound to follow the Patent Board's recommendation and may make a decision that is different from the recommendation of the Board. In such cases, the Controller is required to give reasons for deviating from the recommendation of the Patent Board.

It's important to note that the final decision on a patent application in India is made by the Controller of Patents, and not by the Patent Board. The Patent Board's recommendation is just one of the factors that the Controller may consider when making a decision on a patent application.

Question is this, whether the Opinion of Patent can be challenged only on the ground that that the same has not been filed correctly, given the situation that Patent Board recommendation is not binding and has merely persuasive value.

The Hon'ble High Court of Delhi, in a recent Judgments, has answered this question. The facts of the case and ratio of the said Judgement was as under:

The Subject Matter Patent: Indian Patent No. 342004 , a fungicidal composition comprising combination of Hexaconazole and Validamycin in the range of 2.5-5% and 1.5-3%, respectively

The Subject Matter Writ: It was filed against Recommendations of the Opposition Board issued dated 29.11.2022 in respect of post-grant opposition filed by Respondent No. 2 namely Safex Chemicals India Ltd, where in Patent Board given the finding that the subject matter Lacks novelty.

The Relevant Provision of the Patent Act 1970:
25(3) (a) Where any such notice of opposition is duly given under sub-section (2), the Controller shall notify the patentee.

(b) 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.

(c) Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed.

25(4) 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.

Relevant Provisions of Patent Rules 2003.
62(5) 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 Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.

From bare reading of above, it is clear that the Recommendation of controller of Board is issued under the provisions of Section 25 (3), which has to be considered by the controller of Patent at the time of disposing off Post grant opposition under Section 25 (4) of Patent Act 1970 and Rule 62 (5) of Patent Rules 2003.

The Grievance of the Petitioner:
In this case, the Petitioner was granted the Patent after dismissal of the Pre Grant Opposition. The Petitioner alleged that the Patent Board , without any plausible reasoning, given finding contrary to what has been given at the time of dismissal of Pre Grant Opposition.

The Judgment:
The Hon'ble High Court of Delhi disposed of the said writ petition with following observation "the Court is not inclined to entertain the present petition and accordingly, the same is disposed of leaving the Petitioner free to raise all contentions raised in the present petition before the Controller, in accordance with law. "

The Reasons of the Hon'ble High Court of Delhi:
  1. Though the Patent Board recommendation may be relevant for deciding the post grant opposition under Section 25(4) of the Patent Act 1970.However the same is not binding.
  2. The order passed by the controller of Patent under Section 25 (4) of the Patent Act 1970 can be challenged in Appeal under Section 117 A (2) of the Patent Act. Hence the Patent Board recommendation can not be challenged in Writ Jurisdiction under Article 226 and 227 of Constitution of India.
  3. Another reason for not allowing the Writ was that the Petitioner failed to show any jurisdictional error, or perversity.

From above, it is apparent that Patent Board recommendation normally can not challenged in Writ Jurisdiction as the same is not binding on the controller of Patent while disposing of Post Grant Opposition. However ,in case the Petitioner can establish the jurisdictional error or perversity, then the Patent Board Recommendation can be challenged. The reason for limited interference in the writ jurisdiction is availability of Appeal under the provisions of Section 117A (2) of the Patent Act 1970. Thus is normal cases, the Hon'ble High Courts prefer not to interfere with the Patent Board recommendation, but only in case of glaring perversity or jurisdictional error, it can.

The Case Law Discussed:
Case Title: Willowood Chemicals Pvt. Ltd. Vs Assistant Controller of Patent and Designs and another

Judgment date: 17.03.2023
Case No: W.P. (C) IPD No. 15 of 2023
Neutral Citation No. N.A.
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Sanjeev Narula, H.J.

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Written By: Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539, Email: [email protected]

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