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