Ensure Strict Compliance Of Provisions Dealing With Pre Or Post Grant Oppositions To Patent: Delhi High Court To Controller General

The Delhi High Court has requested the Controller General Of Patents, Designs and Trade Marks to ensure strict compliance of the provisions dealing with pre or post grant oppositions to a patent under the Patents Rules, 2003.

“…Controller General is requested to ensure that, hereafter, there is strict compliance with the provisions of the Patents Rules, particularly Rule 57, read with the judgment of the Supreme Court in Cipla, while dealing with and processing pre- or post-grant oppositions,” Justice C Hari Shankar said.

The Supreme Court in Cipla Ltd v. Union of India held that the report or recommendation of the Opposition Board should be made available to the parties in question before the Controller passes orders under Section 25(4) of the Patents Act.

The court was dealing with a plea moved by Akebia Therapeutics Inc. who was granted patent with respect to its invention titled “HIF-1α prolyl hydroxylase inhibitor compounds” way back in 2017. The entity was aggrieved by the post grant opposition filed to the patent with certain documents but without any evidence.

Disposing of the plea, Justice Shankar quashed the recommendations of the Opposition Board observing that they cannot be sustained in the manner in which they came to be returned.

“The documents filed by Respondent 3 on 24 September 2018 are permitted to be treated as evidence led by Respondent 3 under Rule 57 on the basis of the affidavit of Poonam Raghuvanshi, which came to be filed on 14 February 2019,” the court said.

It added that the matter would be placed before the Opposition Board to take a fresh decision after considering all the documents and in case either of the parties desires to lead any further evidence, the same would have to be done by abiding with Rule 60 of the Patent Rules.

“The circumstances, the date of 11 August 2023 presently fixed stands cancelled. The Controller General, or the competent officer, would proceed in the matter further in accordance with the directions contained hereinabove,” the court said.

Title: AKEBIA THERAPEUTICS INC. v. CONTROLLER GENERAL OF PATENTS, DESIGN, TRADEMARK AND GEOGRAPHICAL INDICATIONS, & ORS.

Citation: 2023 LiveLaw (Del) 688

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