Delhi High Court Directs Controller General's Office To Ensure Recommendations Are Duly Signed By Members Of Opposition Board Under Patents Act

The Delhi High Court has directed the Controller General of Patents, Designs and Trade Marks (CGPDTM) to ensure that the recommendations are duly signed by the members of the Opposition Board under the Patents Act, 1970.

As per rule 56 of the Patents Rules, 2003, the Opposition Board shall conduct the examination of the notice of opposition along with documents filed and submit a report with reasons on each ground taken in the notice with its joint recommendation within three months.

Justice Pratibha M Singh added that in order to preserve the integrity of the recommendation of the Opposition Board, it is necessary to ensure that the names of the members constituting the Board are clearly reflected both on the cover page and on the final page where the members should append their signatures to the recommendation.

The Court was dealing with a plea filed by the Patentee Novo Nordisk, challenging the order dated 29th June 2022 passed by the Deputy Controller of Patents & Designs. The said order was passed on the representation made by the Patentee in the post grant opposition proceedings qua the patent in respect of certain pharmaceutical preparations. The patent was finally granted on 4th October, 2013 titled "PROPYLENE GLYCOL-CONTAINING PEPTIDE FORMULATIONS".

Post grant oppositions under sec. 25(2) of the Patents Act, 1970 came to be filed by Opponent, M/s Sun Pharmaceuticals Industries Ltd. as also by M/s USV Private Ltd. on 29th September, 2014 i.e., five days before the time for limitation for filing of the post-grant expired.

After completion of pleadings and filing of evidence by the parties, the first recommendation of the Opposition Board was given on 21st August, 2019 and the hearing of the post grant opposition under Rule 62(1) of the Patent Rules, 2003 was scheduled on 25th September, 2019 and 26th September, 2019.

The recommendations of the Opposition Board were supplied to the parties after a lapse of about four months. The Patentee, however, was not satisfied with the said second recommendation of the Opposition Board. Thus, the Patentee filed a representation dated 13th May, 2022 seeking revision of the recommendation of the Opposition Board. Vide the impugned order dated 29th June 2022, the Deputy Controller considered the representation of the Patentee and disposed of the same.

It was the case of the Patentee that the impugned order passed by the Deputy Controller was not a decision or order in the eyes of law as no actual decision had been rendered on the representation of the Patentee.

It was argued that the names of the members constituting the Opposition Board was not known to the Patentee as the same was not reflected in the document i.e., the recommendation. It was also submitted that during the pendency of the post grant opposition, the affidavits filed on behalf of the Opponent were given up as the Patentee had sought cross-examination of the said witnesses.

The Court was of the view that as per the legislative scheme, the Patent Office and the parties have to strictly adhere by the scheme of the Act and the Rules as the clear scheme is that post-grant oppositions have to be decided in an expeditious manner.

"Even insofar as the recommendation of the Opposition Board is concerned, Rule 56(4) of the Rules makes it clear that upon the pleadings and evidence, as contemplated in Rules 55 and 57 to 60, being completed, the recommendation of the Board has to be given within three months from the date on which the documents are forwarded," the Court added.

The Court also said that from the date of the grant of the patent, the intention of the legislature is to ensure that the post grant opposition is filed within a period of one year and within 12 to 18 months thereafter, the Patent Office ought to endeavour to conclude the proceedings in the post-grant opposition.

"However, long number of years are taken in post-grant oppositions due to repeated filings by parties and the liberal attitude of the Patent Office. In the opinion of the Court, this state of affairs is contrary to the scheme of the Act and the Rules," the Court said.

The Court was of the view that since the Opposition Board is to be constituted of three members, there is no reason whatsoever as to why the names of members of the Opposition Board should either be masked or missing from the said recommendation.

Furthermore, the Court noted that in the present matter, the initial recommendation of the Opposition Board did not contain the names of the members constituting the Board and that their signatures were also not visible in the document.

"In the final recommendations which are on record, only the name of Chairperson of the Opposition Board has been mentioned. This would be completely non- transparent and would result in proceedings being filed and challenges being made to the recommendation," the Court said.

It ordered "It is directed that henceforth the ld. Controller General of Patents, Designs and Trade Marks (CGPDTM) shall ensure that the names of the members constituting the Opposition Board are clearly mentioned on the cover page and the recommendations are duly signed by the members of the Opposition Board."

The plea was accordingly disposed of.

Case Title: NOVO NORDISK A S v. UNION OF INDIA & ORS.

Citation: 2022 LiveLaw (Del) 625

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