Pre-Grant Opponent Cannot Be Kept In Dark About Developments In Examination Process Of Patent Application: Delhi High Court

The Delhi High Court has held that the proceedings in a pre-grant opposition and simultaneous examination of a patent application cannot result in a situation where the pre-grant opponent is kept in dark about the developments taking place in the examination process of a patent application.

A single judge bench of Justice Pratibha Singh observed,

"For example, when amendments are filed by the Applicant, an immediate decision ought to be taken on allowing or disallowing the amendment so that there is transparency and clarity as to what are the claims being considered by the Controller. A short and brief order should be passed in respect of the amendments which should be uploaded on the website of the Patent Office so that everyone concerned would know the decision on the amendment. In any event, if an amendment is being carried out during the pendency of a pre-grant opposition, the ruling on the amendment ought to be sent to the pre-grant opponent as well."

The bench added,

"Sometimes amendments are carried out during the course of hearings across the table as well, when the patent agent of the Applicant attends the hearing before the Controller. In such a scenario, the Controller ought to examine the said amendments and convey the decision to the Applicant, and if the Opponent is present, even to the Opponent."

Background

The observation comes in a petition filed by opponent, Natco Pharma Ltd. in respect of pre-grant opposition proceedings against patent application Novartis AG. Natco Pharma sought to set aside the order of Asst. Controller refusing its application seeking cross-examination of the Applicant's witnesses.

The Opponent argued that the Patent Office ought to have first given a ruling as to whether the amendments filed by the Applicant were allowed and if allowed, which is the final set of claims being considered for grant. Upon this decision being made, the pre-grant opponent ought to be awarded a proper hearing in respect of the claims which are finally being considered by the Patent Office. It was further submitted that cross examination ought to have been permitted as the affidavits were filed by the Applicant several years after pleadings were completed by the parties and no leave was taken for the same. There are grounds which need to be confronted to the witness.

The Applicant argued that the patent application of the Applicant, which was filed way back in 2007, is not being allowed to proceed further due to the repeated hinderances and obstacles being caused by pre-grant oppositions. It was highlighted that the delay was such that even if the patent is granted today, the term of the patent expires in 2026 and only four years of the life of the patent is remaining. Novartis further submitted that cross-examination cannot be claimed as a matter of right by the Opponent as it would unduly delay the examination and decision on the Applicant's patent application.

Findings

At the outset, the Court identified that the proceedings in the patent application and the pre-grant opposition had been delayed substantially due to both the parties. On one hand, the applicant continued to amend its claims from time to time over a period of five years and on the other hand, the patent application was exposed to multiple oppositions by several parties due to delay in the examination process.

In this backdrop, the Court opined that there ought to be a systematic manner in which proceedings in pre-grant oppositions are conducted and that repeated filing of pre-grant oppositions due to non-existence of any time limits for filing a pre grant opposition and delay in adjudication of one pre-grant opposition usually results in further pre-grant oppositions being filed leading to further delays in grant of patent. 

"The patent application has the chance of being caught up in the swirl of pre-grant oppositions by Opponents. Amendments by the Applicant who gets wiser with each objection being taken, leads to further delays," it observed.

The Court referred to M/s UCB Farchim SA v. M/s Cipla Ltd. where the concept of pre-grant opposition and a post-grant opposition was discussed. It was held that while a pre-grant opposition can be filed under Section 25 (1) of the Patents Act "at any time after the publication of the patent application but before the grant of a patent", a post-grant opposition under Section 25(2) of the Patents Act has to be filed "before the expiry of one year from the date of the publication of the grant of patent".

In light of this judgment, the Court noted that in the present case, there were four amendments on record filed by the Applicant and hence five sets of claims had been filed much after the completion of the pleadings in the pre-grant opposition. There were three substantive affidavits that had been filed by the Applicant along with an amended set of claims. Rulings on the amendment were yet to be issued by the Patent Office.

Thus, in the opinion of the Court, an opportunity had to be granted to the Opponent to rebut the evidence of the Applicant. Accordingly, the opponent was permitted to file affidavits of its own experts in rebuttal to the three expert affidavits filed by the Applicant. 

CASE TITLE: NATCO PHARMA LIMITED v. UNION OF INDIA & ORS.

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