Acme Tele Power Ltd. vs Controller General Of Patents And Designs And The Assistant Controller Of Patents And Designs

S. Chandrasekaran, Technical Member

This is an appeal made against the order of the Controller of Patents dated 15.09.2009 under Section 25(1) of the Patents Act, 1970 (hereinafter

referred to as the Act) refusing grant on the Indian Patent Application No. 2083/DEL/2005.

The Appellant, an Indian Private limited Company filed the Indian Patent Application No. 2083/DEL/2005 (hereinafter referred to as the subject

application) on 5th August, 2005 and it was published on 23-2-2007 under Section 11A of the Act.

One 3rd party opponent, M/s. Selvon Pvt. Ltd., filed a representation under Section 25(1) of the Act on 16-5-2008. The Respondent No. 2

examined the patent application and the first examination report was issued on 8-8-2008. However the examiner did not rely on the grounds of

opposition raised by the opponent. On or around 12th August, 2008 an official communication was sent by the Patent office Delhi enclosing the notice

intimating the filing of 3rd Party opposition to the Appellant directing them to file the reply statement under Rule 55(4) of the Patent Rules 2003

(hereinafter referred to as the Rules). The response to this notice was filed by the Appellants on 26-09-2008. The Respondent No. 2 finally appointed

a hearing on the said pre-grant representation, on 6th July 2009. The Respondent No. 2 passed the impugned order dated 15th September 2009

refusing the application of the Appellant on the grounds of lack of novelty, obviousness and lack of inventive step, prior public knowledge and prior

public use, and insufficiency of disclosure. The Appellant herein preferred an appeal against the said order dated 15.9.2009. The Registry of the

Intellectual Property Appellate Board sought clarification from the Appellant as to how the order passed under Section 25(1) of Act is

admissible/appealable before the Hon'ble Appellate Board as it is very clear that any decision issued under Section 25(1) of the Act, by the Controller

is not appealable under Section 117(A)(2) of the Act. The Appellant's counsel replied that this appeal was preferred inter alia under Section 117 read

with Section 15 of the Act, enclosing therewith the certified copy of the order of the Controller issued under Section 25(1) of the Act. The Appellant's

counsel replied that this present appeal is maintainable as the acceptance of a representation made in a pre-grant opposition under Section 25(1) of the

Act would amount to a refusal of the subject application under Section 15 of the Act. The matter was therefore listed before the Bench for

maintainability on 2nd August, 2010.

The Appellant was represented by Shri. Sai Deepak advocate. The Appellant's counsel submitted that the Section 25(1) hearing was conducted on

6th July, 2009 and the decision was issued on 15th September 2009 and they had the time for appeal till 15th December, 2009. They had filed the said

appeal on 15th December 2009.

The counsel for the Appellant referred to the recent WIPO standing committee report on the Law of Patents dated 11th December 2009, which

has discussed in great detail comparing opposition systems prevalent across the world and their compliance with the TRIPS and Patent Law Treaty

(PLT) stating about the rationale and objectives of the opposition systems, both the pre-grant and post-grant opposition and finally said that in view of

WIPO standing committee report the decision of the Controller under Section 25(1) is in fact relatable to and should be understood as if an order has

been issued by the Controller under Section 15 of the Act. Further, the counsel submitted that the intention of the legislature, was that, ""a pre-grant

opposition system supports legal certainty by allowing a pre-review of the patentability of an invention by third parties before granting the patent and in

other words, it only increases the validity of the granted patents"". So is the case when the 3rd party opposition to the patent is allowed and the grant is

refused, the aggrieved party must have an opportunity for a judicial review by way of appeal before a competent judicial body and the competent

judicial body here is the Hon'ble Appellate Board. Hence for the sake of appeal the decision issued under Section 25(1) of the Act shall be taken as a

decision issued under Section 15 of the Act. The counsel also referred to the Japanese Patent Law, which states, ""the Japan Patent Law provided a

pre-grant opposition system which allowed the public to complement the examination by substantive examiners."" The counsel further submitted that, a

pre-grant opposition is aimed at assisting the Controller in arriving at an informed decision upon receipt of all material information pertaining to the

patent application. He said further that, a pre-grant opposition does not in any way alter the nature of the natural course of examination, except that it

draws the attention of the Controller to certain objections which he might have raised had he been in possession of the material submitted by the party

in a representation under Section 25(1) of the Act.

The counsel also submitted that the legislative logic has been recognized by the Hon'ble Supreme Court in J. Mitra and Co. V. Assistant Controller

of Patents (2008) 10 SCC 368, where the Supreme Court has held that an order rejecting a representation of a pre-grant opposition proceeding is not

appealable since the opponent aggrieved has the option of filing a post-grant opposition under Section 25(2) of the Act. Had the Section 25(1) been

mentioned in Section 117(A)(2) of the Act, it would have had the result of allowing an appeal before this Hon'ble Appellate Board by a person whose

representation for pre-grant opposition has been rejected. The Counsel continued that, on the other hand, since the refusal of a patent application

pursuant to a pre-grant opposition would be treated as a refusal order under Section 15 of the Act which is appealable before the Hon'ble Appellate

Board, there was no need for the legislature to include the Section 25(1) in Section 117(A)(2) to cover the cases where a patent application has been

refused pursuant to a representation in a pre-grant opposition. The counsel also emphasized, that, the pre-grant opposition is only an extension of the

examination process of a patent application, by the examiner with the assistance of a third party and also referred to the Rule 55(6) of the Rules,

which clearly stipulates that in case the representation of the opposing party in a pre-grant opposition proceeding is allowed, it has the result of refusal

of the patent application and consequently such refusal of the patent application would fall only under an order of refusal as per Section 15 of the Act.

The counsel also referred to the decisions of the Madras High Court in the series of writ petitions, relating to Novartis AG V. Union of India and

Ors. (M.P Nos. 1 to 5 of 2007 in TA / 1 to 5 / 2007/PT/CH.) which have been transferred for adjudication by the Hon'ble Appellate Board. The

counsel submitted that the transfer of aforesaid such writ petitions and the consequent decisions of the Hon'ble Board on merits as the one in Novartis,

supports the Appellant's submissions that this Hon'ble Appellate Board has the jurisdiction to entertain appeals arising out of refusals of patent

application in pre-grant opposition proceedings. Had there been a doubt regarding the appellate jurisdiction of this Hon'ble Board over appeals from

rejection of patent applications in pre-grant opposition, the aforesaid writ proceedings pending before the introduction of Section 117A, ought not to

have been transferred for adjudication by this Hon'ble Board.

We have heard the arguments of the counsel and his submission in this regard. It is very clearly noticeable that this is an appeal against the order of

the Respondent No. 2 issued under Section 25(1) of the Act, wherein a third party intervening opponent M/s. Selvon Pvt. Ltd. made a 3rd party pre-

grant opposition to the grant of patent to M/s. Acme Tele Power Ltd. (the Appellant herein).

Let us first peruse the sequence of patent grant procedure. The Controller of Patents does the examination of the patent applications for the grant

of patents under Section 12 of the Act (under chapter 4) which deals with, mainly regarding the publication and examination of applications for patent

leading to the grant of patent. This chapter 4 also deals with the applications filed, regarding its publication in the patent journal, and as to when the

applicant has to make a request for examination, which is subsequently followed by the detailed technical examination by the patent office considering

the patentability criteria. Also there is dealt with the procedure and action as to when the Controller can refuse to grant the patent keeping in view of

the stipulated time given in the first examination report issued subsequent to the technical examination of the patent application. Here in all these

proceedings, it is seen that there are only two parties, namely, the Controller and the applicant for patent and there is no 3rd party present.

Consequently, when the Controller issues the examination report, it is directed towards the applicant for patent and either he has to comply with the

requirements raised therein within the stipulated time given or if he does not agree with the directions for amendment or any correction, he may seek

an opportunity of hearing as well, in case, the Controller proceeds to make a decision adverse to the applicant. However, it is very clear that the

proceeding is only between the two parties, namely, the applicant and the Controller. Subsequent to this action, in chapter 5 under a different heading

Opposition proceedings to grant of patents"" under Section 25 another party enters the proceedings, by way of pre-grant opposition, if and when the

patent has not been granted, by way of opposition sending the representation directly to the Controller on any of the grounds specified therein. The

procedure as to how this pre-grant opposition is to be carried out or effected is given under Rule 55 in chapter 6 of the Rules. This shows very clearly,

that it is a next stage after the examination of the patent application showing that it is altogether a separate proceeding, but, ofcourse, subsequent to

the proceeding which took place between the Controller and the applicant and nobody else. Therefore it is very clear based on the objections raised by

the Controller either the applicant has to comply with the technical objections by making necessary amendments in the specification or make

necessary observations to satisfy the Controller that he deserves to get the patent granted based on the disclosure in the specification already made.

Here again if the Controller is not satisfied with the observations of the applicant, he may offer an opportunity of hearing to the applicant for patent

and allow and direct the applicant to amend the specification to his satisfaction and in the event that the applicant does not comply with the same, the

Controller may refuse to proceed with the application under Section 15 of the Act. This refusal gives the power of appeal against the decision of the

Controller under Section 117 (A) (2) whereas in pre-grant opposition proceeding as clearly given in the statute, the second party or as worded in the

statute, the third party enters into the proceeding, mainly with the intention of opposition to the grant of patent and he submits the representation to the

Controller directly. The Controller of Patents then forwards this representation to the applicant calling for his observations and reply if any, together

with the evidence thereof. Finally, the Controller may decide the issue by offering an opportunity of hearing to both the parties namely (it's a bipartite

proceeding) the applicant and the 3rd party intervening opponent and decide the issue (1) allow the pre-grant opposition and reject the patent (2)

dismiss the pre-grant opposition and grant the patent.

Here in this first category, it is very clear and known to all parties in the proceeding that the opponent who comes to enter the proceeding by way

of pre-grant opposition has a remedy under Section 25(2) of the Act as post grant opposition or under Section 64 by way of revocation of patent

before the Hon'ble Appellate Board. Also it is known to the parties in the proceeding that if the pre-grant opposition is allowed and the patent is

refused there is no remedy provided to the applicant under the law in an explicit manner in the statute. That is, the applicant for patent cannot appeal

against the order of the Controller under Section 25(1) before this Appellate Board. As the Controller's decision issued under Section 25(1) is not

explicitly provided or mentioned under Section 117(A)(2) for appealing against, it is a clear fact that the applicant for patent has no remedy except by

way of judicial review to the Court. But this order of the Controller can never be taken as if it is an order issued under Section 15 of the Act. Further

it is neither equivalent to nor relatable to the provisions contained in Section 15 of the Act nor the pre-grant opposition proceeding as an extension or

assistance to the examination process of a patent application. The intention of the third party entering the pre-grant opposition is very clear, that the

patent should not be granted under the grounds specified therein and that is why he makes the opposition under Section 25(1). Whereas, in an

examination process, the intention of the patent office or the patent examiner or the Controller of patents is to technically examine the patent

application and make the patent specification a worthwhile document under chapter IV before it is made open to public by granting a patent

simultaneously, if the invention claimed has met the patentability criteria as mentioned in the statute. So this action of the third party can never be

taken as an action or the pre-grant opposition action has been in aid of the examination of the patent application. That is why the legislature has very

clearly brought this proceeding under a different heading called ""an opposition proceeding"" simultaneously keeping a check that if the third party

opponent is not an interested person, then, he cannot proceed for appeal or for a further proceeding namely post grant opposition under Section 25(2)

or a revocation proceeding under Section 64 of the Act. The intention of the legislature is very clear that the patent monopoly right being the negative

right, a provision of third party intervention opposition as a pre-grant opposition has been brought in, to check no worthless patents has been granted by

the Controller. So, these two proceedings are not relatable to each other and the decision issued under Section 25(1) cannot be deemed to have been

given under Section 15 of the Act. However, we also agree that there should be a remedy by way of appeal to the applicant whose patent has been

refused due to the intervention of the third party in a pre-grant opposition proceeding and also in the interest of natural justice when such a remedy for

the aggrieved applicant is available, he would be able to prefer an appeal against the order of the Controller in case the Controller takes an adverse

decision against the applicant. In a similar matter listed before us, reference was made to the ruling and interpretation given by the Hon'ble Delhi High

Court W.P.(C) No. 532 of 2010 that an aggrieved applicant in a 3rd party pre grant opposition proceeding under Section 25(1) of the Act, may prefer

an appeal before this Appellate Board. Consequently when such an opportunity is given to one applicant in a 3rd party pre-grant opposition proceeding,

the very same liberty of an appeal can be extended to the aggrieved applicant in this case too, as an uniform procedure and according to the legal

principles of Natural Justice, every applicant in all such similar proceedings, when aggrieved should be treated equally and given due relief without any

discrimination. Here in this case, the Appellant probably is not aware of the recent ruling of the Hon'ble Delhi High Court and though he has not

referred to it, when such facility and relief is extended or provided to one applicant, we decide to extend the same facility and relief to this Appellant

also. Therefore taking into consideration the law of natural justice and the recent ruling and interpretation by the Hon'ble Delhi High Court, we hereby

allow the application and direct the Registry to number this appeal if in order and list the same before this bench as and when it is matured for hearing.