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Judgment
K.N. Basha, J
1 . All these appeals arising out of the common order of the Assistant Controller of Patents and Designs dated 30/4/2010. The appellant in OA/28/2010/PT/CH is the patentee and in other matters the appellants are the parties who have opposed the grant of patent to the appellant in OA/28/2010/PT/CH. Mr. Rahul Balaji the learned counsel for the appellant in OA/28/2010/PT/CH would mainly contend that the impugned order is vitiated on the ground of gross violation of Principles of Natural Justice. The learned counsel in order to substantiate such contention put forward two fold contentions namely (1) the Assistant Controller of Patents having taken three independent expert evidences filed in the form of affidavits under Rule 60 of the Patent Rules 2003 on record has failed to forward the said expert evidences for the examination by the Board and (2) it is pointed out that the opposition board recommendations of October, 2008 and January, 2009 were not furnished to the appellant and they submitted that the said recommendation came to their knowledge only after passing the impugned common order on 30/04/2010. Therefore, it is contended that the impugned order is vitiated on the ground of violation of Principles of Natural Justice.
Mr. Anand Grover, the learned senior advocate appearing for the respondent No. 06 and 07 in OA/28/2010/PT/CH would submit that the said respondent even made a request for furnishing of the recommendations of the Board and in spite of the specific request they have not been furnished with the copy of the recommendations.
3 . Mr. S. Majumdar, the learned counsel appearing for respondent No. 2 and 5 in OA/28/2010/PT/CH is also not disputing the said factors pointed out by the learned counsel for the appellant and the learned senior advocate for respondent No. 6 and 7 in OA/28/2010/PT/CH.
In view of the above said undisputed facts, it is to be stated that it is well settled with the decision of the Hon'ble Apex Court and the decision of this Bench that the expert evidence adduced by the parties should be sent for the Board's examination and the recommendations of the Board shall be furnished to the respective parties. It is relevant to refer the decision of the Hon'ble Apex Court in CIPLA v Union of India, Civil Appeal No(s). 8479-8480 of 2012; 2013 (54) PTC 126[SC] (hereinafter, referred to as the 'CIPLA Judgment'), has held that:
Provisions of the Act and the Rules, therefore, clearly indicate that the Opposition Board has to make its recommendations after considering the written statement of opposition, reply statement, evidence adduced by the parties with reasons on each ground taken by the parties.
Such recommendations are made after examining the evidence adduced by the parties before it.
This Bench also followed the decision in IPAB order No. 107/2013 in Sugen Inc. & others v. Controller of Patents that:-
The case concerned an appeal against allowing post-grant opposition filed by the Respondent. One of the grounds was that an affidavit "Cui 2? was not considered by the Opposition Board. The IPAB held:
Finally we come to the affidavit, which is called Cui 2. This was filed as further evidence. No time limit is fixed under Rule 60 for filing this evidence except to state that it should be filed before the controller has fixed the hearing under Rule 62.
The office had no justification in not sending this evidence to the Opposition Board. Not having sent it, the Controller had decided to take it on record at the time of hearing. If it could not have been entertained for the purpose of forwarding it to the Opposition Board it could not have been entertained by the Controller at the time of hearing too. According to the appellant, this was a crucial piece of evidence since it answers the evidence of the experts filed by the Respondent. If so, it was essential that the Opposition Board had the opportunity to consider it before forwarding the recommendations. It is possible that even after seeing this affidavit the Board might still have held that there was no inventive step and it was obvious. But the law requires that this was placed before the Opposition Board when the recommendations were made. The unexplained non-forwarding the reply evidence of the appellant would render the Opposition Board's recommendation defective. Therefore the Controller's decision which is arrived at after consideration of the defective recommendations also becomes flawed. As we have stated earlier, there is no reason why this affidavit was not sent to the Board. On this ground we have no option but to set aside the order.
This Board also held in Associated Capsules v Controller of Patents and Designs, IPAB Order No. 217/2013, wherein it was held that:
In our considered view even if these documents were given and considered by the Opposition Board, the report ought to be furnished to both the parties for their submissions....There has been a violation of the principles of natural justice.
5 . The principles laid down by the Hon'ble Apex Court and by this Bench in the decisions cited supra are squarely applicable to the issue involved in the instant case as we have already pointed out that the Assistant Controller of Patent admittedly not sent the three independent expert evidences produced by the appellant on 13/3/2009 and taken on record as per rule 60 of the Patent Rules, 2003 and further directed the appellant to file the evidence in the form of legalized affidavits and directed the respondent No. 2 to 7 to file the response to the expert affidavit. It is also pointed out earlier that the Opposition Board recommendations caused in the month of October, 2008 and January, 2009 were not furnished to the appellant including the respondents in spite of the specific request made by the 6th and 7th respondents. In view of the same we have no hesitation to hold that the impugned order was passed in flagrant violation of the Principles of Natural Justice. For the forgoing reasons we are constrained to set aside the impugned order and remand the matter to the Assistant Controller of Patents and Designs, Chennai for reconsideration of the matter afresh by affording the opportunity to all the parties by sending the expert evidence for the Board's examination and furnishing the recommendations of the Board to all the parties. It is also pertinent to note that all the parties in this matter have agreed for hearing the matter from the post grant stage at the time of disposal of the Special Leave Petition by the Hon'ble Apex Court as per order dated 02/3/2009 in SLP civil No. 3522 of 2009. Therefore, it is made clear that there shall be an order of status-quo as on date. Mr. Rahul Balaji, the learned counsel for the appellant would also submit that the appellant in OA/28/2010/PT/CH undertakes not to pursue the matter in infringement suit pending in suit No. 2869 of 2008 on the file of Hon'ble Bombay High Court. It is made clear that the Assistant Controller of Patents and Designs, Chennai shall reconsider the matter afresh as stated above and dispose of the matter within a period of five months from the date of receipt of records and evidences from this Board. It is further made clear that all the parties shall give co-operation for the disposal of the matter within the stipulated time. It is also open to all the parties namely appellant in OA/28/2010/PT/CH/respondents to give their list of documents and evidences within seven days including the correction if any to be made in the list of documents filed earlier. It is also recorded before the parties in the matter that the respondent No. 6 and 7 in OA/28/2010/PT/CH filed a separate appeal in OA/26/2010/PT/CH and the respondent No. 2 and 5 in this OA/28/2010/PT/CH also filed separate appeal in OA/25/2010/PT/CH and OA/32/2010/PT/CH challenging only certain findings of the Assistant Controller namely compliance by the patent applicant with section 8 of the Patents Act, 1970, according convention status to patent applications and in respect of process claim alone in the impugned order stating otherwise the impugned order is in their favour. Accordingly all the above appeals are disposed of. Consequently the Miscellaneous Petition No. 91/2010 and 34/2012 in OA/28/2010/PT/CH and the Miscellaneous Petition No. 11/2011 and 32/2012 in OA/32/2010/PT/CH are become in fructuous.