Millennium Pharmaceuticals, Inc vs Natco Pharma Ltd. And Ors.

Prabha Sridevan, J

This application has been filed for condonation of delay. The impugned order was passed by the Controller on 24.7.09 for refusing the grant of

patent under National Patent Application No. 5633/DELNP/2006. The counsel for Appellant received the order on 28.8.09.

2 . The counsel for Appellant filed the appeal on 26.3.2010 after a long delay. The counsel for the Appellant submitted that on the day the impugned

order was passed, it was understood that there was no express provision to file an appeal against an order under Section 25(1) of the Patents Act,

1970 (Act in short), and that the remedy was to file a petition under Article 226 of Constitution of India. The counsel further submitted that

subsequently the decision of the Delhi High Court dated 8.2.2010, declared the law and it was held that an appeal against the order under Section

25(1) is maintainable. Thereafter, the Appellant filed the appeal on 26.3.2010. The matter was listed for maintainability and the order was passed

directing the Registry to number the appeal on 30.11.2010. Subsequently, the Registry numbered the appeal and issued Form-C on 10.1.2011.

However, the Registry withdrew the said Form-C on 15.4.2011. The learned Counsel for the Appellant submitted that once an order was passed in

favour of the Appellant, the registry had no power to cancel or withdraw the Form-C and in any case, such withdrawal or cancellation can be done

only by an order of the Board.

It is submitted that on the date when the impugned order herein was passed, the only remedy was by way of challenging the order under the Article

Learned Counsel submitted that the appeal had been filed after the judgment of the Delhi High Court or at least within a reasonable time

thereafter. Learned Counsel said that the delay is reasonable and the cause shown should be accepted.

4 . Learned Counsel for the Respondent submitted that the question of deciding whether there was sufficient cause would arise only if some reason is

shown in the affidavit, whereas, no reason is given in the affidavit to support the petition for condonation of delay. The fact that there was a judgment

in a matter in which the Appellant was not a party cannot be a reason for the delay. There is nothing to show that they were pursuing the matter.

Learned Counsel submitted that if they were genuinely aggrieved, they would have filed a writ petition.

5 . At the outset, we make it clear that once an order is passed by the Board, the Registry cannot take any step to nullify the order. The proper course

would be to seek directions from the Board. So the Registry ought not to have withdrawn the Form-C unilaterally. But it appears that when the matter

was listed for arguing maintainability, the Board had directed the Registry to number the appeal, if in order. By inadvertence the Registry overlooked

the condone delay application and numbered the appeal. It is obvious that the Registry could not have numbered the appeal, without the time being

extended by the Board as per Section 117 A of the Act. But yet, the Registry ought to have brought this to the attention of the Board and obtained

instructions. So while we agree with the Appellant's grievance, it does not help him. The Appellant must have the delay condoned before the appeal is

numbered.

Now we come to the merits.

The judgment of the Delhi High Court in 2010 (42) PTC 425 (Del): 167 (2010) DLT 459 M/S. UCB FARCHIM SA v. CIPLA LTD. and Ors.

Nevertheless, as regards the maintainability of a writ petition by such third party pre-grant opposer against the Controller's order rejecting the

opposition, this Court would like to observe that the power under Article 226 of the Constitution is wide and can be exercised on the facts and

circumstances of a given case where it appears to this Court that there is no other efficacious remedy available or that the interests of justice require

this Court to interfere.

Therefore where a pre-grant opposition under Section 25(1) is filed by a person who is a third party and not a person interested in the sense of the

term under Section 25(2) or Section 64 of the Patents Act, and such pre-grant opposition is rejected by the Controller, it would be for this Court when

approached by such third party pre-grant opposer under Article 226 of the Constitution to determine if in the facts and circumstances, the petition

requires to be entertained.

In the considered view of this Court where the grant of patent is refused by the Controller after accepting a pre-grant opposition under Section 25(1)

of the Patents Act, the applicant for a patent will have a remedy by way of an appeal to the IPAB under Section 117A of the Patents Act. The

refusal to grant patent is in fact relatable to and should be understood as an order by the Controller under Section 15 of the Act which order is in any

event appeal able to the IPAB under Section 117A.

In view of the decision of this Court as detailed hereinbefore, this Court declines to exercise its jurisdiction under Article 226 to entertain this petition,

not because it does not have the power to do so, but because in the considered view of this Court, the Petitioner has an efficacious remedy by way of

an appeal under Section 117 A of the Patents Act before the IPAB. The order refusing the grant of patent is in fact an order under Section 15 of the

Patents Act which in terms of Section 117 A is an appeal able order.

Therefore, by this judgment it was declared, that an appeal would lie against an order passed under Section 25(1) of the Act. As regards, the further

course of action the Delhi High Court had given directions as follows:

The judgment of the Delhi High Court in 2010 (42) PTC 425 (Del): 167 (2010) DLT 459 (Cited Supra)

In view of what has been held hereinbefore, the appropriate course for the Petitioner would be to file an appeal before the IPAB under Section 117 A

of the Patents Act against the order dated 3rd March 2009 passed by the Assistant Controller of Patents. If such an appeal is filed within two weeks,

accompanied by an application for condonation of delay in filing the appeal, the IPAB will consider such application on merits in accordance with law

after accounting for the period during which the present writ petition has been pending. Needless to say that IPAB will hear NPL before passing such

order.

And this indulgence was granted to the Petitioners before the Delhi High Court. In the present case, even assuming that the Appellant can take

advantage of the judgment of the Delhi High Court they have to explain the delay from 24.7.2009 till date.

But the averments in the affidavit in support of the application of Condonation of Delay do not give any reasons for the delay. They are extracted

as follows:

2) That in view of the fact there is no express provision in the Patents Act, 1970 wherein an appeal may lie before this Hon'ble Board against an order

accepting a pre-grant opposition, thereby rejecting the patent application, the Appellant through their attorney attained knowledge of the fact that

maintainability of writ petition challenging an order passed by the Patent Office in a pre-grant opposition under Section 25(1) of the Patents Act, 1970

is pending adjudication before Delhi High Court.

That vide order dated February 8, 2010, Hon'ble Delhi High Court (copy of the order is annexed hereto and marked as Annexure-A) held that an

appeal against an order accepting pre-grant opposition thereby rejecting the patent application would lie before this Hon'ble Board.

That in light of Section 5 of the Limitation Act, 1963, it is submitted that the delay in filing the present appeal before this Hon'ble Board ought to be

condoned.

We see that there is no explanation for the delay.

The Petitioners before the Delhi High Court in the reported case were aggrieved by an order which they thought was not appeal able, and they

moved writ petitions. This Appellant did not do so. To take advantage of the order, this appeal should have been filed at least within two weeks from

the date of judgment of the Delhi high Court, because they rest their case on that the Delhi High Court judgment is dated 8.2.2010. This appeal is filed

on 26.3.2010. We are not satisfied that the Appellant has explained the delay in filing the appeal against the order dated 24.7.2009 with the delay of

more than four months. It is not really length of the delay which matters, but whether the explanation is satisfactory. There is no explanation in the

affidavit filed by the Appellant. The petition is dismissed.