Madras High Court: In a writ petition filed against the post grant opposition proceedings against petitioner’s Patent application and quash the same and consequently, direct the Controller of Patents and Designs (‘Controller’) to constitute a fresh Opposition Board to give fresh recommendation in the post grant opposition proceedings against Patent after disposal of the Form 13, Senthilkumar Ramamoorthy, J. has directed the Controller of Patents and Designs to constitute within 30 days a fresh Opposition Board comprising officers other than the officers who formed the previous Opposition Board.
Further, it directed that the newly constituted Opposition Board should examine the entire evidence and the amended claims of the petitioner and provide its recommendations within a maximum period of two months from the date of constitution of such board. It also directed the Controller to fix and conclude the hearing in the opposition proceedings as expeditiously as possible.
Background
The petitioner filed an application in April 2016 for the grant of patent to an invention entitled “An improved process for the preparation of Linezolid”. The patent was granted on 20-03-2017. On 05-03-2018, a competitor of the petitioner filed a post grant opposition to the patent.
The petitioner submitted that he did not file evidence along with the reply statement to the opposition. Therefore, the competitor was not entitled to file additional evidence along with its rejoinder as per Rule 59 of the Patents Rules, 2003 (‘Rules, 2003’). He further submitted that both parties filed evidence after receiving the recommendation of the Opposition Board. The Opposition Board is under an obligation to consider the additional evidence and issue fresh recommendations. Therefore, it is liable to be reconstituted and called upon to issue fresh recommendations after considering the complete evidence on record.
Analysis:
The Court noted that both parties were permitted to submit evidence after the issuance of the recommendations of the Opposition Board. The Patents Rules envisage that evidence submitted under Rules 57 to 60 would be placed before the Opposition Board. However, pursuant to the writ petition filed by the petitioner before this Court earlier, the Controller agreed to receive further evidence and such evidence was not by way of publication. Sub-rule (5) of Rule 62 directs the Controller to decide the opposition after taking into consideration the recommendations of the Opposition Board.
Thus, the Court said that it would be meaningless for the Controller to take a decision based on the recommendations issued by the Opposition Board in May 2019, and natural justice clearly requires that the additional evidence placed on record by both parties should be considered by the Opposition Board. Thus, to preclude the possibility of confirmation bias, the Court viewed that the Opposition Board should be reconstituted.
[Optimus Drugs Private Limited v Union of India, 2023 SCC OnLine Mad 8013, Order dated 12-12-2023]
Advocates who appeared in this case :
For Petitioner: Senior Counsel P.V. Balasubramaniam
For Respondents: Advocate Madanagopal Rao, Advocate S.Suba Shiny
