Dhaval Diyora vs. Union of India and ors. decided on November 5^th, 2020 by Bombay High Court writ petition (l) no. 3718 of 2020.

The Bombay High Court addressed the question of whether the pre-grant representation could be filed while the decision of the Controller of Patents to reject a patent application is on appeal before the IPAB.

This case refers to the Patent Application Numbered 991/MUMNP/2003 in the Indian Patent office that was published on 16/03/2007.

Pfizer Products Inc had filed an application for patent grant in India on October 27, 2003. The application referred to invention titled “Optical Resolution of (1-Benzyl-4-Methylpiperidin- 3-YL) Methylamine and the use thereof for the preparation of Pyrrolo 2, 3-Pyrimidine Derivatives as Protein Kinases inhibitors”. After a series of examinations and responses, the Controller of Indian Patent office rejected to grant a patent for the above mentioned Patent Application. The Controller of India Patent Office refused the patent grant on the grounds that Pfizer Products Inc had not disclosed EPO action and the compound was the same as the subject matter of another.

However, Pfizer Products Inc filed a review on August 9, 2011. That was also rejected. Further, Pfizer Products Inc filed an appeal before the Appellate board on June 26, 2014.

Meanwhile, the European Opposition Division order was issued on October 27, 2014 which declared that claim compound was novel and invented.

The IPAB passed an order directing the Indian patent office to consider the matter afresh. The Controller held that the invention was not patentable and rejected the Application on September 3^rd 2015.

However, the appeal was pending before the IPAB. IPAB took up the appeal on August 10, 2018 and order was reserved for giving reasons on merits and stated that the hearing was concluded on August 10, 2018, and it was fixed for pronouncing the reasons on 21^st August 2018.

On 18 August 2020, the Petitioner filed pre-grant opposition. Pfizer Products Inc replied that the application was not maintainable on the same day.

It is laid down by the Supreme Court in Bureau Veritas & Ors that when the court records as to what transpired in the court, it is conclusive of the fact stated. It cannot be controverted in such a casual manner as said to be done by the Petitioner.

Further, it should be noted that the scheme of section 25(1) read with Rule 55 postulates that both the applications seeking patent and pre-grant opposition are to be heard by the Controller simultaneously. However, the Section 25(1) read with Rule 55 does not apply for the IPAB.

In this case, the Petitioner had not filed a single pre-grant opposition since the date of publication i.e., March 16 2007 until the final rejection by the Controller on September 3^rd 2015. The Section 25(1) postulates that the pre-grant opposition can be filed during the period from the date of publication till the date of final rejection by the Controller in the Indian Patent Office. Further, the IPAB too concluded the hearing for the patent application on August 10, 2020 and the order was reserved for giving reasons on merits. But the Petitioner filed the pre- grant opposition only on August 18, 2020 i.e., after both the Controller as well as the IPAB had effectively concluded the hearing on the patent application by Pfizer Products Inc. Since the application seeking patent was rejected by the Controller of Indian Patent Office, the Petitioner has no right to file a pre- grant opposition u/s 25(1). Secondly, after the Appellate Board has allowed the appeal and has directed the Controller to issue the patent, only ministerial actions remained, and no pre-grant opposition could be filed. Hence the IPAB granted the patent to Pfizer Products Inc on 21 August, 2020.

The Petitioner approached the Bombay High Court with a writ Petition stating that the Appellate Board pronounced the order on 21 August 2020 granting the patent to Pfizer Products Inc. The contentions raised by the Petitioner was based in two parts:

1. U/S 43, the patent application is granted when it is sealed and not when the hearing is concluded with the phrase- “patent shall be granted”.
2. U/S 117-D the Procedure for application for rectification, etc., before Appellate Board- the section 117-D postulates that the Appellate Board can only rectify the application.

The contingency specified under the first part of section 43 was already over, and only ministerial act remained to issue the patent. Section 116 and 117 of the Act confer wide powers on the Appellate Board. As per section 117- D (2) of the Act the orders passed by the Appellate Board have to be implemented by the Controller. Section 117-D(2) pertains to amendment of entries and therefore order of Board is an order granting the patent. The Appellate Board had granted the patent.

In particular, Pfizer Products Inc, the Controller and the IPAB referred to section 117-D(2) stating the IPAB can not only look into an application for rectification but to every order or judgement relating to patent under the Act. Hence, the IPAB rejected the appeal, holding that once the appeal is kept for pronouncement of reasons, application to the effect that order should not be pronounced cannot be entertained.

Further, the Bombay High court observed that The Legislative intent to widen the locus standi under the amended Section 25(1) is not to create individual right as such but to provide access to any person to assist the controller in taking a correct decision. The legislature has not conferred this right to be abused. Hence the Bombay High court dismissed the Writ petition and concluded that the Petitioner’s pre-grant opposition is not maintainable in law, therefore the challenge of the Petitioner to the impugned order cannot be entertained and no direction can be issued to hear the application filed by the Petitioner.

The sequence of events is as follows:

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