Tag Archives: post grant opposition
Can pre-grant opposition be filed while the decision of the Controller is on appeal before the IPAB?
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Dhaval Diyora vs. Union of India and ors. decided on November 5th, 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 3rd 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 21st 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 3rd 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:
- 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”.
- 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:
|
Sl. No |
Date |
Event |
|
1. |
29 May 2002 |
Pfizer Products Inc filed an International Patent Application – PCT/IB02/01905 |
|
2. |
10 June 2002 |
National Phase Application |
|
3. |
27 October 2003 |
Pfizer Products Inc filed National Patent Application – PCT Appl. PCT/IB02/01905 |
|
4 |
16 March 2007 |
National Patent Application 991/MUMNP/2003 was published under Section 11-A |
|
5 |
30 March 2008 |
1st FER |
|
6 |
27 January 2009 |
FER reply by Pfizer Products Inc |
|
7 |
14 March 2011 |
Notice was issued by the Controller of India – two groups of inventions cannot be included in the same application and the claims were not novel. |
|
8 |
9 June 2011 |
Written submissions were filed along with the amended claim by Pfizer Products Inc |
|
9 |
9 August 2011 |
2011 Pfizer Products Inc filed a review. Cause: The Patent Office refused Pfizer Products Inc 's application on the ground that Pfizer Products Inc had not disclosed European Patent Office action and the compound was the same as the subject matter of another.
|
|
10 |
27 March 2014 |
Review dismissed. |
|
11 |
26 June 2014 |
Pfizer Products Inc filed an appeal before the Appellate Board. |
|
12 |
27 October 2014 |
European Opposition Division order was issued which declared that claim compound was novel and invented. |
|
13 |
31 October 2014 |
Appellate Board passed an order directing the Patent Office to consider the matter afresh. |
|
14 |
22 January 2015 |
Hearing. |
|
15 |
30 January 2015 |
Claims amended and filed. |
|
16 |
3 February 2015 |
Written submissions were filed. |
|
17 |
3 September 2015 |
The Controller held that the invention was not patentable and rejected the application. |
|
18 |
10 August 2020 |
The Appellate Board concluded the hearing |
|
19 |
18 August 2020 |
Petitioner filed pre-grant opposition. |
|
20 |
18 August 2020 |
Pfizer Products Inc replied that the application was not maintainable. |
|
21 |
21 August 2020 |
IPAB grants the patent to Pfizer Products Inc. |
|
22 |
22 September,2020 |
The Petitioner approached the High Court with a Writ Petition |
|
23 |
05 November, 2020 |
Writ Petition dismissed. |
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Impact of Post Grant Opposition on Rights of a Patentee
An interim order of the High Court of Delhi in Novartis AG Vs. Natco Pharma Limited dealt with rights of a patent owner when the patent is subjected to post grant opposition. The judgment can be downloaded here
Natco had filed a post grant opposition on a patent granted to Novartise. The Opposition Board has reserved its order on April 10, 2019. In the meantime, Natco launched a product under the mark NOXALK even before the decision on the post grant opposition could be issued. In response, Novartise brought a suit seeking permanent injunction alleging infringement of its patent by Natco.
From a patent law perspective, the issue to be decided was whether a patent owner can initiate infringement proceedings when a post grant opposition is pending.
Natco relied on the decision of the Supreme Court in Aloys Wobben and Anr. vs. Yogesh Mehra and Ors. AIR 2014 SC 2210 to argue that once a post grant opposition is filed, the rights therein are yet to be crystallized, since the post grant opposition is pending. The Supreme Court in Aloys Wobben (supra) had held that right of a patent holder crystallizes only after challenges (post grant opposition) raised to the grant of a patent are disposed of favorably, to the advantage of the patent holder. Natco contended that, in the absence of such crystallization, the rights available to the patent holder under Section 48 of the Patents Act does not exist. In other words, Natco contended that since the decision in the post grant opposition is pending, Novartis lacks the right to initiate a patent infringement suit.
The judgment can be downloaded here
The High Court of Delhi, while acknowledging the decision of the Supreme Court, made a distinction that that although the rights are not crystalized, the rights still subsists even during the pendency of post grant opposition. The High Court further added that “Section 48 of the Patents Act grants rights in favour of a patentee, which are not affected during the pendency of a post-grant opposition.” Furthermore, the High Court observed that the facts of the present case in which an allegedly infringing product is launched prior to the decision in the opposition by the entity opposing the Patent, did not arise in the facts of Aloys Wobben (supra). In view of the foregoing, the High Court of Delhi passed an order restraining Natco, for the time being, from carrying out any fresh manufacturing of pharmaceutical preparations comprising of the active pharmaceutical ingredient (API), “Ceritinib”.
We hope this article was a useful read.
Please feel free check our services page to find out if we can cater to your requirements. You can also contact us to explore the option of working together.
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This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
5 options available if your product is infringing on a patent
Companies and individuals alike take aggressive steps to protect their patent rights. Most often, if a patent holder finds out that a product or a process is violating his patent rights, he might seek damages from the infringing party. Such enforcement of patent rights is usual in developed economies, such as US and Europe. However, in the recent years, even India has seen its share of attempts to enforce patent rights (Ex: TVS vs Bajaj).
2 – Compulsory license
3 – Cross licensing
4 – Licensing
5 – Invalidation
