Lakshmikumaran & Sridharan
Nearly a decade after the enactment of amendments to ensure that Indian patent law complies with the Agreement on Trade-Related Aspects of IP Rights, a record number of orders by controllers at the Indian Patent Office (IPO) continue to be overturned by the Intellectual Property Appellate Board (IPAB). While any new law results in a learning curve for stakeholders, the fact that so many controllers' orders continue to be overturned and remanded to the IPO raises serious questions about the level of legal training imparted to controllers.
A few of these judgments are discussed below:
- In its March 21 2014 judgment in FDC Ltd v Khandelwal the IPAB set aside the order of the controller in a post-grant opposition and remanded the matter back to the controller on the grounds that the parties were not given a copy of the report prepared by the Opposition Board. Under Indian law, the Opposition Board studies the evidence submitted by both parties and submits its report to the controller, who conducts a hearing for both parties to the dispute. The report of the Opposition Board is a critical document in most cases.
- An appeal filed by Hoffman La Roche AG against the order of the controller in a post-grant opposition was allowed by the IPAB on similar grounds, with the matter being remanded to the IPO for a de novo hearing. The patent covered Valycte, a drug for HIV/AIDs patients. The patent was the subject of a high-profile patent dispute in 2010, when it was opposed by major players such as Ranbaxy, Cipla and a patient aid association. In a January 30 2014 order the IPAB remanded the case to the IPO on the grounds that “the impugned order was passed in flagrant violation of the Principles of Natural Justice”. Not only was the Opposition Board's report not given to the parties, but the controller also failed to send to the Opposition Board all of the evidence submitted by the parties.
- In an appeal filed by Schering Corporation against the rejection of a patent application by a controller, the IPAB again overruled the IPO and remanded the matter for a de novo hearing. In a January 23 2014 judgment the IPAB observed that “the perusal of the impugned order discloses that the Controller passed a cryptic and a non speaking order”. Going into more detail on the controller’s appreciation of evidence filed by the applicant, the IPAB noted that “the Controller has given a very bald and vague reason without going into the details of the entire document”.
- In an appeal filed by Abraxis Bioscience LLC against the order of a controller in a pre-grant opposition filed by Natco, the IPAB once again remanded the case to the IPO on the grounds that the controller had not followed procedural rules. In its January 20 2104 judgment the IPAB observed that the controller could not, on its own initiative, frame a new issue which was not pleaded by either party.
- In an appeal by Seimens AG against the order of a controller rejecting its patent application, in a November 27 2013 judgment the IPAB overruled the controller and remanded the case to the IPO because the controller rejected the application without considering the applicant’s request to amend the existing claims.
- In an appeal by Astrazeneca UK Ltd in a November 26 2013 judgment the IPAB again set aside the order of a controller rejecting a patent application on the grounds that the invention was not patentable under Section 3(e) of the Patents Act 1970. The IPAB criticised the controller for passing a “cryptic and non speaking order” and remanded the matter to the controller for a de novo hearing.
- In NK Ramalingam v Controller of Patents and Designs the IPAB in an October 29 2013 judgment allowed an appeal against the rejection of a patent application and remanded the case to the controller of patents and designs, with instructions to conduct a de novo hearing. The IPAB stated that: “We are not able to understand the view taken by the Assistant Controller as the impugned order is bereft of any details, contentions or Discussions.” The board further stated that: “The Assistant Controller has made a vague statement to the effect that some claims fall under Section 3 (i) of the Act without even specifying the exact claim which resulted in a grave miscarriage of justice to the appellant who has sought for patents for the new inventions made by the appellant.”
- In Associated Capsules Pvt Ltd v Controller of Patents and Designs the IPAB again remanded the case to the controller on the grounds that the report of the Opposition Board was not provided to both parties. In its October 17 2013 judgment the IPAB noted that: “The Controller has definitely violated the procedures.”
The eight IPAB judgments discussed above were delivered within a period of approximately six months. It is expected that the IPO will act to avoid such procedural lapses in future.
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Lakshmikumaran & Sridharan
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