During the prosecution of a patent application, third parties are provided with an opportunity to object to the grant of a patent through pre-grant and post-grant opposition. These opposition proceedings involve several intricate steps to be taken at various stages by the Indian Patent Office (IPO), the opponent, and the applicant/patentee. As these proceedings are critical in deciding the fate of the patent application or the granted patent, the involved parties must perform their duties effectively to ensure a systematic and productive conclusion of the proceedings.
The Hon’ble High Court of Madras recently issued a judgement in a Writ petition filed in a post-grant opposition matter, commenting on the relevance of the recommendation of the Opposition Board while reiterating the duties of the Controller deciding on the opposition representation. This matter was a Writ Petition filed under Article 226 of the Constitution of India for issuance of a Writ of Certiorarified Mandamus, challenging the recommendations of the Opposition Board in the post-grant opposition proceedings. The opposition proceedings were initiated by Tata Motors Ltd (Respondent 2) against a patent of Ashok Leyland Ltd. (petitioner), bearing number IN387429 and titled Multi-Axle Vehicle Configuration having Heavy Duty Lift Axle.
In particular, the writ petition was filed with the following prayer:
- to call for the records of the recommendations passed by the Controller of Patents & Designs (Respondent 1) on the Opposition proceedings,
- to call for the recommendation of the Opposition Board,
- to quash the recommendation of the Opposition Board, and
- to direct respondent 1 to consider the documents filed by the petitioner and respondent 2 to consider the matter afresh by reconstituting a new Opposition Board to provide a fresh recommendation.
During the opposition proceedings before the IPO, Respondent 2 filed evidence from their experts, Dr. Anoop Chawla and Mr. Amit Kumar Gupta, to further substantiate the arguments in their written statement of the opposition. In response, the petitioner filed a reply statement, supported by the evidence from their experts, Dr. S. Ramamurthy and Dr. Sathya Prasad Mangalaramanan. The Opposition Board thereafter shared their recommendation on the opposition representation, following which respondent 1 scheduled a post-grant Hearing in this case for February 7th, 2024. The petitioner filed this writ petition before the scheduled hearing.
Before the Court, the petitioner argued that the Opposition Board simply copy-pasted the opponent’s and petitioner’s arguments from their written statement and reply statement, respectively, as reasoning in their recommendation. Moreover, the Opposition Board has not considered the expert evidence filed by both parties, and their recommendation is, therefore, incomplete. Since the Opposition Board’s recommendation forms the foundation of the opposition proceedings, an incomplete recommendation would significantly hamper the entire proceedings. The petitioner also relied on Cipla Ltd. vs Union of India and others, arguing that the Hon’ble Supreme Court, in this case, emphasised that the Opposition Board needs to consider the evidence produced by both parties in arriving at their recommendation.
The petitioner acknowledged that they may have an opportunity to address the flaws in the Opposition Board’s recommendation during the hearing before the Controller, and they may also require him to consider the evidence that is overlooked by the Opposition Board. However, they also emphasised that if the incomplete recommendation unconsciously influences the Controller, the economic ramifications of an adverse order would be severe for the petitioner. Therefore, the Opposition Board’s recommendation must be set aside at this stage only, and a new Opposition Board may be constituted to make a fresh recommendation.
On the other hand, Respondent 2 argued that the Opposition board had considered the evidence submitted by both parties but did not refer to the names of the experts. To substantiate their arguments, respondent 2 submitted a table highlighting the portions of the recommendation that referred to the expert evidence filed by both parties.
In order to establish the application of mind, respondent 2 highlighted that while they had objected to the grant of the patent on 5 grounds in their written statement, the Opposition Board found only one of those grounds to be valid in their recommendation, dismissing the other 4 grounds. This indicates that the Opposition Board has applied its mind in arriving at its recommendation, and it is not a mere cut-copy-paste job.
Respondent 2 further argued that the recommendation is not binding on the Controller and both parties can discuss the evidence with the Controller during the hearing. Therefore, a mere allegation that the recommendation is incomplete is insufficient to invite interference of this Hon’ble Court in judicial review. Hence, this petition is not maintainable as the Controller is dutybound to take an independent call on the issue before him. Respondent 2 concluded that the petitioner’s apprehension is not based on what has happened but on what is likely to happen.
After hearing both parties, the Court identified the primary issue as how far this Court can interfere with the Opposition Board’s recommendation in the judicial review.
The Court remarked that once the materials filed by both the parties under Rules 57 to 59 are furnished before the Opposition Board, it is up to the Opposition Board to decide on the extent to which such material is considered and appreciated for arriving at the recommendation. In this case, since these materials involve complex issues of scientific applications, it may not be appropriate for this Court to examine the adequacy of such recommendation in the exercise of its jurisdiction under Article 226 of the Constitution.
The Court further acknowledged that this recommendation by the Opposition Board is only a recommendation, which is not binding on the Controller. It is up to the Controller to decide on the qualitative merit of the recommendation. This recommendation will be one of the many materials to be considered by the Controller during the post-grant opposition Hearing. Hence, the petitioner will be able to expose the alleged inadequacy of the recommendation before the Controller during the scheduled hearing.
The Court, accordingly, found it inappropriate to pre-empt a decision on the quality of recommendation in judicial review and held that the statute had assigned the responsibility of determining the reliability of the recommendation to the Controller. If the Controller does believe that the recommendation contains inadequacies, the Controller may reconstitute the Opposition Board for a fresh recommendation. The Court, therefore, dismissed the petition.
This judgement clarifies that the Opposition Board’s recommendation shall not be treated as the conclusion on the merit of the invention. It merely suggests that the Controller decides on the opposition representation. In effect, this judgement enunciates the responsibility of the Controller in deciding on the opposition representation, which eventually decides the fate of a patent application or the granted patent.
Owing to the increasing IP awareness in the country, the number of post-grant oppositions being filed at the IPO are also increasing. Therefore, this judgement from the Hon’ble Madras High Court could be instrumental in the patentees and the opponents formulating their strategy in the opposition proceedings, at least from the perspective of addressing the Opposition Board’s recommendation.
Authors: Manisha Singh and Piyush Sharma
First Published By: Lexology here