Patent laws, including in India, usually allow oppositions to be filed against patent applications, either before or after they are granted. Appeals against decisions in opposition matters may also be permitted in some cases. In India, an appeal against a decision of a Controller may be filed in post-grant oppositions, but the law is not as straightforward when it comes to appeals in pre-grant oppositions. This note discusses a recent decision of the Delhi High Court where this question came up.
Legal position
The Indian Patents Act, 1970 ("the Act") provides for both pre-grant and post-grant opposition. Under Section 25(1), any person can file a pre-grant opposition against the grant of a published patent application. Rule 55(1A) of the Patents Rules, 2003 (amended) stipulates that no patent shall be granted before six months from the date of publication of the application. This means that a person has at least six months to file a pre-grant opposition.
At any time after the grant of a patent but before one year from the date of publication of such grant, any person interested may file a post-grant opposition against the patent under Section 25(2).
Section 117A deals with appeals to the High Court. It provides for an appeal against a Controller's decision in a post-grant opposition, but an equivalent remedy is not available against an order in a pre-grant opposition.
The appealability of pre-grant opposition orders has come up a few times before various High Courts Most recently, a Division Bench of the Delhi High Court had occasion to discuss this question in Rich Products Corporation v. the Controller of Patents & Anr. (Decision dated 1 May 2024, in LPA 257/2024 & CM No.19528/2024).
Rich Products vs Controller of Patents
In this case, the Controller had rejected a pre-grant opposition filed by Rich Products (the Appellant) against a patent application titled "An artificial liquid cream for utilization in unsweetened cooking and whipping applications" filed by Tropilite Foods Pvt. Ltd (TFPL, Respondent No. 2). The Appellant then filed a writ petition against the Controller's order under Article 226 of the Constitution of India.
The writ petition was not entertained by the Single Judge stating that an effective mechanism was available under the Act, against which the Appellant filed an appeal before a Division Bench of the same Court. The question for consideration before the Division Bench was "whether the decision of the learned Single Judge to not entertain the writ petition against an order of the Controller rejecting RPC's pre-grant opposition is erroneous, and, warrants any interference in this appeal."
The Division Bench noted that if an authority passes an order which suffers from jurisdictional errors, the person aggrieved would have a recourse to file a writ petition Article 226. However, the Court also said that this was a discretionary remedy, and that the Court could refuse to exercise such a remedy if an efficacious, alternate and statutory remedy was available.
In arriving at this conclusion, the Division Bench referred to several relevant cases, which are briefly discussed below:
1. Glochem Industries Ltd. v. Cadila Healthcare Ltd. & Ors (2009 SCC OnLine Bom 1701)
In this case, a similar writ petition was filed in the Bombay High Court against an order of a Controller in a pre-grant opposition. The Respondent argued that the Controller's order did not suffer from any manifest error; and that there were alternative and efficacious remedies available in the form of post-grant opposition, revocation, or even by way of a counterclaim in an infringement suit, that the petitioners could take recourse to.
The court held that although other remedies exist, that, by itself, cannot be a basis to non-suit the petitioners, if they were rightfully aggrieved that the authority had committed manifest or jurisdictional error while considering the opposition or in deciding the objections on a palpable misreading and misapplication of the law. However, the Court said that it was a matter of prudence and discretion as to whether it should entertain the writ petition or not; and that it was not the case that the Court did not have the jurisdiction to entertain a writ petition under Article 226.
2. UCB Farchim SA & Ors. v. Cipla Ltd (2010 SCC OnLine Del 523)
Following the decision in Glochem Industries, the Delhi High Court said that the law was clear that the Court should not entertain the writ petition, not because it does not have the power or jurisdiction, but because the petitioner has an efficacious alternative statutory remedy to exhaust. While Article 226 empowers a High Court to interfere with the orders of any statutory authority which is of a quasi-judicial nature, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person.
3. Novartis AG v. Natco Pharma Ltd. & Anr. (2024 SCC OnLine Del 152)
Here, the Division Bench, while approving the decision in UCB Farchim, said that the remedy under Section 25(2) constitutes an adequate safeguard for rights that may be claimed by a person interested. The Court also said that the right of challenge that stands preserved in respect of that class of opponents is reflective of the legislative objective of striking a fair balance between a pre-grant representation for opposition and expeditious conclusion of the examination process.
4. Mylan Laboratories Limited v. Union of India and Others (2019 SCC OnLine Del 10319)
In this case, the Court noted that the pre-grant opposition was decided on merits and following the scheme of the Act, as laid down in UCB Farchim, the remedy of the petitioner would be to either file a post- grant opposition or an application for revocation.
Conclusion
After considering these cases, the Division Bench in Rich Products concurred with the conclusion arrived at by the Single Judge in the same matter. The Division Bench said it is not that this Court did not have the jurisdiction to entertain a petition against an order of the Controller rejecting a pre-grant opposition, but there was no manifest or jurisdictional error warranting the exercise of its jurisdiction under Article 226. The Division Bench accordingly dismissed the appeal.
For parties similarly aggrieved by orders in pre-grant oppositions, therefore, it is advisable to completely exhaust all remedies before approaching the courts under their writ jurisdiction. The scheme of the law is designed so as to offer a series of remedies to ensure that patent applications are rigorously tested before they convert into an unimpeachable grant. A resort to writ jurisdiction should be exercised only after all efficacious alternative statutory remedies have been employed.
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