INTRODUCTION
Recently, in Ashok Leyland Limited v. The Controller of Patents & Designs and others1, the Division Bench of Hon'ble Madras High Court vide its order dated April 10, 2024, allowed the writ appeal and set aside the order passed in Writ Petition by the single judge in respect of the post-grant opposition proceedings against the patent granted to the Ashok Leyland Ltd. The Division Bench directed the patent office to reconstitute another Opposition Board to examine the matter afresh by considering the evidence submitted by the Ashok Leyland Ltd. and the Tata Motors. However, the Court refrained from reviewing the procedure adopted by the Opposition Board for examination and submission of its recommendations, as the procedure is expressly laid down in the Patents Act and the Rules.
BACKGROUND, FACTS AND ARGUMENTS SUBMITTED (in Writ Petition)
In the instant case, a patent vide Patent No. IN387429 was granted to Ashok Leyland Limited (hereinafter referred to as "appellant") in respect of the patent Application No. 201641025668 titled "Multi-Axle Vehicle Configuration having Heavy Duty Lift Axle", and the same was opposed by the opponent Tata Motors Ltd. (hereinafter referred to as "Respondent No. 2") by way of post-grant opposition on the grounds of prior publication, public use, non-patentable subject matter, obviousness, and insufficiency of disclosure under Section 25(2) of the Patents Act. After receiving the said application, the Controller of Patents & Designs (hereinafter referred to as "Respondent No. 1), an Opposition Board (hereinafter referred to as "Board") was constituted under Section 25(3) of the Patents Act. During the opposition proceedings, documents including written submissions, reply statement, and affidavits of technical experts (evidence) from both sides were submitted before Respondent No. 1. The Board submitted its recommendations (hereinafter referred to as "report") to Respondent No. 1 on October 31, 2023. During the pendency of the opposition proceedings, the appellant filed a writ petition before the Intellectual Property Division of the Hon'ble Madras High Court (hereinafter referred to as "IPD) seeking relief in terms of challenging the report of the Board, assailing the procedure adopted by the Board by submitting praying that the expert evidence was not considered during examination and submission of the report.
The appellant prayed to quash the report of the Board and requested the IPD to direct Respondent No. 1 to reconstitute a fresh Opposition Board as the Board failed to consider the evidence submitted by both parties while preparing the report and it merely cut-copied-pasted the portions from the written submissions and the reply statement of the appellant and the Respondent No. 2 respectively. The appellant relied on CIPLA Ltd. v. Union of India and others2, where the Hon'ble Supreme Court recognized the significance of evidence submitted by the parties during opposition proceedings.
However, Respondent No. 2 argued that the Board has duly considered the evidence without making any such reference in the report, as out of five grounds only one ground was considered by the Board in the report that deprives any possibility of non-applicability of mind in preparation of the report. Further, Respondent No. 2 also argued that the report of the Board is not binding on Respondent No. 1 since it has only a recommendatory value.
The IPD dismissed the petition by stating that due to the recommendatory nature of the report, the recommendations of the Opposition Board is not binding on the Controller.3 However, the IPD also held that if the Controller during the final hearing found that the Opposition Board had failed to consider the evidence of the experts, then the Controller can reconstitute the Opposition Board to present fresh recommendations by considering the evidence document. Aggrieved by the dismissal of the writ petition, the appellant filed an appeal to the Division Bench of Hon'ble Madras High Court against the order dated March 15, 2024, of the IPD.
COURT DECISION
After considering all the facts, findings, and arguments of the appellant and the respondents submitted during the hearing before the IPD, the Division Bench set aside the order of the IPD. The Division Bench directed Respondent No. 1 to reconstitute the Board and the Board shall consider the evidence and documents as mentioned in Rule 56(4) while conducting a de novo examination to submit afresh recommendations in accordance with Sections 25(2) & 25(3) of the Patents Act by May 22, 2024.
The Division Bench observed that the procedure adopted by the Opposition Board in preparing the report and the correctness thereof cannot be left to the Controller in the final hearing stage. The Court mentioned that the Board must submit recommendations with reasons on each ground after examining and evaluating the documents including evidence under Rule 56(4) of the Patents Rules. It was held that the recommendations of the Board are important in deciding the validity of the patent document on the grounds raised by the opponent. Therefore, it is desirable to reconstitute the Board to provide fresh recommendations by considering the evidence documents submitted by parties.
However, the Bench denied any judicial review of the procedure adopted by the Opposition Board, and held that "We make it clear that the impugned order is set aside for the purpose of facilitating de novo drill by the Board to be reconstituted by said Controller and on merits we have expressed only one view and that view pertains to paragraph 5 of the impugned order wherein we have said that this Court is not denuded of constitutional powers of judicial review qua recommendation of said Board or the procedure to be followed by said Board".
ANALYSIS
Section 25(3) requires the Controller to constitute an Opposition Board and refer notice of opposition and documents (as submitted by patentee and opponent) to the Board for further examination and submission of recommendations to the Controller under the prescribed procedure laid down under Rules 56 to 60 of the Patents Rules, 2003 (as amended). Since Rule 56(4) warrants the Opposition Board to examine the documents received by the Controller under prescribed rules, the Board is required to submit a report with reasons on each ground taken in the notice of opposition. Documents, as mentioned in the prescribed rules (Rules 57 to 60), include a written statement and evidence submitted by the opponent, a reply statement and evidence of the patentee, and any further evidence submitted by either party with the leave of the Controller.
The Opposition Board examines the notice of opposition on the grounds mentioned therein based on the documents including evidence submitted by the patentee and the opponent(s). The participating parties to the opposition proceedings rely on evidence to support or oppose the challenges raised against the grant of a patent under Section 25(2) of the Patents Act. It is understood that the post-grant opposition provides an opportunity to a person interested whose rights may get affected due to the grant of a patent, and it allows him to bring any residual issue(s) that were overlooked by the granting authority during the prosecution process.
What will happen if the grant of a patent by an official authority fully crystallizes a patentee's rights against the whole world without thoroughly reviewing the documents submitted by the opponent and the patentee during the opposition proceedings? As Sir Edward Fry commented on the scope of opposition examination while presiding over the Patents Enquiry Committee: "We are of opinion that the grant of invalid patents is a serious evil inasmuch as it tends to the restraint of trade and to the embarrassment of honest traders and inventors."4, and the same was reiterated by the Hon'ble Supreme Court in Aloys Wobben v. Yogest Mehta5 that the rights of a patent holder are not crystallised with the decision of Controller to grant a patent. It is only when challenges raised against the grant of a patent under Section 25(2) are disposed of favourably to the advantage of the patent holder, that the right to hold a patent is stated to have crystallised. Therefore, it is necessary to thoroughly scrutinize the grounds raised by the opponent and reply filed by the patentee in view of the evidence submitted by the parties so as to clearly identify the validity or invalidity of the granted patent. Without considering the submissions filed by the participating parties, it is unreasonable either to crystallize the rights of the patentee or allow the patent to be revoked. The recent decision of the Hon'ble Madras High Court indicates the importance of evidence while examining the opposition by the Opposition Board to determine the maintainability of the granted patents.
Footnotes
1. 2024:MHC:1768 (W.A. No.1181 of 2024), Order passed by Division Bench of Madras High Court on April 10, 2024
2. AIRONLINE 2012 SC 363
3. (W.P.(IPD) No.1 of 2024) Order passed by IP Division of Madras High Court on March 15, 2024
4. Page 80, Report on the revision of the Patents Law, September, 1959 (Ayyangar Committee report on Patents), Accessible at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/1959-_Justice_N_R_Ayyangar_committee_report.pdf
5. AIR 2014 SUPREME COURT 2210
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