In the last post, I had discussed the Delhi HC’s decision on appealability of pre-grant patent rejections before the IPAB. The post discussed the effect and import of the 2005 amendment on Section 25, Section 116 and Section 117A of the Act. In this post, the combined interpretation of Section 15, Section 25(1) r/w Rule 55, 117A and 117G has been dwelt upon.
Section 15, Section 25(1), Section 117A and Section 117 G: Though it is clear that there must be an appeal provided for from a pre-grant rejection of a patent application, the question to be answered is, under which section would the order of rejection/refusal fall? Section 15 would be the obvious provision thanks to its broad phraseology. The reasons for the same are as follows:
The current Section 25(1) begins as follows:
“Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground…”
And concludes thus:
“but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.”
Section 25(1) speaks of disposal of representation in “such manner” and “such period as may be prescribed”. This again must refer to delegated legislation- Patent Rules, 2003. Rule 55 deals with the procedure for dealing with a pre-grant opposition representation. Sub-rule 6 states that acceptance of the representation would simultaneously translate to refusal of the patent application and vice versa.
Since Rule 55(6) speaks of refusal of the patent application and Section 15 also deals with the power of the Controller to refuse a patent application for any form of non-compliance with any requirement of the Act, the refusal of a patent application pursuant to a pre-grant opposition must fall within the ambit of Section 15.
The above conclusion is supported by a combined reading of Section 15, Section 117A, Section 117C and Section 117G. A provision of appeal from an order of refusal under Section 15 has been provided in Section 117A to provide the applicant with a forum which has the authority to reverse any unreasonable order of the Controller which violates principles of natural justice or which reflects non-application of mind by the Controller or which contravenes the provisions of the Act.
Also, if it cannot be denied that, in the absence of a pre-grant opposition, a “normal” order of refusal of a patent application would be one under Section 15, and is hence appealable before the IPAB under Section 117A(2) of the Act, why should the conclusion be any different merely because the rejection of the application is the consequence of a pre-grant opposition proceeding?
In other words, a pre-grant opposition does not in any manner alter the nature of examination of an application and consequently, ought not to be deemed as changing the nature of the Controller’s order of refusal of the patent application.
There is a relevant report of the Standing Committee on the Law of Patents of the World Intellectual Property Organization (WIPO) on this point, which none of the parties in the judgement seem to have relied upon (probably because they did not have an opportunity to). This report dated December 11, 2009 clearly states in paras 17, 18, 19, 22 and 23 that a pre-grant opposition is intended to merely aid the process of examination of a patent application. Further, the report also states that there must be an appeal from an order passed by the administrative forum (Controller) in a pre-grant opposition.
Moving on to Section 117G, it reads thus:
“All cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred”
As I had stated earlier in a comment to a post by Mr.Basheer, Section 117G is the surest indication that an appeal would lie before the IPAB from an order of refusal of a patent application in a pre-grant opposition. Proof to this is the case of Novartis AG v. Union of India and Ors. (M.P. Nos 1 to 5/2007 in TA/1 to 5/2007/PT/CH).
In this case, Novartis, which was the patent applicant, filed Writ petitions before the Madras High Court from the order of the Controller under Section 25(1) read with Rule 55 pursuant to a pre-grant opposition. Upon coming into force of the provisions of the Patents Act relating to the IPAB, pending writ petitions such as the Novartis petition were transferred from Madras High Court to the IPAB.
This was pursuant to the transitional provision Section 117G of the Act; the effect of the transitional provision is of the essence here, since not only does it have the effect of transferring pending appeals from High Courts to the IPAB, but also empowers and stipulates that prospective appeals from any decision of the Controller, including rejection of patent applications in pre-grant proceedings, shall lie before the IPAB.
If prospective appeals are not meant to lie before the IPAB, it defeats the very purpose of the transfer of the pending proceedings, not to mention rendering nugatory the purpose of the constitution of the IPAB.
This is further supported by the concluding portion of Section 117G which permits the IPAB to start pending appeal proceedings de novo or afresh. If the IPAB can look into pending proceedings afresh, the only logical conclusion that one may arrive is that it is the sole authority before which fresh proceedings may lie.
This receives credence from Section 117C of the Act which speaks of bar on jurisdiction of Courts. Section 117C reads thus:
“No Court or other authority shall have or, be entitled to, exercise any jurisdiction, power or authority in relation to the matters referred to in sub-section (2) of Section 117(A) or Section 117(D).”
The consequence of Section 117C is that any order or decision from which an appeal lies before the IPAB, shall not be alternatively appealable before the High Court.
The decision of the Delhi HC is a welcome one and should hopefully reduce the woes of patent applicants.