As our regular readers are aware, we have done several posts on the Patent Office, the Patent Office procedures, and more recently decisions of Courts that affect the Patent Office procedure.
The UCB Farchim decision delivered by Justice S. Muralidhar is one of them [UCB Farchim SA Vs. Cipla Ltd & Others (MANU/DE/0297/2010)].
While I will not go into a more detailed analysis of the order (that has already been done here, here and here- phew!), I will paraphrase the part of the judgment that this paragraph from the judgment that this post will attempt to problematize.
(Image of the balcony scene of Romeo & Juliet from here)
Where a pre-grant opposition is rejected, the aggrieved person- as with any quasi judicial authority- previously had the option of approaching the Court under Article 226 to seek a correction of the order. However, in light of the amendment in 2005, according to Justice Muralidhar, where there exists another efficacious remedy in the form of a post-grant opposition, a writ would not lie before the Court until all other remedies available where exhausted.
This would imply (as most lawyers/ patent agents will tell you) that the post grant opposition would be pretty much your only remedy from a pre-grant opposition - not counting of course, cases where there has been a violation of principles of natural justice, or technically where the opponent is not a “person interested”.
Several practitioners (and about 37 hours ago, myself included), also believe that this implies that a post grant opposition in practice acts as an “appeal” from a pre-grant order.
However, yesterday, (during the course of what we would like to call brainstorming), my colleague and I had a little repartee as to the law of oppositions under the Patents Act as it stands now.
This colleague of mine laid out some very interesting ideas for me to consider, and while I played devil’s advocate, I realised I probably could not counter all her arguments. At least not without the views of our extensive readership!
I said that Justice Muralidhar’s order was extremely straightforward- don’t come to Court unnecessarily on the same grounds for the same patent, when you can technically go before the Patent Office to challenge the same patent again in a post grant opposition.
Her point, very simply, was this- just because a remedy was offered to you as an alternative to a writ proceeding, it would not make the same an appeal. Justice Muralidhar’s judgment has only gone on to exclude one route by which an opponent could challenge a patent- which was technically, not barred by the statute.
To bolster her arguments, she rattled off certain points that I place before you for an easy comparison.
Perhaps our readers can shed some light on what they think the true import of Justice Muralidhar’s order is. Is the post grant opposition now just an appellate proceeding? Or have some of us understood it wrong?
Hat tip: Tusha Malhotra.