Introduction:
The realm of patent law is characterized by a delicate balance between
fostering innovation and ensuring that patents are granted on meritorious
grounds. Central to this balance is the mechanism of pre-grant opposition,
designed to facilitate a rigorous examination of patent applications. This
article delves into the nuanced legal principles governing pre-grant
opposition, emphasizing its facilitation role in the examination
process and delineating its limitations.
The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges
namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to
answer this issue while passing the Judgement dated 09.01.2024 in Appeal
bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and
another, delved into the critical examination of the order dated 14.12.2022
passed by controller of Patent , which allowed certain amendments and
ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent
to Novartis subsequently led to litigation. The Hon'ble Division Bench, High
Court of Delhi rejected the argument of the pre grant Opponent that the same
had any right to be heard in Patent Examination process. Thereby affirmed
the order of controller , granting the subject matter Patent.
Background:
Novartis AG was the Applicant of the subject matter patent IN‘518,
originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which
was filed as Indian national phase application bearing no. 4412/DELNP/2007 on
08.06.2007 before the Controller of Patents. Natco and few other entities were
pre grant opponent. The subject matter order dated 14.12.2022 passed by
the controller which resulted in filing of the subject matter writ and
subsequent thereto the present Letters Patent Appeal , whereby certain
amendments in Indian Patent Application No. IN4145 were allowed without
granting any opportunity to pre grant opponent , to be heard.
The crux of the controversy lies in the alleged violation
of the principles of natural justice. The opponent contended that the order
permitting amendments to the patent application was issued without granting
them a fair hearing. Specifically, all five pre-grant opposition hearings had
concluded on 03 November 2022. Despite this, the Controller of Patents directed
the applicant to carry out amendments, which were eventually allowed on
14.12.2022.
The Core Legal Question:
The pivotal issue at hand is whether an opponent possesses the right to
participate in the patent examination process, especially when amendments are
under consideration. Stated differently, does the opponent have a stake in the
examination process, mandating their participation when modifications to the
patent application are being evaluated?
Judicial Interpretation:
The Hon'ble Division Bench's ruling provided a nuanced
interpretation of the relevant legal provisions. According to Rule 55(5), the
right of hearing is primarily associated with the adjudication and disposal of
the representation for opposition. The court opined that conferring an
opportunity for a hearing at the representation stage does not automatically
translate to an inherent right for the opponent to participate in Patent
examination process.
Furthermore, the court elucidated that while pre-grant opposition
undoubtedly aids the Controller in decision-making, it does not ipso facto
grant opponents an inherent right to participation or an audience during the
Patent examination process. This interpretation upholds the procedural autonomy
of the Controller in conducting examinations while balancing the interests of
both applicants and opponents.
Implications:
it is imperative
to understand that the representation for opposition is not inherently
adversarial or contentious. Instead, its primary objective is to aid and
facilitate the examination of the patent application. This facilitative role
underscores the constructive intent behind pre-grant opposition, which aims to
ensure that patents are granted based on valid and meritorious grounds.
The scope and
limitations of pre-grant opposition are circumscribed by Section 25(1) of the
relevant statute. This provision specifies the grounds on which opposition can
be raised, thereby confining the opposition's ambit to statutory parameters.
Consequently, any challenge raised by an opponent must align with the grounds
delineated in Section 25(1), ensuring that the opposition remains tethered to
statutory constraints.
The Division Bench's interpretation provides clarity on the locus of a
pre-grant patent opponent within the patent examination framework. By
distinguishing between the stages where opponents have a right to be heard,
such as during pre-grant opposition, and stages where their participation is
not mandated, the court ensures a balanced and efficient patent examination
process.
The Concluding Note:
Pre-grant
opposition serves a pivotal yet circumscribed role in the patent examination
landscape. Its facilitative nature aims to aid the Controller in conducting a
holistic examination of patent applications, ensuring adherence to statutory
criteria and principles of natural justice. However, this role is not without
limitations, as evidenced by the Court's observations emphasizing the pre grant
opponent's restricted right to intervene in the process of grant of Patent only
by way of pre grant opposition , however the same has no right to be heard in
examination process of the Patent, which is solely the domain between
Controller of Patent and the Applicant for Patent.
The Case Law Discussed:
Case Title:
Novartis Ag Vs Natco Pharma Limited and another
Date of
Judgement/Order:09.01.2024
Case No. LPA
50/2023
Neutral
Citation: 2023:DHC:84:DB
Name of Hon'ble
Court: Delhi High Court
Name of Hon'ble
Judge: Yashwant Varma+Dharmesh Sharma, H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor -
Patent and Trademark Attorney, Email: ajayamitabhsuman@gmail.com, Ph No:
9990389539
Introduction:
The realm of patent law is characterized by a delicate balance between
fostering innovation and ensuring that patents are granted on meritorious
grounds. Central to this balance is the mechanism of pre-grant opposition,
designed to facilitate a rigorous examination of patent applications. This
article delves into the nuanced legal principles governing pre-grant
opposition, emphasizing its facilitation role in the examination
process and delineating its limitations.
The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges
namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to
answer this issue while passing the Judgement dated 09.01.2024 in Appeal
bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and
another, delved into the critical examination of the order dated 14.12.2022
passed by controller of Patent , which allowed certain amendments and
ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent
to Novartis subsequently led to litigation. The Hon'ble Division Bench, High
Court of Delhi rejected the argument of the pre grant Opponent that the same
had any right to be heard in Patent Examination process. Thereby affirmed
the order of controller , granting the subject matter Patent.
Background:
Novartis AG was the Applicant of the subject matter patent IN‘518,
originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which
was filed as Indian national phase application bearing no. 4412/DELNP/2007 on
08.06.2007 before the Controller of Patents. Natco and few other entities were
pre grant opponent. The subject matter order dated 14.12.2022 passed by
the controller which resulted in filing of the subject matter writ and
subsequent thereto the present Letters Patent Appeal , whereby certain
amendments in Indian Patent Application No. IN4145 were allowed without
granting any opportunity to pre grant opponent , to be heard.
The crux of the controversy lies in the alleged violation
of the principles of natural justice. The opponent contended that the order
permitting amendments to the patent application was issued without granting
them a fair hearing. Specifically, all five pre-grant opposition hearings had
concluded on 03 November 2022. Despite this, the Controller of Patents directed
the applicant to carry out amendments, which were eventually allowed on
14.12.2022.
The Core Legal Question:
The pivotal issue at hand is whether an opponent possesses the right to
participate in the patent examination process, especially when amendments are
under consideration. Stated differently, does the opponent have a stake in the
examination process, mandating their participation when modifications to the
patent application are being evaluated?
Judicial Interpretation:
The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.
Furthermore, the court elucidated that while pre-grant opposition
undoubtedly aids the Controller in decision-making, it does not ipso facto
grant opponents an inherent right to participation or an audience during the
Patent examination process. This interpretation upholds the procedural autonomy
of the Controller in conducting examinations while balancing the interests of
both applicants and opponents.
Implications:
it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.
The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.
The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.
The Concluding Note:
Pre-grant
opposition serves a pivotal yet circumscribed role in the patent examination
landscape. Its facilitative nature aims to aid the Controller in conducting a
holistic examination of patent applications, ensuring adherence to statutory
criteria and principles of natural justice. However, this role is not without
limitations, as evidenced by the Court's observations emphasizing the pre grant
opponent's restricted right to intervene in the process of grant of Patent only
by way of pre grant opposition , however the same has no right to be heard in
examination process of the Patent, which is solely the domain between
Controller of Patent and the Applicant for Patent.
The Case Law Discussed:
Case Title: Novartis Ag Vs Natco Pharma Limited and another
Date of Judgement/Order:09.01.2024
Case No. LPA
50/2023
Neutral
Citation: 2023:DHC:84:DB
Name of Hon'ble
Court: Delhi High Court
Name of Hon'ble
Judge: Yashwant Varma+Dharmesh Sharma, H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor -
Patent and Trademark Attorney, Email: ajayamitabhsuman@gmail.com, Ph No:
9990389539
