Wednesday, January 19, 2011

Hearing Mandatory in Pre-grant Opposition, When Requested: Bombay High Court

In a decision delivered in a writ petition last November, the Bombay High Court interpreted Section 25(1) of the Patents Act to categorically hold that when a pre-grant opponent requests for a hearing, it is mandatory on the part of the Controller to grant the pre-grant opponent such a hearing.

The decision was delivered in a writ petition filed by Neon Labs against the order of the Patent Controller granting a patent to Troika Pharma pursuant to Rule 55(6) of the Patent Rules, 2003 in a pre-grant opposition.

The facts of the case in brief were as follows:

1. Neon had filed a pre-grant opposition to the first set of claims filed by Troika. During the hearing in the opposition proceedings, Troika sought to amend the claims to overcome the objections raised in the opposition.

2. When the amended claims were filed, the Controller sent the amended claims to Neon. Neon again objected in writing to the claims and cited the very same evidence/prior art documents which were filed in opposition to the original set of claims. Neon again sought a hearing on the amended set of claims.

3. Neon never heard from the Controller until it discovered later that the opposition had been rejected and the patent granted to Troika.

4. Neon filed a writ petition against the order on grounds that it ought to have been granted a hearing to vent its objections to the amended claims.

In response to the contentions of Neon in its writ petition, the Controller filed an affidavit saying that since Neon had re-filed the same set of prior art documents to support its opposition to the grant of the patent to Troika, the Controller did not deem it necessary to grant a re-hearing since no new prior art was cited. Also, in the Controller’s opinion, the amended claims overcame the prior art cited.

In other words, according to the Controller, non-grant of a hearing did not result in prejudice to the pre-grant opponent. Therefore, according to him, the pre-grant opponent was whining for no reason.

The Bombay High Court took the view that once a hearing is requested by a pre-grant opponent under Section 25(1), there is no room for exercise of discretion by the Controller since the provision says the Controller shall, if requested by such person for being heard, hear him”.

Earlier when the provision used “may” instead of “shall”, it was permissible for the Controller to exercise his discretion. But even then, principles of natural justice would have required him to grant such a hearing, particularly when the pre-grant opposition mechanism essentially serves public interest.

This is evidenced from the fact that “any person” may use the pre-grant mechanism to oppose the grant of the patent to the application. Consequently, the presence of “shall” in the Act today makes it all the more incumbent on the part of the Controller to grant such a hearing when it is requested for.

Not just that, since the claims were amended, it was necessary to grant a hearing as if the amended claims were a new set of claims. In other words, merely because a hearing had been granted for the first set of claims, it is no argument on the part of the Controller to say that a second hearing for the amended set of claims is not contemplated by Section 25(1). Such a take would go against the very purpose of the pre-grant proceeding.

Common sense also tells me that merely because the opponent, Neon labs, filed the same set of prior art documents in response to the amended claims, it does not follow that the exercise is redundant. This is because the same set of prior art documents could apply differently to the two sets of claims, original and amended.

Therefore, it wouldn’t be correct to assume that since these documents had been considered in relation to the original claims, they would not serve to repudiate the amended claims.

On the issue of prejudice, the Court took the view that proof of prejudice independent of breach of fair play principles is a requirement typically only in disciplinary proceedings, and not in quasi-judicial proceedings such as a pre-grant opposition.

In other words, it was not necessary for a pre-grant opponent to show that the non-adherence to principles of natural justice had caused real prejudice to him; mere breach of such principles would suffice to vitiate the entire proceedings, and hence the order.

I think this decision is important given the fact that entities/persons which/who are not entitled to invoke the post-grant opposition mechanism and the revocation proceedings (since both permit only “person interested”), must be given a full and fair opportunity to utilise the pre-grant opposition proceedings. A “full and fair” opportunity includes a hearing, when sought.

1 comment:

  1. A well-wisher of the blog writes thus:

    "Indeed, it is sensible decision delivered by the Hon’ble high court, but I have one doubt:
    Is it mandatory for the controller to inform the decision of “such hearings or such amendments” to the party who has opposed the grant of the patent, as section 25(1) or relevant rules 55 does not speak anything clearly on this.
    Whereas, Rule 62 (5) in case of the post grant opposition requires controller to inform his decision to the parties.

    Your take on this????"