Wednesday, August 17, 2011

Stale News: Supreme Court Rules on Rule 138 of Patent Rules

This April, I had blogged on a Special Leave Petition filed before the Supreme Court, which related to the power of the Controller under Rule 138 of the Patent Rules to permit extension of time in filing evidence in reply by an opponent in a post-grant opposition.

The issue central to the Special Leave Petition (filed by Mumbai-based Polydrug Laboratories) before the Court was as follows:

Does the Controller have the power under Rule 138 to extend the time period stipulated under Rule 59 for filing of evidence in Reply by the opponent?  

Yesterday i.e. on August 16, 2011, the Supreme Court categorically ruled in the affirmative stating that Rule 138 was unambiguous in its import and that it vested the Controller with the power to extend the time period stipulated under Rule 59. 

The Court observed that although Rule 59 did not explicitly envisage an extension, Rule 138 was wide enough in its ambit to provide for an extension of the time laid down in Rule 59.

As pointed out in my last post on this case, a clear reading of Rule 138 makes it apparent that extension of time under the Rule is available in every situation except those which are specifically precluded from its applicability, namely Rules 24B, 55(4) and 80(1A). In all other situations, including an extension sought for filing reply evidence under Rule 59, the Controller has the power to extend time.

The consequence of this decision of the Supreme Court is that the Petitioner i.e. Polydrug Laboratories, who is the post-grant opponent, can legitimately place its evidence in reply on record, and the evidence has to be considered by the Opposition Board when deciding the post-grant opposition filed by Polydrug against the Indian patent IN211104 held by IPCA Laboratories.

Hopefully, the law on this point is finally settled and there will be no further confusion in its application by the Patent Office.

1 comment:

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