In a decision delivered on August 3, 2012 Diamcad N.V. and Anr. v. Sarin Technologies and Anr., the IPAB held that the recommendations of the Opposition Board in a post-grant opposition must be shared with the Patentee in order for the Patentee to meaningfully argue against the adverse findings/recommendations of the Board which the Controller may rely upon to revoke the patent.
The relevant observations of the IPAB are as follows:
“15. The Opposition Board may make recommendations that the patent suffers from serious defects like lack of novelty, lack of inventive steps etc. so the patentee is entitled to know why the Opposition Board came to the conclusion, only then at the time of hearing they will be able to meet the recommendations of the Opposition Board, giving reasons why those recommendations were not to be accepted. On the other hand if the Opposition Board recommends that the patent shall be granted since the invention has novelty, inventive steps etc., unless the opponent has an opportunity to see the recommendations he will not be able to persuade the Controller why the recommendations of the Opposition Board must not be accepted. In either case the opportunity which is mentioned in Section 25(4) of the Act becomes an empty shell of an opportunity if the Opposition Board’s recommendations remain secret.
Then again there is no purpose in giving the Controller the discretion to require a member of the Opposition Board to be present at the hearing, unless there is a possibility that the member may be asked to explain why they made these recommendations. That situation will never arise if the patentee and the opponent are totally in the dark regarding the recommendations of the Opposition Board when they attend the hearing. Therefore the judgment relied on by the learned Counsel for the appellant in the Punjab National Bank (cited supra) case is clearly applicable to the present case. We think that the grievance of the appellant is well founded. But we are not remanding the matter as the appellant had applied for the certified copy of the recommendations and has made its submissions after taking into consideration those recommendations. So we feel that remanding the matter would only unnecessarily delay the proceedings. But it is made clear that whenever the Opposition Board makes recommendations both the patentee and the opponent are entitled to know the contents of the recommendations before they attend the hearing.
16. The matter may be looked at from another perspective, too. If the recommendations of the Opposition Board are adverse to the patentee and the contents are made known to him before the hearing it is quite possible that he may seek amendment of the claim and/or the specifications so that the defects pointed out by the Opposition Board are rectified. The spirit of the enactment is also to ensure that where there is a real invention, patent shall be granted. This can be seen from Section 58 of the Act which provides that in any proceedings for revocation if it is decided that the patent is invalid the Appellate Board or the High Court may allow amendment under the Section instead of revoking the patent. The same is applicable to the Controller also. Therefore viewed from any angle we are of the opinion that the recommendations of the Opposition Board must be made known to the patentee and the opponent before the date of hearing. This objection of the appellant is sustained.”