In a decision delivered on July 27, 2012, the Acting Chief Justice of the Delhi High Court affirmed the decision of a Single Judge of the Court wherein a delay of 13-months in filing an appeal before the IPAB was condoned.
In this case, Gilead Life Sciences’ patent application was rejected in a pre-grant opposition filed by CYDMAX India Pharma on July 30, 2009. Under Section 117A(4) of the Patents Act, an appeal before the IPAB must be filed within 3 months from the date of the Controller’s decision, or within such time as the IPAB may allow.
In this case, the appeal was filed on August 26, 2010 i.e. 13 months after the Controller delivered his decision. The IPAB dismissed the application for condonation of delay. However, the Single Judge of the High Court set aside the decision of the IPAB in a writ filed by Gilead, and condoned the delay. This decision was challenged by CYDMAX in a Letters Patent Appeal filed before the Acting Chief Justice of the Delhi High Court. The Chief Justice affirmed the decision of the Single Judge.
How did the Court uphold condonation of delay 13 months? A reading of the decision informs us that the Court was justified in condoning the delay because between July 2009 and until February 2010, when UCB Farchim v. Cipla was pronounced by the Delhi High Court, the position of the law with respect to appeals from pre-grant rejection orders of the Controller was unclear.
It was only in UCB v. Cipla that the Court clarified that a pre-grant rejection order of the Controller was a decision delivered under Section 15 of the Act and was hence covered by the appeal provision, namely Section 117A.
The question then before the court was, even if the delay between July 2009 and February 2010 was justified, what explains the delay of another 6 months in filing of the IPAB appeal by Gilead until August 2010?
Gilead submitted to the Court that despite the High Court clarifying the position of the law in UCB v. Cipla, the IPAB continued to raise objections in similar matters of Gilead where Gilead was asked to argue on the maintainability of appeals before the IPAB from pre-grant rejection orders. Consequently, Gilead was still unsure of how its appeal before the IPAB would be receieved.
Taking these submissions into account, the Court observed that the delay in filing the IPAB appeal by Gilead was not due to lack of due diligence on its part, but due to objections raised by the IPAB despite the Court’s ruling in UCB v. Cipla. Accordingly, CYDMAX’s Letters Patent Appeal was dismissed and the condonation of Gilead’s delay was upheld.
Moral of the Story: It would help everyone if there is consistency between the law set by High Courts and its application by the IPAB.