Friday, December 7, 2012

Supreme Court Order in Sutent: Opposition Board’s Recommendations Must be Shared with Parties

I had earlier blogged on the Supreme Court setting aside the revocation of the Sutent patent of Sugen Inc. The Supreme Court set aside the revocation on the ground that principles of natural justice were not adhered to by the Controller, since the Opposition Board’s recommendation was not shared with the parties, in particular the patentee. 

A friend and well-wisher of the blog has been kind enough to share a copy of the SC's order in the matter!

Following are the relevant observations of the Supreme Court in its order dated November 27, 2012:

Sub-rule (1) of Rule 62 confers power on the Controller to require members of the Opposition Board to be present in the hearing after receiving recommendation of the Opposition Board. The Controller, after hearing the parties if they so desire and after taking into consideration the recommendation of the Opposition Board, has to decide the opposition giving reasons.

Provisions of the Act and the Rules, therefore clearly indicate that the Opposition Board has to make its recommendations after considering the written statement of the Opposition, reply statement, evidence adduced by the parties with reasons on each ground taken by the parties. Rule 62 also empowers the Controller to take into consideration the reasons stated by the Opposition Board in its Report. In other words, the Report of the Opposition Board has considerable relevance while taking a decision by the Controller under Section 25(4) of the Act read with Rule 62(5) of the Rules.

The Opposition Board in a given case may make a recommendation that the patent suffers from serious defects like lack of novelty, lack of inventive steps etc., so also it can recommend that the patent shall be granted since the invention has novelty, inventive steps etc. Such recommendations are made after examining the evidence adduced by the parties before it. Unless the parties are informed of the reasons, for making such recommendations they would not be able to effectively advance their respective contentions before the Controller. 

Section 25(3)(b) read with Rule 56(4) cast(s) no obligation on the Opposition Board to give a copy of the Report to either of the parties. So also no obligation is cast under Section 25(4) or under Rule 62 on the Controller to make available the report of the recommendation of the Board. But considering the fact that the Report of the Opposition Board can be crucial in the decision making process, while passing order by the Controller under Section 25(4), principles of natural justice must be read into those provisions. Copy of the Report/recommendation of the Board, therefore, should be made available to the parties before the Controller passes orders under Section 25(4) of the Act.

We have gone through the order passed by the Controller and we notice that Controller has placed reliance on recommendation of the Opposition Board, but without giving copy of the report to either of the parties. Hence, order is vitiated for violation of natural justice. Order passed by the Controller on 24.09.2012 is, therefore set aside.

The Apex Court also set aside the orders of the Single Judge and the Division Bench of the High Court in Sugen Inc’s writ and Cipla’s Letters Patent appeal respectively.

The matter has now been remanded to the Controller for disposal of the post-grant opposition within one month from the date of communication of the Supreme Court’s order. 

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