Does a Pre-Grant Opponent Have a right of Appeal before the IPAB?

A decision delivered by the Chennai branch of the Indian Patent Office in a pre-grant opposition on July 16, 2012 was brought to my attention a few days ago by a well-wisher of the blog. The patent applicant was Hyderabad-based Laurus Labs, and the pre-grant opponents were Chiral Biosciences and Arch Pharmalabs. The oppositions of both parties were dismissed and a patent was granted to Laurus labs. I don’t wish to discuss the technical merits of the case. My enquiry is limited to the following observation in the last para of the Order:

“Having concluded thus both the oppositions are dismissed with no costs and patent right is hereby granted to the applicants.

However though this decision is provided under the provisions of the Section 25(1) of the Act, this decision is being issued under the provisions of the Section 15 to enable any party who feels aggrieved, may file an appeal before the Intellectual Property Appellate Board under the provisions of the Section 117-A of the Act in the prescribed manner.”

In light of this para, the question is- Can a pre-grant opponent file an appeal before the IPAB under Section 117A(1) if the opposition fails and a patent is granted?

Let me first start with Section 15:

15.     Power of Controller to refuse or require amended applications, etc., in certain cases: Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.

A reading of the provision tells us that both (1) refusal of a patent application and (2) acceptance with or without amendment are contemplated under Section 15. Further, when read with Rule 55(6) which applies to pre-grant oppositions, and which too contemplates rejection of a patent application or grant of a patent, it could be argued that the following orders fall within the scope of Section 15:

     A.     Rejection of  patent application by successful pre-grant opposition    

     B.   Grant of a patent and rejection of the pre-grant opposition

Therefore, it could be argued that as much as a rejection of a patent application in a pre-grant opposition is appealable under Section 117A, so is a grant of a patent/rejection of the pre-grant opposition. This line of interpretation has not been explored with rigour by the Delhi High Court in UCB Farchim v. Cipla which is reflected from Para 15 of the decision as follows:

“Where the pre-grant opposition is rejected and patent is granted

15. In the first eventuality, where the pre-grant opposition is rejected, it is apparent from the decision in J. Mitra and from a reading of Section 25 with Section 117A that as long as the person who has filed that opposition happens to be a person interested, he would, after 1st January 2005 [the date with effect from which Section 25 (2) came into force although the provision was introduced only on 4th April 2005] have the remedy of filing a post-grant opposition. He can, after 2nd April 2007, also file an application before the IPAB under Section 64 of the Patents Act for revocation of the patent. 

In other words, as explained by the Supreme Court in J. Mitra & Co. as long as that person is able to show that he is a person "interested‟, he is not without a remedy after his pre-grant opposition is rejected. He in fact has two remedies. Even if his post-grant opposition is rejected, he can thereafter file an appeal to the IPAB under Section 117A. Against the decision of the IPAB in either event he will have the remedy of seeking judicial review in accordance with law by filing a petition in the High Court.

18. To summarise this part of the discussion, as regards persons who have not succeeded in the pre-grant opposition stage to prevent the grant of a patent, and are persons “interested‟ within the meaning of Section 25(2) and Section 64 of the Patents Act, their remedy against the rejection of their pre-grant opposition is to file a post-grant opposition under Section 25(2) and await the decision of the Controller. If they are still aggrieved by that decision under Section 25(4) of the Patents Act, they can file an appeal before the IPAB in terms of Section 117A of the Patents Act.”

As regards pre-grant opponents who do not fall under the definition of “persons interested”, the Court observed as follows in Para 20 of the decision:

“Nevertheless, as regards the maintainability of a writ petition by such third party pre-grant opposer against the Controller's order rejecting the opposition, this Court would like to observe that the power under Article 226 of the Constitution is wide and can be exercised on the facts and circumstances of a given case where it appears to this Court that there is no other efficacious remedy available or that the interests of justice require this Court to interfere.”

In other words, according to the Court, the only option for an unsuccessful pre-grant opponent is a writ petition. This is indeed surprising in light of the Court’s observations in the very same decision on the scope of Section 15 prior to the 2005 amendment, which is reflected Para 4 of the judgment as follows:

“4. Prior to its amendment in 2005 with effect from 1 st January 2005, Section 25 (1) of the Patents Act provided that at any time within four months from the date of advertisement of the acceptance of a complete specification "any person interested may given notice to the Controller of Patents („Controller‟) of opposition to the grant of patent on the grounds set out in Section 25 (1) (a) to 25(1) (k) of the Patents Act. Section 25 (2), prior to the 2005 amendment, stated that when any such notice of opposition is given, the Controller shall notify the applicant (for a patent) and give to the applicant and the opponent an opportunity of being heard before deciding the case. 

Therefore, at the pre- grant stage, prior to the amendment in 2005, the Controller could either refuse the patent application or require the applicant to make amendments to the satisfaction of the Controller and if such changes were not made as directed, he would refuse the application. Therefore Section 15 of the Patents Act contemplated either eventuality resulting from a decision of the Controller on a pre-grant opposition under Section 25(1) i.e. the grant of the patent with or without amendments, or the refusal of the patent.”

My question is how is the wording of Section 15 before the 2005 amendment different from after the amendment ? If the scope of Section 15 remains the same before and after the amendment, which I think is the case, why should not unsuccessful opponents have the right to appeal under Section 117A since grant of patent/rejection of pre-grant opposition too would fall within Section 15?

If the analysis is flawed, I look forward to being corrected.