The Delhi High Court has issued a directive to the Controller General of Patents, Designs, and Trade Marks to ensure strict adherence to the provisions governing pre and post-grant oppositions to patents under the Patents Rules, 2003.
Justice C. Hari Shankar stressed the importance of following the rules and highlighted the significance of compliance in a recent judgment.
Brief Facts:
The case involves Akebia Therapeutics Inc., a petitioner, who had been granted a patent for an invention titled "HIF-1α prolyl hydroxylase inhibitor compounds" in 2017. The petitioner's patent was subjected to a post-grant opposition filed by another party, Respondent 3, who included certain documents as part of their opposition but failed to provide proper evidence to support their claims.
The petitioner raised concerns about the procedural irregularities in the opposition process, particularly the lack of proper evidence filed by the respondent.
Contentions of the Parties:
The petitioner argued that the documents lacked affidavits as required by Rule 57 of Patents Rules, 2003. They contended that this denied them the chance to respond with evidence as per Rule 58. The petitioner stressed procedural issues that compromised a fair assessment of the opposition.
Respondent opposed the petitioner's patent post-grant, submitting documents in their opposition. They admitted that these documents lacked affidavits, hence not proper evidence under Rule 57. However, they pointed out that the petitioner could have sought to add further evidence under Rule 60 but did not. Respondent submitted a rejoinder to the petitioner's reply statement, supported by an affidavit from Poonam Raghuvanshi. They argued that procedural irregularities didn't harm the petitioner and that remedies were available to address evidence concerns.
Observations by the Court:
Delhi High Court emphasized the paramount importance of adhering to the provisions of the Patents Rules, particularly Rule 57, in a strict manner when dealing with pre- or post-grant oppositions. The court underscored the persuasive value and relevance of the recommendations provided by the Opposition Board, citing the precedent set by the Supreme Court in the case of Cipla Ltd v. Union of India. This precedent emphasized that the recommendations from the Opposition Board play a pivotal role in influencing decision-making processes, necessitating their careful and meticulous formulation to ensure fairness and procedural integrity. The court also noted that strict adherence to procedural rules is essential to avoid any undue prejudice and to guarantee an equitable and unbiased procedure for all parties involved in patent opposition cases.
Decision of the Court:
Justice C. Hari Shankar quashed the recommendations of the Opposition Board and allowed certain documents filed by the opposing party to be treated as evidence, based on an affidavit submitted at a later date. The court further ruled that the matter should be reconsidered by the Opposition Board, taking into account the correct procedure and any additional evidence filed in accordance with Rule 60 of the Patent Rules.
Case Name: Akebia Therapeutics Inc. vs. Controller General Of Patents, Design, Trademark And Geographical Indications, & Ors.
Coram: Justice C. Hari Shankar
Case No.: W.P.(C)-IPD 32/2023
Advocates of the Petitioners: Mr. Pravin Anand, Adv.
Advocatess of the Respondent: Ms. Bitika Sharma, Ms. Vrinda Pathak, Mr. George and Mr. Manjunathan, Advs.
Read Judgment @LatestLaws.com:
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