Gilead Sciences Inc v Intellectual Property Appellate Board (2012)

Summary

“The petitioner in this petition under Article 226 of the Constitution of India assails the order dated 13.06.2011 passed by the Intellectual Property Appellate Board (the Board), whereby the Board has rejected the petitioners application for condonation of delay in filing the appeal under Section 117A of the Patents Act, 1970, against the refusal of the Controller of Patents and Designs (The Controller) to accept the petitioners Indian Patent Application No.896/DEL/2002. The said application was refused after pre-grant opposition by respondent no.4 herein.” (para 1) “The order refusing to accept the petitioner’s aforesaid patent application was passed by the Controller on 30.07.2009, whereas the appeal was preferred before the learned Board on 26.08.2010.” “Apparently, there was a delay of about ten months in filing of the said appeal.” (para 2) “The issue with regard to maintainability of an appeal against pre-grant rejection of the patent application was settled by the judgment of this Court in M/s. UCB Farchim S.A. v. M/s. Cipla Limited & Others, 167 (2010) DLT 459, decided on 08.02.2010.” (para 3)

The Court held that “the failure of the petitioner to file an appeal against the order dated 30.07.2009 passed by the Controller in respect of patent application No. 896/DEL/2002 within the period of limitation cannot be held against it” (para 21), and that “If the Board itself entertained such doubts about the maintainability of the appeal till as late as 02.08.2010, despite this Court having been rendered its judgment in UCB Farchim (supra) as early as 08.02.2010, there is no justification to attribute greater wisdom to the petitioner.” (para 25) “There is no prejudice caused to or suffered by respondent No. 4 or any other person by the delayed filing of the appeal” (para 27), and “A reading of Section 117A(4) read with Rule 14, as aforesaid, shows that there is no outer limit in respect of the period for which the Board may condone the delay.” (para 35) “For all the aforesaid reasons, I allow the writ petition and set aside the impugned order of the Board dated 13.06.2011. The Board shall now proceed to consider the petitioner’s appeal on its merits.” (para 37)

What the court decided

1. Maintainability in doubt before UCB Farchim. “It is not in dispute that till the judgment of the Delhi High Court was rendered in the case of UCB Farchim (supra) on 08.02.2010, the maintainability of the appeal under Section 117A in respect of an order passed under Section 25(1) by the Controller was seriously in doubt.” “There is no doubt that the Board was not entertaining such appeals at the relevant time when the order dated 30.07.2009 was passed by the Controller.” “Therefore, it is clear that the failure of the petitioner to file an appeal against the order dated 30.07.2009 passed by the Controller in respect of patent application No. 896/DEL/2002 within the period of limitation cannot be held against it.” (para 21)
2. Awaiting the pending decision. “During the course of arguments, the respondent has informed the Court that the issue about maintainability of the appeal against an order under Section 25(1) was pending in this Court for about a year.” “Therefore, the conduct of the petitioner in awaiting the decision in that case, to know where it stands and thereafter to prefer its remedy also cannot be held against it and is an acceptable explanation.” (para 23)
3. The Board’s own doubts. “Therefore, even though this Court had ruled that an appeal under Section 117A would lie in respect of an order under Section 25(1), the Board, at the relevant time, seems to have still entertained doubts regarding the maintainability.” (para 24) “If the Board itself entertained such doubts about the maintainability of the appeal till as late as 02.08.2010, despite this Court having been rendered its judgment in UCB Farchim (supra) as early as 08.02.2010, there is no justification to attribute greater wisdom to the petitioner.” “Consequently, the petitioner, it appears, was all at sea, not knowing in which direction to proceed.” (paras 24–25)
4. No abandonment. “The petitioner may have been taking shots in the dark” ... “but that does not mean that the failure of the petitioner in taking any steps in relation to the order passed in patent application No. 896/DEL/2002, in the aforesaid facts & circumstances, can be construed as an abandonment by the petitioner of its right to assail the said order passed by the Controller.” “One cannot lose sight of the fact that every legal remedy availed of by a party entails substantial legal costs.” “the petitioner may have been reluctant to take one or the other action, not knowing whether the remedy invoked was even maintainable or not.” (para 26)
5. No prejudice to the opponent. “The respondent has failed to satisfy me as to how it has been prejudiced due to the late filing of the appeal by the petitioner. By delaying the filing of its appeal, the petitioner has only lost time.” “On the other hand, the respondent No. 4 continues to enjoy the rights available to it, which it would have exercised had the appeal been preferred in time. Respondent No. 4 would be entitled to contest the said appeal on merits.” (para 27)
6. Sufficient cause. Of “N. Balakrishnan (supra)” the Court recorded that “the rules of limitation are not meant to destroy the rights of parties” and that “The expression ‘sufficient cause’ under Section 5 of the Limitation Act should receive a liberal construction so as to advance substantial justice” (para 28), and held that “it has not been shown that in the facts of this case it could be said that the explanation furnished by the petitioner smacks of mala fides or the delay is a part of a dilatory strategy on the part of petitioner. The approach of the learned Board in dealing with the petitioner’s application to seek condonation of delay appears to be misdirected, and has resulted in manifest failure of justice.” (paras 28–29)
7. Prevented by lack of clarity. “The Court has to take a holistic view of the matter and so viewed, I am satisfied that the petitioner was prevented on account of the lack of clarity in the law with regard to maintainability of an appeal under Section 117A in respect of an order passed under Section 25(1) of the Patents Act, compounded by the aforesaid conduct of the Board in raising doubts regarding maintainability, despite the decision in UCB Farchim (supra).” (para 30)
8. The Board’s power to extend time. “In the discharge of its functions under the Patents Act, these Rules apply to the Board, as they apply to the discharge of its functions under the Trade Marks Act.” (para 33) “Therefore, the Appellate Board is empowered to extend the time for preferring an appeal under Rule 14 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 framed under Section 92 of the Trade Marks Act.” (paras 33–34)
9. No outer limit under section 117A(4). “A reading of Section 117A(4) shows that the Board has the power to extend the time beyond three months. This is evident from the use of the words ‘or even such further time as the Appellate Board may, in accordance with the rules made by it allow’. The submission of Dr. Singhvi that the period of limitation for preferring an appeal is three months and the Board cannot relax the same any further, therefore, cannot be accepted. A reading of Section 117A(4) read with Rule 14, as aforesaid, shows that there is no outer limit in respect of the period for which the Board may condone the delay. However, the delay can be condoned upon the Board being satisfied that sufficient cause for extending the time for preferring an appeal has been disclosed.” (para 35)
10. The 2010 and 2011 Rules. “Even under Rule 16 of ‘The Intellectual Property Appellate Board (Patents Procedure) Rules, 2010’, and Rule 3 of ‘The Patents (Appeals and Applications to the Intellectual Property Appellate Board) Rules, 2011’, the Board is empowered to condone the delay in cases disclosing sufficient cause therefor.” (para 36)
11. Procedure. Disposition. “I am inclined to allow the present petition, set aside the impugned order dated 13.06.2011 of the Board and accept the petitioner’s explanation for the delay in filing the appeal before the Board, as, I am of the view that the approach of the learned Board is laconic.” (para 20) “For all the aforesaid reasons, I allow the writ petition and set aside the impugned order of the Board dated 13.06.2011. The Board shall now proceed to consider the petitioner’s appeal on its merits. The parties are left to bear their respective costs.” (paras 20, 37)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.