Pharmacyclics LLC v Union of India (2019)

Summary

“The present petition has been filed challenging the impugned order dated 6th November, 2019, passed by the Joint Controller of Patents and Designs” (“Controller”), by which the Patentee’s “interlocutory petition, seeking rejection of” the Opponent’s “documents and evidence, has been dismissed” (para 1). “The Patentee was granted Indian Patent No.262968.” (para 2) Once the hearing was fixed for 25 September 2019, “a flurry of activity took place, wherein the Opponent sought to file additional documents on 10th September, 2019, and further evidence on 19th September, 2019.” (para 4) The Court framed the question as “whether after the completion of the pleadings i.e. Opposition, Patentee’s reply and Opponent’s rejoinder (Rules 57 to 59) along with the evidence thereof, can any party file further evidence or rely on further documents.” (para 28)

The Court held that “the Rules contemplate a two-stage decision making” (para 29), that under Rule 60 “once the notice of hearing is given, no further evidence ought to be entertained” (para 31), and that the word publication in Rule 62(4) “relates only to a publicly available document and not to any private document such as a lab report, an expert affidavit or any other internal document.” (para 32) It laid down “general principles” for post-grant oppositions (para 39) and held that “filing of further evidence would not be permissible after the first notice of hearing is issued.” (para 40) On the facts, “this Court does not deem it appropriate to direct non-consideration of the said further evidence filed by the parties.” (para 43) “For future, the conduct of post-grant oppositions by the Patent office shall be in accordance with the procedures laid down herein.” (para 44) “With these observations, the petition and all pending applications are disposed of.” (para 45)

What the court decided

1. Two-stage decision making. “On an overall reading of the scheme of Rules 55A to 63, it is clear that the Rules contemplate a two-stage decision making. Stage one is reference to the Opposition Board of all the pleadings and the evidence. Stage two is decision by the Controller which is to be rendered after receiving the recommendations of the Opposition Board and after affording a hearing, if sought.” (para 29) “Thus, it is clear that under usual circumstances, there should not be any variation between the material being considered by the Opposition Board and the Controller.” (paras 29–30)
2. The recommendations of the Opposition Board. “In a post-grant opposition, upon the filing of the post-grant opposition and the pleadings/evidence being completed, an Opposition Board is constituted which submits recommendations to the Controller. The said recommendations are not binding in nature” (para 23)
3. Further evidence under Rule 60. “This makes it clear that filing of additional evidence would be permissible in exceptional cases with the leave or direction of the Controller, but in any event, the said filing can be done only prior to the hearing being fixed under Rule 62. Once the hearing is fixed, thus, parties are not permitted to seek leave to file further evidence.” (para 26) “Further, the filing of further evidence under Rule 60 ought to be permitted only in exceptional cases wherein a party is able to justify the non-filing of the said evidence at the prior stage of Rule 57 to 59.” (paras 26, 31)
4. Publications under Rule 62(4). “The use of the word ‘publication’ in Rule 62(4) is extremely significant. It relates only to a publicly available document and not to any private document such as a lab report, an expert affidavit or any other internal document.” “In any event, when such a publication is cited, since it has been cited just five days prior to the hearing, the exact portion which is relied upon ought to be highlighted to the other party.” The word “‘details’” “in Rule 62(4) would thus mean that the date and name of publication, exact portion of the publication relied upon ought to be pointed out to the opposite party who can, at short notice be able to controvert the same at the hearing.” (para 32)
5. Exceptions, not the rule. “The further evidence under Rule 60, thus, has to be prior to the hearing notice being given. The permission to cite any further documents is restricted to publication five days before the hearing. These two provisions, in the overall scheme of the Act and Rules, ought to be treated as exceptions and not the rule.” (para 33)
6. Rules 137 and 138. “The said powers being general in nature, the timelines given in Rules 55A to 63 would have to be maintained.” “This power, however, would not result in extending the period specified in Rule 62(4) for example, where publications can be cited five days prior to the hearing.” “Thus while under Rule 60 further evidence can be filed, once the notice of hearing is issued, no extension can be granted.” (para 34)
7. Adjournments under Rule 129-A. “Thus, the Act and the Rules require timelines to be adhered to as strictly as possible while providing some leeway to accommodate bona fide requests by any party for either further evidence, documents or adjournments.” (para 35)
8. The general principles. “Therefore, the following general principles ought to be followed while dealing with a post-grant opposition: i) The Opponent and the Patentee have adequate freedom to file their initial pleadings and evidence by relying upon all the documents and expert testimonies that they wish to; ii) The Opponent’s rejoinder in Rule 59 ought to be strictly confined to the Patentee’s evidence; iii) Once the Opposition Board is constituted and the material is transmitted to the Board, further evidence is not permissible; iv) Under Rule 60, if any further evidence comes to light which either party wishes to rely upon, the same can only be done prior to the issuance of notice of hearing, with the leave of the Controller; v) Under Rule 62(4), only publicly available documents i.e. publications, can be considered provided they are served to the opposing party, five days prior to the hearing and the date/time of the publications as also the relevant portions are highlighted, so that the opposite side can deal with the same at the time of hearing. Any document the authenticity of which is in doubt would not be entertained; vii) The hearing, in the opposition would be usually granted upon request and Opposition Board Members may also be present in order to elicit their views and assist the Controller in deciding the post-grant oppositions.” (para 39)
9. The first notice of hearing. “Clearly from the scheme of the Act, filing of further evidence would not be permissible after the first notice of hearing is issued. Thus, in terms of Rule 60, the hearing as contemplated in the said Rule would be the first notice of hearing. Such an interpretation would ensure that parties do not unduly delay the hearing of oppositions by seeking adjournments and utilising the adjourned period to dig up more evidence, especially as such evidence would in any case have not been considered by the Opposition Board.” (para 40)
10. Adjournments and written submissions. “The filing of further evidence prior to the hearing or reliance on publications under Rule 62(4) would not ordinarily permit an adjournment of the hearing. In the Controller’s discretion, within a reasonable time, parties may be permitted to support their oral arguments with written submissions which would again be transmitted simultaneously and would not again be treated as documents to which responses can be filed.” (para 41)
11. Time for recommendation and hearing. “Though the Rule does not stipulate any timelines for fixing the date of hearing, considering that patent rights have a limited term, the Opposition Board ought to give its recommendations within three months after the final Opponent’s rejoinder is received under Rule 59. After the receipt of the recommendations of the Opposition Board, a hearing ought to be fixed within three months thereafter.” (para 42)
12. Disposition. “However, now the Patentee has had an opportunity to respond to all the documents and evidence filed by the Opponent - which the Opponent has already done. Thus, this Court does not deem it appropriate to direct non-consideration of the said further evidence filed by the parties.” (para 43) “For future, the conduct of post-grant oppositions by the Patent office shall be in accordance with the procedures laid down herein.” (para 44) “With these observations, the petition and all pending applications are disposed of.” (paras 43–45)

Subsequent treatment

• Explained — In ITC v Philip Morris Products S.A. (2026) the Delhi High Court recorded that “as per this judgement the cut-off date for filing further evidence under Rule 60 is the first scheduled date of hearing” (para 92) and held that “it may not be right to hold that as a matter of rule, publication can never be permitted under Rule 62(4) after the first date of hearing. But an important caveat needs to be added that an opponent cannot be granted adjournments and/or allowed to file publications after the first date of hearing, as a matter of right and each case has to be tested by the Controller on its own facts” (para 93).