UCB Farchim SA v Cipla Ltd (2010)

Summary

“These six petitions raise an important question of law concerning the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents” ... “either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970” (para 1). “Therefore as it presently stands, after the amendment in 2005, while Section 117A provides an appeal to the IPAB” (“Intellectual Property Appellate Board”) “against an order under Section 25 (4), it does not expressly provide an appeal against an order in a pre-grant opposition under Section 25(1) of the Patents Act.” (paras 6–7) “An observation in para 31 of the order ’that the Appellate Board after 2nd April 2007 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4) i.e. in cases of orders passed in ‘post-grant opposition’ is what has given rise to the present round of litigation.” (para 11) In the lead petition, “On 24th July 2009 the Assistant Controller passed an order allowing the pre-grant opposition and refusing the grant of patent.” (para 35)

The Court held that an unsuccessful opposer who is a person interested has as its remedy “to file a post-grant opposition under Section 25(2) and await the decision of the Controller” (para 18), and that “where the grant of patent is refused by the Controller after accepting a pre-grant opposition under Section 25(1) of the Patents Act, the applicant for a patent will have a remedy by way of an appeal to the IPAB under Section 117A of the Patents Act. The refusal to grant patent is in fact relatable to and should be understood as an order by the Controller under Section 15 of the Act which order is in any event appealable to the IPAB under Section 117 A.” (para 23) “Accordingly, this Court declines to entertain the present writ petition and permits the Petitioner to file an appeal within a period of two weeks before IPAB accompanied by an application for condonation of delay.” (para 38)

What the court decided

1. The scheme after 2005. “Therefore as it presently stands, after the amendment in 2005, while Section 117A provides an appeal to the IPAB” (“Intellectual Property Appellate Board”) “against an order under Section 25 (4), it does not expressly provide an appeal against an order in a pre-grant opposition under Section 25(1) of the Patents Act. What is significant however is that Section 117A does continue to provide an appeal to the IPAB against an order of the Controller under Section 15 of the Patents Act.” (paras 6–7)
2. Pre-grant and post-grant opposition distinguished. “In the first instance a distinction has to be drawn between a pre-grant opposition and a post-grant opposition.” “A second significant difference, after the amendment of 2005, is that a pre-grant opposition can be filed by ‘any person’ whereas a post-grant opposition under Section 25(2) can be filed only by ‘any person interested’.” “A third significant difference is that the representation at the stage of pre-grant is considered by the Controller himself.” “This Court finds merit in the contention that the pre-grant opposition is in fact ‘in aid of the examination’ of the patent application by the Controller.” “The fourth major difference between the pre-grant and the post-grant opposition is that while in terms of Section 117 A an appeal to the IPAB is maintainable against the order of the Controller in a post-grant opposition under Section 25(4) of the Patents Act, an appeal has not been expressly been made available against an order made under Section 25(1) of the Patents Act.” (para 13)
3. Writ jurisdiction and the alternative remedy. “The law is well settled that notwithstanding that a High Court has the power and the jurisdiction under Article 226 of the Constitution to interfere with the orders of any statutory authority which is of a quasi-judicial nature, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person.” (para 16) Of the Bombay High Court’s decision in “Glochem Industries Ltd. v. Cadila Healthcare Ltd.”, the Court held that “the settled law as explained in several decisions of the Supreme Court” ... “makes it clear that this Court should not entertain the writ petition, not because it does not have the power or jurisdiction, but because the petitioner has an efficacious alternative statutory remedy to exhaust.” (paras 16–17)
4. Opposition rejected, opposer a person interested. “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.” (paras 15, 18)
5. Opposition rejected, opposer a third party. “Given the differences in the pre-grant and post-grant oppositions, the legislature appears to have consciously denied to a third party a further statutory remedy of a post-grant opposition in the event of such third party not succeeding in the pre-grant stage to prevent the grant of patent.” (para 20) “Therefore where a pre-grant opposition under Section 25 (1) is filed by a person who is a third party and not a person interested in the sense of the term under Section 25(2) or Section 64 of the Patents Act, and such pre-grant opposition is rejected by the Controller, it would be for this Court when approached by such third party pre-grant opposer under Article 226 of the Constitution to determine if in the facts and circumstances, the petition requires to be entertained.” (paras 20–21)
6. J. Mitra read in context. “It appears to this Court that the observation in J. Mitra in para 24 that ’the Appellate Board after 2nd April 2007 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4) i.e. in cases of orders passed in post-grant opposition’ has to be understood in the context of that case where the Court was only considering whether against the rejection of a pre-grant opposition an appeal lay to the High Court or to the IPAB.” “Consequently, there was no occasion for the Supreme Court in J. Mitra & Co. to decide whether in such event an appeal would be available to the applicant for patent before the IPAB.” (para 22)
7. Opposition accepted and patent refused. “In the second eventuality where the pre-grant opposition is accepted and the grant of patent is refused by the Controller, although the decision is one taken under Section 25(1), it is in effect a decision relatable to and under Section 15 of the Patents Act.” (para 22) “In the considered view of this Court where the grant of patent is refused by the Controller after accepting a pre-grant opposition under Section 25(1) of the Patents Act, the applicant for a patent will have a remedy by way of an appeal to the IPAB under Section 117A of the Patents Act. The refusal to grant patent is in fact relatable to and should be understood as an order by the Controller under Section 15 of the Act which order is in any event appealable to the IPAB under Section 117 A.” (paras 22–23)
8. An opposer’s appeal after 2007. Where “the pre-grant opposition in this case was filed by the Respondent Ajanta Pharma Limited (‘APL’)” (para 28), the Court held: “It is plain now that since APL’s appeal was filed in this Court after 2nd April 2007, its appeal cannot be maintained in this Court.” “As clearly explained by the Supreme Court in J.Mitra the remedy for an interested person whose pre-grant opposition has been rejected is to file a post-grant opposition.” “In any event no appeal is maintainable in this Court or the IPAB at the instance of APL against the Controller’s order dated 22nd March 2007.” (para 31) “APL’s appeal before the IPAB is not maintainable and is liable to be dismissed as such.” (paras 28, 31–32)
9. Procedure. Disposition. “Accordingly, this Court declines to entertain the present writ petition and permits the Petitioner to file an appeal within a period of two weeks before IPAB accompanied by an application for condonation of delay. The IPAB will consider such application, after hearing Cipla, and after accounting for the period during which the present writ petition was pending.” (para 38) In each of the other petitions by applicants, “If such an appeal is filed within two weeks, accompanied by an application for condonation of delay in filing the appeal, the IPAB will consider such application on merits in accordance with law after accounting for the period during which the present writ petition has been pending.” (paras 27, 33, 38, 42, 46)

What the court did not decide

“Since there is no challenge to the constitutional validity of the re-cast Section 25 by any third party in these proceedings, this Court is not called upon to decide that issue.” (para 20)

Subsequent treatment

• Followed — In Dr Snehlata C Gupte v Union of India (2010) the Delhi High Court held that “The challenge is to an order refusing the grant of patent which is relatable to Section 15 of the Act. This is appealable before the IPAB” (“Intellectual Property Appellate Board”) “under Section 117A of the Act as has been held by this Court in UCB Farchim Sa v. Cipla Ltd. 167 (2010) DLT 459” (para 74).
• Followed — In Gilead Sciences v Intellectual Property Appellate Board (2012) the Delhi High Court held that “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” (para 3), and condoned the delay in an appeal filed while the Board still doubted its maintainability (paras 21–25, 37).