Writ Jurisdiction in Patent Matters

1Any order passed by the Patent Office can be a subject matter of further challenge before the courts. As seen in the writ petitions filed by Novartis challenging the order of the Controller of Patent rejecting its patent for Gleevec, the Supreme Court recorded: "At that time, the appellate authority under the Act had yet to become functional. The appellant, therefore, challenged the orders passed by the Assistant Controller in writ petitions filed directly before the Madras High Court." Novartis v Union of India (2013) (para 15). Thus, it becomes all the more important to strengthen the case at the first instance so that it may stand the challenges that may come its way later. It is to be noted that appeals from an order of the Controller are entertained primarily on points of law. The order of the Controller can be challenged on many legal grounds including the ground that the principles of natural justice were not complied with in giving a reasoned order. Where the High Court is unable to entertain appeals from the Controller through its original jurisdiction, it would be open for an aggrieved party to invoke the writ jurisdiction of the high courts.

2Though patents may involve complex technology and scientific facts, the final finding with regard to its validity will rest with the courts of law. Howsoever complicated the technology may be, in the existing scheme of things, it is the higher judiciary that will sit as a final judge in deciding disputes pertaining to patents. As the decision on a patent will be rendered by the courts of law, it casts a duty on the professionals appearing before the Patent Office, especially in opposition proceedings, to adequately equip the Controller to pass a reasoned order based on the well-establish legal principles governing patent law.

3In Novartis v Union of India (2007) (paras 1, 8 and 19) the petitions under Article 226 sought a declaration that section 3(d) of the Patents Act, 1970, amended by Patents (Amendment) Act 2005, was unconstitutional. The Constitutional validity of section 3(d) was challenged, not only on the ground that it violates Article 14 of the Constitution of India but also on the ground that it is not in compliance to TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement. The Division Bench of the Madras High Court held that "Article 64 of 'TRIPS' read with World Trade Organisation's understanding on Rules and Procedures governing the settlement of disputes provides a comprehensive settlement mechanism of any dispute arising under the agreement" and "that this court has no jurisdiction to decide the validity of the amended section, being in violation of Article 27 of 'TRIPS'". On the challenge under Article 14, the Bench held that "the decision has to depend upon the provisions of the concerned Statute itself" and held that "the amended section is not in violation of Article 14 of the Constitution of India."

4On declaratory relief under Article 226, the Bench held, "It is a settled position in law that nobody can compel the Parliament to enact a Law" and that "the declaratory relief, even if granted, would be only on paper, on the basis of which, the petitioner cannot claim any further relief in the Indian courts." The court concluded that "the petitioner in each writ petition is not entitled to even the declaratory relief." Novartis v Union of India (2007) (para 9).

5On the powers of the Controller, the Bench observed, "There is no doubt that he is exercising a quasi-judicial function namely, considers the patent claim application in the context of the objections received; hears parties on both sides and then passes an order, either granting the patent or rejecting the patent application, by giving reasons." The court held, "if the Statutory Authority, in exercising his power, mis-directs himself; abuses his power in an arbitrary manner and passes an order, then, the same could be corrected by the hierarchy of forums provided in the Act itself in addition to the further reliefs available before the Courts of Law." Novartis v Union of India (2007) (paras 10 and 18). This decision provides a clear distinction between the matters that could be taken up in appeal and the matters that could be raised in writ petition.