Order by Justice Pratibha Singh providing guidelines for Post grant Opposition

While disposing off a writ petition filed by Pharmacyclics LLC, Justice Pratibha Singh discouraged late filing of documents, evidences during post grant opposition proceedings, and also issued guidelines for such proceedings.

The factual details of the case are as follows: –

  • Patentee Pharmacyclics LLC was granted Indian Patent No.262968. The publication of the grant took place on 3rd October, 2014.
  • On 24th September, 2015, the Opponent – M/s. Laurus Lab Pvt. Ltd. filed a post-grant opposition under Section 25(2) of the Patents Act, 1970. The Patentee filed its response to the said opposition.
  • The Opposition Board, which was constituted by the Controller, thereafter, submitted its recommendation. The said recommendation was forwarded to the parties on 14th September, 2017, and the matter was fixed for hearing on 16th November, 2017.
  • The Opponent filed a request for adjournment of the hearing scheduled on 16 November, 2017 on the ground of personal difficulty. Vide notice dated 14th August, 2019, the hearing in the post-grant opposition was fixed for 25th September, 2019. At that stage, 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. In view of the fresh documents and evidence filed, and due to difficulty of counsel, the Patentee sought an adjournment of the hearing scheduled on 25th September, 2019.
  • The Patentee objected that the fresh documents and evidence filed by the Opponent ought not to be taken on record, as the same were belatedly filed and contrary to the Patents Rules, 2003. Miscellaneous petitions praying for the additional documents/evidence to not be taken on record, were filed by the Patentee.
  • The interlocutory petition was heard, and vide order dated 6th November, 2019, the Controller came to the conclusion that the documents and evidence filed by the Opponent would be taken on record, and would be considered at the time of final adjudication. The matter was posted for hearing on 22nd November 2019.

A Writ petition was filed challenging the impugned order dated 6th November, 2019, passed by the Joint Controller of Patents and Designs Controller.

In the present case, Justice Pratibha Singh allowed the further evidence as the Court held that the matter has already been fixed for final hearing on 22nd November, 201, the Opponent has already filed documents and evidence prior to the hearing and the Patentee sought an adjournment of the hearing accordingly and the Patentee has also had an opportunity to respond to all the documents and evidence filed by the Opponent which the Patentee has already done. Thus, the Court did not deem it appropriate to direct non-consideration of the said further evidence filed by the parties.

However, while disposing of the petition Justice Singh defined few guidelines/ general principles that ought to be followed while dealing with a post-grant opposition:

  1. 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;
  2. The Opponent in Rule 59 ought to be strictly confined to the Patentee’s evidence
  3. Once the Opposition Board is constituted and the material is transmitted to the Board, further evidence is not permissible;
  4. 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;
  5. 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;
  6. 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.

The order also states that the filing of further evidence prior to the hearing or reliance on publications under Rule 62(4) would not ordinarily permit an adjournment on, 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.

Further, the Court held that, 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 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. An endeavour ought to be made by the Patent Office to ensure that post-grant oppositions are decided expeditiously as pendency of post-grant oppositions delays adjudication of infringement suits, if any, in respect of the patent and also keeps the rights of the Patentee under a cloud or in doubt.

3 thoughts on “Order by Justice Pratibha Singh providing guidelines for Post grant Opposition

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