The Opposition Board’s Recommendations (OBR) hold a significant role in the post- grant opposition proceedings against any granted patent. Section 25(3)(b) of the Patents Act, 1970, read with Rule 56 of the Patents Rules, 2003, mandates the Controller to constitute an Opposition Board on the receipt of the notice of opposition. Rule 56(4) obligates the Board to conduct an examination of the documents filed by the parties under Rules 57 to 60. The recommendations formulated after such examination are submitted to the Controller. These recommendations then serve as an advisory document to the Controller in deciding the post-grant opposition matters.
Notably, as the pleadings and evidence in post-grant opposition are filed before the Controller, the Controller makes the documents available to the Board for examination.
The thoroughness and quality of the OBR can be contested by the parties before the Controller during the hearing of the post-grant opposition under Rule 62. It is an accepted view that since the parties have an opportunity to challenge any perceived inadequacy of the OBR before the Controller, it may not be appropriate for a Court to interfere with the same in a judicial review.
In a recent writ petition, ER Squibb & Ors. v. Union of India & Ors, W.P.No.8451 of 2023, brought before the Madras High Court, the Petitioners sought to set aside the OBR. The order passed by the Court addressed a key concern, namely, the circumstance under which the Court can exercise its jurisdiction under article 226 of the Constitution of India and interfere with the recommendations of the Opposition Board.
The Petitioners challenged the OBR before the Court alleging that:
- the additional evidence filed by the Petitioner for which they had sought leave under Rule 60 of the Patents Rules, were not considered by the Board in formulating its recommendations as the same were not forwarded to the Board by the Controller, and
- the documents filed as rejoinder by Respondent no.3 were forwarded to the Board without passing any order on the Petitioners’ application objecting to the rejoinder since there is no provision in the scheme of the Patents Act for filing rejoinders.
The Controller had admittedly forwarded the rejoinder to the Board and did not forward the additional evidence filed by the Petitioners. Therefore, the Court held that the OBR thus submitted to the Controller was not based on those materials which the Board is required to consider under Rule 56(4).
The Court undertook the judicial review of the OBR reasoning that although the Opposition Board’s Recommendations are not binding, the procedural irregularities committed by the Controller leading to an inadequate OBR cannot be ignored. The Board is a statutory creation with specific mandates on what it should examine. Therefore, it automatically becomes the duty of the Controller to provide all materials filed by the parties under Rules 57-60 to the Board. Any failure to do so results in an inadequate OBR which warrants its judicial review.
In case any application is filed before the Controller by either of the parties concerning the documents under Rules 57-60, the Controller must decide said application before withholding or forwarding any document subject to such application, from or to the Board. Any failure to do so indicates an incomplete and improper scrutiny by the Board within the statutory scheme resulting in the breach of Rule 56(4). In essence, if the Controller properly presents all required documents to the Board, the evaluation of the OBR’s adequacy rests with the Controller. Conversely, if documents are improperly presented or withheld, the same is bad in law and, thus, the Court is empowered to intervene with the OBR.
In view of the foregoing, the Court set aside the OBR and directed the Controller to decide the two applications filed by the Petitioners and properly present the documents to another Board for making its recommendation.
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