Request for withdrawal of post-grant opposition not allowed

A patent granted in favor of M/s J. C. Bamford Excavators Ltd. has been revoked by Deputy Controller of patents and Design, Mr. Naveen Mathur in a post grant opposition on the grounds of non-compliance of Section 8 of the Indian Patents Act. The revocation is based on only the formal ground of section 8 and the controller has held the patent to be not only novel but also inventive.

The controller held that the applicant has failed to inform the controller about the Australian application and the Form 3 filed in December 2011 was filed beyond the prescribed period and thus section 8(1) of the Patents Act and the rules have not been complied with.

An interesting fact to note about the decision is that, the same is (1) based only on the pleadings of the parties and (2) has come after the Opponent withdrew the post-grant opposition in view of settlement between parties. The opponent in fact did not attend the hearing appointed in respect of the opposition for final arguments.

A hearing was fixed in respect of the opposition on 07/11/2017. In response to this the opponent sent a letter apprising the controller that there is a decision by the Hon’ble Delhi High Court regarding a pending infringement suit between the parties wherein the parties have come to a settlement. The Patentee attended the hearing but did not argue the matter on merits and only submitted the said Delhi High Court Order.

The controller held that he has been kept in dark and material facts regarding the suit were kept in hiding by both the applicant and the opponent. Further, the Delhi High court order only take cognizance of the settlement terms agreed upon by both the parties regarding the infringement and there is no provision to withdraw a post grant opposition under the Indian Patents Act. The Controller therefore proceeded with deciding the Opposition on merits even after settlement between the parties.

A cost under section 77 of the Patents Act has also been imposed on both the parties for not keeping the controller informed regarding the suit.

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Mid year IPO decision analysis

From January to June the IPO has disposed off 19 oppositions. Out of the 19 decisions, three are in relation to post grant oppositions and the remaining 16 are in respect of pre grant oppositions.

Out of the 16 decisions rendered in pre-grant oppositions, in nine cases either the applicant abandoned the case or the opposition was withdrawn. Similarly, out of the three decisions rendered in post-grant oppositions, in one case the applicant abandoned the case. For details see  Jan-June 2017.

For summary of the remaining 9 decisions (7 pre-grant and 2 post grant), wherein the Opposition grounds and Applicants/patentees submissions have been discussed in detail in the decision, refer: Pre grant Decisions Jan-June 2017and Post grant Opposition decision – Jan to June 2017 .