Post grant Opposition filed on or before one year of publication under of grant is maintainable

In a recent decision, Asstt. Controller of Patents and design, Dr. Rachna Yadav has held that a post grant Opposition filed at the Indian Patent office on or before the expiry of one year of publication of grant under section 43(2) is maintainable.

Two Oppositions were filed on 30.03.2017 and 31.03.2017 by the Opponents, Shantha Biotechnics Private Limited and Biological E. Limited, respectively, under Section 25(2) of the Patents Act against Panacea’s Patent number IN272351. On 5th April, 2017, the Patentee was served with a copy of the notice of opposition and evidence by courier service, by e-mail on 27th April 2017 and by speed post on 1st May 2017 (agent of Patentee) and 2nd May 2017 (Patentee).

The Patentee filed an Interlocutory petition that the opposition is not maintainable as the Patentee has been served with the post grant opposition by email as well as speed-post by letters dated 28th April, 2017 which are beyond the prescribed time.

The Controller noted that section 25 (2) requires that a post grant opposition be filed at the Indian Patent Office on or before the expiry of one year of publication under section 43(2) i.e., before 1st April 2017. The same has been done in the present case.

Further, the Controller held that the Patentee has admitted to the fact that the copy of Opposition (including written statement, evidence and notice) was received on 5th April 2017 by courier, and later by e-mail and speed post. The Controller held that the Patentee has admitted that they have received the Opposition, by not one but several modes and the opposition has been timely filed at the Indian Patent Office as per the timeline of Section 25(2), the opposition is therefore maintainable.

 

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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 has been revoked by Deputy Controller of patents and Design, Mr.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.