India - Pre-grant Order Appealable: IPAB Precedents Lost?
Legal News & Analysis - Asia Pacific - India - Intellectual Property - Regulatory & Compliance
28 June 2021
Judiciously speaking precedential value of every decision of a higher court is high for deciding the similarly placed cases in lower courts. Lower courts are bound by the decisions of the higher placed courts in hierarchy of a judicial system in every Jurisdiction. In Indian context also this is truly followed in letter and spirits by every court. This results in consistency and credibility to the institution issuing decisions. It also strengthens credible procedure to be followed by lower courts or quasi-judicial institutions like patent offices. The precedents set by Intellectual Property Appellate Board (IPAB) for example became guiding principle for patent office in number of cases such as division of an application, pre-grant opposition appeals, requirements under section 8 and steps required to final recording of grant of a patent and so on.
Post abolishing of the Intellectual Property Appellate Board have created an anomalous situation particularly for the deciding the forum for appeals arising from the decision of the pre-grant opposition under section 25(1) in view of exiting position under section 117A of the Patent Act 1970 amended in 2005. It is interesting to note that pregnant decision under section 25 (1) are not appealable under section 117A before High court now. Legally speaking invoking the writ jurisdiction of the high court under article 226 is the only possibility left with aggrieved party in a pre-grant opposition decision of the Controller. This means supervisory writs can be invoked for interlocutory rulings as high court being the supervisory authority for the Controller of patents. Interestingly, under section 117A no appeal lies for decision under section 25(1) after the Patent Act amendments in 2005.
For all practical purposes, the basic distinction between a supervisory writ and an appeal is the court’s discretion to grant or deny the former. In other words, the basic difference between supervisory jurisdiction and appellate jurisdiction is that the former is discretionary on the part of the supervisory court while the latter may be invoked by the litigant as a matter of right. Consequently, while an appeal is the proper mechanism for review of a final judgment, supervisory writs are generally invoked for interlocutory rulings. Curiously, this legal dilemma in patent act was raised before every high court and before IPAB in number of cases and got resolved by the number of High court’s ruling which were binding on IPAB. The position on the appeal before IPAB in pregnant opposition got settled based on precedent set by high courts. All the appeals pending in IPAB before its closure now stand transferred to respective high courts and there will be no difficulty in the high courts to pass final decisions on so called precedent-based appeals as same were being dealt by IPAB without any difficulty.
After the closure of the IPAB the established practice of the IPAB accepting pre-grant appeals may not be binding on the different high courts. The aggrieved party in pre-gnant opposition after April 2021 would not have right to file appeal under the prevailing position of the section 117A. They would be left with only option to invoke the writ jurisdiction of the supervisory court under Article 226. Since accepting the writ is discretionary there will be a possibility that contrasting positions are taken by different high courts.
If appeal is filed in a pre-grant order of the Controller in a Commercial Court, it may face the omission bar under section 117A (1) of the patent Act 1970 amend in 2005. The reason for this being the existing provisions of section 117A
“Section 117A Appeals to High Court (1)Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.’
(2) an appeal shall lie to the High Court from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19,section 20, sub-section (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.’
Therefore, legally speaking, reading of Section 117A (2) would imply that order passed by the Controller under section 25(1) is not appealable as same is not included explicitly under the section. In other words, Section 117A (1) applies and it imposes a bar on filing of such appeal from an order of the Controller in pre-grant opposition filed under section 25(1). Does this mean the practice which IPAB had been developed over the number of years would meet a silent demise?
It would raise the pertinent question what stand the commercial court would take if writ were filed or an appeal is preferred by the aggrieved party against the order of the controller in a pre-grant opposition. It would be left to prudence and discretion of the supervisory courts to entertain the writ petition. Whether the commercial courts would continue the precedent set by IPAB? It will take some more time to get clear picture as to how the courts would react to this situation where Section 117A (1) imposed a clear bar on filing of such appeal from an order of the Controller, which is not explicitly provided under sub-section (2). Therefore, a plain reading of Section 117A (2) would imply that order passed by the Controller under section 25(1) is not appealable.
Interestingly, an order passed under Section 25(1) of the Act could be one where the Pre-Grant opposition succeeds, and the patent application is refused. Another possibility is that the Pre-Grant opposition is rejected, and the patent is granted. Both contrasting adverse rulings needs a remedy by way of appeal/review by supervisory court. But the pertinent question before the affected party is which is the best remedy when choice is between writ under Article 226 or appeal which was available under the rule of precedent in the IPAB. High courts have allowed both in number cases.
In Glochem Industries Ltd vs Cadila Healthcare Ltd for example, a writ petition under Article 226 of the Constitution, against the rejection of Pre-Grant Opposition was filed as appeal was not available under 117A for decisions under section 25(1). Since the discretion to allow was required to be invoked by division bench of Bomby High Court respondent contested and argued that a writ petition is not maintainable as multiple equally effective and efficacious remedies are available to the petitioner such as Post-Grant Opposition under Section 25(2), revocation of patent under 64 of the Act and a counter-claim u/s 104 of the Act, in the infringement suit. The Hon’ble Division Bench allowing the writ observed that having above remedies by itself can be no basis to non-suit the Petitioners at the threshold on this count. This clearly shows that it is matter completely left to the discretion of the court to allow or deny the writ in matters relating to pre-grant opposition cases. The possibility of denying the writ in appropriate case cannot be ruled out when matters would now be tested again in the high courts of different jurisdictions. In another list of Writ petition cases Hon’ble Mr. Justice S. Murlidhar, Delhi High Court in M/s UCB Farchim SA vs. M/s Cipla Ltd. & Ors also dealt with question of law concerning the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents either allowing or rejecting a pre-grant opposition filed under Section 25(1). With regard to the maintainability of a writ petition under Article 226 of the Constitution, by such third party against the Controller’s order rejecting the opposition, the Hon’ble Court took the view that ‘the power under Article 226 of the Constitution is wide and can be exercised on the facts and circumstances of a given case where it appears to this Court that there is no other efficacious remedy available or that the interests of justice require this Court to interfere.’ Therefore, a writ petition under Article 226 is maintainable by a third party against the rejection of its Pre-Grant Opposition.
IPAB adopted the stand taken by the Hon’ble High Courts to allow the appeal under Section 117A(2) of the Act against the order passed by the Controller under Section 25(1), if the Pre-Grant opposition is accepted and a patent application is refused as the will be treated as an order passed under Section 15 of the Act which in effect is one appealable under Section 117A of the Act. However, commercial courts of the high courts are not bound by the stand taken by the IPAB and it is possible that the appeals would be denied due to lack of provision under the patent act. In such cases the affected parties would resort to seek relief by filing writ petition. Looking for the point of view of the patentee or the opponent alike its dilemma which is created by disbanding of the IPAB where such appeals were allowed to be filed as matter of practice supported by judicial precedent. It would take some time to clearly understand what position commercial courts would take relating to the IPAB set rules or practice pertaining to such pre-grant appeals in future. But one thing is certain that the much controversy which roamed around the provisions relating to remedies to challenge the order passed by the Controller General of Patents, in a pre-grant opposition under section 25 (1) which appeared to have been settled by IPAB would now raise its head in four commercial courts again. If these courts take contrasting or different stand the patentee or opponent are surely in for dilemma which remedy to choose writ or appeal. At the end, we may sum up by saying that the power to allow writ is there with high courts, but its exercise is discretionary, and it will be governed solely by the dictates of judicial conscience enriched by judicial experience and practical wisdom of the Judges. Though the practice of IPAB to allow appeal on the bases of precedents set by High courts may be persuasive to test the allowability of the appeal in the pre-grant opposition cases in commercial courts as well but surety of this cannot be ensured in view of provisions of section 117A which omitted section 25(1) from appealable list.
The sudden abolishment of the IPAB has created an anomalous situation particularly for deciding the forum for appeals arising from the decision of the pre-grant opposition given under the Patent Act. Authored by DPS Parmar, this article discusses the status of precedence set by IPAB. It was 1st published in IP Link- Asia on June 16th.
For further information, please contact:
DPS Parmar, Head of the IPAB practice group LexOrbis