2012 (11) TMI 1298 - SC - Indian Laws

Summary

Issues involved: Application for grant of patent, revocation of patent u/s 25(2) of the Patents Act, non-furnishing of recommendation of the Statutory Board u/s 25(4), violation of principles of natural justice.

Grant of Patent and Revocation: Sugen Inc. USA and Pharmacia and Upjohn Company USA filed an application for the grant of a patent, which was recommended for grant on 23.8.2007. Cipla Ltd. filed for revocation u/s 25(2) on 1.9.2008, leading to the revocation of the patent by the Controller on 24.9.2012. The main controversy arose due to the non-furnishing of the recommendation of the Statutory Board constituted u/s 25(4) to the parties.

Opposition Proceedings: Chapter V of the Patents Act, 1970 deals with Opposition Proceedings. Section 25(1) allows representation against the grant of a patent before it is granted, while sub-section (2) enables opposition within one year of the grant. The grounds for opposition are specified in clauses (a) to (k), with no other grounds permitted. Section 25(3)(b) deals with the constitution of the Opposition Board, which examines and submits recommendations to the Controller.

Role of Opposition Board: The Opposition Board is constituted as per Rule 56, which includes three members and conducts examination based on rules 57 to 60. Section 25(4) states that the Controller, after receiving the Board's recommendation, shall order to maintain, amend, or revoke the patent after hearing the patentee and opponent. Rule 62 outlines the procedure for the hearing and decision-making process by the Controller.

Violation of Natural Justice: The Supreme Court found that the Controller's order, which relied on the Opposition Board's recommendation without providing a copy to the parties, violated the principles of natural justice. As a result, the order was set aside, along with the High Court's orders. The Court emphasized the importance of parties having access to the Board's recommendations before the Controller's decision u/s 25(4).

Remittal and Directions: The Court directed the Controller to reconsider the matter after providing all parties with the Board's recommendation. The Controller was instructed to dispose of the matter within one month from the date of the Court's order. The Civil Appeal was disposed of without costs, clarifying that no opinion was expressed on the parties' contentions, leaving them to be decided by the Controller.