Addressing the admissibility of six writ petitions, the Delhi High Court on February 8, 2010 addressed an important question of law - the maintainability of a writ petition under Article 226 of the Constitution of India, to challenge an order passed by the Controller of Patents (hereinafter as Controller) either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970 (hereinafter as the Patents Act). The parties to the petitions included UCB Farchim, Cipla, ColorCon Inc, Ideal Cures Pvt. Ltd, Yeda Research and Development, NATCO Pharma, Eli Lilly, Ajanta Pharma and Ranbaxy.

Addressing this question of law, the Court examined the scheme of the Patents Act, pertinently in view of the amendments brought about by the Patents (Amendment) Act, 2005. In doing so, the Court noted that prior to the amendment in 2005, Section 25 (1) of the Patents Act provided that at any time within four months from the date of advertisement of the acceptance of a complete specification and that the Controller could either refuse the patent application or require the applicant to make amendments to the satisfaction of the Controller- In the event of suggested amendments not being made as directed, the Controller would refuse the application. Therefore, Section 15 of the Patents Act contemplated either eventuality resulting from a decision of the Controller on a pre-grant opposition under Section 25(1) i.e. the grant of the patent with or without amendments, or the refusal of the patent.

Further, the Court noted that prior to the amendment in 2005, in the absence of a provision for a post-grant opposition; an appeal against Section 25 lay in terms of Section 116 of the Patents Act to the High Court. In view of the present form of the legislation it was noted that while Section 117A provides an appeal to the IPAB against an order under Section 25 (4), it did not expressly provide an appeal against an order in a pre-grant opposition under Section 25(1) of the Patents Act. The Court however pointed out that Section 117A did pronounce the IPAB as the forum to appeal against an order of the Controller passed under Section 15 of the Patents Act.

The Court analyzed and distinguished the scheme of pre-grant and post-grant oppositions under the Act. They went on to summarize that two possible situations arose from the order passed by the Controller in a pre-grant opposition (i) Where the pre-grant opposition is rejected; and (ii) where the Controller accepts the pre-grant opposition and therefore refuses the grant of patent or suggests amendments. The Bench made reference to the Supreme Court decision of J. Mitra v. Asst. Controller of Patents & Designs [(2008) 10 SCC 368] and stated that it was apparent therefrom that when the pre-grant opposition is rejected, that as long as the person who has filed that opposition happens to be a person interested, he would, after 1st January 2005 have the remedy of filing a post-grant opposition, the order too which is appealable at the IPAB. The Court further stated that in as much as a grievance vis-à-vis the order of the IPAB, the same was open to judicial review by the Supreme Court. The Court further noted that after 2nd April 2007, an application before the IPAB under Section 64 of the Patents Act for revocation of the patent could also be filed. The Court noted that as explained by the Supreme Court in the J. Mitra decision, as long as that person is able to show that he is a person “interested”, he was not without a remedy after his pre-grant opposition is rejected, but in fact has two remedies.

The Court also reiterated that the law is well settled that while the High Court has the power and the jurisdiction under Article 226 of the Constitution to interfere with the orders of any statutory authority which is of a quasi-judicial nature, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person. In the event where the pre-grant opposition is filed by a third party and the applicant is not a person “interested” in the sense of the term under Section 25(2) or Section 64 of the Patents Act, upon rejection of a pre-grant opposition he would be entitled to move under Article 226 of the Constitution for the Court to determine if in the facts and circumstances, the petition requires to be entertained.

The Court took the view that where the grant of patent is refused by the Controller after accepting a pre-grant opposition under Section 25(1) of the Patents Act, the a remedy by way of an appeal to the IPAB under Section 117A of the Patents Act existed since the refusal to grant a patent was meant to be understood as an order by the Controller under Section 15 of the Act, to appeal which the IPAB is assigned as the right forum under Section 117 A.

In view of the deliberation, the Court declined to admit the six writ petitions and directed them to approach the IPAB as the forum to address their grievance.