Case Note & Summary
The writ petition challenged an order of the Deputy Controller of Patents rejecting a pre-grant opposition filed by Adiuvo Diagnostics Private Limited (petitioner) against Indian Patent Application No. 9067/DELNP/2010 filed by University Health Network (respondent No. 4). The invention related to a device and method for fluorescence-based imaging. After hearing both sides, the Controller passed an order dated 19.07.2023 rejecting the opposition and granting the patent. The petitioner then approached the Madras High Court under Article 226, contending that the impugned order was unreasoned and failed to consider material evidence, namely affidavits of persons skilled in the art, and sought its quashing with a direction to remit the pre-grant opposition for fresh consideration. The respondent opposed the maintainability of the writ petition, arguing that the Patents Act does not provide for an appeal against rejection of a pre-grant opposition, that alternative remedies such as post-grant opposition and revocation are available, and that the writ remedy cannot be used as an indirect appeal. Reliance was placed on decisions of the Delhi High Court in Ucb Farchim Sa v. Cipla Ltd., Rich Products Corporation, and Mylan Laboratories to contend that writ jurisdiction should not be exercised in such matters. The petitioner, in rebuttal, cited cases where writ petitions had been entertained at the pre-grant stage, including Regents of the University of California, Best Agrolife, and Indian Network for People living with HIV/AIDS, and emphasised the landmark judgment in Whirlpool Corporation to assert that the existence of an alternative remedy is not an absolute bar when the impugned order is unreasoned. The Court, after examining the rival contentions, held that the power under Article 226 is wide and is not ousted merely because alternative remedies exist. Referring to Ucb Farchim, it noted that ordinarily the Court would decline jurisdiction if an efficacious statutory remedy is available to a person interested, but if the order suffers from procedural impropriety or lack of reasons, interference may be warranted. On a perusal of the impugned order, the Court found that it made no reference whatsoever to the affidavits of persons skilled in the art filed by the petitioner, which were critical for the obviousness analysis. It observed that it is incumbent on the Controller to consider such evidence and record reasons for accepting or rejecting the opinions expressed therein. The Court also noted the petitioner’s contention that the Controller had conflated novelty with inventive step and had rejected objections under Sections 3(d), 3(f), and 3(k) without adequate reasoning. In the light of these deficiencies, the Court concluded that the impugned order was unreasoned and could not be sustained. Consequently, the writ petition was allowed, the impugned order was set aside, and the matter was remanded to a different officer of the Patent Office to rehear the pre-grant opposition on merits in a time-bound manner after considering all submissions and documents, including the affidavits. The decision reinforces the principle that administrative orders in patent examination must be supported by reasons, and material evidence cannot be ignored.
Headnote
A) Constitutional Law - Writs under Article 226 - Maintainability - Alternative Remedy - Constitution of India, Article 226; Patents Act, 1970, Sections 25(1), 2(1)(t) - The maintainability of a writ petition challenging an order rejecting a pre-grant opposition was examined. Held, existence of alternative remedies such as post-grant opposition does not oust the High Court’s power under Article 226. The Court may exercise jurisdiction if the order is unreasoned or the decision-making process is flawed, as the power under Article 226 is wide and can be invoked where a statutory authority fails to exercise jurisdiction or acts perversely. (Paras 13-14) B) Patent Law - Pre-grant Opposition - Consideration of Evidence - Affidavits of persons skilled in the art - Patents Act, 1970, Sections 25(1), 2(1)(ja) - The Controller is required to consider affidavits of persons skilled in the art (PSITA) filed in pre-grant opposition, particularly for obviousness analysis. Failure to even refer to such affidavits in the order vitiates the decision as unreasoned. The impugned order was set aside because it conspicuously omitted all reference to the affidavits of Mr. Ananth Krishnan, Dr. Balasubramaniyam Pesala, and Dr. Ralph DaCosta. (Paras 15-16) C) Patent Law - Inventive Step - Obviousness analysis - Conflation with novelty - Patents Act, 1970, Section 2(1)(ja) - The Controller must not conflate the requirements of novelty with those of inventive step. A conclusion that an invention is not obvious merely because prior art combinations do not disclose all features does not satisfy the requirement of a proper obviousness assessment. The impugned order failed to record independent reasoning and conflated the two tests, contributing to its unreasoned nature. (Paras 5, 16)
Issue of Consideration
Whether discretionary jurisdiction under Article 226 of the Constitution of India may be exercised in respect of an order rejecting a pre-grant opposition.
Final Decision
The High Court allowed the writ petition and set aside the impugned order dated 19.07.2023. The matter was remanded to a different officer of the Indian Patent Office to rehear the pre-grant opposition on merits, in a time-bound manner, after considering all submissions and documents, including the affidavits of persons skilled in the art.
Law Points
- Legal points not extracted
- maintainability of writ petition against order rejecting pre-grant opposition
- scope of judicial review under Article 226
- alternative remedy not an absolute bar
- necessity of reasoned order by Controller
- duty to consider affidavits of persons skilled in the art
- distinction between novelty and inventive step analysis
- patent examination must include proper obviousness assessment
