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This article relates to a judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 20th January 2014 in the case “Abraxis BioScience LLC USA Vs Union of India” for a patent application no. 2899/DELNP/2005. The said patent application was rejected by Indian patent office. Thus being aggrieved by the rejection of the patent application by Indian patent office an appeal was filed by the applicant to IPAB.
Background Abraxis BioScience, a global biopharmaceutical company, acquired by Celgene Corporation, USA (hereinafter Applicant), filed a patent application on December 09th 2002 in USA and the corresponding application was filed in India through PCT on June 29th 2005 vide application no. 2899/DELNP/2005 (“composition and method for delivery of pharmacological agents”). A pre grant opposition was filed for the same application by NATCO Pharma Ltd on Sept 2008. During examination of the patent application, the Indian Patent office raised certain objections for the said patent application on July 24th 2009. But as alleged by the appellant, no opportunity has been given for hearing as per section 14 and 15 of the Act in order to clear the objections raised by the Indian patent office for the reason that appellant has not submitted reply to the first examination report within the prescribed period. Even the appellant was deprived of opportunity for filing an appeal against the order passed as per provision u/s 14 and 15 of the Act. And further Indian patent office without following the mandatory requirement of section 14 and 15 of the Act, proceeded with the pre grant opposition as filed by Natco Pharma. Further, in the proceedings of pre grant opposition, the Indian patent office suo-moto raised one more ground of opposition regarding insufficiency as per section 25 (i) (g) of the Act which was neither pleaded nor argued by the opponent. Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said patent application mainly on the ground of violation of natural justice principles. Considering the facts and circumstances of the case and weighing the evidence on record, IPAB set aside the order of patent office and remanded the matter for fresh consideration and also directed that the procedure be completed within three months from the date of the IPAB order.
Arguments advanced by the Appellant It was argued by the counsel for the appellant that the impugned order of patent office suffers from gross violation of principles of natural justice. The counsel also submitted that the appellant has been deprived of an opportunity of hearing as per provision under Section 14 of the Indian patent Act in spite of making specific request for the reason that the appellant has not submitted their reply to the First Examination Report before 07.01.2009. However said finding is incorrect as the appellant submitted its reply for the First Examination Report on 06.01.2009 itself.
It was further contended that without complying with the mandatory requirement under Section 14 of the Act, the Assistant Controller of Patents proceeded with the hearing on the pre-grant representation under Section 25 (1) of the Act. Furthermore, it was also contended that the learned Assistant Controller has suo-moto taken additional ground of opposition “insufficiency” under section 25(1)(g) of the Act which was neither pleaded by the opponent nor even argued during the hearing. Thus such findings on the basis of said additional ground cannot be justified being a serious error of law.
Arguments advanced by the Respondent The counsel for 4th respondent contended that there is no illegality or infirmity in the impugned order. It was further contended that as the appellant participated in the proceedings of hearing under Section 25 (1) of the Act, they could not contend any plea of depriving of an opportunity of hearing as per provision under Section 14 of the Act. Even it was argued by said respondent that they were not furnished with the copy of evidence filed through appellant and as such no opportunity was given to reply to that evidence.
Decision of IPAB The IPAB stated that there is clear evidence that the specific request made by the appellant for hearing under section 14 of the Act was denied and rejected by patent office. And also a response was filed to the first office action on 06.01.2009 itself with the request for hearing under Section 14 and 15 of the Act. But unfortunately, the said request was denied by the Assistant Controller of Patents stating that the said request was not made before 07.01.2009 and such finding is factually wrong as the said request was made by the appellant even on 06.01.2009 itself.
The IPAB also stated that an Assistant Controller is well aware about the affording opportunity to the appellant as well as to the opponent. Inspite of making the above said observations, the learned Assistant Controller has not given opportunity of hearing to the appellant as per the mandatory provision under section 14 of the Act.
Further, it was also stated that an order passed under Section 14 and 15 of the Act is an appealable order and the appellant has been deprived of their right to appeal against an adverse order if passed under Section 14 and 15 of the Act.
Further, IPAB also held that formulation of an additional ground of opposition on “insufficiency” under section 25(1)(g) of the Act by the assistant controller which was not at all raised or pleaded by the respondent, is unsustainable in law.
Thus in the light of averments, IPAB remanded the matter to the Assistant Controller of Patent for fresh consideration by affording opportunity to both sides, that is, applicant and opponent. As it is pointed out by the learned counsel for the 4th respondent that the affidavit of evidence filed by the appellant, the 4th respondent was not served with any copy of the affidavit of evidence as such learned Assistant Controller of Patent is directed to serve copy of the same to the 4th respondent and he will be given opportunity to reply the same. It is made clear that the learned Assistant Controller of Patent shall complete the hearing and dispose of the matter within a period of three months from the date of receipt of the order.
It appears that the decision given by IPAB is well balanced in view of the fact that the patent office while dealing with application erred to follow the principles of natural justice by not giving an opportunity to the appellant of hearing in spite of the mandatory requirement. Thus the IPAB ordered fresh consideration of application by patent office and also ordered in favoured of 4th respondent that they shall be given an opportunity to serve a copy of affidavit of evidence and to reply the same.
About the Author: Mr Sitanshu Singh, Patent Associate at Khurana and Khurana and can be reached at: Sitanshu@khuranaandkhurana.com