Court sets aside Controller's decision, emphasizing the need for independent reasoning and compliance with procedural requirements.
In a significant judgment, the Bombay High Court has set aside the revocation of a patent held by SAATHI, Inc., highlighting crucial procedural lapses by the Office of the Controller General of Patents, Designs, and Trade Marks. The court, presided over by Justice Arif S. Doctor, emphasized that the Controller's order was devoid of independent reasoning and did not address critical procedural issues, including the locus standi of the opposing party and non-compliance with evidentiary requirements.
The case revolved around the revocation of Patent No. IN365526, following a post-grant opposition filed by an unnamed second respondent. The petitioner, SAATHI, Inc., challenged the revocation on four primary grounds: the order being non-speaking, deviation from the Opposition Board's recommendations without reason, failure to establish the opposing party's locus standi, and non-filing of an affidavit of evidence by the respondent.
Justice Doctor noted that the Controller's order lacked independent analysis and merely reiterated the opposing party's submissions without addressing the petitioner's contentions or the technical material on record. The court underscored the importance of a reasoned order, especially in post-grant opposition proceedings, where the revocation threshold is higher due to prior thorough examination of the patent.
The judgment also highlighted the procedural misstep in disregarding the Opposition Board's recommendation to reject the opposition without furnishing any reasons. According to Rule 62(5) of the Patents Rules, 2003, the Controller is mandated to consider the recommendations of the Opposition Board and provide reasons for any deviation, which was not done in this case.
Furthermore, the court found that the opposition proceedings were unsustainable due to the failure of the second respondent to file an affidavit of evidence, as required under Section 79 of the Patents Act, 1970. The court emphasized that merely annexing documents without a supporting affidavit does not constitute evidence.
The issue of locus standi was also pivotal in the court's decision. The second respondent, claiming to be a medical practitioner, did not qualify as a "person interested" under Section 2(1)(t) of the Act, a threshold requirement for filing a post-grant opposition. The court noted that the failure to establish locus standi at the outset vitiates the opposition proceedings.
In conclusion, the Bombay High Court allowed the petition, setting aside the Controller's revocation order and highlighting the necessity for adherence to procedural norms and reasoned decision-making in patent opposition proceedings. The court's decision reinforces the need for transparency and accountability in the patent review process.
Bottom line:-
Patents Act, 1970 - Non-speaking orders by the Controller General of Patents, disregarding Opposition Board recommendations, and failure to establish locus of the respondent or file evidence affidavit are sufficient grounds to set aside the revocation of a patent.
Statutory provision(s): Patents Act, 1970 Sections 2(1)(t), 25(2), 79, 117A; Rule 62(5) of the Patents Rules, 2003.
