ORDER

1.These six petitions raise an important question of law concerning the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents („Controller) either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970 („Patents Act).

2. Before discussing the facts of the individual cases the scheme of the Patents Act, particularly after the amendment to the relevant provisions by way of Patents (Amendment) Act, 2005 („Amendment Act) as well as the judgment of the Supreme Court in J. Mitra & Company v. Assistant Controller of Patents & Designs (2008) 10 SCC 368 require to be examined. The statutory scheme of the relevant provisions of the Patents Act

3. Section 15 of the Patents Act states that where the Controller is satisfied that the application for grant of patent, or any specification or any other document filed in pursuance thereof, does not comply with the requirement of the Patents Act or the Rules, “the Controller may refuse the application or may require the application, specification or other documents, as the case may be, to be amended to the satisfaction before he proceeds with the application or refuse the application on failure to do so.”

4. Prior to its amendment in 2005 with effect from 1st January 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 “any person interested may given notice to the Controller of Patents („Controller) of opposition to the grant of patent on the grounds set out in Section 25 (1) (a) to 25(1) (k) of the Patents Act. Section 25 (2), prior to the 2005 amendment, stated that when any such notice of opposition is given, the Controller shall notify the applicant (for a patent) and give to the applicant and the opponent an opportunity of being heard before deciding the case. Therefore, at the pre-grant stage, prior to the amendment in 2005, the Controller could either refuse the patent application or require the applicant to make amendments to the satisfaction of the Controller and if such changes were not made as directed, he 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.

5. Prior to its amendment in 2005, against an order under Section 15 refusing a patent and against an order under Section 25, an appeal lay in terms of Section 116 of the Patents Act to the High Court. Prior to 2005, there was no

provision for a post-grant opposition. However, the 2005 amendments brought a significant change in this scheme.

6. In 2002 amendments were made to the Patents Act to provide for appeals to the Intellectual Property Appellate Board (IPAB) in terms of the newly inserted Section 117 A instead of appeals to the High Court under Section 116. However, these amendments were not notified till 2nd April 2007. Meanwhile another major set of amendments were introduced with effect from 1st January 2005 under the Amendment Act of 2005. For the first time a provision was made, in the form Section 25 (2) to provide for a post-grant opposition. Section 25(1) concerning pre-grant opposition remained more or less the same and sub-clauses (a) to (k) set out the various grounds on which a pre-grant opposition could be filed. It also incorporated the pre-grant opposition procedure which required the Controller to hear the opposer. While under the amended Section 25 (1) „any person could file a pre-grant opposition [as against only an „interested person under the pre-amended Section 25 (1)], only an „interested person could file a post-grant opposition under Section 25 (2) of the Patents Act as ame

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