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C. HARI SHANKAR
Akebia Therapeutics Inc. – Appellant
Versus
Controller General of Patents, Design – Respondent
JUDGMENT (Oral)
1. On 26 September 2017, the petitioner's Patent IN 287720 (IN'720 hereinafter) was granted by the Indian Patent Office in respect of an invention titled "HIF-1a prolyl hydroxylase inhibitor compounds".
Procedure for post grant oppositions
2. Before proceeding further, a brief glance at the statutory scheme, governing pre-grant oppositions and post-grant oppositions to a patent, as contained in the Patents Act, 1970 and the Patents Rules, 2003, may be noticed.
3. Section 25 of the Patents Act permits any person to object to a patent, either before, or after, it is granted. The substantive provisions in that regard are contained in Section 25 of the Patents Act, and the corresponding procedure to be followed is to be found in Rule 25 of the Patents Rules.
4. Section 25(1) envisages an opposition to a patent "where an application for a patent has been published but a patent has not been granted"1 [The opening words of Section 25(1)]. It, therefore, deals with a pre-grant opposition to a patent; in other words, an opposition to the application itself, objecting to the request for grant of a patent.
5. The corresponding procedure, governing pre-grant oppositions, is
Patents Act requires adherence to procedures in post-grant oppositions, emphasizing natural justice and timely resolutions to prevent delays in patent adjudication.
The recommendation of the Opposition Board is not binding, and a writ petition challenging it is not maintainable; objections can be raised during hearings before the Controller.
The need for a systematic manner in conducting pre-grant oppositions and the right to file affidavits of own experts in rebuttal.
The evidence for trademark opposition filings must be submitted timely per the trademark regulations, although minor procedural errors do not invalidate the filings.
The Controller must provide a reasoned decision on pre-grant opposition addressing all raised grounds, particularly under Sections 3(d) and 3(e), to ensure compliance with natural justice standards.
The non-binding nature of Opposition Board recommendations and the Controller's discretion in deciding the qualitative merit of the recommendations.
A pre-grant opposition is in the nature of an aid to examination and is not an adversarial proceeding and thus no right of the Petitioner can be said to be violated so as to invoke the extraordinary ....
The main legal point established in the judgment is that amendments made to patent claims at the instance of the Controller, pursuant to the directions of the Controller, do not violate the principle....
Procedural irregularities in patent opposition must respect principles of natural justice, and amendments to patent claims cannot broaden their scope.
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