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 contained in Rule 57(1) of the Patent Rules.

6. We need not concern ourselves either with Section 25(1) of the Patents Act or with Rule 57(1) of the Patents Rules, as, in the present case, Respondent 3 objected to IN'720 after, not before, it was granted. We, therefore, are concerned with a post-grant opposition, not a pre-grant opposition.

7. Section 57(2)² [(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely: ***** but on no other ground. (Clauses (a) to (k) have been omitted for brevity, as they are not relevant to the discussion in the present case.)] permits the filing of a post grant opposition. The procedural stipulations in that regard are to be found in Rules 55- A to 62 of the Patents Rules.

8. Rule 56³ [56. Constitution of Opposition Board and its proceeding. - (1) On receipt of notice of opposition under Rule 55-A, the Controller shall, by order, constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board. (2) An examiner appointed under sub-section (2) of Section 73 shall be eligible to be a member of the Opposition Board. (3) The examiner, who has dealt with the application for patent during the proceeding for grant of patent thereon shall not be eligible as member of Opposition Board as specified in sub-rule (2) for that application. (4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under Rules, 57 to 60 referred to under sub-section (3) of Section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them] envisages the constitution of an Opposition Board to undertake a preliminary examination of post grant oppositions. The Opposition Board is required to take into consideration all the material filed before the Controller from Rules 57 to 60⁴ [57. Filing of written statement of opposition and evidence. - The opponent shall send a written statement in duplicate setting out the nature of the opponent's interest, the facts upon which he bases his case and relief which he seeks and evidence, if any, along with notice of opposition and shall deliver to the patentee a copy of the statement and the evidence, if any. 58. Filing of reply statement and evidence. - (1) If the patentee desires to contest the opposition, he shall leave at the appropriate office a reply statement setting out fully the grounds upon which the opposition is contested and evidence if any, in suppor