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High Court of Judicature at Madras
THE HONOURABLE CHIEF JUSTICE MR. A.K. GANGULY & THE HONOURABLE MR. JUSTICE F.M. IBRAHIM KALIFULLA
Indian Network for People living with HIV/AIDS, Rep. by its President & Another
Versus
Union of India, Rep. by the Secretary, Department of Industrial Policy and Promotion, Ministry of Industry and Commerce & Others
Writ Petition No.24904 of 2008 and M.P.Nos.2 & 3 of 2008
Decided on: 02-12-2008
PATENT - PRE-GRANT OPPOSITION - RIGHT TO HEARING - NATURAL JUSTICE - [SECTION 25(1)(K) OF THE PATENTS ACT, 1970] - [RULE 55(6) OF THE PATENTS RULES, 2003] - The Controller of Patents is duty-bound to hear the objector before deciding the pre-grant opposition. Denial of an opportunity of hearing to the objector is a violation of natural justice and renders the grant of patent void.
Fact of the Case:
The petitioners, registered societies providing support to people living with HIV/AIDS (PLHIV), filed a pre-grant opposition to the Patent Application of the 4th respondent under Section 25(1) of the Patents Act, 1970, contending that the invention lacked novelty. The 3rd respondent, the Patent Office, gave notice to the 4th respondent to file a statement and evidence in support of the patent application. The 4th respondent filed its reply, but the petitioners were not informed of the fate of their objection or the date of hearing. The Patent Office unilaterally granted the patent to the 4th respondent, and the petitioners challenged this grant by way of a writ petition.
Finding of the Court:
1. The Controller of Patents has the powers of a Civil Court while trying a suit under the Code of Civil Procedure, 1908, in respect of certain matters, including summoning and enforcing the attendance of any person and examining him on oath, requiring the discovery and production of any document, and awarding costs. [Section 77 of the Patents Act, 1970] 2. The pre-grant opposition proceedings before the Controller are quasi-judicial proceedings, as the Controller decides a controversy between the applicant's right to get the patent and the objector's right to defeat the claim of patent. [Section 25(1) of the Patents Act, 1970; Rule 55(6) of the Patents Rules, 2003] 3. The right to raise pre-grant objection has been advisedly given to 'any person' by the 2005 Amendment to the Patents Act, 1970, to broaden the concept of locus standi and widen the scope of objection procedure, allowing access to 'any person' who has a concern for public interest in the area of public health and nutrition. [Statement of Objects and Reasons of the Patents (Amendment) Act, 2005] 4. The expression 'the Collector shall hear' in Section 25(1)(k) of the Patents Act, 1970, should be interpreted as 'the Collector shall hear' and not 'the Collector may hear', as the legislature has made its intention clear in specific terms. [Section 25(1)(k) of the Patents Act, 1970; Rule 55(6) of the Patents Rules, 2003] 5. The denial of an opportunity of hearing to the petitioners, who had specifically requested for the same, violated their statutory right of hearing under Section 25(1)(k) of the Patents Act, 1970, read with Rule 55(6) of the Patents Rules, 2003, and rendered the grant of patent void.
Issues: 1. Whether the Controller of Patents is duty-bound to hear the objector before deciding the pre-grant opposition? 2. Whether the denial of an opportunity of hearing to the objector is a violation of natural justice? 3. Whether the grant of patent in such circumstances is void?
Ratio Decidendi: 1. The Controller of Patents has the powers of a Civil Court while trying a suit under the Code of Civil Procedure, 1908, in respect of certain matters, including summoning and enforcing the attendance of any person and examining him on oath, requiring the discovery and production of any document, and awarding costs. [Section 77 of the Patents Act, 1970] 2. The pre-grant opposition proceedings before the Controller are quasi-judicial proceedings, as the Controller decides a controversy between the applicant's right to get the patent and the objector's right to defeat the claim of patent. [Section 25(1) of the Patents Act, 1970; Rule 55(6) of the Patents Rules, 2003] 3. The right to raise pre-grant objection has been advisedly given to 'any person' by the 2005 Amendment to the Patents Act, 1970, to broaden the concept of locus standi and widen the scope of objection procedure, allowing access to 'any person' who has a concern for public interest in the area of public health and nutrition. [Statement of Objects and Reasons of the Patents (Amendment) Act, 2005] 4. The expression 'the Collector shall hear' in Section 25(1)(k) of the Patents Act, 1970, should be interpreted as 'the Collector shall hear' and not 'the Collector may hear', as the legislature has made its intention clear in specific terms. [Section 25(1)(k) of the Patents Act, 1970; Rule 55(6) of the Patents Rules, 2003] 5. The denial of an opportunity of hearing to the petitioners, who had specifically requested for the same, violated their statutory right of hearing under Section 25(1)(k) of the Patents Act, 1970, read with Rule 55(6) of the Patents Rules, 2003, and rendered the grant of patent void.
Final Decision: The writ petition was allowed. The grant of patent in Patent No.207232 by the office of the respondents 2 and 3 in Patent Application No.959/MAS/1995 filed by the fourth respondent was set aside. The third respondent was directed to hear only the petitioners and the fourth respondent on the petitioner’s representation at the stage of pre-grant opposition filed under Section 25(1) of the Act. The third respondent was directed not to consider any other pre-grant objection pursuant to this judgment. Such hearing was to be completed by 31st January, 2009. The second respondent was directed to assign the consideration of the petitioner’s pre-grant opposition to any other officer in the rank of Assistant Controller of Patents, Designs & Trade Marks in the Intellectual Property Office, other than the officer who granted the Patent and published it on 29.06.2007 in Patent Application No.959/MAS/1995.
A.K. Ganguly, C.J.
1. Both the petitioners in this writ petition are registered societies under the Tamil Nadu Societies Registration Act, 1975 and they are providing support to people living with HIV/AIDS (herein after referred to as “PLHIV”). The petitioners try to lend support to PLHIV in critical areas such as access to medicine and treatment and also for removal of discrimination facing PLHIV in Indian society. Members of the petitioner organizations are citizens of India.
2. F. Hoffmann-La Roche AG, the 4th respondent herein, is a pharmaceutical company registered in Switzerland having its office at 124, Grenzacherstrasse CH 4200, Basle, Switzerland. It filed a Patent Application titled “2-(2-Amino-1, 6-Dihydro-6-oxo-purin-9-yl)-methoxy-1,3-propanediol Derivative”, which was allocated No.959/MAS/1995, for a patent relating to Valganciclovir, which is a drug used to treat CMC retinitis. The 4th respondent’s Patent Application No.959/MAS/1995 was filed on 27.07.1995, and the 2nd respondent published the said application on 25.02.2005 in Issue No.06/2005 in the Official Journal of the Patent Office.
3. Thereafter, on 12.07.2006 the petitioners filed a representation by way of opposition at a pre-grant stage to the Patent Application of the 4th respondent under Section 25(1) of the Patents Act, 1970 (herein after referred to as the “said Act). In the said application it was contended by the petitioners that the Indian Patents (Amendment) Act, 2005 was passed to make the said Act compliant with the obligations under TRIPS. TRIPS, signed in 1995, required India to effect a product patent regime after ten years. From 1995, it became clear that India would adopt a product patent regime by 2005. Prior to the Patents (Amendment) Act, 2005 the said Act only granted patents for processes but not for products. Therefore, the petitioners’ contention is that all inventions relating to products that were disclosed prior to 1995 were in the public domain, and remains so even today, even after the passing of the said Amendment Act. The petitioners objected that any product patent application in respect of an invention which was in public domain prior to 1995 must therefore be rejected on the grounds that the subject matter of invention lacks novelty.
.4. Inter alia on the basis of the aforesaid contentions, the petitioners filed their representation opposing the grant of patent to the 4th respondent under the provisions of Section 25(1)(f) and 25(1)(h) of the said Act. In the said representation, which is filed by the petitioners by way of opposition, they gave grounds of opposition and specifically demanded hearing under Rule 55(1) of the Patents Rules, 2003 (herein after referred to as the “said Rules”).
5. In November, 2006 the General Secretary of the 1st petitioner received a letter dated 15th November, 2006 from the office of the 3rd respondent to the effect that on the basis of the opposition filed by the petitioners, notice has been given to the agent of the 4th respondent to file statement and evidence if any in support of the patent application within three months from the date of the said notice under Rule 55(4) of the said Rules.
6. Pursuant thereto, a reply was filed by the 4th respondent on 30th November, 2006 against the grounds raised by the petitioners in their patent application. The petitioners were not informed of anything about the fate of their objection, nor were they informed of the date of hearing in respect of their objection, though they made a specific request for such a hearing. From page – 7 of the typed set filed by the 4th respondent it appears that the 3rd respondent addressed a communication to the 4th respondent on 12th April, 2007 to the following effect:
“Your above said application for patent has been found in order for grant. However, patent will be granted after disposal of pre-grant opposition by way of third party representation, if any, under Section 25(1) of the Act and found i
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