What Unsuccessful Patent Applicants Should Do

The order of the Delhi High Court in UCB Farchim v Cipla comes as a relief to many patent applicants who find their patent applications rejected in a pre-grant opposition proceeding. The Delhi High Court gave the patent applicant an appeal remedy simply by reading an order passed pursuant to a pre-grant opposition proceeding as a composite order passed under section 25(1) read with section 15 of the Patents Act. This simple interpretation was presaged by many: para 13.169 of TLOP (2007); Order in 1440/MAS/1998 (2007); Gilead Sciences appeals to IPAB (2009).

With the law set (for the moment, at least) the question arises as what the patent applicant, who has suffered an order of rejection, would do? For the lucky few who approached the Delhi High Court, it is a no-brainer: file the appeal with 2 weeks from the date of the order along with a petition to condone delay. But what about the other who have silently suffered a rejection? The options open to them may fall within one of the three categories:

(1) Application rejected before the DHC's decision, writ filed or proposed to be filed:
Considering the wording in the order in UCB Farchim's case, it may not be a good option to file a writ to the High Court against the order of rejection. If such a writ petition is already filed, the order of the DHC may be cited to direct the petitioner to the IPAB, as the DHC did. If the patent applicant had not approached any High Court, then this could be the time to file an appeal under section 117A to the IPAB with a condone delay petition to hear the appeal.

(2) Application rejected before the DHC's decision, appeal filed to IPAB:
Congratulations if you had chosen this option. You are in good company. But if there is an IPAB decision against you saying that your appeal is not maintainable, then filing a writ petition against that order could be a good thing to do. If your appeal was refused even before admission, you have an option now to represent the same citing the DHC order.

(3) Application rejected after the DHC's decision:
A no-brainer again. Approach the IPAB within 3 months of the rejection.

Pre-grant Rejections are now Appeallable

In my earlier post, I analysed how a bad interpretation of the law could destroy inventions. The Delhi High Court has set the record straight: patent applicants who find their applications rejected after a pre-grant opposition now have a remedy in appeal. Here's the order of the Delhi High Court in UCB Farchim SA v Cipla and others. The court has narrowed down the reading of J Mitra:

“ The question whether an appeal would lie against the refusal by the Controller to grant a patent after accepting the pre-grant opposition under Section 25(1) of the Patents Act did not arise for consideration in J.Mitra & Co. .” [para 22]

Being an ardent advocate of pre-grant opposition, I was happy to see the Delhi High Court’s observation, that pre-grant opposition should be seen as an ‘aid of the examination’:

“This Court finds merit in the contention that the pre-grant opposition is in fact ‘in aid of the examination’ of the patent application by the Controller. The procedure is however different aspect as far as the post-grant opposition is concerned.”[para 13]

That little observation may hold a lot on how the burden of proof should be discharged in a pre-grant opposition.

The Court directed the writ petitioners to avail the alternative remedy open to them and directed them to file an appeal before the IPAB in two weeks. On the proper course of action, the Court had this to say:

“...the correct course of action for the Petitioner, would be to file an appeal before the IPAB under Section 117 A of the Patents Act against the order... by the Assistant Controller of Patents. If such an appeal is filed within two weeks, accompanied by an application for condonation of delay in filing the appeal, the IPAB will consider such application on merits in accordance with law after accounting for the period during which the present writ petition has been pending.”[para 46]