February 08, 2010

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]

1 comment:

  1. This is a good decision as the applicant gets an opportunity to justify their claim to the invention through an alternate authority. However, this kind of an arrangement can be considered as a part of the regular patent application prosecution process by issuing a non final rejection based on the pregrant opposition and expecting a reply to respond within a specified timeline failing which there should be a final rejection. in such scenarion oly there should be a provision to appeal to IPAB.