February 15, 2010

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.

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