UNDERSTANDING THE RULES OF POST-GRANT OPPOSITION IN INDIA – HIGH COURT’S ANALYSIS

In India, a granted patent can be invalidated (opposed) by way of two kinds of proceedings:

1. Post-grant opposition under Section 25(2) before the Indian Patent Office

(i) by a ‘person interested’ (Please note that section 2(t) of the Act defines a "person interested" to include a person who engages in or in promoting, research in the same field as that to which the invention relates.)

(ii) before the Indian Patent Office

(iii) within one year from the date of publication of grant of a patent

2. Revocation petition under Section 64 before the concerned High Court

(i) before the respective High Court where the said patent was granted

(ii) by a person interested (as defined above)

(iii) or on a counter-claim in a suit for infringement of the patent by the respective High Court

In a recent decision in the case of Akebia Therapeutics Inc. vs. Controller General of Patents, Design, Trademark and Geographical Indications, & Ors., the Delhi High Court discussed the pleadings and relevant procedure of post-grant opposition in India. The Hon’ble Court evaluated the proper way to file reply evidence and the permissible scope of the corresponding pleadings.

Facts of the case:

The Opponent filed a post-grant opposition and documents on September 24, 2018

The Patentee filed its Reply statement on January 15, 2019

The Opponent filed a rejoinder and Expert Affidavit on February 14, 2019

The Patentee filed a Miscellaneous Petition 1 on April 23, 2019, objecting to the Affidavit of the Opponent and filed a Miscellaneous Petition 2 on February 07, 2020, seeking to file further evidence.

The relevant rules of the pleadings filed in a post-grant opposition are as follows:

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 support of his case within a period of two months from the date of receipt of the copy of the written statement and Opponent's evidence, if any by him under rule 57 and deliver to the opponent a copy thereof.

(2) If the patentee does not desire to contest or leave his reply and evidence within the period as specified in sub-rule (1), the patent shall be deemed to have been revoked.

59. Filing of reply evidence by opponent.—The opponent may, within one month from the date of delivery to him of a copy or the patentee's reply statement and evidence under rule 58, leave at the appropriate office evidence in reply strictly confined to matters in the patentee's evidence and shall deliver to the patentee a copy of such evidence.

60. Further evidence to be left with the leave of the Controller.—No further evidence shall be delivered by either party except with the leave or directions of the Controller: Provided that such leave or direction is prayed before the Controller has fixed the hearing under rule 62.

61. Copies of documents to be supplied.—

(1) Copies of all documents referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition and authenticated to the satisfaction of the Controller, shall be simultaneously furnished in duplicate unless the Controller otherwise directs.

(2) Where a specification or other document in a language other than English is referred to in the notice, statement or evidence, an attested translation thereof, in duplicate, in English shall be furnished along with such notice, statement or evidence, as the case may be.

Important takeaways from the Court’s analysis based on the facts of the case:

1. Rule 57 stipulates filing of a post-grant opposition “and evidence”. Section 79 of the Indian Patents Act stipulates the provision for filing “evidence”. It requires that evidence is to be given by affidavit. Thus, documents un-accompanied by such affidavit would not constitute “evidence” under Rule 57.

The Court referred to decisions such as Taylor v. Taylor ((1875) 1 Ch D 426), State of U.P. v. Singhara Singh (AIR 1964 SC 358) to reiterate that where the law requires an act to be done in a particular manner, the act has to be done in that manner alone, or not done at all.

The Court noted that Rule 61 also differentiates between the evidence filed under Rules 57 to 60, and the documents referred to in the evidence.

2. Rule 58 requires filing of a “reply statement” of the Patentee accompanied with “evidence, if any, in support of his case”.

3. Rule 59 requires the Opponent to file “further evidence” that is “strictly confined to matters in the patentee’s evidence”. The Court observed that Rule 59 is not to be read as filing of a rejoinder.

In the Akebia case, the Hon’ble Court noted that the Opponent did not file any evidence with the opposition document and thereafter, the Patentee did not file any evidence with their Reply statement. Accordingly, it was contented by the Petitioners that the Opponent could not have filed an Evidence (Expert Affidavit) in response to the Reply statement. Importantly, the Opponent did file an Expert Affidavit at the stage of Reply Evidence (Rule 59) along with a rejoinder to the Reply of the Patentee and thereafter, the Patentee filed a petition requesting leave to file additional evidence under Rule 60.

While the Opposition Board (constituted in Post-grant oppositions by the Controller, comprising of 3 members) considered the opposition documents and the Reply statement, the Hon’ble Court quashed the recommendations of the Opposition Board on the observation that the remaining documents (evidence) prescribed to be considered are to be filed.

Conclusively, the Court ordered that the Expert Affidavit and the opposition documents were to be considered by the Opposition Board along with the Reply statement of the Patentee. Further, the Patentee has been given an opportunity to file further evidence (also to be considered by the Board).

An important takeaway from this decision is that the involvement of High Courts in patent disputes has led to much needed clarity in rules and procedure. The efforts of the High Courts are streamlining the patent landscape in India resulting in accountability of and clarity for all parties involved as well as the Patent Office.