Novartis AG v. Controller General of Patents, Designs and Trade Marks and Ors.

210203 NovartisController

IMPORTANT ISSUE

1. Whether the Controller arbitrarily adjourned the hearings indefinitely till physical hearings are possible.

SUMMARY

Subject matter of patent: The present invention is related to dual acting compounds /combinations of angiotensin receptor and neural endopeptidase used for the treatment of certain vascular diseases.

FACTUAL MATRIX

1. The Indian national phase PCT application 4412/DELNP/2007 dated 08.11.2006, published under Section 11A invited pre-grant opposition on 24.08.2007.
2. Six pre-grant oppositions filed against it by Respondent Nos. 3 to 8 under Section 25(1) of The Patents Act, 1970 between the period 26.05.2016 to 18.09.2020.
3. All the hearings that were fixed for 08.01.2020 – 13.01.2020 vide notice of hearing dated 06.12.2019, further hearing fixed for 16.03.2020 – 19.03.2020 vide notice of hearing dated 14.02.2020 and last hearing fixed for 26.10.2020 – 30.10.2020 vide notice of hearing dated 17.09.2020, have been repeatedly adjourned at the request of the Opponents.
4. Finally, vide impugned order dated 23.10.2020, the Respondent No. 2, at the behest of Respondent Nos. 3 to 7, has adjourned the hearings scheduled 26.10.2020 – 30.10.2020 indefinitely till physical hearings are possible, since the counsel for Respondent No. 4 and No. 6 have expressed their “preference” for physical hearing, as compared to virtual hearing.
5. The present appeal has been filed under Section 117A of the Indian Patents Act, 1970 against the decision dated 23/10/2020, taken by Respondent, being the Assistant Controller of Patents & Designs.

SUBMISSION BY APPELLANT

1. According to the Appellants, a series of oppositions have been filed which establishes the fact that a calculated, deliberate and mala fide attempt has been made by the opponents abusing section 25(1) collectively to indefinitely delay the disposal of the pending patent application and they will suffer irreparable injury if pending patent application is not heard and disposed of expeditiously.
2. It is submitted that the Respondent Nos. 3 to 7 ought to have availed the opportunity granted to advance their submissions on the dates already fixed through virtual hearing which has become the norm in all tribunals, courts and administrative bodies all over India in view of the continuing pandemic.
3. The Controller has exercised no discretion and issued notice in respect of pre-grant opposition dated 18.09.2020 filed by Respondent No. 8 one day after the issuance of notice of hearing dated 17.09.2020 in breach of his duty cast vide Rule 55(3) which amounts to abdication of such duty and arbitrary exercise of discretion.
4. It is further submitted that the mala fide adjournments should not be permitted and hearings of long pending patent applications should not be allowed to be deferred on the ground of lack of physical hearings.

SUBMISSIONS BY RESPONDENTS

1. The Respondent No. 2, vide impugned order dated 23.10.2020, at the behest of Respondent Nos. 3 to 7, has adjourned the hearings scheduled for 08-05-2021 0 indefinitely till physical hearings are possible, since the counsel for Respondent No. 4 and No. 6 have expressed their “preference” for physical hearing, as compared to virtual hearing.

HELD

1. The court explained that the Video conferencing hearings are already held at IPO through licensed connections. One Controller, one examiner and 4 people each from patentee and opponent side can well be accommodated for such hearings and all the said pre-grant oppositions for the instant should be done within a span of not more than 15 days.
2. In order to overcome the undue delay in disposals of pre-grant oppositions, resulting from serial filing of pre-grant oppositions, the court directed that, if the Controller has heard all the existing parties in accordance with the teachings of Rule 55(5) and has reserved the order, he shall go ahead with pronouncement of such order, even if some pre-grant opposition is filed between the date on which he has reserved the order and the date of pronouncement of the order.
3. For the subsequent pre-grant opposition, the Controller shall make the opinion as to what substantial evidence, apart from those produced in the previous case is being produced which makes the second/subsequent pre-grant opposition maintainable. The e-module shall be suitably modified to that effect.
4. Further, to curb filing of pre-grant opposition by benami/fictitious applicants, ‘any person’ filing the pre-grant opposition must submit his valid Aadhar Card/Voter id /Passport/Driving Licence to authenticate his identity. E-filing System at IPO should be suitably modified.
5. The Controller as per Rule 55 (3) consider the pre-grant representation in each and every case and if he opines that the patent application shall be refused or requires amendment, then before giving notice to the applicant of patent, he should make such opinion annotated in the patent application file, even if such file in maintained electronically. The e-module should be updated to that effect.
6. Thus the court vacated the decision of Respondent No. 2 to defer the pre-grant hearings till physical hearing starts and directed the Respondent No. 2 to offer hearing through Video Conferencing to all the parties to decide the matter on merit, strictly within 3 months from the issuance of this order. The appeal was disposed.

Citation: MANU/IC/0012/2021
IPAB order No: OA/1/2021/PT/DEL
Copy of judgement