Bombay High Court Sets Aside Unreasoned Patent Office Order, Orders Fresh Hearing in Pharmaceutical Patent Opposition

Bombay High Court Sets Aside Unreasoned Patent Office Order, Orders Fresh Hearing in Pharmaceutical Patent Opposition

Introduction

The Bombay High Court has set aside an order of the Indian Patent Office rejecting a post-grant opposition in a pharmaceutical patent dispute, holding that the decision lacked the technical analysis and reasoning required under law.

Justice Arif S. Doctor observed that the Deputy Controller of Patents had dismissed the opposition without explaining why the prior-art document relied upon by the opponent did not qualify under the statutory provisions of the Patents Act, 1970. The Court held that an appealable order must contain cogent reasoning, failing which it cannot be sustained.

Factual Background

The dispute arose when inventor Saurabh Arora filed a post-grant opposition challenging a patent granted to a rival entity. Arora relied on an earlier invention disclosed in his provisional specification, referred to as document D1, to argue that the impugned patent lacked novelty.

According to Arora, his provisional specification had been filed on May 31, 2010, whereas the contested patent traced its priority date to September 15, 2010. On this basis, he argued that his earlier filing constituted prior art and should invalidate the later patent.

However, after nearly five years of opposition proceedings, the Deputy Controller of Patents dismissed the opposition by simply stating that the document relied upon by the opponent did not qualify as an appropriate disclosure under Section 25(2)(c) of the Patents Act.

Procedural Background

Following the dismissal of the opposition by the Deputy Controller through an order dated July 7, 2023, Arora approached the Bombay High Court challenging the decision. He argued that the patent authority had failed to examine the technical aspects of the competing patents and had not provided any reasoning for rejecting the prior-art claim raised during the opposition proceedings. The challenge was brought before the High Court through a petition seeking judicial review of the Patent Office’s decision.

Issues

1. Whether the Deputy Controller of Patents was justified in dismissing the post-grant opposition without providing detailed reasoning.

2. Whether the prior-art document relied upon by the opponent required substantive technical analysis under the Patents Act before rejecting the opposition.

Contentions of the Parties

The petitioner, Saurabh Arora, argued that his provisional specification filed on May 31, 2010 clearly preceded the priority date of the impugned patent. He contended that despite acknowledging the undisputed priority dates, the Deputy Controller dismissed the opposition without explaining why the document relied upon by him did not qualify as prior art. According to him, such a cryptic order demonstrated a complete failure to undertake the technical and legal analysis required under the Patents Act.

The Deputy Controller’s counsel argued that the impugned order was valid because the petitioner’s earlier filing existed only as a provisional specification at the relevant time and did not contain claims. It was submitted that the provisional specification therefore could not constitute a prior claim capable of revoking the later patent. The respondents further argued that the opposition had been decided after considering the recommendation of the Opposition Board and after granting both parties an opportunity of hearing.

Reasoning and Analysis

The High Court examined the record and noted that the petitioner’s earlier application undeniably carried a priority date of May 31, 2010, which preceded the priority date of the impugned patent. Justice Arif S. Doctor observed that despite recording these dates, the Deputy Controller had not explained why the earlier document did not qualify as a relevant disclosure under Section 25(2)(c) of the Patents Act.

The Court held that the impugned order merely stated that the document relied upon by the opponent had not been found to be an appropriate disclosure, without providing any reasoning or technical analysis supporting that conclusion. The Court emphasised that when an order is subject to appellate scrutiny, the absence of reasoning makes it impossible for a reviewing court to assess the correctness of the decision. It further observed that accepting such an order would effectively require the High Court to undertake the entire technical examination itself, which would amount to allowing the Controller to abdicate its statutory duties. The Court therefore concluded that the impugned order reflected a clear non-application of mind and was unsustainable in law.

Decision

The Bombay High Court allowed the petition, set aside the Deputy Controller’s order dated July 7, 2023, and remanded the post-grant opposition proceedings for fresh consideration. The Court directed that the matter be reconsidered by a different Controller of Patents, while keeping all rights and contentions of the parties open.

In this case the plaintiff was represented by Advocate Hiren Kamod with Advocates Nishank Barolia, Abhijeet Deshmukh, Tapan Shah and Shon Gadgil i/b. Khurana & Khurana.

Meanwhile the defendant was represented by Advocate Niranjan Prabhakar Shimpi with Advocates Revaa Kadam and Bhagyashri Waghmare.