Power to review decisions or setting aside orders of the Controller [Indian Patents Act, 1970 Section 77 (f), (g)]

The Indian Patents Act, 1970, Section 77 gives the Controller of Patents the powers of a Civil Court to deal with a suit under the Code of Civil Procedure, 1908 for matters stated in Section 77 (1) Clause f and g of the Indian Patents Act, 1970 which reads as follows –

“Section 77. Controller to have certain powers of a civil court –

(1) Subject to any rules made on this behalf, the Controller in any proceedings before him under this Act shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908 (5 of 1908), in respect of the following matters, namely: —

(f) reviewing his own decision on an application made within the prescribed time and in the prescribed manner;

(g) setting aside an order passed ex-parte on an application made within the prescribed time and in a prescribed manner;”

The Clause (f) of sub-section (1) of Section 77 of the Indian Patents Act, 1970 says that an applicant can make an application under Form 24 of Patent Rules, 2003 to the Controller of Patents to review the decision of the Controller within one month from the date of communication of such decision to the applicant or within such further period not exceeding one month thereafter as the controller may on request made in Form 4 allow and shall be accompanied by a statement setting forth the grounds on which the review is sought. Where the decision in question concerns any other person in addition to the applicant, the Controller shall immediately transmit a copy of each of the applications and the statement to the other person concerned as specified in Rule 130 (1).

Clause (g) of Sub-Section (1) of Section 77 of the Indian Patents Act, 1970 says that an applicant can make an application in Form 24 of the Patents Rules, 2003 to the Controller of Patents for setting aside an order passed by the controller ex-parte. Such application shall be made according to Rule 130 (2) within one month from the date of communication of the order of the controller to the applicant or within such further period not extending one month as the controller may on a request made in Form 4 of the Patent Rules, 2003 for the extension of time allow and shall be accompanied by a statement setting forth the grounds on which the application is based. If the order of the Controller concerns any other person in addition to the applicant, the Controller shall immediately transmit a copy of each of the applications and the statement to the other person concerned.

These provisions can be explained with the help of some recent case studies. In a recent dispute between Abbott Biotechnology and Glenmark Pharmaceuticals. The Patent office set aside its former order by powers advanced to the controller of patents under Section 77(f) of the Indian Patent Act, 1970, granting a patent to Abbott Biotechnology ltd. on rheumatoid arthritis (called as HUMIRA) drug in respect of the pre-grant application filed by Glenmark Pharmaceuticals under section 25(1) which reads as

“any person or any third party or Government may challenge the application of grant of patent and inform to the controller of Patents for the opposition, in writing against the grant of a patent after the application for a patent has been published but before the grant of a patent”

and rule 55 of the Indian Patents Act, 1970. This decision came after the patent office was asked by the Delhi High Court in an appeal by Glenmark which alleged that on 4th September 2008 Glenmark’s pre-grant opposition was not considered by the controller while granting the patent as given under section 25(1) of the patents act and Abbott was granted the patent for Humira drug on June 8, 2009. The then controller treated the patent held by Abbott as canceled immediately through a letter on October 30, 2009. Abbott approached the Delhi High Court against the Controllers order. The Delhi High Court stood still on the controller’s order of cancellation of the Patent held by Abbott.

On 9th September 2010, the Delhi High Court ordered that the pre-grant opposition of Glenmark be considered as a review application on the decision of the controller under section 77(f) of the Indian Patents Act, 1970 and set aside their previous order of the cancellation of the Patent.

The Senior Joint Controller of Patents and Designs, KS Kardam, following the Delhi High Court’s order, observed, “… I firmly conclude that the impugned invention as disclosed in the specification and claimed in the claims is obvious to a person skilled in the art and hence lacking in inventive step. I am also of the opinion that the description of the impugned invention is also insufficient and ambiguous as described in the specification.”

“In view of the above circumstances and considering the order of the Honorable High Court of Delhi dated September 9, 2010, I hereby set aside the order of grant of patent dated June 8, 2009, in respect of patent application number No. 526/DELNP/2005 under section 77 of the Patents Act, 1970 and consequently the serial number of the patent No 234555 is hereby treated as void,” added the order dated December 31, 2014.

About the Author: Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at [email protected]