In the case of M/S UCB Farchim SA vs M/S Cipla Ltd. & Ors on 8 February, 2010, the Delhi High Court was presented with a significant question of law regarding the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents („Controller‟) either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970 („Patents Act‟).
Facts of the Case
The case involved multiple petitions, with M/S UCB Farchim SA as the petitioner in one of them, represented by Mr. Sudhir Chandra, Sr. Advocate with Mr. Sanjay Kumar, Ms. Arpita Sawhney, and Mr. Sukhdev, Advocates. The respondents were M/S CIPLA LTD. & ORS, represented by Mrs. Prathiba M.Singh with Ms. Saya Choudhary and Mr. Kapil Wadhwa, Advocates for R-1. The case was presided over by Hon’ble Dr. Justice S. Muralidhar.
The case revolved around six petitions that raised an important question of law concerning the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970.
Issues
The court had to examine the scheme of the Patents Act, particularly after the amendment to the relevant provisions by way of Patents (Amendment) Act, 2005 („Amendment Act‟) as well as the judgment of the Supreme Court in J. Mitra & Company v. Assistant Controller of Patents & Designs (2008) 10 SCC 368. The statutory scheme of the relevant provisions of the Patents Act was also under scrutiny.
The court had to determine the distinction between pre-grant and post-grant opposition, the remedies available to a person who has not succeeded in the pre-grant opposition stage to prevent the grant of a patent, and the remedies available to a third party who filed the pre-grant opposition.
Court’s Observations
The court observed that the law is well settled that notwithstanding that a High Court has the power and the jurisdiction under Article 226 of the Constitution to interfere with the orders of any statutory authority which is of a quasi-judicial nature, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person.
The court also observed that the legislature consciously intended not to give persons who are not interested further opportunities to challenge the grant of a patent as that would make the whole process extremely cumbersome for the applicant for a patent. Consequently, it is submitted that the said legislative scheme cannot be substituted by the Court and that there was nothing unreasonable in not entertaining a writ petition at the instance of such a person.
The court also noted that the settled law as explained in several decisions of the Supreme Court makes it clear that this Court should not entertain the writ petition, not because it does not have the power or jurisdiction, but because the petitioner has an efficacious alternative statutory remedy to exhaust.
The court also noted that in an order dated 2nd March 2009 in SLP (C) No. 3522 of 2009 (Indian Network for People with HIV/AIDS v. F.Hoffman-La Roche) the Supreme Court permitted the unsuccessful pre-grant opposer, who had challenged the rejection of his opposition by the Controller, to participate in the post-grant stage.
The court’s observations were based
on a detailed examination of the Patents Act, the Amendment Act, and the Supreme Court’s judgment in J. Mitra & Company v. Assistant Controller of Patents & Designs. The court also took into account the legislative intent behind the provisions of the Patents Act and the Amendment Act.
The court concluded that the legislative intent was to streamline the process of granting patents and to prevent it from becoming overly cumbersome due to multiple challenges. The court also found that the law was clear that a writ petition should not be entertained if the petitioner has an efficacious alternative statutory remedy.
Conclusion
In conclusion, the court held that the writ petitions were not maintainable and were accordingly dismissed. The court also clarified that the dismissal of the writ petitions would not preclude the petitioners from availing of the remedy of filing a post-grant opposition under Section 25 (2) of the Patents Act, if they were so advised.
The court also clarified that the dismissal of the writ petitions would not preclude the petitioners from availing of the remedy of filing a post-grant opposition under Section 25 (2) of the Patents Act, if they were so advised.
This case serves as a significant precedent in the interpretation of the Patents Act and the Amendment Act, particularly in relation to the maintainability of writ petitions challenging orders passed by the Controller of Patents. It underscores the importance of the legislative intent behind the provisions of the Patents Act and the Amendment Act, and the need for an efficacious alternative statutory remedy before resorting to writ petitions under Article 226 of the Constitution.