The Hon’ble IPAB, has maintained the stay granted on the order of the Controller revoking Indian Patent IN262968 covering the product Ibrutinib.

Some facts of the case are provided below:-

• Patentee Pharmacyclics LLC was granted Indian Patent No.262968. The publication of the grant took place on 3^rd October, 2014.
• On 24th September, 2015, the Opponent – M/s. Laurus Lab Pvt. Ltd. filed a post-grant opposition under Section 25(2) of the Patents Act, 1970. The Patentee filed its response to the said opposition
• The report/recommendation of the Opposition Board was submitted on 23.02.2017. On the basis of report, on 14.09.2017, the ld. controller appointed hearing for 16.11.2017.
•  When the date of 16.11.2017 was fixed, none of the parties has availed the option of rule 60 (to file further evidence) or Rule 62(4) of the Act. However, after adjournment when the matter was fixed again for 25.09.2019, the opponent, filed seven additional documents, as further evidence by way of affidavit of Dr. B.M. Chaudhery. The controller has heavily relied upon the said affidavit in the impugned order.
• Vide order dated 6th November, 2019, the Controller came to the conclusion that the documents and evidence filed by the Opponent, Natco would be taken on record, and would be considered at the time of final adjudication.
• A Writ petition was filed challenging the impugned order dated 6th November, 2019, passed by the Controller of Patents and Designs Controller. In said petition the court held that 62(4) is to be treated as exception and not a rule. The Hon’ble High Court of Delhi also allowed the additional and rebuttal evidence.
• After the hearing, the patent was revoked and appeal filed by Pharmacyclics LLC.

Two issues which the Board thought were necessary and argued by both sides to decide the stay application till the pendency of the appeal are :-

• firstly, as to whether the deputy controller of patents has ignored the mandatory provisions of Act as raised on behalf of the appellant by not sending the additional and rebuttal evidence to the Opposition Board and
• secondly, as to whether the deputy controller of patents has ignored the order of the Hon’ble High Court relating to attendance of Opposition Board Members in the hearing.

The Hon’ble Board held that mandatory provisions of the Special Act are not be ignored. The controller of patents was to follow the provisions of the Act strictly and to follow the High Court order.

The board held that the finding of the controller in the impugned order where the controller has held that he has not sent the additional and rebuttal evidence to the Opposition Board as this would take another six months and delay the proceedings is not acceptable.

The said findings are against the law and direction of the High Court. The Delhi High Court in its order clearly observed that in case any further evidence is filed under Rule 60 and publication under Section 62(4),the presence of Opposition Board member is permitted to ensure that the documents are discussed in Opposition Board. However, the Board noted that the same has not happened in the case.

It is noted that, at the time of hearing, all members of the Opposition Board were not present, except one Examiner, ShriProful Kumar Manwatkar.

In view of the above, the Hon’ble Board held that the stay on the order should be maintained as the balance of convenience is in favour of the appellant. As far as principles of injury is concerned, it was held that if the interim order is not continued, the proceedings in all suits for infringement filed by the appellant would not continue.