In Hi Tech Chemicals Limited vs Deputy Controller of Patents and Designs [C.M.A.(PT) No. 43 of 2023], the Madras High Court set aside the impugned order rejecting the Appellant’s post-grant opposition, holding that the Controller had failed to record findings on material grounds raised in the opposition.

At the outset, the appeal itself was filed with a delay of 51 days. The Appellant accordingly moved an application seeking condonation of delay, which was allowed by the Court. However, since Respondent No. 2 (the Patentee) had not been issued notice in the application, the Court permitted the Patentee to file a recall petition at the stage of final hearing.

The explanation offered by the Appellant for the delay was that the appeal had initially been prepared in the entity’s erstwhile name and required correction following a change in name. The Respondent contested this explanation, arguing that the name change had taken effect more than a year ago from when the appeal was filed, and that the delay had been condoned based on a misleading narrative. The Court noted that while the affidavit in support of condonation lacked some particulars, no deliberate misrepresentation was made. Being satisfied that sufficient cause was shown, the Court declined to recall the order condoning the delay and proceeded to hear the appeal on merits.

The principal grounds urged by the Appellant and the Court’s findings thereon are summarised below:

• Refusal of the Controller to suspend post-grant opposition proceedings pending conclusion of the infringement suit

The Appellant pointed out that the Respondent had filed an infringement suit concerning the subject patent and one of the Defendants therein had filed a counter claim challenging the validity of the patent, and that the suit was pending before the Karnataka High Court. Relying on the decision of the Supreme Court in Aloys Wobben and Anr. vs Yogesh Mehra and Ors. [(2014) 15 SCC 360], the Appellant contended that parallel proceedings questioning the validity of the same patent ought not to be permitted and that the Controller ought to have awaited the outcome of the civil suit.

The Respondent argued that the bar articulated in Aloys Wobben was inapplicable to the present case because said counter claim was not filed by the Appellant. They contended that as per the principle laid down in Aloys Wobben, the same person cannot simultaneously invoke post-grant opposition and revocation proceedings against the same patent.

The Court concurred with the Respondent’s submissions and reaffirmed that Aloys Wobben merely proscribes a specific opponent from pursuing parallel remedies before different fora to challenge the same patent. It does not impose a general embargo on the Controller from discharging his statutory obligation merely because validity proceedings are pending elsewhere at the instance of a different party. The Court, thus, upheld the Controller’s refusal to stay the proceedings on this ground.

• Lack of novelty and inventive step

The Appellant contended that the subject patent lacked novelty on account of prior commercial sale of the patented product before the priority date. Reliance was placed on a letter issued by JSW Steel, which stated that the Patentee had been supplying “Slag Pot Coating Material (SLAG KOTE)” for the preceding four years. The Appellant further relied on affidavits filed by its Director and by the Inventor to substantiate prior use and commercialisation. It was also pointed out that the Controller had failed to return any finding on this ground.

On inventive step, the Appellant assailed the grant by relying on prior art documents D6 to D10. It was argued that the Controller had cursorily dismissed these prior arts as “irrelevant” without undertaking a proper obviousness analysis. The Appellant further contended that the patent was liable to be revoked under Section 3(e) of the Patents Act for want of demonstrated synergy in the claimed composition.

The Court found merit in the Appellant’s arguments that the Controller had failed to adequately address these grounds. On novelty, while the Court observed that the JSW Steel letter, by itself, was factually insufficient to conclusively establish prior commercial sale of the patented product, it held that this contention nevertheless warranted a reasoned finding. The Court noted that no such finding had been rendered in the impugned order, despite the issue being material in accessing novelty.

With respect to inventive step, the Court found the analysis in the impugned order to be wholly inadequate. It noted that prior art documents D6 to D10 had been dismissed without explaining why they would not render the claimed invention obvious. The absence of a reasoned comparison between the claimed invention and the cited prior arts vitiated the order. Similarly, the objection under Section 3(e) had been addressed in a perfunctory manner, without examining whether the claimed composition demonstrated the necessary synergistic effect. In view of the failure to record findings or provide reasons on these grounds, the Court held that the impugned order was not sustainable and warranted remand for fresh consideration.

• Non-consideration of documents filed after issuance of hearing notice

The Appellant challenged the Controller’s refusal to take on record two sets of documents filed after issuance of the hearing notice, namely: (a) “further evidence A”, comprising invoices, consignment notes, permits issued by the Commercial Taxes Department, and test certificates; and (b) “further evidence B”, consisting of pleadings filed before the trial court in the pending infringement suit. The Controller declined to consider these documents on the ground that they were filed in contravention of the Patents Rules, 2003.

Notably, under the Patents Rules, once a reply evidence under Rule 59 is filed, no further evidence may be adduced by either party except with the leave or directions of the Controller under Rule 60. The proviso to Rule 60 makes it clear that any request for leave to file further evidence must be made before the Controller fixes the hearing under Rule 62. Further, Rule 62(4) permits either party to give not less than five days’ notice of its intention to rely at the hearing on any publication not already mentioned in the notice, statement or evidence.

The Appellant contended that the documents constituted “publications” within the meaning of Rule 62(4) and, therefore, ought to have been considered by the Controller. It was argued that Rule 62(4) must be interpreted in the context of Section 25(5) of the Patents Act i.e. personal documents are not permitted to be relied upon in opposition proceedings. On this basis, the expression “publication” should be understood as excluding only private or secret documents. The Appellant relied on Section 74 of the Indian Evidence Act, 1872, to submit that the documents in question were public documents and not private ones. The Court was urged to depart from the view taken by the Delhi High Court in Pharmacyclics LLC v. Union of India [W.P.(C) 12105 of 2019].

The Respondent argued that the documents did not qualify as “publications” under Rule 62(4). It was submitted that the term “publication” must be confined to materials that are made available to the public at large, drawing support from the definition of “publication” under Section 3 of the Copyright Act, 1957, which contemplates making a work available to the public by issuance of copies or communication to the public.

The Court clarified that the expression “publication” under Rule 62(4) cannot be equated with “evidence”. Although undefined under the Patents Act, the statutory scheme warrants a restrictive interpretation, confining the term to documents that are accessible to the public by virtue of having been made publicly available, such as patent literature and publicly available non-patent literature. The Court rejected the Appellant’s contention that the provision excludes only private or secret documents, noting that such a reading would render Rules 57 to 60 otiose.

Applying this interpretation, the Court held that “further evidence A”, being documents issued to specific parties, was not publicly available. Similarly, pleadings filed before a Court (“further evidence B”) are not freely accessible to the public and require leave and certified copies for access by non-parties. Such documents, therefore, do not qualify as “publications” under Rule 62(4), and the Controller’s refusal to take them on record was upheld. However, in view of the matter being remanded for fresh consideration, the Court directed the Controller to reconsider said documents as a request for leave under Rule 60.