Appeals under the Indian Patents Act, 1970

Appeals under the Indian Patents Act, 1970

– an informative article to understand appeals procedure available in the newly amended Indian Patents Act

Appeals under the Indian Patents Act, 1970

Introduction

The Indian Patents Act, 1970, is the legislative framework governing the grant, enforcement and protection of patents in India. An important aspect of this framework is mechanism in place that allows for appeals. This allows aggrieved parties to challenge the decisions make by the Controller of Patents or the Central Government.

A. Appeals under Section 117A

1. Who can appeal?

Any person aggrieved by a decision, order or direction of the Controller of Patents or the Central Government can file an appeal. That is, one may approach the Court if they are a patent applicant, patentee, opponents in pre-grant or post-grant opposition, revocation proceedings or even parties involved in compulsory licencing.

2. Which Decisions can be appealed?

A thorough reading of Section 117A illustrates that specific decisions can be appealed, like: (i) refusal of a patent application, (ii) amendment of patent, (iii) clerical errors, (iv) assignment of patents, (v) post-grant opposition proceedings, (vi) disputes regarding the mention of inventors, or grant of patent to true and first inventor, (vii) rectification and even (viii) orders related to division of applications.

3. Is there a Time Limit to file an Appeal?

The appeal must be filed within 3 months from date of decision or order. The High Court may allow an extension; however, one needs to show sufficient cause for the same.

B. Infringement & Appeals Under Section 117A

1. Infringement Under the Patents Act

Infringement is the unauthorised use or sale of a patented invention. The Patents Act, 1970 provides these exclusive rights under Section 48. Section 48, provides patentees the right that no 3^rd parties may non consensually manufacture, use, sell or engage in importation of their patented invention. The burden of proving this infringement lies with the patentee, who must demonstrate that the alleged infringer’s product or process lies with the patentee. They must demonstrate that the alleged infringers products/process incorporates all elements of the patented invention.

Infringement disputes are adjudicated by civil courts, certain infringements like interim injunction or damages may be appealed to the High Court. For the most part, appeals under 117A pertain to the administrative decisions by the Controller of Patents, as previously discussed, like refusal to grant a patent, opposition of revocation proceedings or even orders related to compulsory licensing.

2.1. Grounds for Appeal to High Court

Appeals may be filed if the Controller’s decision involves a misinterpretation or misapplication of legal provisions. Appeals can also be based on incorrect factual findings, such as:

• Misinterpretation of prior art.
• Incorrect assessment of inventive step or novelty.

2.2. Grounds for Appeal to Supreme Court

The appeals are, usually:

• Substantial questions of law.
• Errors in the interpretation of statutory provisions.
• Violations of principles of natural justice – Right to a Fair, Non Biased and Well-Reasoned Hearing

3. The Procedure & Timeline

The timeline for filing an appeal to the Supreme Court is governed by the Supreme Court Rules and the Limitation Act, 1963. Generally, the appeal must be filed within 90 days from the date of the High Court’s decision.

Appeals to the High Court: Must be filed within 3 months from the date of the Controller’s decision or order, as stated in Section 117 A (4).

Appeals to the Supreme Court: Must be filed within 90 days from the date of the High Court’s decision.

The High Court or Supreme Court may grant an extension of the appeal timeline if the appellant demonstrates sufficient cause for the delay, such as:

• Unavoidable circumstances.
• Lack of knowledge of the decision.
• Procedural delays in obtaining necessary documents.

The jurisdiction for filing an appeal under Section 117A is determined by:

• The location of the appellant’s residence or place of business.
• The jurisdiction of the Patent Office where the original application or proceeding was filed.

Patent appeals often involve technically challenging while also being legal issues, requiring specialized knowledge and expertise. Delays in High Courts can prolong the resolution of appeals, impacting the commercial interests of parties. The appeal process can be financially burdensome, particularly for individual inventors and small businesses. The Intellectual Property Appellate Board (IPAB) was abolished in 2021, transferring jurisdiction over patent appeals to the High Courts. This reform aims to streamline the appeal process and enhance judicial efficiency.

The adoption of e-filing mechanisms has made the appeal process more accessible and efficient. The appellate mechanism under the Indian Patents Act, 1970, plays a crucial role in ensuring fairness, transparency, and accountability in the patent system. Section 117A provides a structured framework for challenging decisions of the Controller of Patents, while Section 118(2) allows for further appeals to the Supreme Court. Despite challenges such as technical complexity and judicial backlog, recent reforms and technological advancements promise to enhance the efficiency and effectiveness of patent appeals. As India continues to strengthen its intellectual property ecosystem, the appeal process will remain a cornerstone of its patent jurisprudence.

C. Timeline for Appeals Under Section 117A of the Patents Act, 1970 – Case Law Illustrations

Section 117A of the Patents Act, 1970, provides a statutory framework for filing appeals against decisions or orders of the Controller of Patents. A critical aspect of this provision is the three-month timeline for filing appeals, which is strictly enforced unless extended by the High Court. This research note examines the timeline for appeals under Section 117A, using two key case laws—Sonalkumar Sureshrao Salunkhe v. Assistant Controller of Patents and Rich Products Corporation v. Controller of Patents & Anr.—to illustrate the procedural and practical aspects of the appeal process.

1. Sonalkumar Sureshrao Salunkhe v. Assistant Controller of Patents

Background

The appellant, Sonalkumar Sureshrao Salunkhe, filed a patent application on January 17, 2015. The First Examination Report (FER) was issued on June 24, 2019, and the appellant submitted a response on December 24, 2019. A hearing notice was issued on August 13, 2021, and written submissions were filed on August 31, 2021. The Controller issued an order on September 16, 2021, deeming the application abandoned under Section 21(1) of the Patents Act.

 Appeal Timeline

• Statutory Deadline for Appeal: Under Section 117A(4), the appellant had three months from the date of the Controller’s order (September 16, 2021) to file an appeal, i.e., by mid-December 2021.
• Bombay High Court Decision: The High Court delivered its judgment on May 6, 2024, nearly 2.5 years after the appeal was filed.

The Court clarified that no appeal was maintainable under Section 117A because the Controller’s order was issued under Section 21(1), which is not listed as an appealable provision under Section 117A.

The appellant should have considered other alternative means, such as filing Form 

Key Takeaways

1. Strict Adherence to Timeline: The appellant had to file the appeal within three months of the Controller’s order, as mandated by Section 117A(4).

2. Non-Appealable Orders: The case highlights the importance of ensuring that the Controller’s decision falls within the scope of appealable orders under Section 117A. Orders under Section 21(1) are not appealable, rendering the appeal non-maintainable.

3. Delays in Final Resolution: Despite the statutory deadline for filing the appeal, the final resolution took over two years, underscoring the potential for prolonged litigation in patent appeals.

•  Rich Products Corporation v. Controller of Patents & Anr.

1. Background

The appellant, Rich Products Corporation (RPC), filed a pre-grant opposition against a patent application by Tropilite Foods Pvt. Ltd. (TFPL) for an invention titled “An artificial liquid cream for utilization in unsweetened cooking and whipping applications.” The First Examination Report (FER) was issued on July 27, 2018. RPC filed its opposition on August 21, 2017, under Section 25(1) of the Patents Act, 1970, raising objections including lack of inventive step and anticipation by prior art. The Controller of Patents rejected the opposition on September 4, 2023 and proceeded with the patent grant.

2. Appeal Timeline

• Writ Petition: RPC challenged the Controller’s decision before the Delhi High Court, arguing that its objections were not properly considered.
• Single Judge Decision: The Single Judge dismissed the petition, holding that RPC had alternative remedies, such as post-grant opposition under Section 25(2) or revocation under Section 64.
• Intra-Court Appeal: RPC filed an appeal against the Single Judge’s decision, seeking judicial intervention despite the availability of statutory remedies.
• Delhi High Court Decision: On May 1, 2024, the Court dismissed the appeal, reaffirming that pre-grant opposition decisions are not subject to judicial review unless jurisdictional errors or manifest injustice are shown.

3. Key Takeaways
4. Limited Scope for Judicial Review: The case reinforces that pre-grant opposition decisions are not typically subject to judicial review unless procedural irregularities or jurisdictional errors are evident.
5. Preference for Statutory Remedies: The Court emphasized that challengers must exhaust available remedies like post-grant opposition or revocation, rather than seeking direct judicial intervention.
6. Patent Grant Finality: The ruling strengthens the stability of granted patents, ensuring that opposition proceedings do not unduly delay the patenting process.

 3. Practical Implications

 3.1 For Patent Applicants and Opponents

• Timely Filing: Parties must ensure that appeals are filed within the three-month statutory deadline to avoid dismissal on procedural grounds.
• Jurisdictional Clarity: Before filing an appeal, parties must verify whether the Controller’s decision falls within the scope of appealable orders under Section 117A.

The appellant, Rich Products Corporation (RPC), made a pre-grant opposition against a patent application by Tropilite Foods Pvt. Ltd. (TFPL) for an invention named “An artificial liquid cream for use in unsweetened cooking and whipping purposes.” The First Examination Report (FER) dated July 27, 2018. RPC opposed under Section 25(1) of the Patents Act, 1970, on August 21, 2017, by asserting objections of lack of inventive step and anticipation by earlier art. The Controller of Patents rejected the opposition on September 4, 2023 and proceeded with the patent grant.

1. Appeal Timeline
2. Writ Petition: RPC challenged the Controller’s decision before the Delhi High Court, arguing that its objections were not properly considered.
3. Single Judge Decision: The Single Judge dismissed the petition, holding that RPC had alternative remedies, such as post-grant opposition under Section 25(2) or revocation under Section 64.
4. Intra-Court Appeal: RPC appealed against the Single Judge’s ruling, invoking judicial review absent statutory remedies.
5. Delhi High Court Decision: The Court rejected the appeal on May 1, 2024, upholding that pre-grant opposition rulings cannot be reviewed by courts unless jurisdictional errors or manifest injustice are established.

• Key Takeaways

Narrow Margin for Judicial Review: The case confirms that pre-grant opposition rulings are generally not amenable to judicial review unless procedural fault or jurisdictional mistake is apparent.

Reluctance for Judicial Remedies: The Court reiterates that the challengers should try to exhaust remedies such as post-grant opposition or revocation, instead of going for judicial interference directly.

Patent Grant Finality: The decision enhances the finality of granted patents, preventing opposition proceedings from unnecessarily delaying the patenting process.

3. Practical Implications

3.1. For Patent Applicants and Opponents

• Timely Filing: Applicants and opponents need to ensure that appeals are lodged within the statutory three-month deadline to prevent dismissal on formal grounds.
• Jurisdictional Clarity: Prior to appealing, parties need to check if the order of the Controller is within the purview of appealable orders under Section 117A.

3.2. For the Judiciary

Specialized IP Benches: Creating specialized intellectual property benches in High Courts will facilitate faster disposal of patent appeals.

Judicial Training: Offering specialized training to judges in patent law and technical issues will help improve the efficiency and quality of adjudication.

 4. Conclusion The case laws of Sonalkumar Sureshrao Salunkhe v. Assistant Controller of Patents and Rich Products Corporation v. Controller of Patents & Anr. illustrate the critical importance of adhering to the three-month timeline for filing appeals under Section 117A of the Patents Act, 1970. These cases also highlight the limitations of Section 117A, particularly with respect to non-appealable orders under Section 21(1). While the statutory deadline for filing appeals is rigid, the overall resolution process can be prolonged due to case complexity, court workload, and procedural delays. As India continues to strengthen its intellectual property ecosystem, ensuring timely and efficient resolution of patent appeals will remain a key priority.

– written by Mitcheal Godfrey Pereira a final year Intern at NAIR IP pursuing B.B.A. LL.B. (Hons.), specializing in Intellectual Property Rights (IPR), at NMIMS Kirit P. Mehta School of Law, Mumbai