PRABHA SRIDEVAN - (1.) TWO post -grant oppositions were filed against the grant of Patent No.198952 [Application No.1032/MAS/1997] titled, "A physiologically active branched PEG -IFN alpha conjugates". The invention is a medicine for Hepatitis -C, an emerging disease in India. Both were disallowed. One of them was a business competitor of the patentee and it accepted the rejection. The other is the NGO, who is the appellant before us.
(2.) THE patent applicant claimed priority from its U.S. application dated 31.5.1996. It was published in the journal on 19.5.2006. M/s.WOCKHARDT Ltd. filed a notice of opposition, who was the first opponent. The appellant herein filed another notice of opposition on 18.5.2007 and an Opposition Board was constituted. The Opposition Board gave its recommendations on each of the oppositions. With regard to the M/s.WOCKHARDT opposition, the Opposition Board recommended that the invention lacked novelty and inventive steps, "keeping in view of R3 to R6". As regards the opposition filed by the appellant/2nd opponent, the Opposition Board held that there is novelty, but there is no inventive step and the invention does not fall under section 3(e) of the Patents Act, 1970, but falls within the scope of section 3(d). The Assistant Controller decided both the opposition proceedings on the same day but, dealt with each opposition separately and did not agree with the recommendations of the Opposition Board and concluded that the First Opposition did not merit acceptance and that the patent was novel and had inventive steps. As regards the appellant's opposition, the impugned order concluded that the claims were novel and had "inventive step" and also industrial applicability and that the claims do not attract the provisions of section 3(e) of the Act. He opined that "even if any person feels that the claims attract the provisions of section 3(d), the experimental details as provided by the patentee prove that there is indeed an enhancement in known efficacy of either unconjugated interferon or PEG interferon α 2b (12KD) and probably with other conjugates of lower MW." This appeal challenges those findings.
(3.) MR .Anand Grover, Senior Counsel instructed by Ms.Julie George and Ms.Prathiba S. appeared for the appellant, Mr.Rahul Balaji learned Counsel and Mr. D.J.Solomon registered Patent Agent appeared for the respondent. They argued the matter and also filed written submissions. The first respondent raised a preliminary objection regarding the locus standi of the appellant as not being a person interested' and submitted that the difference between the words, any person' used in S.25 (1) of the Patents Act, 1970 ( The Act', in short) i.e.the pre -grant opposition and any person interested' inS.25 (2) of the Act i.e. the post -grant opposition cannot be ignored. Mr.Rahul Balaji, the learned counsel submitted that the person interested' may be a person in business or a person who may be a potential infringer who has research facility. But, to allow any person' to file the post -grant opposition would render the difference between the two terminologies as non -est. He referred to the words used in the Land Acquisition Act, 1894, and he submitted that the language intends to exclude a mere busybody. He submitted that the legislative history of S.25 would throw light in this regard. There was no post -grant opposition prior to the Patents (Amendment) Act, 2005 and specifically the Parliament has introduced the words person interested' for maintaining a post -grant opposition. Learned counsel referred to the observations of the Hon'ble Delhi High Court in UCB Farchim CA v. Cipla Ltd. & Ors. [2010 (42) PTC 425 (Del.)] where the difference between the pre -grant and post -grant oppositions was noted and it was observed that "the legislature appears to have consciously denied to a third party a further statutory remedy of a post -grant opposition in the event of such third party not succeeding in the pre -grant stage". Learned counsel referred to the definition of person interested' in S.2 (1) (t) of the Act and relied on several decisions to explain who is a person interested'. He referred to Globe Industries Corporation's Patent [1977 RPC 563] where the U.K. Court of Appeal held that not only should the interest be a commercial interest, it must be a genuine interest and there must be an existence of real prejudice and that the Court must be satisfied that the opposition is not frivolous, vexatious or a piece of blackmail. Learned counsel submitted that at the very least there must be a genuine commercial interest and therefore, the appellant who claims to be a non -profitable organization working for the benefit of drug users cannot be said to have any interest of the nature as required by the Act. Learned counsel also submitted that the appellant cannot take advantage of the word, include' in the definition section. He submitted that the Court must see the context to understand what the word include' means and referred to the judgment of the Hon'ble Supreme Court in Reserve Bank of India v. Peerless General Finance and Investment Co. Ltd. [(1987) 1 SCC 424] where the Supreme Court held that that the best interpretation is the one which makes the textual interpretation match the contextual. Therefore, according to the learned counsel for the respondent, a person engaged in or promoting research in the same field, but lacking commercial interest may not be otherwise understood as coming within the ambit of person interested'. Learned counsel referred to Inspecting Assistant Commissioner, Acquisition Range v. Nand Kishore Singh & Ors. [1984 (148) ITR 721] where in the context of Income -tax Act, the Hon'ble Patna High Court held that the words person aggrieved' is of wider amplitude than the term person interested' and the person interested' necessarily entailed the existence of a stake in the subject of the proceedings. Therefore, it was submitted that reliance must not be placed on Ajay Industrial Corpn. V. Shiro Kanao [AIR 1983 Delhi 496] where the Hon'ble Delhi High Court observed that the word person interested' in the Patents Act is perhaps wide than the person aggrieved' under the Trademarks Act. Learned counsel submitted that while in a pre -grant opposition any person including an NGO can maintain the opposition, the right is restricted to a person interested' in a post -grant opposition. He referred to Snehlata C. Gupte v. Union of India & Ors. [2010 (43) PTC 813 (Del.)]. A wide interpretation to the words person interested' would mean that any person/entity making a very broad claim of acting in the arena of public health would be entitled to maintain a post -grant opposition. Only a person with a real, tangible and clearly perceived interest in the patent can maintain the opposition. Learned counsel submitted that there are several sections to use the words, person interested' in the Act viz., Ss 25(2), 57(4), 61(1), 63(3), 78, 84, 85, 92 and it would be incongruous to assign a broad meaning considering the context in which the term was used in the above sections. Learned counsel submitted that the consideration of public interest as being an important factor cannot be accepted because, there are several safeguards inbuilt in the Patents Act especially, with regard to the access to pharmaceutical inventions which included procedure for voluntary license, compulsory license and the Government's ability to take over a patent under S.100 and S.47 in the larger public interest. Learned counsel submitted that therefore the appellant not being a person interested cannot be allowed to maintain the appeal. He also prayed that an order may be passed on the jurisdictional issue without going into the merits for, the appellant is not a person interested' and it is not necessary for this Board to engage itself to deal with the issues on merits;