In the recent case of Novartis Ag (“Novartis”) v. Natco Pharma Limited & Anr. (“Natco”), the Division Bench of the Hon’ble Delhi High Court stated that the Examination and Pre-Grant Opposition of a patent application are two distinct and independent process, and the Opponent has no right to intervene in the examination procedure.
The facts of the case are, Natco, among other pre-grant opponents, filed an appeal against order of the Controller of Patents and Designs (“Controller”) allowing the amendment request moved by Novartis, at the instance of the Controller, without giving Natco an opportunity of submitting its objection to the amendment request. The patent was granted before the expiry of six months from the date of the order permitting amendments to the patent application.
The Novartis argued that the Patents Act, 1970 (“Act”) and/or Rules framed thereunder, does not provide for participation of pre-grant opponents in the examination process. It was submitted that while the representations of opposition may act as an aid to the examination process, however, the examination is an independent duty of the controller irrespective of the opposition. Novartis highlighted that the right of pre-grant opposition is limited to orders passed under Section 25(4) of the Act.
The Division Bench highlighted that the rejection of opposition does not automatically lead to the grant of a patent, rather the Controller must conduct an independent examination of the application. Furthermore, the Court rejected the argument that Natco has a right to participate or be heard in the examination process, especially in cases where amendments are directed by the Controller. The judgment clarified that opponent’s right to be heard is specifically tied to the grounds specified in Section 25(1) of the Act with respect to Pre-grant Oppositions in Patents.
Judgement Docs can be accessed here, https://shorturl.at/uCT02
Novartis Ag v. Natco Pharma Limited & Anr. [LPA 50/2023, Delhi High Court, Decision dated, January 9, 2024]