Recently, in the case of Optimus Drugs Private Limited (“Petitioner”) v. Union of India and Ors. (“Respondents”), the Madras High Court ordered that a fresh opposition board be constituted to give fresh recommendations in a post-grant opposition proceeding.
The Petitioner was granted a patent for its invention titled “An improved process for the preparation of Linezolid” in 2017, which was opposed by one of the respondents, i.e., Symed Labs Limited, in 2018. Symed had, thereafter, submitted evidence to support its opposition, to which the Petitioner had responded without any evidence. Subsequently, Symed filed additional evidence along with its further reply. In 2019, the Opposition Board constituted by the Controller of Patents and Designs issued its recommendations. Later, the Petitioner filed an expert affidavit in 2020 as further evidence consequent to which Symed filed further evidence in 2021. In 2023, the Petitioner filed a request for amendment of claims, and this was notified in the Patent Office Journal. A hearing notice was issued in the opposition thereafter.
The Petitioner’s case was that Symed was not entitled to file additional evidence with its rejoinder, since the Petitioner did not submit evidence along with the reply statement and that the Opposition Board was obliged to consider the additional evidence filed by both parties and issue fresh recommendations. The Petitioner also argued that the amended claims should be placed before the Opposition Board. On the other hand, Symed argued that the Opposition Board is not required to examine the evidence submitted subsequent to issuance of a hearing notice, and that the Petitioner is attempting to scuttle the proceedings in view of the recommendations of the Opposition Board.
The court observed that both parties were permitted to and submitted evidence subsequent to the issuance of the recommendations of the Opposition Board, and the Petitioner’s amended claims were also notified in the journal. Therefore, the court held that it was meaningless for the matter to be decided based on the old recommendations. The court, accordingly, directed the Controller of Patents and Designs to form a new Opposition Board within 30 days, which will examine the evidence and provide recommendations within 2 months. The court emphasised the need for an expedited process due to Symed’s concerns that the Petitioner's writ may be aimed at delaying the proceedings.
Optimus Drugs Private Limited v. Union of India & Ors., W.P.(IPD)/24/2023 and WMP(IPD)/6/2023, Madras High Court, order dt. December 12, 2023
The Judgement can be accessed here : https://shorturl.at/lorK2