GILEAD SCIENCES INC Vs. INTELLECTUAL PROPERTY APPELLATE BOARD

JUDGEMENT

(1.) The petitioner in this petition under Article 226 of the Constitution of India assails the order dated 13.06.2011 passed by the Intellectual Property Appellate Board (the Board), whereby the Board has rejected the petitioners application for condonation of delay in filing the appeal under Section 117A of the Patents Act, 1970, against the refusal of the Controller of Patents and Designs (The Controller) to accept the petitioners Indian Patent Application No.896/DEL/2002. The said application was refused after pre-grant opposition by respondent no.4 herein.

(2.) The order refusing to accept the petitioner's aforesaid patent application was passed by the Controller on 30.07.2009, whereas the appeal was preferred before the learned Board on 26.08.2010. The period of limitation within which the appeal could have been preferred is prescribed in Section 117A(4) as three months from the date of the decision, order or direction of the Controller. Apparently, there was a delay of about ten months in filing of the said appeal.

(3.) The issue with regard to maintainability of an appeal against pre-grant rejection of the patent application was settled by the judgment of this Court in M/s. UCB Farchim S.A. v. M/s. Cipla Limited & Others, 2010 167 DLT 459, decided on 08.02.2010. Until then, the legal position with regard to maintainability of an appeal under Section 117A, against the refusal of the patent application on account of pre-grant opposition was not settled. This was so because Section 117A, in terms, did not mention an order or decision of the Controller under Section 25(1) (which deals with pre-grant opposition), but only made reference to an order passed under Section 25(4) (which deals with post-grant opposition), as an order against which an appeal would be maintainable. Moreover, the Board in its order dated 27.10.2009 in the case of Yahoo Inc. v. Controller of Patents, appears to have held that no appeal lies in the case of an order passed on a pre-grant opposition.