(Circuit Bench Sitting at Mumbai)
Common Order:- (217 of 2013)
Ms. S. Usha, Vice-Chairman
 Both the appeals are against the impugned order dated 12.12.2007 in the matter of Post Grant Opposition to the Indian Patent No.197823 under Section 25 (2) of the Patents Act, 1970.
2. The invention in No.197823 is listed as Metallized Packaging Films. The respondent Bilcare Limited herein made an application for grant of Patent bearing No.262/MUM/2004 on 03.03.2004. The 1st respondent was pleased to grant Patent. The grant of the patent was notified in the Official Gazette of the Patent Office dated 21.04.2006. The appellants namely Associated Capsules Private Limited and Amartara Private Limited had filed their notice of opposition well within time.
3. The respondent Bilcare Limited filed their reply statement to the notice of opposition. On 31.01.2007 the Opposition Board was constituted under Rule 56 of the Patent Rules, 2003. On completion of the pleadings and filing of documents, the matter was fixed for hearing on 07.07.2007. Finally, the matter was heard on 6.11.2007 and decided on 12.12.2007. The Opposition Board report was given on 01.01.2008.
4. Being aggrieved by the impugned order, both the appellants have filed these appeals on various grounds.
5. The matter was listed for hearing after the pleadings were completed; the matter was listed on various dates and finally listed on 17.06.2013.
6. On 17.06.2013 in OA/5/2008/PT/MUM, both the counsel requested for a direction to the Controller to send all the records relating to the patent No.197823. The Board had also directed the Controller to provide copies of the report of the Opposition Board to both the parties before the records are sent to this Board. The matter was thereafter listed on 08.07.2013.
7. In OA/6/2008/PT/MUM, on 17.06.2013 as there was no representation on behalf of the appellant, the matter was dismissed for non-prosecution.
8. On 08.07.2013, when the matter - OA/05/2008/PT/MUM was taken up for hearing, the counsel for the appellant in OA/06/2008/PT/MUM appeared and submitted that they have filed a miscellaneous petition to set aside the order of dismissal dated 17.06.2013. The respondents herein had filed their reply to the miscellaneous petition.
9. On 08.07.2013 when OA/05/2008/PT/MUM was taken up for hearing, the counsel for the appellant pointed out that the Opposition Board report was received by them only now. The learned Controller had not considered the report of the Opposition Board as it was signed only on 01.01.2008, whereas the decision was given by the Controller on 12.12.2007. The learned counsel for the respondent Bilcare Limited also accepted the above fact.
10. In view of the above, we think it necessary to look into the provisions of the Patents Act and Rules.
âSection 25 Opposition to the Patent:-
(1) xxxxxx
(2)xxxxxxx
(3) (a) xxxxxxx
(b)On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.
(c) Every Opposition Board constituted under clause shall conduct the examination in accordance with such procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition Board and after giving patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.
(5) xxxxxx
(6) xxxxxx
Rule 56 Constitution of Opposition Board and its Proceeding:-(1) On receipt of notice of opposition under rule 55A, the Controller shall, by order, constitute an Opposition Board consisting of three members and nominate one of the members as the Chairman of the Board.
(2) An examiner appointed under sub-section (2) of section 73 shall be eligible to be a member of the Opposition Board.
(3) The examiner, who has dealt with the application for patent during the proceeding for grant of patent thereon shall not be eligible as member of Opposition Board as specified in sub-rule (2) for that application.
(4) The Opposition Board shall conduct the examination of the notice of opposition along with documents filed under rules 57 to 60 referred to under sub-section (3) of section 25, submit a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months from the date on which the documents were forwarded to them.
Rule 62 Hearing:-(1) On the completion of the presentation of evidence, if any, and on receiving the recommendation of Opposition Board or at such other time as the Controller may think fit, he shall fix a date and time for the hearing of the opposition and shall give the parties not less than ten days' notice of such hearing and may require members of Opposition Board to be present in the hearing.
(2) If either party to the proceeding desires to be heard, he shall inform the Controller by a notice along with the fee as specified in the First Schedule.
(3) The Controller may refuse to hear any party who has not given notice under sub-rule (2).
(4) If either party intends to rely on any publication at the hearing not already mentioned in the notice, statement or evidence, he shall give to the other party and to the Controller not less than five days' notice of his intention, together with details of such publication.
(5) After hearing the party or parties desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Opposition Board, the Controller shall decide the opposition and notify his decision to the parties giving reasons therefor.â
11. From a plain reading of the provisions of Sub-section 3 of Section 25 â Clause (b) it is clear that the Controller shall constitute an Opposition Board and all documents and pleadings be forwarded to the Opposition Board for examination and to submit their recommendations. On receipt of these recommendations, the Controller shall pass an order after hearing both the parties.
12. We shall now look into the Rules. Rule 56 deals with the composition of the Opposition Board and the proceedings. Sub Rule 4 of Rule 56 tells about the report of the Opposition Board.
13. The Opposition Board shall conduct the examination of the pleadings and the documents filed by both the parties and then submit the report with its recommendations within three months from the date on which the documents were forwarded to them.
14. It will be appropriate to mention the provisions of sub rule (1) and (4) of Rule 62. Sub Rule 1 clearly mentions that on completion of the pleadings and on receiving the recommendation of the Opposition Board, the Controller shall fix the date of hearing giving notice to both the parties and also requiring the members of the Opposition Board to be present in the hearing. After hearing the parities and after considering the recommendation of the Opposition Board the Controller shall decide the Opposition.
15. The settled law provides for dealing with the matter in accordance with the provisions laid down in the Act.
16. The Opposition Board shall be constituted by the Controller on receipt of the notice of opposition. In the instant case, on receipt of the notice of opposition, the Opposition Board has been constituted. On perusal of the office order dated 31.01.2007, the Opposition Board has been constituted. It clearly states that the âBoard will deal with documents as prescribed in Rule 56 (4) of the Patents Rules 2003 (as amended) and submit the report accordinglyâ. The documents as prescribed in Rule 56 (4) are documents under Rules 57 to 60. The evidence under rule 59 and 60 has been filed after the constitution of the Board. It is not clear as to whether all these documents were given to the Opposition Board or not.
17. In our considered view even if these documents were given and considered by the Opposition Board, the report ought to be furnished to both the parties for their submissions. That apart the appellants grievance is that the members of the Opposition Board were not present at the hearing as per the rules. There has been a violation of the principles of natural justice.
18. The Controller has definitely violated the procedures. The Controller has decided the matter even without having the report of the Opposition Board. The rule makes it clear that the Controller shall decide the matter after considering the Opposition Boards recommendation, which has been totally ignored by the Controller. The Controller has decided the matter on 12.12.2007 even before the Opposition Board had forwarded their recommendations which are dated 01.01.2008. The matters therefore have to be sent back to the Controller for fresh consideration.
19. OA/05/2008/PT/MUM: The appeal is remanded back to the Controller to place all the records namely the pleadings and documents before the Opposition Board (if necessary, newly constituted Opposition Board) for their recommendations and report. The Controller on receipt of the report and after hearing the parties decide the matter.
20. OA/06/2008/PT/MUM:- The appeal is remanded back to the Controller for fresh consideration. The Controller shall ascertain as to whether all the documents are with the parties and then place the same before the Opposition Board (if necessary, newly constituted Opposition Board) for the Boards recommendations and report.
21. In this matter, as we have decided to remand the appeal namely O.A./05/08/PT/MUM, we do not think it fair not to set aside the order of dismissal for non prosecution in OA/06/2008/PT/MUM. We set aside the order of dismissal dated 07.06.2013 and restore the appeal. The M.P. No. 59 of 2013 in OA/06/2008/PT/MUM is therefore allowed. The other M.P. 16 of 2013 is disposed off.
22. For the above cited reasons, both the matters are remanded back for fresh consideration. Accordingly, the appeals are disposed of.