ORDER (No. 232 of 2012)
S. USHA, VICE-CHAIRMAN:
1. The Registry of this Board has raised the issue of maintainability of the appeal under section 117A of the Patents Act, 1970, against an order passed under section 77(1)(f) of the Patents Act, 1970, being an order in a Review Petition. The appellant herein submitted his explanation that the patent application was refused under section 15 of the Act stating that the objection under section 10 of the Act was not complied with. The appellant preferred a review under section 77(1)(f) which was also dismissed. Therefore, the appeal may be taken on record treating the appeal against an order passed under section 15 read with section 77(1)(f) of the Patents Act, 1970.
2. The matter was placed before the Board for deciding the issue of maintainability. The Board had appointed Shri S.P. Chokalingam, an Advocate as amicus curie to assist in deciding the issue as to whether an appeal under section 117A shall be maintainable against an order of review under section 77(1)(f) of the Patents Act, 1970.
3. We heard Shri S.P. Chokalingam. Shri S.P. Chokalingam submitted that the order was passed on 07-07-2010 in the main matter. The appellant had three months time to appeal against the said order. The appellants had filed a Review Petition under section 77(1)(f)and(g) of the Patents Act, 1970 read with Rules 130(1)and(2) of the Patent Rules, 2003 on 13-07-2010. The Controller passed the impugned order on 21-10-2011 against which the appellants have preferred the instant appeal.
4. He submitted that as per section 91 of the Trade Marks Act, 1999, any order or decision is appealable. As per section 117A, only certain orders are appealable and he placed before us a list of provisions that are appealable as under:-
| Sl.No. | Subject Matter | Provision of Law |
| 1 | Appeal against the order of the Controller refusing or requiring amendment to the Patent Application | Section 15 |
| 2 | Appeal against the order or the Controller with respect to the division or Application | Section 16 |
| 3 | Appeal against the order of the Controller with respect to the post-dating of the Application | Section 17 |
| 4 | Appeal against th3e order of the Controller with regard to anticipation | Section 18 |
| 5 | Appeal against the order of the Controller with reference to potential infringement | Section 19 |
| 6 | Appeal against the order of the Controller with respect to the substitution of Applicants | Section 20 |
| 7 | Appeal against the order of the Controller in a post grant opposition | Section 25(4) |
| 8 | Appeal against the order of the Controller with reference to the mentioning of the Inventor in the Patent | Section 28 |
| 9 | Appeal against the order of the Controller in giving directions to the co-owners of Patent | Section 51 |
| 10 | Appeal against the order of the Controller with respect to the Patents of Addition | Section 54 |
| 11 | Appeal against the order of the Controller with regard to the restoration orf lapsed Patent | Section 60 |
| 12 | Application against the order of the Controller in reference to the procedure adopted in relation to the restoration of the lapsed Patent | Section 61 |
| 13 | Appeal against the order of the Controller with respect to the surrender of Patents | Section 63 |
| 14 | Appeal against the order of the Controller revoking the Patent in public interest | Section 66 |
| 15 | Appeal against the order of the Controller with reference to Registration, Assignments and Transmission, etc. | Section 69(3) |
| 16 | Appeal against the order of the Controller with regard to the correction of clerical errors | Section 78 |
| 17 | Appeal against the order of the Controller with respect to Compulsory licence of Patents | Section 84(1) to (5) and Section 88 |
| 18 | Appeal against the order of the Controller with respect to the non-working of Patents | Section 85 |
| 19 | Appeal against the order of the Controller in reference to the licensing of related Patents | Section 91 |
| 20 | Appeal against the order of the Controller with regard to compulsory licence on notification by Central Government | Section 92 |
| 21 | Appeal against the order of the Controller with respect to the termination of Compulsory Licence | Section 94 |
| 22 | Application for revocation of Patents by any interested person | Section 64(1) |
| 23 | Application for Rectification of Register by any aggrieved person | Section 71 |
MANU/SC/0091/2003 â Municipal Corporation of Delhi and Ors. Vs. Intnl. Security and Intelligence Agency Ltd. â Right of appeal is creature of statute and there is no inherent right of appeal unless rights are conferred on the appellant and power on the Court no appeal can be filed. There is no provision under the Act to appeal against the Review order and therefore no appeal lies.
MANU/SC/0249/2010 â Rajkumar Shivhare Vs. Assistant Director, Directorate of Enforcement and Anr. â Right of appeal is not an inherent right, unless it is conferred by statute.
MANU/SC/0511/1975 â Ramachandra Keshav Adke (Dead) by Lrs. and Ors. Vs. Govind Joti Chavare and Ors. â Where a power is given to do a certain thing in a certain way, the thing must be done in that way or not at all.
6. Shri S.P. Chokalingam therefore submitted that the appeal is not maintainable as there is no provision under the Act.
7. The Learned Counsel for the appellant submitted that the appeal may be taken on record against the main order dated 07-07-2010 as there is merits in the matter and that he has every chance to succeed in the matter.
8. The issue that arises for consideration is whether an order in a Review Petition is appealable under the Patents Act, 1970.
9. Section 116 of the Patents Act, 1970, provides for powers to do certain acts under the provisions of the Trade Marks Act, 1999. Section 117B deals with the procedure and powers of the Appellate Board as per certain provisions of the Trade Marks Act, 1999.
10. Section 91 of the Trade Marks Act, 1999 deals with the appeals. Any person may prefer an appeal against any order or decision. Section 117A of the Patents Act, 1970 does not give such option to file an appeal against any order. It restricts to certain provisions. Section 117A does not speak of appeal against an order in a Review Petition â Section 77(1)(f).
11. Any order passed in a Review Petition is not appealable as per Order 47 R 7(1) of CPC.
12. Appeal is a creature of statute and is not an inherent right. Unless there is a specific provision for appeal there can be no appeal.
13. When there is no provision to appeal against a review petition then the appeal herein is not maintainable. Therefore, the appeal against an order dated 21-10-2011 in a Review Petition is dismissed as not maintainable.
14. In the instant case, the appellant has preferred a Review Petition within seven days against the order passed under section 15 of the Act. The main order is one passed under section 10 of the Act for non compliance. We are of the view that the appeal against the main order dated 7-7-2010 subsists but for the delay. It is therefore open to the appellant herein to file appeal against the main order dated 7-7-2010 along with an application to condone the delay with necessary fees, if the appellant so desires.
15. We appreciate Shri S.P. Chokalingam for his effortless service in assisting this Board to decide the issue of maintainability. Shri S.P. Chokalingam has put in efforts to help us in deciding the matter.