Judgment:
ORDER (No.187/2009)
S. Chandrasekaran, Technical Member
1. This appeal is filed under section 117A (2) of the Patents Act, 1970 (hereinafter referred to as the Act) challenging the order and decision of the respondent No.2 dated 17 April 2009 wherein the Patent No. 198079 granted on the patent application No. 693/MAS/2000 was revoked.
2. The application for Patent number 198079 (693/MAS/ 2000) was filed by Mr. A.R.Safiullah, trading as Safiullah and Co. and the Patent was granted on 20.01.2006 for an invention relating to âFood grade laminated paper, method and an apparatus for manufacturing the laminated paper. Opposition was filed by Mr. M. Mariappan under section 25(2) of the Act. The applicant filed a reply statement denying all the grounds of opposition relied by the opponent. The respondent No.2 conducted a hearing calling both the parties to attend the same and issued a decision finally under section 25(2) of the Act revoking the Patent granted earlier. Above appeal is preferred against the said order dated 17 April 2009. Along with the appeal two miscellaneous petitions, one for the early hearing of the appeal and another for the stay of operation of the impugned order have been filed and the said miscellaneous petitions are numbered as M.P.14 and 15 of 2009.
3. The counter statement of the respondent No.1 has been filed. Notice was issued by the Registry to both the parties intimating them that the Miscellaneous Petitions 14 and 15 have been listed for hearing before the Appellate Board on 7th September 2009.
4. Learned Sr. Counsel Mr. P.S.Raman appeared on behalf of the appellant and argued that the Appellate Board has the power and jurisdiction to entertain and hear the stay application matters. The senior counsel argued that the present appeal arises out of the order passed by the respondent No.2 in the post-grant opposition, revoking the Patent granted in favour of the appellant. The senior counsel submitted that the provisions of section 95 of the Trade Marks Act, 1999 relating to the passing of interim orders apply to the Appellate Board in discharge of its functions under the Act which is also confirmed by section 117B of the Act. The counsel for the appellant said that there are interconnected proceedings between the same parties and the respondent No.1 is using the impugned order to frustrate the legal proceedings initiated by the appellant. Further, he argued that the respondent No. 2 passed the impugned order without hearing the appellant or submissions on his behalf and respondent No. 2 did not give the necessary opportunity to the appellant to put forth his submissions and passed an ex-parte order which is liable to be stayed. The senior counsel also argued that the appellant has already become a victim at the hands of the respondent No.1, who adopted all unethical practices under the pretext of settlement between the parties and thereby preventing the appellant from appearing before the respondent No. 2 during the final hearing and utilizing the absence of the appellant argued the matter ex-parte, taking advantage of the situation and obtained a favourable order revoking the patent granted to the appellant. The senior counsel further argued that the respondent No. 2 has rejected/dismissed the various grounds relied on by the respondent No. 1 in the post-grant opposition, but however revoked the patent granted earlier only on the ground of insufficient disclosure of the invention in the specification. He submitted that the impugned order passed by invoking section 25(2)(g) of the Act is ex-facie wrong and that a prima facie case exists in appellants favour. Also, there exist fair chances for the appellant to succeed in the above appeal and stressed that unless an interim order of stay of the impugned order is passed, the circumstances are so bad that would go to curtail the legitimate rights of the appellant. The senior counsel finally requested for the stay of operation of the impugned order till the final disposal of the above appeal and also to fix an early date for hearing the appeal.
5. Mr. Feroze Ali Khadder counsel for the respondent No.1 argued that the present appeal and both the miscellaneous petitions are frivolous and vexatious. The counsel for the respondent No.1 stated that there was no settlement between the parties and the respondent No.1 did not stop the appellant from attending the hearing and further said that as the appellant has no case to prove the alleged invention, he did not attend the hearing afforded by the respondent No. 2. The counsel for the respondent No.1 submitted that he relied on all the grounds, but the respondent No.2 chose merely one ground of âunfair descriptionâ or â insufficiency of descriptionâ to revoke the Patent granted earlier to the appellant. The counsel for the respondent No.1 said that the complete specification does not disclose the constructional features of the invention, but the appellant had merely attempted to claim monopoly on known types of laminating machines and the process described in the specification is incomplete and not workable. Finally the counsel also said that as he has indicated his wish to attend the hearing before the respondent No.2 by paying the fees, why the appellant has not shownhis intention to attend the hearing before the respondent No. 2. The counsel contended that the application for stay is not maintainable on the ground, inter alia, that there is no provision for granting stay under the Act. The counsel further submitted that no justifiable reasons for granting the stay have been disclosed and the appellant has neither any prima facie case nor the balance of convenience is in his favour, and stressed that passing of any interim orders of stay of the impugned order would cause irreparable loss and hardship to the respondent No.1. He also prayed that both the petitions may be dismissed by confirming the impugned order with award of costs to the respondent No.1.
6. We have heard the arguments of both the counsel. As regards the objection as to maintainability on the ground that there being no provision under the Act, vesting power in this Appellate Board to grant interim orders, we reject the said contention of Mr. Feroz Ali, the counsel for the respondent No. 1. The learned senior counsel has rightly pointed out that by virtue of section 117B of the Act, the provisions of section 95 of the Trade Marks Act, 1999 have been made applicable in the discharge of its function by this Appellate Board under the Act. Section 95 of the Trade Marks Act, 1999, provides for making interim orders by the Appellate Board subject to satisfaction of conditions (a) and (b) specified therein. The conditions so specified have been satisfied in the instant case.
7. Usually, as also seen in this case, the prayer for the grant of an interlocutory remedy is at a stage when the existence of the legal right asserted by one party and its alleged violation are both contested and are uncertain. What is to be seen and checked legally at this stage, is there exist a prima facie case, balance of convenience and irreparable injury or loss to the petitioner, that may be caused by not issuing an interim order of stay at this stage. It is well established law that always the interlocutory remedy preserves the status quo rights of the petitioner which may appear on a prima facie perusal. Keeping in view the said principles and principles of natural justice, let us consider whether the appellant is entitled to such a remedy as prayed for.
8. As seen from the impugned order dated 17.04.2009, the respondent No. 1 filed an opposition under section 25 (2) of the Act relying on the grounds of prior publication, prior claiming, prior public knowledge and prior public use in India, obviousness and lacking inventive step, not an invention and insufficient disclosure. The opponent also referred to some prior art citations namely, four U.S. Patent documents and one U.K. patent document. After following the procedure laid down under the Patents Rules, 2003, the appellant also communicated his interest and confirmed his intention to attend the hearing when so fixed by the respondent No. 2. On hearing, the respondent No. 2 found that the opponent could not establish or prove the grounds of prior publication, prior claiming, prior public knowledge and prior public use in India. The respondent No. 2 in his order observed that the opponents have failed to prove the grounds of obviousness as well as the ground of not an invention and not patentable under the Act. However, the respondent No. 2, having rejected all the grounds raised by the respondent No. 1 revoked the patent granted earlier to the appellant only on the ground of insufficient disclosure by invoking section 25 (2) (g) of the Act. Having got aggrieved due to the revocation of patent, the patentee, the appellant herein, alleged that the respondent No. 2 has committed a grave and serious error of law and on facts by revoking the patent only on the ground of insufficient disclosure. Thus the appellant stated that the respondent No. 2 has not properly appreciated, analyzed and considered the patent specification in full and the claims made there under, which has lead to the passing of the erroneous order, by revoking the patent granted to the appellant, on weak grounds. After the grant of patent as seen from the records, the respondent No. 1 was found to be infringing the patent granted to the appellant and hence the appellant filed a civil suit in the Honble Madras High Court and a permanent injunction against infringement of patent was granted by the High Court at the first instance. The respondent No. 1 preferred an appeal to the Division Bench of that High Court and the Division Bench had also confirmed the order of the Learned Single Judge and on further appeal filed by the respondent No. 1 to the Honble Supreme Court, the same was also dismissed. Hence the respondent No. 1 is evidently under orders of interim injunction from manufacturing and marketing food grade laminated paper. We are in agreement with the contention of the learned senior counsel that the appeals of the respondent No. 1 having been dismissed by various Courts, the respondent No. 1 cannot claim the balance of convenience in his favour or that he would suffer irreparable injury or loss if an order of interim stay or relief is granted by the Appellate Board. In our view the contention of the respondent No. 1 is misconceived and rejection or revocation of patent granted earlier to the appellant, would certainly cause irreparable injury or loss if interim stay of the impugned order as prayed for is not granted. It is also seen from the circumstances of the case that the balance of convenience tilts in favour of the appellant because it is the appellant who has suffered an adverse order and the court orders are in his favour. It is evident from section 25 (4) of the Act that the Controller of Patents has power to order, while considering the opposition, âeither to maintain or to amend or to revoke the patentâ. Here, by the impugned order, the respondent No. 2 has merely revoked the patent granted earlier. The correctness of the impugned order will be the subject matter of consideration at the time of final hearing of the main appeal. For the purpose of disposal of the instant miscellaneous petition, only a prima facie opinion or case needs to be formulated or established. From what is discussed above, we are of the view that the appellant has made out a prima facie case for the grant of interim relief to them by way of an interim order of stay of the operation of the impugned order. Accordingly, interim relief as prayed for by way of M.P. No. 15/2009 is granted staying the operation of the order and decision dated 17.04.2009 of the respondent No. 2 till the disposal of the appeal. We hereby dispose of the M.P. No. 14/2009 also with the direction to the Registry to list the appeal for final hearing after completion of the pleadings. Parties are left to bear their own costs.