W.P. No.8451 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

RESERVED ON 17.10.2025

PRONOUNCED ON 05.01.2026

CORAM

THE HONOURABLE MR.JUSTICE N.SENTHILKUMAR

W.P. No.8451 of 2023 and

W.M.P. Nos.8647, 8649 & 8650 of 2023

1.E.R.Squibb & Sons LLC

at Route 206 & Province Line Road

Princeton, New Jersey 08540

Represented by its

Constituted Attorney/Authorised Signatory

Mr.Toni Mon George

2.Ono Pharmaceuticals Co. Ltd.

at 1-5, Doshomachi 2-chome

Chuo-ku, Osaka-shi, Osaka 541-8526

Japan

Represented by its

Constituted Attorney/Authorised Signatory

Mr.Toni Mon George .. Petitioners

Vs.

1.Union of India

Through the Ministry of Commerce

Department of Industrial Policy & Promotion

Udyog Bhawan

New Delhi 110 011

2.The Controller of Patents & Designs

The Patent Office

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W.P. No.8451 of 2023

Intellectual Property Office Building

G.S.T. Road, Guindy,

Chennai - 600 032

3.Zydus Healthcare Limited

of Zydus Corporate Park

Scheme No.63, Survey No.536

Khoraj (Gandhinagar), Nr.Vaishnodevi Circle

Ahmedabad, Gujarat 382 481

India .. Respondents

****

Prayer : Writ petition filed under Article 226 of the Constitution of India for a

writ of certiorarified mandamus calling for the records and quashing the

recommendation of the opposition board in Patent No.IN340060 (Patent

Application No.5057/CHENP/2007) and consequently direct the 2nd respondent

to reissue the same after deciding the miscellaneous petition of the petitioner

and considering all the documents on record under Rule 57 to 60 of the Patents

Rules, 2003.

****

For Petitioner: Mr.P.S.Raman, Senior Counsel

for Mr.K.Premchandar

For Respondents: Mr.Rajesh Vivekananthan,

Deputy Solicitor General for

Govt. of India for R1 & R2

Mr.C.S.Vaidyanathan, Senior Counsel

and

Mr.P.V.Balasubramanian,

Senior Counsel for

Mr.Adarsh Ramanujan, for R3

O R D E R

The present writ petition is filed challenging the recommendation of the

Opposition Board in Patent No.IN340060 (Patent Application

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W.P. No.8451 of 2023

No.5057/CHENP/2007) dated 31.01.2023 made by the second respondent in

Patent No.IN340060 with regard to post grant opposition proceedings, as per

Section 25(2) of the Patents Act, 1970, which was initiated by the third

respondent herein. Aggrieved by the same, the present writ petition has been

filed.

2. The Indian Patent No.340060 was granted in respect of an invention

titled as 'Human Monocolonal Antibodies to Programmed Death I (PD-1) for

use in Cancer', which is used for treating cancer. An application was made in

A. No.5057/CHEMP/2007, which is a national phase entry of International

(PCT) Application No.PCT/JP2006/209606, which was filed on 02.05.2006 and

came to be published as International Publication No.WO2006/121168 A1

dated 16.11.2006. The third respondent herein has given a post grant opposition

under Section 25(2) of the Patents Act, 1970 as against the grant of patent.

Based on which, the opposition Board has made the impugned recommendation.

3. After filing of the reply evidence, the opponent/third Respondent has

filed a rejoinder. Thereafter, the petitioners herein filed a Miscellaneous

Petition, which questions the maintainability of the rejoinder filed by the

Respondent No.3 and also the evidence under Rule, 59. According to the

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W.P. No.8451 of 2023

Petitioners, as the Opposition Board has to consider all documents under Rule

57 to 60 which are on record, the Respondent No.2 was duty bound to decide

the maintainability of the rejoinder filed by the Respondent No.3 and also the

evidence under Rule, 59. Only after the maintainability of the rejoinder was

decided, the competent authority could decide whether or not to supply such

documents to the opposition Board, after which the recommendations of the

Board can be formed.

4. It is the case of the petitioners that the opposition board has made the

recommendation without considering the evidence submitted by the patentee,

namely the writ petitioner. The petitioners have filed 7 evidence of Dr.Fife, an

evidence of Sarah Roques, an evidence of Dr.Feltquate, an evidence of

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W.P. No.8451 of 2023

Dr.Mark. Many of such evidence and various documents, issues addressed in

such evidence; details and data provided have not been considered, and

appreciated by the opposition Board while making the recommendation.

5. Mr.P.S.Raman, the learned senior counsel appearing for the petitioner

pointed out that in the recommendation of the opposition board, there is no date,

therefore, it is a serious lacuna. The recommendations hold that the patent lacks

novelty, inventive step, sufficiency and clarity. The learned senior counsel

further pointed out that the said drug has been used in 64 countries and the drug

has been legally protected. In support of his contention, the learned senior

counsel relied on Rule 57 to 60 of the Patents Rules, 2003.

"57. Filing of written statement of opposition and

evidence.- The opponent shall send a written statement in

duplicate setting out the nature of the opponent's interest, the

facts upon which he bases his case and relief which he seeks and

evidence, if any, along with notice of opposition and shall deliver

to the patentee a copy of the statement and the evidence, if any.

58. Filing of reply statement and evidence. - (1) If the

patentee desires to contest the opposition, he shall leave at the

appropriate office a reply statement setting out fully the grounds

upon which the opposition is contested and evidence if any, in

support of his case within a period of two months from the date of

receipt of the copy of the written statement and opponent's

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W.P. No.8451 of 2023

evidence, if any by him under Rule 57 and deliver to the opponent

a copy thereof.

(2) If the patentee does not desire to contest or leave his

reply and evidence within the period as specified in sub-rule (1),

the patent shall be deemed to have been revoked.

59. Filing of reply evidence by opponent.-The opponent

may, within one month from the date of delivery to him of a copy

of the patentee's reply statement and evidence under Rule 58,

leave at the appropriate office evidence in reply strictly confined

to matters in the patentee's evidence and shall deliver to the

patentee a copy of such evidence.

60. Further evidence to be left with the leave of the

Controller.- No further evidence shall be delivered by either

party except with the leave or directions of the Controller.

Provided that such leave or direction is prayed before the

Controller has fixed the hearing under Rule 62."

The learned senior counsel contended that the joint recommendation of

the Opposition Board [OBR] is a critical document in a post grant opposition

proceeding and the same have to be considered when the controller gives a final

decision in the proceedings. The importance of the document was also

acknowledged by the Hon'ble Supreme Court of India in Cipla Vs. Union of

India (Civil appeal Nos.8479-8480 of 2012). Therefore, as this document is

immensely crucial in determining the rights of a patentee, the same should be

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W.P. No.8451 of 2023

prepared by following the due process of law and the procedure provided under

the Act and should take into consideration all important and critical factors,

while deciding on any of the grounds of opposition.

6. He further pointed out that the impugned joint recommendation is not

as per the scheme of the Act and therefore, should be disregarded and a fresh

opposition Board recommendation needs to be issued before the post grant

opposition proceedings is finally decided by the controller. The

respondents/authorities, however, failed to decide the maintainability of such

documents, and proceeded with the issuance of recommendation of the

opposition Board. The same are therefore, in violation of the scheme of the Act

and the Rules.

7. Further, even in case, it is assumed that the respondent authorities have

decided on the miscellaneous petition filed by the petitioner, and a decision has

been taken with regard to maintainability of the rejoinder filed by the

Respondent No.3 and also the evidence filed under Rule 59, the same is not

reflected in the OBR. Therefore, the impugned recommendation is passed in

violation of principles of natural justice, as any such decision should not have

been formed without giving the patentee, an opportunity of being heard.

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W.P. No.8451 of 2023

8. Further, secondary considerations are also important when deciding

the issues relating to obviousness and technical advancement. Such details have

been provided by the petitioners in terms of grant in other countries and also the

evidence of Dr.Mark and Dr.Feltquate. The board has not even considered the

extensive data on secondary consideration, long felt need, commercial success,

regulatory approvals and grant in other jurisdiction.

9. To strengthen his arguments, the learned senior counsel relied upon the

following judgments:

(i) Cipla Limited v. Union of India reported in

(2012) 13 SCC 429;

(ii) Sugen Inc and Anr v. Controller General of

Patents, Design, Trademark and Geographical Indication

- OA/5/2013/PT/DEL dated 14.05.2013;

(iii) Pharmacyclics LLC v. Union of India - W.P.(C)

12105/2019 dated 20.11.2019;

(iv) Akebia Therapeutics Inc v. Controller General

of Patents, Designs, Trademark and Geographical

Indication and Ors - W.P.(C) IPD 32/2023 dated

09.08.2023;

(v) Novo Nordisk A S v. Union of India and Ors -

W.P.(C)-IPD 19/2022 dated 05.07.2022;

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(vi) Optimus Drugs Private Limited v. Union of

India and Ors - W.P.(IPD) 24/2023 dated 12.12.2023;

(vii) Willowood Chemicals Private Limited vs.

Assistant Controller of Patents and Designs & Anr - W.P.

(C)-IPD 15/2023;

(viii) Pharmacyclics LLC vs. Controller General of

Patents, Design, Trademark and Geographical Indications

- OA/46/2020/PT/DEL dated 29.09.2020; and

(ix) Ashok Leyland Limited v. The Controller of

Patents & Designs and Anr - W.A. No.1181 of 2024.

10. Per contra, Mr.C.S.Vaidyanathan, the learned senior counsel

appearing for the third respondent raised a preliminary question with regard to

the maintainability of the writ petition by referring to the prayers made in the

writ petition. The prayer in the writ petition reads thus:

"For the reasons stated in the affidavit filed in

support of the writ petition, it is humbly and respectfully

prayed that this Hon'ble Court be pleased to issue a writ of

certiorarified mandamus calling for the records and

quashing the recommendation of the Opposition Board in

Patent No.IN340060 (Patent Application

No.5057/CHENP/2007) and consequently direct the 2nd

respondent to reissue the same after deciding the

Miscellaneous Petition of the petitioner and considering all

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W.P. No.8451 of 2023

the documents on record under Rule 57 to 60 of the Patents

Rules, 2003 and/or pass any other appropriate writ, order

and/or direction that this Hon'ble Court deems fit and

proper in the facts and circumstances of the case and thus

render justice."

11. He further pointed out that the subject matter under challenge in the

present writ petition is only a recommendation by the Board and the final

decision has to be made only by the Patent Authority as per Section 25(4) of the

Act. If at all the petitioners are aggrieved, they have a right of appeal before this

court under Section 117A of the Act. The writ petition has been filed in a

hurried manner without awaiting the final decision to be taken by the patent

authority based on the recommendations made by the opposition Board. He

further pointed out that the recommendation may be acted upon or may be

rejected by the patent authority, after analysing the materials placed by either

side.

12. To examine the notice of opposition along with evidence, the

opposition board was constituted by the controller u/R 56 of the Patent Rules on

29 December 2021. The board has considered the material available on record

comprising submissions and evidence filed by both parties u/R 57-59 of Patent

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W.P. No.8451 of 2023

Rules, the appropriate portions of which were referred to in the OBR, and the

recommendations were made based on conclusions derived from examination

and analysis of facts.

13. The Opposition Board has submitted its recommendations well before

3rd August 2022 and regarding the reply evidence filed by the opponent u/R 59

of Patent Rules on 1 Dec 2021, the opposition board as only considered the said

evidence insofar as it was confined to patentee's reply and evidence filed on 1

Oct 2021.

14. Regarding the further evidence filed by the petitioner on 25 August

2022 u/R 60 of Patent Rules, the same is not admissible before the opposition

board since the board was already constituted on 29

th

Dec 2021 and had even

submitted its recommendations to the controller by then.

15. The further evidence is admissible u/R 60 of Patent Rules only when

it is delivered with the leave and direction of the controller and the same will be

considered during the hearing which is still pending before the controller.

However, at a pre-matured stage, the petitioners have approached this court

through the instant Writ Petition.

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W.P. No.8451 of 2023

16. The learned senior counsel contended that the Delhi High Court held

that a Writ Petition against the recommendations of the opposition board is not

maintainable The legal framework doesn't permit an appeal against the

Opposition Board's recommendation or scrutinizing the validity of the Report

and declaring it unsustainable. The Act, under Section 117A(2) provides for an

appeal once the controller takes the final decision and the petitioners are not

permitted to challenge the recommendations of the opposition board on merits

under Art 226/227 of the Constitution as held in WILLOWOOD CHEMICALS

PRIVATE LIMITED V Controller of Patents in W.P.(C) IPD 15/2023.

17. He further pointed out that the dates and events assume significance.

A post grant opposition was filed on 01.07.2021. Reply statement and evidence

was filed by the petitioners to the post grant opposition on 01.10.2021. On

30.11.2021, leave was sought and rejoinder in the form of evidence was filed by

the third respondent. Miscellaneous petition for dismissal of the rejoinder and

reply evidence was filed by the petitioner on 03.08.2022. After all these

proceedings, recomendation of the opposition board was made on 31.01.2023.

Notice for attending hearing and adjournment request was filed on 23.02.2023.

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18. In support of his contention, the learned senior counsel appearing for

the respondents, relied on the following judgments:

(i) State of Tamil Nadu and Ors. v. S.K.Sharma

reported in (1996) 3 SCC 364;

(ii) Dr.G.Sarana v. University of Lucknow & Ors.

reported in (1976) 3 SCC 585;

(iii) Union of India v. Nisar Pallathukadavil Aliyar

reported in (2020) 20 SCC 252;

(iv) Panacea Biotec Limited v. Union of India and

others reported in (2019) SCC Online Bom 5316; and

(v) Willowood Chemicals Private Limited v. Assistant

Controller of Patents and Designs & Anr. [Order dated

17.03.2023 in W.P.(C) IPD 15/2023].

19. Mr.P.V.Balasubramanian, learned senior counsel appearing for the

third respondent made the following submissions in addition to the arguments

advanced by Mr.C.S.Vaidyanathan, the learned senior counsel. The present

petition is not maintainable as the final decision on the post grant opposition

filed by the respondent No.3 is yet to be taken by the learned controller. The

opposition board recommendations are not binding on the learned controller. As

per Rule 62 of the Patent Rules, 2003, both the parties are provided an

opportunity of being heard before a final order is passed. Pertinently, the

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learned controller may also require the members of the opposition board to be

present in the hearing as per Rule 62(1). Therefore, the petitioner cannot raise

the objection of violation of principles of natural justice as no prejudice has

been caused. He lamented that as regards the Miscellaneous petition, it is to be

noted that the reply evidence under Rule 59 was filed by the 3rd respondent on

30.11.2021, and the same was served on the petitioners. However, no

justification is forthcoming as to why the miscellaneous petition came to be

filed only on 03.08.2022 i.e. with an unexplained delay of almost 1 year.

20. The petitioners have merely stated that they were not aware of the

date of constitution of the Opposition Board. However, the same does not

justify the inaction on the part of the petitioners, who were not prevented or

precluded in any manner from objecting to the filing of rejoinder by the

Respondent No.3 immediately upon obtaining a copy of the same, if the said

objections were bona fide. Filing of the miscellaneous petition was not

contingent on the constitution of the opposition board as the said petition was to

be filed, and was in fact filed before the learned controller. The petitioners

alleged that the rejoinder filed by Mr.Sachin Sangre cannot be taken on record

since a 'reojinder' cannot be filed under the Rules - However no such 'rejoinder'

has been filed at all. The filing done by Mr.Sachin Sangree is an affidavit under

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Rule 59 of the Rules. Further no prejudice is being caused to the petitioner,

since it is open to the petitioner to take the said arguments at the time of hearing

before the learned controller who will decide the question in accordance with

law.

21. The point that arises for consideration in this writ petition is, whether

the writ petition is maintainable or not?

22. The main contention of Mr.P.S.Raman, learned senior counsel

appearing for the petitioners is that the Opposition Board has not applied its

mind with regard to the evidence produced by the petitioner. The

recommendation made by the Board without considering the material evidence

is an absolute procedural irregularity. He referred to the judgment of the

Division Bench of this court in Ashok Leyland Limited v. The Controller of

Patents & Designs and Anr - W.A. No.1181 of 2024. The relevant paragraphs

of the judgment are as follows:

"4. We carefully considered the rival submissions. As

the main WA was taken up with the consent of both sides as

alluded to supra, this court is of the view that the procedure

adopted by the said Board in making said recommendation

and the correctness of the same or testing the same cannot

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W.P. No.8451 of 2023

be left to the said Controller in final hearing as said Board

vide Rule 56(4) of 'The Patents Rules' 2003' (hereinafter

'said Rules' for the sake of convenience and clarity) has to

give a report i.e., submit a report and recommendations

with reasons on each ground after examining the

documents and learned counsel on both sides i.e., learned

counsel for ALL and TML in this case agreed that term

'documents' occurring in sub-rule (4) of Rule 56

includes/means 'documents and evidence' when read in the

light of Rules 57 to 60 of said Rules which talk about

'evidence'. Though said recommendation is not binding on

said Controller, it is a determinant qua post grant

opposition cannot be tested and sent back by reconstituting

the Board in the final hearing proceeding itself as that

would tantamouont to testing a parameter on which the

drill is pivoted in the drill itself.

5. A perusal of said recommendation brings to light

that the question as to whether said Board has considered

the evidence is clearly debatable and requires an exercise

by itself to take a call on this aspect of the matter. At this

juncture, with the intention of giving quietus to the

simmering disputation and with the furhter larger objective

of expanding the opposition to patent legal drill, both sides

agreed that it will be desirable to have the Board

reconstituted and have the drill of the Board giving a

recommendation done de novo. Before we write operative

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part on the basis of this consensus, we make it clear that

judicial review qua procedure to be followed by said Board

is an aspect which this Constitutional Court is not denuded

of and we deem it appropriate to answer the 'larger

question' propounded by Hon'ble single Judge in

paragraph 5 of the impugned order in this matter."

By referring to the above judgment, the learned senior counsel contended that

the present case is a fit case for a direction to give a denovo recommendation.

23. In the case of Optimus Drugs Private Limited vs. Union of India and

another in W.P.(IPD) NO.24 of 2023 dated 12.12.2023, this court has observed

that if there is a procedural violation at the time of making a recommendation,

then it affects the right of the parties especially, the patentee. Such a procedural

violation vitiates the entire recommendation made by the Board. By relying

upon the above judgmnet, the learned senior counsel argued that a fresh

Opposition Board has to be re-constituted and all the materials has to be

considered by the Board. Only then, the recommendations made therein, has to

be placed before the competent authority. For the purpose of brevity and

clarity, the relevant portion of the judgment is reproduced hereunder:

"6. Turning to the facts of this case, learned counsel

submits that the intention of the petitioner is to scuttle the

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opposition proceedings in view of the recommendations issued

by the Opposition Board. By referring to such recommendations,

learned counsel points out that the Opposition Board concluded

that the patent is liable to be revoked on the ground of

obviousness. Learned counsel also relied upon a judgment of the

Delhi High Court in Willowood Chemicals Private Limited v.

Assistant Controller of Patents and Designs and another, W.P.

(c)No.12105/2019, order dated 17.03.2023, in support of the

contention that the legal framework of the Patents Act and rules

framed thereunder do not permit parties to challenge the

recommendations of the Opposition Board because the

Controller is not bound by such recommendations. For the same

principle, learned counsel also relied upon the judgment of the

Delhi High Court in Novo Nordisk AS v. Union of India and

others, 2022 (92) PTC 315[Del].

Discussion, analysis and conclusions

7. The admitted position is that the recommendations of

the Opposition Board were issued on 17.05.2019. From the

sequence of dates and events, it is clear that the petitioner was

permitted to file the affidavit of Dr.S.K.Mitra as evidence on

12.11.2020. In response thereto, the 4th respondent filed an

affidavit by way of evidence on 04.03.2021. In effect, both

parties were permitted to and submitted evidence subsequent to

the issuance of the recommendations of the Opposition Board.

As contended by learned counsel for the 4th respondent, the

Patents Rules envisage that evidence submitted under Rules 57

to 60 would be placed before the Opposition Board. On the facts

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of this case, however, pursuant to the writ petition filed by the

petitioner before this Court earlier, the Controller agreed to

receive further evidence and such evidence was not by way of

publications. Sub~rule (5) of Rule 62 directs the

Controller to decide the opposition after taking into

consideration the recommendations of the Opposition Board.

8. In light of these developments, which are subsequent to

the earlier recommendations of the Opposition Board, it would

be meaningless for the Controller to take a decision based on

the recommendations issued by the Opposition Board in May

2019, and natural justice clearly requires that the additional

evidence placed on record by both parties should be considered

by the Opposition Board.

9. What remains to be considered is whether the same

Opposition Board which undertook this exercise earlier may be

called upon to issue fresh recommendations or whether the

Opposition Board should be reconstituted for this purpose.

Learned senior counsel for the petitioner relied on a decision of

the Intellectual Property Appellate Board in Sugen Inc. and

another v. Controller General of Patents, Design, Trademark

and Geographical Indications, Patent Office and another, 2013

SCC OnLine IPAB 76 to contend that the Opposition Board

should be reconstituted. Upon considering the evidence on

record at that point of time, which consisted largely of the

further evidence filed by the 4th respondent by way of Exs.R1 to

R6, the Opposition Board recommended revocation of the

patent. Additional evidence has been placed on record by both

parties subsequently. Moreover, the petitioner has voluntarily

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W.P. No.8451 of 2023

submitted amended claims which have been published. By taking

into consideration all these facts and circumstances, in order to

preclude the possibility of confirmation bias, I am of the view

that the Opposition Board should be reconstituted.

10. Learned counsel for the 4th respondent also

contended that the two writ petitions filed by the petitioner were

aimed at scuttling the opposition proceedings or, at least,

protracting such proceedings. This contention cannot be

disregarded. Therefore, it is necessary that the opposition

proceedings are proceeded with on an expedited basis.

11. For reasons set out above, WP(IPD)/24/2023 is

disposed of without any order as to costs, on the following

terms:

(i) The 2nd respondent is directed to constitute a fresh

Opposition Board comprising officers other than the officers

who formed the previous Opposition Board. The fresh

Opposition Board shall be constituted within a maximum period

of 30 days from the date of receipt of a copy of this order.

(ii) The newly constituted Opposition Board shall

examine the entire evidence and the amended claims of the

petitioner and provide its recommendations within a maximum

period of two months from the date of constitution of such board.

(iii) Upon receipt of such recommendations, the 2nd

respondent is directed to fix and conclude the hearing in the

opposition proceedings as expeditiously as possible.

Consequently, connected Miscellaneous Petition is closed.

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24. In the judgment of Ashok Leyland, which is relied upon by the

learned senior counsel for the petitioners, both the parties have consented for re-

constitution of the Board. In the judgment of Optimus Drugs referred supra, the

opposition Board is re-constituted for the reason that both parties involved in

the said case were permitted to and submitted evidence subsequent to issuance

of the recommendation by the Board. Therefore, as it would be meaningless for

the Controller to take a decision based on the said recommendation and in order

to preclude the possibility of confirmation bias, the Board was re-constituted.

However, in the present case, the recommendation is issued after considering

the evidence already placed on record. Therefore, the writ petitioners cannot

maintain the above writ petition by relying upon a judgment, wherein the Board

was reconstituted with the consent of both the parties.

25. It is useful to refer to Section 25(3) & (4) of the Act and Rules 55A,

56(4), 57, 58 and 59 of the patents rules, 2003. Section 25(3) of the Act, reads

thus:

(3) (a) Where any such notice of opposition is duly given

under sub-section (2), the Controller shall notify the patentee.

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(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 (b)

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 the patentee and the opponent an

opportunity of being heard, the Controller shall order either to

maintain or to amend or to revoke the patent.

26. Rules 55A, 56(4), 57, 58 and 59 of the patents rules, 2003, are as

under:

Rule 55A. Filing of notice of opposition.

The notice of opposition to be given under sub-section (2)

of section 25 shall be made in Form 7 and sent to the Controller

in duplicate at the appropriate office.

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.

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(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 two months

from the date on which the documents were forwarded to them.

Rule 57. Filing of written statement of opposition and

evidence The opponent shall send a written statement in

duplicate setting out the nature of the opponent’s interest, the

facts upon which he bases his case and relief which he seeks and

evidence, if any, along with notice of opposition and shall deliver

to the patentee a copy of the statement and the evidence, if any.

Rule 58. Filing of reply statement and evidence (1) If the

patentee desires to contest the opposition, he shall leave at the

appropriate office a reply statement setting out fully the grounds

upon which the opposition is contested and evidence, if any, in

support of his case within a period of two months from the date

of receipt of the copy of the written statement and Opponent’s

evidence, if any by him under rule 57 and deliver to the opponent

a copy thereof. (2) If the patentee does not desire to contest or

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W.P. No.8451 of 2023

leave his reply and evidence within the period as specified in

sub-rule (1), the patent shall be deemed to have been revoked.

Rule 59. Filing of reply evidence by opponent The

opponent may, within one month from the date of delivery to him

of a copy or the patentee’s reply statement and evidence under

rule 58, leave at the appropriate office evidence in reply strictly

confined to matters in the patentee’s evidence and shall deliver

to the patentee a copy of such evidence."

27. A conjoint reading of the abovesaid rules clarifies the procedure to be

followed by the Opposition Board, while making the recommendation. The

judgments cited by Mr.P.S.Raman, learned senior counsel, involves the question

of dealing with the procedural violation, if any, while making the

recommendation. Though, it is the contention of the petitioner that there is a

procedural violation in the present recommendation as the evidence of the

patentee are not considered, a reading of the recommendation would show the

discussions on the materials placed before the Board. At the same time, what

has been challenged is only a recommendation and a final decision is not yet

taken by the authorities. It is to be noted that after the recommendation has

been made, an opportunity of hearing will be given as per Rule 62(1) of the

Patents Rules, 2003. For the sake of convenience, it is necessary to extract Rule

62(1) of the Patents Rules, 2003, as under:

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W.P. No.8451 of 2023

"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."

28. Therefore, even if the petitioners are aggrieved by the

recommendation, it is always open to the petitioners to place all their objections

before the competent authority including the contention of non-application of

mind or non-consideration of patentee's evdience by the opposition Board and

any other objections to be raised could be placed before the patent authority.

29. The next point to be cosnidered is whether any prejudice will be

caused to the petitioner in the event, the impugned recommendation is not set

aside by this court. As discussed supra, when there is an opportunity of hearing

under Rule 62, the petitioner is entitled to place all the submissions and

objections during the hearing.

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W.P. No.8451 of 2023

30. Thus, as the petitioners are challenging the recommendation only on

the ground that the documents were not considered by the Opposition Board, the

same can also be rasied before the controller while a final deicision is made.

Looking at any angle, it is only a recommendation and it is only for the patent

authority to decide the post grant opposition on its own merits. The patent

authority may concur with the recommendations or may reject the

recommendations and even call for a fresh constitution of the Board. When such

being the case, there is no impediment for the petitioner in taking part in the

final decision making process conducted by the patent authority and raise these

objections. There is also an appeal provision to challenge the said final order to

be passed by the competent authority under Section 117A of the Act. This Court

does not find any merit in the prayer sought by the petitioners to re-issue the

recommendation. Therefore, this Court is not inclined to quash the

recommendation.

31.Accordingly, the Writ Petition is dismissed as not maintainable. No

costs. Consequently, the connected writ miscellaneous petitions are closed.

05.01.2026

Asr

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W.P. No.8451 of 2023

Index : Yes/No

Neutral Citation: Yes/No

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W.P. No.8451 of 2023

To

1.Union of India

Through the Ministry of Commerce

Department of Industrial Policy & Promotion

Udyog Bhawan

New Delhi 110 011

2.The Controller of Patents & Designs

The Patent Office

Intellectual Property Office Building

G.S.T. Road, Guindy,

Chennai - 600 032

3.Zydus Healthcare Limited

of Zydus Corporate Park

Scheme No.63, Survey No.536

Khoraj (Gandhinagar), Nr.Vaishnodevi Circle

Ahmedabad, Gujarat 382 481

India

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W.P. No.8451 of 2023

N.SENTHILKUMAR, J.

Asr

W.P. No.8451 of 2023

Dated : 05.01.2026

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