CIPLA LTD.versusUNION OF INDIA & ORS.

                       [2012) 11 S.C.R. 102


A                            CIPLA LTD.
                                  v.
                      UNION OF INDIA & ORS.
              (Civil Appeal Nos. 8479-8480 of 2012)
                       NOVEMBER 27, 2012
B
       [K.S. RADHAKRISHNAN AND DIPAK MISRA, JJ.]

         Natural Justice - Application for revocation of patent -
    Patent revoked by Controller - By placing reliance on the
C   recommendation of the Opposition Board, but without giving
    copy of the report of the Opposition Board to either of the
    parties - Held: The order of the Controller is vitiated for
    violation of principles of natural justice - Therefore, order of
    Controller set aside - Recommendations of Opposition Board
o   now available with the parties - Direction to Controller to
    dispose of the matter afresh after hearing all the parties and
    also affording them opportunity to raise contentions for and
     against the recom High mendation of the Opposition Board
    - Patents Act, 1970 - s. 25(2).
E       CIVIL APPELLATE JURISDICTION : Civil Appeal Nos.
    8479-8480 of 2012.

          From the Judgment & Order dated 8.10.2012 and
    12.10.2012 of the High Court of Delhi at New Delhi in Writ
F   Petition (C) No. 6361 of 2012 and in LP.A. No. 695 of 2012
    respectively.

      Harish Salve, T.R. Andhyarujina, Pratibha M. Singh, Saya
  Chowdhry, Bitika Sharma, Surbhi Mehta, Varun Tikmani,
  Gaurav Sharma, Pravin Anand, Hari Shankar K., Archana
G Shanker, Aditya Gu'pta, Vikas Singh Jangra, Aditya Verma, C.
  Mukund, P.V. Saravana Raja, Ekta Bhasin, Gagan Gupta for
  the Appearing Parties.

         The following Order of the Court was delivered
H                                 102
         CIPLA LTD. v. UNION OF INDIA & ORS.                    103


                            ORDER                                     A
      1. Leave granted.

      2. Sugen Inc. USA and Pharmacia and Upjohn Company
 USA filed an application on 9.8.2002 for the grant of patent.
 The application was recommended for grant of patent on               B
 23.8.2007 and was finally alloted the patent No.209251, which
 was published in the Patent Office Journal under Section 43(2)
 of the Patents Act, 1970 (for short. "the Act"). Cipla Ltd. filed
 an application under section 25(2) of the Act on 1.9.2008 for
 revocation of the said patent, before the Assistant Controller       C
 of Patent and Design (in short, "the Controller"), who vide his
 order dated 24th September, 2012 revoked the patent which
 gave rise to this litigation.

     3. Heard Mr. Harish Salve, learned senior counsel                0
appearing for the appellant and Mr. T.R. Andhyarujina, learned
senior counsel appearing for Respondent Nos.2 and 3 at length.
Detaiied arguments were addressed with regard to the
correctness or otherwise of the order passed by the Controller
as well as by the High Court and the consequences thereof.
                                                                      E
     4. We find it unneet::ssary to examine all those contentions
since we are sending this matter back to the Controller for fresh
consideration in accordance with law. The main controversy
raised in the case is on the non-furnishing of the copy of the
recommendation of the Statutory Board constituted under               F
Section 25(4) of the Act to the parties.

     5. Chapter V of the Patents Act, 1970 (for short; "the Act")
deals with the Opposition Proceedings to grant of patents.
Section 25(1) of the Act enables any person to represent by           G
way of Opposition to the Controller against the grant of patent,
but before a patent has not been granted. Sub-section (2) of
Section 25 enables any person interested to give notice of
opposition to the Controller at any time after the grant of patent,
hut before the expiry of period of one year from the date of          H
     104      SUPREME COURT REPORTS                [2012] 11 S.C.R.


A publication of grant of the patent. Clauses (a) to (k) of this sub-
  section are the grounds which can be taken by any person. It
  is specifically made clear that in sub-sections (1) and (2) of
  Section 25 of the Act that no other grounds are available to be
  taken by any person.
B
        6. Section 25(3)(b) of the Act deals with the constitution
  of the Opposition Board for examination and submission of its
  recommendations to the Controller. Clause (c) of Section 25(3)
   says that every Opposition Board constituted under clause (b)
   shall conduct examination in accordance with such procedure
C as may be prescribed. Chapter VI of the Patent Rules, 2003
   (for short, "the Rules") deals with the Opposition proceedings
   to grant of patents. Rule 56 deals with the constitution of
   Opposition Board and its proceeding. Rule 56 is given below
   for easy reference:
D
         "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
E
           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.
 F
           (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.
 G         (4) The Opposition Board shall conduct the examination
           of the notice of opposition along with documents filed under
           rule 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
 H
         CIPLA LTD. v. UNION OF INDIA & ORS.                   105


     three months from the date on which the documents were          A
     forwarded to them."

     7. Rule 57 deals with filing of written statement of
opposition and evidence. Rule 58 deals with filing of reply
statement and evidence. Rule 59 deals with filing of reply           B
evidence by opponent. Rule 60 says that no further evidence
shall be delivered by either party except with the leave or
directions of the Controller.

     8. The aforesaid provisions indicate that the Opposition
Board has to conduct an examination of notice of opposition          C
along with the documents filed under Rules 57 to 60 and then
to submit a report with reasons on each ground taken in the
notice of opposition. The Opposition Board has, therefore, to
make recommendation with reasons after examining
documents produced by the parties as per Rules.                      D

      9. Section 25(4) of the Act says that 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          E
revoke the patent. The procedure to be followed by the
Controller is provided in Rule 62 of the Rules, which reads as
follows:

    "62. Hearing - (1) On the completion of the presentation
    of evidence, if any, and on receiving the recommendation F
    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.                  G

    (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.
                                                                     H
      106       SUPREME COURT REPORTS                 [2012] 11 S.C.R.


A           (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
B
            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
c           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."

0        10. Sub-rule (1) of Rule 62 confers power on the Controller
   to require members of Opposition Board to be present in the
   hearing after receiving recommendation of the Opposition
   Board. The Controller, after hearing the parties if they so desire
   and after taking into consideration the recommendation of the
E Opposition Board, has to decide the opposition giving reasons.
   Provisions of the Act and the Rules, therefore, clearly indicate
   that the Opposition Board has to make its recommendations
    after considering the written statement of opposition, reply
   statement, evidence adduced, by the parties with reasons on
  .each ground taken by the parties. Rule 62 also empowers the
F Controller to take into consideration the r,easons stated by the
    Opposition Board in its Report. In other words, the Report of
    the Opposition Board has got considerable relevance while
    taking a decision by the Controller under Section 25(4) of the
    Act read with Rule 62(5) of the Rules.
G
            11. The Opposition Board in a given case may make a
      recommendation that the patent suffers from serious defects
      like lack of novelty, lack of inventive steps etc., so also it can
      recommend that the patent shall be granted since the invention
    H has novelty, inventive steps etc. Such recommendations are
         CIPLA LTD. v. UNION OF !NOIA & ORS.                     107


 made after examining the evidence adduced by the parties A
 before it. Unless the parties are informed of the reasons, for
 making such recommendations they would not be able to
effectively advance their respective contentions before the
Controller. Section 25(3)(b) read with Rule 56(4) cast no
obligation on the Opposition Board to give a copy of the Report B
to either of the parties. So also no obligation is cast under
Section 25(4) or under Rule 62 on the Controller to make
available the report of the recommendation of the Opposition
Board. But considering the fact that the Report of the
Opposition Board can be crucial in the decision making C
process, while passing order by the Controller under Section
25(4), principles of natural justice must be read into those
provisions. Copy of the Report/recommendation of Opposition
Board, therefore, should be made available to the parties
before the Controller passes orders under Section 25(4) of the
Act.                                                            0

      12. We have gone through the order passed by the
 Controller and we notice that Controller has placed reliance on
 the recommendation of the Opposition Board, but without giving
copy of the report to either of the parties. Hence, order is           E
vitiated for violation of principle of natural justice. Order passed
by the Controller on 24.9.2012 is, therefore, set aside. Since
we have set aside order passed by the .controller on the ground
of violation of principles of natural justice, the order passed by
learned Single Judge of the High Court on 8.10.2012 in Writ            F
Petition No.6361 of 2012 as well as the order passed by the
Division Bench of the High Court on 12.10.2012 in Letters
Patent Appeal No.695 of 2012 also would stand set aside.

     13. Recommendation made by Opposition Board is now
available with the parties, hence we direct the Controller to          G
dispose of the matter afresh after hearing all the parties and
also affording them an opportunity to raise their contentions for
and against the recommendation of the Opposition Board. The
Controller would dispose of the matter within a period of one
                                                                       H
   108       SUPREME COURT REPORTS              [2012] 11 S.C.R.


A month from the date of communication of copy of this order.
  Since the matter is remitted to the Controller, the Writ Petition
  No.6361 of 2012, pending before the Delhi High Court also
  stands disposed of.

         14. The Civil Appeal is disposed of as above with no order
8 as to costs. We make it clear that we are not expressing any
    opinion on the various contentions raised by the parties before
    us and are left to be decided by the Controller.

    K.K.T.                                    Appeal disposed of.