Rule 57 Of Patent Rules| Post Grant Opposition Unaccompanied By Any Supporting Affidavit Does Not Constitute 'Evidence': Delhi HC Reaffirms

While quashing the recommendation of the Opposition Board and permitting the documents filed by third Respondent to be treated as evidence led under Rule 57 of the Patent Rules 2003, the Delhi High Court requested the Controller General to ensure that there is strict compliance with the provisions of the Patents Rules, particularly Rule 57, read with the judgment of the Supreme Court in Cipla v. Union of India [(2012) 13 SCC 429], while dealing with and processing pre or post-grant oppositions.

A Single Judge Bench of Justice C. Hari Shankar observed that, "Rule 57 envisages the filing only of a written statement/post grant opposition and evidence. Documents, unaccompanied by any supporting affidavit, do not constitute “evidence”

“The additional evidence led by the petitioner shall be treated as evidence led in terms of Rule 58 of the Patents Rules. The rejoinder affidavit filed by Respondent 3 on 22 May 2019 shall stand struck off the record. The matter would be placed before the Opposition Board, to take a fresh decision, de novo, after considering all the documents including the documents filed by Respondent 3 along with its post grant opposition on 24 September 2018, the affidavit of Poonam Raghuvanshi in support thereof, the reply statement filed by the petitioner on 14 February 2019 and the evidence, if any, which the petitioner would lead in accordance with the permission granted by this Court today”.

Advocate Pravin Anand appeared for the Petitioner, whereas Advocate Bitika Sharma appeared for the Respondent.

The brief facts of the case were that in the year 2017, the petitioner’s Patent IN 287720 (IN’720) was granted by the Indian Patent Office in respect of an invention titled “HIF-1α prolyl hydroxylase inhibitor compounds”. It had approached the High Court challenging the post grant opposition filed to the patent with certain documents, claiming lack of evidence.

After considering the submission, the Bench noted that Rule 57 deals with the filing of a post-grant opposition and it permits the filing of a post-grant opposition “and evidence”.

The Bench further noted that Section 79 of the Patents Act is categorical in requiring evidence to be given by affidavit, subject to the power of the Controller to, in an appropriate case, permit oral evidence in lieu thereof.

In any event, mere documents, filed with the post grant opposition, cannot constitute “evidence” under the Patents Act or the Patents Rules, added the Bench.

The High Court went on to elucidate that it is settled, from the times of Taylor v. Taylor [(1875) 1 Ch D 426] that, where the law requires an act to be done in a particular manner, the act must be done in that manner alone, or not done at all, and all other methods of doing the act are necessarily forbidden.

The High Court further stated that once the post grant opposition and evidence thus stands filed by the post grant opponent under Rule 57, the patentee is permitted, under Rule 58, to file a “reply statement”, again accompanied with “evidence, if any, in support of his case”.

At the same time, the High Court agreed with the contentions of the Petitioner’s counsel that Rule 59 does not envisage, or permit, filing of any “rejoinder” by the post grant opponent, and rather it permits the post grant opponent to file evidence, and nothing more.

At last, the High Court therefore directed the Controller General to proceed further and clarified that in case either of the parties’ desires to lead any further evidence, that would have to abide by Rule 60 of the Patent Rules, and a separate application would have to be moved in that regard and it would be for the Controller General to take a decision in that respect.

Cause Title: AKEBIA THERAPEUTICS INC. v. CONTROLLER GENERAL OF PATENTS, DESIGN, TRADEMARK AND GEOGRAPHICAL INDICATIONS, and ORS.

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