Madras High Court’s Ruling on a recent Post-Grant Patent Opposition for Ashok Leyland Case

[Contributor - Jaspreet Kaur]

Grounds for Post-Grant Opposition:?According to Section 25(2) of the Patents Act, any interested party can file a post-grant opposition within 12 months of the date of publication of the grant of a patent. Grounds for opposition include prior publication, public use, non-patentable subject matter, obviousness, and insufficiency of disclosure.

Opposition Board’s Role:?The Controller of Patents & Designs constitutes an Opposition Board under Section 25(3) of the Patents Act. This Board examines the patent based on documents submitted by the opponent and the patentee.?Within three months, the Board provides recommendations to the Controller, along with reasoning for each ground mentioned in the notice of opposition.

Board’s Recommendations:?While the Board’s recommendations are persuasive rather than binding, they play a crucial role in post-grant opposition proceedings.?The recommendations must be shared with the parties before any hearing is scheduled.

In a recent ruling, the Madras High Court addressed a patent dispute between Ashok Leyland Limited (the Appellant) and The Controller of Patents & Designs (Respondent No. 1), Tata Motors Ltd. (Respondent No. 2). The patent in question (Patent No. IN387429) titled “Multi-Axle Vehicle Configuration having Heavy Duty Lift Axle”.

Tata Motors Ltd. opposed the grant of this patent, citing grounds such as prior publication, public use, non-patentable subject matter, obviousness, and insufficiency of disclosure under Section 25(2) of the Patents Act.

Upon receiving the opposition application, the Controller of Patents & Designs (Respondent No. 1) constituted an Opposition Board (“Board”) under Section 25(3) of the Patents Act. During opposition proceedings, both parties submitted documents, including written submissions, reply statements, and affidavits from technical experts.

The Board’s Recommendations in Ashok Leyland Case

The Board submitted its recommendations (“report”) to the Controller. Appellant filed a writ petition before the IPD of the HC to challenge the report. Appellant contended that the Board failed to consider the evidence submitted by both parties and merely copied portions from their written submissions. IPD dismissed the writ petition. Aggrieved by this, Appellant filed an Appeal to the Division Bench of Madras HC.

The Court’s Decision

The Division Bench allowed the writ appeal and set aside the single judge’s order. It directed the patent office to reconstitute another Opposition Board to examine the matter afresh, emphasizing the need to consider the evidence presented by both the Appellant and Respondent No. 2. Importantly, the Court refrained from reviewing the procedure adopted by the Board, as it is expressly laid down in the Patents Act and Rules.

The judgment highlights the importance of thoroughly examining evidence submitted by both parties during opposition proceedings. The Board’s recommendations should be based on a comprehensive evaluation of this evidence. The Court’s decision strikes a balance between ensuring fairness in the examination process and respecting established procedures.

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