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REPORTABLE IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION        

CIVIL APPEAL NO(s).8479-8480 OF 2012 (arising out of SLP(C)No(s).34504-34505/2012 )

CIPLA LTD.                                 Appellant(s)

                VERSUS

UNION OF INDIA AND OTHERS                  Respondent(s)

O R D E R

Leave granted.

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 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  

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.

Heard  Mr.  Harish  Salve,  learned  senior  counsel  

appearing for the appellant and Mr. T.R. Andhyarujina, learned  

senior counsel appearing for Respondent Nos.2 and 3 at length.  

Detailed arguments were addressed with regard to the correctness

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or otherwise of the order passed by the Controller as well as by  

the High Court and the consequences thereof.

We  find  it  unnecessary  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 Section 25(4) of the Act to the parties.

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 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, but before the expiry of period of one year from the  

date of 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.

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)

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of Section 25(3) says that every Opposition Board constituted  

under clause (b) shall conduct examination in accordance with  

such procedure 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:

“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.

(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 rule 57 to 60 referred  

to under sub-section (3) of section 25, submit a  

report with reasons on each ground taken in the

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notice  of  opposition  with  its  joint  

recommendation within three months from the date  

on which the documents were forwarded to them.”

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  

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.   

The aforesaid provisions indicate that the Opposition  

Board has to conduct an examination of notice of opposition  

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.

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  

revoke  the  patent.   The  procedure  to  be  followed  by  the  

Controller is provided in Rule 62 of the Rules, which reads as  

follows:

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“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.

(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.

(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 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 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.”

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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  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 Controller to take into consideration the reasons  

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.

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  

has novelty, inventive steps etc.  Such recommendations are made  

after examining the evidence adduced by the parties before it.  

Unless the parties are informed of the reasons, for making such  

recommendations they would not be able to effectively advance

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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 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  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.  

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  

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 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

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Patent Appeal No.695 of 2012 also would stand set aside.

Recommendation  made  by  Opposition  Board  is  now  

available with the parties, hence we direct the Controller to  

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  

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.

The  Civil  Appeal  is  disposed  of  as  above  with  no  

order 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.

....................J. [K.S. RADHAKRISHNAN]   

....................J. [DIPAK MISRA]          

NEW DELHI; NOVEMBER 27, 2012