In a patent pre-grant opposition case, Delhi High Court Judge Pratibha Singh held that the opponent in the case cannot be in the dark about developments in the case such as amendments to the patent application and other developments in the examination process. The judge also observed that after deciding whether an amendment by the patent applicant should be allowed or not, a short order should be passed which should be updated in the Patent Office website so concerned parties may be informed of the developments.
The order came in the case of pre-grant opposition proceedings being launched against Novartis AG by Natco Pharma Ltd. Natco also asked to set aside the order of the Asst. Controller refusing the application for cross-examination of the Applicant’s witnesses. They also further argued that Patent office would have to give an indication whether amendments were allowed or not and which set of claims is the final set that will be considered for grant.
Natco also submitted that the pre-grant opponent should receive sufficient chance to be heard and that they should be given the opportunity to cross-examine the witnesses as the affidavits filed by the Applicants were completed by the parties and no leave was taken.
Novartis averred that the patent application that had been filed in 2007 had not proceeded further due to the many pre-grant opposition claims. The term of the patent expires in 2026, leaving only four more years of life for the patent.
The court observed that there was significant delay caused in the patent application by both parties. As it was amended four times resulting in a total of five claims and was also obstructed by many pre-grant oppositions. Due to an absence of time limits for filing of pre-grant oppositions, it often happens that many oppositions are filed due to delays in already filed oppositions that results in further delays.
The opponent was finally granted the right to file affidavits of its own expert witnesses as rebuttal.