K.N. Basha, J
1. The challenge in this appeal is to the order passed by the Dy. Controller of Patents & Designs, Patent Office, Mumbai dated 26.6.2013 revoking the
patent under Section 25(4) of the Patents Act, 1970 (hereinafter called as the 'Act').
2 . The appellant is the patentee and they have filed the patent application No. 897/MUM/2007 at Mumbai Patent Office on 20.5.2007. After
following the initial procedure by publication in the Government Gazette, a pre-grant Opposition was filed by the first respondent alone on 5.2.2009 and
after hearing both the parties pre-grant Opposition was rejected on 30.06.2009. The said order was challenged by filing a review petition by the first
respondent herein, which was also rejected on 25.09.2009 and ultimately Patent No. 236630 was granted to the appellant herein.
3. However, post-grant Opposition was filed by the respondents 1 and 2 and it has to be stated that the second respondent was not in the picture
during the pre- grant Opposition proceedings and the joint opposition was filed only in the post-grant Opposition.
4. Post grant opposition as stated above was filed jointly by the respondents 1 and 2 on 22.11.2010. Both the patentee as well as the opponent have
filed their respective affidavit of experts. They have also exchanged their respective replies in the interlocutory petition filed by the second respondent
to correct the affidavit of Mr. Borzatta regarding the rectified document dated 1.12.2010. The appellant filed their reply with evidence of Dr.
Prabuddha Ganguli. The reply statement is also filed by the opponent. It is seen the Opposition Board on examination of affidavits and other materials
filed by both sides given their report recommending the grant of patent to the appellant viz., the patentee. After hearing the parties, the Deputy
Controller of Patents and Designs, Mumbai passed the impugned order dated 26.6.2013 allowing the post grant Opposition.
5. Ms. Rajeswari, H., the learned counsel for the appellant and Ms. Karuna Goleria, the learned counsel for the second respondent are present today.
6 . The learned counsel for the appellant would mainly contend that the impugned order was passed in gross violation of the principles of natural
justice. It is contended that the findings given by the Deputy Controller of Patents and Designs while rejecting the pre-grant Opposition in respect of
the documents D1 and D2 would operate as res judicata and the same cannot be considered in the post grant Opposition proceedings. It is pointed out
that for the said specific plea raised, the Deputy Controller of Patents and Designs has not given any specific findings whether the principles of res
judicata would operate in the instant case or not and on the other hand the learned Deputy Controller of Patents and Designs proceeded with the
matter on the ground of 'person interested' in the matter and the opponent can very well file post-grant Opposition. It is further contended that the
Opposition Board failed to consider the expert evidence given by the appellant through the affidavit of Dr. Prabuddha Ganguli and as a result the
appellant has been deprived of their opportunity to substantiate their claim in respect of patent. The learned counsel would also submit that the learned
Deputy Controller of Patents and Designs has simply overlooked the recommendation of the Opposition Board and appreciated the claim on its own
and ultimately arriving at the conclusion rejecting the claim of the appellant for patent.
7. Ms. Karuna Goleria, the learned counsel appearing for the second respondent would contend that there is no illegality or infirmity in the impugned
order. It is contended that the impugned order was not passed in violation of the principles of natural justice. The learned counsel for the second
respondent would contend that the learned Deputy Controller of Patents and Designs has considered each and every recommendation of the
Opposition Board and there may not be any grievance for the appellant at all. In order to substantiate such contention, the learned counsel for the
second respondent would also point out the relevant paragraphs of the impugned order. It is submitted by the learned counsel for the second
respondent that if the instant case is considered on merits, the respondent would make out a clear case to the effect that the appellant is not at all
entitled to claim Patent.
8 . We have carefully considered the rival contentions put forward by either side and also perused the impugned order coupled with the other materials
available on record.
9 . At the outset it is to be stated that the perusal of the impugned order makes it abundantly clear that the learned Deputy Controller of Patents and
Designs has incorporated the claims and contentions put forward by the appellant and the opponents, but has not assigned any definite finding coupled
with reasons in respect of the main issues involved in the instant case. We have also perused the recommendation of the Opposition Board and it is
seen that the Opposition Board has ignored and overlooked the expert's evidence given by the appellant through Dr. Prabuddha Ganguli, it is to be
stated that the Opposition Board has to examine each and every expert evidence given by way of affidavit by both sides. It is frequently pointed out
by this Bench in number of matters more particularly in the order dated 17.05.2013 as per order No. 107 of 2013 in O.A. No. 5/2013/PT/DEL
observing that it was essential that the Opposition Board had the opportunity to consider it before forwarding the recommendations. It is also pointed
out that the Opposition Board's recommendations should not be defective in any manner as the same would result in the decision of the learned
Deputy Controller of Patents and Designs would become flawed. The non-consideration of the expert evidence of the appellant would certainly
deprive the appellant from substantiating their claim for the patent.
10 . Yet another infirmity found in the impugned order is that the learned Deputy Controller of Patents and Designs has referred about the expert's
evidence filed by way of affidavit of Dr. Prabuddha Ganguli but there is no specific finding to the effect whether the learned Deputy Controller of
Patents and Designs is accepting such expert evidence or not, which is seen that the learned Deputy Controller of Patents and Designs has simply
stated that the Opposition Board has missed the points. It is pertinent to note that even in respect of the other expert evidence of Mr. Boraztta the
learned Deputy Controller of Patents and Designs has stated that he is not able to reach any conclusion. It is also stated in respect of certain other
aspects on the basis of the affidavits filed by some expert, the learned Deputy Controller of Patents and Designs has taken a favorable view for the
appellant.
11. At the risk of repetition, we have to reiterate that the reading of the impugned order reflects total non-application of mind of the learned Deputy
Controller of Patents and Designs in respect of the recommendation given in favour of the appellant/patentee by the Board of Opposition, as the
impugned order does not contain reasons for overlooking the recommendation of the Opposition Board.
1 2 . The last but not the least infirmity found in the impugned order is that the appellant has raised a specific plea of 'res judicata' contending that the
findings rendered in pre-grant Opposition proceedings against the same opponent as the learned Deputy Controller of Patents and Designs in the
impugned order has not given any specific finding whether he is accepting the said contention or not. It is pertinent to note that overlooking the said
legal aspect, the learned Deputy Controller of Patents and Designs has proceeded to consider the post grant Opposition mainly on the basis of 'person
interested'.
13. The learned counsel for the second respondent has also contended that the case on hand is considered on merits the appellant would have any
case at all, as the learned counsel for the second respondent would convince that the claim of the appellant has been rightly rejected by the learned
Deputy Controller of Patents and Designs. We are not going into the merits of the case at all. It is to be stated that as we are convinced that the
learned Deputy Controller of Patents and Designs and has not followed the well established procedure and passed the impugned order in flagrant
violation of the principles of natural justice. Therefore we have left with no other alternative, except to set aside the impugned order.
14. In view of the aforesaid reasons, we are allowing the appeal and the impugned order dated 26.6.2013 passed by the learned Deputy Controller of
Patents and Designs, Mumbai is set aside. Consequently, we are directing the Opposition Board to constitute the Board again and thereafter to
consider the expert evidence given by both sides viz., the applicant as well as the opponents and give their recommendations by furnishing their report
and enable them to give their reply for the same. On receipt of Opposition Board recommendation, the learned Deputy Controller of Patents and
Designs, Mumbai shall afford a reasonable opportunity to both sides viz., the applicant and to the opponents to put forth their case and thereafter to
pass the order in the Patent application filed by the applicant in accordance with law and on merits by considering each and every point raised in the
matter and by assigning valid reasons. It is made clear that the above said exercise shall be completed with a period of six months from the date of
receipt of a copy of this order. Consequently connected M.P. No. 5 of 2014 is closed. No costs.
