Novo Nordisk A S vs Union Of India & Ors. on 3 June, 2022

[Cites 2, Cited by 1]

Delhi High Court

Novo Nordisk A S vs Union Of India & Ors. on 3 June, 2022

1. W.P.(C)-IPD 14/2022 has been filed seeking directions to Respondents No.2 and 3 to fix Petitioner's post-grant opposition, filed against Respondent No.4/Novo Nordisk A/S (patentee), with respect to patent No. IN 257402, for hearing under Rule 62(1) of the Patent Rules, 2003 (hereinafter referred to as 'Rules') and adjudicate the same at the earliest, in accordance with law.

2. Patentee had filed a patent application bearing No. 2771/DELNP/2006, which was granted on 04.10.2013 and the Petitioner, through its predecessor-in-interest, filed a post-grant opposition on 29.09.2014, under Section 25(2) of the Patents Act (hereinafter referred to as 'Act') against the impugned patent. On 27.08.2019, Recommendation of the Opposition Board was communicated to the parties and a hearing was scheduled under Rule 62(1) of the Rules. However, the proceedings did not progress for one reason or the other, constraining the Petitioner to file a writ petition before this Court being W.P.(C)-IPD 19/2021, wherein vide order dated 01.09.2021, the Court directed the Competent Authority to furnish a fresh Board Recommendation, in light of the withdrawal of experts' affidavit by the Petitioner, within a week and directed the hearing to be scheduled on 18.10.2021.

3. It is the case of the Petitioner that as a counter blast to the said writ petition and to delay the opposition, the patentee filed a writ petition being W.P.(C)-IPD 14/2022 & 15/2022 Page 2 of 5 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:07.06.2022 10:55:13 W.P.(C)-IPD 22/2021 seeking cross examination of witnesses of Respondent No.5/USV Private Limited, in a separate opposition proceeding, against the same patent. A separate order was passed in the said writ petition on 01.09.2021, granting the patentee an opportunity to cross examine the witnesses in USV Opposition.

4. It is the grievance of the Petitioner that there is total inaction and delay on the part of Respondents No.2 and 3 in hearing and adjudicating the opposition proceedings, even after express directions of this Court and thus having no other option, the present writ petition has been filed by the Petitioner.

5. W.P.(C)-IPD 15/2022 has been filed by the Petitioner seeking directions to Respondents No.2 and 3 to constitute an Opposition Board in terms of Rule 56(1) read with Section 25(3) of the Act as well as to issue fresh Recommendation of the Opposition Board, in the post-grant opposition filed by Respondent No.5/Sun Pharmaceutical Industries Limited as well as by Respondent No.4/USV Private Limited and to schedule a hearing in the two post-grant oppositions, within the time period prescribed in the Circular dated 24.01.2020.

6. It is the grievance of the Petitioner inter alia that the Recommendation of the Opposition Board indicates that the same has been signed only by the Chairman of the Board, indicating that the Board was not constituted within the meaning of Section 25(3) read with Rule 56(1) of the Act, which vitiates the Recommendation. It is also contended that the Recommendation circulated to the parties on 16.02.2022 is a verbatim copy of the earlier purported Recommendation, received on 21.08.2019, except for the last page and shows that the whole exercise was only an eye wash.

W.P.(C)-IPD 14/2022 & 15/2022 Page 3 of 5 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:07.06.2022 10:55:13

7. Learned Counsel appearing on behalf of the Controller of Patents & Designs, on instructions, submits that the contention of the Petitioner in W.P.(C)-IPD 15/2022 to the extent that the Board was not properly constituted is incorrect. The record shows that the Board was constituted by three members including the Chairman and is in accordance with the requirement of the Act. It is further submitted that the Recommendation is also in accordance with law and requires no interference.

8. Having canvassed some arguments, learned counsel appearing for the Petitioner in W.P.(C)-IPD 15/2022 submits that the representation made by the Petitioner on 13.05.2020, is pending consideration and suffice would it be if an order is passed directing its disposal in a time bound manner. Learned Senior Counsel appearing for the Petitioner in W.P.(C)-IPD 14/2022 submits that the Petitioner would be satisfied if a direction is given for an expeditious disposal of its post-grant opposition.

9. Having heard the learned Senior Counsel and the other learned counsels for the respective parties, the following directions are passed:

(a) Representation dated 13.05.2022 filed by the Petitioner in W.P.(C)-

IPD 15/2022 shall be decided by the Competent Authority, within a period of two weeks from today. Needless to state the representation shall be decided in accordance with law.

(b) Insofar as the post-grant proceedings relating to the patent in W.P.(C)-IPD 14/2022 are concerned, the proceedings shall be held before the Controller on 01.07.2022.

10. It is made clear that this Court has not expressed any opinion on the merits of the case in both the petitions and all rights and contentions of the parties are left open.

W.P.(C)-IPD 14/2022 & 15/2022 Page 4 of 5 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:07.06.2022 10:55:13

11. Petitions are disposed of in the aforesaid terms along with the pending application.

JYOTI SINGH, J JUNE 03, 2022/rk W.P.(C)-IPD 14/2022 & 15/2022 Page 5 of 5 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:07.06.2022 10:55:13

Unlock Advanced Research with PRISMAI

Delhi High Court