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9. An objection was taken by J. Mitra & Co. to the maintainability of the appeal before the High Court on the ground that the appeal was required to be transferred to the IPAB in terms of Section 117 G notified with effect from 2nd April 2007. By a judgment dated 1st April 2008 the High Court held that in view of the fact that Section 25 (2) which provided for a post-grant opposition was introduced only on 4th April 2005 and Section 117 A was notified with effect from only 2nd April 2007, the appeal filed by Span in the High Court on 17th October 2006 under Section 116 was maintainable before it. However, even while it noted that no appeal against an order under Section 25 (1) of the Patents Act was maintainable before the IPAB, the High Court transferred the said appeal also to the IPAB because Section 117 G mandated that "all appeals against any order or decision of the Controller" would get transferred to the IPAB.

Where the pre-grant opposition is rejected and patent is granted

15. In the first eventuality, where the pre-grant opposition is rejected, it is apparent from the decision in J. Mitra and from a reading of Section 25 with Section 117A that as long as the person who has filed that opposition happens to be a person interested, he would, after 1st January 2005 [the date with effect from which Section 25 (2) came into force although the provision was introduced only on 4th April 2005] have the remedy of filing a post-grant opposition. He can, after 2nd April 2007, also file an application before the IPAB under Section 64 of the Patents Act for revocation of the patent. In other words, as explained by the Supreme Court in J. Mitra & Co. as long as that person is able to show that he is a person „interested‟, he is not without a remedy after his pre-grant opposition is rejected. He in fact has two remedies. W.P. (C) Nos. 332 of 2010 & 13295, 12006, 8393, 8392 & 8389 of 2009 page 11 of 25 Even if his post-grant opposition is rejected, he can thereafter file an appeal to the IPAB under Section 117A. Against the decision of the IPAB in either event he will have the remedy of seeking judicial review in accordance with law by filing a petition in the High Court. At this juncture it may be noticed that in an order dated 2nd March 2009 in SLP (C) No. 3522 of 2009 (Indian Network for People with HIV/AIDS v. F.Hoffman-La Roche) the Supreme Court permitted the unsuccessful pre-grant opposer, who had challenged the rejection of his opposition by the Controller, to participate in the post-grant stage.

W.P. (C) Nos. 332 of 2010 & 13295, 12006, 8393, 8392 & 8389 of 2009 page 17 of 25

26. In the counter affidavit filed by RLL it has been urged that the petition should be dismissed both on the ground of maintainability as well as on merits.

27. In view of the decision of this Court as detailed hereinbefore, this Court declines to exercise its jurisdiction under Article 226 to entertain this petition, not because it does not have the power to do so, but because in the considered view of this Court, the Petitioner has an efficacious remedy by way of an appeal under Section 117 A of the Patents Act before the IPAB. The order refusing the grant of patent is in fact an order under Section 15 of the Patents Act which in terms of Section 117 A is an appealable order. If the appeal before the IPAB is filed by Eli Lilly & Co within a period of two weeks from today, accompanied by an application for condonation of delay in filing the appeal, the IPAB will consider and decide such application, after hearing RLL. The IPAB will take into account the period during which Eli Lilly & Co.‟s review application against the order dated 22nd March 2007 and thereafter the present writ petition were pending. All contentions of both Eli Lilly & Co. and RLL are left open to be urged before the IPAB which will be dealt with such contentions in accordance law. The petition is disposed of in the above terms.

W.P. (Civil) Nos. 8392& 8393 of 2009

28. In both these petitions the Petitioner is Eli Lilly & Co. and subject matter is the same as in WP (Civil) 8388 of 2009 except that the pre-grant opposition in this case was filed by the Respondent Ajanta Pharma Limited („APL‟). W.P. (C) Nos. 332 of 2010 & 13295, 12006, 8393, 8392 & 8389 of 2009 page 18 of 25

29. Aggrieved by the decision dated 23rd February 2007 by the Assistant Controller allowing the process claims of Eli Lilly & Co., APL filed an appeal in this Court being FAO No. 136 of 2007 on 3 rd April 2007 i.e. one day after coming into force of Section 117 A of the Patents Act. By an order dated 1st May 2007 this Court transferred the appeal to the IPAB. It is stated by APL that at that point of time Eli Lilly & Co. did not challenge the order of this Court and participated in the proceedings before the IPAB. However, after waiting more than 13 months, on 11th June 2008 Eli Lilly & Co. filed an interlocutory application before the IPAB seeking dismissal of the APL‟s appeal on the ground of maintainability. The IPAB by its order dated 13th August 2008 rejected Eli Lilly‟s interlocutory application. In its order the IPAB held that the right of APL to file an appeal in this Court had accrued even on the date when APL had filed a pre-grant opposition and that right could not be taken away only because Section 117 A had been notified with effect from 2nd April 2007. Secondly, since the High Court had itself transferred the appeal to it, the IPAB was bound to hear the appeal.