One key aspect of Post grant Patent opposition proceedings is the submission
of relevant documents and evidence by both the opponent and the patentee. This
article delves into the intricacies of the case at hand, where the admissibility
of documents filed without supporting affidavits is questioned, leading to a
significant legal interpretation regarding the manner of filing documents in
post grant opposition proceedings.
In the case under scrutiny, the opponent failed to file any evidence along
with their post grant opposition, while the patentee submitted a reply statement
under Rule 58 of the Patent Rules. The opponent subsequently filed a rejoinder
to the patentee's reply statement along with an affidavit in support of
previously filed documents. This move by the opponent prompted the patentee to
challenge the admissibility of the affidavit and its accompanying documents.
The central point of contention revolved around whether the affidavit filed by
the opponent could be accepted as evidence under Rule 59 of the Patents Rules.
The patentee's argument was grounded in the assertion that any evidence
submitted under Rule 59 should not exceed the scope of evidence presented by the
patentee with their reply statement under Rule 58.
The patentee further emphasized that since no evidence had been submitted by the
opponent with their post grant opposition under Rule 57, the subsequent filing
of an affidavit was unwarranted.
The court's deliberation focused on the interpretation of the rules
governing post grant opposition proceedings, specifically Rules 57, 58, and 59
of the Patents Rules.
The court underscored that Rule 57 allows for the filing of a written statement
and evidence, emphasizing the requirement of an accompanying affidavit to
establish the authenticity and veracity of the documents submitted. Without such
an affidavit, the court ruled that documents cannot be considered "evidence."
The court's decision hinged on the notion that the opponent had exceeded their
rights conferred by Rule 57 by submitting documents without proper supporting
affidavits. By doing so, the opponent had essentially denied the patentee the
opportunity to respond with corresponding evidence under Rule 58, which allows
the patentee to submit a reply statement and evidence.
Implications and Conclusion:
The court's decision in this case holds significant implications for post grant
opposition proceedings in the realm of patent law. It reinforces the importance
of adhering to procedural requirements, specifically the submission of documents
accompanied by supporting affidavits.
The ruling emphasizes that documents submitted without proper affidavits cannot
be considered as evidence under Rule 57, thereby limiting the opponent's ability
to introduce new materials at a later stage without affording the patentee a
fair opportunity to respond.
The Case Law Discussed:
Case Title: Akebia Therapeuticals Inc Vs Controller General of Patent
Date of Judgement/Order:09/08/2023
Case No. WP C IPD 32 of 2023
Neutral Citation: 2023:DHC:5672
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar , HJ
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539