Observing that the provisions of the Patents Rules, 2003 place enormous sanctity on the two-stage decision making process in a post-grant opposition, the Delhi High Court has held that while additional evidence is permissible under Rule 60 of the Patents Rules, after review of Opposition Board, the same cannot be filed once the date of hearing has been fixed by the Controller.

It was held that filing of additional evidence would be permissible in exceptional cases with the leave or direction of the Controller, but in any event, the said filing can be done only prior to the hearing being fixed under Rule 62.

The Court further held that though Rule 62(4) allows filing of publication 5 days prior to the hearing, the same is not with respect to evidence or additional lab reports but it is regarding “publication” which is already available in public domain but was overlooked or not presented earlier.

The High Court also held that both the exceptional circumstances (as provided in Rules 60 and 62) ought to be treated as exceptions and not the rule. It further stated that the Members of the Opposition Board may be present in the hearing if any further evidence is given by either party under Rule 62 and publication is cited at the hearing.

The Single-Judge Bench of the Court in the case Pharmacyclics LLC v. UoI noted that the scheme of the Rules envisages that the Opposition Board ought to consider all the pleadings and documents prior to giving its recommendation to the Controller, and that under usual circumstances, there should not be any variation between the material being considered by the Opposition Board and the Controller.

The Court also held that in terms of Rule 60, the hearing as contemplated in the said rule would be the first notice of hearing, as this would ensure that parties do not unduly delay hearing by seeking adjournments and utilizing adjourned period to dig up more evidences.

It was further observed that the Opposition Board ought to give its recommendations within three months after the final rejoinder by the opponent is received under Rule 59, and that after the receipt of the recommendations of the Opposition Board, a hearing ought to be fixed within three months thereafter.

Lastly, observing that the pendency of post-grant oppositions delays adjudication of infringement suits, if any, in respect of the patent and keeps the rights of the Patentee under a cloud or in doubt, the Court directed the Patent office to ensure that post-grant oppositions are decided expeditiously.