Dhaval Diyora v.

UOI
Presented by
Sy m l Y shw nth Reddy
N ndini Bisw s
Priy nshi B inw l

C se Summ ry
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 November 5th, 2020

Bombay High Court W.P no. 3718 of 2020.
Cit tion

• Issue: Whether the pre-grant representation could be led while the decision of the
Controller of Patents to reject a patent application is on appeal before the IPAB.
• Facts: P zer applied for a patent in India for a speci c invention in 2003, but after a
series of examination and responses, the Indian Patent o ce did not grant the patent.
The reason for this was that the P zer did not disclose that the same invention was
already been examined by EPO and also the subject matter of the invention was already
patented. In 2018 The Appellate Board concluded the hearings in favour of P zer.
• The invention is a method to separate and make a speci c compound, which is then
used to make another compound called Pyrrolo 2,3-Pyrimidine Derivatives. These
derivatives are used as inhibitors of protein kinases enzymes.
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• Pre-Grant Opposition: Pre-grant representation refers to the process of submitting representations or

objections to a patent application before it is granted by the patent o ce. This process allows third parties,
such as competitors, to raise concerns or objections to the patentability of the invention claimed in the
application. The representation can be made on various grounds such as prior art, lack of novelty,
obviousness and non-patentable subject matter, pre-grant representation is governed by the Indian Patents
Act, 1970 under Section 25.
• The Petitioner had not led a single pre-grant opposition since the date of publication until the nal
rejection by the Controller. Furthermore, the Intellectual Property Appellate Board (IPAB) had also
concluded the hearing for the patent application and the order was reserved for giving reasons on merits,
but the Petitioner led the pre-grant opposition only after the hearing had been concluded by both the
Controller and the IPAB. As a result, the IPAB granted the patent to P zer Products Inc on August 21, 2020.
• Judgement: The Bombay High Court in this case, observed that the legislative intent behind amending
Section 25(1) of the Indian Patents Act, 1970 was to widen the locus standi (the legal right to bring a case to
court) and provide access to any person to assist the Controller in taking a correct decision. However, this
right was not to be abused, and the Court dismissed the Writ petition led by the petitioner, stating that
the pre-grant opposition was not maintainable in law. Additionally, the court held that the challenge of the
petitioner to the impugned order cannot be entertained, and no direction can be issued to hear the
application led by the petitioner.
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