The Sugen v. Cipla post-grant opposition: The lost art of legal writing in the Patent Office

As Madhulika earlier blogged, the Patent Office after a circus of appeals filed by Sugen, once again revoked Sugen’s patent no. 2092951 on the grounds that it would be obvious, to a person skilled in the art, in light of the prior art produced by the opponent. Be that as it may, I would like to comment on the manner in which the opinion was written by the Controller and the deference or lack thereof to the precedents of higher judicial forums like the IPAB or the High Courts. The decision itself can be accessed over here.

(i) Section 8 – Non-disclosure of foreign patent filings: One of the main grounds of opposition raised by Cipla was the violation the requirements of Section 8 by Sugen since the latter had not filed all the corresponding foreign patent documents with the Indian Patent Office. Cipla produced a long list of documents which had not been submitted to the Patent Office under Section 8 of the Patent Act and the Patentee argued against this proposition by relying on an interpretation of various precedents of the IPAB and the High Courts. 

The Controller ultimately disposes this issue in favour of the patentee in merely 5 lines which I reproduce as follows “I opine that the objection of the opponent that patentee have not complied with the requirement of Section 8 is not agreeable. I observe that the patentee has fulfilled its duty to furnish all the information’s required u/s 8. The details cited by the opponent are from the WIPO website and espacenet which is freely available to the controller and examiner. Therefore the ground of section 8 is not maintainable.” 

The first problem with this conclusion is that the Controller does not cite any authority or precedent to back up his/her conclusion. The only difference between creative writing and legal writing is that the latter requires to be backed by authority not personal opinions or imagination. When both sides have discussed precedents on Section 8, the Controller has no choice but to provide reasons on why those precedents are either relevant or not. In this case, there were several relevant precedents like the Chemtura decision, the Tata Chemicals decision. Yet, the Controller simply ignores all precedents. 

The second problem with this conclusion is the fact that the Controller came to the wrong conclusion with regard to Section 8. The IPAB decision in the Tata Chemicals case was quite clear on the fact that whether or not the examiner had independent access to the document was irrelevant since the test under Section 8 was whether or not the patentee had filed the document with the patent office. The Controller has no option but to follow the precedents of the IPAB, which is a superior judicial forum. 

(ii) American, European or Indian law? 

In the final analysis, on obviousness and lack of inventive step, the Controller cites three authorities: (i) A European judgment (ii) an American judgment and a (iii) P. Narayana on Patent Law. Once again, why is there no reference to the recent precedents of the IPAB? The Indian Patent Office is not bound by European or American case law but it is bound by the decisions of the IPAB. At the most European and American case-law can only have persuasive value on the Indian Patent Office. More importantly, should the Patent Office actually be citing American and European case law indiscriminately, when the concepts of obviousness are different in both jurisdictions? 

Also please note that the Controller does not cite a single precedent of either the IPAB or any other Indian forum. How can this be? After 6 years of hearing patent cases, the IPAB surely has provided the patent office with at least a few good precedents on the point. 

Why does the Controller have this ‘devil-may-care’ attitude about the precedents laid down by the IPAB? 

(iii) Inventive step and the apparent irrelevance of ‘commercial success’: In a decision, where the Controller revoked a patent for the lack of an inventive step, one would actually expected the Controller to make reference to the definition of ‘inventive step’ in Section 2(1)(j) of the Patents Act, 1970. I take the liberty of reproducing the provision as following “"inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. 

Please note the use of the phrase “economic significance” as a standalone ground to establish the inventive step in an invention. Yet, the Controller, without even referring to the wording of Section 2(1)(j) comes to the conclusion that “I observe that when as the instant claims are clearly obvious to a skilled artisan, so, the commercial success of the instant product (Sunitinib) as submitted by the patentee cannot be considered as an evidence of a patentable invention.” The Controller does cite Narayan on Patent Law to establish this point but an excerpt from Narayan is of no relevance unless it is backed by judicial precedent. 

Conclusion: Controllers need basic training in legal writing 

This is not the first time that we have pointed out to the extremely poor quality of decisions coming from the Patent Office. Shamnad and Rajiv have made similar points on this blog over here. The problem thus is not with this particular Controller but the entire IPO. These officers, performing quasi-judicial need specific workshops or classes in legal writing. As I had mentioned in one of my earlier posts, “Legal writing and reasoning are not the toughest of skills to acquire but they are still skills that are required to be taught and learnt.” The Controller General should seriously think of organizing some kind of training for his officers with either a University or a Judicial Academy to ensure we have orders that are better reasoned.