The pharmaceutical industry seems to be the centre in patent disputes. In the battle to acquire higher market shares, attempts are being made to pin-down competitors. Several players, who were traditionally not part of the pharmaceutical industry are also joining in.

In the instant case, Stoplik Services India Pvt. Ltd v. Panacea Biotec Ltd 2006 (32) PTC 811 (CPD), M/s Stoplik Services India Pvt. Ltd., a Thane based company filed an application for acquiring a patent for their invention "A process for the preparation of a therapeutic anti-inflammatory and analgesic composition containing Nimesulide for use transdermally." The application and its specification were examined and accepted, the acceptance being notified in the Official Gazette.

To this, Panacea Biotec, the Opponent, filed a Notice of Opposition to the grant of the patent, which was replied to, devoid of any evidence, via their agents. In this regard, the opponents were asked to file the Opponent's evidence, which they declined stating that in accordance with Rule 40 of the Patents Act, the same had to be filed in compliance with the Applicant's evidence filed under Rule 37.

The grounds stated in the Opponent's application included 'wrongful obtaining, prior publication, prior claiming, prior public knowledge, and prior public use in India'. Further, it was stated to be 'not an invention in the meaning of the Act', there being 'obviousness and lack of inventive step', 'insufficiency of the described method as defined in the complete specification' apart from 'failure to disclose information under Section 8 of the Act.' The Opponents relied on Section 25(1) (a), (b), (d), (e), (f) of the Patents Act, 1970.

The Counsel on behalf of the opponent stated that that the process for the invention had been wrongfully obtained. As per the documents submitted, from their website, they stated that the Applicants were dealing in compression packing, yarn packing, in situ mould and zero compression packing, and were not involved in the pharmaceutical sector. According to them, the patent was wrongfully obtained, been taken from different specifications and documents.

The Opponent further stressed on the specification and averred that it was identical or substantially identical. It was stressed that all the figures, writing style, presentation including grammatical mistakes were quite the same. On enquiry with regard to their application and obtaining the license from the Drug Controller, the Applicants claim to have acquired the same just before the grant of the Patent. They further concluded that the two specifications concluded that it was not possible that the drafts prepared by two different persons would be substantially identical with each other. Even though the Applicants had acquired the patent, they launched no product in the market. Since they were not a pharmaceutical company, they could not manufacture the drug and hence in regard of the Opponent's drug had moved to Court.

The applicants denied the allegation of having wrongfully obtained the text in the Patent Application. The time of filing the opposition was said to be false and fabricated. (The US Patent Application was said to have gained priority from the Indian Application, which had not been examined at the time of filing of this invention???) Regarding the citations stated by the applicants, it was stated that in the absence of the same being in public domain, there existed no possibility of the two being similar in text and claims. Denying all the objections raised by the opponents, it was stated that they had merely stated facts regarding patents filed in different countries and that they possessed no knowledge of these.

Examining all the documents submitted by the Opponents as part of the Opposition, the Court concluded that the documents being confidential in nature, the allegation of having 'wrongfully obtained' them was difficult to prove.

Referring to the next ground of opposition, ‘prior publication’, the Counsel for the Opponent stressed on the Patent awarded in Sri Lanka. Comparing different paragraphs of the two, it was observed that the two were presented in a similar manner, had similar texts and was held substantially similar.

It was submitted that the invention was disclosed and claimed to be a published document with its filing being antedated. In the reply statement to this ground, the Applicants held that all the details discussed by the Opponents themselves about the prior publication were wrong as none of the alleged Patents referred to by the Opponents was published before the Patent application in question. Since the patent application was not in the public domain, there existed no possible way for the applicants to access the same. This objection was said to be baseless and vague.

The opponents did not file translate versions of the Patent documents filed in various countries. In the absence of the submission of the documents and their translated versions, they held that no evidence and allegation must be taken on record. Further it was contended that the cited patents were not proper and valid prior anticipation of the Applicant’s invention as claimed by the Opponents in their application under opposition.

Considering the submissions made by both the parties and taking into account the valid ‘Test of anticipation’, a comparison of the two patent applications was made and the Court concluded that the Opponents had succeeded in establishing the ground of prior application.

Dealing with the aspect of prior public knowledge and public use, the Opponents submitted that several patents were granted and therefore, published worldwide for the subject matter of the invention claimed in any claim of the complete specification, hence making themselves publicly known or used, before the prior date of the claim. The opponents were declared successful on these grounds too. The grounds of obviousness and lack of inventive step were also held to be in their favour.

Based on the above grounds, averments and evidence, the Patent was held cancelled and a decision was pronounced in favour of the opponents.

The instant case has diverted the focus to the area of post grant oppositions and thus has contributed to the Indian jurisprudence in this regard.