Intellectual Property Appellate Board ruled that whenever the Opposition Board makes recommendations under Section 25(3)(b) of the Patent Act in a post-grant opposition proceedings both the patentee and the opponent are entitled to know the contents of the recommendations before they attend the hearing before the Patent Controller.
The Board said “The Opposition Board may make recommendations that the patent suffers from serious defects like lack of novelty, lack of inventive steps etc. so the patentee is entitled to know why the Opposition Board came to the conclusion, only then at the time of hearing they will be able to meet the recommendations of the Opposition Board, giving reasons why those recommendations were not to be accepted. On the other hand if the Opposition Board recommends that the patent shall be granted since the invention has novelty, inventive steps etc., unless the opponent has an opportunity to see the recommendations he will not be able to persuade the Controller why the recommendations of the Opposition Board must not be accepted.”
“In either case the opportunity which is mentioned in Section 25(4) of the Act becomes an empty shell of an opportunity if the Opposition Board’s recommendations remain secret. Then again there is no purpose in giving the Controller the discretion to require a member of the Opposition Board to be present at the hearing, unless there is a possibility that the member may be asked to explain why they made these recommendations. That situation will never arise if the patentee and the opponent are totally in the dark regarding the recommendations of the Opposition Board when they attend the hearing,” the Board said.