Surprisingly, the answer is yes!
In the Seminar on Pre-grant Opposition, I heard a unanimous voice that the only remedy from the order of the Controller in pre-grant opposition proceedings is to file a writ petition as there was no provision of appeal under the Act or the Rules. Few weeks back, I had taken a different view before the Madras High Court in writ petition filed against an order of the Controller (Chennai) rejecting the patent application. In response to the writ filed challenging the order of the Controller, we had taken a plea that the writ petition cannot be maintained as the Act provided for a system of appeal against the Controller’s order in pre-grant opposition.
So, is there an appeal to the Appellate Board? The first thing that strikes you on reading section 117A of the Patents Act, 1970 is the conspicuous absence of section 25(1) – the section that deals with the grounds of pre-grant opposition. [I was also surprised by the absence of section 92A]
Sub-section (2) of section 117A reads thus –
(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19, section 20, sub-sections (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.
In fact, section 25(1) is not supposed to be in the above section. Section 25(1) is the counterpart of section 25(2), both of which deal with the grounds of opposition before and after the grant. As you will see, section 25(2) is not mentioned expressly in section 117A. The section that finds mention in section 117A is section 25(4). This perfectly fits into the scheme of things as the order of the Controller in post-grant opposition, pursuant to the opposition under the grounds mentioned in section 25(2), is passed under section 25(4).
Section 25 does not contain details of the order that may be passed by the Controller consequent to a pre-grant opposition. The details of that are contained in section 15. Read section 15 carefully and you will find the two things that a Controller may do with respect to an application before him. He may “refuse the application or may require the application… to be amended.” Luckily, these two options coincide with what a Controller can do consequent to a pre-grant opposition which are detailed in rule 55(5). And therein lies your right to approach the Appellate Board from an order passed in pre-grant opposition proceedings. An order passed by the Controller pursuant to pre-grant opposition is an order passed under section 15 which is a subject matter of appeal under section 117A.