Power of Controller to Review Own Decisions: Scope of Section 77(1) (F) & (G)

13th July, 2018 - 12:01 pm Categories: Patents 0 Comments

It is a general rule that once pronounced by a Court a judgment becomes functus officio and it cannot be altered or changed. However, an exception to this rule lies in the equity principle of ‘writ of error’. Writ of error is a writ filed where an error in delivering a judgment can be rectified on the grounds that human failing should not cause impediment to justice. This writ lays the basis for the modern-day ‘Review Petitions’ filed in the courts whereby the same court and same judge are allowed to review and alter their own judgments under extraordinary or unusual circumstances. This article analyses the power of the Controller under section 77(1) (f) and (g) of The Patents Act, 1970 to review his own decisions.

Scope of Section 77:

Chapter XV of the Patents Act 1970 refers to the powers of a Controller. Section 77 specifically bestows certain powers of the civil court on the Controller. It lays down the that the Controller shall have powers of a Civil Court while trying a suit under Code of Civil Procedure, 1908 in respect of the following matters:

1. summoning and enforcing the attendance of any person and examining him on oath;
2. requiring the discovery and production of any document;
3. receiving evidence on affidavits;
4. issuing commissions for examination of witnesses or evidences;
5. awarding costs;
6. reviewing his own decision on an application made within prescribed time and in the prescribed manner;
7. setting aside an order ex parte on application made within prescribed time and in the prescribed manner;
8. any other matter which may be prescribed.

Thus, section 77 confers upon the Controller certain essential powers of a civil court in order to enable him to deliver decisions in any proceedings before him under the Patents Act. This section is significant as it tends to state that any decision passed by the Controller in any proceeding before him shall be executed and enforced like a decree of Civil Court.

Section 77(1) (f) refers to the power of the Controller to review his own decision. The Civil Court has a similar power under Section 114 and Order 47 Rule 1 of the Code of Civil Procedure, 1908. A small parallel between the two provisions is drawn below:

Therefore, from the above table it can be concluded that the powers of a Controller under Section 77(1) (f) of the Patents Act, 1970 are equivalent to the powers of a Civil Court under Section 114 of the Code of Civil Procedure, 1908. The mentioned provision thus gives wide powers to the Controller to review his own decision on the above mentioned grounds. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

Similarly, Section 77(1) (g) lays down the provision regarding setting aside of ex-parte orders passed by the Controller. The term ‘Ex Parte’ orders relate to those orders which are passed in the presence of just one party and without hearing the other. Clause (g) of the Section allows an applicant to make an application under Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller on request made (under Form-4) may allow. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

The order passed by the Controller in review is not appealable. Section 117A of the Act lays down the provisions for appeal from the decision/order of the examiner, controller or the state government to the Intellectual Property Appellate Board (IPAB). This is a mandatory provision laying down strict standards for appeal to IPAB. It clearly states that the appeal is allowable only in matters specifically mentioned under sub-section (2) of Section 117A.

The issue of appeal from a review application was discussed by the IPAB in the case of Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai[1]in the year 2012. The IPAB while laying down the difference between these sections stated that Section 117 A is a special provision allowing appeals to the IPAB in certain specified circumstances whereas Section 77(1) (f) is a general provision laying down the grounds for allowing review of decisions made by the Controller. Review can be done only by the Controller and not the IPAB. This decision of the Controller is final and Section 117 A does not specify Section 77 as a ground for appeal to IPAB, thus leaving no scope for making cases appealable before IPAB under section 77 of the Patents Act, 1970 Further, it was held that- “Appeal is a creature of statute and is not an inherent right. Unless there is a specific provision for appeal, there can be no appeal. Where there is no provision to appeal against a review petition then appeal herein is not maintainable…” (Para 11&12).

Thus, it can be concluded that the Controller has wide powers under Section 77 which are equivalent to the power of a Civil Court under Code of Civil Procedure. Parties may seek review of the decision of the Controller where they feel that some grave error has occurred on the part of the Controller. However, the only drawback of this provision is that the review application is filed before the same Controller and therefore may, at times result in the party seeking for such reviews, prejudiced. However, this provision is a welcome move to ensure justice. Also, this decision of the Controller is final and no appeal can lie against an order passed upon a review application. This ensures that unnecessary hindrance due to repeated frivolous litigations/prosecutions is avoided.

Author: Aishwarya M. Pande, Legal Intern, at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai; MANU/IC/0115/2012

[2] Section 77 of Patents Act, 1970

[3] Section 114 read with Order 47 of the Code of Civil Procedure, 1908

[4] Manual of Patent Practice and Procedure

[5]http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent–practice_and-procedure.pdf

[6] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf