Provision of pre-grant opposition
When a patent application is published and until the patent is granted, the Indian Patents Act, 1970, under section 25(1), allows any person to oppose by way of representation, the grant of a patent to the application.
The sub-sections of section 25(1) list various grounds for opposition relating to non-compliance with one or the other section of The Patents Act or the rules made thereunder. The grounds for representation, inter-alia, include lack of novelty / inventive step/ and insufficiency of description of the invention or failure of complying with other provisions of the Act.
Rule 55 of the Patents Rules 2003 stipulates that representation for a pre-grant opposition needs to be filed in form 7(A) at the relevant patent office branch (currently online) with a copy to the applicant. The representation needs to include a statement of case and evidence, if any. The opponent can also request for a hearing, if so desired. The Controller can consider such a representation only when a request for examination of the patent application is received.
On consideration of the representation, if the Controller is of the opinion that a patent application ought to be refused or amended, he will send a notice to the applicant accordingly. On receipt of the notice, the applicant is required to submit a copy of its statement and evidence in support of its application and also serve a copy of the same to the opponent. On consideration of the contention and evidence submitted by the parties and after hearing the parties, if so requested, the Controller will take a decision how to deal with the application.
Three possibilities may arise when the Controller considers the submission of the parties. The Controller may refuse to grant a patent or may instruct the applicant to amend the application. Alternatively, the representation may be rejected in case the Controller is of the opinion that it lacks merit.
Have these provisions (Section 25 & Rule 55) served their purpose or have they created hurdles in the path of a patent application? That is the purpose of this article.
In Hindustan Lever Ltd. v. Godrej Soaps, 1996 Hindustan filed two patent applications, the subject matter was a detergent bar. Godrej Soaps filed a pre-grant opposition on the grounds of obviousness, lack of inventive step, prior public knowledge and insufficiency of description of the invention. After conducting a hearing, the Controller ordered for amendment of the specifications. The applicant amended the specifications and the opposition was dismissed.
In Novartis vs Cipla, 2011, a patent application was filed by Novartis in 2005, for “Dispersible tablets comprising Defracirox” against which Cipla filed a pre-grant opposition. The representation was allowed by the Controller after a hearing and the grant was refused. The Controller concluded that the invention was hit by prior publication and lack of inventive step.
There are many other cases where these provisions have been used by opponents and the Controllers have considered their representations and decided cases after giving opportunities to the opponents and the applicants to substantiate their claims.
In some cases, it was found that, the provisions of pre-grant opposition have been misused. Some of these cases are summarized hereunder.
In the case of Dhaval Diyora vs. Union of India, an opposition was filed to a patent application of Pfizer. The patent application was filed in 2003, was published in 2007 and the application was refused in 2015. Pfizer appealed before the Indian Patent Appellate Board (IPAB) (now defunct) and the hearing for the same concluded on August 10, 2018. IPAB fixed August 21, 2018 for pronouncing its decision. On August 18, 2018, Mr. Dhaval Diyora, filed a pre-grant opposition which was rejected. On 22nd September, 2020, the petitioner approached the Bombay High Court contending that the pre-grant opposition was filed well before the date of grant of the patent and an opportunity of filing the pre-grant opposition was denied to him. The Bombay High Court averred that the opportunity for a pre-grant opposition was available to Mr. Diyora from 2007 but he waited till August 18, 2018 for filing the pre-grant opposition. The Court considered the possibility Mr. Diyora was keeping a tab on the IPAB proceedings and having assessed that there was a possibility that the IPAB may reverse the refusal of granting the patent, immediately filed a pre-grant opposition on 18th August 2018. The Court also raised questions on the credentials of the petitioner who was engaged in the diamond business. The patent related to a pharmaceutical product and the issue before the Court was how a diamond businessman could have intricate knowledge of pharmaceuticals?
It was argued that the petitioner has engaged researchers in the pharmaceutical field. No details of these researchers and who paid them were available. The Petitioner had also made no statements on oath. Considering the totality of the circumstances, the Court averred that it had serious doubts about the credentials of the petitioner and found merit in the argument that the petitioner was a habitual frontman put up to delay the grant of patents. The Court also held that the patent application was refused by the Controller in 2015 and the window of pre-grant opposition had, therefore, closed. The petition of Mr. Diyora was dismissed with costs.
The IPAB has also condemned the practice of “benami” oppositions by “benami opponents” and expressed that “we are of the view that the practice of filing of Benami oppositions by the Benami opponents and crooked imposters have to be stopped. It is the duty of the respondent (Controller General of the patent office) that such person(s) may not be allowed to take the advantage of multiple layers of opposition. If any opposition is filed under Section 25(1), which is bogus and without any merit, the same is to be thrown out at the earliest by the respondent with heavy costs and penalty. Only genuine oppositions should be entertained." The Court noted that the legislative intent of Section 25(1) was “not to create an individual right as such, but to provide access to any person to assist the Controller in taking a correct decision. The legislature has not conferred this right to be abused”.
In the case of Snehlata C. Gupte vs Union of India, 2012, the Delhi High Court condemned the practice of filing serial oppositions between the publication of application and the grant of patent. It also directed that in case of multiple oppositions, they should all be bunched together, heard sequentially and, as far as possible, decided on the same day.
Indian patent jurisprudence is unique in having a provision for filing a pre-grant opposition by any person. The EPO allows only a post-grant opposition to be filed within a period of nine months from the date of publication of the allowance of a patent application. The opponent may give notice of opposition with a prescribed fee to the EPO. The USPTO allows re-examination of a granted patent and a fee is applicable for re-examination. However, no fee is prescribed for a pre-grant opposition in India.
The provisions in the Indian Patents Act, 1970 were introduced in good faith and with a view to help Controllers to take correct decisions. It appears that the provisions have been misused several times and “benami” oppositions have been filed by fictitious persons, whose whole and sole objective is to delay grant of a patent at the behest of an applicant’s competitor. It is therefore important that the Indian Patents Office ensures speedy disposals of pre-grant oppositions in order to reduce the time lost in such oppositions.
Appeal against pre-grant opposition
Is there a provision of appeal against the decision of the Controller in case a patent application is refused or the representation for opposition is rejected by the Controller?
Section 117 A (1) of The Patents Act spells out that appeals are not allowable under some sections and Section 25(1) (the pre-grant opposition section) is specifically left out. Thus, no appeal is allowed against the decision of the Controller in a pre-grant opposition. This raises a question as to whether no remedial measures are available if a judicial error has been committed or whether the laws have been misapplied or misrepresented? Does it go against the principles of natural justice if no appeals are allowable for refusal of a pre-grant opposition?
If an application is refused in a pre-grant opposition, the refusal is under Section 15 of The Patents Act, which states that “Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.” Section 15 is an appealable section and therefore if an application is refused, an appeal will lie against such refusal but if a representation is refused, no appeal lies.
In Yahoo vs IPAB, Union of India and Others, Yahoo filed a PCT application vide PCT/US00/14753 and entered the National Phase in India vide IN/PCT/2001/01652/CHE. The invention which was originally titled "System and method for influencing a position on a search result list generated by a computer network search engine" was later amended to "A method of operating a computer network search apparatus". On its publication, M/s.Rediff.com India Limited, Mumbai filed a pre-grant opposition on 22.10.2007, by way of representation under Section 25(1) of the Patents Act. The Controller accepted the representation and refused to grant patent by holding that the invention of the applicant did not pass the novelty and patentability test. An appeal was preferred by Yahoo before the Intellectual Property Appellate Board (IPAB), Chennai. The appeal was refused by the IPAB stating that there was no provision for appeal under section 25(1). Yahoo filed a petition in the Madras High Court under section 226 of the Constitution and submitted that the order passed by the Controller will have to be construed as one passed under the Section 15 of the Patents Act. When the Controller receives a representation and the evidence, procedurally he weighs the evidence and applies his mind to the material evidence placed before him / her and therefore, is an adjudicator and a refusal can arise only when the application is not in order as per The Patents Act or rules made thereunder. Therefore, the decision of the Controller to refuse the application is under Section 15 and not under Section 25 (1). The Court agreed with this submission and the order of the IPAB was set aside. The IPAB was directed to hear the appeal and also give an opportunity to the opponent to be heard and decide the case on merits.
Thus, a window of appeal for an applicant exists under Section 15 when a patent application is refused after a pre-grant opposition.
What happens when the Controller does not find substance / evidence in the representation of an opponent and rejects the contention of the opponent? Is there a window of appeal available to the opponent when his contention is rejected by the Controller? It appears that there is no window of appeal under section 25(1) for the opponent as Section 25(1) has been left out for appeal under Section 117 A (2).
Assuming that any person who filed a pre-grant opposition is not satisfied with the decision of the Controller refusing his application. Such a person still has a window of filing a post-grant opposition under Section 25 (2).
It appears that the legislators wanted to strike a balance by making the representation wider and allowing any person to file a representation which is duly considered by a Controller but at the same time ensuring that a patent application does not get bogged down in un-necessary appeals at the pre-grant stage.