The Patent Act 1970 – The Pre-grant and the Post-grant Opposition

The Patent System is governed by the Patent Act 1970 as amended by the Patent (Amendment) Act 2005 and the Patent Rules 2003 as amended by the Patent (Amendment) Rules 2006. The amendments were carried out to bring the Act in compliance with the TRIPS Agreement in which number of new provisions were introduced, one such provision was the concept of post-grant opposition under Section 25(2) of the Patent Act 1970.

The result of the amendment to the Patent Act 1970

Prior to the Patent (Amendment) Act 2002, decision made by the Controller in a pre-grant opposition under Section 25 was appealable before the High Court under Section 116(2) of the Patent Act 1970. After the amendment which was brought in effect from 02nd April 2007, the decision or an order passed by the Controller under Section 25(4) became appealable under section 117A before the Intellectual Property Appellate Board (IPAB). All appealable cases against the order or decision of the Controller and all cases pertaining to revocation of patent other than counter-claim in a suit for infringement and rectification of register pending before the High Court was transferred to IPAB.

The Act was amended by the Patent (Amendment) Act 2005 to introduce the provision of the post-grant opposition which was brought in effect from 01st January 2005. After the 2005 amendment “any person” can file pre-grant opposition by way of representation before the controller and only “person interested” can file post grant opposition within one year from the date of publication of the grant of patent. The Legislature enacted the Patent (Amendment) Act 2005 without giving effect to the provision of Section 116 and 117A. The sudden change in the Patent System resulted in confusion particularly for matters pending before the High Court.

Analysis of the caselaws which evolved the pre-grant and post-grant opposition

In J Mitra & Co Pvt Ltd vs Asst Controller of Patent and Design and ors. J Mitra & Co Pvt. Ltd. (hereinafter to be referred as J Mitra) filed its patent application on 14th June 2000 and the said patent was advertised in the Patent Journal on 20th November 2004, which was opposed by Span Diagnostic Limited under Section 25 of the Indian Patent Act 1970 as amended by Patents (Amendment) Act 1999. Under the Patent (Amendment) Act 1999 the right to oppose the grant of patent by filing objection at the pre-grant stage was given to a person interested and the right to appeal was available to the aggrieved party under Section 116(2) by way of an appeal to the High Court.

In the judgment, the Hon’ble Supreme Court observed that the legislature intended to provide two types of scrutiny followed by one statutory appeal to the Appellate Board against “post-grant proceedings”. The Legislature intended to have a dichotomy between “pre-grant opposition” and “post-grant opposition” with only one statutory appeal. The legislature intended to obliterate appeal from pre-grant opposition which existed earlier. The intention of the legislature was defeated for the reason that the provisions of amended Sections 116 and 117A(2) were not brought in force till 02nd April 2007 and the provision of pre-grant and post-grant oppositions were brought in effect from 02st January 2005. During this interregnum Span Diagnostic Limited filed its appeal in High Court under Section 116 as it stood on 19th October 2006 under the Patent Amendment Act 1999. The Hon’ble Supreme Court held in the above matter that appeals filed by Span Diagnostic Limited would remain in High Court.

Another interesting case Indian Network for people living with HIV/AIDS vs Union of India and ors, where question was raised before the Hon’ble Madras High Court, in which the Controller of Patent took a unilateral view in a communication addressed to the applicant, granted the patent without affording an opportunity of hearing to the Opponent when the hearing was specifically requested by them and pre-grant opposition was not disposed.

The question which arose was whether by denying the petitioners their statutory right of hearing under Section 25(1)(k) of the Patent Act 1970 and read with Rules 55(6), which is statutory in nature, the Controller can purport to reject the petitioner’s objections to the grant of patent at a pre-grant stage and a patent which has been granted in violation of the statutory provisions is valid in the eye of law. The Court held that when the words are plain and simple, they must be given their natural meaning. In the instant case there is no ambiguity in the words used in Section 25(1)(k) about the mandatory duty cast on the Controller to hear the objector. The said duty which is cast in Section 25(1)(k) is also reiterated in Rule 55(6). Therefore when the meaning of the word is plain it is not the duty of the court to busy themselves with supposed intentions. The Court further held that the remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage. The insufficiency of the opportunity of hearing at the pre-grant stage cannot be made good by grant of opportunity at the post-grant stage. Since the statue has given remedy at both the stages, it must be made available at both the stages. One cannot be a substitute for the other. An unfair trial cannot by cured by a fair appeal. This matter is of great interest as it deals on a wider ground of public policy and public interest.

The date of grant of a patent is very important in determining the outer time limit for filing a pre-grant opposition. This was discussed by Delhi High Court in Dr (Miss) Snehlata Gupte vs Union of India. This question was raised in context of dismissal of pre-grant opposition by the Controller of Patents on the ground that they were time bared under Section 21 of the Patent Act 1970. The Court held that the date of grant is the date on which the Controller passes an order to that effect on the file. In addition to that the Court gave various directions to the Office of Controller in dealing with various apprehended practical problems that the office may face, namely pronouncement of the date of orders, dealing with the review petitions, placing the digitally signed order on the date when it is passed, protection of the right of the post-grant opponents and need to discourage filing of serial oppositions on account of the interpretation placed on Section 43 (Grant of Patent).

In UCB Farchim SA vs Cipla Ltd and Ors, the availability of alternate remedy of appeal before IPAB has been discussed by the Delhi High Court. The High Court has the power and jurisdiction under Article 226 of the Constitution of India to interfere with the orders of any statutory authority which is of quasi judicial nature and will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person. It was further held that where the grant of the patent is refused after acceptance of a pre-grant opposition under Section 25(1) of the Patent Act, the Applicant will have a remedy by way of an appeal to IPAB under section 117A. The Order of refusal under section 25(1) is relatable to section 15 of the Patent Act which is appealable under Section117A. This right to appeal is not available to the Pre-grant opponent/ third party (any person) who has preferred the pre-grant opposition but is available only to the Applicant of the Patent. The only available remedy for the Pre-grant opponent/ third party (any person) is to approach High Court under writ. The availability of alternate remedies has been explained as under:

  1. Where the pre-grant opposition is rejected and patent is granted: After 01st January 2005, the person interested may prefer post grant opposition under Section 25(2) of the Patent Act 1970 within one year from the date of publication of grant or prefer application for revocation of Patent under Section 64 of the Patent Act 1970 before IPAB, if filed after 02nd April 2007. If the post-grant opposition is unsuccessful, then the provision of appeal under Section 25(4) is available to a person interested before IPAB as per Section 117A of the Patent Act.
  2. Where the pre-grant opposition is filed by any person / third party: The court observed that legislature have consciously denied to the third party a further statutory remedy of post grant opposition in event of an unsuccessful pre-grant opposition. The Hon’ble Court further observed that Writ shall be available if it appears that there is no efficacious remedy available or the interest of the justice requires the court to interfere. This clearly reflects that the only available remedy to the third party/ any person if the pre-grant opposition is not successful is by way of writ petition by proving the aforesaid.
  3. Pre grant opposition is accepted and grant of patent is refused: In the third eventuality, it was held that although the decision is taken under Sec 25 (1), it is in effect relatable to Section 15 of the Patent Act 1970. Order/decision passed under Section 15 is appealable under Section 117A of the Patent Act 1970. The Applicant for patent will have a remedy by way of an appeal to the IPAB under Section 117A of the Patent Act 1970.

Similarly in Yahoo Inc vs Intellectual Property Appellate Board and Ors, it was held that an order passed under Section 25(1) read with Rule 55 of the Patent Rule 2003 is an order of adjudication after considering the material and other evidence produced by both the Applicant and the Opponent. Hence as much as decision made under Section 25(1) read with rule 55 is in the nature of adjudication and such an order is relatable to section 15, the order is appealable by treating the same as one under the said section. Therefore an appeal would lie against the refusal of the Patent under Section 25(1) since the same is relatable to an order passed under Section 15 of the Act which in effect is one appealable under Section 117A of the Act.

Finally in Dr. Alloy Wobbens and Anr vs Yogesh Nehra and Ors, the Hon’ble Supreme Court of India has analyzed different remedies available to a person interested for raising a challenge to a patent granted to an individual or an entity under the Patent Act. The Hon’ble Supreme Court has noted that a challenge to the grant of patent through a notice of opposition is available on all grounds permitted to oppose. However there is a substantial difference in the locus for raising a challenge after a patent has been granted. Whereas any person can represent by way of opposition to an application for the grant of a patent [under Section 25(1)]; Only a person interested can challenge the grant of the patent by issuing a notice of opposition [under Section 25(2)]. On the subject of locus, Section 25(2) and Section 64(1) are alike. The Hon’ble Supreme Court has held

  1. If any proceeding has been initiated by any person interested under Section 25(2) of the Patent Act, the same will eclipse the right of the same person to file a revocation petition under Section 64(1) of the Patent Act and also to invoke the right granted under Section 64(1) of the Patent Act to file a counter claim in response to suit of infringement to seek revocation of patent.
  2. Since the counter claim is of the nature of an independent suit, a counter claim cannot be allowed to proceed where the Defendant has already instituted a suit against the plaintiff on the same cause of action.
  3. Where in response to an infringement suit, the Defendant has already sought revocation of a patent (on basis which the infringement suit has been filed) through a counter claim; the Defendant cannot thereafter in his capacity as any person interested assail the patent by way of revocation petition.

Conclusion

The idea behind the pre-grant and post-grant opposition was that “any person” /third party, if missed the opportunity to file pre-grant opposition can file post-grant opposition by proving himself as “person interested”. In a similar manner “any person” if is not successful in pre-grant opposition can also file a post-grant opposition by proving himself as “person interested”. It is interesting to note that merely on the technalities of the definition of “any person” and “person interested”, same person can re-agitate the same ground at a post grant stage, which is usually not possible.

The new proposed Patent (Amendment) Rules 2018 which may come in effect from 2019 empowers the Controller to constitute a bench at a pre-grant opposition stage similar to the Post-grant Opposition Board to dispose of the patent applications. This change may bring the pre-grant opposition on same level as post grant opposition in respect to the constitution of Opposition Board. The only difference here is that the bench in pre-grant opposition has power to pass a speaking and final order, whereas in post-grant opposition the Opposition Board has to submit the report with joint recommendation to the Controller and the Controller passes final decision.