The Pre-Grant Opposition has played a major role since its inception as an essential stage of Patent prosecution. However, as of now, is it fulfilling the intention behind writing it in the statute and bringing it into effect?

DRAWBACKS OF PRE-GRANT OPPOSITION IN INDIA

1. Undefined ‘Locus Standi’

Subsequent to the 2005 Amendment Act, Indian statute now stipulates that a third party may reject the issue of a patent in the event of pre-grant objection. “Any person” may file the application without even expressing their interest or providing evidence of how the patent’s issuance might impact their rights. But the practise of allowing “any person” to file a pre-grant objection sometimes makes this provision ineffective since a lot of fictional individuals wind up filing oppositions by hiding the name of the actual person who is actually filing them. The applicants now have an added responsibility to defend their petitions against fictitious oppositions. The phrase “any person” was chosen in order to give the application a more thorough examination. It is also important to highlight that although while “any person” was granted the ability to submit a pre-grant objection, the legislation’s execution is counterproductive since it unduly delays the opposition process and unintentionally delays the granting of a patent.

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In the Dhaval case, it was noted that many petitions are being dropped because of the procedures’ length, either because the applicants have expired or the intervenors have lost interest. There have been instances where the Appellate Board has issued a patent after it had expired for 19 years and 7 months, with 4 months remaining until its expiration. The Appellate Board has also observed situations in which the patent has not yet been awarded after eighteen years. The purpose of the modified Section 25(1) locus standi is to allow anybody to obtain the information needed to help the controller make the best choice possible, rather than to create individual rights in and of themselves. This right to be mistreated has not been granted by the legislature.

In Anaghaya Million Pharma LLP vs. Nippon Soda Co. Ltd. and Ors., it was held by Manmohan Singh, J. (Chairman) and Dr. B.P. Singh, Member (T) “to curb the filing of pre-grant opposition by benami applicants, ‘any person’ filing the pre-grant opposition must submit his valid Aadhar Card/Voter id Card/ Passport/Driving Licence to authenticate his identity. E-filing System at IPO should be suitably modified. in case of all pending pre-grant oppositions, if the pre-grant opponent has not filed with proof of his identity, he should be given one chance to submit the same within 15 days from the date of such communication, failing which the pre-grant opposition shall be rejected forthwith.”

The Ayyangar committee report opined that the oppositions for the grant of the patent were never filed with a mala fide intent. However, the situation of present Patent Prosecution procedure is far from different that that was during the Ayyangar Committee report.

2. Serial Pre-Grant Oppositions

It has frequently been noted that the pre-grant opposition procedure is exploited by submitting several pre-grant oppositions. It is evident that these serial pre-grant oppositions were submitted in one of two ways:

a. either a single pre-grant opposition was lodged, or

b. many pre-grant oppositions were received in a short period of time. It follows every step of the process outlined in Rule 55. After listening to all sides, the controller has decided to hold off on issuing the order. Second or subsequent pre-grant oppositions are submitted, and the cycle continues, if the Controller’s plan to reject the pre-grant opposition and then award the patent is somehow made public.

The Controllers are further burdened by serial oppositions as they must examine and notify each one individually. In order to prevent the application from being abandoned, applicants must respond to each of these oppositions within a set amount of time, which adds to their burden.

Pfizer’s patent application was opposed in the matter of Dhaval Diyora v. Union of India. The application for a patent was submitted in 2003, published in 2007, and rejected in 2015. On August 10, 2018, the Indian Patent Appellate Board (IPAB), which is no longer in operation, heard Pfizer’s appeal. IPAB scheduled the announcement of its ruling for August 21, 2018.

Mr. Dhaval Diyora filed a pre-grant opposition on August 18, 2018, but it was denied. The petitioner filed a suit with the Bombay High Court on September 22, 2020, claiming that he was not given the option to file a pre-grant objection and that it was filed far in advance of the patent grant date. To this the Hon’ble Bombay High Court noted that Mr. Diyora had the chance to file a pre-grant opposition as early as 2007, but he didn’t do so until August 18, 2018. The Court took into account the probability that Mr. Diyora was monitoring the IPAB proceedings and determining that there was a chance the IPAB would overturn the decision to deny the patent. The petitioner was in the diamond industry; the court also questioned the petitioner’s qualifications. The patent concerned a medicinal product, and the question on the Court’s mind was: How could a diamond merchant possess such in-depth knowledge of pharmaceuticals?

It was contended that the petitioner had enlisted pharmaceutical researchers. There were no facts accessible about these researchers or who was funding them. Nor has the Petitioner made any assertions under oath. Taking into account all the facts, the Court said that it seriously doubted the petitioner’s qualifications and found support for the claim that the petitioner was a regular front person used to stall the issuance of patents. The Court further declared that the opportunity for pre-grant objection had ended as the Controller had denied the patent application in 2015. Mr. Diyora’s plea was denied along with expenses.

In addition, the IPAB said that “we are of the view that the practise of filing of Benami oppositions by the Benami opponents and crooked imposters have to be stopped” and denounced the act of “benami opponents” submitting “benami” oppositions. The Board further stated: “It is the responsibility of the responder, the Controller General of the Patent Office, to ensure that the person or people in question are prohibited from utilising several levels of opposition. The respondent shall, at the earliest opportunity, strike out any opposition filed under Section 25(1) that is baseless and without merit, with substantial costs and penalties. Only sincere opponents ought to be given consideration.”

The Hon’ble Bombay High Court stated that the purpose of Section 25(1) was to “allow access to any person to assist the Controller in taking a correct decision, rather than to create an individual right as such.” This right to be mistreated has not been granted by the legislature.

The Delhi High Court denounced the practise of filing successive oppositions between the publication of an application and the granting of a patent in the case of Snehlata C. Gupte v. Union of India. Additionally, it stipulated that if there were several oppositions, they were to be grouped together, heard in order, and, if at all feasible, resolved on the same day.

Section 25(1) of the Act states that a pre-grant objection may be filed at any time after the application is published and before the patent is awarded. This usually means that the other party has a few years to file a formal objection. As a result, this is one of the reasons why delays in serial opposition filings happen after a patent application is approved or rejected.

CONCLUSION

The objective to introduce pre-grant opposition in Indian patent law was to improve the strength of the granting of patents by permitting the intervention of the third party to challenge the patent applications that are to be granted. But, the functioning of this provision has been a subject of controversy due to the many challenges that have occurred within its implementation, and in light of these challenges, the effectiveness of this provision in delivery of the intended objectives.

The pre-grant opposition system has a major disadvantage in India due to the question of ‘locus standi’ that remains uncertain. The provision that the notice of opposition can be filed by ‘any person’ means that one does not need to show some form of interest or that he/she is likely to be gravely affected by the grant of the patent. This has resulted to abuse where many unjustified oppositions are made, most of which are made anonymously or under fake identities. Not only does it flood the patent office with non-grounds but it also slows down the process of granting of the patent.

The increase in the number of serial pre-grant oppositions contributes to these difficulties even more. There are some malicious entities that ‘gaming’ the system by filing a series of oppositions in succession or in tandem to the previous one, thus giving the patent applicant a series of hurdles that could be addressed one at a time. Such a strategy not only entails additional paperwork and administrative costs but also enhances the duration of the applicants’ suspense over the status of their applications, and, thus, may discourage honest inventors from owning patents in India.

Measures have been undertaken in court to solves some of these problems like demanding an identification for the opposition filers and that Single integrated opposition which will just oppose many of the applied marks. However, the root cause remains – people’s lives are again thrown into discomfort and patent applications are not fairly and efficiently reviewed as they should be.

Therefore, even though the provision of pre-grant opposition is significant in maintaining the quality and preventing the grant of erroneous patents and unmerited monopolies, the current functioning of this provision in India has been found deficient. The issues related to the problems of lacking a clear definition of locus standi in the case of constitutional petition and a consequent serial oppositions yield to legislative definition and adjustments in procedures. The problem of forums and thread posts being used to threaten or blackmail is real and requires a solution that will shield entities or individuals with genuine needs while discouraging misuse of patents to harm others.

Author : Kaustubh Kumar, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

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