ABSTRACT

This research paper delves into the nuanced dynamics of pre-grant oppositions within the Indian patent prosecution landscape. It dissects the intricate relationship between patentees, the state, and society, unravelling the considerations that form the bedrock of the patent system. While focusing primarily on India’s unique approach to pre-grant opposition, the paper scrutinizes the historical evolution of this mechanism, aiming to evaluate its efficacy, limitations, and broader impact.

The study navigates through the history of pre-grant oppositions within the Indian Patent Act of 1970, meticulously examining its various facets. Highlighting statistics from the Economic Survey of 2021-22, it underscores the substantial gap between patents filed and granted in India compared to other global patent giants like China, the USA, Japan, and South Korea. The discrepancy in disposal times further emphasizes the complexities inherent in India’s patent grant process.

The paper meticulously details the nuances of pre-grant opposition, dissecting its advantages and drawbacks. The paper critically evaluates the HNLU Monograph, identifying certain limitations in its scope and analysis. It highlights the need to consider a more comprehensive dataset encompassing the entire spectrum of patent filing and opposition proceedings in India, stressing the significance of a holistic perspective.

Ultimately, this research advocates for a comprehensive re-evaluation of the pre-grant opposition system in India, emphasizing the need for continual refinement to strike a balance between encouraging innovation, protecting patentees’ rights, and safeguarding the broader interests of society.

INTRODUCTION

Patent prosecution involves the preparation and filing of the patent and filing the responses and amendments to the objections of the Patent examiner in the First examination report. Patent Prosecution leads to either Patent Grant or Refusal or Allowance or abandonment of the Application. Pre-Grant Opposition is one of the significant activities in Patent Prosecution, but there is no civilised nation that has integrated it or at least did not discard it in between. India following a separate procedure stresses on the Pre-Grant Opposition of Patents.

Further, the Patent Prosecution in India was considered more against-Applicant rather than being in support of the Applicant as during the course of Patent Prosecution an Applicant cannot file a infringement suit for patent since it is still in the process of being granted. Nevertheless, granted has a right to file against the grant of the Patent through Post-Grant Opposition and later for Revocation of Patent.

This paper would start with the history of pre-grant oppositions in India and then follow the evaluation of its disadvantages and advantages being a relatively distinct procedure used in the patent prosecution exclusively in India. Besides this, the paper also review the HNLU’s Monograph which proposes a shift in approach for Patent Prosecution by overhauling the Pre-Grant Opposition Proceedings and at last Welcoming few of the suggestions and recommendation that are included in their Monograph to strengthen the existing process.

HNLU’S MONOGRAPH: A CRITICAL APPRAISAL

Though A Study of Patent Opposition System (hereinafter, “the Monograph”) prepared by the Centre for Intellectual Property, Innovation and Technology of the Hidayatullah National law University, Raipur, Chhattisgarh, very well explains the Opposition System within the Patent Prosecution proceedings, it fails in myriad of aspects in deliberating on a few points. The Monograph is quite a few times can be seen as committing the fallacy of ‘Hasty Generalisation.’

FAILED TO CONSIDER THE ‘BIGGER PICTURE’

The Scope of the Study of the Monograph was limited to the opposition proceedings going on between July 2016 and July 2021 and that too not with respect to all the opposition proceedings but merely ‘around 250 applications.’ From Intellectual Property India Annual Report published annually by the Office of the Controller General of Patents, Designs, Trademarks, and Geographical Indications, the following data can be very well extracted:

It can be deduced from the same that in the year 2017-18, 46899 Patents were published and 260 Pre-Grant Oppositions were filed. While that in 2021-22, 69613 Patents were published and 481 Pre-Grant Oppositions were filed. The percentage of Oppositions filed to the Patents is even less that 0.5 per cent in different years while in 2021-22, it is 0.69 per cent. Furthermore, out of 481 Pre-Grant Oppositions filed, 275 were disposed of during 2021-2022.

[Image Sources: Shutterstock ]

Considering the number of Patent Applications published in any year with respect to the Pre-Grant Oppositions filed, the quantum of Oppositions is miniscule. Though it cannot be negated that there might be some mala fide Pre-Grant Oppositions, there exists no data substantiating the fact that most of the proceedings of Pre-Grant Oppositions are mala fide, which can be concluded through the Monograph. As the Monograph mentions one of its chief recommendations that the present system shall be revamped and the system prior to 2005 Amendment shall be put into effect so as to prevent ‘frivolous’ applications.

This would be detriment to the interests of any individual as then only ‘interested person(s)’ are allowed as a party to oppose. The question of ‘Locus Standi’ will be narrowed down, which shall not be a case. Moreover, as per the data it can be noted merely few patents face the Opposition proceedings, then in the present scenario, it would be better to equip the Controller Office with advanced technologies rather than limiting the scope of filing of Oppositions. There exists no data to which we can assertively state that the mala fide Oppositions are greater than the genuine ones and limiting the scope of the legislation merely on this assumption would also be detrimental to the interests of public at large. It can also be said that though there exist few cases wherein the Appellate Board or High Court has noted that individuals file mala fide cases but whole conclusion cannot be drawn based on one or two cases when the Oppositions filed are more than 480 in a year. Assuming the same would land us in the fallacy of ‘hasty generalisation’, resulting whole argument futile and illogical.

Thus, the Monograph failed to consider the Bigger Picture as it neither added any new empirical data nor analysed the data of 250 cases, provided in the Report by the Lakshmikumaran & Sridharan, considering the whole ecosystem of Patent filing and Opposition proceedings in India.

CAUSES OF DELAY IS NOT DUE TO OPPOSITION IF CONTROLLER IS FAILING ON HIS/HER PART TO ISSUE NOTICES, ORDERS, ETC.

The Monograph within the head stating the reasons for Delay of grant of Patent due to Opposition mentioned seven categories as:

It can be noted from the aforementioned seven categories that five are due to procedural latches; be it on the part of the Controller or Intellectual Property Office (IPO). Delay in issuing notice of opposition, hearing notice, further notices in cases of adjournments, delivering order and delay due to several adjournments are the lapses that cannot be counted in the drawbacks caused due to Pre-Grant Opposition. In any litigation, such issues are inevitable and shall be counted as procedural or administrative issues rather than as delays caused due to Pre-Grant Opposition. These lapses on the part of the Controller or Office can be very well remedied by the use of technology, which is even suggested by the Monograph however these delays cannot be per se mentioned as the drawbacks of Pre-Grant Opposition.

WELCOMED RECOMMENDATIONS

1. Use of Artificial Intelligence in grant of Patents

To remedy the administrative or procedural issues caused on the part of the Controller resulting in the Delays can be very well remedied by the usage of Artificial Intelligence, which is very well suggested by the Monograph in the short-term action plan. Different developed or developing nations have already started using Artificial Intelligence in their Patent System working and India can also do the same for the speedy grant of Patent in India.

2. Fixing the strict deadlines

The Monograph recommends strict observance of the deadlines mentioned in the 1970 Act and its Rules. Furthermore, it also recommends: “the Government may notify the necessary amendments with regard to the procedural aspects of the issuance of the notice of opposition and hearings, for the timely disposal of patent applications.”

For instance, it suggests that such guidelines can also be issued by the IPO wherein the notice of opposition may also be served to the applicant directly by the opponent. As a result, the Controller will have less work to do in serving the applicant with an official notice, and the initial opposition processes will go more quickly. The total amount of postponements that were permitted to both parties shall also be prescribed in numbers as well as in the time limits.

Additionally, the IPO may establish norms requiring a party making further requests for adjournments than prescribed to provide justification for each request, and granting the request only after the justification has been thoroughly examined. The IPO can also institute an automated mechanism through which a subsequent hearing notice is automatically issued when an adjournment is sought, fixing the date of the hearing to one month after the original date.

3. Time Limit for Pre-Grant Opposition

The Monograph recommends: “A deadline of 6 months to one year from the date of issuance of the First Examination Report (FER) within which all oppositions must be filed.” This is also a Welcomed Step as duration when the Opposition is filed certainly matters and the suggestion, if implemented, would certainly help in bringing down the practice of Serial Oppositions.

CONCLUSION

The patent prosecution process, including pre-grant opposition, plays a pivotal role in ensuring that only meritorious inventions receive protection. Examining the history of pre-grant opposition in India, it is evident that the system has evolved to balance the interests of patentees and the public. The undefined time limit for filing Pre-Grant Oppositions and the occurrence of serial pre-grant oppositions pose challenges. The recent amendments allowing any person to file oppositions have led to concerns about frivolous challenges, hindering the patent grant process.

Despite these challenges, undefined ‘locus standi’ in the pre-grant opposition proceedings has its merits. It acts as a filter, preventing the grant of frivolous patents and hindering evergreening. The opposition system ensures public participation, particularly in matters of public health, and prevents the grant of patents that could harm consumers.

Addressing the issues highlighted in the HNLU’s monograph is crucial. While the study raises valid concerns about delays and procedural issues, the proposed solutions, such as the use of artificial intelligence and stricter deadlines, offer a way forward. The suggestion of a time limit for pre-grant opposition aligns with the need for efficiency without compromising the right to challenge questionable patents.

In essence, pre-grant opposition in India is a dynamic aspect of patent prosecution that requires continual evaluation and refinement. Balancing the interests of inventors and the public is essential to maintain a robust patent system that stimulates innovation while safeguarding public welfare.

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

REFERENCES

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