Frivolous Pre-grant oppositions – IPAB’s order provides guidelines on dealing with frivolous pre-grant oppositions

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The Patents Act, 1970 provides a provision to oppose a patent filed before the Indian Patent Office (IPO). A patent application filed before the IPO can be opposed by a third person/entity at different stages of patent prosecution. A patent application is usually opposed in two ways, either by a Pre-grant opposition or a Post-grant opposition under Section 25 of The Patents Act, 1970. A Pre-grant opposition, according to Section 25(1) of The Patents Act, 1970, can be filed by any person, in writing, opposing the grant of a patent subsequent the publication of the patent application until the grant of the patent on the grounds disclosed in Section 25(1). A Post-grant opposition on the other hand, according to Section 25(2) of The Patents Act, 1970, can be filed only by a person interested (a person or an entity involved in the same field), only after the grant of the patent and within a year from the date of the grant. Post-grant oppositions are usually filed by competitors or any person involved in the same field since the time frame involved in post-grant opposition is limited and the obligations set by the IPO for filing a post-grant are constrained as compared to the pre-grant, as Section 25(2) clearly mention “person interested”. However, Section 25(1) states that “any person” can file a pre-grant opposition.

Patent oppositions can be greatly used to prevent grant of trivial patents that could become part of patent trolling. However, several a times patent oppositions are exploited in preventing grant of valuable patents thereby impacting competitor’s business. Pre-grant oppositions are ones that have been known to be misused as any person can file a pre-grant and no official fee is involved in filing the pre-grant. A recent IPAB order Novartis vs Respondents (CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS (R1), ASST. CONTROLLER OF PATENTS & DESIGNS (R2), INDIAN PHARMACEUTICAL ALLIANCE (R3), NATCO PHARMA LTD. (R4), KUMAR SUSHOBHAN (R5), DR. REDDY’S LABORATORIES LTD. (R6), HIREN DARJI (R7), G. SRINIVASA RAO (R8)) sheds light on the one of such frivolous pre-grant oppositions.

The above appeal was filed by the appellant against orders passed by R2 during the course of examination of the pending patent application 4412/DELNP/2007 and six pre-grant oppositions filed against it by R3 to R8 under Section 25(1) of The Patents Act, 1970 between the period 26/05/2016 to 18/09/2020.

The main concerns of the appellant were as follows:

  • All hearings fixed between 08/01/2020 – 30/10/2020, had been repeatedly adjourned by the opponents, thereby delaying the process of examination and therefore the grant of patent.
  • R2 at the command of R3-R7 had adjourned the hearings scheduled between 26/10/2020 – 30/10/2020 indefinitely till physical hearings were possible, as R4 and R6 had expressed “preference” for physical hearing.
  • The patent was dated 08/11/2006 and was published under section 11(A) on 24/08/2007. Significant time had passed and even if the patent were to be granted at that point of time, 14 years of patent had already expired.
  • Several of the opponents were “benami” and “front men” put by competitors. (The appellant cited reasons for to justify the claim)

The appellant submitted the details and pleaded before the IPAB to dispose the matter at the earliest as the appellant would suffer irreparable injury and the exercise of filing patent application to protect the invention disclosed in good faith would become redundant and meaningless. It was brought to the notice of IPAB that the first pre-grant opposition was filed in 2016 and atleast one pre-grant was filed almost every year thereafter. Furthermore, details of the opponents were highlighted, like R5, R7, R8 not disclosing their qualification or area of business or profession or occupation, and R4 and R6 being members of R3, and also how the oppositions had been avoiding virtual hearings just to delay the process for grant of patent application.

During the hearing, the learned counsel of R4 called attention of the IPAB about certain limitations in hearings through virtual conferencing at IPO that led to them opting for physical hearing, such as restriction of participation of only 4 persons other than Controller and the non-availability of document sharing facilities.

IPAB, considering the details submitted, issued the following directions to dispose the matter at the earliest:

  • The Controller to fix up virtual hearings and finish all the pre-grants oppositions within span of 15 days.
  • If the Controller had heard existing parties, he shall go ahead with pronouncement of such order.
  • The Controller shall consider whether any new ground has been established or any new documents have been relied upon for filing subsequent pre-grant. The e-module shall be suitably modified to annotate as to whether the second/subsequent pre-grant opposition is maintainable or not, in the patent application file, even if maintained electronically.

In addition to the directions, in order to curb the misuse of the pre-grant oppositions, IPAB recommended modifying the E-filing System at IPO to keep check on several points, of which few are discussed below. In light of several cases where pre-grant oppositions have been filed even when there were no patent application pending at the IPO, IPAB recommended modifying the electronic filing module in a way that no such incidences are repeated in the future, by having a validation of the patent against which pre-grant oppositions are filed. In order to curb filing of pre-grant oppositions by “benami” applicants, IPAB recommended that “any person” filing pre-grant must submit his valid Aadhar Card/Voter id Card/ Passport/Driving License to authenticate his identity. IPAB also recommended modifying E-filing System at IPO in a way that, the pre-grant oppositions are rejected when the opponent fails to submit proof of his identity even after given a chance of submitting the same within 15 days from the date of communication. Furthermore, IPAB recommended to update e-module in a way that the Controller can annotate his opinion of refusing or requiring amendment to the patent application, even if such file in maintained electronically.

Patent oppositions, at times, can be misused in preventing or delaying the grant of a competitor’s patents. A patent applicant can only file an infringement case upon the grant of his/her patent, and not before the grant. The competitors may exploit this shortcoming and file for a pre-grant opposition, complying with the rules set by the IPO, to prevent or delay the grant of patents. Filing of such frivolous pre-grant oppositions just to delay the prosecution is an unethical and unfair business practice. The IPO and the IPAB have acknowledged wrongful use of the pre-grant oppositions and have taken measures to curtail repetition of such wrongful acts. Patents give legal rights to its owner to exclude others from making, using, or selling an invention for a limited number of years. Prolonging the prosecution due to the frivolous pre-grant oppositions may be hugely demoralizing to the applicant. It is well known that patents are one among several reasons that promotes innovation because of the incentives that a patent offers. Further, innovation is a key factor in the development of a country’s economy and infrastructure. Therefore, it is pertinent that IPO comes up with measures that keeps the frivolous pre-grant oppositions in check thereby promoting a healthy and competitive patent regime in India.

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Best regards – Team InvnTree   

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