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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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Can pre-grant opposition be filed while the decision of the Controller is on appeal before the IPAB?
Dhaval Diyora vs. Union of India and ors. decided on November 5th, 2020 by Bombay High Court writ petition (l) no. 3718 of 2020.
The Bombay High Court addressed the question of whether the pre-grant representation could be filed while the decision of the Controller of Patents to reject a patent application is on appeal before the IPAB.
This case refers to the Patent Application Numbered 991/MUMNP/2003 in the Indian Patent office that was published on 16/03/2007.
Pfizer Products Inc had filed an application for patent grant in India on October 27, 2003. The application referred to invention titled “Optical Resolution of (1-Benzyl-4-Methylpiperidin- 3-YL) Methylamine and the use thereof for the preparation of Pyrrolo 2, 3-Pyrimidine Derivatives as Protein Kinases inhibitors”. After a series of examinations and responses, the Controller of Indian Patent office rejected to grant a patent for the above mentioned Patent Application. The Controller of India Patent Office refused the patent grant on the grounds that Pfizer Products Inc had not disclosed EPO action and the compound was the same as the subject matter of another.
However, Pfizer Products Inc filed a review on August 9, 2011. That was also rejected. Further, Pfizer Products Inc filed an appeal before the Appellate board on June 26, 2014.
Meanwhile, the European Opposition Division order was issued on October 27, 2014 which declared that claim compound was novel and invented.
The IPAB passed an order directing the Indian patent office to consider the matter afresh. The Controller held that the invention was not patentable and rejected the Application on September 3rd 2015.
However, the appeal was pending before the IPAB. IPAB took up the appeal on August 10, 2018 and order was reserved for giving reasons on merits and stated that the hearing was concluded on August 10, 2018, and it was fixed for pronouncing the reasons on 21st August 2018.
On 18 August 2020, the Petitioner filed pre-grant opposition. Pfizer Products Inc replied that the application was not maintainable on the same day.
It is laid down by the Supreme Court in Bureau Veritas & Ors that when the court records as to what transpired in the court, it is conclusive of the fact stated. It cannot be controverted in such a casual manner as said to be done by the Petitioner.
Further, it should be noted that the scheme of section 25(1) read with Rule 55 postulates that both the applications seeking patent and pre-grant opposition are to be heard by the Controller simultaneously. However, the Section 25(1) read with Rule 55 does not apply for the IPAB.
In this case, the Petitioner had not filed a single pre-grant opposition since the date of publication i.e., March 16 2007 until the final rejection by the Controller on September 3rd 2015. The Section 25(1) postulates that the pre-grant opposition can be filed during the period from the date of publication till the date of final rejection by the Controller in the Indian Patent Office. Further, the IPAB too concluded the hearing for the patent application on August 10, 2020 and the order was reserved for giving reasons on merits. But the Petitioner filed the pre- grant opposition only on August 18, 2020 i.e., after both the Controller as well as the IPAB had effectively concluded the hearing on the patent application by Pfizer Products Inc. Since the application seeking patent was rejected by the Controller of Indian Patent Office, the Petitioner has no right to file a pre- grant opposition u/s 25(1). Secondly, after the Appellate Board has allowed the appeal and has directed the Controller to issue the patent, only ministerial actions remained, and no pre-grant opposition could be filed. Hence the IPAB granted the patent to Pfizer Products Inc on 21 August, 2020.
The Petitioner approached the Bombay High Court with a writ Petition stating that the Appellate Board pronounced the order on 21 August 2020 granting the patent to Pfizer Products Inc. The contentions raised by the Petitioner was based in two parts:
- U/S 43, the patent application is granted when it is sealed and not when the hearing is concluded with the phrase- “patent shall be granted”.
- U/S 117-D the Procedure for application for rectification, etc., before Appellate Board- the section 117-D postulates that the Appellate Board can only rectify the application.
The contingency specified under the first part of section 43 was already over, and only ministerial act remained to issue the patent. Section 116 and 117 of the Act confer wide powers on the Appellate Board. As per section 117- D (2) of the Act the orders passed by the Appellate Board have to be implemented by the Controller. Section 117-D(2) pertains to amendment of entries and therefore order of Board is an order granting the patent. The Appellate Board had granted the patent.
In particular, Pfizer Products Inc, the Controller and the IPAB referred to section 117-D(2) stating the IPAB can not only look into an application for rectification but to every order or judgement relating to patent under the Act. Hence, the IPAB rejected the appeal, holding that once the appeal is kept for pronouncement of reasons, application to the effect that order should not be pronounced cannot be entertained.
Further, the Bombay High court observed that The Legislative intent to widen the locus standi under the amended Section 25(1) is not to create 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. Hence the Bombay High court dismissed the Writ petition and concluded that the Petitioner’s pre-grant opposition is not maintainable in law, therefore the challenge of the Petitioner to the impugned order cannot be entertained and no direction can be issued to hear the application filed by the Petitioner.
The sequence of events is as follows:
|
Sl. No |
Date |
Event |
|
1. |
29 May 2002 |
Pfizer Products Inc filed an International Patent Application – PCT/IB02/01905 |
|
2. |
10 June 2002 |
National Phase Application |
|
3. |
27 October 2003 |
Pfizer Products Inc filed National Patent Application – PCT Appl. PCT/IB02/01905 |
|
4 |
16 March 2007 |
National Patent Application 991/MUMNP/2003 was published under Section 11-A |
|
5 |
30 March 2008 |
1st FER |
|
6 |
27 January 2009 |
FER reply by Pfizer Products Inc |
|
7 |
14 March 2011 |
Notice was issued by the Controller of India – two groups of inventions cannot be included in the same application and the claims were not novel. |
|
8 |
9 June 2011 |
Written submissions were filed along with the amended claim by Pfizer Products Inc |
|
9 |
9 August 2011 |
2011 Pfizer Products Inc filed a review. Cause: The Patent Office refused Pfizer Products Inc 's application on the ground that Pfizer Products Inc had not disclosed European Patent Office action and the compound was the same as the subject matter of another.
|
|
10 |
27 March 2014 |
Review dismissed. |
|
11 |
26 June 2014 |
Pfizer Products Inc filed an appeal before the Appellate Board. |
|
12 |
27 October 2014 |
European Opposition Division order was issued which declared that claim compound was novel and invented. |
|
13 |
31 October 2014 |
Appellate Board passed an order directing the Patent Office to consider the matter afresh. |
|
14 |
22 January 2015 |
Hearing. |
|
15 |
30 January 2015 |
Claims amended and filed. |
|
16 |
3 February 2015 |
Written submissions were filed. |
|
17 |
3 September 2015 |
The Controller held that the invention was not patentable and rejected the application. |
|
18 |
10 August 2020 |
The Appellate Board concluded the hearing |
|
19 |
18 August 2020 |
Petitioner filed pre-grant opposition. |
|
20 |
18 August 2020 |
Pfizer Products Inc replied that the application was not maintainable. |
|
21 |
21 August 2020 |
IPAB grants the patent to Pfizer Products Inc. |
|
22 |
22 September,2020 |
The Petitioner approached the High Court with a Writ Petition |
|
23 |
05 November, 2020 |
Writ Petition dismissed. |
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5 options available if your product is infringing on a patent
Companies and individuals alike take aggressive steps to protect their patent rights. Most often, if a patent holder finds out that a product or a process is violating his patent rights, he might seek damages from the infringing party. Such enforcement of patent rights is usual in developed economies, such as US and Europe. However, in the recent years, even India has seen its share of attempts to enforce patent rights (Ex: TVS vs Bajaj).
2 – Compulsory license
3 – Cross licensing
4 – Licensing
5 – Invalidation
