PRE-GRANT OPPOSITION AND POST-GRANT OPPOSITION IN PATENTS

PRE GRANT OPPOSITION
POST GRANT OPPOSITION

Patent protection provides the patentee with an exclusive right which is granted to the original inventor.

The main three criterions for Patent protection is that the invention has to be non-obvious, involve an inventive step, have novelty in it and must be capable of being applied industrially. Patent provides a monopoly right to the inventor sell his invention. Now as there are so many inventions out there if is very much possible that existing inventions are duplicated and a new patent is filed. This is when any person can oppose the grant of such patent during the application stage itself and even after the grant of patent it can be opposed by interested parties. The same shall be dealt with in this article.

When India signed the TRIPS agreement, Section 25 of the Act was amended in consonance with the TRIPS Agreement and an “integrated” system of pre-grant and post-grant opposition was introduced in India.

PRE-GRANT OPPOSITION Once the details of a new invention is published, pre-grant opposition gives an opportunity to oppose the grant of a patent right after its publication. Section 25(1) of the Indian Patent Act of 1970 deals with Pre grant opposition. It states that any person can place a pre grant opposition on various grounds which are stated under Section 25(1) sub sections (a) to (k).

The grounds for opposition are as follows:

  • Section 25(1) (a) – this section sums up that an opposition can be posed after publication when there is wrongful obtainment of the invention.
  • Section 25(1) (b) – if there is an anticipation of a prior publication at any part of the world then a pre grant opposition can be placed.
  • Section 25(1) (c) – sometimes inventors can have an earlier claim regarding an invention. This is where this section is applicable; to ensure that if an inventor has a prior claim on the invention then a pre grant opposition can be filed.
  • Section 25(1) (d) – the nature of the invention is such that it is in the public domain or public use before the priority date then such inventions can be opposed.
  • Section 25(1) (e) – the invention is generic or it doesn’t fulfil the criteria of non-obviousness and lacks inventiveness (lack of inventive step) then it can be opposed after publication.
  • Section 25(1) (f) – Section 3 of the act states some subject matters that cannot be patented, if the invention seeking patent falls under any of this subject matter then this provision renders a possibility of pre grant opposition.
  • Section 25(1) (g) – if the invention seeking patent gives insufficient information as to its complete specification then it furnishes a ground for opposition under Section 25 (1)(g).
  • Section 25(1) (h) – if material information is falsified or there is non-compliance if the requirements of Section 8 (failure of disclosure of information to the Controller) then an application can be opposed.
  • Section 25(1) (i) – in case of any convention application, if it’s not filed within 12 months from the date of 1st application for protection made in a convention country.
  • Section 25(1) (j) – if there is no disclosure of the geographical origin of the biological material used in the invention then the application can be opposed.
  • Section 25(1) (k) – if there is an anticipation that the subject matter of invention already exists in the form of traditional knowledge at any part of the world then the application can be opposed under this provision.

Filing of Pre-grant opposition

A pre grant opposition can be filed through representation to the Controller using Form 7A. A statement has to be filed along with evidence, if any exists and a request for hearing has to be made if it is desired. The Controller has to consider such a representation only if a request for examination has been filed.

Pre grant opposition has no extra official fees involved and it is one of the most common routes of raising opposition. A patent can only be granted once 6 months have passed at least after the date of publication.

Applicable Rules

These rules are part of the Patent Rules, 2003. The applicable rules to the opposition procedure is as follow:

  • Rule 55- this rule has 5 sub-rules. It basically states that an opposition can be filed in Form 7(A) at the appropriate office and a copy has to be sent to the applicant. Sub rule (1A) states that “no patent can be granted before the expiry of a period of 6 months from the date of publication”. This rule basically elucidates the very first step to filing a pre grant opposition.
  • Rule 56- this rule deals with the “Constitution of Opposition Board and its proceeding”. Sub rule 1 states that when an opposition notice is received under Rule 55A, the Controller shall constitute an opposition board with 3 members out of which one would be nominated as chairman. The eligibility criteria of such members is discussed under Section 73(2) of the Act. The Board constituted shall conduct examination of the opposition notice along with the documents filed under Rules 57-60. A report has to be submitted containing reasons on each ground within 3 months.
  • Rule 57- this Rule elucidates the “Filing of written statement of opposition and evidence”. The Patentee is entitled to a copy of the statement and evidence if any provided.
  • Rule 58- deals with “Filing of reply statement and evidence” by the Patentee or applicant. When the patentee decides to contest the opposition, he must reply to the appropriate office and fully set out the grounds upon which the opposition is contested and the evidence (If any) must be submitted within 2 months. In case the Patentee doesn’t desire to contest the opposition then the patent is deemed to be revoked.
  • Rule 59- the opponent may within 1 month from the date of delivery of the copy of the Patentee’s reply statement and evidence (if any) must reply confined to the patentee’s evidence and statement and deliver a copy of the same to the patentee.
  • Rule 60- this is an interesting rule that deals with the fact that when further evidence surfaces. Generally no further evidence can be delivered by either the patentee or the opponent unless permitted by the Controller.
  • Rule 61- deals with the copies of documents to be filed /supplied. All documents from the notice, statement to the evidence by either parties shall be furnished in duplicate unless directed otherwise by the Controller. The standard language of such documents is English and in case of any other language, copies of these documents must be furnished in English as well.
  • Rule 62- this is one of the significant Rules as it deals with Hearing. Once the evidence is presented and on receiving the recommendations of the Opposition Board or if the Controller thinks fit, a date of hearing shall be fixed. The parties must receive at least 10 days of notice before hearing date. All the members of the opposition board must be present.
  • Rule 63- deals with “determination of costs”. If the Patentee wants to withdraw the Patent after the opposition notice then he/she shall notify the Controller. The Controller may decide if any costs shall be awarded to the opposition, all depending upon the merits of the case.

POST-GRANT OPPOSITION

  • As the term suggests, such opposition to a patent can be filed once the patent has already been granted. There is a slight difference when it comes to filing party i.e. only interested parties can file Post grant opposition unlike pre grant opposition which can be filed by anyone.
  • Post grant opposition has to be filed before the expiry of 1 year after the date of publication of the grant of patent. Who is an interested party? It is someone who is crucially involved in the research related to the same field of the invention (which got patented) or is involved with its promotion. [U/s 2 (1) (t)]
  • It is clear that infringement proceedings cannot be initiated during the application stage (i.e. during pre-grant opposition). Once a patent is granted then only infringement proceedings can be initiated. Grounds for placing post-grant opposition is dealt with under Section 25(2) of the Act. These grounds are completely similar to Section 25 (1).
  • The remedy through post-grant opposition process is available only through courts, thus, the redressal process is often lengthy. In case of wrongful patents, the patent holder enjoys the monopoly.

Opposition board

Similar to the Pre grant opposition procedure, the opposition board consists of 3 members, one of which is nominated to be the Chairman by the Controller.

Hearing

The hearing procedure is also similar to the Pre-grant opposition process.

PATENTS DEEMED TO BE GRANTED

In case of Sugen Inc v. Cipla Ltd, the court observed that in case of a pre-grant opposition, the date of grant of Patent is vastly different from the date of Publication of the Patent in the Journal. When the Controller passes the order of grant that date is deemed to be the date of grant of patent and not the date of publication in the “Patent Office Journal”. However, there lies a date of the “grant of a patent for filing post-grant opposition is the date on which the grant of a patent is published in the Journal”. This was previously observed by the Court in Dr Snehlata C Gupte v. Union of India. These cases clear the confusion between date of grant and filing in case of pre grant and port grant opposition.

Interestingly enough it is observed that there exists a small window where no opposition can be filed. Period between the date grant of a patent (Controller’s Order) until the date of its publication in the official Patent Journal.

MAJOR OPPOSITION CASES

Neon Laboratories Pvt.Ltd. v. Assistant Controller – the Writ petition was filed by Neon Labs against Patent Controller’s Order granting a patent to Troika Pharma. Neo Labs pursued this petition under Rule 55(6) of the Patent Rules of 2003 related pre-grant opposition (Currently Rule 55 sub rule 6 has been omitted)

In this decision a writ petition was filed before the the Bombay High Court. The Court interpreted Section 25(1) of the Patents Act and categorically held that when a pre-grant opposition occurs and the opponent requests for a hearing, the Controller must mandatorily grant the opponent such a hearing.

In the case of Cipla Ltd. v. Union of India & Ors, the Apex Court duly emphasised the importance Opposition Council and their advice. In this case the Apex Court held that the Opposition Board’s proposals must be made available to the parties so that when the hearing is taking place, they could effectively advance their cases before the Patent Controller respectively.

The Court further held that although the Patent Act, 1970 and the Patent Rules, 2003 don’t give the Opposition Board any obligation to provide either party with a copy of the report (same goes for or the Controller); since the Opposition Board’s report is essential to the decision-making process, in the view of natural justice the Opposition’s proposals must be made available to the Parties involved. Therefore, before the Controller passes the order, a copy of the Opposition Board’s recommendations should be made available.

It is abundantly clear that although the opposition procedure is fairly easy in application it is quite time consuming. However, it must be appreciated that ample opportunity is given to opponents and the applicant to provide evidence against the grant of patent and subsequently defend the same. The Opposition Board plays a major role in this procedure. The Pre grant opposition process is much more cost effective that the post grant opposition even if the procedure involved is almost the same. The Courts have also adequately interpreted Section 25 of the Act.