A Primer on Pre-Grant Opposition

Let’s dig into the intriguing patent grant procedures and the crucial role of pre-grant opponents in influencing the fate of patents in the intellectual property realm.

A patent is an exclusive right provided to the inventor under the Patents Act, 1970, to exploit his inventions for a specific period of time. Being one of the most important tangible intellectual properties, it plays a crucial role in promoting innovation and economic development by providing inventors with privileges and means to protect their creations.

The Patent Act of 1970 provides the procedure for patenting inventions. It begins with an application made to the controller as provided under the Act, along with the filing of specification of the invention. The controller publishes the application to give a chance to public to oppose or object the grant of patent. Oppositions are invited from the public to raise objections against the grant of a patent, and if no opposition arises or the dispute is settled in favour of the inventor, the patent is legally awarded, conferring the patentee with certain rights.

Opposition serves as a crucial mechanism for maintaining balance in promoting the growth of new innovations and ensuring that patents are granted on merit. This procedural aspect allows third parties to voice concerns or contest the grant of a patent, contributing to the overall scrutiny of patent applications. By providing a platform for opposition, the patent system incorporates a form of checks and balances.

The Patent Act, 1970, provides that “any” person has the right to raise objections based on the reasons cited under Section 25(1) of the Act to the controller regarding the issuance of a patent prior to its grant.  Before Patents (Amendment) Act, 2005, only “interested” people or those who were involved in the particular areas of inventions for which patent application was made could question the validity of patents before its grant. Following the amendment in 2005, any person whether skilled or unskilled in that area of that particular invention could oppose a grant of patent.

Opponents can raise both technical and formal objections with respect to pending patent applications during pre-grant opposition process. The objections given under Section 25(1) of the Patents Act, 1970, include wrongful obtainment, prior claim, non-disclosure, obviousness, insufficient description, etc.

According to Rule 55 of the Patents Rules 2003, a pre-grant opposition representation must be submitted through Form 7(A) to the applicable patent office branch, with a copy sent to the applicant. The submission should encompass a case statement and any accompanying evidence to prove the opponent’s claim. After the request is made by the opponent, a hearing can be held by the controller. The Controller is authorized to review such representations only upon request to examine the patent application.

After reviewing the representation, if the controller believes that the patent application should be denied or modified, a notice to that effect will be sent to the applicant. After receiving such notice, the applicant must submit a copy of the reply to the oppositions with relevant evidence to the controller and sharing the same with the opponent. After examining the submissions of both parties, the controller will make a decision on how to proceed with the application.

Recent Interpretation of the Pre-Grant Opposition Process in view of the Participation of Opponents

Do these pre-grant opponents claim to participate in the patent examination process?

This issue was discussed in Novartis AG v. Natco(LPA 50/2023), where the Division Bench of the High Court of Delhi on January 9, 2024, dismissed the plea contending pre-grant opponents should have a right to be heard during the patent examination process. In this case, the applicant filed an Indian patent application bearing application number 4412/DELNP/2007 dated 08.11.2006.  One of the pre-grant opponents to this patent application was Natco Pharma Limited, which challenged the order passed by the Controller, wherein the Controller approved and directed for certain amendments without an opportunity to be heard by the pre-grant opponents. Neither the Patent Act nor the Patent Rules allow interference by pre-grant oppositions in patent examination procedures carried out by the controller, argued the applicant. Pre-grant opponents’ submissions could be considered as assistance to the examination process, but ultimately the examination process is independent and distinct from the pre-grant opposition process, clarified the Delhi High Court. The bench, while rejecting the argument of Natco claiming a right to be heard or to participate in the patent application process, particularly in cases involving amendments to the application allowed by the Controller, emphasized that the rejection of opposition does not lead to the grant of a patent.

Opposition in the patent granting process indeed plays a crucial role in eradicating monopolies over particular inventions and allowing third parties to challenge the weak patent applications. It avoids the hassle of revocation of patents and litigation proceedings, which are often tedious and expensive. From the above-discussed case law, we can infer that pre-grant Opponents roles are limited in the patent examination process, and they only act as supportive entities to the controller in the grant of patents.

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• Source: https://www.theippress.com/2024/03/06/from-opposition-to-participation-did-the-role-of-patent-opponents-upgrade/