India: Public Participation In Examination Of A Patent!

Last Updated: 20 October 2018
Article by DPS Parmar
Most Popular Article in India, October 2018

The public participation in the process of the examination of the patent application is as old as French patent system of 1700. The efforts were invariably made during that time also to grant patent to the practically genuine inventions. Incidentally the expert advice of Galileo was taken as back as in 1634 to evaluate the alleged invention of a new way to determine longitude (east - west position) of a ship as asserted by the inventor, Jean-Baptiste Morin, Professor of Mathematics at the Royal College in Paris. This patent application though was denied in view of the fact that applicant had not described how to overcome the practical difficulties in making the ultrafine measurements necessary for it to work the invention but it established the earliest system of public participation in the examination of a patent application. This denial was based on Galileo's expert observation that 'this idea to be as accurate in theory, as fallacious and impossible to practice.' The rationale behind these patent-application reviews by knowledgeable persons in the field of the invention was to provide useful information to the patent examiners before the patent is granted. The purpose behind making the third party observation available to the patent examiner was not only to make the examination system more efficient but also to make it effective so that the patents of a higher quality are granted.

History of third party intervention in India

Roots of the third party intervention before the grant of a patent can be traced back to the recommendations of Justice Ayyanger in Para 428 of the 1959 Report where he discussed the benefits of the similar provision in the UK act and found that provision extremely useful for the Indian patent law to safeguard the public interest.

"Clause 21-A—Refusal of patent without opposition

428. The U.K. Act contains a provision—Section 15—under which anticipatory publications might be brought to the notice of the Comptroller without the informant filing a formal and regular opposition to the grant of the patent, a provision which appears to me would be extremely useful. In the first place, it is confined to one specific ground upon which an application could be rejected—a ground which is capable of immediate verification and acceptance if the facts stated were correct. The provision would only mean that the informant assists the Patent Office to effect a more complete examination by bringing to its notice matters which might have been missed. Secondly, the informant might either be a person not having a locus standi to file opposition for the reason that he is not technically "a person interested" or one who is not in a position to undertake the expense of filing a regular opposition but might have in his possession information regarding anticipatory publications, which would make the examination more complicated and this would certainly be in the public interest.

Justice Ayyanger not only appreciated this provision but also suggested the draft to carry out his suggestion.

"429. I have drafted a clause which would carry out this suggestion.

"21-A. Refusal of patents without opposition.—If at any time after the acceptance of the complete specification filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the Controller, otherwise than in consequence of proceedings in opposition to the grant under the last foregoing section, that the invention, so far as claimed in any claim of the complete specification, has been published before the priority date of the claim;

  1. in any specification filed in pursuance of an application for a patent made in India and dated after 1-1-1912;
  2. in any other document [not being a document of any class described in Section 48 (2) or (3) of this Act], the Controller may refuse to grant the patent unless, within such time as may be prescribed, the complete specification is amended to his satisfaction."

'Refusal to patent without opposition'

This provision was in fact was retained as section 27 of The Patent 1970, with minor drafting modifications as suggested by The Joint Parliamentary committee report on patent law presented on 1st November 1966. Section 27 in the finally introduced Patent Act, 1970 remained the safety valve for grant of patents for invention where information relating to anticipation comes to the Knowledge of the Controller.

"27. Refusal of patent without opposition

If at any time after the acceptance of the complete specification filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the Controller otherwise than in consequence of proceedings in opposition to the grant under section 25, that the invention, so far as claimed in any claim of the complete specification, has been published before the priority date of the claim-

  1. in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912;
  2. in any other document in India or elsewhere, the Controller may refuse to grant the patent unless, within such time as may be prescribed, the complete specification is amended to his satisfaction:

Providedthat the Controller shall not refuse to grant the patent on the ground specified in clause (b) if such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29."

Patent office procedure under section 27

Under this erstwhile provision third party informer was not made as party to the proceedings. However, the patentee got an opportunity to either amend or defend his patent application. The applicant gets an opportunity to be heard under section 80 by the Controller before the patent is refused under section 27. The applicant could prefer an appeal on the decision of the Controller in the High court. If the patent is granted after hearing the applicant, the informer was informed but he did not get an opportunity to appeal against the order of the Controller as he was not party to the proceedings before the Controller. In interesting first reported case under section 27, CSIR Patent No .333/DEL/77 (1467561) for "An insulated Stove" came under scanner after the informant Indian Oil Corporation Ltd. communicated to the patent office that they were holding IN 144729, 143644, 143645 and 143646.The IOC asserted that the features claimed in Patent Specification No. 146756 were anticipated by these prior Indian patents. Based on this communication CSIR was asked by the Controller to amend the claims failing which the application should be treated as deemed to have been refused.

Pregrant representation under 2005 amendments

This so called anonymous informer approach under section 27 was omitted by Section 24 the Patents (Amendment) Act, 2005, with effect from 1-1-2005 after remaining in the statute for nearly 35 years. In its place a new refined legal provision under Sec.25 (1) of the amending Act of 2005 Act was inserted to allow Pregrant Representation by any person before the grant of the patent with many other grounds including the erstwhile ground of anticipation. Though the power of the Controller either to seek to amendment or refuse an application for patent remained unaltered but the grounds of the representation were enlarged to cover every ground on which a regular opposition could be filled under section 25 (2). Few more procedural changes like allowing the informant to file a statement and the evidence, to give submissions and participate in the hearing before the Controller were also made to make this provision transparent and effective. Therefore, under the current provision the Controller after hearing both the parties may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refused. The Controller is also required to pass a speaking order to simultaneously decide on the application and the representation ordinarily within one month from the completion of the hearing.

Misuse of Pregrant representation!

This being a preemptive provision without any cost attracted many opponents (person interested or otherwise) to file multiple representations in series one after another thus leading to unwarranted misuse. In Dr. (Miss) Snehlata Gupte vs Union Of India & Ors. Hon'ble Delhi High court clearly observed that there a need to discourage filling of serial oppositions.

"Need to discourage filing of serial oppositions

62. Accepting the submissions of pre-grant opposers in the present batch of cases that till such time the grant of patent is not entered in the Register, and notwithstanding that an order has already been passed on file by the Controller granting a patent, they can continue to file the pre- grant representations in terms ofSection 25(1) might result in the W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 34 of 40 phenomenon of serial oppositions‟, as has happened in the case of the applications filed opposing the patents applied for by J. Mitra & Company. Within a day after the Controller rejected the pre-grant opposition filed by SDL, Dr. Gupte filed a pre-grant opposition. Soon thereafter Dr. Rindani filed his pre-grant opposition. In other words, if this Court were to hold that the date of the grant of patent is only the date on which the factum of such grant is entered in the Register, then there would be no end to filing of pre-grant oppositions as long as on account of some delay on the administrative side the factum of grant of patent is not entered in the Register. Given the scheme of the Act, and the number of hurdles an applicant for grant of a patent has to overcome, even if the application is found to be "in order for grant‟, it is not possible to accept the interpretation put forth by the pre-grant opposers."

This Court order put breaks on the possible misuse of the process of law by rejecting serial application filed by Dr. Gupte and Dr. Rindani in this case. The Court categorically held in this case "that the filing of pre-grant opposition by Dr. Gupte and Dr. Rindani subsequent to 23rd August 2006 was, apart from being not maintainable in law, also an abuse of the process of law" and dismissed all the four Writ Petition with imposing costs.

" 68. Notwithstanding the above conclusion, this Court also holds that the filing of pre-grant opposition by Dr. Gupte and Dr. Rindani subsequent to 23rd August 2006 was, apart from being not maintainable in law, also an abuse of the process of law. This Court is not convinced of the bonafides of either of the Petitioners. There has not been any effective denial of the fact that both Petitioners were associated with SDL in some capacity or the other. It is impossible to comprehend that either of these W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 37 of 40 Petitioners was unaware of the fact that the filing of the pre-grant opposition by SDL or of the fact that it has been taken up for consideration by the Controller of Patents or of the fact that the order on such pre-grant opposition were pending.

69. Even according to these Petitioners, the community of those interested in the development of the test kits is a small one and every step taken by each competitor would be known to the other. This itself belies the fact that either Dr. Gupte or Dr. Rindani was unaware of the pre- grant oppositions already filed by SDL in relation to the patent applications of J. Mitra & Company. Given the long history of litigation between the parties, it creates further doubts on the bonafides of these two Petitioners.

70. For all of the above reasons, this Court finds absolutely no merit in the four Writ Petition (C) Nos.3516, 3517, 5422 and 5423 of 2007 in the first set and they are dismissed with costs of Rs.20,000/- each which will be paid by each of the Petitioners to J. Mitra & Co. within a period of four weeks."

Section 25 (1) refusal: Appealable or Not appealable

Another issue which remained in the forefront of legal debate and dispute during the period from 2002 to 2010 was whether refusal under section 25 (1) is appealable or not qua Intellectual Property Appellate Board. This controversy was fanned by IPAB decision in Yahoo vs Redif case where IPAB held in 2010 that Controller decision of refusal of patent under section 25 (1) is not appealable under section 117A of the Patents Act 1970 as amended. It is only after the decision of Delhi High court on 2nd February 2010 in series of Writ petitions that raise an important question of law concerning the maintainability of a writ petition under Article 226 of the Constitution to challenge an order passed by the Controller of Patents (Controller either allowing or rejecting a pre-grant opposition filed under Section 25 (1) of the Patents Act, 1970) some clarity was established. Chennai High court on 29 July, 2010 in Yahoo! Inc (Formerly 'Overture ... vs Intellectual Property Appellate finally set to rest this controversy and held that

"Therefore on a construction of the provisions mentioned above, we are of the considered opinion that an appeal would lie against the refusal of the patent under Section 25(1), since the same is relatable to an order passed under Section 15 of the Act which in effect is one appealable under Section 117-A of the Act."

Third Party Observation in other jurisdictions

The legal provision to preempt a patent based on third party submission was accepted by many patent jurisdictions such as USPTO (Section 8 of [new AAA Act] PREISSUANCE SUBMISSIONS BY THIRD PARTIES; European Patent office : (Article 93 of European convention);Japan: (Article 13 bis of the Implementing Regulations of the Patent Act); China :[ Article 48 "Rules for the Implementation of the Patent Law of the People's Republic of China" Any person may, from the date of publication of an application for a patent for invention till the date of announcing the grant of the patent right, submit to the patent administration department of the State Council his or its observation, with reasons therefor, on the application which is not in conformity with the provisions of the Patent Law.] and so on . It may be noted that while the time of filing or grounds on which the public observation are permitted may differ in content for these jurisdictions but aim and object of enhancing expeditiousness and appropriateness of patent examination remain consistent. One aspect about this public observation system in some jurisdiction is that any third party (even anonymously) can submit the information relating to prior art to aid the examination process. In the Indian context the observation of Delhi high court in relation the Pregrant opposition in UCB Farchim vs Cipla case need a mention here where Court also founds merit in the contention that "the pre-grant opposition is in fact in aid of the examination of the patent application by the Controller."

Third Party Observation under PCT

Around the same time in the year 2010 when Indian patent law was crystallising its legal tangles relating to the Pregrant representations issues under section 25(1), PCT Assembly was deliberating on the opening up of the PCT system for Third Party Observation (TPO) on the applications published under PCT. The proceedings of Patent Cooperation Treaty (PCT) Working Group Third Session Geneva, from June 14 to 18, 2010 highlighted the need for the TPO under PCT. Indian delegation welcome the proposal of the Secretariat regarding the establishment of a third party observation system on an informal basis.

"38. The [Indian] Delegation welcomed the proposal of the Secretariat regarding the establishment of a third party observation system on an informal basis. It was considered that this system should be set up to seek third party observations limited to and relevant for the establishment of international search reports, written opinions and international preliminary reports on patentability."

During the meeting of International Authorities under the PCT held in Canberra, Australia, in the February 2012 formal announcement was made relating to establishment of the informal system of receiving third party observations for Cooperation Treaty (PCT) applications. From 2nd July 2012 the Third Party Observations system was also made available through ePCT, for the published PCT applications. Under this formal system any third party (even anonymously) can submit one observation only any time after the date of publication and before expiration of 28 months from the priority date, provided the application is not withdrawn or considered withdrawn. [see "Administrative Instructions under the Patent Cooperation Treaty: PART 8]

PART 8
INSTRUCTIONS RELATING TO OBSERVATIONS BY THIRD PARTIES

Section 801
Third Party Observation System

  1. The International Bureau shall provide an electronic system for third parties to make observations referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step ("third party observation system").
  2. The third party observation system:

    1. shall provide a third party with the option to remain anonymous;
    2. shall allow observations to include a brief explanation of the relevance of each prior art document referred to in the observation and to include a copy of the prior art document;
    3. may limit the number of prior art documents which may be referred to in one observation; and
    4. may limit the number of observations permitted to be made in relation to one international application, per third party and in total.
  3. The International Bureau shall take technical steps to prevent abuse of the third party observation system.
  4. The International Bureau may temporarily or indefinitely suspend the use of the third party observation system if it considers it necessary to do so."

Slow but steady use of third party observation system

Public acceptance of the public participation in the patent examination process is gaining importance slowly. There is a slow growth in filing of the public observation in PCT. It has been more than 5 years since WIPO introduced this process but only 1,422 TPOs were received as per the information in the WIPO Circular 1527. In USPTO according to one report during the first two years of the revised preissuance submission process nearly three preissuance submissions per day were received. In JPO this use in the recent years, remain around 7,000 per year. In India pregrant filing remained at even lower as compared to USPTO and JPO. In the financial year 2016-17 only 206 pregrant oppositions were received against 86766 applications published in India Patent office. This slow and low participation in pregrant opposition process is attributed to the fact that the advantages with these submissions at times outweigh the disadvantages that may results from such submissions. Forewarning the applicant about the possible prior art anticipation leads to amendment of claims and making the patent difficult to challenge later.

Conclusion

The current revival of third-party observation system is seen as a push by various IP offices to try and improve the quality of the patent grants. Grant of a robust patent remained the hall mark of every patent system where the patent application is subjected to rigorous examination requirements. Primary principle of anticipation is basically adopted to rule out grant in clear cases. In order to ensure high quality of patent grants a provision for the third party observations before the grant of a patent is being allowed to be entertained now by many other patent offices including PCT. This provision is simple and cost effective as it can be initiated without the informant filing a formal and regular opposition to the grant of the patent. Preempting a patent by informing patent office about a revenant prior art is a good strategic approach to keep the competitor from gaining the marketing dominance. One must understand every granted patent carries a burden of cost on third party. Moreover the third-party submissions will not result in estoppel but it may help getting better quality patent results. It is beneficial to the clients who seek better clarity in freedom to operate in the same filed of the technology. Informing the patent office early at times result in forcing a competitor to narrow their claims which off course is a good business decision. Legal advice must be taken where the advantages with these submissions may outweigh the disadvantages to avoid botched up third-party submissions. However, client based approach to this system should be adopted to meet the business strategy of the client. For some clients it is good enough to force the patentee to narrow their claims. Best approach seems to be to utilise this opportunity at minimum cost at the earliest, to keep the canvas of 'freedom to operates' wide enough without fear of infringement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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