India: Pre-Grant Opposition Is 'In Aid Of Examination' Of A Patent Application

Last Updated: 8 July 2011

Article by Sonam Lhamu Bhutia and Ms. Neelu

As the Indian patent regime continues to be in a state of flux, a wave of instances, lately, have significantly indicated the settling of law in some select areas from the view of patent practice. The Indian courts have shown a gradual progression with regard to adjudication of IP disputes. The judicial temper has led to filling up of numerous gaps in the law and rules governing the practices over the years, but witnessing the current crop of judicial decisions, there would be no gainsaying in the fact that the present time is now ready to have a critical mass of judicial precedents to sustain this chain reaction. In one such instance, Acme Tele Power Ltd. Vs The Controller General of Patents and Designs (S.R. No. 529/2009/PT/IPAB; IPAB Circuit Bench, Delhi) before the Intellectual Property Appellate Board (the Board), the Registry of the Board sought clarification from the appellant as how the order passed under section 25(1) of the Patents Act, 1970 (the Act) is admissible or appealable before the Hon'ble Board as any decision issued by the Controller under section 25(1) of the Act is not appelable under section 117A(2) of the Act. The Appellant had been refused grant of patent in a pre-grant opposition and thus had appealed against the order of the Controller of Patents refusing grant under section 25(1) of the Act on the Indian Patent Application.

The Appellant's contention was that the appeal is maintainable as the acceptance of a representation made in a pre-grant opposition under Section 25(1) of the Act would amount to a refusal of the subject application under Section 15 of the Act under which an appeal lies as per section 117A(2) of the Act. The appellant also sought to reinforce the argument by the legislative logic recognized by the Hon'ble Supreme Court in J.Mitra & Co Vs Asst Controller of Patents (2008) 10 SCC 368. The Hon'ble Supreme Court in the instant case had held that an order rejecting a representation of a pre-grant opposition proceeding is not appelable since the opponent aggrieved, if he is a person interested (and in most cases they are), has the option of filing a post-grant opposition or a revocation under section 25(2) and section 64 of the Act respectively. But since the refusal of a patent application pursuant to a pre-grant opposition would be treated as a refusal order under Section 15 of the Act which is appealable before the Hon'ble Appellate Board, there was no need for the legislature to include Section 25(1) in Section 117(A)(2) to cover the cases where a patent application has been refused pursuant to a representation in a pre-grant opposition. The appellant reasoned that, the pre-grant opposition is only an extension of the examination process of a patent application by the examiner with the assistance of a third party (the opponent) and also referred to the Rule 55(6) of the Patent Rules 2003, which clearly stipulates that in case the representation of the opponent in a pre-grant opposition is allowed, it has the result of refusal of the patent application and consequently such refusal of the patent application would fall only under an order of refusal as per Section 15 of the Act.

The Board perused the sequence in the grant of a patent and remarked that unlike the opposition proceeding (pre-grant) where three parties are involved, the publication and examination of a patent application is between two parties. Also, taking into consideration the legislative intent behind the function and result of the two proceedings, the Board viewed that the opposition (pre-grant) proceeding is a stage subsequent to the examination of a patent application and hence are un-relatable to each other. However, the Board took recourse to a ruling given by the Delhi High Court in Writ Petition (Civil) 332 of 2010 which found merit in the contention that a pre-grant opposition is in fact 'in aid of examination' of the patent application by the Controller and therefore the refusal to grant a patent is in fact relatable to and should be understood as an order by the Controller under section 15 of the Act which order is appealable to the IPAB under section 117A of the Act. Thus based on the considered ruling along with the interest of natural justice agreed that an aggrieved applicant in a pre-grant opposition proceeding under Section 25(1) of the Act may prefer an appeal before this Appellate Board.

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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