India: A Strong Opposition Leads To Rejection Of Patent Application

(Review of the recent Patent case between Eureka Forbes & Hindustan Unilever Ltd)

In this article a recent case has been introduced where Chennai patent office rejected the Patent application. This rejection is solely based on the strong oppositions placed by the opponent against the Applicant. Going forward, this article also discusses the various preventive measures in keeping the novel invention in front of the Patent office.

An Indian giant company indulged in water purification system and sole manufacturer "Eureka Forbes" filed a patent application at the Chennai Patent office. The filed Patent application having the tile "'iron removal water purifier'' was denied by the Patent office because of the pre grant opposition filed by the Indian MNC Hindustan Unilever Ltd1. The opponent stated that "the usage of ion exchange resin for the removal of iron as well as its usage in gravity water filters is well known in prior art." Moving forward, it is necessary to understand the Pre-grant opposition under the Indian Patents Act, 1970. In the section 25 (1) of the Indian Patent Act, 1970, pre grant opposition is well defined and clearly sub-detailed. Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Chapter V, section 25(1) of the Patent (Amendment) Act 2005 provides provisions for pre grant opposition of Patent. Under this provision any person or any third party or Government may challenge the application of grant of patent and inform to the controller of Patents for opposition, in writing against the grant of a patent after the application for a patent has been published but before the grant of a patent.

On the basis of the below mentioned grounds, Pre-grant opposition can be made on the grounds listed under section 25(1)(a) to (k) of the Patent Amendment Act, 20052:

  • Wrongfully obtaining the invention
  • anticipation by prior publication
  • anticipation by prior date, Prior claiming in India
  • Prior public knowledge or public use in India
  • Obviousness and lack of inventive step
  • non patentable subject matter
  • insufficiency of description of the invention
  • non-disclosure of information as per the requirement or providing materially false information by an applicant

The pre-grant opposition procedure acts as a protective shield to check the validity of patent applications before a patent is granted on them. The primary difference between pre-grant and post-grant opposition is that though pre-grant proceedings may be initiated by "any person", but only a "person interested" can institute a post-grant opposition. The Indian Patents Act defines a "person interested" as including a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Now coming back to the case where Eureka Forbes filed a Patent Application at the Chennai Patent office, where its Patent application has been rejected due to Pre grant opposition filed by the Hindustan Unilever [HUL]. According to HUL, the applicant fails to provide the strong comparative test with respect to the closest prior art and had also failed to provide information regarding the distinguishing features of the invention and the unexpected effects. Because of the breach of the novelty, obviousness and inventive step the claimed application has been rejected.

Further this was not the first time when both these rivals are battling for the Patent in India. Earlier in 2008, a much referred case of "double patenting" were both Eureka Forbes and HUL were allegedly granted a patent for identical technologies. HUL had filed an application for this technology in 2002 but was granted a patent only in 2006, by the Mumbai patent office. In the meantime, Eureka Forbes was granted its patent in 2005, by the Chennai patent office. Moreover, the Eureka's application was made after HUL's application and HUL had filed a pre grant opposition. However, the patent office rejected the plaint and the Chennai patent office went on to grant the patent without hearing the pre grant opposition. After that the HUL filed a post grant opposition under section 25 (2) of the Patents Act, 1970, to which Eureka Forbes proposed a reply within stipulated time frame. Instead of revocation of the patent, the India patent office went out of its way to condone the delayed reply. These steps of the Patent office forced the HUL to file a writ petition before the Madras High Court and also patent infringement lawsuit before the Delhi High Court alleging infringement by Eureka Forbes (CS (OS) 740/2006). This case was filed in 2006 and is still pending. Through order dated 20 January 2010, the patent office dismissed HUL's post grant opposition. Pertinently, Eureka Forbes had also filed a post grant opposition challenging HUL's patent. On 17 Aug, 2012 and then on 20 March, 2013, HUL informed the Delhi High Court that its patent had been revoked and an appeal had been filed. This appeal appears to be pending. The outcome before the IPAB, in both cases (HUL appealing the dismissal of post grant opposition and HUL's appeal challenging revocation by the patent office will help clarify whose patent will stand.3

Herein, after reviewing the discussed case, it was believed that any patent application which is not novel and doesn't involve an inventive step has no rights to be registered under the Indian patents Act, 1970. The pre-grant opposition acts as a preventive tool for the Indian patent office, disregarding all the Patent application which is non-patentable in nature and accepts those applications which are novel and fulfils the patentability criteria as per the Patents Act, 1970.

Footnotes

1. http://www.financialexpress.com/article/economy/eureka-forbes-denied-patent-for-aquasure-after-hindustan-unilevers-opposition/84020

2. http://ipindia.nic.in/IPActs_Rules/updated_Version/sections/ps25.html

3. http://spicyip.com/2015/06/eureka-forbes-and-hindustan-unilever-water-purification-patent-pitter-patter.html

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