By Nilofar Absar1
Pre-Grant Opposition of Patents :
- The major difference between "pre" and "post" grant oppositions of patents is that one need not be an interested party in order to oppose the grant of application.
- Any party or individual or government can oppose the application simply by submitting a written statement to the Controller ( The Indian Patent Office).
- No infringement proceedings lie from a pregrant opposition because the Patent is still in the "Application Stage".
- Once the statement and evidence filed by the applicant and the representation including the statement and evidence filed by the opponent and submissions made by the parties has been made and after the parties have been heard , if so requested, the Controller will either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or application is refused.
Remedies available to the Applicant in case the pregrant opposition is accepted :
The Intellectual Property Appellate Board (IPAB) has held on multiple occasions, there is no remedy against an order of the Controller in a pre-grant opposition, except to file a writ petition under the Indian Constitution. (Article 226).
A recent order by the Madras High Court shed some light on the existing ambiguities in the pre-grant opposition proceedings in the judgement of Yahoo! Inc v Assistant Controller of Patents and Designs and Rediff.com India Ltd. Rediff .com India Ltd had filed a Pre Grant Opposition against grant of patent to Yahoo! Inc. for a patent application the subject matter of which is related to a computer network search system, which was published on 20.04.2004 in Patents Journal No.16 of 2007. The Controller accepted the representation and refused to grant patent by holding that the invention of the applicant , lacked novelty and did not pass the test of patentability either. Challenging the above order, an appeal was preferred by Yahoo before IPAB.
However, the appeal in question was not discussed by the IPAB on the technical ground ,that no appeal under Section 117-A can lie against an order under Section 25(1) of the Patents Act, 1970. Challenging said order of refusal to entertain the appeal filed by Yahoo, a writ petition was filed before the High Court of Madras. Consequently, setting aside the order of the IPAB, Madras High Court adjudged that an appeal under Section 25 of the Patent Act lies under Section 117 A and that in the process of hearing such an appeal the party which had filed a Pre- Grant Opposition should be given a fair hearing before arriving at a conclusion on the facts presented by the Opposition, thereby providing clarities with regards to any remaining ambiguities.
Post-Grant Opposition of Patents :
- The grounds for filing a post- grant opposition to a patent application are identical to the grounds for pre- grant opposition and can be found in S 25 (1) (a) to (k) of the amended Act.
- Only " interested" parties can file for such an opposition and the opposing party has to be granted a hearing regardless of the merits of the case.
- Infringement proceedings are now allowed as the patent is no longer in the application stage.
- Appeals can lie from any decision or order of the Appelate Board now.
More often than not Patent disputes in India are characterized by multiple proceedings running parallel to each other in different jurisdictions. A single patent becomes the subject matter of opposition suits before the Controller, revocation suits before the Intellectual Property Appellate Board ("IPAB"), patent infringement suits filed by the patent holder in a district court and a counter claim filed by the defendant before the High Court, seeking to revoke the patent in question. The stakeholders in most patent disputes are usually "Big Fish" with extensive financial wealth who manipulate the statutory provisions and intentionally launch multiple proceedings, putting away the court's precious time to waste in an already overburdened legal system. In a recent development, the Supreme Court of India has shed some light on the procedure for revocation of patents in India by delivering a judgement that prevents opponents from contesting the validity of patents before more than one forum running parallel to each other. This drift from the older view has been aptly captured in the judgement of Dr. Alloys Wobben and Another v. Yogesh Mehra and Others1 in which it has been held that revocation of a patent can be sought either by filing a revocation petition before the IPAB or by filing a counter claim in a patent infringement suit before the High Court – however, both the recourses are not available to the opponent at the same time and they have to chose either one .
If an "interested party" has initiated proceedings under section 25 (2) of the Indian Patents Act , 1970 ; then the same would intercept his/her right to seek remedy under Section 64(1) of the Act. (Revocation Petition). This is for the simple reason that Section 64 is launched with the words "Subject to the provisions contained in this Act" and not with the words, "Without prejudice to the provisions contained in this Act.", or "Notwithstanding the provisions contained in this Act". Hence the legislature clearly intends to imply that the provisions contained in Section 64 are subject to all the other provisions contained in the Patents Act. If prior to the institution of an infringement suit against an interested party, such party choses to act on the liberty vested in him/her under Section 64(1), he/she would be barred in law from seeking the revocation of the patent giving rise to the infringement suit, by means of a counter claim. This denial of the rcourse available by way of a "counter-claim" under Section 64(1) of the Act is based on the principle of "Res Judicata" that is the essence of Section 10, read with Section 151 of the Code of Civil Procedure, 1908. A counter-claim is of the nature of an independent , fresh suit and hence it cannot be allowed to proceed, where the Respondent has already instituted a suit against the plaintiff (by way of revocation proceedings before the IPAB) on the same cause of action. The underlying principle behind this section is simple that the same cause of action cannot be the subject matter of a suit more than once if it has already been disposed off by a court of competent jurisdiction.
The Rationale behind the provision for pre- grant opposition procedure is speedy redressal in the initial stages of patent application itself with the aim of preventing the matter from going into further litigation and for the entire process to be more cost effective . Even from the business perspective it could be a welcome provision as it would give business competitors a chance to be on the look for possible violations of The Patents Act s and bring possible infringements and malpractices to the courts notice at the earliest possible chance. However with the new developments in the Indian Courts in recent times , the liberal approach has only lead to multiplicity of proceedings with parties contesting the grant of application at both pre and post stages of grant of application as we notice in the case mentioned above. Such practices are technically Res Judicata and hence barred from being tried again.
1.Legal Intern, symbiosis law school pune
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