The potential of a pre-grant opposition
31 July 2022
The scheme of the Indian Patents Act allows a patent application or patent to be opposed at two levels before the patent office: first at the pre-grant stage by “Any person” and second at the post-grant stage by “Any person interested”.
Section 25(1) of the Patents Act allows “Any person” to file a pre-grant opposition. The intent of the legislature to introduce said provision by amendment in 2005 was to assist the patent office during examination of the patent application. The High Court of Delhi in a Writ petition in UCB Farschim v. Cipla & Ors examined the difference between the pre-grant and post grant oppositions and held that “pre-grant opposition is in aid of examination”. The court further held that any person who is not a person interested and has failed during the pre-grant opposition has a remedy under Article 226 of the Constitution to file a writ. The legislature did not intend to provide the remedy of appeal to any person, who is not a person interested, since a pre-grant opposition is purely in aid of examination. The effect of the pre-grant opposition is that, if the controller finds the opposition relevant, the controller may direct the applicant to restrict the claims, thereby granting a robust patent which is enforceable.
On the other hand, a pre-grant opposition can also be used as a potential weapon or tool by competitors to delay the grant of a patent. There are various scenarios where competitors do not wish to reveal their identity and therefore strategically file strawman or benami oppositions.
One such scenario may be, that the competitor may not wish to alert the patent applicant of the purported action against its application. Another reason is that the competitor may want to maintain harmonious relations with the patent applicant and therefore resorts to filing such an opposition. Sometimes strawman oppositions are used as a strategy to enable the competitor file a post grant opposition on same grounds, should the strawman fail in the pre-grant opposition.
Having said this, there is a recent trend of filing pre-grant oppositions by strawman. The court questioned the filing of such an opposition for the first time in a Writ Petition before the Bombay High Court in Dhaval Diyora v. Union of India and Ors. In this case, a pre-grant opposition was filed by a front man, Dhaval Diyora, who is a diamond merchant. In this case, the court questioned the credentials of the opponent and stated that the opponent could not establish how, being a diamond merchant, the opponent has intricate knowledge of the field of the patent application. The opponent is known to have filed multiple oppositions and did not provide his educational background. The court held that the purpose of pre-grant opposition, was not to create individual rights, but to assist the patent office in examination of the patent application and that such rights cannot be used to abuse the process of law. The court imposed costs in view of such conduct of the petitioner.
The erstwhile Intellectual Property Appellate Board in Pfizer Products v. The Controller of Patents & Designs in OA/2/2016/PT/MUM expressed concern over the rising tendency to file benami oppositions by imposters and emphasized that only genuine oppositions should be entertained.
On the patent office front, in a recent pre-grant opposition filed by a strawman, who is also a patent agent, against Indian Patent Application Number 2706/DEL/2009, the patent office held that the opposition is an abuse of the process of law. The opponent failed to provide his credentials relating to the expertise of the application. Further, the opponent neither responded to the communications from the patent office, nor attended the hearing. The patent office held that the opposition was filed with a view to delay/stall the grant of the patent and therefore dismissed the opposition.
With the rising trend in the filing of benami or strawman oppositions, it is left to be seen how the purpose of incorporating the provision of pre-grant opposition is fulfilled before the patent office, or whether competitors will continue to take benefit of this potential tool to delay grant of patent.