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Can “any person” file a pre-grant opposition in India?

Can “any person” oppose a patent application before it is granted? Or must persons now provide their credentials before filing oppositions? Are there circumstances when such oppositions cannot be entertained? The Bombay High Court was faced with questions like these in the recent case of Dhaval Diyora vs. Union of India (WP(L) 3718/2020; 05 November 2020).  The petitioner asked the Court to direct Controller of Patents (‘the Controller’) to hear his pre-grant opposition under Section 25(1) of the Patents Act, 1970 (‘the Act’). The pre-grant representation was filed 18 years after the term of the patent in question had expired, and days after the patent application had been allowed by Intellectual Property Appellate Board (‘IPAB’). A Division Bench of the Court, dismissing the writ petition with costs, condemned the practice of filing “benami” or “nameless” oppositions against patent applications.

THE LAW 

Indian patent law currently states that “any person” may file a pre-grant opposition against a patent application. The Bombay High Court case focuses on the interpretation of the phrase “any person”, and offers a perspective which will likely impact patent opposition proceedings going forward.

Section 25(1) of the Act provides that “where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent,” and then goes on to list the grounds for such opposition.

The law relating to pre-grant oppositions, as it stands today in Section 25(1), was introduced by the Patent (Amendment) Act 2005. Before this amendment, Section 25 allowed pre-grant opposition only by “any person interested” after a patent application was “accepted and published but not yet granted”. The 2005 amendment saw a massive overhaul in patent prosecution procedure, and an important change was on the law on pre-grants. Now, anyone can file an opposition, and no longer has to be a “person interested”. Section 2(1)(q) of the Act defines a “person interested” to include a person engaged in, or in promoting, research in the same field as that to which the invention relates. The phrase “any person” is not defined.

In practice, while this amended provision has opened up opposition proceedings considerably, it has led to concerns that the law is being used to pursue oppositions by concealing the identity of the true opponents; these are referred to as “benami” oppositions.

THE BACKSTORY 

The patent application in question was filed by Pfizer Products Inc, 18 years ago, in 2003. The Controller first rejected the patent application in 2011. Pfizer sought a review by the Controller which was dismissed in 2014. Hearing an appeal against this, in October 2014, the IPAB said that the Controller’s order was against the principles of natural justice as Pfizer was not given an opportunity to respond to objections, and the Controller was asked to reconsider the patent application. After two hearings in 2015, the Controller rejected the application once more, on grounds of prior claiming, and non-patentability under Section 3(d). Again, Pfizer appealed before the IPAB, which, in turn, orally announced – in August 2020 – that the appeal was allowed, and reserved the pronouncement of the order for giving reasons on merits.

Soon after the IPAB order was announced, a person named Dhaval Diyora (otherwise unconnected with the patent) filed a pre-grant opposition before the Controller and appeared through his agent before the IPAB. However, the IPAB held that the Petitioner had not adopted proper procedures, and that his representation was not maintainable.

The IPAB, in its order of 21 August 2020 dismissing Mr. Dhiyora’s representation, held that once the patent application was rejected by the Controller, the question of filing an opposition does not arise. The IPAB also specifically condemned the practice of filing of “benami” opposition by “benami” opponents. It said:

It is the duty of the respondent/controller of patents that such person(s) may not be allowed to take the advantage of multiple layers of opposition. If any opposition is filed either under Section 25(1) or 25(2), which is bogus and without any merit, the same is to be thrown out at the earliest with heavy costs and penalty. Only the genuine oppositions are to be entertained.

Mr. Dhiyora then filed a writ petition before the Bombay High Court stating that the IPAB order was passed without giving him an opportunity of being heard.

LEGISLATIVE HISTORY 

The history of this case begs an inquiry into the legislative intent behind widening the scope of “persons who could oppose grant of patent application”. What happened in the lead up to the 2005 Amendment? An earlier 2003 amendment to the Patents Act proposed in Parliament sought to create a two-tier system of opposition: pre-grant and post-grant. In this scheme, “any person” could file a pre-grant, provided that such person “shall not become a party” to any proceeding before the Controller regarding the grant of patent. The proposal suggested that a post-grant opposition could be filed by “any person interested” before the expiry of one year period from date of its grant. But the 2003 amendment lapsed before it saw light of day as the government changed, and the Lower House of Parliament was dissolved.

The newly-formed government made a few changes to the lapsed 2003 amendment, and approved it first as an Ordinance in 2004, and ultimately replaced it with the 2005 Amendment. In the original amendment proposed in 2005, Section 25(1) still allowed for oppositions by “any person” provided that the “person shall not become a party to the proceedings before the Controller”. The latter caveat, i.e., that the person shall not become a party to the proceedings, was extensively opposed in Parliament, leading to Section 25(1) finally reading that the Controller shall grant a hearing to the person opposing grant of patent, should he request for the same.

From the parliamentary debates and the amendments made to Section 25(1), it appears that the amended law on pre-grant opposition sought to curtail the grant of frivolous patent applications and prevent ‘evergreening’ attempts by multi-national corporations, reduce the burden of invalidity proceedings on courts, and provide for definite timelines regarding the filing and disposal of opposition proceedings.

JUDICIAL INTERPRETATION 

After the 2005 amendment was enacted, courts have had a few occasions to interpret the phrase, “any person”. In  J. Mitra and Co. Pvt. Ltd. vs. Asst. Controller of Patents and Designs. (MANU/SC/3435/2008), the Supreme Court held that the law on pre-grant is wider than the law on post-grant, and that even if there are no commercial interests, “such objection can be raised on a wider concept of public health and nutrition and the issue of affordability of medicine at a reasonable rate to those persons who are affected by disease.

In Indian Network for People living with HIV/AIDS vs. Union of India (MANU/TN/1217/2008), a division bench of Delhi High Court weighed in that the pre-grant opposition right included anyone who has  “a concern for public interest in the area of public health and nutrition, to raise an objection,” and that “[t]he grant of patent is virtually a grant of monopoly right against the whole world and that is why such wide ranging right of objection has been designedly given at a pre-grant stage.”

In Snehlata C. Gupte vs. Union of India (MANU/DE/1637/2010), the Delhi High Court held that the practice of filing of serial oppositions in the intervening time period between the Controller’s decision to grant the patent and subsequent but related acts like the issue of the patent certificate is an “abuse of process of law”. To deter such practices by competitors and their aliases, the Court imposed a fine of Rs20,000 on each of the opposers.

THE BOMBAY HIGH COURT CASE

In the case before the Bombay High Court, the Petitioner argued that the IPAB could not have directed the Controller to grant the patent after it knew of the existence of a pre-grant opposition, and the Controller could not have refused to entertain pre-grant opposition. The Court in turn discussed various aspects of the pre-grant opposition process:

  1. WHEN can a pre-grant opposition be filed?

The petitioner argued that right to file a pre-grant application is available as soon as the application is published, and continues until the patent is granted. Further, Section 43, which provides for the sealing of a patent, has two parts: firstly, the application for patent is found to be in order; secondly, that it shall be sealed. According to the Petitioner, a pre-grant opposition can be filed even between these two phases.

The Court said that the IPAB order was not merely a finding that the patent was in order. Once the IPAB allowed the appeal and directed the Controller to issue the patent, only “ministerial acts” of making necessary entries and sealing the patent remained. The Court said that under Section 25(1), the right to file a pre-grant opposition starts when the patent is published and continues till the Controller decides the matter, but no further. If the petitioner’s contention were to hold, i.e. if oppositions were allowed after such an IPAB order, it could give rise to an endless series of oppositions, which would violate the scheme of the Act.

  1. WHO can oppose?

The Court acknowledged that by enlarging the locus standi under Section 25(1) to include “any person”, the legislature intended to bring transparency into proceedings before the Controller. Now, any person, e.g., researchers, non-governmental organisations, can oppose patent applications in the interests of society. Even so, the Court noted that the legislative intent of Section 25(1) was “not to create individual right as such but to provide access to any person to assist the controller in taking a correct decision. The legislature has not conferred this right to be abused”.

The Court also questioned the credentials of the Petitioner, on objections raised by Pfizer that he was merely a frontman for those who intended to the delay the patent grant. Specifically, the Court questioned:

  • The Petitioner’s knowledge of pharmaceutical compounds (when he is clearly in the business of diamonds);
  • If the petitioner has a team of researchers, the credentials of these researchers and who pays the team; and
  • Whether the petitioner is a habitual frontman put up by those who intend to only delay the grant of patents.

With no plausible responses forthcoming, combined with the Petitioner’s suspicious conduct before the IPAB, the Court held that this was an abuse of the process of law.

  1. Before WHOM does the opposition lie?

The Petitioner contended that an appeal before IPAB against the rejection of the patent application by the Controller is a continuation of the proceeding before the Controller. And so, when the Petitioner filed the pre-grant opposition, it was for the IPAB to decide and comment upon the same.

The Court rejected this argument, observing that under the law, a pre-grant opposition is to be followed before the Controller. These proceedings are not akin to a civil suit between a plaintiff and a defendant, and do not continue in an appeal before the IPAB. The Court also held that there was no application pending before the Controller when the opposition was filed, and thus, the Controller could not have entertained the opposition.

In conclusion, the Court dismissed the petition saying that is not maintainable in law. Further, in view of the Petitioner’s conduct, the Court held that costs ought to be imposed on the Petitioner to send a message that the valuable right under section 25(1) must not be abused.

CONCLUSION

Similar to Snehlata Gupte, here too, the Court refused to entertain a pre-grant opposition after the grant of a patent application.

In view of the legislative intent behind the insertion of the phrase “any person” and its judicial interpretation, Courts do not appear inclined to impose restrictions on “any person/s”. However, the abuse of the process of law as a consequence of oppositions by aliases of competitors (or benami oppositions) are not likely to be entertained. To this extent, a qualification of sorts to pre-grant oppositions is implied.

The key question is the extent to which this decision will impact pre-grant oppositions. This is particularly so in cases where there appears to be no connection between the subject matter of a patent application and the opponent, or where the opponent attempts to delay the patent grant, or abuses due process by other means. It is likely that the credentials of the opponent, i.e., educational qualification, financial background, and conduct before the Controller, will be considered when assessing whether or not it is a “benami” opposition, and appropriate repercussions may follow.

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