By Archana Shanker

Three orders, one after another in a span of 4 months, speak volumes.

Valuable rights of creators and the country’s image cannot be held to ransom by a handful of miscreants.  The message is loud and clear from Hon’ble Justice Manmohan Singh and Hon’ble Sir Mr. B.P. Singh. The IPAB, in their order no. ORA/2/2020/PT/CHE (December 2020), expressed their concern over the opposition procedure currently being adopted by the Indian Patent Office that delays patent application indefinitely.

The IPAB held that a practice of filing serial oppositions and post grant procedure currently being adopted in furtherance of such  practice is dangerous for healthy IPR regime in the country. The Hon’ble IPAB held that IP legislations in general are very balanced legislations and none should be allowed to misuse or abuse the provision of law.

This decision of the IPAB is one of the orders in the series of decisions issued by them, the first being in OA/2/2016/PT/MUM (Pfizer order) of August, 2020. In the Pfizer case, the Hon’ble IPAB was disappointed by the way pre-grant oppositions were being conducted by the Indian Patent Office and how they are being misused to serve commercial interest of infringing party at the cost of the innovator..

The IPAB in the said Pfizer order held

• that there should be no delay in protection of valid inventions particularly given the fact that the term of the patent is limited.
• The law provides that till such time patent is granted, it cannot be enforced
• that there are several stages for challenging the validity of patent including opposition and several years of term of patent are consumed before a patent is granted.
• The law provides that patents need to be granted as expeditiously as possible.
• Pre grant oppositions are being filed by imposters for fraudulent gain to delay the process of legislation and termed such filings as “Benami Opposition”.

The Pfizer IPAB order was challenged before the Bombay High Court in Dhaval Diyora vs. Union of India & Ors.. A two Bench Judge endorsed the view taken by the IPAB in relation to Benami opposition. The Bombay High Court further held that the credentials of pre grant opponents have to be established and Opponents who are habitual front men cannot be allowed to abuse the process of law whose sole intention is to delay the grant of patent.

The Hon’ble High Court further held that in a pre-grant Opposition, the locus standi of any person filing the opposition include researchers, non-government organization etc. in the interest of society. Upon reading of the High Court order what clearly emerges is that a pre grant opponent clearly needs to demonstrate a tangible interest with technical domain knowledge of the subject matter to which a patent application relates for it to be entitled in opposing the said application.

The last in the series, in ORA/2/2020/PT/CHE, the Hon’ble IPAB in a revocation petition addressed the issue of “interested person” under Section 64 read with Section 2(t) of the Indian Patents Act and laid down some guiding principles to curb such abuse of process of law and make recommendations to the Government which included:

1. Changes in the electronic filing module ought to be made for expediting pre grant opposition so that no pre grant opposition is accepted where the application for patent is not subsisting.
2. To curb filing of benami opposition, the Opponent must submit a valid Aadhaar card, voter ID card, passport, driving license to authenticate the identity and the e-filing system should be accordingly modified.
3. Where there are a series of pre grant opposition that have been filed, the Controller should exercise his power under Rule 55 (3) which means that in each and every case of pre grant opposition, the Controller is not bound to give notice to the Applicant.  The Controller has to first give his opinion which should be annotated in the patent application filed.
4. That once the Controller has heard the parties and reserves the order, he should go ahead with the pronouncement of the said order even if the pre grant opposition is filed between the date he reserves the order and the date of pronouncement.
5. If there are any subsequent pre grant oppositions, the Controller has to issue an opinion as to what evidence apart from what has been produced in previous cases has been provided to make the pre grant opposition maintainable.
6. In so far as post grant opposition are concerned, the IPAB reiterated the decision of the Delhi High Court in Pharmacyclics vs. Union of India wherein certain principles ought to be followed.
7. In so far as the definition of person interested is concerned, the IPAB clearly held that the Opponent has to demonstrate their interest with supporting documents for invalidating a patent which interest must be direct and tangible.

We hope that the Indian Patent Office adopts the said principles into the patent office manual and implements the changes in the e-filing module.