News Corner: Bombay High Court Rules on Pre-Grant Patent Oppositions

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On 5 November 2020, the Bombay High Court delivered its judgment in the case of Dhaval Diyora v Union of India WRIT PETITION (L) NO.3718 OF 2020. The Court deliberated whether a pre-grant opposition can be filed with the Controller of Patents and Design for the purpose of opposing a patent application appealed before the Intellectual Property Appellate Board (“IPAB“). The IPAB had set aside the order passed by the Controller of Patent and Designs refusing to grant the patent as applied for to Pfizer. The said petition before the Court was filed by the Petitioner on the ground that the order by the IPAB was passed without the Petitioner’s pre-grant opposition being heard.

The Court ruled in favour of the Respondent and concluded that the Petitioner’s pre-grant opposition would be invalid once the Controller has made their final decision with respect to the patent application. Once such a decision has been made, the opposition would serve merely as a ministerial act, and have  no bearing on the trajectory of representations filed prior to it. 

Section 25(1) of the Patents Act, 1970 envisages opposition by any person appearing before the grant of patent. The procedure for making an application under Section 25(1) is regulated by Rule 55 of the Patent Rules, 2003.

The Court found that the action of filing  a pre-grant opposition is time barred once the Controller delivers a decision for a patent application. 

The Rules lays down that on consideration of the statement and evidence filed by the applicant, the representation including the statement and evidence filed by the opponent, submissions made by the parties, and after hearing the parties, the Controller may either reject the representation or require the complete specification and other documents to be amended to his satisfaction before the patent is granted or refuse to grant a patent on the application, by passing a speaking order. Most crucially it directs that the application and the opposition are to be to simultaneously decided. Therefore scheme of section 25(1) read with Rule 55 postulates that both the applications seeking patent and pre-grant opposition are to be heard by the Controller simultaneously. The language and intent are clear. There is no separate hearing on the pre-grant application. The right under section 25(1) of pre-grant opposition starts when the Patent is published and continues till the matter is decided by the Controller but no further.

– Paragraph 19

The Court found that when the Petitioner filed his pre-grant opposition, there was no application pending before the Controller and for this reason, the Controller could not have entertained the pre-grant opposition.

The Legislative intent to widen the locus standi under the amended Section 25(1) is 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.

– Paragraph 33

The High Court was of the view that the pre-grant opposition before them was a Benami one i.e. an opposition aimed at preventing its competitor from patenting its innovation. The Court dismissed the petition stating it lacked merit and directed the Petitioner to pay costs of INR 25,000. 

See the judgement of the Bombay High Court:

Reported by Stuti Agrawal, Student Ambassador

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