Opposition plays an important role in the process of acquiring and maintaining a patent.
The possibility of facing an opposition proceeding exists at two stages: for the first time during the course of prosecution，and again within one year of the grant of a patent. Successfully dealing with such oppositions is crucial in securing and keeping alive one’s right in a patent.
Post-grant opposition was incorporated into the Patents Act，1970 through the Patents (Amendment) Act，2005. Prior to the amendment，only pre-grant opposition was allowable.
Section 25(2) of the Patents Act provides that post-grant opposition may be filed on the same grounds as pre-grant opposition as prescribed under Section 25(1).
The time limit within which the same must be done is one year of the grant of a patent，and the opponent cannot take up any grounds other than those enumerated under the provision. The grounds enumerated under the provisions are，broadly，as follows:
- wrongful obtainment of the invention by the inventor;
- publication of the claimed invention before the priority date，with due respect or anticipation as mandated by Section 29(2) or Section 29(3);
- prior claiming in any other Indian application;
- public knowledge or use of the invention claimed;
- obviousness and lack of any inventive step，with regard to a matter that has undergone prior publication or use;
- the subject matter of the application not being an invention within the scope of the Act;
- insufficient and unclear disclosure of the invention;
- failure to disclose an invention as mandated by Section 8 of the Patents Act，1970;
- application for the invention is not filed within twelve months from the date of an application filed under the Patent Cooperation Treaty;
- nondisclosure or wrongful disclosure of geographical origin of biological material; and
- anticipation of invention having regard to knowledge (oral or otherwise) within any local or indigenous community in India or elsewhere.
The primary difference between the two possible stages of opposition rests in the locus standi of the person moving to oppose the grant of a patent: a pre-grant opposition is allowable from “any person” ，while only any “person interested” is entitled to file post-grant opposition.
The Patents Act stipulates，under Section 2(1)(s)，that a “person” includes the government，and further goes on to define a “person interested” as including a person engaged in，or in promoting，research in the same field as that to which the invention relates，under Section 2(1)(t).
While deliberating on objections revolving around locus standi，the Patent Office has opined that the word ‘including’ is open term. The 1983 case of Ajay Industrial Corporation v Shiro Kanso has also been taken into consideration in determining, matters relating to locus standi. The case concerns a revocation petition, filed under Section 64, which defines a person interested as follows: “A ‘person interested’ within the meaning of section 64 [of the Patents Act] must be a person who has a direct，present and tangible commercial interest or public interest which is injured or affected by the continuance of the patent on the register”.
Deliberating upon the the differences between pre-grant and post-grant opposition，the case of M/S UCB Farchim Sa v M/S Cipla Ltd，clarified the appealability of an order passed in a pre-grant opposition.
The decision clarified that the Controller (i.e. the authority hearing and deciding upon opposition proceedings) could order to refuse the application or require the applicant to incorporate amendments to the application，failing which the application would be refused，in exercise of his power under section 15 of the Patents Act.
The Court opined that Section 15 in a way contemplated two possible outcomes of a decision of the Controller on a pre-grant opposition under Section 25(1): grant of a patent with or without amendment，or refusal of the patent.
Taking view of the amendments to the Patents Act which were made by the Patents (Amendment) Act, 2002，the court also noted that section 117A of the Patents Act (as amended) provided for appeals to be heard at the Intellectual Property Appellate Board (IPAB). Prior to the amendment，the forum for appeals to the orders passed under the Act was at the High Court，as stipulated under Section 116.
Further，the Court also stated that simultaneous to the introduction of post-grant opposition，Section 117A was also amended to appoint the IPAB as a forum to hear appeals to post-grant opposition orders. Six writ petitions had been filed to seek clarification from the Court，regarding the forum where an appeal to a pre-grant opposition order may be filed.
The Court thereby clarified that if a party is aggrieved by a decision under the section 25(4) of the Patents Act，an appeal can be filed before the IPAB under Section 117A of the Act. The Court further emphasized that as regards the person who does not succeed，in the pre-grant opposition stage，to prevent the grant of a patent，and are persons “interested” within the meaning of section 25(2) and section 64 of the Patents Act，that person’s remedy against the rejection of his or her pre-grant opposition is to file a post-grant opposition under Section 25(2) and await the decision of the Controller，which is made under Section 25 (4) of the Act.
The role that oppositions play in the grant or denial of a right in a patent cannot be ignored. While the differences between the scheme of the pre-grant and post-grant opposition proceedings are subtle，they acquire immense significance in terms of determining the admissibility and subsequent appealability of the proceedings.
Manisha Singh Nair is a partner at Lex Orbis，an intellectual property practice law firm headquartered in New Delhi