A reassessment of opportunities and obstacles with pre-grant opposition under the Patents Act is well overdue for the benefit of innovation and the economy

Historically, even before the pre-grant opposition procedure was introduced in the Indian patents system in 2005, there was always a third-party observation mechanism.

The objective and reasoning of the Patent Amendment Act, 2005 states: “While considering the third set of amendments of the act, efforts have been made not only to fulfil our final obligation under the TRIPS [Trade-Related Aspects of Intellectual Property Rights] Agreement, but also to simplify and rationalise the procedure of granting patents to make the system more efficient and user friendly.

“We are of the view that the objection to bring the amendment to simplify the procedure and to make the system efficient in order to protect the exclusive rights to the genuine inventor is already defeated. Unless due care is taken, it will continue.

“We have noticed from the various cases that once the infringers become aware that it is a valid, genuine and commercially successful invention/patent, and if any action is taken or likely to be taken before the court for infringement, they make all efforts and see that the life of the genuine patentee must become miserable by raising all types of false and frivolous objections.”

Archana Shanker
Archana Shanker
Senior Partner and Head of Department, Patents and Designs
Anand & Anand in New Delhi
Email: archana@anandandanand.com

Today, 17 years since this revision of the Indian Patents Act, it is time to reassess the opportunities and obstacles of the pre-grant opposition system and its impact on innovation in the country. The need for a level playing field is the key for the growth of an economy.

Provisions such as section 3(d) and pre-grant opposition ensure that secondary/incremental research is not protected in India. These were introduced to protect the domestic industry despite being contrary to the recommendations of RA Mashelkar, director general of the Council of Scientific and Industrial Research, who in 2005 concluded that leading Indian companies viewed incremental innovations as important to patenting them in key markets outside of India. While this mostly pertains to different forms of the same substance, the patenting process for them has been opposed through legislative impediments.

This article is not about section 3(d) that prohibits the grant of patents to incremental innovations in the guise of evergreening. Instead, it looks at pre-grant opposition, which is yet another facet of the patent process that is allegedly intended to prevent evergreening.

The focus is determining the relevance of the pre-grant opposition procedure prescribed under section 25(1), and whether the provision requires any revisions to achieve legislative intent and prevent its abuse.

It was not until 2010 that Justice Muralidhar, of Delhi High Court, in the UCB Farchim case held that a pre-grant opposition procedure is in aid of examination in order to assist the Indian Patent Office in examining patent applications. The court further highlighted, in Snehlata Gupte v Union of India, that filing of pre-grant oppositions continues to bedevil the system even today, and needs to be discouraged as it has led to abuse of this provision of law.

In 2020, the Intellectual Property Appellate Board and the Bombay High Court reiterated the need to revisit section 25(1) of the Indian Patents Act as it was being abused and held: “When the application is published, thereafter, it is open to any person from the entire world to file the opposition. It is of lately seen that in many cases, in order to delay the process of registration, pre-grant oppositions are being filed by the imposter for fraudulent gain.”

In his decision, Justice Manmohan Singh recognised the practice of filing of benami opposition by a fictitious person or third party in the name of someone else, masking the identity of the real person behind the act. He held that it is also the responsibility of the Indian Patent Office not to let such benami opponents take advantage of the multiple layers of opposition.

A review of pre-grant opposition filings, particularly in the pharmaceutical sector, establishes that the period from filing pre-grant opposition until decided is often used by generics manufacturers to place their product in the market, which then cannot be recalled once a patent is granted. This defeats provisions of the Indian Patents Act, as pendency of the pre-grant oppositions eats into the term of the patent, without any provision relating to the patent term adjustment to compensate for delays at the Indian Patent Office.

To arrive at a meaningful conclusion, data were collected from the Indian Patent Office website and annual reports for a period of three years, showing the number of pre-grant oppositions filed accounted for 1.03% of total applications, and with a disposal rate of 38.63%. The average time to dispose of a patent application is somewhere between five and 10 years. With extensive jurisprudence on this provision being misused through a series of court orders from 2010 onwards, it is indeed time to revisit it.

For 2019-2022, only 102 of the 1,500 oppositions have been disposed of. These numbers are very compelling. The purpose for which the opposition process was created has served its purpose and it is time to review this provision. Government, industry and entrepreneurs might together consider the following options:

(1) A timeline and window period should be introduced under section 25(1), where a pre-grant opposition should be entertained after publication of the application and until filing a request for examination. This will allow the controller issuing the first examination report the benefit of the said pre-grant opposition, and can determine its relevance, as required under rule 55(3) of the Indian Patent Rules, 2003, during the examination process.

(2) The window period for accepting oppositions should be limited from the date of publication until six months from the date of issuance of the examination report, so examination of the patent application may run parallel to the pre-grant opposition procedure, and no frivolous pre-grant opposition is filed.

(3) The pre-grant opposition provision may be repealed, as there are already enough safeguards under section 25(2) and section 64 to invalidate a patent. And should section 25(1) be repealed, a provision relating to third-party observations concerning patentability of the invention be introduced as soon as the application is published within a timeframe.

A robust IP protection and enforcement system is an important pillar of India’s economy, and change is therefore the only constant we need to embrace as a country.

Anand and Anand

First Channel Building Plot No. 17A,

Sector 16A, Film City, Noida,

Uttar Pradesh 201301, India

Tel: +91-120-4059300

Email: archana@anandandanand.com