An International Guide to
Patent Case Management for Judges

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6.2 Patent institutions and administrative review proceedings

6.2.1 Patent institutions Office of the Controller General of Patents, Designs and Trade Marks

The Office of the Controller General of Patents, Designs and Trade Marks is located in Mumbai. The Controller supervises the working of the Patents Act, 1970, the Designs Act, 2000, and the Trade Marks Act, 1999, and also renders advice to the Government on matters relating to these subjects.

The Central Government may appoint as many examiners and other officers with such designations as it thinks fit.66 Minimum qualifications are prescribed. These officers function under the Controller’s superintendence. Higher qualifications are prescribed for the position of Senior Joint Controller of Patents and Designs. The organizational structure of the Office is shown in Figure 6.2.

Figure 6.2 Organizational structure of the Office of the Controller General of Patents, Designs and Trade Marks

Source: Office of the Controller General of Patents, Designs and Trade Marks, About Us, The Department for Promotion of Industry and Internal Trade

The Department for Promotion of Industry and Internal Trade was established in 1995 and reconstituted in 2000 when it was merged with the Department of Industrial Development. The department’s purpose is to promote and accelerate the industrial development of the country by facilitating investment in new and upcoming technologies, foreign direct investment and supporting the balanced development of industries.

The department is the nodal department for all matters related to the protection of IP rights in the fields of patents, trademarks, copyrights, industrial designs and geographical indications. National Institute of Intellectual Property Management, Nagpur

The National Institute of Intellectual Property Management is a national center for excellence in training, management, research and education in IP rights. The institute trains examiners of patents and designs, examiners of trademarks and geographical indications, IP professionals and IP managers in the country. The institute also facilitates research on IP-related issues.

The Patent Information System was established by the Indian Government in 1980 to maintain a comprehensive collection of patent specifications and patent-related literature worldwide. It is also located in Nagpur within the premises of the National Institute of Intellectual Property Management. Cell for IPR Promotion and Management, constituted under the National Intellectual Property Rights Policy

The Cabinet of Ministers of the Central Government approved the National Intellectual Property Rights Policy on May 12, 2016.67 This policy drew a future roadmap for IP rights in India and made several recommendations. Following one of the recommendations of the 2016 policy, a specialized professional body – the Cell for IPR Promotion and Management – was created under the aegis of the Department for Promotion of Industry and Internal Trade, and it has been instrumental in taking forward the objectives and visions of the policy. Since the adoption of the policy, the cell has worked toward changing the IP landscape of the country, which among other things, has included:

  • IP rights awareness programs, which are conducted in over 200 academic institutions for the industry, police, customs and the judiciary;
  • reaching out to rural areas – awareness programs are being conducted using satellite communication (EduSat). In one such program, 46 rural schools, with a combined total of 2,700 students, were reached. Over 300 schools and more than 12,000 students have been reached;
  • more focus on developing e-content and disseminating content through online channels;
  • including content on IP rights in the National Council of Educational Research and Training commerce curriculum. Work is ongoing to include IP rights in other academic streams; and
  • conducting competitions in conjunction with industry for school and college students to develop the “innovative spirit.” Some competitions have included the development of mobile applications, videos and online games.

As part of the awareness campaign, the Cell for IPR Promotion and Management also launched India’s first IP mascot – “IP Nani” – in collaboration with the European Union Intellectual Property Office. IP Nani is an animated grandmother who sends out messages for the protection and enforcement of IP. There are also a series of animated videos on IP rights for school students.68 These videos are available for viewing on platforms such as YouTube.69 The Department of Science and Technology – Patent Facilitation Programme

The Department of Science and Technology, under the Ministry of Science and Technology, has been implementing its Patent Facilitation Programme since 1995. It has established a Patent Facilitating Cell at the Technology, Information, Forecasting Assessment Council (an autonomous body of the department) and, subsequently, 26 patent information centers in various states. The patent facilitating cells and patent information centers create awareness of and extend assistance in protecting IP rights at the state level, including for patents, copyright, industrial designs, geographical indications and so on.

These patent information centers have also established IP cells in universities in their respective states to enlarge the network. Today, more than one hundred such cells have been created in different state universities. In addition, these centers are also mandated to provide assistance to inventors from government organizations and from central and state universities. They also render ongoing technical and financial assistance in filing, prosecuting and maintaining patents on behalf of the Government, research and development institutes, and academic institutions.70 The mandate of the program is:

  • providing patent information as a vital input to research and development;
  • facilitating patent and IP rights facilitation for academic institutions and Government research and development institutions;
  • providing IP rights policy input to the Government; and
  • conducting IP rights training and awareness programs in the country. Traditional Knowledge Digital Library

The Traditional Knowledge Digital Library (TKDL) is a pioneering initiative in India to protect Indian traditional medicinal knowledge and prevent its misappropriation. It was set up in 2001 as a collaboration between the Council of Scientific and Industrial Research and the Ministry of Ayush, Government of India. The Council of Scientific and Industrial Research is a contemporary research and development organization and a pioneer in India’s IP movement.

The TKDL has overcome the language and format barrier by systematically and scientifically converting and structuring the available contents of ancient texts on Indian systems of medicine (i.e., Ayurveda, Siddha, Unani, Sowa Rigpa and Yoga) into five international languages – English, Japanese, French, German and Spanish – with the help of information technology tools and an innovative classification system called the Traditional Knowledge Resource Classification. More than 360,000 formulations and practices have been transcribed into the TKDL database.

The classification has also structured and classified the Indian traditional medicine system into several thousand subgroups for Ayurveda, Unani, Siddha and Yoga. The Traditional Knowledge Resource Classification has enabled the incorporation of about 200 subgroups under International Patent Classification A61K 36/00, more than the few subgroups earlier available on medicinal plants under A61K 35/00, thus enhancing the quality of search and examination of prior art for patent applications in the area of traditional knowledge.

The TKDL has also established international specifications and standards for setting up traditional knowledge databases based on TKDL specifications. These standards were adopted in 2003 by the committee in the fifth session of the World Intellectual Property Organization’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Expression of Folklore.

Currently, the TKDL is based on open-source and open-domain texts of Indian systems of medicine. The TKDL acts as a bridge between these books (prior art) and patent examiners. Access to the TKDL is available to 13 patent offices under the TKDL Access (Non-disclosure) Agreement,71 which has inbuilt safeguards on nondisclosure to protect India’s interest against any possible misuse.

The TKDL is proving to be an effective deterrent against biopiracy and has been recognized internationally as a unique effort. It has set a benchmark in traditional-knowledge protection around the world, particularly in traditional-knowledge-rich countries, by demonstrating the advantages of proactive action and the power of strong deterrence. The key here is preventing the grant of incorrect patents conferring monopolies on aspects of traditional knowledge, by ensuring access to prior art relating to traditional knowledge for patent examiners without restricting the use of that traditional knowledge.

6.2.2 Administrative review proceedings Intellectual Property Appellate Board

Under the Patents Act, 1970, the appellate jurisdiction to hear appeals and the original jurisdiction to revoke patents was conferred on the High Courts in India. Both these jurisdictions were redirected to the IPAB as a specialized IP tribunal in 2002 and 2005. This was to enable the speedy disposal of such matters (see Figure 6.3 regarding the disposal of cases by the IPAB).72 However, in 2021, the Central Government was of the view that this stated objective of speedy disposal was not being achieved and abolished the IPAB, redirecting such matters back to the High Courts.73

Figure 6.3 Disposal of cases at the Intellectual Property Appellate Board, up to February 13, 2021

Note: GI = geographical indication. Source: Jacob Schindler, Top Judge’s Blueprint for the Future in IP Litigation in India, IAM Media (May 5, 2021), Pre-grant opposition

The scheme of pre-grant oppositions was streamlined by the Patents (Amendment) Act, 2005. Prior to this, a pre-grant opposition could only be filed by a “person interested.” The amendment now allows any person to file a pre-grant opposition. It can be filed when an application for a patent has been published, but the patent has not yet been granted under Section 25(1) of the Patents Act, 1970. There is no time limit within which a pre-grant opposition must be filed after publication. Procedure of pre-grant opposition

The pre-grant opposition procedure broadly follows these steps:

  1. 1. The pre-grant opposition is filed, along with evidence, if any.74
  2. 2. The Controller forms a prima facie opinion on the pre-grant opposition filed. They decide either to issue notice of the opposition to the patent applicant or to reject the opposition prima facie without issuing notice to the patent applicant.75
  3. 3. If notice has been issued, the patent applicant may reply (along with evidence, if any) within three months from the date of the notice by the Controller.76
  4. 4. The Controller may hold a “hearing.” This is followed by a decision, ordinarily within one month.77 The Controller is required to either reject or grant the patent. Grounds on which pre-grant opposition can be filed

Section 25(1) of the Patents Act, 1970, provides a list of grounds on which a pre-grant opposition can be filed. The list is exhaustive:

  1. (a) that the applicant for the patent or the person under or through whom he claims, wrongfully [emphasis added] obtained the invention or any part thereof from him or from a person under or through whom he claims;
  2. (b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim –

    1. (i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or
    2. (ii) in India or elsewhere, in any other document:

      Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29;

  3. (c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
  4. (d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

    Explanation. – For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;

  5. (e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;
  6. (f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
  7. (g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
  8. (h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;
  9. (i) that in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
  10. (j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
  11. (k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed. Locus standi to file pre-grant oppositions

Under Section 25(1) of the Patents Act, 1970, “any” person can file a pre-grant opposition. A pre-grant opposition is deemed to be an extension of the examination by the Patent Office, and, thus, the standing requirement is diluted. Nevertheless, precedents demonstrate that courts come down heavily against fake pre-grant oppositions or those filed by impostors solely to harass or to delay the grant rather than with any genuine intent to remove invalid patents.78 Post-grant opposition

A post-grant opposition can be filed under Section 25(2) of the Patents Act, 1970, by a “person interested” after the grant of patent but within one year from the date of publication of the grant of a patent. Procedure in filing post-grant opposition

The post-grant opposition procedure broadly follows these steps:

  1. 1. A post-grant opposition is filed, along with evidence, if any.79 A copy must be supplied to the patentee.80
  2. 2. The Controller constitutes an opposition board of three examiners (other than the examiner who examined the patent).81
  3. 3. The patent applicant may reply to the opposition, providing evidence, if any, within two months.82 If no reply is filed, the patent is deemed to be abandoned.83 The Controller also notifies the patentee.84 The time for this reply begins from the date the patent applicant is served with the opposition by the opponent.
  4. 4. The opponent then has one month to respond to the patent applicant’s reply statement.85
  5. 5. The opposition board prepares a report with reasons on each ground taken in the notice of opposition. The report contains the board’s joint recommendation and is made within three months of the date on which the documents were forwarded to the board.86
  6. 6. The Controller schedules a hearing. This is followed by a decision.87 At the hearing, the Controller may require members of the opposition board to be present. If either of the parties wishes to be heard, this is permitted on payment of a fee and after notice. If no notice to attend the hearing is received from either party, the Controller can decide the opposition without a hearing. The order must be reasoned. The recommendation of the opposition board is not binding, though it is of persuasive value. Thus, the board’s recommendation should not be lightly ignored without stated reasons.

A party can also file new documents before the scheduling of the hearing, provided prior leave of the Controller is obtained.88 Further, a party can rely upon “any publication” that may not have been filed earlier, provided that there has been five days’ notice and that the details of the publication are given to the other party.89

In Cipla Ltd v. Union of India, the Supreme Court held that it would be mandatory to issue a copy of the recommendation of the Opposition Board to the parties, so that the principles of natural justice are duly adhered to.90 Grounds on which post-grant opposition can be filed

The grounds for post-grant opposition are the same as those for pre-grant opposition. The grounds are exhaustive. Locus standi to file post-grant oppositions

Section 2(1)(t) of the Patents Act, 1970, defines “person interested” in an inclusive manner to include a person engaged in or promoting research in the same field as that to which the invention relates. Precedents have interpreted the term “person interested” broadly to cover any person who has a direct, present and tangible interest in the patent and those whose interests are adversely affected because of the patent.91 The term has been construed to include even nongovernmental organizations that have an interest or stake in the existence or invalidity of the patent – commercial interest is not a necessary condition.92 Appeals from pre-grant and post-grant oppositions

An appeal lies to the jurisdictionally competent High Court from an order of rejection of a patent application in a pre-grant opposition and from an order revoking or maintaining the grant of patent in a post-grant opposition. No appeal lies from the grant of a patent in a pre-grant opposition.93