Patent System of India

6.2.2 Administrative review proceedings

6.2.2.1 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

6.2.2.2 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.

6.2.2.2.1 Procedure of pre-grant opposition

The pre-grant opposition procedure broadly follows these steps:

1. The pre-grant opposition is filed, along with evidence, if any.⁷⁴
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. 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. 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.

6.2.2.2.2 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:

(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;

(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 –

(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

(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;

(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;

(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;

(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;

(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;

(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;

(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;

(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;

(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;

(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.

6.2.2.2.3 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

6.2.2.3 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.

6.2.2.3.1 Procedure in filing post-grant opposition

The post-grant opposition procedure broadly follows these steps:

1. A post-grant opposition is filed, along with evidence, if any.⁷⁹ A copy must be supplied to the patentee.⁸⁰
2. The Controller constitutes an opposition board of three examiners (other than the examiner who examined the patent).⁸¹
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. The opponent then has one month to respond to the patent applicant’s reply statement.⁸⁵
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. 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

6.2.2.3.2 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.

6.2.2.3.3 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

6.2.2.3.4 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

An International Guide to Patent Case Management for Judges