Pioneering Pre-Grant Oppositions: A Comprehensive Analysis

INTRODUCTION

A Patent is a consideration for an invisible Contract that exist between the State and the Patentee that the Patentee will be awarded, in crude terms, a monopoly for the hard work, time and innovation that he has put in to develop something for the betterment of the society. At one hand the consideration is Patent and on Patentee’s side, the consideration is the invention. The Patentee describes in the specifications, the invention so that it can be used by the public at large once his/her right over that invention gets over or, in simple terms, the Patent expires. However, prior to the grant of a Patent there exist a lot of stages from which an invention has to pass through and then only it gets awarded a ‘Patent’ status, which is protectable worldwide or at least in a defined jurisdiction. The procedure that lays down the set of stages from which an invention has to pass is called ‘Patent Prosecution.’^[i]

Patent Prosecution consists of preparing and filing the patent application, then filing responses and amendments to the objections of the patent examiner provided in the First Examination Report. The Patent Prosecution results in either issuance of a Patent or Rejection or Abandonment of the Application. In Patent Prosecution, one of the major steps is Pre-Grant Opposition, which hardly exists in any civilised country as either they never incorporate it or abandoned it in between. India having its own unique procedure gives importance to the Pre-Grant Opposition of Patents.^[ii]

Moreover, the Patent Prosecution in India is said to be more against-Applicant rather than pro-Applicant as during the ongoing of Patent Prosecution, an applicant cannot file an infringement suit as the patent is still pending grant.^[iii] However, even after grant, an individual has a right to file against the grant of the Patent through Post-Grant Opposition and later for Revocation of Patent.^[iv]

This paper would delve deep into the History of Pre-Grant Oppositions in India and then analyse the drawbacks and benefits of this unique system employed in the Patent Prosecution, and that too only in India. Further, the paper analyses the HNLU’s Monograph suggesting an overhaul of Patent Prosecution by bringing major changes to Pre-Grant Opposition proceedings and towards the end Welcomes a few suggestions and recommendations present in their Monograph for bolstering the existing process.

HISTORY OF THE PRE-GRANT OPPOSITION IN INDIA

The Indian Patent Act of 1970 successfully endeavours to ensure that the patent rights are not used against the interests of consumers, commerce, or the nation’s economic progress. In comparison to the number of patents awarded in China, the United States, Japan, and Korea, the number of patent applications and grants in India remains very small.^[v] According to the Economic Survey 2021-22, in 2020-21, India filed 58,502 patents.^[vi] The Survey noted that “though patents filed in India have grown considerably, as per the World Intellectual Property Organization (WIPO), the number is still a fraction of the 5.30 lakh patents granted in China and 3.52 lakh patents granted in the USA.”^[vii] It further mentioned that, in 2021, 1.79 lakh patents were granted in Japan, and, in 2020, 1.35 lakh were granted in South Korea. The global standard is for disposal to be completed in two to three years (20.8 months in the US, 20 months in China, 15.8 months in South Korea, and 15 months in Japan), which is much lower than that is in India. As per the Survey, in 2020, the average time taken by India to grant a Patent is 42 months, which was 52 months in 2019.^[viii]

The Act of 1970 addresses a number of topics, including the grounds for opposition and the opposition processes to patent grants, under Section 25.^[ix] The majority of the grounds, however, are related to the invention not meeting the requirements for patentability, either because it is not a novel invention or because it was already in the public domain (prior publication).

Hon’ble Justice N. Rajagopala Ayyangar delivered a committee report in 1959 outlining the necessary revisions to India’s patent law.^[x] The committee discussed the idea of eliminating the opposition procedure rules due to the delay that unintentionally results in significant losses for the patent holders. The committee was presented with a submission stating that since the patent’s validity might be contested in revocation procedures, the opposition proceedings held no practical significance.^[xi] This idea, however, was viewed as backward, and a statistical analysis carried out between 1950 and 1957 led to the conclusion that the oppositions made against the total number of patent applications filed during that time period were not illegitimate. Though there were considerably fewer applications from the opposition. Furthermore, the Ayyangar Committee recommended that the opposition of Patent supports and get a more thorough and knowledgeable investigation of the Patent itself.

There are two types of Opposition i.e., either pre-grant or post-grant opposition. Before the Patent (Amendment) Act of 2005 the opposition to pre-grant proceedings were limited to only ‘interested parties,’ which means that only an interested party has locus to file an opposition to pre-grant proceedings.^[xii] However, it was subsequently amended by the said Amendment to include ‘any person’ and the goal of the amended law on pre-grant opposition, as evidenced by parliamentary debates and changes made to Section 25(1), appears to be to limit the granting of pointless patent applications, thwart attempts by multinational corporations to “evergreen,” lessen the burden of invalidity proceedings on the courts, and establish clear deadlines for the filing and resolution of opposition proceedings.^[xiii]

CONCLUSION

In conclusion, the past and evolution of pre-grant opposition in India through the course of its legal history is a proof of the country’s mission to advocate the policy of protection of innovation while being sensitive and responsive to the needs of the mass. The crucial framework formulated by the Indian Patent Act of 1970, which was further enhanced with subsequent changes, delineates a sophisticated strategy in patenting regimes. This Indian strategy has continued to refine itself despite these obstacles such as long grant periods and relatively small numbers of patents granted compared to counterparts across the international scene.

The findings of the Ayyangar Committee report provide a thorough understanding on how the structure of patent law has been specially developed through deliberations and stressing for opposition systems as a way towards refining patent quality. The change in the approach from restriction of opposition to only those parties that have an interest in the matter to any person who feels that the grant of a patent will be prejudicial to their interests is a clear intention to accord democratic principles that helps to prevent grant of frivolous patents and prevents monopolies from being created.

Thus, the core significance of pre-grant opposition does not solely based on the concept of regulation but also stems from the idea of pre-educating and creating awareness as well as responsibility among the players in the patent system. Thus, the Indian strategy leans toward promoting transparency and public scrutiny of the granted patent applications to provide balance between patenting incentives and social wellbeing protection.

However, thus highlighting the current debate across India regarding patent prosecution, the recommendations made by incipient institutions such HNLU remain ideal blueprints that would assist in fine-tuning the procedure as well as orienting it towards emerging societal demands. Thus, the government of India and people of India should and can afford progressive reforms in order to strengthen its recognized status of an intellectual property rights protection leader while, at the same time, maintaining the progressive values of the society regarding equity in the area of inventions and innovations.

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