The "Appeal" of a Pre Grant Rejection


Prakruthi analysed an interesting Bombay High Court decision that suggested that a party aggrieved by a pre-grant opposition decision could file a writ before the High Court. Adithya Reddy, a guest blogger takes issue with this decision and argues that a “post grant” opposition mechanism is an efficacious alternative remedy; therefore High Courts ought not to entertain writs (under Art 226 of the Constitution of India) against pre-grant opposition decisions.
I want to offer a third alternative in this debate, albeit a very tentative one. This alternative argues that a pre-grant rejection is subsumed within an order of refusal under Section 15 of the Patents Act. Since such an order of refusal can be appealed to the IPAB (under s. 117A), a writ petition on the same count should not be entertained, barring exceptional circumstances. However, this alternative works only when there is a “rejection” pursuant to a pre-grant opposition. And not when the pre-grant opponent loses and the patent is granted.

Pre-grant oppositions are dealt with under section 25 of India’s patent act. The section elaborates various grounds for challenging a published patent application and then goes on to state that “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.”

Contrast this with the very same section 25 that deals in its second half with “post grant oppositions” and after laying down extensive grounds of challenge, goes on to suggest that “the Controller shall order either to maintain or to amend or to revoke the patent.”

One might argue that a disposal of a pre-grant opposition does not really amount to a “refusal” of the application. Rather, the Controller can only “refuse” a patent application under section 15, which reads as below:

“Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.”

Any orders stemming from section 15 can be appealed to the IPAB under section 117A(2) of the Patents Act. Since a pre-grant rejection really falls within the scope of an section 15 refusal, the same can be appealed to the IPAB. Therefore, no writ petition ought to lie before the High Court, since there is an efficacious alternative remedy. Will this logic fly? As mentioned earlier, this logic works only for patent applications that are subjected to a pre-grant oppn and refused and not for those that are ultimately granted.

ps: image from here.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

13 comments.

  1. AvatarJ. Sai Deepak

    Sir,
    I would like to add to your observations here. In the recent past, I was given to understand that this very issue was agitated before the Delhi High Court. I do not know what was the outcome but i was hoping that atleast someone would file an intervention application putting forward the interpretation that you offer so that a clarity on the law is achieved. But i dont think an intervention was filed.

    Also, quite a few in-house counsel seem to take the writ route instead of the IPAB appeal when in fact a reading of the Act does not dismiss the IPAB route. Also,assuming that the law on appeal to the IPAB is not clear, it is still preferable to go before the IPAB and only when the appeal is held as not maintainable, one must think of filing a writ. This is because writ jurisprudence requires exhaustion of all other available remedies. So though exhaustion may not be technically the right word if there is no remedy before the IPAB in the first place, it is better to knock the doors of the IPAB before invoking the writ powers of the High Court under article 226.

    Sincerely,
    Sai.

    Reply
  2. AvatarDivs

    Hi Shamnad,

    I agree with both Sai and you on WP being the last resort, since Art. 226 demands that all other remedies/routes need to be attempted (if not exhausted?). I had a discussion with sandeep on this too.

    Since an application can only be “refused” and not “revoked”, I assume that the same is a miss-out by the drafters of the legislation. Since S. 25(4)is with respect to Opposition in general, i guess inclusion of the term “refusal” may aid clarity.

    To my mind, the order dealing in a pre-grant opposition should be an Order u/S 15 in pursuance of S. 25(1). I guess if the order is pronounced in this manner, its appealability at the IPAB becomes clearer (may be even obvious??)

    But looking at the WP route that is being adopted, i agree that Courts need to make a pronouncement in the respect to render clarity.

    Regards,
    Divs

    Reply
  3. AvatarSudhir Kumar

    Dear Shamnad,

    Can someone be put under an obigation to wait till a patent is granted to pursue a post grant oppsition. As this is a contigent remedy available only after passing of another stage that is from “prosecution” and “Grant” it can not be termed rightfully as an “Alternative remdedy”. by all means an alternative remedy is something that is available at that very moment and therefore seeking extra ordinary jurisdication in those cases where there is no express provision for appeal, a writ is just and efficacious remedy.

    Reply
  4. AvatarShamnad Basheer

    @Divs: Lets hope we get a good case that gives us some clarity on this. I’m hoping that practitioners who have cases of this nature point us to these cases–so we can wait and watch.

    @ Sudhir: I think you make a valid point Sudhir. I’m still thinking through the efficacy or otherwise of post grant oppns as a remedy. I think the point you make re: “time” of filing is a valid one. Apart from this, the issue of “burden of proof” would also appear to be an important one. And lastly, it favours the opponent to drag on the pre-grant stage…and it favours the patentee to drag on the post grant stage…since the patent has already been granted.

    however, I’m also worried about the profileration of forums/mechanism to test validity. We have pre-grants/post-grants/revocation/counterclaims etc–and all of these procedures are not in sync under the patents act–and can lead to potentially conflicting decisions on the same patent. And cause endless confusion. From a policy perspective, this needs to be cleaned up..and cleaned up fast…

    Reply
  5. AvatarR S PRAVEEN RAJ

    The fundamental difference between pre-grant opposition under Section 25(1) and the post-grant opposition under Section 25(2) is that the provision of section 25(1) can be invoked by any person. But a post-grant opposition can only be made by the ‘locus standi’ (the person interestered ie. who is financially affected, aggrieved or concerned by the working of the patent).

    In my opinion, there is nothing wrong in seeking a writ remedy against a pre-grant order if public interest is his/her concern.

    Reply
  6. AvatarShamnad Basheer

    Dear Raj,

    You point to a very important factor. But what if the factor is immaterial in a certain context such as the Glochem case: the party is anyway “interested” even under the most restrictive reading, since it is a competitor. Would the post grant route still be held to be a non efficacious alternative route?

    Reply
  7. AvatarR S PRAVEEN RAJ

    Dear Shamnad,

    I totally agree with you that in the ‘Glochem case’, the party has the locus standi. But the previous post from you (Article by Adithya Reddy) was converging on an inference – ‘that normally a failed pre-grant objector should not approach the High Court under Article 226 against the decision of the Controller.’

    Whatever may be the outcome of the writ petitions underway now, the public interest factor in Section 25(1) should prevail. Many times in the past, principle of natural justice were buried by pertinent judgements that eventually became case laws.

    The Efficiency of Indian patent system is of course debatable.

    Reply
  8. Avatarkamakhya

    Dear Shamnad,

    Your frequent posts lead me to assume that you have now shunned your sabbatical. If it is so, then it is a great piece of news.
    I take reference to your comment wherein you say that numerous forums to test invalidity/validity of a patent under the Indian Patents Act have given rise to confusion. I think that the dilemma lies elsewhere. Testing patent invalidity through Revocation and Counter-claim are very much part of the Indian patent law structure and any one cannot be done away with. In the case of Fujitsu Ltd versus Texas Instruments [Kilby Patent Case] – The Japanese Supreme Court made a judgment which says that a patent is invalid if it contains an obvious reason for invalidity, and it is expected with a high level of certainty that the patent would be invalidated by a decision following a trial proceeding – in which case, a court has the ability to decide whether the patent is invalid, and deny the infringement suit from a patentee, on the theory of abuse of right. Here I want to say that adjudicating the claim of invalidity of a patent cannot alone be thrown on to the IPAB. An infringement suit may take into consideration testing invalidity on the theory of ‘abuse of right’ by a patentee, hence the imperativeness of the provision of Counter-claim in a patent infringement suit.
    Pre-grants and Post-grants have their own niche for the very same purpose. The dilemma, I think, is in not taking the provision of absence of presumption of validity in right spirit. The same is, as evidenced by the recent Indian patent litigation, has often been used to drag the proceedings. Patents should earn the presumption (See generally Mark A. Lemley & Doung Lichtam, Rethinking Patent Law’s Presumption of Validity). A procedure through which presumption could be earned can best serve the patent system’s incentive goals. In the Indian context, recognition of a patent review process supporting the court’s adversarial course of action would promote patent filing for genuine inventions rather than incremental accomplishments (Earning Presumption of Validity in Patent Litigation (http://www.ipfrontline.com/depts/article.asp?id=21167&deptid=7).

    Best,
    Kamakhya

    Reply
  9. AvatarShamnad Basheer

    Kamakhya,

    I think you’ve got me wrong. I’m not advocating for an abolishment of any of the challenges to validity. Am rather trying to make the point that given the proliferation, we need to ensure consistency as far as possible. Presumption is just one part of the solution–and your paper is a great contribution in this regard. We have another coming out that recommends a staggering level of deference…

    Reply
  10. AvatarAditya Gupta

    Dear all,

    I have a doubt which is not directly on the point that is being discussed in this post, but is somewhat related and is an issue which is likely to come up sooner or later in post grant oppositions. My question runs thus:

    Whether the plea of res judicata can be raised by a patentee in a post grant oppositions when the same ground has been rejected by the controller in a pre grant opposition filed by the same opponent. There are two different scenarios wrt which this question may be raised:

    1. When the ground of opposition is the same (eg. anticipation) and the prior art relied upon is also the same

    2. When the ground of opposition is the same but the opponent has relied on a different prior art which was not relied upon during the pre grant opposition.

    I will appreciate your views on the same

    Reply
  11. AvatarJ. Sai Deepak

    Dear Sir,
    I was just going through the early orders of the IPAB in cases where writs were filed from rejections of patents by pre-grant opposition. Upon the inception of the IPAB, all these writ proceedings (including the Novartis Case) were transferred to the IPAB pursuant to Section 117G, which is a transitional provision. Do we need a clearer indication that prospective appeals from pre-grant rejection under S.25(1) too were intended to lie before the IPAB? If writ remedy was to continue and the IPAB was not intended to provide for an appeal from a pre-grant rejection, why would we have a provision such as 117G in the first place? Kindly let me know what you think.

    There is an alternative approach to support this interpretation which i shall be shortly blogging on.

    Sincerely,
    Sai.

    Reply
  12. AvatarJ. Sai Deepak

    Dear Sir,
    Section 25(1) has to be read with Rule 55 which allows for refusal of the patent application. But this does not stop such refusal from falling within the ambit of Section 15.

    Bests,
    Sai.

    Reply

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