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.