“Person Interested”: How is an Inclusive Definition to be interpreted?

In an earlier post, Kruttika initiated a thought-provoking discussion on certain lesser discussed aspects of Justice Murlidhar’s decision on appealability of pre-grant decisions. In the comments, the discussion ultimately veered towards the distinction between “any person” under Section 25(1) of the Patents Act and “a person interested” under Section 25(2) with the former referring to pre-grant opposition and the latter, post-grant.

 The questions raised as part of the comments were:
1.      1. Is “any person” under s.25(1) the same as a “person interested” under s.25(2)?
2.      2. Are all pre-grant opponents entitled to challenge the patent as post-grant opponents?

To answer this, we must first circumscribe the identity of a “person interested”. Section 2(t) of the Patents Act defines a “person interested” as follows:

“person interested includes a person engaged in, or in promoting, research in the same field as that to which the invention relates”

The definition of a “person interested” (let’s call him PI for short…it’s probably an apt nickname because he is recurring (in our posts) and may turn out to be irrational) is inclusive. But how are inclusive definitions to be interpreted? There are quite a few decisions of the Supreme Court on inclusive definitions. 

One of the most cited observations found in SC decisions on inclusive definitions is the observation of Lord Watson in Dilworth v. Commissioner of Stamps (1899AC99), which is as follows:

The word “include” is very generally used in interpretation clauses in order to enlarge the meaning of words or phrases occurring in the body of the statute; and when it is so used these words or phrases must be construed as comprehending, not only such things as they signify according to their natural import, but also those things which the interpretation clause declares that they shall include. But the word “include” is susceptible of another construction, which may become imperative, if the context of the Act is sufficient to show that it was not merely employed for the purpose of adding to the natural significance of the words or expressions defined. It may be equivalent to “mean and include”, and in that case it may afford an exhaustive explanation of the meaning which, for the purposes of the Act, must invariably be attached to these words or expressions.”

It is possible that the first portion (underlined) of this observation may apply to the definition of PI because it may include entities which are commonly and naturally understood as PIs, in addition to the ones specifically included. However, this kind of interpretation of an inclusive definition is applicable only where the entities included specifically would not be commonly understood as falling within the definition.

This is not the case with the definition of PI under the Patents Act, because persons/entities engaged or promoting research in the same field to which the invention relates would qualify as PIs by default, even if they had not been expressly mentioned/included.

If this is so, we must analyse if the second portion (emboldened) of this observation applies to the definition of PI. The import of the second portion is that, although a definition may appear to be inclusive on the face of it because it states “includes”, in reality it could and should be construed as “includes and means” thereby making the definition exhaustive. For one to reach such a conclusion, the use of the term/phrase in question in all places in the Act must be looked into.

In our case, a PI also figures prominently in compulsory licensing provisions of the Patents Act. Only a person interested may invoke a compulsory licensing provision and such a PI has to be a person/an entity who/which is capable of stepping into the shoes of the patentee/licensee of the impugned patent to cater to the demands of the Act with regard to the working of the patent.

This means he must be someone who practices or promotes/engages in research in the same field to which the invention relates. What this could mean is that an NGO, which cannot fulfil the obligations of a patentee/licensee imposed by and under the Act, cannot invoke a compulsory licensing mechanism under the Indian Act (whether this situation needs to be changed is a topic for another post because that would be a policy argument and not a statutory argument).

Therefore coming back to our discussion, since a PI, as used in compulsory licensing provisions, has to necessarily be a person/entity who can suitably replace a patentee/licensee, his identity is clearer than we think it to be. Therefore, one might say that only a pre-grant opponent who satisfies these requirements is legitimately entitled to agitate the validity of the patent as a post-grant opponent.

Further, in Dilworth, the Court held that an inclusive definition is used by the Legislature to:

1. to enlarge the meaning of words or phrases so as to take in the ordinary, popular and natural sense of the words and also the sense which the statute wishes to attribute to it; or

2. to include meaning about which there might be some dispute; or

3. to bring under one nomenclature all transactions possessing certain similar features but going under different names.

The first and third situations seem to apply equally to the instant discussion on “person interested”; however, obviously both cannot apply. So which situation does a PI fall under? First or the third?

The argument that it falls within the third category has already been made out above, but let’s test the possibility of it falling within the first category i.e. to enlarge the meaning of words or phrases so as to take in the ordinary, popular and natural sense of the words and also the sense which the statute wishes to attribute to it.

For this, we must look at other statutes to understand the popular meaning attributed to an inclusively defined “person interested”. Of course, it can be argued that the sense and scope in which a PI has been used in the Patents Act may be entirely different given that it is a niche legislation and addresses a techno-legal field of endeavour. Be that as it may, I don’t see the harm in arriving at the same conclusion after having considered a meaningful cross-section of meanings imputed to a PI.

In U.P Awas Ekam v. Gyan Devi (2004), the SC discussed the inclusive definition of a PI under Section 29 of the Land Acquisition Act (LAA) of 1894 and held that the definition must be construed liberally. This interpretation seems to have been relied upon in cases which concern social/welfare legislations such as the LAA. But can the same approach be used to define PI in the Patents Act? Is the context and the nature of the proceeding (post-grant opposition) the same? The answers to these questions are crucial.

And the answers can be found in this report of the Standing Committee on the Law of Patents of the World Intellectual Property Organization (WIPO), and even from our Act. The primary distinction between a pre-grant opposition and a post-grant opposition is that the former is not a proceeding inter partes. This means that it is not a proceeding between the pre-grant opponent and the applicant for a patent.

As stated in the report and as clarified by the Delhi High Court in the UCB Farchim v. Cipla, a pre-grant opponent merely aids the process of examination of the patent application. This is not so in the case of post-grant opposition. A post-grant opposition is a proceeding inter-partes i.e. it is a proceeding between the post-grant opponent and the patentee with the Opposition Board playing the judge. This also explains why a post-grant opposition is neither equal to a pre-grant opposition nor is it a provision for appeal from a pre-grant proceeding.

The primary respondent in an appeal to the IPAB from the rejection of a patent application in a pre-grant opposition is the Controller or the Assistant Controller and not the pre-grant opponent, whereas the primary respondent in an appeal from a postgrant proceeding is the post-grant opponent.

How are all these points relevant? These points are relevant because every proceeding which is a proceeding inter-partes has to involve affected parties i.e. the parties to the proceeding must be in direct conflict and any outcome is binding on both of them. Stated otherwise, “a person interested” is equal to an “interested party”/necessary party and this explains why the definition of a “person interested” refers to those engaged in or promoting research in the same field to which the invention relates. Further, if the decision in a post-grant opposition were to be deemed as binding not just on the parties to the opposition  but to everyone else, then it forecloses the possibility of a second post-grant opposition. Since this cannot be so, such an interpretation is not tenable.

It must be clarified that when I say that a PI, as defined in the Act, must be an “interested party”, I mean that he must be someone who is affected by the patent, not as a member of the public, but as someone who is a practitioner of the field of technology to which the invention relates.

Therefore, in my humble opinion, not every pre-grant opponent can qualify as a “person interested” under Section 25(2).

We welcome the opinion of our better-informed readers on this issue.

(A review of the WIPO Standing Committee Report on Opposition Systems shall follow shortly)                                                                                                                        

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9 thoughts on ““Person Interested”: How is an Inclusive Definition to be interpreted?”

  1. I agree with you Sai. “Person interested” is equal to an “interested party/necessary party”. This becomes apparent by paying heed to the choice of words used in 25 (1). The legislative intent by using the words “any person” clearly distinguishes the “locus standi” of the person as compared to “person interested” in section 25 (2).

  2. There is fundamental difference in th terms any person and “person interested” used in pre-grant and post-grant opposition proceedings, In pre-grant, any person who mean any person can make representation, whereas person interested in post-grant would mean that persons who are actually working in industry and who are really interested can file opposition. So in post-grant, only persons who have the right to file for opposition can file.

  3. Primary objective of a patent system is not merely to encourage a person to make his invention public. Rather, the larger goal lies in educating the public about the working of the invention. Historically, in Britain, the condition for monopoly (after the Statute of Monopoly came into force), was that the inventor would educate or train apprentices during the monopoly. Subsequently, inventors were required to make disclosures about the working of their invention. The primary reason being the larger public interest. Monopoly was a small cost paid for the disclosure that enabled any member of the public to develop knowledge of the working of that invention.

    Now, if in a post grant scenario, if that very public has no role to play then it appears to be quite unfortunate.

    Please note this is not a comment on the interpretation as such, but is merely an observation on the larger objective and goal of the patent system.

  4. addendum to Mr. Garg
    “person interested” is defined in Act…
    what can be understood by the definition is any person or “other than natural person” (say any organization)which has a manufacturing or trading interest in the goods which are connected with that patented article or patented process for that matter..who has a “financial” interest in manufacturing such goods- such person should be considered as “person interested”. Plz correct me if I am wrong.

  5. I read this blog with a sense of deja vu! In the United Kingdom under the provisions of the Patents Act 1949 there were similar provisions. An opposition to grant, Section 14, required a locus standi; i.e. “person interested”. Under the “belated opposition” procedure, filed within 9 months of grant, Section 39, permitted an application by anyone. Oppositions ceased in 1978 when the 1977 Act came into force. The precedents became irrelevant in the UK but might be worth visiting.

  6. @Swami: I agree with you and I must say it was thoughtful of you to clarify that your stance in on the policy and not on a statutory plane.

    @Swaroopa: It’s an interesting question, but then could you clarify as to what kind of financial interest are you referring to here? That may help us in attempting to answer the question.

    @Guy: Thanks for directing us to the UK judgments. I am certain they are worth a read and relevant to the discussion.


  7. Does the term “any person”/ “person interested” include the assignor of the patent? In other words, is the doctrine of assignor estoppel applicable in Indian context? If yes, will it extend to the other party not in privity with the assignor when the said party relies on the information? Any views will be appreciated.

  8. Is the inventor an interested person? As per provisions of 11-B of patent act 1970 only applicant or person interested can make application for the examination of the application. the section is silent about inventor. Therefore question arises as to whether inventor could be included in the definition of “person interested” in sec. 2(t) of the Act. This is also important in a situation wherein, the applicant may refuse to file the examination request while the inventor who is not the applicant may be interested to take the patent prosecution further for grant of the patent. Will the learned people throw some light in the matter? Is there any precedent on the subject matter?

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