Patent Grant Dates and Serial Oppositions: A Timely Clarification

In one fell swoop, this erudite judge of the Delhi High Court has injected efficiency and timeliness into the patent grant process. In a batch of writ petitions that were clubbed together (Snehalatha vs UOI and others) and decided yesterday, the key issue was: what is the actual date of grant of a patent? Is it the date of grant of the patent certificate? Yes, argued the petitioners who wished to file a pre-grant opposition, even after the Patent Controller had disposed of an earlier pre-grant opposition on similar lines and decided to grant the patent.

However, as with many such cases, before the issuance of the relevant patent certificate (which has been known to take its own sweet time in many cases), another pre-grant opposition had been filed. And that too by someone very closely associated with the earlier pre-grant opponent. In other words, the same party was using an ambiguity in the law to file opposition after opposition…a practice referred to by the judge as “serial oppositions” and castigated by him as an abuse of process of the law.

Thankfully, the judge plugged this ambiguity once and for all by holding that a patent comes into force on the day in which the Controller makes a decision to grant a patent. The issue of a certificate at a later date is then nothing more than a mere formality.

The judge also came down strongly against the practice of filing serial pre-grant oppositions. through aliases..a practice now fairly common in most pharmaceutical patent cases. One only hopes that this same standard is applied in other cases as well, particularly those involving multinational pharmaceutical patentees. In fact, my guess is that if it weren’t for the fact that the patentee in question was an Indian individual (J Mitra), as opposed to a multinational corporation, the practice of serial oppositions would not have been admonished in the same tone. Which essentially means: if more India vs India cases come up before the courts, we’re likely to get more objective patent decisions from the courts.

For those interested, here is the judgment. And I also reproduce a well written summary of the decision and its impact by Nikhil Kanekal and Radhieka Pandeya of the Mint:

“In a much-needed relief to innovators, the Delhi high court on Thursday passed a landmark judgment which will bring greater transparency to the process of granting patents and crack down on the practice of filing mischievous pre-grant opposition.

Accordingly, the office of the controller of patents has been directed by the court to not only disclose award of patents on a real-time basis, but also electronically circulate patent hearing dates a day before.

The judgement, issued by justice S. Muralidhar, dealt with eight cases; the lead case was Snehlata C. Gupte versus Union of India. At the core of the legal challenge was the existing process, which resulted in a time gap between the grant of a patent and the issue of the certificate. This loophole in the process was at times exploited by rival parties to file a challenge even after the patent had been granted.

In some instances, parties also filed multiple challenges under aliases. This has now been declared illegal and will invite a penalty.

In his judgement, Muralidhar maintained that once the final order granting the patent is signed by the controller or the assistant controller, it must be immediately placed on the website on the same day so as to eliminate the time gap between the signing of the order and publishing it.

This would mean that the patent would come into force on the day on which the order has been signed as opposed to the day when the order is published or the patent certificate is issued.

The court has asked the controller to publish a “cause list” of patent matters pending before it, bringing an even more transparent mode of functioning to the department.

“The intention of the judge was to protect patenting. It will streamline the patent process and it gives a good warning to those who want to unduly stop patenting,” said noted patent lawyer Pratibha Singh, who represented J. Mitra and Co. Pvt. Ltd, which won the case.

“There is a habit of people who were trying to create impediments in the grant of patents. That has stopped,” she added.

The court has asked the controller’s office to issue directions to all its officers and also place them on its website so that no orders granting final patents are reopened.

“For the first time, any court has interpreted what the date of grant is—this is the most critical part,” said Sagar Chandra, who recognized the verdict as a pioneering judgement, although he was on the losing side, representing Gupte.

The facts involve several companies that were filing pre-grant oppositions with the controller for patents to the parties that had applied for them.

“This decision brings a great deal of clarity to the patent grant process. It will come as music to the ears of inventors, many of who have been at the receiving end of a grossly inefficient system, whereby patent certificates are issued very late…and in some cases, several years after the patent office has decided to grant the patent in question,” said Shamnad Basheer, professor in IP law at the National University of Juridical Sciences, Kolkata.

By imposing a fine of Rs20,000 on each of the opposers, it was also made clear that serial oppositions by parties associated to each other in any way is, apart from being not maintainable in law, an “abuse of the process of law”.

“This order will, therefore, bring about a reduction in the number of such serial oppositions, which are now common in almost all pharmaceutical patent cases,” added Basheer.”