IPAB, Pre-Grant Oppositions and the Onset of a "Heard" Mentality


A wonderful order by the Madras High Court affirming the UCB vs Farchim decision that pre-grant rejections can be appealed–as the rejection is effectively made under section 15 of the Indian Patents Act. However, the court goes further and holds that the winning pre-grant opponent must necessarily be “heard” in any appeal before the IPAB.

A well reasoned and succinct judgment–and most importantly, a “fair” one.

The facts of the case are also interesting, since it is one of the few cases dealing with software patents/business methods. Yahooo Inc filed a patent for “System and method for influencing a position on a search result list generated by a computer network search engine” (this was amended to “A method of operating a computer network search apparatus”).

For those interested, the International Application No.PCT/US00/14753 entered the National Phase as National Phase Application No.IN/PCT/2001/01652/CHE.

Given that the Indian patents act excludes software and business method patents, this was naturally rejected by the Controller. The IPAB however refused to hear the appeal, stating that there was no statutory provision for appeal from a pre-grant order.

The court now mandates the IPAB to hear the appeal as under:

“The writ petition is allowed by setting aside the order of the respondent No.1 [IPAB] and consequentially a direction is issued to the respondent No.1 to number the appeal and decide the same on merits and in accordance with law, within a period of three months, from the date of receipt of a copy of this order, after affording an opportunity to the respondent No.4 [rediff] and by considering its opposition. No costs.

….. we are of the opinion that the respondent No.4 [rediff] will have to be heard in the appeal filed by the petitioner. Further if the appeal is allowed without hearing the respondent No.4 then the very purpose of the enactment of Section 24(1) of the Act which provides for Pre-grant Opposition itself would become redundant. Therefore, we hold that the respondent No.4 has got a legal right to be heard in the appeal filed by the petitioner.”

Congratulations to all counsels involved, as it was a victory for almost all of them, barring the government counsel representing the IPAB.

Feroz Ali and Arvind Datar represented Yahoo Inc and convinced the court that they had a right to appeal their clients’ patent rejection to the IPAB.

Sunita Sreedharan of SKS Law Associates who appeared on behalf of the winning respondent, Rediff, persuaded the court that pre-grant opponents (in this case, her client Rediff) must be heard in any appeal before the IPAB.

Patent jurisprudence is certainly maturing in India…thanks to all these counsels who are helping push the frontiers of the law.

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.

4 comments.

  1. AvatarAnonymous

    You guys prefer NOT to link the original decision – either from public domain or back to your parent site?

    Why is it that for most cases, your readers then put the link to the order [if available]?

    Additionally, this is slightly old news. This was covered 4 days back here :
    http://www.lawetalnews.com/NewsDetail.asp?newsid=1886

    I am not sure if the above hyper link will be published, hence the text reference to the earlier coverage is at Law et al news.

    Reply
  2. AvatarAnonymous

    I have been following this debate over pre and post grant oppositions with great interest. As an erstwhile scientist (now a patent agent) who has toiled for endless hours in labs I am astounded by the fact that that in this legal nitty gritty there is no thought for the invention! If it is going to take a patent application 10 years to get granted with so many legal obstacles, where is the incentive to invent? Imagine this happening to your invention in every country in the world? Will your inevention ever give you as much returns as you would be spending in getting it granted in the first place? I am not even talking about the mental trauma. First there is pre-grant opposition and then again there is post grant oppsition by the same persons (same opponents) which means you are endlessly fighting the same issues? And all these are provisions given under the law. This shows how we totally lack faith in our own systems!! What a waste of public time, resources and money! In my opinion there should be ONLY one time opposition and that is post-grant. This will restore faith in our system and encourage innovation. There are so many wonderful drugs that never reach our country by virtue of these over protective systems. And I am not talking about drugs for `popular’ diseses like HIV and cancer where you have a plethora of NGOs working because they are being funded by huge international foundations. I am talking of diseases like cholera, malaria, asthma etc. that afflict majority of us. I’m sure the system just puts them off.

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