Patent

Brin Panna & The Jungle of Oppositions- I


For the purposes of this post, let’s have a few characters- Brin Panna is the protagonist and Peeve Jobs is the antagonist (Poltergeist, may be). And let’s call the story- “The Obvious Indian Patent Story” and this chapter of the story as “Brin Panna & The Jungle of Oppositions”…
Brin Panna- The Ideal Indian

Our hero Brin Panna swears by “Indian values” such as honesty, a Lutheran work ethic and progress through innovation. He runs a home-grown “swadeshi” entity fully “manned” by women, which manufactures spindles, especially for the sacred Indian fabric, “Khadi“.
Panna’s Tryst With Destiny

At the stroke of the midnight hour, on the 15th of August, 2007, when the world is asleep, Brin Panna has a “Eureka” moment (basically, he’s having a bubble bath…) and comes up with an idea for a spindle which spins stronger yarn and produces softer khadi. The limitation in the prior art was that loosely spun yarn was soft, but not strong enough, and tightly spun yarn was strong, but not soft enough.
So, Panna devises a method of spinning which produces soft and strong yarn, and a spindle based on the method. He decides to name the technology “Spin-sutra” for the Indian market and “Spin-ster” for the western market.
Panna’s new Indian values tell him that this technology should be distributed with both arms, but not as alms, to the Whole Wide World; the die-hard patriot in Panna asks him to learn from the mistakes of the past, and says an Indian should be seen as a pioneer and promoter of this technology at conceptual and commercial levels. So, he files for an Indian patent and a PCT application as well for patents in Pakistan, China, Bangladesh, Nepal and Sri Lanka, among other friendly nations.
Peeve Jobs- At Work Round The Clock

Enter Jobs, Peeve Jobs- a foreign national who runs an entity called “The P Buster”. Jobs’ business model is simple- he is funded by competitors of Indian patentees to bust Indian applications/patents or subsequently frustrate the purpose of the grant of the patent in one way or the other.
It works well both ways for Jobs and his benefactors- Jobs gets the money and the vicarious pleasure of making others’ lives miserable; as for Jobs’ donors, the logistics of opposing a patent/application have been outsourced effectively.
Jobs is now funded generously by his benefactors to invest his energies and resources in making Brin Panna’s life miserable. Unfortunately for Panna, the Indian Patents Act, 1970 hands enough and more ammunition to Jobs as he clinically and meticulously goes about his job.
1. First, Jobs can employ the pre-grant opposition mechanism without spending a shilling on the “representation” and there’s no limit on the number of representations he can make under the Act.
2. Jobs gets particularly aggressive when the value of the invention is high, such as Panna’s “Spin-ster” technology; it is exactly in situations like these that Jobs feels he owes a lot to the drafter of the Indian Act, because the Act does not bar him from filing as many oppositions as there are grounds under Section 25(1). He really doesn’t need to bother if every ground of opposition is even relevant to the patent application in the first place
3. And not just that, he can use every ground of opposition multiple times citing different pieces of prior art (but for timely interventions by erudite sides of the Court). Added to that, Jobs may seek a hearing as well in addition to the written representation and evidence.
4. Jobs can also take joy from the fact that there is no specific time limit for the disposal of each opposition.
5. Before we forget, Jobs can have fun right until grant of the patent, which he knows, will take its own sweet time thanks to other chums of Jobs at work, who contribute their mite/do their bit to increasing the docket of pending applications.
So Jobs gets down to work with an energy that would put Lucifer, the Devil himself, to shame, and files one opposition after another. Panna, on the other hand, goes through a harrowing period, because what was intended to be a system of opposition to ostensibly further public good, has become a lethal tool of inquisition to keep the good away from the public.
Jobs earns a formidable reputation as the defender of public interest- He and He alone stands between Panna’s all-devouring sinister “Spin-ster” technology and public good. Panna realizes that it’s perfectly alright for Jobs to make money out of opposing his patents/applications, but what is bad is Panna earning out of his own honest efforts.
But Panna still holds on to his faith in the system and somehow manages to see his application through. An Indian patent “120420” is granted in the fag end of 2011. Panna thinks his faith in the system has finally paid off…or so he thinks
Panna doesn’t realize that the Indian Act (Section 13(4)) does not impute any presumptive validity to a patent even if the grant is the consequence of the rejection of a pre-grant opposition. This basically means, that Jobs can continue to torment Panna for a good one year from the date of publication of grant of the patent, using the very same grounds that were raised in the pre-grant opposition. 
Oh again, Jobs may not be the only one who’s hell bent on raising hell for Panna.
Panna somehow again manages to save his patent only to realize that the Act still does not impute presumptive validity to his patent, which has not been merely registered, but has been granted pursuant to rigorous examination (atleast on paper).
Jobs comes up with yet another way of preventing Panna from enjoying his rights peacefully. He deliberately infringes Panna’s patent “120420” and files a counterclaim of revocation in response to Panna’a suit for infringement.
The opposition Agnipareeksha rule evolved by Courts may come to Panna’s rescue, but does this necessarily translate to grant of an interim injunction against Jobs? We’ll discuss that in the next post.
Thoughts

One is not against the system of oppositions, I just think the balance needs to be set right, particularly considering Indian conditions. It is ironic that India chose to bring in a pre-grant opposition system, when most jurisdictions were phasing it out.  
It is also ironic that our legislature deemed it necessary to provide for a certificate of validity under Section 113 (when the validity of a patent has been contested and upheld), but has not deemed it necessary to make such a provision for an application that has survived an opposition proceeding.
The earlier system of opposition, to me, was much more rationalized; under the earlier system, oppositions were invited after the Patent Office had made up its mind to grant the patent. Once the option of opposing the application had been exhausted, the only way to revoke a patent was to file a revocation proceeding under Section 64.
Contrast that with the situation today where an application and the subsequent patent are buried under layers and layers of scrutiny, with the already prevalent air of uncertainty around anything that relates to patents, be it office practice or substantive law, complicating the situation.  
Funnily, despite such a rigorous procedure, the Act expressly denies presumptive validity to a patent. Consequently, Courts have been forced to read in presumptive validity of some sort for a patent which has survived oppositions.
Instead of encouraging and incentivising innovation, these multiple layers of oppositions could end up robbing the system of patents of its purpose. A few ways of dealing with this could be:
1. To either do away with pre-grant opposition and replace it with post-grant opposition and subsequent imputation of validity or;
2. To retain pre-grant opposition and impute validity after the application survives the opposition, and doing away with a post-grant opposition.
The second option may be much more feasible and practical because it would attach sanctity to grant of the patent. After all, there ought to be a difference between mere registration and grant pursuant to examination/opposition.
Tags:

19 comments.

  1. AvatarKshitij Malhotra

    Sai,

    Nice work. Few cartoons embedded would have increased the charm. Anyways, coming to the serious points you have raised.

    Firstly, I am wondering how the opposition mechanism works in the European Patent Office? Could you please share the European context here. I believe only post-grant oppositions are allowed at the EPO.

    Secondly, I have doubts regarding your suggestion about creating presumption of validity after a patent survives a pre-grant opposition. I believe the presumption of validity of any rights created by any statute can only be upheld by a “court of law”. Since, patent office is deemed to be a quasi-judicial body, I have doubts whether such presumption can be created by the PO.

    Looking forward to your views.

    Cheers,
    Kshitij

    Reply
  2. AvatarAnonymous

    Dear Deepak,

    Kudos. You have clearly expalined the fallacies in Indian opposition system by way of short story. Hope your recomendations are heard by officials and legislators.

    Reply
  3. AvatarAnonymous

    Actually there is factual error in your story: Patent No: 120420 was granted in the year 1969 to Bayer. Peeve is therefore wrongfully claiming the patent in 2011.

    Reply
  4. AvatarJ.Sai Deepak

    Dear Kshitij,
    Thanks for the comment. I should have actually added cartoons, it just didn’t strike me, will do it the next time around. I am relieved to hear that the post managed to connect with atleast a few people:)

    You are right, the EPO follows only a post-grant opposition system. I found this wikilink of the EPO procedure:

    http://en.wikipedia.org/wiki/Opposition_procedure_before_the_European_Patent_Office

    Following is the link for the US procedure:

    http://en.wikipedia.org/wiki/Reexamination

    As for my suggestion of presumptive validity being imputed post a pre-grant opposition, I am not saying the patent office should do so, I am suggesting that the Act could be amended to provide for such a presumptive validity for an application that has successfully survived a pre-grant opposition.

    Please let me know what you think.

    Best Regards,
    Sai.

    Reply
  5. AvatarJ.Sai Deepak

    Dear Anon,
    Thanks for the kind words. I wish few of our readers were as open-minded as you to alternative ways of making a point.

    Let’s also hope that more thought is given to rationalizing our opposition systems to strike a balance between encouraging a culture of patenting and protecting public interest against frivolous patents.

    Best Regards,
    Sai.

    Reply
  6. AvatarSy

    Sai excellent post!
    I am also in favour of doing away with pre-grant oppositions.

    How about having a mechanism by which general public be allowed to report to patent office any prior art with a brief write up as to how this piece of prior art impact patentability. There is always a possibility that examiner might not find all the prior art that is relevant to a particular case. It will be the discretion of the patent office to consider this prior art or not.

    Secondly, the post-grant opposition be allowed to be filed by “any person”.

    Reply
  7. AvatarAnonymous

    Dear Deepak,

    In EPO there is another mechanism called “Third Party Observations” which can be regarded as pre-grant opposition and are Ex-parte in nature. It can be filed by any person during patent prosecution.

    I dont agree with JSD opinion of diluting the present Opposition system as the present character of the story is an Ideal

    “honesty, a Lutheran work ethic and progress through innovation”

    whereas in the present market it is not at all possible.

    Thanks

    Reply
  8. AvatarGuy

    Pre-grant in both the European and the UK Patent Offices it is possible to file “observations” in respect of any pending patent application. There is no fee and no right to argue what has been filed. However if you have a pertinent piece of prior use or art not picked up by the examiner it is a low cost way of restricting a patent application. Form personal experience I have found it effective.

    Reply
  9. AvatarJ.Sai Deepak

    Dear Sy, Anon 10:35 and Guy,
    Thank you all for your comments and insightful suggestions.

    Probably I should have worded my post differently because I am not against a pre-grant opposition per se, I just have an issue with two full-blown opposition systems with no time restraint or cap on the number of oppositions. So if a procedurally watered down pre-grant opposition can still serve the purpose, I think it is reasonable enough a proposition.

    What we could probably consider is having a pre-grant mechanism where, as some of our other commentators have suggested, any person could forward literature which he thinks has a bearing on the examination of the application; such literature could be considered by the examiner and he may subsequently give a reasoned opinion as to why he thinks the literature is relevant or otherwise.

    In such a pre-grant mechanism, an individual or entity could (or should) be given only one opportunity to forward as much literature as he/it wishes to and raise as many grounds as he/it wants to, but no further. Unless tenets of administrative law deem otherwise, a hearing should not be allowed because if we keep adding one requirement after another, we would be back to square one.

    Also, the pre-grant opponent must be asked to tender an undertaking that he has not, himself or through anyone else, initiated a pre-grant opposition earlier in connection with the same application nor will he do so in the future. If any such pre-grant opponent is found playing (I would ideally prefer another word) around with this undertaking, penal consequences should follow along with a fine for taking the Patent Office for a ride.

    If honesty is not something that comes naturally to our honest countrymen, shouldn’t we try cracking the whip where necessary? 😉

    Best Regards,
    Sai.

    Reply
  10. AvatarAnonymous

    Dear Deepak,

    I think Your point of caping the No. of Pre-grant Opositions or an undertaking from Pre-grant Opponent as you stated above is not viable,

    because –
    firstly any person can exercise his right to file a pre-grant opposition and nobody can discriminate him in doing so and secondly it is my opinion that using the very same prior-art two different opponents or the same opponent may have a different ball game altogether.

    Reply
  11. AvatarJ.Sai Deepak

    Dear Ms.Nair,
    Thanks for the link, I have just downloaded Prof.Lemley’s article, which you have referred to, for reading. I will revert with what I have understood, in my next post.

    Best Regards,
    Sai.

    Reply
  12. AvatarAnonymous

    sir,
    regarding ” What we could probably consider is having a pre-grant mechanism where, as some of our other commentators have suggested, any person could forward literature which he thinks has a bearing on the examination of the application; ……….”

    earlier i.e . before amendment section 27 was taking care of this

    Reply
  13. Avatarpatent litigation

    It does seem unfortunate if, as you say, patents granted in India carry no presumption of validity — particularly after having withstood a rigorous pre-grant opposition process. Of course, in a current U.S. patent litigation, Microsoft is trying to weaken the presumption of validity that currently attaches to U.S.-issued patents. Your fable “Brin Panna & The Jungle of Oppositions” deftly illustrates the nightmare that could result, if certain parties used a lack of presumed validity as a pretext for harassment.

    Reply

Leave a Reply

Your email address will not be published.