Patent

RTI on Patent Opposition Details Reveals Concerning (and Possibly Wrong?) Numbers


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[This post was co-authored with Praharsh Gour.]

Long time readers may remember earlier posts by Prashant (in 2017 and 2012), looking into opposition disposal and pendency rates. In a similar exercise, while trying to collate data on patent oppositions (filing, disposal and pendency rates), we looked through data available in the Annual Reports published by the Office of Controller General of Patents for the last few years. On finding that the Annual Reports for 2018-19, and 2019-20 hadn’t been published as of August 2020, we filed an application under Section 6 of Right to Information Act, 2005 (RTI Act) requesting the relevant public officer to send us this information. In what came as a surprise for us – one part of the data seems to contradict itself! 

Our request and the Patent Office’s response can be found here. Instead of providing the data for 2018-19, we were told to look at the Annual Reports (which had been uploaded shortly after we sent the initial RTI application). They did however provide us with opposition information for the year 2019-20. 

The two tables below (Table 1: Pre-Grant Opps, Table 2: Post-Grant Opps) have been compiled using the data available in the Annual Reports and data made available to us in the RTI response. Please note: pre-grant oppositions don’t correlate directly to patents filed or examined that same year, since examinations or pre-grant oppositions frequently take place in years subsequent to filing. However, it still gives us a rough idea of the overall trend of the rate of growth, so we have listed it as an approximate proxy measure. 

Table 1: 

Period No. of Fresh Pre-Grant Oppositions Filed No. of Pre-Grant Oppositions Disposed Patent applications filed  Applications Examined
2016-17 206 18 45,444 28,967 
2017-18 260 108 47,854 60,330
2018-19 426 399 50,659 85,426
2019-20 800 67 NA NA

While the number of pre-grant oppositions and the number of patent applications both rise (as can be expected), the disposal numbers show an interesting deviation suddenly in 2018-19. 

Despite how important it is to know the pendency rates, the Annual Reports don’t disclose the number of pending pre-grant oppositions carried forward from previous years. (They do however disclose the number of pending post-grant oppositions, as can be seen below). However, for those interested, a back of the envelope calculation – which takes the reply to Prashant’s 2012 RTI as a base number (although even there, the official response says Approximately 835 pending pre-grants as of 2012) and then adds all the subsequently filed pre-grant oppositions and subtracts all the disposed pre-grant oppositions – gives us a figure of ‘approximately’ 2,806 pending applications (!!). 

Do note though, that this does not account for withdrawals of opposition. And frankly, we have no idea how many withdrawals take place. If, for the sake of trying to arrive at a number, we were to (randomly and perhaps generously) assume that 1/4th of the total applications are withdrawn, that would still leave ‘approximately’ 2,000 plus pending oppositions! For comparison, as per the 2018-19 Annual Report, 64,686 patents were in force as of March, 2019.  If any readers have a better idea of withdrawal rates (or any additional information on any of this), please do let us know. 

It is a bit of a shame that there don’t seem to be publicly available numbers on how many pre-grant oppositions are pending, even as the number seems to be reaching an alarmingly high number.

Table 2: 

Period No. of Fresh Post Grant Oppositions Filed No. of Post Grant Oppositions Disposed No. of Oppositions Pending  Patents granted in the preceding year
2016-17 12 12 160 (carried forward from preceding years) 6,326 (2015-16)
2017-18 18 8 170 9,847 (2016-17)
2018-19 28 5 193 13,045 (2017-18)
2019-20 28 7 99 15283 (2018-19)

In this table, we combined data from the Annual Reports for the years 2016-2019, with the data from the RTI response for the year 2019-20. Fortunately, here, the pending numbers are provided in the Annual Report. However, looking at them, a glaring discrepancy arises.

The number of pending oppositions after 2018 was 193. The following year had 28 fresh oppositions and 7 disposals. Mathematically, this should mean there are 214 pending post-grant oppositions at the end of 2019-20. How do the official figures only have 99 on record? That’s a huge difference of 115! 

Similar to the earlier table, we do not have any official numbers on withdrawals, but unlike pre-grant oppositions, post grant oppositions can only be filed by an interested party, which makes it less likely that oppositions once filed, will be withdrawn. In any case, it is very, very unlikely that after years of 0 withdrawals (since ‘fresh oppositions’ minus ‘disposed oppositions’ are matching the official ‘pending oppositions’ numbers for earlier years), that suddenly 2019-20 saw 115 applications being withdrawn. So, what exactly happened here? 

We wrote in highlighting this discrepancy but have yet to receive any clarification or correction on this. We’ll continue to pursue this but the very existence of this discrepancy indicates that something needs to be fixed!

5 comments.

  1. AvatarAmit Tailor

    “If any readers have a better idea of withdrawal rates … please do let us know.” & “but unlike pre-grant oppositions, … will be withdrawn.” –

    I believe, practically, there can’t be any ‘withdrawal’ of a ‘pre’-grant opposition. Because, in practice, it is not an ‘opposition’ in true sense but a mere ‘representation’. Any person may “represent” in writing by way of opposition against the grant. Once the ‘representation/opposition’ is filed, the opponent, which almost always is anonymous, has nothing to do or rather say can’t do anything further. There is nothing under the act or rule that the representation can be ‘withdrawn’ by the filer.
    The controller is also not bound to consider the same, unless a request for examination is filed. And if not filed, the application would get invariably withdrawn and the opposition would become infructuous.
    Even if filed, should the controller is of the opinion that there is no merit therein, he may simply refuse the same and can refer it in his decision u/s 15 that he found ‘no merit’ therein.
    A pre-grant opposition stands and falls with the patent application itself. so if a patent application on which a pre-grant opposition is filed, is either granted or refused, in both the cases the opposition stands ‘disposed of’.
    The applicant may, after filing of a pre-grant opposition, irrespective of the merits of it and purely based on the commercial interest, may withdraw the application and the pending opposition would thereby, also, rendered ‘infructuous’.
    What to consider these rendered ‘infructuous’ oppositions – pending, withdrawn or disposed of?
    (other readers may also bring on table other similar scenarios)

    So determining the disposal (or say the pendency) rate of pre-grant oppositions becomes a complex mathematical equation with too many variables, and I believe, getting a “LHS=RHS” kind of result may be a cumbersome exercise.

    And even for post-grant also, I believe there is no express provision for ‘withdrawal’, however, the opponent may withdraw himself at any stage of proceeding and the case can be decided based on the material on records without ‘hearing’ him. Only the patent applicant or owner can ‘withdraw’ the patent. Once a post-grant opposition is filed, the ball starts rolling, the Controller is bound to act according to the provisions of the act and rules and there are no breaks or checks in the process up till adjudication of the matter on the recommendation of the opposition board. At the most, the opponent, as suggested, may abstain from attending the hearing, that is all he can do to ‘withdraw’ an opposition. There is no scope for ‘You withdraw, we compromise’ in the process.

    (views are personal and are ‘views’ only based on the discussion in the post; and the same should not be considered legal opinion on any of the provisions discussed herein in the post)

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  2. AvatarRohit

    Shouldn’t withdrawn applications be counted as ‘disposed’ though? That’s how courts also usually mention petitions that are withdrawn right, ‘disposed as withdrawn’? I’m guessing the withdrawal applications might also already have been factored in the ‘disposed’ numbers. In that case, it becomes even more interesting to know as to how many of these applications were even considered by the Patent Office.

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