The Fate of a Pre-Grant Opposition Filed after Refusal of Patent Application and During the Pendency of an Appeal at IPAB

We’re pleased to bring to you a guest post by Amit Tailor, analysing an interesting question about maintainability of a pre-grant opposition filed after the Controller’s rejection of a patent application; and if the decision to refuse is appealed before the IPAB, during the pendency of the appeal.

Amit is working as Manager (Sr. Scientist) at Cadila Healthcare Ltd., handling patent drafting, filing & prosecution, FTO, patentability & invalidity mainly. He has an LL.B. from the Faculty of Law, Maharaja Sayajirao University of Baroda, Vadodara (Gujarat), and is a Registered Patent Agent and M.Pharm from National Institute of Pharmaceutical Education and Research (NIPER), Mohali. The views expressed here are personal. He’s written two guest posts, titled ‘Appeals to Controllers’ Decisions at IPAB‘ and ‘Section 46(2): ‘One Patent Per Invention’ or ‘One Invention Per Patent’?‘, on the blog previous as well. Long post ahead.

The Fate of a Pre-Grant Opposition Filed after Refusal of Patent Application and During the Pendency of an Appeal at IPAB.

Amit Tailor

Can a pre-grant opposition be filed after a patent application is refused by the Controller; and if the decision to refuse is appealed before the IPAB, during the pendency of the appeal? Can a pre-grant opposition be filed before the IPAB (during the pendency of an appeal)? What would be the status of an application during appeal, whether it stands disposed of/inactive or pending? What would be the status upon appeal? Many questions of this nature arose after the IPAB refused to hear a pre-grant opponent who approached the Board, after the Board ‘concluded’ hearing in an appeal matter, wherein the order was reserved for giving reason but wasn’t actually pronounced (IPAB order dated 21 August 2020 in OA/2/2016/PT/MUM, para 61 onwards).

The applicant filed a writ petition before the Bombay High Court pleading to get himself heard in the matter (by the IPAB or the Controller ???; most probably, by the IPAB?). However, the Bombay High Court dismissed the petition, with cost, finding it non-maintainable (Writ Petition (L) No. 3718 of 2020, judgement dated 5 November 2020).

For the purposes of this post, two points are to be noted: i) at IPAB, the Board determined that the ‘pre-grant applicant’ did not approach the Board as per prescribed procedure (and probably therefore refused him a hearing in the matter); and ii) the High Court narrowly concluded that the pre-grant opposition was not maintainable in law and therefore the writ could not be entertained, and the Court further hinted* that their discussion in this case may not be a precedence for pre-grant opposition matters in future, [*see especially the expression “First aspect is the stage at which the pre-grant opposition under Section 25 of the Act can be filed. …. Our discussion on the legal position is in respect of the facts in this case.” at para 16 of the judgement (above), (emphasis supplied)]. Therefore, this post seeks to throw some light on the legality or the validity of the act of filing a pre-grant opposition after an application is refused by the Controller and/or during the pendency of an appeal, should the refusal be appealed (independent of this specific case).

The Scheme of Pre-Grant Opposition under the Patent Act

Section 25(1) of the Patent Act read with Rule 55 provides for filing a pre-grant opposition as – where an application for a patent has been published but a patent has not been granted, any person may represent by way of opposition (in Form 7(A)) to the Controller against the grant of patent only on one or more grounds listed in clauses (a) to (k) therein. (emphasis supplied)

On a plain reading, Section 25(1) provides that any person, without the need to show any bonafide or standing or even without disclosing their true identity, can represent by way of pre-grant opposition before the Controller, from the day the application is published till a patent is granted thereto. This indicates that there is no strict timeline for the ‘public’ to file a pre-grant opposition; the same can be filed ‘anytime’ as long as the application is not ‘granted’. However, at the same time there is a provision to safeguard the public interest against the ‘express allowance’ of any application. Under Rule 55(1A), no patent shall be granted before 6 months from the date of publication of the application, providing the public with a reasonable amount of time of at least 6 months to oppose any ‘objectionable’ grant.

When is a Patent ‘Granted’?

To be able to effectively file a ‘pre-grant’ opposition, it would be necessary  to ascertain the ‘pre’-grant phase, and for that, to figure out what is actually a ‘grant’, and to know when a patent is actually deemed granted under the Act. Neither the Act nor the Rules clearly defines what actually constitutes a grant, or when a patent is actually deemed to have been granted. As per Section 43, a patent shall be ‘granted’ (i) as expeditiously as possible (ii) when the application is found to be in order for grant by the controller; (iii) the patent shall be “granted” with the seal of the office and (iv) the same shall be entered in the patent register (v) along with the date on which the patent was granted; and (vi) upon grant the Controller shall publish the fact that the patent has been granted and (vii) shall lay the relevant documents on record open for public inspection.

Ample ambiguity is present in the plain reading of Section 43, regarding when a patent shall be deemed to be found in order for grant by the Controller: is it the moment– when the Controller decides allow the patent? or, when he pronounces his decision orally? Or, when he records the fact in writing in the office file/register, or in his order under section 15? Or when he publishes the fact that the patent is granted? Or when exactly? Or The Bombay High Court judgement (above), at para 22, throws some light on the issue; especially Snehlata C. Gupte v. Union of India, as cited therein. In Snehlata C. Gupte, the Delhi High Court held that “the date on which the patent is granted cannot be the date of issuance of certificate but has to be the date on which orders are passed by the Controller… It is the date on which the decision is taken by the Controller on file … which is the determining event ascertaining the date of grant of patent. The sealing of the Patent and entering of the same in the register are ministerial acts which follow the Controller’s act of grant of patent”. (Emphasis supplied)

In light of Snehlata C. Gupte, it would be safe to comment that a patent shall be deemed to be granted when the fact, that the Controller has decided to grant the patent, is entered on file, i.e. on record. Thus, a “pre-“grant opposition can be filed since the application is published till the time the Controller records, on file, that a patent is (“shall be”) granted on the application. However, the implications of refusal are materially different than that of grant, on the status of the application and on filing of a pre-grant opposition.

The Effect of Refusal and Appeal on the ‘Status’ of Application

The question that is harder to answer is as to what happens when a pre-grant opposition is filed after the application is refused by the Controller and when the decision is appealed before the IPAB.

Under Section 21(1), if the applicant fails to address any of the objections raised by the Controller to their satisfaction within the prescribed time, the application shall be deemed as abandoned; whereas, if the Controller is not satisfied from the submissions on record, s/he may refuse the application under Section 15; and once the application is deemed abandoned or refused, it should stand ‘inactive’ or ‘disposed of’. However, Section 21(2) provides that should an appeal be pending before the High Court at the time of expiration of the time period under Section 21(1), the same shall be extended till such date as the High Court may determine and, under Section 21(3), if the time within which an appeal under Section 21(2) has not expired, the Controller may extend the period prescribed under Section 21(1) to such further period as he determine. However, Section 117G mandates that all appeals to the Controller’s decision (including all revocation petitions other than on counterclaim in infringement suits) pending before any High Court, shall be transferred to IPAB upon notification to that effect, i.e. upon the IPAB becoming functioning; and fresh appeals thereafter shall be filed before IPAB under Section 117A. Therefore, the expression “High Court” in Section 21(2) may not be restricted to High Courts only and should include IPAB as well, as the appellate authority, when read in conjugation with Sections 117A and 117G.

Upon combined reading of the Sections 21, 117A and 117G, it can be inferred that if a patent application is refused by the Controller under Section 15 (or deemed abandoned), it does not become ‘inactive’ immediately, but remains ‘active’ or ‘pending’ till the time during which an appeal to it may be preferred. If an appeal is preferred, the time period to comply with obligations stand extended, till further time, which would be naturally beyond the period of pendency of the appeal before the High Court or the IPAB. Therefore, it is safe to comment, that during the pendency of an appeal, the application can be considered ‘pending’ or ‘under examination’ and not ‘refused’ or ‘inactive’. An application becomes inactive only on the expiration of the period specified in Section 117A, and not before that. (Further the Controller can be approached to review his own decision under Section 77(1)(f) too before the appeal).

The Effect of ‘Stay’ and ‘Reversal’ (of the Controller’s Order) on the ‘Status’ of the Application

In light of the above discussion it can be inferred that irrespective of whether the Controller’s decision is stayed or not, on appeal, the application shall stand pending and not refused, during the pendency of the appeal. Now comes the question of what happens when there is a ‘reversal’ of refusal- i.e. if the board  orders the ‘grant’ of the patent.

The provisions of Section 43 and Section 117D(2) can throw some light on this aspect of the ‘Grant’. Section 117D(2) mandates that a certified copy of the order or the judgement of the Appellate Board shall be communicated to the Controller by the board and the [Controller] shall give effect to the order of the Board and shall amend the entries in, or rectify, the register in accordance with such order. And as per Section 43, a patent shall be granted as expeditiously as possible when the application is found to be in order for grant by the Controller, and the Delhi High Court, in Snehlata C. Gupte (above), held that “the date on which the patent is Granted is the date on which the decision is taken by the Controller on file“.

On combined reading of the above, it can be inferred that even upon reversal of the Controller’s order by the IPAB, the patent shall not be deemed granted immediately. The Board may order the Controller to act in accordance with their order or the judgement, but it is the Controller, who ‘shall give effect’ to the order and amend or rectify the register accordingly. The order of the Board to ‘grant’ the patent is, therefore, a mandamus for the Controller to act in accordance and is not an ‘order of grant’. The patent would not be deemed granted until the Controller gives ‘effect’ to the order. The Board can direct the Controller to act in accordance with the order only on the facts that are brought on record during the appeal; whereas, if any new fact or argument presented before the Controller (e.g.in a ‘pre-grant’ opposition) that is not materially discussed before the Board, the Controller is bound by the law to take into consideration such further facts and arguments, under section 25(1), as long as they are presented before he ‘grants’ the patent.

Therefore, though ‘refused’ and under appeal, an application is still deemed pending or under examination, and ‘not granted’, till the order or the judgement of the Board to reverse the refusal and grant the patent is given effect by the Controller.

Having arrived at the inferences that i) a patent application shall not become ‘inactive’ immediately after a refusal; ii) it cannot be deemed either ‘refused’ or ‘granted’ on appeal during the pendency of the appeal; and iii) it shall not be deemed granted till the time the reversal is recorded on file by the Controller. we can now answer the questions raised at the beginning of the post as follows –

Anyone can file a pre-grant opposition –

A) until the application is ‘granted’ by the Controller, and

B) even if the application is refused, –

1. during the period within which an appeal to the Controller’s decision can be preferred,
2. if the decision is appealed, during the pendency of the appeal, and
3. even if the Board reverses the refusal, till the time the Controller gives effect to the reversal by entering those details on record.