[This post is co-authored with Praharsh.]
In part I of the post we discussed the implication of the new patent amendment Rules on the obligation to file working statements and information on corresponding foreign applications to the Indian patent applications. In this part we shall discuss the implications of the Rules on Pre-grant Opposition mechanism.
Pre-grant Oppositions
On the issue of pre-grant oppositions, it is to be noted and appreciated that the published rules have taken into consideration some of the critique that had been given to the earlier published draft rules. That is to say, earlier, the proposed rules had given a vague power to the controller to prima-facie reject a pre-grant opposition on the basis of maintainability, despite Section 25(1) of the Patents Act saying that the Controller ‘shall’, if requested, hear such a person. The published Rule 55 tries to address this clash with 25(1), and while still requiring a prima facie case, also adds that the Controller shall notify the opponent if this prima facie case is not made out, following which the opponent has one month to request a hearing. It appears, though not completely clear, that this requested hearing is for showing a prima facie case for the opposition. And if the Controller accepts this, the patent applicant will be notified accordingly.
Nonetheless, this does now pose additional requirements on opponents, both in terms of multiple appearances, as well as newly added fees for submitting these oppositions.
While there has been much noise around how ‘burdensome’ pre-grant oppositions are, it remains unfortunately true that there is very little data to show this, as Sandeep Rathod also points out in his post discussing this same issue. In fact, if we look at the Annual Reports in the last three years, there are on average less than 500 pre-grant oppositions annually, even while there are close to 1,00,000 patent applications being filed.
| Year | Applications Published | Pre-Grant Oppositions Filed | Percentage of Total Application Published |
| 2022-23 | 94744 | 420 | 0.44% |
| 2021-22 | 69613 | 481 | 0.69% |
| 2020-21 | 52764 | 583 | 1.1% |
And of these miniscule percentages of pre-grant oppositions – how many are “frivolous”? Once again, the lack of available data on this ground makes it very difficult to tell. However, thanks to Sandeep Rathod’s regular LinkedIn postings on opposition orders, even just a casual search shows a significant number of oppositions corresponding to patent rejections, and even application abandonment by patent applicants! Anecdotal incidences below (Thanks Kevin Preji and Anshuman Kar for assisting with this compilation.) Though, keep in mind, with less than 500 pre-grants per year, just a casual search shows at least 15 (3%) cannot be easily waived away as frivolous. And keep in mind that even a granted patent would not necessarily mean the pre-grant was frivolous, just as a party losing in court does not mean their case was frivolous. It would be very interesting to see how the numbers finally add up, if one were to go through all of these pre-grant related orders.
The available data makes it very hard to understand why pre-grant oppositions are catching so much negative attention. So, perhaps, the question is – who is actually negatively affected by these pre-grant oppositions? One could even argue that there is good reason to incentivise more involvement by 3rd parties in the pre-opposition process, to ensure that more eyes scrutinise these patent exclusivities, before they’re allowed to prevent others from utilising that technology they claim to have invented!
One of the major issues that ails the Indian Patent Office is the application- personnel imbalance whereby only a handful examiners and controllers are responsible for handling large numbers of patent applications. Though recruitment of personnel (see here and here) is presently under process, there is a significant and simultaneous rise in the number of patent applications as well. Considering this disproportion between applications and personnels, pre-grant oppositions come in handy, by assisting the IPO in the examination process. This role of pre-grant opposition has been discussed extensively by the Delhi High Court in cases like UCB Farchim SA v. Cipla and the recent Novartis v. Natco, where the Court has categorically regarded pre-grant opposition to be there to aid and assist the controller in taking an informed decision on the patent application. With this understanding, the recent move to introduce hefty fees for filing opposition somewhat seems contrary to the intent behind having these safeguards in the first place. In fact, imposing fees for filing oppositions, makes the role of an opponent as an adversary in the proceeding. But this goes against the understanding in Novartis v. Natco, where the Court explained that “unlike an adversarial process, the opposition merely contributes to the overall assessment of the patent application.”
Another significant thing to note here is that these fees have been imposed without any justifications from the IPO. One of the probable reasons for this could be the intention to keep away the “meritless” opposition from delaying the patent examination process, but this hypothesis of opposition alone causing delays is not particularly true (for instance see here and here).
Apart from the impact on the functioning of the patent office, this move may significantly impact the public interest in oppositions by making it difficult for patient groups and other non profit entities to file oppositions against meritless patent applications. It is pertinent to note that timely opposition from these parties have aided the Patent Office against many secondary patent applications on life saving drugs (for instance the Bedaquiline and combination of Velpatasvir and Sofosbuvir (pdf) and generally on numerous instances, oppositions have coincided with “abandonment” of patent applications.
Considering that the government has decided to substantially modify these important safeguards, Considering that there has been substantial modification of these significant safeguards, the need of the hour is to shift attention from mere numbers, to check and focus on the quality of patents, as well as the quality of scrutiny of patent applications that are being processed. Even as policy positions and stances continue to be contested, it is hoped that at the least, more critical discussion and data are utilized in furthering these nuances, so that we can all contribute to improving the Indian IP ecosystem.
