A Pre-grant patent opposition proceeding provides a kind of check and balance in refining the quality of patents being granted. Some of the IP jurisdictions that have pre-grant opposition proceedings in place are India, Australia, Egypt, Portugal, etc. The objective of pre-grant opposition proceedings in the patent examination ecosystem is to increase the validity of granted patents through contributions from third parties with good knowledge of the prior art technology. However, this proceeding sometimes delays the prosecution and thus delays the grant of a patent if the provision is mis-utilized by filing frivolous and benami oppositions.
This could possibly be one reason why China in 1992 and Japan in 1996 did away with the pre-grant opposition system. Probably, considering that time is of the essence in patent prosecution, even in India, DPIIT has amended the Patent Rules (Patents (Amendment) Rules, 2024) for handling pre-grant opposition, whereby a pre-grant representation will be now assessed by the Controller within one month from the date of filing of the representation without intimating to the Applicant. Also, if there is no merit in the representation, the representation will be rejected. The amended Rules also reduced the time to file the reply statement to the representation by the Applicant, which indicates the inherent purpose of reducing overall time in the grant of a patent. With the recent amendments in the Patents Rules, 2003, the Patent office is equipped with enough power to deal with frivolous pre-grant opposition.
However, from the opponent’s point of view, there is no remedy in the Patents Act to challenge the decision of the Controller to reject the opposition. This is probably because it may cause unnecessary litigation and delay the patent grant. Although the Patents Act, 1970 provides alternate remedies for the pre-grant opponent, such as the right to file a post-grant opposition or file a revocation proceeding, these proceedings can be filed only by those opponents who can be qualified as a person interested as defined as “a person engaged in, or in promoting, research in the same field as that to which the invention relates” under Section 2(1)(t) of the Patents Act. In other words, as explained by the Supreme Court in J. Mitra & Company v. Assistant Controller of Patents & Designs (2008) 10 SCC 368, as long as the person is able to show that he is a person “interested”, he is not without a remedy after his pre-grant opposition is rejected.
The same position was held in the case of M/s UCB Farchim SA v. M/s Cipla Ltd. & Ors (MANU/DE/0297/2010). In the decision, it was noted that there are two scenarios depending on whether the opponent is an ‘interested person’ or not. (i) The High Court was of the view that the statutory remedy against rejection of a pre-grant opposition by an ‘interested person’ was to file a post-grant opposition or revocation petition. (ii) The High Court further held that in case of rejection of a pre-grant opposition by any person other than the ‘interested person’, there appeared to be no statutory remedy available, and a writ petition under Article 226 might be maintainable in such case.
However, in the case of Glochem Industries Ltd. v. Cadila Healthcare Ltd AIR 2010 BOMBAY 76, the Hon’ble division bench of the Bombay High Court held that even if a person is a person interested whose pre-grant opposition has been rejected, that person can file a writ petition under Article 226 of the Constitution of India against the decision of the Controller, rejecting his pre-grant opposition, if that person is able to show to the Court that the decision of the Controller suffered from obvious jurisdictional error. In line with Glochem (above), Delhi High Court, in a recent case Precise Biopharma Pvt. Ltd. v. Assistant Controller of Patents and Designs & Anr. in W.P.(C) IPD 3/2022, admitted the writ petition filed by the pre-grant opponent in a challenge to an order rejecting the pre-grant opposition under Section 25(1) of the Act, and remanded the matter back to the Controller for re-considering the matter and passing a reasoned order. The reason for the maintainability of this writ petition was that the Controller’s order was bereft of any reason and was a non-speaking order and thus in violation of well-established principles of natural justice.
Therefore, one can conclude that in a case if a pre-grant opposition is rejected, the pre-grant opponent has the remedy to file a writ petition against the Controller decision if the petitioner can show that the Controller’s order is suffering from obvious jurisdictional error or the order passed is non-reasoned and is in violation of the principle of natural justice. In Special Director v. Mohd. Ghulam Ghouse (2004) 3 SCC 440, it was held that the law is well settled notwithstanding that a High Court has the power and the jurisdiction under Article 226 of the Constitution to interfere with the orders of any statutory authority that is of a quasi-judicial nature, it will decline to exercise such jurisdiction where there is an efficacious alternative statutory remedy available to the aggrieved person.
Although, as regards the remedy available to the pre-grant opponent in case of his opposition being rejected is well settled, the question again came up before the Hon’ble division bench of Delhi High Court in the case of Rich Products Corporation v. The Controller of Patents [LPA 257/2024 & CM No.19528/2024]. In this case, Rich Product Corporation (hereinafter RPC) has filed a pre-grant opposition against a patent application titled “An artificial liquid cream for utilisation in unsweetened cooking and whipping applications” filed by Tropilite Foods Pvt. Ltd. (hereafter TFPL).
The Controller, after following due procedure, rejected the Pre-grant of RPC. RPC filed a writ petition against the decision of the Controller before the IP division of Delhi High Court. The Hon’ble Single Judge did not entertain the said writ petition on the ground that RPC had recourse to an effective mechanism for assailing the grant of patent under the Act. Thus, the Hon’ble Single Judge relegated RPC to take recourse to other remedies as available. RPC filed a letter patent appeal before the division bench against the order of the Single Judge.
The issue before the Hon’ble division bench was whether the Hon’ble single judge erred by not entertaining the writ petition filed by RPC. The Hon’ble division bench discussed a series of cases as discussed above and held that a pre-grant opposition under Section 25(1) of the Act is a part of the examination process and is to aid the Controller in considering an application for the grant of a patent. The Hon’ble division bench reiterated the position as held in Glochem (above) that a pre-grant opponent will have a recourse to invoke writ jurisdiction under Article 226 of the Constitution of India if the Controller passes an order that suffers from jurisdictional errors or not. The Hon’ble division bench further held that the order passed by the Controller did not suffer from any jurisdictional or manifest error and, therefore, upheld the decision of the single judge to not entertain the writ petition filed by RPC.
The decision in Rich Products Corporation v. The Controller of Patents again clarifies the remedy that a pre-grant opponent can have in case his pre-grant opposition is rejected. Writ jurisdiction is not a correct recourse to invoke if the pre-grant opponent is a person interested, as he will have an alternate efficacious remedy in terms of filing a post-grant opposition or revocation petition. However, in the circumstances, if the decision of the Controller to reject the pre-grant suffers from jurisdictional error or the order is non-speaking, the pre-grant opponent can take recourse to file a writ petition. However, the pre-grant opponent should be mindful that the writ jurisdiction is discretionary in nature. If they are taking recourse for a writ petition, they must qualify the minimum threshold of a manifest jurisdictional error to warrant entertaining the same under Article 226/227 of the Constitution of India.
