High Court Clarifies Pre-Grant Opposition Time-Barred and Discourages Dubious Serial Oppositions

29 October 2012

A recent order of the Delhi High Court is likely to put an end to the filing of serial dubious pre-grant oppositions. In an order dated July 15, 2010, the Delhi High Court cleared the confusion about the date of grant of patent and clarified that the filing of pre-grant opposition is time-barred. Certain provisions of the Indian Patents Act have been misused for filing one after another pre-grant representations as tactics for delaying grant of patents afflicting innovator companies. According to the Section 25(1) of the Indian Patents Act, any person can oppose grant of a patent where an application for a patent has been published but not granted. Since there generally is a gap between the acts of the grant of a patent by the Controller, the sealing of a patent and entering the patent in the register, different dates are construed as date of grant and, accordingly, pre-grant oppositions are filed until the grant is entered in the register.

Deciding eight petitions filed by different petitioners against the dismissal of pre-grant oppositions by the Controller of Patents, Justice Muralidhar of the Delhi High Court affirmed that filing of pre-grant opposition is time barred.

In the first case, J Mitra & Company’s two patent applications were opposed by Span Diagnostics, and were rejected by the Controller on August 23, 2006. In the same order, while disposing the pregrant opposition, the Controller stated that “I hereby order to grant patent.” On the very next day – that is, on August24, 2006 – Dr Gupte, and subsequently on September 5, 2006, Dr Rindani filed pre-grant oppositions vis-à-vis the patent applications of J Mitra & Co. The Controller passed the orders rejecting both pre-grant oppositions on the ground that the oppositions were timebarred. Both Petitioners challenged the order, construing September 22, 2006 and September 27, 2006 as the date of grant for the two patents, when the grants were entered in the Register.

According to the Petitioners, the patent was not granted until such time it was sealed and entered in the Register in terms of Section 43(1) of the Act. However, refusing to accept such interpretation, the Court held that if the date of the grant of patent is only the date on which the factum of such grant is entered in the Register, then there would be no end to filing of pre-grant oppositions on account of some administrative delay for entering the grant, and the number of hurdles an applicant has to overcome even if the application is found to be ‘in order for grant.’

Further, filing of pre-grant opposition by the first Petitioner within a day after the Controller rejected the pre-grant opposition filed by the Span Diagnostics, and the soon-thereafter filing of pre-grant opposition by another Petitioner, was considered by the Court as ‘serial opposition.’ The court emphasized the need to discourage filing of such serial oppositions. The Delhi High Court ruled August 23, 2006, as the date of grant, when the Controller passed the order for grant of patents, while dismissing the first pregrant opposition of Span Diagnostics. Thus, according to the Court, any pregrant opposition filed after August 23, 2006, was clearly barred under Section 25(1) of the Act and the orders of Controller rejecting the pre-grant opposition were considered to be valid.

The Court also held that the filing of pre-grant opposition by two Petitioners, apart from being not maintainable in law, was also an abuse of the process of law, as the court was not convinced of the bonafides of either of the Petitioners. Therefore, the Court, finding no merit in the four writ petitions, dismissed them with costs.

Similarly, the Court also dismissed the second set of writ Petitions by Zephyr Biomedicals with costs. The patent in favour of Lalit Mahajan was granted and sealed on October 16, 2008, whereas the pre-grant oppositions were filed on November 28, 2008, and on December 12, 2008. Thus, the Court found that there was no error in the orders passed by the Controller rejecting the pre-grant oppositions.

However, in the third case, the Writ Petition filed by Tibotec Pharmaceuticals, the Court held that the communication dated March 28, 2008, written by the Controller to the Petitioner, cannot be held to be the date of grant. It was merely a communication stating that the application has been found in order for grant and not an order to grant Patent. Therefore, the Court rejected the petition of Tibotec, ruling that as there was no order for the grant on the file by June 26, 2008, when Cipla filed its pregrant opposition, such application was maintainable.

The Delhi High Court’s order hence clarifies that the sealing of the patent and the entering of patent in the register are ministerial acts evidencing the grant of patent. For the purpose of Section 43(1) of the Act, the patent is granted on the date on which the Controller passes a final order to that effect on the file. This would be a welcome order which puts a bar to the serial filing of pre-grant oppositions, minimizing the hurdles faced by innovator companies until grant of their patents.

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